Atari Loses IP Suit Against Online Marketplace

On November 4, 2021, a California federal jury found that Redbubble did not infringe any of videogame maker Atari’s trademarks or copyrights, in a case that may affect future infringement suits against online retailers that permit users to sell products on their platforms. The case dates to 2018 when Atari filed its complaint alleging that Redbubble knowingly infringed upon Atari’s intellectual property rights by creating, manufacturing, and distributing counterfeit Atari clothing and printed materials. Redbubble hosts an online store platform where artists can upload designs that are printed on apparel, homeware, or other accessories, and sold through the artist’s Redbubble storefront. Atari’s complaint included claims of trademark infringement and counterfeiting, copyright infringement, trademark dilution, contributory copyright and trademark infringement, and vicarious copyright and trademark infringement, due to the sale of t-shirts, and other apparel and merchandise, that featured the iconic Atari logo and designs that featured famous Atari games such as Pong and Asteroids.

In January 2021, on motions for summary judgment, Atari failed to convince the court that there were sufficient facts to prove that Redbubble had “sold” goods that infringed Atari’s trademarks, or that Redbubble had instigated any copying, storage, or distribution of images that infringed Atari’s copyrights. Further, Atari’s claims of contributory and vicarious copyright infringement were denied because Redbubble had, at least until the lawsuit was filed, no knowledge or notice of infringing material on its platform, and once it was notified by Atari through the complaint, removed all the identified listings. At trial, the jury was tasked with determining whether Redbubble had directly infringed Atari’s trademarks and copyrights, and whether it was liable for vicarious and contributory trademark infringement. After less than a day’s deliberation, the jury found it had not.  

In a blow for Atari, and possibly other mark owners who experience trademark infringement on Redbubble, the jury found that Redbubble did not, for the purpose of infringement, sell infringing products, but rather it was the individual designers who were selling the infringing items. Nor did the jury find that Redbubble had sufficient knowledge or control of what third-parties are selling on its platform for it to be liable for contributory or vicarious trademark infringement. It remains to be seen if Atari will appeal the verdict.

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About Winston’s Videogame, Gaming & Esports Group
Recognizing that emerging industries require bespoke lawyering, David Enzminger formed and lead Winston’s Videogame, Gaming & Esports Group to provide comprehensive legal solutions to companies in these industries. This multidisciplinary group includes more than 60 lawyers across 10 practices working seamlessly to assist companies in these industries in all areas, including managing IP portfolios, assisting esports companies establish global sports leagues, selling franchises, and developing proactive legal solutions for issues that arise from league operations. We represent videogame publishers in antitrust matters and represent both rights owners and gaming companies in licensing issues for game content. In addition, our team helps electronic game clients prepare for all types of regulatory and public scrutiny issues, such as corporate governance, data privacy, and harassment/discrimination claims that are sure to come as the industry continues to grow in both size and influence. Our offices in New York, Silicon Valley, Los Angeles, Shanghai, and Hong Kong provide gaming clients with a global platform for their complex and evolving legal needs.