Exam Review 2012 - Part Two

This is Part Two of a two-part review by Professor Leora Harpaz of the material covered in my Internet Law course during the Spring, 2012 semester.

Internet Law Spring 2012 Review - Part Two

III. Trademark Law and the Internet (Chapter 3)

A. Challenging Registrations of Domain Names Under the Lanham Act

1. The registration of domain names sometimes raises classic trademark issues such as whether there is a likelihood of confusion between a registered domain name and a registered trademark.
In other situations, the issues are much more uniquely related to the fact that the trademark conflict is between a trademark and a similar domain name such as in cases where the behavior at issue is cybersquatting or in cases where a First Amendment defense is raised because the domain name is expressive.

2. In trademark/domain name disputes, the trademark holder can raise claims under the traditional sections of the Lanham Act (Sections 32 and 43(a)) or can assert a cause of action based on the Trademark Dilution Act (Section 43(c)) or can sue under the Anticybersquatting Consumer Protection Act (ACPA) (Section 43(d)), the one part of the Lanham Act that specifically focuses on domain names. While all of these statutes can be used, and while some of them require overlapping showings (use in commerce is required under Sections 32, 43(a), and 43(c)), the differences among them may make one more suitable than another in certain factual situations.

3. In Panavision Int’l, L.P. v. Toeppen (p. 124), plaintiff sued under the Federal Trademark Dilution Act which allows the owner of a famous mark to assert a cause of action if a defendant’s “commercial use in commerce of a mark” causes dilution. The court found commercial use by defendant’s registering and offering to sell domain names to the trademark owners. The court refused to find commercial use based solely on registering a domain name. Dilution, as currently defined in the Dilution Act as amended, is limited to dilution by blurring or tarnishment. Blurring occurs when the mark has lost “its ability to serve as a unique identifier of the plaintiff’s product” as the result of the defendant’s use of the mark. “Tarnishment occurs when a famous mark is improperly associated with an inferior or offensive product or service.”

4. In Planned Parenthood v. Bucci (p. 133), the plaintiff asserted claims under Sections 32, 43(a), and 43(c). The court found a commercial use because the defendant used the website plannedparenthood.com to promote a book and to solicit funds as well as to harm plaintiff commercially. The court also found a likelihood of confusion applying the Polaroid factors as required under Sections 32 and 43(a). The likelihood of confusion analysis particularly focused on the fact that the trademark and the domain name were almost identical and there was evidence of actual confusion. The court rejected a parody defense which requires “two simultaneous –and contradictory– messages: that it is the original, but also that it is not the original and is intended as a parody.” The court found no simultaneous dual message. The court also rejected a First Amendment defense. The court concluded there could be First Amendment protection for a domain name only when it conveys a communicative message separate from the use of plaintiff’s trademark. The court found that defendant’s use of plannedparenthood.com did not contain a communicative message.

5. A similar First Amendment defense was raised in Taylor Building Corp. v. Benfield (p. 141) where the defendant registered the gripe site TaylorHomes-Ripoff.com. The court, in dismissing a Section 43(a) lawsuit, did not decide the case based on the First Amendment defense because it concluded, in the alternative, that plaintiff was not making commercial use of the trademark since the site was only used to publish complaints about the builder or, if the use was commercial because it was intended to discourage the builder’s potential customers from hiring Taylor Homes, there was no likelihood of confusion because no one would think Taylor Homes was using a domain name called TaylorHomes-Ripoff.com. Despite not reaching the First Amendment issue, it is likely a court would find that TaylorHomes-Ripoff.com had communicative content separate from the Taylor Homes trademark. Courts have generally permitted the registration of gripe site domain names in order to engage in cybergriping despite the fact that the domain name includes a trademark.

6. In People for the Ethical Treatment of Animals (PETA) v. Doughney (p. 144), after conceding there was a likelihood of confusion between plaintiff’s PETA trademark and Doughney’s peta.org domain name, the defendant relied on the parody defense. A parody is a “simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner.” As described in Paragraph 4 above, it must “convey two simultaneous--and contradictory--messages: that it is the original, but also that it is not the original and is instead a parody.” The court ruled against the defense because the defendant’s domain name itself, peta.org, did not convey the kind of second contradictory message needed for a parody, but was instead merely identical to plaintiff’s trademark. Defendant tried to argue that the second message appeared in the content of his website, but the court rejected this argument because it concluded that the two messages were not conveyed simultaneously. The second message wasn’t conveyed by the domain name, but only when a viewer visited the defendant’s website.

