I choose you, trade mark protection! What does Pokémon and the Hells Angels have in common?
On the list of people you don’t want to pick a fight with, Pikachu has to be top of the list, surely. Or could it be the Hells Angels?
Redbubble is an online marketplace where artists and designers upload their creative works to Redbubble’s website. Customers then buy t-shirts, mugs, phone cases and other random stuff and have their favourite image from the website printed on them. Redbubble takes payment, prints the articles and delivers them to the customer. It pays the designers a % of the sale price.
What could go wrong I hear you say? The answer is, quite a lot really!
Motorcycle enthusiasts, Hells Angels Australia, sued Redbubble for trade mark infringement after discovering Redbubble was selling T-shirts and other items showcasing the Hells Angels Crest, and three of its other distinctive logos. For anyone that’s read the Hells Angels website you’ll know that it says that branded clothing “is only for members of our club. No one else but us is allowed to produce, sell or buy any items with the words HELLS ANGELS and our logo with our DEATH HEAD.” Seems clear to us.
Although Redbubble removed the items from its website when politely asked to do so by the Hells Angels, this didn’t stop the group from suing for damages, including the money Redbubble made from the sale of the items.
The Federal Court looked at this last year and agreed with the Hells Angels, and found that Redbubble had in fact infringed a number of Hells Angels’ trade marks. The Court said that Redbubble had used the trade marks as it was the supplier of the relevant goods as it exercised management, control and power over the supply chain, enabling the transactions to occur.
This decision was along the lines of an earlier decision when RedBubble lost a gym battle against the Japanese company, The Pokémon Company International, who had sued them for using the images of approximately 29 of the 800 Pokemon characters on items.
In that case, Pokémon commenced proceedings in the Federal Court faster than a whip from Pikachu’s tail alleging copyright and trade mark infringement, and seeking substantial damages for profits made from selling the Pokemon-related products on Redbubble’s website. Redbubble lost that case also, and no amount of help from Nurse Joy could stop the order that they pay damages.
What are the key takeaways?
Ah, don’t p**s off a motorcycle gang or a global gaming company by stealing their designs is probably the key one. Oh, and if you’re operating an online marketplace:
- Give careful consideration to your business model, structure and operations;
- make sure you have clear terms and conditions governing the upload of information to your website;
- have an effective ‘notify and takedown policy’ dealing with potentially infringing material. It is not a defence to IP infringement that a business is merely a marketplace acting as agent for artists or third parties.
- storing content and hosting your website overseas, will not protect you from infringement where you communicate infringing content to users located in Australia.
If you have IP to protect, or believe that someone is infringing your trade mark or copyright, give our IP lawyers a call.