Asked by John on 04-05-2024 12:23:06
Question posted in the Intellectual Property Law category relating to KwaZulu-Natal

Good day, I am a freelance graphic designer and had a Redbubble online store (now closed) where I sold artworks that are sold as T-shirt prints, stickers, etc. 

On 11th April, I received an email from Redbubble saying that they had removed one of my artworks as they'd received a complaint from Grumpy Cat Limited about copyright infringement. The artwork was a picture of a long-haired black and white cat wearing a santa hat with the words 'Ho Bloody Ho' above it's head. All artworks have to be titled on the website so I entitled it 'Grumpy cat's Christmas cheer'. I was informed by Redbubble that the artwork would be removed from my shop and that usually this would conclude the matter and no further action had to be taken on my part.

However, yesterday I received a summons and other documents from Grumpy Cat Limited's attorneys (HUGHES SOCOL PIERS RESNICK & DYM, LTD) informing me that, along with 249 other Redbubble shops, I was being sued for trademark infringement. I have subsequently written to the attorneys, expalaining that I was unaware that the words 'Grumpy Cat' were trademarked and that I had no intention of misleading the public. I had simply used the word 'Grumpy' as an adjective to describe the cat in my artwork. I further explained that my artwork was not based on their cat's image and in no way looked like their trademarked cat, other than that my artwork was a depiction of an angry looking cat. I also mentioned that the artwork no longer exists as Redbubble removed it and that I also subsequently closed my Redbubble store. I only made one sale from the artwork and have offered to pay the proceeds ($2.75) to the plaintiff. I have not yet received a reply from the attorneys.

Further information relating to Question:

Following is the content of my email to the plaintiff's attorneys: On April 11th, 2024, Redbubble alerted me to the complaint made against an artwork design I had in my Redbubble store and they immediately removed the said artwork. I have also subsequently closed my Redbubble store. The complainant claims that I infringed on their trademark, Grumpy Cat. I would like to state categorically that I did not do this intentionally or with any malicious intent, and that the words 'grumpy' and 'cat' were simply used to describe the content of the artwork (I originally had inserted the title as, 'A very grumpy cat's Christmas cheer' and then shortened it to Grumpy cat's Christmas cheer). My intention was never to infringe on the rights of your client, the trademark holder; the words were simply used as a descriptive title for the artwork. I might just as easily have titled the artwork 'My angry cat's Christmas cheer', or 'Sad cat's Christmas cheer'. The artwork in question does not represent your client's particular cat in any way, other than that it depicts an angry or unhappy cat. It is a completely different image of a cat and is not based on an image of your client's cat. Furthermore, nowhere on the artwork does the name Grumpy Cat appear. As mentioned above, these two words were only used as part of the title for the artwork and were not intended to mislead buyers or prejudice your client in any way. The error was unintentional and I wholeheartedly regret it. I made only one sale from this artwork. As a sign of good faith to your client, I am prepared to transfer the proceeds I received from this sale ($2.75) into their account. As the infringement was wholly unintentional — I was not even aware that I was infringing on a trademark — I hereby appeal to your client for leniency and to remove me from the list of defendants in this case.

Posted by Att. Patrick on 04-05-2024 14:44:53

Hi there and thank you for your question,

I am a practicing attorney based in South Africa and I will assist you with your question. Please feel free to ask as many follow up questions in order to clarify your question. If you have a new question, you must please open a new thread.

Please keep in mind that our discussions is for general information purposes only. Our engagement on this website does not create an attorney-client relationship.

If you are being sued by them, the best that they can claim from you is the royalties that you made off of the artwork that you infringed, but ONLY if they can prove that your product infringed upon their trademarked cat. 

So, it sounds to me that you feel that there is no infringement, and that you've explained this to them. They will need to form an opinion if you are right or wrong. If you are right, then they should simply withdraw the summons against you. If they think that there is an infringement, then they will want to push forwards with the claim. 

Moving on to their damages, if you only sold 1 product, for $2.75, then their royalty would be limited to this amount. They couldn't get more from you. My advice is to give them this information and tender payment of this amount to them in full and final settlement of the dispute. 

What you should do is to say that you will enter into a settlement agreement, which can be made an order of court, in terms whereof you agree, without making any admission that you did infringe their trademark, that you won't infringe their trademark in the future, and that you will pay them the $2.75 on a without prejudice basis, in full and final settlement of their claim. 

I think what you've said about using the words grumpy cat as adjectives is spot on. You never used it as a name "Grumpy Cat". Their trade mark would be for "Grumpy Cat" and I completely agree with you that 'My angry cat's Christmas cheer', or 'Sad cat's Christmas cheer' does not constitute a trademark infringement. 

Thanks for your response to my question. That is helpful advice, but I am still concerned that even though I have explained my side of the story to their attorney and made it very clear that I had no intention of infringing on their client's trademark and it was not malicious or deliberate, in his letter, in which a summons has been sent along with other supporting documents, he states the following:

Any answer or other response to the Complaint should be filed with the Clerk of the Court, United States District Court for the Northern District of Illinois, Eastern Division, Chicago, Illinois within twenty-one (21) days from the day you receive the summons.
If no appearance or pleading is filed, the Court may render a judgment against the defendants.

I am not sure if I need to file a response to the Clerk of the Court mentioned above? If so, would you be able to assist with drafting such a response as I'm not sure if it would need to be done in a specific way with legal terms, etc.?
Furthermore, does the above-mentioned court have jurisdiction in South Africa anyway?

I'd greatly appreciate any further advice you can offer.

Thank you.

Posted by Att. Patrick on 05-05-2024 18:45:25

That court has absolutely no jurisdiction over you! Can you send me a copy of the summons? Out of interest.

PatrickLegalQuestions [at] outlook.com

Thanks for your response. I'll send it on shortly.

Posted by Att. Patrick on 05-05-2024 22:24:58

It looks like their application (motion) is against 250 different stores on redrubble and is limited only in so far as the stores target customers in the US. It is also a retraining order (an injunction) so if you've already closed down your store you shouldn't worry. It is also not a damages claim. Also, if they get an order, it can't actually be enforced against you directly in SA. Rather, it would be enforced against your website host in the US to force the closure of the store. Again, you shouldn't worry about that. My advice is just to ignore it.

Thank you so, so much, you've been incredibly helpful and I will sleep a lot easier! I greatly appreciate the time you've taken to engage and respond.