Right-of-Publicity Claims and Advertiser Sponsored User-Generated Content Campaigns

Knowing that engaging consumers is more valuable than bombarding them with banner and pop-up ads, online marketers are rushing to get Internet users to directly participate with their brands and are involving bloggers, UGC, social networking sites and other virtual communities to do so.

An initial area of concern for website providers, promotions operators and sponsors concerning UGC and user participation is the distinct possibility that the user will infringe third-party intellectual property (IP) or personal rights ' particularly copyright and an individual's right of publicity ' and that the sponsor may be subject to related claims.

While there are, depending on how an online UGC campaign operates, potential safe-harbor protections and immunities available to the sponsor pursuant to the Digital Millennium Copyright Act of 1998 (DMCA), 17 U.S.C. '512 (available online at http://1.usa.gov/vvSvKc, and the Communications Decency Act of 1996 (CDA), 47 U.S.C. '230 (available online at http://bit.ly/ucKA3h), the scope of DMCA and CDA protections for advertisers sponsoring UGC campaigns or websites hosting such a campaign is far from as broad as frequently assumed. The DMCA provides a potential safe harbor from financial liability of a service provider for copyright-infringing UGC posted to its service by a user, and will be addressed in more detail in a subsequent article.

This article concentrates on the scope of CDA immunity advertisers that operate UGC campaigns may enjoy, limitations of the CDA in protecting against these claims and ways to structure UGC campaigns to minimize the risk of liability arising from unauthorized use of individuals' name, likeness and other personal attributes possibly included in UGC submitted as part of a sponsored UGC campaign.

CDA Immunities and Limitations;
DMCA Safe Harbors

The CDA provides the possibility that a website or other online service hosting UGC, or an operator of a UGC campaign on a third-party website or service, may be immune from liability for certain claims (particularly tort claims such as defamation, libel and common-law negligence) arising from such UGC, and provides a bar to liability arising from good-faith efforts to restrict objectionable content. See, 47 U.S.C. '230(c)(1) and (2).

The CDA immunity for users and operators of websites that publish others' content has been shaped by court opinions, which initially treated it as a near absolute protection unless the claim was within the statute's enumerated carve-outs. More recently, some courts have been applying facts of various circumstances to explain when users and publishers are acting in ways that make them responsible for another's content they publish. These limitations are of two types:

• The nature of the claim; and
• The nature of the content.

Section 230(c)(1) and (e)(3)

Section 230(c)(1) of the CDA provides that: “[n]o provider or user of an interactive computer service (ICS) shall be treated as the publisher or speaker of any information provided by another information content provider” and expressly preempts any state law inconsistent with the provision. See, 47 U.S.C. '230(c)(1) and (e)(3).

Assuming the cause of action is not carved from the immunity by Section 230 itself (such as is the case with regard to intellectual property claims discussed in more detail below), a shield to liability for publishing the offending UGC should exist if:

• The defendant uses or provides an interactive computer service;
• The defendant is not itself an information content provider with respect to the disputed activity or objectionable content; and
• The plaintiff seeks to make the defendant responsible as a “publisher or speaker” of information originating with a third party.

Websites have been held to be an ICS under the CDA (see, e.g., Doe v. MySpace, 474 F.Supp.2d 843, 845 (W.D. Tex. 2007), affirmed by 528 F.3d 413 (5th Cir. 2008); Gentry v. eBay, Inc., 99 Cal. App. 4th 816, 830 (2002); and Schneider v. Amazon, 31 P.3d 37, 40 (Wash. App. 2001)).

Although it is not certain that an application (app) that interacts with a website would also be treated similarly to a website, under the reasoning of cases finding websites to be ICSs, apps that interact with popular online platforms like Facebook should also qualify as an ICS. Online activities as a publisher and a distributor, and by providers and users, have been found to qualify for the immunity, so long as such defendant is not the content originator (see, Zeran v. America Online, Inc., 129 F.3d 327, 333 (4th Cir. 1997), cert. denied, 524 U.S. 937, and Barrett v. Rosenthal, 40 Cal. 4th 33, 49 (2006)).

