The Trademark “Twist”

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chubby conversion.jpgJudge Alsup out of the Northern District of California recently issued a decision relating to HP’s App Catalogue’s (its online store) sale of an app called “Chubby Checker,” an app that estimates the size of a male’s anatomy (yes, it is a “vulgar pun,” as the court noted).   The artist known as Chubby Checker was not amused, and sued HP and Palm (not the app maker) for federal and state trademark infringement and right of publicity violations under various state laws.  HP and Palm moved to dismiss the complaint for failure to state a claim of contributory liability and because the Communications Decency Act (CDA) barred the plaintiff’s state law claims.

HP and Palm successfully argued that the state law claims, including the right of publicity claims, were barred by the CDA, which states that “[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider,” and expressly preempts any state law to the contrary. 47 U.S.C. 230(c)(1), (e)(3).  Section 230(f)(3) defines a content provider as “any person or entity that is responsible, in whole or in part, for the creation or development of information provided through the Internet or any other interactive computer service.”  The complaint didn’t (and couldn’t) allege that HP or Palm created the app.  The court concluded that the HP App Catalogue was not a “content provider,” but instead, for the purposes of the distribution of the Chubby Checker app, it was an internet service provider that hosts third-party content (apps).  The ruling is one of the first to extend the CDA’s protections to an online store that sells apps.

HP and Palm were less successful in their attempt to dismiss the complaint’s allegations that they were liable for “contributory infringement” for selling the infringing app on the HP App Catalogue.   Looking at the four corners of the complaint and taking “all of the factual allegations in the complaint as true,” the court found that the complaint plead that “Chubby Checker” was well-known and a registered trademark, that HP “advertised” the app on its HP App Catalogue, “maintained primary control over the use of the name” on the app on the app store, and that Palm had a “detailed application and approval process for the app.”   The complaint alleged that after HP received a C&D letter, it continued to sell the app (specifically, it said that at the time of suit, and four months after it sent a C&D letter, “infringement continues”).  Somewhat surprisingly, the court’s analysis did not refer to the allegedly continuing sale of the app (after receipt of the C&D letter) in concluding that the complaint satisfied the pleading requirements of Iqbal and Twombly. Thus, it is unclear whether the court took that into account when determining that Palm and HP had “actual knowledge of the infringement,” which is necessary to sustain a contributory infringement claim.

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