Online merchandise store Redbubble has been ordered to pay the Hells Angels Motorcycle Club more than $78,000 for selling items depicting the club’s logo without permission, in the second ruling against the company in three years.
Redbubble is an online marketplace that allows users to upload images to be printed on merchandise such as stickers, mugs, T-shirts, masks and other items, which are then offered for sale.
After winning $5,000 from Redbubble for trademark infringement in 2019, the club launched legal action again last year after discovering more items for sale bearing the Hells Angels logo.
The company uses keyword filtering to pick up on uploads that may violate the copyright or trademarks of organisations that have sought to protect it, such as the Hells Angels.
Redbubble proactively moderates uploads for 477 organisations, and told the court that 2 million artworks uploaded to the site had been moderated in the past five years – including 114 related to the Hells Angels since the 2019 court decision.
However, the Hells Angels’ trademark officer in Australia was able to buy a number of items bearing the Hells Angels logo despite the previous court ruling. Over the course of the case, 11 different listings were discovered.
The court found that the processes Redbubble had in place to prevent infringement were flawed, in part because several listings that had been suspended for manual review by an outsourced team in Jamaica were allowed to return to the site in error. Redbubble has since stopped outsourcing to the Jamaican moderation team.
Another flaw was that Redbubble relied only on keywords. The court heard that the company had been working on, but had not yet been able to deliver, a tool that could scan images as they are uploaded to detect potential infringement in real time. The company told the court it was in beta testing on a range of use cases to test its effectiveness.
Justice Andrew Greenwood, in his final judgment before retirement, said while the detection system had improved, it had not worked effectively.
“Clearly enough, they do not operate so as to bring about the result that infringements are always promptly detected and removed from the website. Further, the proactive moderation processes as outsourced … failed in large measure to protect the applicant,” he said.
While the only people who had bought items bearing the logos were members of the Hells Angel Motorcycle Club who were seeking to determine whether the items were still for sale, Greenwood did not award damages on the basis of sales but instead for the injury suffered for the use of the trade marks without authorisation.
He awarded the club $8,250 in damages, with $70,000 awarded in additional damages.
A spokesperson for Redbubble said the company was “disappointed with some aspects of the decision and is considering its position in relation to a possible appeal”.
