KAREN HEPP, Appellant in 20-2725 v. FACEBOOK; IMGUR INC; REDDIT INC; GIPHY INC, WGCZ S.R.O. Imgur Inc.; Reddit Inc., Appellants in 20-2885
Nos. 20-2725 & 2885
UNITED STATES COURT OF APPEALS FOR THE THIRD CIRCUIT
September 23, 2021
Before: HARDIMAN, PHIPPS, and COWEN, Circuit Judges.
PRECEDENTIAL. Argued on June 2, 2021.
Samuel Fineman [Argued]
Cohen Fineman
199 Marlton Pike East, Suite 4
Counsel for Karen Hepp
Joseph C. Gratz
Vera Ranieri [Argued]
Aditya V. Kamdar
Durie Tangri
217 Leidesdorff Street
San Francisco, CA 94111
Counsel for Imgur Inc. and Reddit, Inc.
Dennis L. Wilson
Kilpatrick Townsend & Stockton
1801 Century Park East, Suite 2300
Los Angeles California 90067
Tywanda Lord
Kilpatrick Townsend & Stockton
1100 Peachtree Street, Suite 2800
Atlanta, Georgia 30309
Barry L. Cohen
Royer Cooper Cohen Braunfeld
100 N. 18th Street, Suite 710
Philadelphia, Pennsylvania 19103
Craig S. Primis [Argued]
Kirkland & Ellis
1301 Pennsylvania Avenue, N.W.
Washington, DC 20004
Counsel for Facebook, Inc.
Michael T. Zeller [Argued]
Quinn Emanuel Urquhart & Sullivan
865 S. Figueroa St. 10th Floor
Los Angeles, California 90017
Samuel W. Silver
Bruce P. Merenstein
Schnader Harrison Segal & Lewis
1600 Market Street, Suite 3600
Philadelphia, PA 19103
Counsel for WGCZ SRO
Duncan Crabtree-Ireland
Danielle S. Van Lier
SAG-AFTRA
5757 Wilshire Blvd., 7th Floor
Los Angeles, CA 90036
Ira L. Gottlieb
Bush Gottlieb, A Law Corporation
801 North Brand Boulevard, Suite 950
Glendale, CA 91203-1260
Counsel for Amicus SAG-AFTRA, in support of Karen Hepp
Kit Walsh
Coryanne McSherry
Electronic Frontier Foundation
815 Eddy Street
San Francisco, CA 94109
Counsel for Amici Electronic Frontier Foundation, the Copia Institute, iFixit, Engine, and Center for Democracy and Technology, in support of Imgur, Inc., Reddit, Inc., Facebook, Giphy, Inc., and WGCZ SRO
OPINION OF THE COURT
HARDIMAN, Circuit Judge.
Section 230 of the Communications Decency Act of 1996 bars many claims against internet service providers. See
I
Appellant Karen Hepp has worked in the news industry her entire adult life. Presently, she hosts FOX 29‘s Good Day Philadelphia. As is often the case for television personalities, Hepp‘s professional success as a newscaster depends in part on her reputation and social media following. She has built an “excellent reputation as a moral and upstanding community leader” and has amassed a sizeable social media following. See App. 59-61. So Hepp‘s endorsement can be valuable. Naturally, that value depends on her ability to control the use of her likeness.
In 2018, Hepp was told by coworkers that her photograph was making its way around the internet. The image depicts Hepp in a convenience store, smiling in the center of the frame‘s foreground. But the photograph was taken without Hepp‘s knowledge or consent. She knows neither the convenience store‘s location nor how the image was posted online. And she never authorized the image to be used in online advertisements for erectile dysfunction and dating websites.
The first post—which was an advertisement to a dating app, FirstMet—appeared on Facebook, which is one of the world‘s largest social media companies. The advertisement used Hepp‘s image to promote its dating service. And it encouraged Facebook users to “meet and chat with single women near you.”
Second, a Reddit thread linked to an Imgur post of the photo. Reddit is an online forum that allows users to create communities organized around topics. Within each community, users can start conversations by making an initial post. Other users can note their approval by “upvoting” the post. See generally https://www.redditinc.com/; https://www.reddithelp.com/hc/en-us/categories/200073949-Reddit-101. Imgur is a photo sharing website where users share digital images. See generally https://imgurinc.com/. In this case, someone uploaded Hepp‘s image to Imgur. Then a Reddit user posted a link to the Imgur post. The Reddit post spurred indecent user commentary and was upvoted over one hundred times.