Entities' Own Blogs with Employee Contribution

A provider's or user's own content, including corporate blogs to which company employees contribute, do not qualify for the immunity, because the ICS is the content provider (see, e.g., 800-JR Cigar, Inc. v. GoTo.com, Inc., 437 F.Supp.2d 273 (D.N.J. 2006) (no immunity for operator's own activities benefiting its advertisers); and Anthony v. Yahoo, Inc., 421 F.Supp.2d 1257 (N.D. Cal. 2006) (fraudulently posting false user profiles to induce subscribers to a dating service was not third party content and thus immunity does not apply)).

Content Originator?

What publisher activities constitute those of a content originator has been the subject of many court decisions that help map the boundaries of what a UGC program operator may and may not do while still retaining immunity.

To qualify for CDA immunity for claims arising from UGC, an ICS must remain a mere content conduit and not itself an information content provider. The closer the ICS comes to directing or contributing to the creation of the content, the more likely it will be held responsible for the content (see, Fair Housing Council of San Fernando Valley v. Roommates.com, LLC, 489 F.3d 921 (9th Cir. 2007) (three-judge panel opinion), reversed in part, vacated in part and remanded in part, 521 F.3d 1157 521 F.3d 1157 (9th Cir. 2007 en banc) (by designing the system with pre-populated answers to illegal questions, “Roommates becomes much more than a passive transmitter of information provided by others; it becomes the developer, at least in part, of that information”); and MCW, Inc. v. Badbusinessbureau.com, LLC, 2004 U.S. Dist. LEXIS 6678 34 (N.D. Tex. 2004) (website was a content provider, in part, because it “actively encourage[ed] and instruct[ed] a consumer to gather specific detailed information” and post that information to the website. The defendant's website provided specific directions to users regarding the type of content to post, such as instructing users to take photos of the rip-off artist and his/her car with license-plate number)).

Courts have, however, refused to preclude the immunity merely because the ICS encouraged and promoted unfavorable statements that would be defamatory if untrue (see, Shiamili v. Real Estate Group, 68 A.D.3d 581 (N.Y. Sup. Ct. 2009)).

Content-Shaping Concerns

Operators also should be careful not to direct or shape user content so that it would infringe upon third-party rights. Where the line is drawn is factually driven, which means that a well-pled complaint may survive a motion to dismiss.

Such was the case in the highly publicized lawsuit between Quiznos and Subway over an online UGC contest where users were asked to create videos comparing Quiznos and Subway sandwiches, allegedly in a manner that encouraged false and disparaging statements and depictions, and shaped the content by giving detailed instructions and examples that suggested disparagement and false product claims. See, Doctor's Associates, Inc. v. QIP Holders, LLC, 2010 WL 669870 (D. Conn, Feb. 19, 2010).

The court denied Quiznos' motion to dismiss by indicating that the extent of Quiznos' alleged active involvement in the creation of the content was a factual inquiry that the plaintiff had the right to try to prove.

Losing CDA Immunity

Accordingly, the risk of losing immunity under the CDA increases as an operator interacts with the process of developing UGC in a way that inherently leads to an infringement or violation of law, such that the activities look more like co-participation than that of a mere publisher. Examples of these types of interactions may include:

• The sponsor inserting promotional content into the UGC (as opposed to giving the user sponsor content the user can elect to use or not);
• Editing UGC in a manner that changes it substantively;
• Directing the content, or prompting users with content-inducing inquiries or prepared content choices, the results or use of which are likely to lead to or encourage a violation of rights or law; or
• Collecting and processing ( e.g., sorting or matching) UGC in a manner that inherently creates an infringement or violation of law.

Terms-of-Use Safeguards

Accordingly, a sponsor should have terms of use that prohibit any violation of law or infringement of any third-party rights. These requirements should be clearly and conspicuously explained in simple, short notices where the user can create and post content, and the sponsor should do nothing to encourage or direct the user to do otherwise.

