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Hells Angels on hook for costs after trademark stoush
Hells Angels lengthy trademark court saga against Redbubble has ended with a sizeable costs order.
Naomi Neilson
Hells Angels Australia has been locked in a legal fight with the Melbourne-based online marketplace for years, with the outlaw motorcycle gang most recently losing $78,250 in damages on appeal.
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The club was originally awarded damages when Federal Court’s Justice Andrew Greenwood found Redbubble had sold products with designs that were either substantially identical or deceptively similar to registered trademarks comprising of the words “Hells Angels”.
Justice Greenwood ordered Redbubble to cough up $8,250 in nominal damages and $70,000 in additional damages, but a Full Court replaced it with an award of $100 in nominal damages on appeal.
The Full Court found Redbubble – as a site that partly relies on third parties uploading images – did not have the technology to detect whether an image was deceptively similar to a trademark.
“Thus an award of additional damages for the purpose of which was to persuade Redbubble to use computer systems to check all images prior to their upload to the website for deceptively similar [material] would, on the evidence, presently by quixotic,” the court said.
The $100 in nominal damages included $20 for each infringement.
Separately, Redbubble sought to rely on a settlement agreement, but this was rejected by Justice Margaret Jagot. An appeal of this decision was knocked back the same day the Greentree appeal was accepted.
In the Federal Court’s Justice Kylie Downes costs decision, she found because Hells Angels did succeed in establishing infringements on its intellectual property rights, “Redbubble should pay the costs of Hells Angels Australia of the primary proceedings”.
However, Justice Downes said Hells Angels did not notify Redbubble of any “potentially infringing image uploaded by third parties” and commenced the primary proceedings without any prior notice.
In addition to positive steps taken by Redbubble to avoid or minimise third-party sellers uploading infringing material and its moderation of that material once notified, Justice Downes said Redbubble provided information to Hells Angels and “otherwise sought to be helpful”.
“The impression given by the genuine steps statement is that Redbubble was an uncooperative and flagrant infringer that had refused to engage with Hells Angels Australia,” the judgment read.
“However, this conclusion is contrary to the findings of the Full Court.”
Justice Downes also added the Full Court’s finding that the Hells Angels “could have co-operated much more” with Redbubble.
“It follows that Hells Angels Australia was not justified in commencing the primary proceedings without any notice to Redbubble, especially having regard to Redbubble’s proactive moderation activities and its demonstrated willingness to moderate the artworks that Hells Angels Australia brought to its attention,” Justice Downes found.
Taking into account the offers made by Redbubble, Justice Downes ordered Redbubble to pay 75 per cent of the Hells Angels costs up until 11am on 29 March 2022. From that point on, Hells Angels was ordered to pay the costs of the proceeding on an indemnity basis.
Redbubble will also pay the costs of the failed Justice Jagot appeal.
As for the Hells Angels, Justice Downes ordered the club to pay 70 per cent of Redbubble’s costs on the Justice Greenwood appeal and 100 per cent of the costs for the cross-appeal.