Hepp sued Facebook, Reddit, and Imgur. The complaint, as amended, alleges two state-law claims: one for violating Pennsylvania‘s right of publicity statute,
Hepp appealed. And Imgur and Reddit filed a joint cross-appeal to challenge personal jurisdiction.
II
The District Court, exercising diversity jurisdiction under
III
We begin with personal jurisdiction. Facebook conceded it was amenable to suit in the District Court. But Reddit and Imgur claimed the District Court lacked personal jurisdiction over them. We agree. Applying the Supreme Court‘s decision in Ford Motor Co. v. Montana Eighth Judicial District Court, 141 S. Ct. 1017 (2021), we hold the District Court did not have personal jurisdiction over Reddit or Imgur.
Personal jurisdiction can be general or specific. General jurisdiction extends to all claims against a defendant and exists where a company is “essentially at home.” Id. at 1024. Because none of the companies are at home in Pennsylvania, we turn to the Supreme Court‘s specific jurisdiction doctrine, which extends only to particular claims. Id.
There are two prongs to the specific jurisdiction analysis. First, there must be purposeful availment: minimum contacts with the forum state that show the defendant took a deliberate act reaching out to do business in that state. Id. at 1024-25. Second, the contacts must give rise to—or relate to—plaintiff‘s claims. Id. at 1025. Imgur and Reddit concede that the first prong is satisfied here. Oral Argument
For the contacts to satisfy the second prong, there must be “a strong ‘relationship among the defendant, the forum, and the litigation.‘” Id. at 1028 (quoting Helicopteros Nacionales de Colombia, S. A. v. Hall, 466 U.S. 408, 414 (1984)). Here, that connection is too weak.
Consider the strong connection in Ford Motor. That case involved products liability suits stemming from car accidents in Minnesota and Montana. Id. at 1022. The contacts between those states and the company were legion. By “every means imaginable” Ford urged state residents to buy the types of cars in the accidents. Id. at 1028. The company “systematically served a market in Montana and Minnesota for the very vehicles that the plaintiffs allege malfunctioned and injured them in those States.” Id. So there was the requisite strong relationship among the defendant, the forum, and the litigation. Id.
In contrast, Hepp‘s allegations focus on how Imgur and Reddit purposefully availed themselves of the Pennsylvania market. But those contacts do not relate to this litigation. Hepp alleges Imgur and Reddit targeted their advertising business to Pennsylvania. And she alleges Imgur has an online merchandise store that sells products to Pennsylvanians. Finally, she points to Reddit‘s premium membership business and an online community organized around Philadelphia. But none of these contacts forms a strong connection to the misappropriation of Hepp‘s likeness. Hepp did not allege the merchandise featured her photo. Nor did she allege Imgur and Reddit used her likeness to sell advertising. Finally, she did not claim the photo was taken, uploaded, or hosted in Pennsylvania.
In sum, the alleged contacts do not relate to misappropriation, and the alleged misappropriation does not relate to any of the contacts. Because Hepp failed to establish the strong connection present in Ford Motor, we hold the District Court lacked personal jurisdiction over Imgur and Reddit.1
IV
With Facebook as the only remaining party to this appeal, we consider whether it is immune under
A
Passed in 1996, Section 230 of the Communications Decency Act was intended to promote the internet. See
(1) TREATMENT OF PUBLISHER OR SPEAKER. No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.
(2) CIVIL LIABILITY. No provider or user of an interactive computer service shall be held liable on account of—
(A) any action ... to restrict access to ... objectionable [material]; or
(B) any action taken to enable ... the technical means to restrict access to material described in paragraph [A].