7. The plaintiff in People for the Ethical Treatment of Animals v. Doughney also brought suit under the Anticybersquatting Consumer Protection Act (ACPA). The ACPA was enacted to address the behavior of cybersquatters who register existing trademarks as domain names in situations where they believe they will be able profitably to sell the domain name to the trademark holder. The elements of an ACPA cause of action include showing that the defendant had a bad faith intent to profit from using the domain name, and that the domain name is identical or confusingly similar to a distinctive or famous mark. In PETA v. Doughney, the court found bad faith because the defendant had offered to sell the domain name to plaintiff and also found that PETA and peta.org were confusingly similar. The court rejected an argument that defendant was entitled to the protections of the safe harbor provision in the act which precludes a finding of bad faith if “the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful” (p. 132) because Doughney had no reasonable grounds to believe that his use of the mark was permissible. Another ACPA claim was considered in Weather Underground, Inc. v. NCS, Inc. (page 149). In that case, the defendant engaged in typosquatting, registering multiple domain names that are common misspellings of the plaintiff’s trademark. The court refused to grant summary judgment for the plaintiff because it was required to show that each of the 288 domain names at issue were confusingly similar to its trademarked names and because the court concluded there was a genuine dispute as to a material fact on whether the defendant acted with a bad faith intent to profit. Nevertheless, the court made clear that plaintiff was likely to succeed in showing bad faith, based on the nonexclusive list of 9 factors in the statute (pages 131-32), because defendant had registered multiple similar names (factor 8) and there were no reasonable grounds for its actions (good faith reasons such as a history of legitimate use of the domain name for the offering of goods or services - factor 3).

8. The ACPA also permits an in rem action to be brought. Under the in rem provisions, the property used as the basis for in rem jurisdiction is the disputed domain name and the domain name is viewed as located where either the domain name registrar or the registry is located. This basis for jurisdiction is only available if the plaintiff is not able to obtain in personam jurisdiction over the defendant or cannot locate the defendant (p. 132). Moreover, the only remedies available under the in rem provisions of the statute are an order for forfeiture or cancellation of the domain name or transfer of the domain name to the trademark owner. Because the registries for a number of popular higher level domain names (e.g., .com, .net, .org, and .edu) are located within the United States, the in rem provisions of the ACPA are useful in the vast majority of domain name disputes where the name at issued was registered by a foreign national through a foreign registrar.

9. In AOL, Inc. v. AOL.org (p. 152), the court applied the in rem jurisdiction provisions of the ACPA to a .org domain name originally registered by a South Korean entity (later transferred to an individual residing in South Korea) using a Chinese registrar (later transferred to a South Korean registrar). In rem jurisdiction in the Eastern District of Virginia was based on the fact that PIR, the .org domain name registry, was located there. The court concluded that the requirements for in rem jurisdiction under the act were satisfied because in personam jurisdiction over the registrant of the domain name was not available. In the case, a dispute arose over the power of the registry (as opposed to the registrar) to unilaterally transfer a domain name registration. AOL requested this relief after the foreign registrar refused to transfer the name to AOL. Despite the fact that the contract between the registry and ICANN (the Internet Corporation for Assigned Names and Numbers), a private not-for-profit corporation that administers the domain name system (under contract with the U.S. Department of Commerce), does not authorize the registry to execute such a transfer (although it is permitted to disable a domain name and render it inactive), the court granted the relief. It concluded that the ACPA authorizes such relief, it is within the technical ability of the registry, and the private contractual arrangements that ICANN makes with registrars and registries are not limits on the relief available under the statute. While the court rejected the argument in the AOL case, in some circumstances assertions of international comity principles may limit the availability of such relief.

