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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

Communications Decency Act - Intellectual Property Law Exception - Internet Library of Law and Court Decisions - Updated May 29, 2008

Civil Action No. 07-cv-286 (D. N.H., March 27, 2008)

Court holds that the Communications Decency Act immunizes defendants from various non-intellectual property claims arising out of their making available on their adult social networking sites an anonymous profile authored by an unknown third party which plaintiff claims falsely appears to people who know her to be her own.  The Court holds that this immunity also covers non-intellectual property claims arising out of defendants reposting this profile on third party sites, making slight alterations to the profile as to the participant’s age, and using the profile in teasers and other advertisements for defendants’ site.  As a result, the Court dismissed claims plaintiff advanced for defamation, intentional infliction of emotional distress, intentional, reckless, negligent and/or willful and wanton conduct, and violations of the New Hampshire Consumer Protection Act, arising out of such alleged misconduct.

The Court held that the Communications Decency Act did not, however, immunize defendants from intellectual property claims plaintiff advanced, both under applicable federal and state laws, including right of publicity claims advanced under New Hampshire state law.   Plaintiff was accordingly allowed to proceed with claims that defendants, by including identifiable aspects of plaintiff’s persona in advertisements and ‘teasers’ in an effort to increase the profitability of their websites, violated her right to publicity.

The Court further held that plaintiff could proceed with Lanham Act false designation of origin and false advertising claims against the defendants.   The false advertising claim was based on the inclusion of the profile at issue in ‘teasers’ and other advertisements for defendants’ site.  These acts allegedly deceived consumers into registering for defendants’ services in the hope of interacting with plaintiff, and caused injury to her reputation as a result, including alleged lost employment opportunities.  The false designation of origin claims similarly arose out of defendants’ use of the profile at issue in marketing their sites, which falsely implied plaintiff’s affiliation with, or sponsorship and approval of, defendants’ site and service.

135 F.Supp.2d 409, 00 Civ. 549 (S.D.N.Y., March 19, 2001)

Court holds that neither the Communications Decency Act or the First Amendment immunize an Internet hosting company from potential liability under the Lanham Act for hosting the website of a third party which allegedly infringed plaintiff's trademark. As a result, the court denied defendant Mindspring's motion to dismiss, and allowed Gucci to proceed with its claim that, by hosting a third parties' site containing allegedly infringing materials, despite notice of the same, Mindspring was guilty of direct or contributory trademark infringement and false designation of origin in violation of the Lanham Act, as well as violations of state trademark and unfair competition statutes.

488 F.3d 1102, No. 04-57143 (9th Cir., March 29, 2007) cert. denied, 128 S.Ct. 709 (2007)

The Ninth Circuit allows Perfect 10 to pursue copyright infringement claims against defendants, who provide web hosting and credit card billing services, arising out of the unauthorized posting on the web by their third party customers of “adult” images in which Perfect 10 holds copyrights.  Questions of fact precluded a determination of whether defendants were immunized from monetary liability for such claims by the Digital Millennium Copyright Act (“DMCA”).  Such immunity extends only to service providers who “reasonably implement” a policy for terminating those of their customers that repeatedly infringe copyrights.  In considering this question, the Ninth Circuit held  courts should consider not only the manner in which the defendants responded to “take down” infringement notices sent by the plaintiff copyright holder, here Perfect 10, but also the manner in which they responded to similar notices from third party copyright holders.  Because the District Court failed to consider whether defendants terminated customers identified in such third party “take down” infringement notices, the Ninth Circuit could not determine whether defendants “reasonably implemented” a compliant DMCA policy, and thus whether they were entitled to DMCA immunity.  The case was accordingly remanded to the District Court for further consideration.

The Ninth Circuit held that defendants had no obligation to respond to the “take down” notices provided by Perfect 10, or take steps to prevent the infringing conduct alleged therein, due to Perfect 10’s failure to provide such notices under penalty of perjury.  Absent the sworn acknowledgement required under the DMCA that the complainant is both an authorized representative of the copyright owner, and has a good faith belief that the material at issue is unlicensed, the service provider has no obligation to act upon the notice. 

