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E-Commerce News
No CDA Immunity for Right of Publicity Claim; Parody Defense Defeats Wal-Mart Claim
June 10, 2008
No CDA Immunity for Right of Publicity Claim
A defendant who allegedly violated a plaintiff's right of publicity cannot invoke the immunity provided by Section 230 of the Commmunications Decency Act. A United State Distrcit Court recently issued that ruling, because intellectual property claims are not subject to Section 230. The court decided that the intellectual property exclusion applies to IP claims arising under state law, as well as under federal law. This ruling is inconsistent with findings from other courts, which have limited the IP exclusion to IP claims arising under federal law.
The case arose when an anonymous party created a page on Friendfinder, an adult-themed Web site, and posted plaintiff's biographical data and a nude photo, purportedly of the plaintiff.
The plaintiff sued Friendfinder for invasion of it's right of publicity, defamation, intentional infliction of emotional distress, and other state law claims. Friendfinder convinced the court to dismiss all of the claims, other than the right of publicity claim, based on Section 230 immunity.
Section 230 stipulates that "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." It also prohibits claims brought under any inconsistent state or federal law. But Section 230 provides that it should "not be construed to limit or expand any law pertaining to intellectual property."
A right of publicity claim prohibts one from using the likeness of another for commerical gain. In the court's view, such a claim is an intellectual property claim. As such, the court found that the claim was not subject to Section 230 immunity.
Friendfinder urged the court to adopt a ruling from a Ninth Circuit case that had held that the IP exclusion applied only to claims arising under federal law. These would be trademark, copyright and patent law claims. There is no federal law establishing a right of publicity.
The court here, however, disagreed with the Ninth Circuit. It found that "[T]he language of [Section 230] does not suggest a limitation to federal intellectual property law, but states simply that 'nothing in this section shall be construed to limit or expand any law relating to intellectual property.' " The court also noted that, had Congress intended to differentiate between state and federal intellectual property laws, it could have used the word "federal" in that section of the statute.
This holding highlights the fact that, occasionally, what Congress doesn't say is as important as what it says!
Parody Defense Defeats Wal-Mart Claim
A Federal court sitting in Georgia recently ruled that Wal- Mart could not prevail in a trademark suit against a t-shirt seller who sold t-shirts and other products bearing anti-Wal-Mart slogans. The court found that the slogans were protected parody and that the products did not dilute Wal-Mart's trademark because their primary purpose was to spread a political message, rather than achieve commerical gain.
The defendant, Smith, was no fan of the retailing giant. His shirts contained messages such as "WAL-OCAUST," "WAL-QAEDA," and "Freedom-Haters ALWAYS" in a font style that Wal-Mart typically used. He also registered domain names which linked to his products, including www.walqaeda.com, www.wal-qaeda.com, and www.walocaust.com.
To prevail in its trademark suit, Wal-Mart would need to show that Smith's messages were likely to confuse buyers about the products' source, affiliation, or sponsorship. Where the infringing mark is deemed a parody, there is no such confusion. Here, the court noted that Smith's use of the Wal-Mart designs did not evoke the "idealized image" of Wal-Mart. They mocked that image by referring to terrorism and the Holocaust. As such the designs qualified as parody.
The court also noted a somewhat ironic truth --- while it is normally true that the stronger the mark, the more protectition is afforded, in parody cases the mark's strength may limit the likelihood of confusion. As the court noted, "The fact that the real Wal-Mart name and marks are strong and recognizable makes it unlikely that a parody--particularly one that calls to mind the genocide of millions of people, another that evokes the name of a notorious terrorist organization, or even one that simply refers to 'Freedom Haters'--will be confused with Wal-Mart's real products." In the court's view, no rational consumer would expect Wal-Mart to associate those concepts with its own marks. As a result, the court granted summary judgment to Smith on Wal-Mart's claims of trademark infringement, unfair business competition, cybersquatting, and deceptive trade practices.
Wal-Mart also contended that Smith's products diluted the Wal-Mart mark. A dilution claim arises when a mark is used in a context likely to evoke unflatttering thoughts about the owner's product. But a dilution claim is not available against speech protected by The First Amendment. Parody, when used in a manner that does something more than propose a commercial transaction, is protected speech.
Here, the court held that Smith's products were primarily intended to express his convictions and were noncommercial speech, immune from Wal-Mart's dilution claims.
I wonder if the Founding Fathers ever imagined the variety of situations where courts would apply the First Amendment. I'm sure they never envisioned anything like Wal-Mart.
This Newsletter is a periodic publication of Graydon Head & Ritchey LLP and should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents are intended for general information purposes only, and you are urged to consult your own advisor concerning your situation and any specific legal question you may have.