Citation Edit

Gucci America, Inc. v. Hall & Assocs., 135 F. Supp. 2d 409, 60 U.S.P.Q.2d (BNA) 1714 (S.D.N.Y. 2001) (full-text).

Factual Background Edit

Plaintiff, owner of the GUCCI trademark, sued defendant Mindspring Enterprises, Inc. (“Mindspring”) for direct and contributory trademark infringement arising out of Mindspring’s provision of ISP services to codefendant Hall & Associates (“Hall”). Plaintiff notified Mindspring twice via email that Hall was using Mindspring’s services to host a website advertising the sale of infringing goods. When Mindspring failed to remove the infringing website, plaintiff sued, seeking injunctive relief and damages from Mindspring arising out of its alleged willful and intentional infringement of the GUCCI mark.

Trial Court Proceedings Edit

Mindspring moved to dismiss the complaint for failure to state a claim, arguing that (1) Section 230(c)(1) of the Communications Decency Act of 1996 immunized it from liability for information posted on Hall’s website, and (2) the First Amendment barred plaintiff’s claims of trademark infringement.

In denying Mindspring’s motion, the court rejected Mindspring’s argument that it was shielded from liability under Section 230(c)(1), which provides 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.” Although Section 230(c)(1) exempts ISPs from liability for defamation and other torts arising out of information originating with a third-party user of its services, Section 230(e)(2) of the statute explicitly states that “[n]othing in this section shall be construed to limit or expand any law pertaining to intellectual property.”

According to the court, the plain meaning of the statute was sufficient to deny Mindspring’s motion regarding plaintiff’s intellectual-property claims. It distinguished other cases that successfully invoked Section 230 as a defense to claims for defamation or common-law torts relating to the dissemination of damaging information, for none of those cases involved intellectual-property rights.

The court also rejected Mindspring’s argument that plaintiff’s claims violated the First Amendment because its theory of liability would subject ISPs to “strict liability” and force them to summarily restrict online speech at the whim of a trademark plaintiff. Plaintiff’s claims were not barred by the First Amendment “because they challenge allegedly infringing commercial speech used to identify the source of a product.” Mindspring’s argument was undercut by: (1) the Lanham Act’s “innocent infringer defense” in 15 U.S.C. §1114(2), which limits “trademark plaintiffs’ remedies against printers and publishers or distributors ‘for others’ of ‘electronic communication[s]’ who are ‘innocent infringers’ to (prospective) injunctions against future printings or transmissions of the infringing material”; and (2) the fact that trademark law places a high burden on plaintiffs to demonstrate that an alleged contributory infringer had “knowledge” of the underlying infringement.

Source Edit

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