A sponsor should also limit its editorial function to selecting what content to post or remove, and to making edits that do not materially change the content. A somewhat vexing question is whether content tools that permit the importing of pictures or videos without confirming the consent of third parties that may be depicted is so naturally likely to lead to infringement that a court may treat the sponsor as a co-content provider. Employing technology such as facial-recognition software to restrict the posting of third-party images would likely protect against such a theory of liability, but is admittedly burdensome and restrictive and not customary in the industry. A more customary approach that seems reasonably tailored to show the tool is not designed to direct, shape or foster infringement is to post a notice such as:

I HAVE PERMISSION OF ALL THOSE DEPICTED IN OR THAT CONTRIBUTED TO MY CONTENT SUFFICIENT TO UPLOAD AND SHARE IT, ACCORDING TO THE TERMS OF USE.

It's a good idea, too, for this notice to be just above the submit button, and that a box must be checked for users to proceed. “TERMS OF USE” should link to that document, where more detailed venue and content rules are posted.

Also, as noted, by the terms of Section 230, its immunity is not absolute, and Section 230(e) explains its effect on other laws. First, it does not impair enforcement of “federal criminal statute[s].” 47 U.S.C. '230(e)(1). It also does not limit “the [federal] Electronic Communications Privacy Act ' or any similar State law.” 47 U.S.C. '230(e) (4). And it does not “prevent any State from enforcing any State law that is consistent with [Section 230],” but bars claims under “any State or local law that is inconsistent with [Section 230].” 47 U.S.C. '230(e)(3). Finally, Section 230 shall not “limit or expand any law pertaining to intellectual property.” 47 U.S.C. '230(e)(2).

No CDA Federal Immunities,
But DMCA Safe Harbors

It is clear that there is no CDA immunity for copyright, patent and trademark law. While the DMCA provides potential safe harbors for monetary damages in copyright-infringement claims resulting from UGC stored at the direction of users on a sponsor's sites or servers, there is simply no safe harbor or immunity for online publishers for patent and trademark claims.

What remains an open question, and the subject of conflicting judicial interpretations, is whether state intellectual property claims ' such as appropriation of rights of publicity ' are barred by Section 230.

In one interpretation, from the Ninth Circuit, the carve-out from immunity has been held to include only federal intellectual property law, and not state law claims, arguably sounding in intellectual property, such as unfair competition based on trademark infringement or rights of publicity. See, Perfect 10 v. CCBill LLC, 488 F.3d 1102 (9th Cir. 2007), cert. denied 128 S.Ct.709 (Dec. 3, 2007); see also, Carafano v. Metrosplash.com, Inc., 339 F.3d 1119, 1123 (9th Cir. 2003) (dismissing invasion-of-privacy and right of publicity claims by a famous actress against a dating website that hosted an anonymously submitted, malicious, false and defamatory putative dating profile of the actress).

A compelling rationale behind the Ninth Circuit's immunizing ICS providers and users from individual state-based intellectual property claims is that 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' goal of insulating ISCs from state laws that would hold them liable as the publisher or speaker of information provided by another content provider. See, Perfect 10, 488 F.3d at 1118. This approach seems consistent with Congress' findings and policy statements in Sections 230(a) and (b) that the provisions were intended to promote the development of online services.

Rejecting the Ninth Circuit's Approach

However, the First Circuit Court of Appeals, in dicta, and district courts in the First and Second Circuits, explicitly, have rejected the Ninth Circuit's approach, concluding that had Congress intended to limit the term “intellectual property” law to federal law, it would have said so (as it did regarding the exception for federal criminal law). (See, Atlantic Recording Corp. v. Project Playlist, Inc., 603 F.Supp.2d 690 (S.D. N.Y. 2009) (finding that state common law copyright and unfair competition claims for infringement of pre-1972 sound recordings were intellectual property claims for which the CDA immunity did not apply); Doe v. Friendfinder Network, Inc., 540 F.Supp.2d 288 (D.N.H. 2008) (rights of privacy claims are barred by CDA but right of publicity claims is an intellectual property claim not subject to the immunity); Universal Commc'n Sys., Inc. v. Lycos, Inc., 478 F.3d 413, 419 (1st Cir. 2007) (stating in dicta that a claim against a message-board operator that alleged a dilution of its trade name under state trademark law was based on intellectual property laws and not subject to CDA immunity but finding the plaintiff failed to plead a claim under the statutory elements); and Gucci America, Inc. v. Hall & Associates et al., 135 F.Supp.2d 409 (S.D.N.Y. 2001) (finding federal Lanham Act and state trademark and unfair competition claims are grounded in the law of intellectual property and thus Section 230 immunity does not apply to them)).