B. The Uniform Dispute Resolution Policy

1. In addition to the provisions of the Lanham Act, domain name/trademark disputes can also be resolved using the Uniform Dispute Resolution Policy (UDRP) of ICANN, a system of online arbitration to resolve domain name disputes. That policy is incorporated by accredited domain name registrars into their domain name registration agreements. Therefore, domain name registrants are obligated to submit to the UDRP arbitration process if a complaint is filed against them by a trademark holder. The procedure is merely an option for trademark holders who are free to go to court instead. However, the procedure has advantages that make it a preferred choice for many trademark owners. The procedure is much cheaper and quicker to use than litigation. However, the UDRP limits the available remedy to the cancellation and transfer of the domain name’s registration. Moreover, it is not designed to litigate conflicts over who is the rightful owner of a trademark. Under the procedure, a registrant of a domain name must submit to an arbitration procedure before an ICANN approved dispute resolution provider. In this proceeding, the complainant must show (1) the domain name is identical or confusingly similar to the complainant’s trademark; (2) the respondent has no rights or legitimate interests in the domain name and (3) the domain name is being used in bad faith. Defenses under this procedure include the fact that the respondent is using the domain name in connection with offering goods or services; the respondent has been commonly known by the domain name, or the respondent is making a legitimate noncommercial or fair use of the domain name. These standards are similar, but not identical to the provisions of the ACPA. However, the UDRP, as an international procedure, does not incorporate the First Amendment into its standards. There is a possibility that a decision in favor of a trademark owner in such a case might conflict with the First Amendment rights of a domain name registrant based on the communicative content of the domain name of which the trademark is only a part.

2. If the domain name registrant loses in an UDRP arbitration, the domain name registrant has 10 days to file an action in a court with jurisdiction over the plaintiff or the jurisdiction where the registrar is located to halt the transfer of the domain name. Such a proceeding can be brought under the ACPA which provides registrants with a “cause of action to recover domain names lost in UDRP proceedings.” (p. 183). If the complainant trademark owner loses, the complainant can file a Lanham Act suit as long as there is no bar from the statute of limitations to enforce trademark rights. Since the UDRP arbitration procedure does not preclude subsequent litigation, and is not mandatory for trademark owners, the court in Dluhos v. Strasberg (p. 179) found that a dispute resolved under the UDRP is not entitled to the deferential standard of judicial review used under the Federal Arbitration Act. Instead, a federal court hearing a Lanham Act case brought by the losing party in a UDRP arbitration ignores the prior arbitration procedure and treats the dispute as though there was no previous adjudication of the issues raised.

C. Keyword Buying

1. A number of trademark disputes have been brought by trademark owners asserting that their trademarks were impermissibly used to trigger online advertisements by competitors. This practice is often referred to as keyword buying. In 1-800 Contacts, Inc. v. WhenU.com, Inc. (p. 183), 1-800 Contacts complained that WhenU was infringing its trademark by causing pop-up ads of Vision Direct, one of its competitors, to appear when a user of WhenU software accessed 1-800's website. The Second Circuit ordered the district court to dismiss the trademark infringement claims finding that the defendant did not “use” plaintiff’s trademark as required by the Lanham Act. This was based on the fact that (1) trademarks were used internally by the WhenU software in its SaveNow directory, but there was no visual display of trademarks, (2) WhenU clients were not able to purchase specified keywords (including trademarks) that would trigger their ads, and (3) the pop-up ads did not include 1-800's trademark and did not affect the appearance of 1-800's website. The court analogized the pop-ups appearing in close proximity to 1-800's website to “‘product placement’ in retail stores precisely to capitalize on the competitors’ name recognition,” (p. 188), a practice that did not violate the Lanham Act. While not deciding the question of whether the ads created a likelihood of confusion, the court commented that the claim was “incredulous.”

2. The Second Circuit revisited the issue of keywords in Rescuecom Corp. v. Google, Inc. (p. 190). In this case, the Second Circuit refused to dismiss the claims and allowed the case to continue. In reversing the district court’s decision that there was no use in commerce, the court distinguished its earlier decision in the 1-800 Contacts case on two grounds: the defendant used the plaintiff’s trademark as a keyword rather than its website address, and (2) Google recommends, “displays, offers, and sells Rescuecom’s mark to Google’s advertising customers.” The Second Circuit decision does not mean that Rescuecom will ultimately win the case because on remand the plaintiff will have to prove likelihood of confusion results from the display of competitor ads on a page of search results. The decision appears to be motivated by the fear that if a court were to find no use in commerce, Google would be free to display competitor ads in ways that would deceive the consumer. By contrast, if the case turns on likelihood of confusion rather than use in commerce, deceptive displays that create confusion will be discouraged.