Nor, held the Ninth Circuit, were defendants obligated to take action against purported “red flag” sites defendants serviced, which included sites that purported without authorization to provide users with passwords to access plaintiff’s materials, or other websites bearing names such as “” or “”   The DMCA does not impose on service providers the obligation to conduct an affirmative investigation into the bona fides of such sites.  To qualify as a “red flag” site that imposes an obligation on a service provider to act, held the Ninth Circuit “it … need[s] to be apparent that the website instructed or enabled users to infringe another’s copyright.”

The Ninth Circuit allowed Perfect 10 to pursue direct copyright infringement claims against the defendants as a result of the posting of infringing images on  The court held that sufficient evidence of defendants’ direct involvement in the operation of that site was presented to survive a motion for summary judgment.

Finally, the Ninth Circuit held that the Communications Decency Act immunized defendants from the unfair competition, false advertising and right of publicity claims advanced by Perfect 10.

Quick Hits

Thais Cardoso Almeida v., Inc.
456 F.3d 1316, No. 04-15341 (11th Cir., July 18, 2006).

Eleventh Circuit holds that’s display of a book cover that contains an unauthorized photograph of plaintiff on a product detail webpage used to promote’s sale of the book is not a commercial use of plaintiff’s image under Florida’s right of publicity statute – Fla. Stat. 540.08 - and hence is not actionable thereunder.   As such, the Eleventh Circuit affirmed, on different grounds, the District Court’s grant of summary judgment to, and dismissed plaintiff’s statutory right of publicity claim arising out of such unauthorized display.  The Court’s decision was grounded on its determination that, to be actionable under Section 540.08, plaintiff’s image must be used to ‘directly promote’ the sale of a product.  Because’s use of the book cover containing plaintiff’s image was ‘merely incidental to, and customary for, the business of internet book sales’ it was not an actionable commercial use of that image within the meaning of the statute.   Said the Court:

Amazon provides its online customers with a searchable book database with links to product detail pages for each book in its database.  Each product detail page provides the book’s cover image, the publisher’s description of the book, and in many instances editorial and customer content.  From the product detail page, customers may link to an order placement page, where they may complete their purchase and specify the shipping method.  In this manner, Amazon’s role as an internet bookseller closely parallels that of a traditional bookseller.  Because internet customers are unable to browse through shelves of books and observe the actual book cover photos and publisher content, Amazon replicates the bookstore experience by providing its customers with online cover images and publisher book descriptions. …

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[W]e find that, as a matter of business practice, Amazon’s use of book cover images closely simulates a customer’s experience browsing book covers in a traditional book store.  Thus, it is clear that Amazon’s use of book cover images is not an endorsement or promotion of any product or service, but is merely incidental to, and customary for, the business of internet book sales. …

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Under the allegations of Almeida’s complaint, we discern no set of facts by which an internet retailer such as Amazon, which functions as the internet equivalent to a traditional bookseller, would be liable for displaying content that is incidental to book sales, such as providing customers with access to a book’s cover image and publisher’s description of the book’s content.  Accordingly, we affirm the district court’s grant of summary judgment as to Amazon’s right of publicity claim, but we do so on the ground that Amazon did not use Almeida’s image for the purpose of directly promoting a product or service in violation of section 540.08

The Court spent much of its opinion discussing, without deciding, whether the Communications Decency Act barred plaintiff from pursuing the instant right of publicity claim against Amazon.  More particularly, the Court grappled with the question of whether the statute’s ‘intellectual property law’ exception, found in Section 230(e)(2), permitted plaintiff to pursue a right of publicity claim on the ground that such was in fact an intellectual property claim within the meaning of the statute.  This section provides that “nothing in [section 230 of the CDA] shall be construed to limit or expand any law pertaining to intellectual property.”  Because the Court ultimately found that plaintiff could not sustain her right of publicity claim on the merits, it did not reach this question.

Finally, the Eleventh Circuit affirmed the dismissal of plaintiff’s civil theft claim, finding that plaintiff had failed to submit evidence sufficient to establish that Amazon acted with the requisite ‘felonious intent’ when it purportedly misappropriate plaintiff’s property – namely her image – for its own use to promote its sale of books.  The Court held that there was no evidence that Amazon was aware when it posted the book cover in question on its website that the publisher was not authorized to use plaintiff’s image on the book’s cover.  When plaintiff contacted Amazon and so informed it, Amazon promptly removed the book cover from its site.

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