The Australian chapter of biker group the Hells Angels has mostly come up short in its intellectual property lawsuit against online marketplace Redbubble. But the judge who heard the case may have opened the door for more IP lawsuits against the print-on-demand site by shooting down its claims that its not a seller but merely a platform for artists and consumers to engage.
Hells Angels Motorcycle Club Australia claimed Redbubble — which operates a website through which artists can upload an image or design that can be applied to items such as t-shirts or mugs for purchase on the site — directly infringed the copyright for two designs for which HAMC Australia claimed to be the exclusive licensee by communicating the work to the public by making it available online. Redbubble also faced allegations of trade mark infringement and violations of the Australian Consumer Law.
The case centered on four designs uploaded to Redbubble that allegedly infringed HAMC Australia’s copyright for two designs. None of the designs, which were used to make various products shipped to customers in the UK, US and Australia, were uploaded to the site from Australia. The designs feature a skull from a side view wearing a helmet adorned with exposed feathers resembling a headless.
In his Friday judgment, Justice Andrew Greenwood dismissed HAMC Australia’s copyright and consumer claims, saying that although HAMC Australia had an exclusive license from HAMC US for the first design — the membership card image — HAMC US did not own the image. The second image — the death head design — was derivative of the membership card image and lacked originality, the judge said.
The membership card image was commissioned by the San Francisco chapter of the Hells Angels in 1954 and made by a man named Sundown. HAMC US was not the holder of the copyright for the work under Australian copyright law because there had been no written assignment of the copyright, Justice Greenwood said.
However, Justice Greenwood found Redbubble was the primary infringer of the two designs because it was responsible for the content of the communications to the individuals that purchased the products featuring the allegedly infringing designs. The judge also said that had the act of uploading the designs occurred in Australia, he would have found Redbubble had authorised the infringement because it supplied the goods bearing the allegedly infringing works and because it had control over the website and the entire process by which it operates.
“The artworks would not be available online to consumers in Australia to consider and appraise with a view to purchasing a product bearing the artwork. The entire focus of the business model is to enable works to be made available online so that consumers can pick and choose amongst the works so as to have them applied to goods,” Justice Greenwood said.
“It would be difficult to imagine a more directly engaged participant than one deploying the business model adopted by Redbubble,” the judge said, adding the Redbubble’s relationship to the artists was not that of agent to seller.
HAMC Australia was successful in its trade mark claims in relation to three examples, with the judge finding Redbubble generated revenue from supplying goods bearing the marks and because it was using the marks to indicate a connection between it and clothing bearing the marks.
“[P]ut simply, Redbubble is saying, by its business model, in effect: ‘If you come to Redbubble you can get this T-shirt online from us bearing the Hells Angels trade marks,” the judge said.
The judge also found Redbubble’s capacity to engage through its website constituted use in Australia.
However, the judge found the damages in relation to two of the examples was a nominal $5,000 and that the biker group had not made out its case for exemplary damages.
The judge also dismissed the biker group’s argument that Redbubble and the artists had engaged in a common design.
“The evidence shows that an artist engaged in conduct and, by fore of the business model, Redbubble engages in its own conduct,” the judge said.
Justice Greenwood dismissed Redbubble’s cross-claim seeking to revoke the trade marks in the lawsuit for non-use.
Redbubble did not respond to a request seeking comment on the judgment.
Hells Angels was represented by Dimitrios Eliades, instructed by solicitors from Solus IP Pty Ltd. Redbubble was represented by Richard Cobden SC with Emma Bathurst, instructed by solicitors from Allens.