IV. The First Amendment and Censorship of Internet Content (Chapter 4)

A. Sexually Explicit Speech

1. In First Amendment analysis, the key component is often the standard of review applied by a court to examine the constitutionality of a law. The standard may be determined in a number of different ways. One method focuses on the nature of the speech being regulated. Some categories of speech, including obscenity and child pornography, receive no First Amendment protection at all. If the government regulates such speech and only such speech, the government only needs to satisfy minimum scrutiny (the law must be rationally related to a legitimate governmental interest) because no First Amendment interests are at stake. A second method used to determine the standard of review focuses on the nature of the regulation. If the government is regulating speech based on its content then the standard will often be strict scrutiny (the law must be narrowly tailored (the least restrictive alternative) to accomplish a compelling governmental interest). By contrast, if the law regulates speech on a content-neutral basis (e.g., how loud it is, how large it is), the law will often be analyzed under intermediate scrutiny review (the law must be narrowly tailored (not substantially broader than it needs to be) to accomplish a substantial governmental interest). Because the key to a successful challenge or defense of a law typically depends on the standard of review selected, the parties make a significant effort to convince the court to apply the standard that will make it easiest for them to win (the government always wants the lowest level of scrutiny and the challenger always wants the highest level of scrutiny).

2. The first internet free speech case decided by the U.S. Supreme Court was Reno v. ACLU (page 197) in which the Court struck down key provisions of the Communications Decency Act (CDA). The statute made it a federal crime to transmit indecent internet content to a person under 18 as well as to display patently offensive internet content in a manner available to persons under 18. The statute created an affirmative defense for persons who restricted access to covered material by requiring proof of age such as a verified credit card or an adult identification number or code. In deciding how to analyze the statute, the Court considered various arguments put forward by the government for applying intermediate rather than strict scrutiny. It considered whether to treat the internet like radio and television broadcasting, a less protected means of communication meriting intermediate scrutiny review even if the law is content-based. The Court rejected this argument, finding that the internet is a fully protected means of communication like newspapers and magazines. It also considered the relevance of other cases in which regulations of sexually explicit speech were analyzed using intermediate scrutiny and rejected the relevance of those cases.

3. In Reno, the CDA was viewed as content-based because it only regulated a particular type of speech based on its content - patently offensive and indecent speech. The regulation singled out that type of speech because it was viewed as harmful to children who viewed the speech. Therefore, the regulation was aimed at the primary effect of the speech and not the secondary effect of the speech (unlike in Renton - p. 202) and there was no justification for using a less rigorous standard of review. Under the strict scrutiny test, the government must show it has a compelling interest and that it is protecting that interest through the use of the least restrictive alternative means (sometimes referred to as the requirement of narrow tailoring). The least restrictive means to achieving the compelling goal of protecting children would be a means that prevents child access while not infringing on adult access, but such a means is not usually available as a practical matter in the context of the internet (as in Reno). Another hallmark of a less restrictive alternative would be one that allowed adult access to indecent or patently offensive content during some hours rather than a 24-hour ban, a technique that is not possible given the nature of the internet.

4. Applying the strict scrutiny test, the Court struck down the challenged provisions of the CDA on the ground that they were not narrowly tailored. The Court found that key provisions of the statute describing the prohibited speech were too vague to be a least restrictive alternative and to serve as the basis for the imposition of criminal penalties. In addition, the affirmative defenses based on age verification were found to be unduly burdensome on adult users and too expensive for some website operators. The Court considered filtering software installed by parents on their computers to be an equally effective less restrictive alternative means of protecting children.

