Chubby Checker TM Claims Survive But State Law Claims Preempted By CDA

Evans et al. v. Hewlett Packard Co. et al., No. 3:13-cv-02477-WHA (N.D. Cal. filed 08/15/13) (Doc. 67).

Plaintiff is the artist known as "Chubby Checker" and various entities that own related trademarks.  This case concerns a software application called “The Chubby Checker” that is offered for sale/download on defendants' web-based store.  The app purports to estimate the size of a man’s genitals based on his shoe size.

The Court held that Plaintiff stated a claim for federal and common law trademark infringement.  The crux of defendants’ argument was that the complaint only attempts to plead claims for contributory infringement and not for direct infringement. To be liable for contributory infringement, defendants argue that they must have had actual knowledge of the infringement and yet continued to sell the app. Defendants urge that the complaint fails to allege either that defendants knew of the infringement or that defendants continued to sell the app after receiving plaintiffs’ cease-and-desist letter.  However, the Court disagreed, finding: "Construed favorably to the plaintiffs, these allegations are sufficient to permit an inference that defendants knew, or could have reasonably deduced that the owner of the Chubby Checker mark would never have consented to license the mark for such a vulgar purpose."

However, the Court held that Plaintifffs' state-law claims — violation of Pennsylvania’s unfair competition and trademark laws and Pennsylvania’s and California’s right of publicity statutes — were preempted by Section 230 of the Communications and Decency Act (47 U.S.C. 230).  The Court found that defendants were internet service providers that host third-party content and not content providers, and defendants therefore enjoyed the broad immunity provided under Section 230 of the CDA from all state claims relating to publishing content created by third parties.

CLE "Does The DMCA Apply To Pre-1972 Sound Recordings"

This afternoon, David Rabinowitz and I co-presented a CLE entitled "Why The Internet Distribution of Pre-1972 Sound Recordings Is Different From Everything Else In Copyright Law -or- Does The DMCA Apply To Pre-1972 Sound Recordings."  Topics included a brief history of copyright in sound recordings, the scope of common law copyright protection, federal preemption of common law copyright (except for pre-1972 recordings), related claims of unfair competition, the DMCA safe-harbor, conflicting case law on whether the DMCA safe-harbor applies to pre-1972 recordings, and conflicting decisions on whether there is immunity for service providers under the Communications Decency Act.  Thank you to those who attended.

Pre-1972 Recordings Subject To DMCA

UMG Recordings, Inc. v. Escape Media Group, Inc., No. 100152/2010 (Sup. Ct., N.Y. Co. July 10, 2012) (Kapnick, J.S.C.).

New York State Court holds that the "safe harbor" provisions of the DMCA extend to common law copyright claims relating to pre-1972 recordings.

Plaintiff moved to dismiss defendant's "safe harbor" affirmative defense under the DMCA [17 U.S.C. 512(c)(1)].  Section 301(c) of the Copyright Act makes clear that the copyrights of pre-1972 recordings are not protected by the federal Copyright Act, and the Court analyzed whether the DMCA may provide a defense or "safe harbor" to internet service providers facing New York State common law copyright infringement claims (as opposed to claims under the federal act).  The Court observed that only one court has considered the issue (Capitol Records, Inc. v. MP3Tunes, 821 F. Supp.2d 627, 640 (SDNY 2011), and concluded that "there is no indication in the text of the DMCA that Congress intended to limit the reach of the safe harbors provided by the statute to just post-1972 recordings."  In response to a report by the Register of Copyrights that "it is for the Courts to interpret the applicable statute and decide the issues raise by this motion.  This Court is not attempting to extend the Copyright Act to pre-1972 recordings, but, nonetheless, does find, based on the relevant language of the statutes...that the safe harbor provisions codified by section 512(c)(1) of the DMCA is applicable to pre-1972 recordings."  Accordingly, plaintiff's motion to dismiss the DMCA affirmative defense was denied.

However, the Court did dismiss defendant's affirmative defense based on the Communications Decency Act of 1996 (the "CDA") [47 U.S.C. 230].  Lastly, the Court dismissed defendant's counter-claim for violation of a New York State anti-trust statute, the "Donnelly Act" (NY General Business Law 340), but denied plaintiff's motion to dismiss the counter-claims for tortious interference with contract and business relations.