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.