5. A subsequent version of the CDA, the Child Online Protection Act (COPA) (p. 219), has also come before the Supreme Court. The Court upheld the issuance of a preliminary injunction against the enforcement of the statute because it concluded that the district court had not abused its discretion in finding that the challengers were likely to succeed on the merits of their First Amendment claim. Despite efforts by Congress to enact a narrower statute than the CDA (COPA defined more carefully the speech it applied to as speech harmful to minors echoing the definition of unprotected obscenity to the extent possible, defined minors as those under 17 rather than those under 18, only applied to communication for commercial activities, and only applied to the web rather than other non-web aspects of the internet), the district court concluded that COPA was likely to be found to be constitutionally defective because it was not the least restrictive alternative means available to protect children. This conclusion was based on the fact that the government was unlikely to be able to show that equally effective less restrictive alternative means, specifically filtering software, were unavailable. On remand after the Supreme Court upheld the grant of the preliminary injunction, the district court struck down COPA on the merits (finding filtering software to be a less restrictive alternative means) and that decision was upheld by the Third Circuit. The Supreme Court then refused to review the case again.

6. As an alternative to direct censorship of internet content, the government regulates the content of the internet by requiring the installation of filtering software on computers that access the web in public schools and public libraries as a condition of receiving certain kinds of federal funds under the provisions of the Children’s Internet Protection Act (CIPA). Under CIPA, schools and public libraries are required to install technology protection measures that protect against visual depictions that are obscene, child pornography or harmful to minors. The first two categories of speech governed by CIPA are not protected by the First Amendment (See pp. 203-04 for the Supreme Court’s definition of obscenity). Therefore, the constitutional controversy surrounds filtering to block material that is harmful to minors, but protected as to adults. In United States v. American Library Association (p. 210), the Court upheld the constitutionality of CIPA on its face. A plurality opinion found that CIPA was not an unconstitutional exercise of the spending power since library collections were not public forums and public libraries could filter access to the internet without violating the First Amendment rights of their patrons even though filtering resulted in both overblocking and underblocking. Critical concurring opinions by Justices Kennedy and Breyer focused on the fact that the statute had a procedure whereby improperly blocked sites could be unblocked at the request of a library patron, thereby minimizing the burdens imposed on protected speech. The plurality and dissenting opinions differed on how to characterize internet filtering in comparison to books in a library. The plurality analogized filtering to book selection with the library only choosing to grant access to websites not blocked by the filter. Book selection decisions cannot be challenged under the First Amendment. The dissent disagreed and concluded that filtering was more like book removal, behavior that may violate the First Amendment rights of library patrons if done for impermissible reasons.

7. Another form of filtering or blocking was utilized in the Pennsylvania Internet Child Pornography Act. Under that statute, to enforce the ban on online child pornography (a form of speech unprotected by the First Amendment), the Pennsylvania Attorney General could obtain court orders notifying internet service providers of the existence of online child pornography accessible to Pennsylvania residents on a particular website and requiring that they disable access to the website. While the unprotected status of child pornography would seem to avoid First Amendment problems with the Act, problems arose in the implementation of the statute. Because of the methods used by ISPs to block or filter this material, including DNS filtering and IP filtering, numerous innocent websites were blocked (over one million) in addition to the 400 targeted by the attorney general. This occurred because the customers of many web-hosting services share the same IP address even though they operate unrelated websites. In Center for Democracy & Technology v. Pappert (p. 228), a federal district court struck down the Act as a violation of the First Amendment. The court concluded that ISPs acted reasonably in using filtering systems that vastly overblocked because no more accurate system was currently available. Since the Act blocked significant amounts of protected expression when implemented, the court applied the strict scrutiny test to evaluate its constitutionality. Applying that standard, the court found the statute to be unconstitutional in light of the severe burden it imposed on protected expression and the lack of evidence that the law had been effective in reducing child sexual abuse.

B. The First Amendment Applied to Other Types of Internet Speech

1. In Brown v. Entertainment Merchants Association (p. 239), the Supreme Court struck down a California law that banned the sale of violent video games to minors. A majority of the Court applied traditional free speech principles to the law even though it regulated a new medium of communication. The Court applied strict scrutiny to the content-based regulation of video games and concluded that the law was unconstitutional since there were less restrictive alternatives available (such as an industry rating system that was enforced by most video game sellers). The Court also concluded that the games were protected expression even as applied to minors and that violent speech was not analogous to sexually explicit speech because there was no long history of the treatment of violence as a free speech outlier as there was in the case of sexually explicit speech.