Federal, State IP Laws Addressed

Indeed, of the four subparts of Section 230(e) setting forth the four immunity exceptions, three expressly refer to either state or federal law, or both, and only the subpart referring to “any law[s] pertaining to intellectual property” does not, suggesting no such limitation was intended.

As one commentator has pointed out, to conclude that state intellectual property laws are subject to the immunity, one would have to treat the four subparts not as independent, but “would have to conclude that [S]ection 230(e)(3), which broadly preempts all inconsistent state and local laws, modifies [S]ection 230(e)(2), which provides that: '[n]othing in this section shall be construed to limit or expand any law pertaining to intellectual property.' However, there is nothing in the text or structure of the statute to suggest that subpart (e)(3) modifies subpart (e)(2).” (See, e-Commerce & Internet Law, 37.05[5] at 37-144 (West Publishing, 2011)).

Forged Online Profiles and
Associated Torts

In Friendfinder, a third party created a profile using plaintiff's likeness along with false details regarding her sexual proclivities on the defendant's sexually oriented dating site.

In one of the most comprehensive discussions rejecting the Ninth Circuit's approach, the court granted defendant's motion to dismiss in part, finding that CDA immunity applied to tort claims such as defamation, intentional infliction of emotional distress and invasion of privacy, but denied the motion as to right of publicity claims.

The court noted that the legislative history was silent on the issue of what Congress meant by “intellectual property” and relied on plain meaning to conclude that the “intellectual property” provision of the CDA ('230(e)(2)) includes state law claims (i.e., CDA immunity does not extend to state IP claims). It explicitly rejected the Ninth Circuit's holding in Perfect 10, as well as that court's underlying policy rationale, as not supported by canons of statutory interpretation. It also relied heavily on Professor McCarthy's Rights of Publicity treatise that characterizes the right of publicity as an intellectual property right and opines that Section 230 “does not apply to a claim for infringement of right to publicity by virtue of '230(e)(2).” Friendfinder, 540 F.Supp.2d at 302 (citing McCarthy, Rights of Publicity, '3.42).

The Ninth Circuit's 'More
Uniform' Federal Approach

The Ninth Circuit position certainly creates a more uniform federal approach and seems to further Congress' intent to foster the development of online publishing by shielding publishers from state law claims that would hold them liable as the publisher or speaker of information provided by another content provider. However, unless the Supreme Court resolves this split, sponsors of national UGC campaigns will remain at risk of claims from UGC that infringes rights of publicity or otherwise violates state laws that sound in concepts that can be characterized as intellectual property.

Conclusion

While the CDA may not provide immunity for right of publicity and other state IP-based claims outside the Ninth Circuit, and certainly does not protect against federal IP claims, it does provide an important bar against tort claims (e.g., defamation and privacy), and likely unfair business-practices claims (e.g., Cal. Bus & Prof. Code '17200). Sponsors should seek to develop and operate UGC programs in a manner designed to qualify for the scope of CDA immunity.

In addition, advertisers should consider structural approaches to UGC campaigns that may present defenses to right of publicity claims and other non-copyright intellectual property claims not covered by a potential DMCA safe harbor.

Part Two of this article, in the February issue, will explore more rights of publicity, privacy and other issues, including images, and the distinctions between editorial and commercial (advertising and promotions) speech in general and with
the use of images subject to rights of publicity.

Part One of a Two-Part Article

For several years, advertisers have sponsored contests and other online promotional campaigns that allow users to create and publish content (user-generated content or “UGC”) as a way to entice users to interact with the brand or with a community associated with the brand.