Lest the liability provisions in
This appeal turns on whether
B
1
In the twenty-five years since the Communications Decency Act was passed, there are precious few cases interpreting
Soon after the First Circuit announced its decision in Lycos, the Ninth Circuit went the other way in Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102 (9th Cir. 2007). There, a website operator alleged violations of federal law and a state right of publicity law. Id. at 1108. The district court dismissed the complaint and the Ninth Circuit affirmed, reasoning that federal intellectual property‘s scope was more established compared to state laws. Id. at 1118. And it explained the Act‘s policy goal—to insulate the internet from regulation—would be hindered if federal immunity varied based on state laws. Id. In the Ninth Circuit‘s view,
Another notable case is Atlantic Recording Corp. v. Project Playlist, Inc., 603 F. Supp. 2d 690 (S.D.N.Y. 2009). There, record companies brought copyright claims under both state and federal law. See id. at 694 & n.5. The district court found the statute‘s text was clear. Id. at 703. It emphasized that Congress specified whether local, state, or federal law applied four times in subsection (e): once discussing federal criminal law,
With those precedents in mind, we turn to the parties’ arguments.
2
In dismissing Hepp‘s amended complaint, the District Court adopted the Ninth Circuit‘s approach, holding that
Facebook‘s appeal to text and structure rightly urges us to read
Hepp counters that her claims arise under state law “pertaining to intellectual property,” so
3
In our view, Facebook‘s interpretation strays too far from the natural reading of
Facebook also points to the policy enacted as part of
Facebook‘s premise is right: Congress enacted a pro-free-market policy. But its desired conclusion does not necessarily follow. Section 230‘s policy goals do not erase state intellectual property rights as against internet service providers. Facebook errs by downplaying the role of property in markets. After all, state property laws—along with contract laws—enable “the resulting formation of effective markets.” Ford Motor, 141 S. Ct. at 1029. Because state property rights can facilitate market exchange, interpreting the
Third, Facebook offers policy arguments independent of the statute‘s text. According to Facebook, our reading would increase uncertainty about the precise contours of immunity in cases involving state intellectual property law. See Facebook Br. 29 (citing Perfect 10, 488 F.3d at 1119 n.5). But policy considerations cannot displace the text. For that reason, other courts have rejected such considerations, at least implicitly. In Lycos, the First Circuit decided the case on state law grounds because “Section 230 immunity does not apply.” Lycos, 478 F.3d at 423 n.7. And in Atlantic Recording, the district court took a similar approach. Well over a decade has passed since those cases were decided, yet neither Facebook nor its amici provide evidence that the rulings created the disarray they now predict.
Even if we considered policy outside the statute‘s text, it too could cut the other way. For example, if likeness interests are disregarded on the internet, the incentives to build an excellent commercial reputation for endorsements may diminish. Cf. Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 573 (1977) (explaining the economic theory underlying the right of publicity). That would cut against the statute‘s explicit policy objectives because information provided by promotional advertisements can enhance market efficiency and vibrancy. So these policy arguments do not carry the day for Facebook either.
The parties present a clear split of persuasive authority. Facebook and its amici offer arguments based on the statute‘s text and policy considerations. But there
C
Having held the
1
Facebook argues the right of publicity is rooted in privacy. But it acknowledges the right has been categorized as “both a ‘privacy right’ ... and a ‘property right‘.” Facebook Br. 24-25 (quotation omitted). Amici supporting Facebook take a different tack. They argue we should read “any law pertaining to intellectual property” to “embrace its traditional core“—exclusively federal copyright and patent law. EFF Br. 8 & n.5 (excluding trademarks). These amici also warn us of the “parade of horribles,” EFF Br. 19, that would ensue should we adopt Hepp‘s interpretation, especially limitations on free speech.
For her part, Hepp contends the right to publicity is an intellectual property right. See Hepp Br. 11. And she argues that she “has dedicated considerable time, effort and money into building her brand.” Hepp Br. 17. Her amicus adds that state courts have long recognized individuals have property interests in their personas. They cite a 1907 case involving the legendary Thomas Edison. SAG Br. 19. There, the New Jersey court confirmed Edison could enjoin the use of his picture as an endorsement for a product he did not sell. See Edison v. Edison Polyform Mfg. Co., 67 A. 392, 394 (N.J. Ch. 1907). The court reasoned there was no distinction between the intellectual property protections afforded a person‘s name and trademark-like protections for likenesses used on a label. See id.
2
With these arguments in mind, we return to the statute‘s text. “Nothing in [§ 230] shall be construed to limit or expand any law pertaining to intellectual property.”