2. In Kowalski v. Berkeley County Schools (p. 245), the court applied the same test (the Tinker material disruption test) to online speech created away from school as it applies to speech that occurs at school. Kowalski and other cases like it raise the issue of whether physical location, as a limit on the regulatory authority of a public school, is relevant as applied to the internet. Like most courts, the Kowalski court concluded that the at school/away from school distinction is much less relevant as applied to online speech because online speech that relates to a school and its students can easily reach school and can cause as great a disruptive impact as speech that occurs at school. While applying Tinker to online speech, most courts have refused to allow public schools to rely on the exceptions to the Tinker rule that allow certain kinds of student speech to be regulated under less demanding standards.

3. In Ostergren v. Cuccinelli (p. 250), a whistleblower who posted copies of Virginia land records with Social Security Numbers (SSNs) that had not been redacted challenged the constitutionality of a law that prohibited the disclosure of such information. This case pitted privacy interests against the First Amendment right to publish true information contained in public records. In analyzing the state law as applied to the plaintiff’s website, the Fourth Circuit concluded it was a content-based ban on publication that could only be justified if it were a narrowly tailored means to accomplish a state interest of the highest order. While the state had such a state interest in protecting its residents against identity theft through the use of their SSNs, the court concluded the means were not narrowly tailored. Instead of punishing publication, the state could prevent the SSNs from being included in the publically available land records. It was the state’s failure to adequately redact the numbers that led to their publication. The court did not decide whether the First Amendment would protect publication in a situation where all SSNs had been removed from the online versions of the land records and the numbers were only available in the paper records in courthouses throughout the state.

4. The First Amendment protects the right to engage in anonymous communication. The Supreme Court has recognized such a right outside of the context of the internet and there is every reason to believe that such a right will be recognized for online speech as well (subject to technical limits that allow anonymity to be penetrated). However, the right to anonymity conflicts with the needs of the judicial process when an anonymous speaker is sued as a defendant as the result of online speech or is potentially needed as a witness based on online content. In these situations, the needs of the judicial process must be balanced against the First Amendment right to anonymous speech. To accomplish this balancing, courts have crafted a variety of different tests. Most of the tests impose a greater burden on a party interested in discovering the identity of a potential non-party witness by issuing a subpoena to an internet intermediary (a website operator, for example) and a lesser burden when a plaintiff seeks to discover the identity of the defendant. This distinction rests on the fact that a lawsuit can proceed without a witness, but can’t proceed without a defendant.

In Doe v. 2TheMart.com (p. 261), the court concluded that it should consider the following factors before ordering a non-party internet service provider to provide information concerning the identity of a subscriber who is a non-party witness to the underlying litigation: (1) whether the subpoena seeking the information was issued in good faith and not for any improper purpose, (2) whether the information sought relates to a core claim or defense, (3) whether the identifying information is directly and materially relevant to that claim or defense, and (4) whether information sufficient to establish or to disprove that claim or defense is unavailable from any other source.

In Solers, Inc. v. John Doe (p.267), in crafting a test to use when presented with a motion to quash (or to enforce) a subpoena which seeks the identity of an anonymous defendant, the court considered the following factors: (1) the plaintiff has adequately pleaded the elements of the cause of action, (2) reasonable efforts have been made to notify the anonymous defendant that the complaint has been filed and the subpoena has been served, (3) the defendant, after receiving notice, has had a reasonable time to file a motion to quash (even if the court must delay further proceedings to provide such reasonable time), (4) the plaintiff has proffered evidence creating a genuine issue of material fact on each element of the claim that is within its control, and
(5) the information sought is important to enable the plaintiff to proceed with the lawsuit. Unlike the test used in 2TheMart.com, the court in Solers did not require a showing that the plaintiff has exhausted alternative sources for learning the needed information.

5. In Universal City Studios v. Corley (p. 270), the court addressed the issue of whether computer code is speech protected by the First Amendment and concluded that it is speech. Despite the fact that such speech is not readable by everyone, the court analogized it to mathematical formulas and musical scores, both of which are considered to be speech. The issue arose in the context of a First Amendment challenge to provisions of the Digital Millennium Copyright Act that allowed a court to enjoin the online publication of decryption code that could be used to circumvent anti-copying protections on DVDs as well as linking to other websites that contained decryption programs. While recognizing that code is speech, the court applied intermediate rather than strict scrutiny because the statute was aimed at the functional rather than the communicative aspects of the code: the code issued commands to machines that would allow circumvention as well as providing technical information to readers. Under the intermediate scrutiny test, the injunction was upheld because it was viewed as the only means available to prevent “instantaneous worldwide distribution of a decryption code” with its functional ability to provide unauthorized access to copyrighted materials.