The combination of easy-to-use digital media tools to create content and the ability to publish and distribute that content via the Internet has led to a proliferation of UGC.

Knowing that engaging consumers is more valuable than bombarding them with banner and pop-up ads, online marketers are rushing to get Internet users to directly participate with their brands and are involving bloggers, UGC, social networking sites and other virtual communities to do so.

An initial area of concern for website providers, promotions operators and sponsors concerning UGC and user participation is the distinct possibility that the user will infringe third-party intellectual property (IP) or personal rights ' particularly copyright and an individual's right of publicity ' and that the sponsor may be subject to related claims.

While there are, depending on how an online UGC campaign operates, potential safe-harbor protections and immunities available to the sponsor pursuant to the Digital Millennium Copyright Act of 1998 (DMCA), 17 U.S.C. '512 (available online at http://1.usa.gov/vvSvKc, and the Communications Decency Act of 1996 (CDA), 47 U.S.C. '230 (available online at http://bit.ly/ucKA3h), the scope of DMCA and CDA protections for advertisers sponsoring UGC campaigns or websites hosting such a campaign is far from as broad as frequently assumed. The DMCA provides a potential safe harbor from financial liability of a service provider for copyright-infringing UGC posted to its service by a user, and will be addressed in more detail in a subsequent article.

This article concentrates on the scope of CDA immunity advertisers that operate UGC campaigns may enjoy, limitations of the CDA in protecting against these claims and ways to structure UGC campaigns to minimize the risk of liability arising from unauthorized use of individuals' name, likeness and other personal attributes possibly included in UGC submitted as part of a sponsored UGC campaign.

CDA Immunities and Limitations;
DMCA Safe Harbors

The CDA provides the possibility that a website or other online service hosting UGC, or an operator of a UGC campaign on a third-party website or service, may be immune from liability for certain claims (particularly tort claims such as defamation, libel and common-law negligence) arising from such UGC, and provides a bar to liability arising from good-faith efforts to restrict objectionable content. See, 47 U.S.C. '230(c)(1) and (2).

The CDA immunity for users and operators of websites that publish others' content has been shaped by court opinions, which initially treated it as a near absolute protection unless the claim was within the statute's enumerated carve-outs. More recently, some courts have been applying facts of various circumstances to explain when users and publishers are acting in ways that make them responsible for another's content they publish. These limitations are of two types:

• The nature of the claim; and
• The nature of the content.

Section 230(c)(1) and (e)(3)

Section 230(c)(1) of the CDA provides that: “[n]o provider or user of an interactive computer service (ICS) shall be treated as the publisher or speaker of any information provided by another information content provider” and expressly preempts any state law inconsistent with the provision. See, 47 U.S.C. '230(c)(1) and (e)(3).

Assuming the cause of action is not carved from the immunity by Section 230 itself (such as is the case with regard to intellectual property claims discussed in more detail below), a shield to liability for publishing the offending UGC should exist if:

• The defendant uses or provides an interactive computer service;
• The defendant is not itself an information content provider with respect to the disputed activity or objectionable content; and
• The plaintiff seeks to make the defendant responsible as a “publisher or speaker” of information originating with a third party.

Websites have been held to be an ICS under the CDA ( see , e.g. , Doe v. MySpace , 474 F.Supp.2d 843, 845 (W.D. Tex. 2007), affirmed by 528 F.3d 413 (5th Cir. 2008); Gentry v. eBay, Inc., 99 Cal. App. 4th 816, 830 (2002); and Schneider v. Amazon , 31 P.3d 37, 40 (Wash. App. 2001)).

Although it is not certain that an application (app) that interacts with a website would also be treated similarly to a website, under the reasoning of cases finding websites to be ICSs, apps that interact with popular online platforms like Facebook should also qualify as an ICS. Online activities as a publisher and a distributor, and by providers and users, have been found to qualify for the immunity, so long as such defendant is not the content originator ( see , Zeran v. America Online, Inc. , 129 F.3d 327, 333 (4th Cir. 1997), cert. denied , 524 U.S. 937, and Barrett v. Rosenthal , 40 Cal. 4th 33, 49 (2006)).