For starters, Black‘s Law Dictionary defines “intellectual property” to include “publicity rights.” See Intellectual Property, BLACK‘S LAW DICTIONARY (11th ed. 2019); accord id. (7th ed. 1999). But not every dictionary does. For instance, Ballentine‘s defines the term as “those property rights which result from the physical manifestation of original thought.” Intellectual Property, BALLENTINE‘S LAW DICTIONARY (3d ed. 1968). Absent unanimity about the meaning of “intellectual property,” we survey dictionary definitions. See infra Appendices A and B. See generally ANTONIN SCALIA & BRYAN A. GARNER, READING LAW 417 (2012) (explaining “comparative weighing of dictionaries is often necessary“).
We begin by noting that “intellectual property” is best understood as a compound term—not a generic two-word phrase—because both legal and lay dictionaries treat it as such. See infra Appendices A and B. So we do not combine the definitions of “intellectual” and “property”
Second, legal dictionaries take precedence here. See infra Appendix A. Section 230(e) addresses the Act‘s impact on other laws. Because the term is used in a legal sense, the proper definition of “intellectual property” is the term‘s ordinary legal meaning. See SCALIA & GARNER, supra, at 73.
Our survey of legal dictionaries reveals “intellectual property” has a recognized meaning which includes the right of publicity. This conclusion follows from several observations.
First, two of the legal dictionaries explicitly list the right of publicity as an intellectual property right. See infra Appendix A (Black‘s and McCarthy‘s). These dictionaries are especially apt. Black‘s is renowned, and McCarthy‘s directly addresses the subject. A third legal dictionary, Bouvier‘s, provides more support. It sets forth a test that Pennsylvania‘s right of publicity statute satisfies because the statute grants people monopolies in their likenesses. The statute also provides for property-like relief, including the ability to obtain damages and injunctions against trespassers. Compare
Along with that explicit evidence, the legal definitions provide implicit support as well. For instance, one definition does not mention the right of publicity—but it includes trademark. See infra Appendix A (Dictionary of Modern Legal Usage). And that inclusion implies the right to publicity by analogy. Cf. Zacchini, 433 U.S. 562.
In Zacchini, the Supreme Court explained the right of publicity is an individual property right that is “closely analogous to ... patent and copyright” because it focuses “on the right of the individual to reap the reward of his endeavors and [has] little to do with protecting feelings or reputation.” Id. at 573. That focus also fosters market function by preventing the “unjust enrichment by the theft of goodwill.” See id. at 575-76. And just as the right is “closely analogous” to patent and copyright, so too for trademark. Like the right to publicity, trademarks secure commercial goodwill. USPTO v. Booking.com, 140 S. Ct. 2298, 2302 (2020). Trademarks also foster the marketplace because they protect consumers’ ability to distinguish between competitors. Id. So the right of publicity and trademark are close analogues.2
And this analogy has been recognized in the courts for over a century. For example, a New Jersey court in Edison analogized the right in one‘s likeness to trademark. 67 A. at 393-94. That same year, a federal court granted an injunction to stop the “deceptive use of the Emperor Franz Josef‘s name and portrait” because it falsely implied his endorsement. See Von Thodorovich v. Franz Josef Beneficial Ass ‘n, 154 F. 911, 913 (C.C.E.D. Pa. 1907). More recently, the Florida Supreme Court explained the harm caused by a right to publicity violation is that “it associates the individual‘s name or ... personality with something else.” Tyne v. Time Warner Ent. Co., 901 So. 2d 802, 806 (Fla. 2005) (cleaned up). Because trademark and the right to publicity are analogues, the legal definition including trademark also supports including the right of publicity as “intellectual property.”
Like the legal dictionaries, many lay dictionaries explicitly include trademark. See Appendix B. So they too favor including the right to publicity within “intellectual property.” It is true that a handful of definitions fail to mention trademark. See infra Appendix A (Ballentine‘s); see also infra Appendix B (American Heritage and Merriam Webster). But those three dictionaries are a distinct minority compared to the majority view that includes the right to publicity either explicitly or by analogy. And the statute‘s context favors adopting the majority view. Dictionary definitions tend to “state[] the core meaning of a term,” omitting the “periphery.” SCALIA & GARNER, supra, at 418. And here, statutory context clarifies we should include the periphery. Section 230(e)(2) uses the modifiers “any” and “pertaining to“—“any law pertaining to intellectual property.” So not only are core intellectual property laws included, but so are laws pertaining to the subject. See Ali v. Fed. Bureau of Prisons, 552 U.S. 214,
218-19 (2008) (“any”); cf. Morales v. Trans World Airlines, Inc., 504 U.S. 374, 383 (1992) (“relating to”). And not some of them—any of them. Thus the term‘s statutory context confirms our holding.
