Section 230 of the Communications Decency Act provides immunity against a wide variety of claims against on-line platforms that host third-party content. But the section has an explicit exception for “any law pertaining to intellectual property.” 47 U.S.C. § 230(e)(2).
While this exception clearly includes federal copyright, patent and trademark rights, it has been an open question whether it includes state-law intellectual property rights, including the “right of publicity.” A recent Third Circuit decision, Hepp v. Facebook (3d Cir. 2021), answered both questions in the affirmative, allowing the plaintiff’s right-of-publicity claim to proceed against Facebook. The Third Circuit joined the First Circuit and disagreed with the Ninth on these questions.
While internet platforms enjoy strong immunity from many types of claims, intellectual property is one glaring exception. The Third Circuit’s decision now widens that exception.
The Hepp decision will likely have a significant effect in on-line advertising. Individuals claiming violation of their right of publicity on-line now have a powerful weapon when complaining to internet platforms. In many cases, on-line platforms will to try to avoid liability and order the offending content taken down.
The CDA
Congress passed the CDA in 1996. This was largely in reaction to a New York decision named Stratton Oakmont, Inc. v. Prodigy Services Co. (N.Y.Sup.Ct. 1995) which held that because a hosting service had edited the content on its site, it was a “publisher” of the content, and hence liable for any defamation left on the site. To encourage sites to control content, particular pornography and other offensive content, Congress granted sites immunity from tort claims stemming from third party content on their sites. Since then, many sites have used this immunity to defend against many types of claims.
From the beginning, however, Congress made an exception for intellectual property claims. Trademark claims are the most common to use this exception; patent claims rarely are impacted by the CDA. As for copyright, in 1998, Congress passed the Digital Millennium Copyright Act, which adopts an entire regime to regulate liability by websites.
State Law IP Claims
But what about state-law intellectual property claims?
In Universal Communication Systems, Inc. v. Lycos, Inc., 478 F.3d 413 (1st Cir. 2007), the First Circuit considered a Florida-law trademark dilution claim. It held that this claim did fall within the intellectual property exception of Section 230. But it also held that the claim failed under Florida law.
In Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102 (9th Cir. 2007) the Ninth Circuit held that a state law right of publicity claim was within the exception. It reasoned that the CDA’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, only federal intellectual property is exempt.
Finally in Atlantic Recording Corp. v. Project Playlist, Inc., 603 F. Supp. 2d 690 (S.D.N.Y. 2009), the court considered federal and state-law copyright claims. (Prior to 1978, Congress permitted such claims, and they survive for claims from that period.) Noting that the provision does not single out federal intellectual property, and that other sections of the CDA do make such a distinction, the Southern District of New York held that state-law intellectual property claims are also subject to the exception.
The Hepp Decision
Karen Hepp is a professional newscaster who hosts FOX 29’s Good Day Philadelphia. She claims to have a sizable social media following, a considerable positive reputation, and hence her endorsement carries considerable economic worth.
In 2018, Hepp discovered that a photograph of her taken in a convenience store, without her knowledge, was making its way around the internet. The image was then used in two different advertisements. One was for a dating app named FirstMet, which advertised its services on Facebook using Hepp's image. The ad encouraged Facebook users to “meet and chat with single women near you.”
The second involved a post of the photo to an on-line forum; the Third Circuit affirmed dismissal of those claims for lack of jurisdiction.
On the claim against Facebook, Hepp brought claims under Pennsylvania law for violation of her right of publicity. The district court relying on the Ninth Circuit, dismissed the claims, holding that only federal intellectual property claims are exempt from CDA immunity.
But on appeal, a divided panel of the Third Circuit held that (1) the IP exception extends to state-law claims, since there is no explicit limitation of the exception to federal laws, which other parts of the CDA do mention explicitly; and (2) right of publicity is a form of intellectual property, since many law dictionaries include it as an example of IP laws.
Effects of Hepp Decision
While some First Amendment advocates have criticized the decision as impinging on First Amendment rights, this concern appears overblown. The right of publicity is a relatively narrow right, aimed at protecting the value of someone’s image, name and personality in commercial advertisements.