Entities' Own Blogs with Employee Contribution

A provider's or user's own content, including corporate blogs to which company employees contribute, do not qualify for the immunity, because the ICS is the content provider ( see , e.g. , 800-JR Cigar, Inc. v. GoTo.com, Inc. , 437 F.Supp.2d 273 (D.N.J. 2006) (no immunity for operator's own activities benefiting its advertisers); and Anthony v. Yahoo, Inc. , 421 F.Supp.2d 1257 (N.D. Cal. 2006) (fraudulently posting false user profiles to induce subscribers to a dating service was not third party content and thus immunity does not apply)).

Content Originator?

What publisher activities constitute those of a content originator has been the subject of many court decisions that help map the boundaries of what a UGC program operator may and may not do while still retaining immunity.

To qualify for CDA immunity for claims arising from UGC, an ICS must remain a mere content conduit and not itself an information content provider. The closer the ICS comes to directing or contributing to the creation of the content, the more likely it will be held responsible for the content ( see , Fair Housing Council of San Fernando Valley v. Roommates.com, LLC , 489 F.3d 921 (9th Cir. 2007) (three-judge panel opinion), reversed in part, vacated in part and remanded in part , 521 F.3d 1157 521 F.3d 1157 (9th Cir. 2007 en banc ) (by designing the system with pre-populated answers to illegal questions, “Roommates becomes much more than a passive transmitter of information provided by others; it becomes the developer, at least in part, of that information”); and MCW, Inc. v. Badbusinessbureau.com, LLC, 2004 U.S. Dist. LEXIS 6678 34 (N.D. Tex. 2004) (website was a content provider, in part, because it “actively encourage[ed] and instruct[ed] a consumer to gather specific detailed information” and post that information to the website. The defendant's website provided specific directions to users regarding the type of content to post, such as instructing users to take photos of the rip-off artist and his/her car with license-plate number)).

Courts have, however, refused to preclude the immunity merely because the ICS encouraged and promoted unfavorable statements that would be defamatory if untrue ( see , Shiamili v. Real Estate Group , 68 A.D.3d 581 (N.Y. Sup. Ct. 2009)).

Content-Shaping Concerns

Operators also should be careful not to direct or shape user content so that it would infringe upon third-party rights. Where the line is drawn is factually driven, which means that a well-pled complaint may survive a motion to dismiss.

Such was the case in the highly publicized lawsuit between Quiznos and Subway over an online UGC contest where users were asked to create videos comparing Quiznos and Subway sandwiches, allegedly in a manner that encouraged false and disparaging statements and depictions, and shaped the content by giving detailed instructions and examples that suggested disparagement and false product claims. See, Doctor's Associates, Inc. v. QIP Holders, LLC, 2010 WL 669870 (D. Conn, Feb. 19, 2010).

The court denied Quiznos' motion to dismiss by indicating that the extent of Quiznos' alleged active involvement in the creation of the content was a factual inquiry that the plaintiff had the right to try to prove.

Losing CDA Immunity

Accordingly, the risk of losing immunity under the CDA increases as an operator interacts with the process of developing UGC in a way that inherently leads to an infringement or violation of law, such that the activities look more like co-participation than that of a mere publisher. Examples of these types of interactions may include:

• The sponsor inserting promotional content into the UGC (as opposed to giving the user sponsor content the user can elect to use or not);
• Editing UGC in a manner that changes it substantively;
• Directing the content, or prompting users with content-inducing inquiries or prepared content choices, the results or use of which are likely to lead to or encourage a violation of rights or law; or
• Collecting and processing ( e.g., sorting or matching) UGC in a manner that inherently creates an infringement or violation of law.

Terms-of-Use Safeguards

Accordingly, a sponsor should have terms of use that prohibit any violation of law or infringement of any third-party rights. These requirements should be clearly and conspicuously explained in simple, short notices where the user can create and post content, and the sponsor should do nothing to encourage or direct the user to do otherwise.