In conclusion, we hold that Hepp‘s statutory claim against Facebook arises out of a law pertaining to intellectual property. For that reason, the
D
We close by emphasizing the narrowness of our holding. First, it does not threaten free speech. Hepp‘s statutory claim against Facebook clarifies the point. She alleges her likeness was used to promote a dating service in an advertisement. And she claims that misappropriated the effort she spent to build a valuable reputation, so it could confuse consumers by suggesting she endorses the service. Again, the analogy to trademark is striking. Just as a counterfeit item can misappropriate a trademark owner‘s goodwill, so too might the unauthorized use of Hepp‘s image in the ad. Further, both misappropriations could create consumer confusion and undercut efficient incentives. In this way, trademark claims typically avoid violating free speech by addressing misleading commercial speech. See Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1018 (3d Cir. 2008). So too for Hepp‘s statutory claim against Facebook. Thus, Hepp‘s statutory claim against Facebook is about the commercial effect on her intellectual property, not about protected speech.
Second, our holding does not open the floodgates. Pennsylvania‘s statute is limited. For instance, it provides a right of publicity cause of action only for those whose valuable interest in their likeness “is developed through the investment of time, effort, and money.”
Third, having resolved the appeal on statutory grounds, we offer no opinion about the Pennsylvania common law claim. Facebook and Hepp briefed that issue in the District Court, but neither party focused on it here. So it is best left to the District Court on remand.
APPENDICES
A
- A category of intangible rights protecting commercially valuable products of the human intellect. • The category comprises primarily trademark, copyright, and patent rights, but also includes trade-secret rights, publicity rights, moral rights, and rights against unfair competition.
- A commercially valuable product of the human intellect, in a concrete or abstract form, such as a copyrightable work, a protectable trademark, a patentable invention, or a trade secret.
Intellectual Property, BLACK’S LAW DICTIONARY (7th ed. 1999).
- A category of intangible rights protecting commercially valuable products of the human intellect. • The category comprises primarily trademark, copyright, and patent rights, but also includes trade-secret rights, publicity rights, moral rights, and rights against unfair competition.....
- A commercially valuable product of the human intellect, in a concrete or abstract form, such as a copyrightable work, a protectable trademark, a patentable invention, or a trade secret.
Intellectual Property, id. (8th ed. 2004); id. (9th ed. 2009); id. (10th ed. 2014); id. (11th ed. 2019).
Those property rights which result from the physical manifestation of original thought.
Intellectual Property, BALLENTINE’S LAW DICTIONARY (3d ed. 1969).
Intellectual property comprises two subdivisions: industrial property and copyright. Industrial property includes patents, inventions, trademarks, and industrial designs. Copyrights are property rights in literary, musical, artistic, photographic, and film works as well as in maps and technical drawings.
Intellectual Property, DICTIONARY OF MODERN LEGAL USAGE (2d ed. 1995)
Protection under the law for interests in creations and inventions. Intellectual property is the whole set of intangible rights that authors, inventors, and other creators have in the items they write, invent, or create. To have intellectual property in a thing is to have an effective monopoly on its use, such that the property rights holder may enjoin or recover from others who infringe on the rights through unfair duplication or wrongful use. Intellectual property in anything is usually limited in time, although the lengths of time and manner of calculation vary dramatically among and within the categories.
Intellectual property is usually divided among three categories: copyright, patent, and trademark. In the United States, each is the province of federal regulation, as well as the common law. There is also a growing field of international law regulating intellectual property both as a field of international agreements
Intellectual Property, THE WOLTERS KLUWER BOUVIER LAW DICTIONARY (2012).
[patent—trademark—unfair competition—copyright—trade secret—moral rights] Certain creations of the human mind that are given the legal aspects of a property right. “Intellectual property” is an all-encompassing term now widely used to designate as a group all of the following fields of law: patent, trademark, unfair competition, copyright, trade secret, moral rights, and the right of publicity.
Intellectual Property, MCCARTHY’S DESK ENCYCLOPEDIA OF INTELLECTUAL PROPERTY (1991) (square brackets in the original).
