Earlier this month, the U.S. District Court for the Southern District of New York denied a motion to dismiss from CafePress.com, Inc. (CafePress) regarding some of its user-submitted designs available for reproduction onto T-shirts, which Born to Rock Design Inc. (BTR) alleges infringe upon its trademarked phrase.

BTR is an electric guitar company with a federally registered trademark in “Born to Rock” in the context of electric guitars.  When it discovered that some of the designs available for reproduction on CafePress’s website included the phrase “Born to Rock,” BTR notified CafePress that it considered those designs to infringe upon BTR’s trademark.  Some of the designs included pictures of guitars, but others were just stylized text, and still others had “Born to Rock” written above a picture of a rocking chair.  The two parties disagreed about the infringement, and communication stopped between them for about a year.  In the interim, BTR registered its “Born to Rock” trademark also for the use of T-shirt sales.  BTR then recommenced its communications with CafePress, and this time BTR filed a lawsuit for trademark infringement when CafePress refused to remove all allegedly infringing products from its website.  CafePress filed a motion to dismiss BTR’s complaint, arguing both that BTR’s trademark is not valid and that CafePress’s use of the phrase is an otherwise non-infringing fair use.

As explained by Eric Goldman, CafePress’s choices so far undoubtedly have been motivated by wanting to avoid as many legal expenses as possible.  Any litigant would do the same, but it’s especially important for a website like CafePress, whose content for sale is submitted by users.  When users submit the content, website businesses like CafePress are outsourcing their design labor for free (or for less profits, as in CafePress’s case), but how would they know if a user-submitted design infringes upon somebody else’s intellectual property?  In copyright law, and specifically in the Digital Millennium Copyright Act, “internet service providers” like CafePress can escape liability through safe harbor provisions if they remove infringing content after being notified of it.  No such safe harbor provision exists in trademark law.  So what’s a website like CafePress to do?

The order denying CafePress’s motion to dismiss shows that CafePress focused its argument on contesting certain elements of BTR’s claim, elements that if conceded would allow CafePress to escape liability generally and avoid it in similar future circumstances.  As explained in the order, BTR’s trademark infringement claim has to meet the following elements: (1) that BTR has a valid mark entitled to protection; (2) that CafePress used the mark; (3) in commerce; (4) in connection with the sale or advertising of goods or services; (4) without BTR’s consent; and (5) that the result creates a likelihood of confusion as to the origin (or association thereto) of the goods.  Additionally, to defend itself on fair use grounds CafePress must prove that it used the phrase (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith.  Of all these different focal points, CafePress argued that the court should dismiss BTR’s claim because CafePress doesn’t use the mark in commerce and because its use was only descriptive and in fair use.  I concede that winning on these grounds would have been better for CafePress in the long haul, but CafePress could have saved itself money also by contesting other elements of BTR’s claim too, which in turn could have excluded some designs from BTR’s infringement claim.

First, CafePress should have argued to invalidate BTR’s second trademark registration, for use of the mark in the sale of T-shirts.  Doing so would not necessarily narrow or invalidate any of BTR’s substantive trademark rights, but it would remove the presumption of validity that registration entails.  Under 15 U.S.C. § 1051(a)(3)(D), a registrant has to claim that “no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive. . . .”  There is no way that BTR can argue it knew no one else could use the “Born to Rock” mark on T-shirts because its dispute with CafePress preceded BTR’s trademark registration for use of its mark on T-shirts.  Even though CafePress hadn’t itself registered the mark for its use on T-shirts, trademark protection applies even for unregistered uses.

Second, CafePress’s fair use argument also should have focused on whether its use of the “Born to Rock” mark was a use “other than as a mark.”  According to the district court, a “non‑trademark” use of the mark occurs when its use does not cause any confusion as to its origin or association.  The court says that this could very well encompass even something as small as having the CafePress logo printed on the T-shirts’ tags.  The only ways it could make sense that CafePress didn’t press this issue would be if either (1) their T-shirts don’t have such labeled tags, or (2) that it didn’t want to pay its lawyers the money to draft this point of the argument because it didn’t think it would have been worth it.  Admittedly, CafePress couldn’t have gotten around the former, but the latter reason is short-sighted: money spent now could save more money down the line.

What’s interesting for me here is the court saying that a CafePress logo on the T-shirts’ tags could have bolstered its fair use defense by clarifying the T-shirts’ origin.  The court also notes how some of the allegedly infringing designs incorporate a URL, which further clarifies that the T-shirts imprinted with them aren’t associated with BTR.  As CafePress’s business proceeds, I think a good move would be to have it so every product it ships has “CafePress” emblazoned across it somewhere.  Not only would this help keep people from mistakenly thinking such products are associated with someone other than CafePress, but it would be brand advertising as well.

Admittedly, both of these points and my own idea would only narrow CafePress’s liability in this case or others like it regarding BTR’s registration for protection of its mark when regarding T-shirts.  Even if it’s clear that the T-shirts came from CafePress and not BTR (or another claimant), there’s still the problem of confusion as to association.  Some of CafePress’s T-shirt designs have the “Born to Rock” phrase together with guitars.  As bad as it is for businesses whose models are built on users submitting designs, there is still the possibility that designs such as these can wrongly associate themselves with trademarks that normally apply to other classes of goods.  It’s the difference between someone thinking it’s a T-shirt made by BTR and someone thinking it’s a T-shirt made by someone else but with the BTR brand.

As one of my first-year teachers at law school reminded us frequently, it’s often better to make multiple arguments than to rely on only a few.  From the client’s perspective, there’s the temptation of only paying for just as much as you need, but it’s impossible to know exactly how the ruling court will respond to your case.  No matter how sharp you think your knife is, it’s still a poor idea to bring it to a gunfight.

Share