Brandy Melville v. Redbubble

The Ninth Circuit's first contributory trademark infringement ruling holds that willful blindness requires specific knowledge of infringers, and that counterfeiting needs no stitch-for-stitch copy.

When a viral teen-fashion brand took an online print-on-demand marketplace to trial and won, the Ninth Circuit used the appeal to decide, for the first time in a published opinion, how the contributory trademark infringement standard applies to internet platforms. In Y.Y.G.M. SA v. Redbubble, Inc., 75 F.4th 1085 (9th Cir. 2023), the court adopted the Supreme Court’s Inwood framework, clarified that the willful-blindness route to liability demands specific knowledge of infringement, and rejected the idea that a “counterfeit” must be a stitch-for-stitch copy. The decision, written by Circuit Judge Ryan D. Nelson, reshapes how marketplaces and rights holders litigate knockoffs sold by third parties.

At a glance

Case: Y.Y.G.M. SA d/b/a Brandy Melville v. Redbubble, Inc., Nos. 21-56150 & 21-56236, 75 F.4th 1085 (9th Cir. July 24, 2023).
Court: U.S. Court of Appeals for the Ninth Circuit; opinion by Circuit Judge Ryan D. Nelson.
Posture: Cross-appeals after a jury found contributory infringement and counterfeiting and the district court granted partial judgment as a matter of law to Redbubble.
Holding: Willful blindness supporting contributory liability requires specific knowledge of infringers or instances of infringement; counterfeiting does not require an exact, stitch-for-stitch copy.
Significance: The Ninth Circuit’s first published contributory trademark infringement decision, setting the knowledge standard for online marketplaces in the circuit.

A print-on-demand marketplace meets a viral brand

Y.Y.G.M. SA does business as Brandy Melville, a clothing and accessories company that owns marks including the BRANDY MELVILLE HEART and LA LIGHTNING designs. Redbubble runs an online marketplace where independent artists upload designs that Redbubble then prints on demand onto shirts, stickers, and other goods; Redbubble handles payment, manufacturing, and shipping when a customer orders. Some of those user-uploaded designs incorporated Brandy Melville’s marks.

In 2018, Brandy Melville notified Redbubble of infringing listings on two consecutive days, and Redbubble removed the flagged items. Brandy Melville nonetheless sued, arguing that Redbubble was contributorily liable for the broader pattern of infringing products on its platform. A jury found Redbubble liable for contributory trademark infringement and contributory counterfeiting and awarded damages. The district court then granted Redbubble partial judgment as a matter of law on one counterfeiting claim. Both sides appealed, teeing up the legal questions the Ninth Circuit had not previously resolved in a published opinion.

Adopting Inwood and defining willful blindness

The court grounded its analysis in Inwood Laboratories, Inc. v. Ives Laboratories, Inc., under which a defendant is contributorily liable if it intentionally induces infringement or continues to supply its product to one it knows or has reason to know is infringing. The contested issue was how a platform can satisfy the knowledge branch through willful blindness, and in particular whether general knowledge that infringement happens on a marketplace is enough.

The Ninth Circuit held it is not. Willful blindness, the court explained, requires that the defendant subjectively believed infringement was likely occurring and took deliberate actions to avoid learning about it. Crucially, the court ruled that this requires “specific knowledge of infringers or instances of infringement.” A defendant cannot be charged with willful blindness merely because it understands, in a general way, that some users misuse the platform. Because the jury may have been allowed to find liability on a lesser, generalized-knowledge theory, the court vacated and remanded for the district court to reconsider Redbubble’s motion for judgment as a matter of law under the correct standard.

Rejecting the stitch-for-stitch counterfeiting rule

On the counterfeiting side, the court addressed the district court’s reasoning that the BRANDY MELVILLE HEART products could not be counterfeits absent near-exact copying. The Ninth Circuit rejected that approach. The text of the Lanham Act, the court reasoned, does not require counterfeit goods to be exact replicas of existing merchandise. The statutory question is whether the accused mark is a spurious mark identical to, or substantially indistinguishable from, the registered mark, used in a way likely to cause confusion—not whether the product itself is a perfect duplicate.

By insisting on a stitch-for-stitch match, the district court had asked the wrong question. The proper inquiry focuses on the marks and the likelihood of confusion they create, regardless of whether the underlying product is a flawless copy of a particular Brandy Melville item. The court therefore vacated the judgment as a matter of law on that counterfeiting claim and remanded for reconsideration under the correct legal standard.

The disposition and what survived

The Ninth Circuit’s order was a mixed, largely corrective one. It vacated and remanded the contributory infringement determination so the trial court could apply the specific-knowledge willful-blindness standard, vacated the partial judgment as a matter of law on the BRANDY MELVILLE HEART counterfeiting claim under the corrected counterfeiting analysis, and vacated the denial of a permanent injunction and attorneys’ fees so those issues could be revisited in light of the corrected rulings. It affirmed the district court’s denial of prejudgment interest. The Supreme Court later declined to take up the case, leaving the Ninth Circuit’s framework in place as circuit law.

Open questions

How specific is “specific knowledge”? The court required knowledge of particular infringers or instances, but did not catalog what kind of notice—takedown notices, repeat-offender data, search results—suffices in practice.
What investigative duty do platforms bear? Because willful blindness turns on deliberate avoidance, it remains unclear how proactive a marketplace must be before passivity becomes culpable.
How will damages and counterfeiting interact on remand? With the stitch-for-stitch rule rejected, lower courts must work out when third-party prints crossed from ordinary infringement into statutory counterfeiting.

Implications

Specific knowledge is the new threshold. In the Ninth Circuit, rights holders must show a platform knew of particular infringers or instances, not just that infringement happens generally, to win on willful blindness.
Documented notice matters more than ever. Detailed, repeated, item-level notices to a marketplace strengthen the knowledge case and make later willful-blindness arguments viable.
Counterfeiting reaches inexact copies. Sellers and platforms cannot escape counterfeiting exposure merely because a product is not a perfect replica; the focus is on the mark and confusion.
Platforms should tune their takedown systems. Prompt removal helps, but design choices that avoid confirming known infringement can support a willful-blindness finding.
Inwood now governs online marketplaces in the West. The decision firmly extends a 1982 product-supplier standard to print-on-demand and similar internet businesses.

Frequently asked questions

What did the Ninth Circuit decide about willful blindness? It held that willful blindness for contributory trademark liability requires specific knowledge of infringers or instances of infringement. A platform’s general awareness that some infringement is occurring is not enough; the plaintiff must show the defendant subjectively believed specific infringement was likely and took deliberate steps to avoid confirming it.

Did the court rule that Redbubble was liable? No. The court vacated and remanded so the district court could reapply the correct specific-knowledge standard to Redbubble’s motion for judgment as a matter of law. It did not declare Redbubble liable or not liable; it corrected the legal test and sent the issue back.

Does a counterfeit have to be an exact copy? No. The Ninth Circuit rejected a stitch-for-stitch requirement. The Lanham Act does not require counterfeit goods to be exact replicas; the question is whether the accused mark is identical or substantially indistinguishable and likely to cause confusion.