B
- Any of various products of the intellect that have commercial value, including copyrighted property such as literary or artistic works, and ideational property, such as patents, business methods, and industrial processes.
- The set of rights protecting such works and property from unlawful infringement.
Intellectual Property, THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (5th ed. 2011).
A product of the intellect that has commercial value, including copyrighted property such as literary or artistic works, and ideational property, such as patents, appellations of origin, business methods, and industrial processes.
Intellectual Property, id. (4th ed. 2009)
Law. Property that results from original creative thought, as patents and trademarks.
Intellectual Property, RANDOM HOUSE WEBSTER’S SCHOOL AND OFFICE DICTIONARY (1999).
Property (as an idea, invention, or process) that derives from the work of the mind of intellect; also: an application, right, or registration relating to this.
Intellectual Property, MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (11th ed. 2003).
A general name for property (such as patents, trademarks, and copyright material) which is the product of invention or creativity, and which does not exist in a tangible, physical form.
Intellectual Property, OXFORD ENGLISH DICTIONARY (2d ed. 1989).
Property (such as patents, trademarks, and copyright material) which is the product of invention or creativity, and does not exist in a tangible, physical form.
Intellectual Property, id. (3d ed. 2010).
COWEN, Circuit Judge, concurring in part and dissenting in part.
I concur in Section III (and Footnote 1 to the extent it affirms the District Court‘s dismissal of the claims against WGCZ for lack of personal jurisdiction) of the majority opinion. However, I must respectfully dissent from Section IV of the opinion. I believe that the “intellectual property” exception or exclusion to immunity under
Initially, the majority indicates that there is a circuit split between the First and Ninth Circuits regarding the scope of
In Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102 (9th Cir. 2007), the Ninth Circuit did conclude that the intellectual property exception “includes only federal intellectual property.” (Majority Opinion at 12 (quoting Perfect 10, 488 F.3d at 1119).) The circuit court succinctly and persuasively explained why it construed “the term ‘intellectual property’ to mean ‘federal intellectual property’”:
The CDA does not contain an express definition of “intellectual property,” and there are many types of claims in both state and federal law which may—or may not—be characterized as “intellectual property” claims. While the scope of federal intellectual property law is relatively well-established, state laws protecting “intellectual property,” however defined, are by no means uniform. Such laws may bear various names, provide for varying causes of action and remedies, and have varying purposes and policy goals. Because material on a website may be viewed across the Internet, and thus in more than one state at a time, permitting the reach of any particular state‘s definition of intellectual property to dictate the contours of this federal immunity would be contrary to Congress‘s expressed goal of insulating the development of the Internet from the various state-law regimes. See
47 U.S.C. § 230(a) and(b) ; see also [Batzel v. Smith, 333 F.3d 1018, 1027 (9th Cir. 2003)] (noting that “courts construing§ 230 have recognized as critical in applying the statute the concern that lawsuits could threaten the ‘freedom of speech in the new and burgeoning Internet medium’” (quoting [Zeran v. Am. Online, Inc., 129 F.3d 327, 331 (4th Cir. 1997)]))). In the absence of a definition from Congress, we construe the term “intellectual property” to mean “federal intellectual property.”
Id. at 1118-19 (footnote omitted). Accordingly, the Perfect 10 court determined that the defendants “are eligible for CDA immunity for all of the state claims [i.e., unfair competition, false advertising, and right of publicity claims] raised” by the plaintiff. Id. at 1119.
The majority also states that the First Circuit “held
Claims based on intellectual property laws are not subject to
Section 230 immunity. See [§ 230(e)(2) ] (“Nothing in this section shall be construed to limited or expand any law pertaining to intellectual property.”); see also Gucci Am., Inc. v. Hall & Assocs., 135 F. Supp. 2d 409, 413 (S.D.N.Y. 2001) (finding that the “plain language ofSection 230(e)(2) precludes[the defendant’s] claim of immunity” from a claim for trademark infringement).