A sponsor should also limit its editorial function to selecting what content to post or remove, and to making edits that do not materially change the content. A somewhat vexing question is whether content tools that permit the importing of pictures or videos without confirming the consent of third parties that may be depicted is so naturally likely to lead to infringement that a court may treat the sponsor as a co-content provider. Employing technology such as facial-recognition software to restrict the posting of third-party images would likely protect against such a theory of liability, but is admittedly burdensome and restrictive and not customary in the industry. A more customary approach that seems reasonably tailored to show the tool is not designed to direct, shape or foster infringement is to post a notice such as:

I HAVE PERMISSION OF ALL THOSE DEPICTED IN OR THAT CONTRIBUTED TO MY CONTENT SUFFICIENT TO UPLOAD AND SHARE IT, ACCORDING TO THE TERMS OF USE.

It's a good idea, too, for this notice to be just above the submit button, and that a box must be checked for users to proceed. “TERMS OF USE” should link to that document, where more detailed venue and content rules are posted.

Also, as noted, by the terms of Section 230, its immunity is not absolute, and Section 230(e) explains its effect on other laws. First, it does not impair enforcement of “federal criminal statute[s].” 47 U.S.C. '230(e)(1). It also does not limit “the [federal] Electronic Communications Privacy Act ' or any similar State law.” 47 U.S.C. '230(e) (4). And it does not “prevent any State from enforcing any State law that is consistent with [Section 230],” but bars claims under “any State or local law that is inconsistent with [Section 230].” 47 U.S.C. '230(e)(3). Finally, Section 230 shall not “limit or expand any law pertaining to intellectual property.” 47 U.S.C. '230(e)(2).

No CDA Federal Immunities,
But DMCA Safe Harbors

It is clear that there is no CDA immunity for copyright, patent and trademark law. While the DMCA provides potential safe harbors for monetary damages in copyright-infringement claims resulting from UGC stored at the direction of users on a sponsor's sites or servers, there is simply no safe harbor or immunity for online publishers for patent and trademark claims.

What remains an open question, and the subject of conflicting judicial interpretations, is whether state intellectual property claims ' such as appropriation of rights of publicity ' are barred by Section 230.

In one interpretation, from the Ninth Circuit, the carve-out from immunity has been held to include only federal intellectual property law, and not state law claims, arguably sounding in intellectual property, such as unfair competition based on trademark infringement or rights of publicity. See , Perfect 10 v. CCBill LLC , 488 F.3d 1102 (9th Cir. 2007), cert. denied 128 S.Ct.709 (Dec. 3, 2007); see also , Carafano v. Metrosplash.com, Inc. , 339 F.3d 1119, 1123 (9th Cir. 2003) (dismissing invasion-of-privacy and right of publicity claims by a famous actress against a dating website that hosted an anonymously submitted, malicious, false and defamatory putative dating profile of the actress).

A compelling rationale behind the Ninth Circuit's immunizing ICS providers and users from individual state-based intellectual property claims is that 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' goal of insulating ISCs from state laws that would hold them liable as the publisher or speaker of information provided by another content provider. See, Perfect 10, 488 F.3d at 1118. This approach seems consistent with Congress' findings and policy statements in Sections 230(a) and (b) that the provisions were intended to promote the development of online services.