V. Intermediary Liability for Online Content (Chapter 5)

A. Secondary Liability for Defamatory Content

Defamation law has traditionally distinguished between publishers and distributors. The latter are only liable if they know or have reason to know of the defamation because they have no editorial control over the defamatory content. Distributors include libraries, news vendors and bookstores. Early defamation suits against internet service providers who made available content, but did not create the content at issue, raised the issue of the publisher/distributor distinction in the online context. Cubby, Inc. v. CompuServe, Inc. (p. 281) and Stratton Oakmont, Inc. v. Prodigy Service Co. (p. 284) utilized the traditional distinction between publishers and distributers that turned on the issue of editorial control and knowledge. These cases discouraged ISPs from editing online content they did not create to avoid publisher liability.

B. Section 230 of the Communications Decency Act of 1996

1. In reaction to the Stratton Oakmont decision which treated Prodigy as a publisher because it sought to exercise content control over its bulletin boards, Congress enacted Section 230 of the Communications Decency Act (pp. 289-91). Section 230 provides that interactive computer services (broadly defined to include “any information service, system, or access software provider that provides or enables computer access by multiple users to a computer server” and thereby extending beyond ISPs to websites that post content created by others) shall not be “treated as the publisher or speaker of any information created by another.” (p. 290). Under Section 230, interactive computer service providers are immune from liability as publishers for content they distribute but do not create, whatever knowledge they may have (Zeran v. AOL, Inc. (p. 291) - no liability even if ISP refuses to remove defamatory content after receiving notification of the content because Section 230 bars publisher liability as well as distributor liability which is a subset of publisher liability), and even if they exercise editorial control over the information content provider (Blumenthal v. Drudge - p. 297 - no liability for defamatory content even if content is provided under a contractual relationship with the content provider giving the interactive computer service editorial control over content, and even if the content is heavily promoted by the provider of the interactive computer service).

2. Section 230 extends its immunity beyond defamation claims to all claims in which the defendant is treated as a publisher (unless such a claim is specifically excluded by the statute as in the case of claims arising under intellectual property law). This can include many other torts such as negligent infliction of emotional distress, fraud, negligent misrepresentation, etc. It also includes breach of contract claims so long as the liability at issue is based on actions taken as a publisher. There are disagreements over whether a claim is based on treating the defendant as a publisher or not (Compare Schneider v. Amazon.com, Inc. (p. 302) (finding Section 230 applied to a breach of contract action based on a failure to remove defamatory content, an exercise of editorial discretion) with Barnes v. Yahoo!, Inc. (p. 320) (finding Section 230 did not apply to a cause of action under Section 90 of the Restatement (Second) of Contracts based on a failure to fulfill a promise to remove content).

3. Disagreements exist over when an interactive computer service provider is itself acting as an information content provider and not just as a service provider. Courts have rejected claims that retaining the right to edit content or having licensing rights in the content transforms a computer service provider into an information content provider. (Schneider v. Amazon.com, Inc. (p. 302)). Disagreements exist over how active a role an interactive computer service provider can play without becoming an information content provider. In Carafano v. Metrosplash.com, Inc. (p. 305), the Ninth Circuit found that an internet dating site did not provide content when it provided a series of drop down menus with numbers of possible choices to assist its members in creating a dating profile. While the dating service provided the choices, it was the members who created the content by choosing items from the drop down menus. By contrast, the Ninth Circuit distinguished Carafano in Fair Housing Council of San Fernando Valley v. Roommates.com, LLC (p. 308), a case asserting state and federal housing discrimination claims against a roommate matching website. The Ninth Circuit concluded that the website’s posing specific questions to subscribers during the registration process (sex, family status, and sexual orientation), requiring that subscribers answer such questions by making selections from drop-down menus to create a profile, and using its search engine and email notification system to provide listings based on these criteria were all instances in which the website became an information content provider.