Universal Commc’n, 478 F.3d at 422-23. It then noted that, while the district court held that the claim was in effect a defamation claim and that defendants thereby would be shielded from the claim by CDA immunity, “[w]e reason somewhat differently, holding that even though
The Ninth Circuit itself addressed Universal Communication in disposing of the plaintiff‘s unsuccessful petition for rehearing. Initially, it noted that “neither party in that case raised the question of whether state law counts as ‘intellectual property’ for purposes of
We note that Universal Communication demonstrates the difficulties inherent in allowing state laws to count as intellectual property for CDA purposes. In that case, the district court struggled with the question of whether the “trademark dilution” claim brought under Florida Law counted as intellectual property for purposes of the CDA, and concluded that it was more like a defamation claim than a trademark claim. [Universal Commc’n, 478 F.3d at 423 n.7]. Rather than decide how to draw the line between defamation and trademark, the First Circuit held that “because of the serious First Amendment issues that would be raised if Lycos were found liable, defendant had not violated the Florida statute. Id. at 423.
The First Circuit was able to sidestep the question of what counted as intellectual property on First Amendment grounds. But we cannot do so here. States have any number of laws that could be characterized as intellectual property laws: trademark, unfair competition, dilution, right of publicity and trade defamation, to name just a few. Because such laws vary widely from state to state, no litigant will know if he is entitled to immunity for a state claim until a court decides the legal issue. And, of course, defendants that are otherwise entitled to CDA immunity will usually be subject to the law of numerous states. An entity otherwise entitled to
§ 230 immunity would thus be forced to bear the costs of litigation under a wide variety of state statutes that could arguably be classified as “intellectual property.” As a practical matter, inclusion of rights protected by state law within the “intellectual property” exemption would fatally undermine the broad grant of immunity provided by the CDA.
Id. at 1119 n.5. (See also id. at 12 (“Ultimately, the [First Circuit] held ‘that even though
Instead of simply applying its purported holding concerning the scope of
While there may be district court cases (like Atlantic Recording Corp. v. Project Playlist, Inc., 603 F. Supp. 2d 690 (S.D.N.Y. 2009)) that have applied the intellectual property exception to state law claims, we are the first circuit court to take such a step. The majority takes issue with Facebook‘s assertion that its reading would increase uncertainty about the precise contours of immunity in cases involving purported state intellectual property laws. However, the 2007 Perfect 10 decision was the only circuit court clearly on point, and it kept the proverbial door closed on a potential influx of disparate and downright confusing state law “intellectual property” claims that would be contrary to Congress‘s express goals in enacting
“Facebook‘s appeal to text and structure rightly urges us to read
The majority acknowledges that “the structural evidence [Facebook] cites cuts both ways.” (Majority Opinion at 14.) However, the codified findings and policies clearly tilt the balance in Facebook‘s favor. I believe that the more expansive interpretation would gut the immunity system established by Congress and undermine the policies and findings that Congress chose to codify in the statute itself.
The “Findings” and “Policy” explicitly set forth in
(a) Findings
The Congress finds the following:
(1) The rapidly developing array of Internet and other interactive computer services available to individual Americans represent an extraordinary advance in the availability of educational and informational resources to our citizens.
(2) These services offer users a great degree of control over the information that they receive,
(Amicus EFF‘s Brief at 17 (addressing
(3) The Internet and other interactive services offer a forum for a true diversity of political discourse, unique opportunities for cultural development, and myriad avenues for intellectual activity.
(4) The Internet and other interactive computer services have flourished, to the benefit of all Americans, with a minimum of government regulation.
(5) Increasingly Americans are relying on interactive media for a variety of political, educational, cultural, and entertainment services.
(b) Policy
It is the policy of the United States—
(1) to promote the continued development of the Internet and other interactive computer services and other interactive media;
(2) to preserve the vibrant and competitive free market that presently exists for the Internet and other interactive computer services, unfettered by Federal or State regulation;
(3) to encourage the development of technologies which maximize user control over what information is received by individuals, families, and schools who use the Internet and other interactive computer services;
(4) to remove disincentives for the development and utilization of blocking and filtering technologies that empower parents to restrict their children‘s access to objectionable or inappropriate online material; and (5) to ensure vigorous enforcement of Federal criminal laws to deter and punish trafficking in obscenity, stalking, and harassment by means of computer.