Rejecting the Ninth Circuit's Approach

However, the First Circuit Court of Appeals, in dicta , and district courts in the First and Second Circuits, explicitly, have rejected the Ninth Circuit's approach, concluding that had Congress intended to limit the term “intellectual property” law to federal law, it would have said so (as it did regarding the exception for federal criminal law). ( See , Atlantic Recording Corp. v. Project Playlist, Inc. , 603 F.Supp.2d 690 (S.D. N.Y. 2009) (finding that state common law copyright and unfair competition claims for infringement of pre-1972 sound recordings were intellectual property claims for which the CDA immunity did not apply); Doe v. Friendfinder Network, Inc. , 540 F.Supp.2d 288 (D.N.H. 2008) (rights of privacy claims are barred by CDA but right of publicity claims is an intellectual property claim not subject to the immunity); Universal Commc'n Sys., Inc. v. Lycos, Inc. , 478 F.3d 413, 419 (1st Cir. 2007) (stating in dicta that a claim against a message-board operator that alleged a dilution of its trade name under state trademark law was based on intellectual property laws and not subject to CDA immunity but finding the plaintiff failed to plead a claim under the statutory elements); and Gucci America, Inc. v. Hall & Associates et al., 135 F.Supp.2d 409 (S.D.N.Y. 2001) (finding federal Lanham Act and state trademark and unfair competition claims are grounded in the law of intellectual property and thus Section 230 immunity does not apply to them)).

Federal, State IP Laws Addressed

Indeed, of the four subparts of Section 230(e) setting forth the four immunity exceptions, three expressly refer to either state or federal law, or both, and only the subpart referring to “any law[s] pertaining to intellectual property” does not, suggesting no such limitation was intended.

As one commentator has pointed out, to conclude that state intellectual property laws are subject to the immunity, one would have to treat the four subparts not as independent, but “would have to conclude that [S]ection 230(e)(3), which broadly preempts all inconsistent state and local laws, modifies [S]ection 230(e)(2), which provides that: '[n]othing in this section shall be construed to limit or expand any law pertaining to intellectual property.' However, there is nothing in the text or structure of the statute to suggest that subpart (e)(3) modifies subpart (e)(2).” (See, e-Commerce & Internet Law, 37.05[5] at 37-144 (West Publishing, 2011)).

Forged Online Profiles and
Associated Torts

In Friendfinder, a third party created a profile using plaintiff's likeness along with false details regarding her sexual proclivities on the defendant's sexually oriented dating site.

In one of the most comprehensive discussions rejecting the Ninth Circuit's approach, the court granted defendant's motion to dismiss in part, finding that CDA immunity applied to tort claims such as defamation, intentional infliction of emotional distress and invasion of privacy, but denied the motion as to right of publicity claims.

The court noted that the legislative history was silent on the issue of what Congress meant by “intellectual property” and relied on plain meaning to conclude that the “intellectual property” provision of the CDA ('230(e)(2)) includes state law claims (i.e., CDA immunity does not extend to state IP claims). It explicitly rejected the Ninth Circuit's holding in Perfect 10, as well as that court's underlying policy rationale, as not supported by canons of statutory interpretation. It also relied heavily on Professor McCarthy's Rights of Publicity treatise that characterizes the right of publicity as an intellectual property right and opines that Section 230 “does not apply to a claim for infringement of right to publicity by virtue of '230(e)(2).” Friendfinder, 540 F.Supp.2d at 302 (citing McCarthy, Rights of Publicity, '3.42).

The Ninth Circuit's 'More
Uniform' Federal Approach

The Ninth Circuit position certainly creates a more uniform federal approach and seems to further Congress' intent to foster the development of online publishing by shielding publishers from state law claims that would hold them liable as the publisher or speaker of information provided by another content provider. However, unless the Supreme Court resolves this split, sponsors of national UGC campaigns will remain at risk of claims from UGC that infringes rights of publicity or otherwise violates state laws that sound in concepts that can be characterized as intellectual property.

Conclusion

While the CDA may not provide immunity for right of publicity and other state IP-based claims outside the Ninth Circuit, and certainly does not protect against federal IP claims, it does provide an important bar against tort claims (e.g., defamation and privacy), and likely unfair business-practices claims (e.g., Cal. Bus & Prof. Code '17200). Sponsors should seek to develop and operate UGC programs in a manner designed to qualify for the scope of CDA immunity.

In addition, advertisers should consider structural approaches to UGC campaigns that may present defenses to right of publicity claims and other non-copyright intellectual property claims not covered by a potential DMCA safe harbor.

Part Two of this article, in the February issue, will explore more rights of publicity, privacy and other issues, including images, and the distinctions between editorial and commercial (advertising and promotions) speech in general and with
the use of images subject to rights of publicity.