Where it will likely have a significant effect is in on-line advertising. Individuals claiming violation of their right of publicity on-line now have a powerful weapon when complaining to internet platforms.
While this exception clearly includes federal copyright, patent and trademark rights, it has been an open question whether it includes state-law intellectual property rights, including the “right of publicity.” A recent Third Circuit decision, Hepp v. Facebook (3d Cir. 2021), answered both questions in the affirmative, allowing the plaintiff’s right-of-publicity claim to proceed against Facebook. The Third Circuit joined the First Circuit and disagreed with the Ninth on these questions.
While internet platforms enjoy strong immunity from many types of claims, intellectual property is one glaring exception. The Third Circuit’s decision now widens that exception.
The Hepp decision will likely have a significant effect in on-line advertising. Individuals claiming violation of their right of publicity on-line now have a powerful weapon when complaining to internet platforms. In many cases, on-line platforms will to try to avoid liability and order the offending content taken down.
The CDA
Congress passed the CDA in 1996. This was largely in reaction to a New York decision named Stratton Oakmont, Inc. v. Prodigy Services Co. (N.Y.Sup.Ct. 1995) which held that because a hosting service had edited the content on its site, it was a “publisher” of the content, and hence liable for any defamation left on the site. To encourage sites to control content, particular pornography and other offensive content, Congress granted sites immunity from tort claims stemming from third party content on their sites. Since then, many sites have used this immunity to defend against many types of claims.
From the beginning, however, Congress made an exception for intellectual property claims. Trademark claims are the most common to use this exception; patent claims rarely are impacted by the CDA. As for copyright, in 1998, Congress passed the Digital Millennium Copyright Act, which adopts an entire regime to regulate liability by websites.
State Law IP Claims
But what about state-law intellectual property claims?
In Universal Communication Systems, Inc. v. Lycos, Inc., 478 F.3d 413 (1st Cir. 2007), the First Circuit considered a Florida-law trademark dilution claim. It held that this claim did fall within the intellectual property exception of Section 230. But it also held that the claim failed under Florida law.
In Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102 (9th Cir. 2007) the Ninth Circuit held that a state law right of publicity claim was within the exception. It reasoned that the CDA’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, only federal intellectual property is exempt.
Finally in Atlantic Recording Corp. v. Project Playlist, Inc., 603 F. Supp. 2d 690 (S.D.N.Y. 2009), the court considered federal and state-law copyright claims. (Prior to 1978, Congress permitted such claims, and they survive for claims from that period.) Noting that the provision does not single out federal intellectual property, and that other sections of the CDA do make such a distinction, the Southern District of New York held that state-law intellectual property claims are also subject to the exception.
The Hepp Decision
Karen Hepp is a professional newscaster who hosts FOX 29’s Good Day Philadelphia. She claims to have a sizable social media following, a considerable positive reputation, and hence her endorsement carries considerable economic worth.
In 2018, Hepp discovered that a photograph of her taken in a convenience store, without her knowledge, was making its way around the internet. The image was then used in two different advertisements. One was for a dating app named FirstMet, which advertised its services on Facebook using Hepp's image. The ad encouraged Facebook users to “meet and chat with single women near you.”
The second involved a post of the photo to an on-line forum; the Third Circuit affirmed dismissal of those claims for lack of jurisdiction.
On the claim against Facebook, Hepp brought claims under Pennsylvania law for violation of her right of publicity. The district court relying on the Ninth Circuit, dismissed the claims, holding that only federal intellectual property claims are exempt from CDA immunity.
But on appeal, a divided panel of the Third Circuit held that (1) the IP exception extends to state-law claims, since there is no explicit limitation of the exception to federal laws, which other parts of the CDA do mention explicitly; and (2) right of publicity is a form of intellectual property, since many law dictionaries include it as an example of IP laws.
Effects of Hepp Decision
While some First Amendment advocates have criticized the decision as impinging on First Amendment rights, this concern appears overblown. The right of publicity is a relatively narrow right, aimed at protecting the value of someone’s image, name and personality in commercial advertisements.
Where it will likely have a significant effect is in on-line advertising. Individuals claiming violation of their right of publicity on-line now have a powerful weapon when complaining to internet platforms.