Hells Angels Motorcycle Corporation (Australia) Pty Limited v Redbubble Limited  FCA 355 (15 March 2019)
This case considered the business model of Redbubble in the context of copyright and trade mark infringement. Hells Angels was partly successful in its trade mark infringement claim and awarded nominal damages, but failed in its copyright claim.
Redbubble’s website enables persons to upload creative work and for consumers to request articles (such as clothing) bearing that work to be supplied by third party fulfillers. Redbubble contended that it is merely an agent for the person uploading the creative work and provides an online marketplace where artists and consumers can engage and transact with one another, subject to protocols governing the operation of its website. Since the functionality of the website is effected through software located on servers in the USA, Redbubble also contended that all relevant steps take place in the USA and not in Australia. Conversely, Hells Angels contended that Redbubble takes a more active role and is, in effect, the relevant seller of the articles bearing the creative work.
Redbubble failed in its cross-claim for removal of the registered trade marks owned by Hells Angels based on non-use.
The copyright infringement claim in relation to the Hells Angels Membership Card image failed because there was no proof that the original author of the artistic work (Sundown in 1954) transferred ownership of the copyright to Hells Angels. Also, Greenwood J was not satisfied copyright separately subsisted in the Death Head design created by Mr Fukushima because it was merely a derivative standardised version of the Membership Card image.
Nonetheless, his Honour still went on to discuss infringement by way of obiter and found that the relevant creative works were uploaded by the relevant artists who made the works available online to members of the public in Australia, but the artists were not primary infringers because the relevant acts were not done in Australia. The Redbubble business model was such that it had control over each transaction and was the supplier as the facilitator of all essential elements of the transaction with the end consumer. Consequently, Redbubble was a primary infringer. It made the relevant artistic works available online in Australia and was the person responsible for determining the content of the communications.
Trade mark infringement
Greenwood J was satisfied Hells Angels Australia was an authorised user of the registered trade marks owned by Hells Angels USA and had standing. The relationship was one where obedience to the trade mark owner was so intuitive and so complete that no formal instruction as to quality control was necessary.
His Honour found Redbubble was the supplier of the goods bearing the relevant trade mark to the consumer because it exercised management, control and power in relation to all of the steps (apart from uploading) which characterised conduct of transactional supply. Further, Redbubble was also using the relevant Hells Angels trade marks, in Australia, for the purpose of indicating a connection in the course of its trade between clothing bearing the marks and Redbubble as a source of supply of those goods. Greenwood J noted that, put simply, Redbubble is saying, by its business model, in effect: “If you come to Redbubble you can get this Tshirt online from us bearing the Hells Angels trade marks”. As a result, his Honour found infringement for three of the four examples relied upon. However, there was no infringement in the case of the example displaying an image of a young child wearing a jacket, viewed from the back, sitting next to an adult wearing a jacket (also viewed from the back) on which the mark “Hells Angels” can be seen in the image, because such use was not trade mark use by either the artist or Redbubble of any of the relevant registered trade marks.
Greenwood J awarded nominal damages of $5,000 because the offending images were on the Redbubble website for short periods and resulted in only a few sales of products to Australian consumers. There was no basis for considering an award of exemplary damages.
His Honour did comment that use of the Hells Angels word marks as search terms on the Redbubble website to find an image was a step along the way but not trade mark use because such use was not use of the terms as a “badge of origin” of Redbubble.
Also, the relevant artists and Redbubble were not liable for trade mark infringement as joint tortfeasors because there was no common design.
Trade mark cross claim
Redbubble alleged that the registered Hells Angels trade marks were not used in Australia by Hells Angels US at any time during the three years period ending on 5 October 2015. However, this failed because Hells Angels Australia’s evidence disclosed relevant trade mark use and, as noted above in the context of standing, Greenwood J was satisfied Hells Angels Australia was authorised to use these registered trade marks in Australia. Where there was deficiency in proof for some of the registered goods, his Honour was willing to exercise discretion and leave the trade marks on the Register.