“The majority of federal circuits have interpreted the CDA to establish broad ‘federal immunity to any cause of action that would make service providers liable for information originating with a third-party user of the service.’” Perfect 10, 488 F.3d at 1118 (quoting Almeida, 456 F.3d at 1321 (quoting Zeran, 129 F.3d at 331)). In short, Congress—concerned about protecting and encouraging the freedom of expression in a new and important forum of speech—meant to protect and encourage such speech unfettered by the burden of intrusive governmental regulation in the form of civil litigation and liability. In one of the first cases to interpret
The application of
Facebook notes that “[a] trademark is a very unique type of property.” Pirone v. MacMillan, Inc., 894 F.2d 579, 581 (2d Cir. 1990). A trademark is defined by the Lanham Act as “any word, name, symbol, or device, or any combination thereof” used by a person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”4
“state laws protecting ‘intellectual property,’ however defined, are by no means uniform,” with such laws bearing various names (e.g., trademark, unfair competition, dilution, and right of publicity), legal elements, remedies, and purposes. Perfect 10, 488 F.3d at 1118-19 & n.5. Such confusion is only magnified by the fact that “material on a website may be viewed across the Internet, and thus in more than one state at a time,” and “defendants that are otherwise entitled to CDA immunity will usually be subject to the law of numerous states.” Id. Permitting litigation and liability under such a tangle of disparate state law schemes would threaten “the continued development of the Internet” as well as “the vibrant and competitive free market that presently exists for the Internet and other interactive computer services, unfettered by Federal or State regulation”—even though Congress found that the “Internet and other interactive services offer a forum for a true diversity of political discourse, unique opportunities for cultural development, and myriad avenues for intellectual activity” and that the Internet
“This web of inconsistent state laws is the very definition of the ‘fettering’ state regulation that Congress sought to avoid in enacting Section 230.”5 (Facebook‘s Brief at 25 (quoting
“The appearance of near-uniformity in the adoption of some version of the right of publicity belies the degree to which the exact contours of the right differ significantly from jurisdiction to jurisdiction.” Karyn A. Temple, U.S. Copyright Off., Authors, Attribution, and Integrity: Examining Moral Rights in the United States, at 115 (2019), https://wwww.copyright.gov/policy/moralrights/full-report.pdf (citing Joshua L. Simmons & Miranda D. Means, Split Personality: Constructing a Coherent Right of Publicity Statute, Landside, at 38 (May/June 2018), https://www.americanbar.org/groups/intellectual_property_law/publications/landside/2017-18/may-june/split-personality/)). For example, some states specifically define the aspects of a person‘s identity that may serve as the basis for the claim, see, e.g.,
These differences are not surprising given the confusion that exists regarding the specific basis of the right of publicity. “In enacting right of publicity statutes, commentators have noted that many states struggled to adopt a strong, consistent theory of why the right exists and what it should be designed to protect.” Temple, supra, at 115 n.652 (quoting Simmons & Means, supra, at 38). Amicus SAG-AFTRA acknowledges that the right of publicity “derived originally from laws protecting one‘s privacy.” (Amicus SAG-AFTRA‘s Brief at 18.) Especially when compared
Elec. Am., Inc., 989 F.2d 1512, 1514 (9th Cir. 1993) (Kozinski, J., dissenting from order rejecting suggestion for rehearing en banc) (“[I]t‘s now a tort for advertisers to remind the public of a celebrity. Not to use a celebrity‘s name, voice, signature or likeness; not to imply the celebrity endorses a product; but simply to evoke the celebrity‘s image in the public‘s mind. This Orwellian notion withdraws far more from the public domain than prudence and common sense allow. It conflicts with the Copyright Act and the Copyright Clause. It raises serious First Amendment problems.
The majority attempts to limit the scope and effect of its ruling. Accordingly, it contends that its holding neither threatens free speech nor opens the proverbial floodgates. “And we express no opinion as to whether other states’ rights of publicity qualify as intellectual property as a matter of federal law.” (Majority Opinion at 22.) The majority likewise offers no opinion about Hepp‘s Pennsylvania common law claim.
However, this decision—which it bears repeating is the first circuit court ruling to hold that the intellectual property exception applies to state “intellectual property” laws (specifically including at least one state‘s right of publicity statute) and in the process to reject the Ninth Circuit‘s holding in Perfect 10—does threaten to open the floodgates. Internet service providers now face the prospect that so troubled the Ninth Circuit—“Because such laws vary widely from state to state, no litigant will know if he is entitled to immunity for a state claim until a court decides the legal issue.” Perfect 10, 488 F.3d at 1119 n.5. In this case, Facebook does not even know whether Hepp‘s common law right of publicity claim falls under