CafePress Can’t Shut Down “Born To Rock” Trademark Infringement Suit

By Joseph Mandour on September 18, 2012

CafePressLogo-thumb-200x147-48836 Orange County – CafePress Inc. lost its bid for a quick win this month in a trademark infringement suit claiming the online print-on-demand marketplace is violating the registered trademark “Born To Rock” when it allows users to upload designs using the phrase and sells related merchandise.

Born To Rock Design Inc. has shown that there is at least enough of a question of infringement to send the case to a jury, Judge Colleen McMahon of the Southern District of New York ruled in her Sept. 7 decision denying CafePress’s motion for summary judgment.

CafePress operates a virtual online marketplace that allows its users to set up virtual shops on CafePress.com. Users upload graphic designs to the website, and in doing so grant CafePress a license to design, produce, market and sell products bearing those designs.

Once the design is uploaded, the website places it on images of merchandise including T-shirts, coffee mugs and key chains. Visitors to CafePress.com can browse designs and select merchandise to custom print with their chosen design.

When a visitor places an order, CafePress.com prints the design on the selected merchandise, ships it to the customer, and collects the payment, a portion of which is remitted to the user who created and uploaded the design.

BTR obtained a trademark in 1994 for the words “Born To Rock” as they relate to electric guitars, after patenting a new kind of neck for electric guitars. The company alleges that CafePress infringes its trademark by selling merchandise uploaded to its website that incorporate the trademark phrase.

BTR asked CafePress in May 2009 to remove user designs that contain the words “Born To Rock” from its website. CafePress responded a month later that it would not remove the designs, relying on the doctrine of fair use, among other principles. After further discussion, BTR filed the current action in November 2010.

CafePress’s motion for summary judgment on BTR’s infringement claims must be denied unless it has established its fair use affirmative defense as a matter of law, which it has not, the judge said.

“CafePress’s litigation strategy upends its cause,” Judge McMahon said. “By failing to move for summary judgment on a design-by-design basis, CafePress essentially asks the court to take judicial notice of the fact that every use BTR complains of is a non-trademark use as a matter of law. I cannot do that based on the evidence proffered in this motion.”

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