Opinion

Karen Hepp v. Facebook

Court: Court of Appeals for the Third Circuit
Filed: Sep 23, 2021
Status: Published
Cited by: 0 cases
Authority: More cited than 19.0%

explaining the economic theory underlying the right of publicity

How later courts described this case

explaining the economic theory underlying the right of publicity
stating that, while district court should have addressed § 230(e)(2) before invoking grant of immunity, it was unnecessary to address difficult issue of applying CDA because Florida right of publicity claim would not withstand motion to dismiss under state law
finding that the “plain language of Section 230(e)(2) precludes [the defendant’s] claim of immunity” from a 3 claim for trademark infringement
“The primary objective of the Copyright Act is to encourage the production of original literary, artistic, and musical expression for the good of the public.” (citation omitted)

Written by the judges who cited it.

The opinion

PRECEDENTIAL

UNITED STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT

____________

Nos. 20-2725 & 2885

____________

KAREN HEPP,

Appellant in 20-2725

FACEBOOK; IMGUR INC; REDDIT INC; GIPHY INC,

WGCZ S.R.O.

Imgur Inc.; Reddit Inc., Appellants in 20-2885

____________

On Appeal from the United States District Court

for the Eastern District of Pennsylvania

(D.C. No. 2-19-cv-04034)

District Judge: Honorable John M. Younge

____________

Argued on June 2, 2021

Before: HARDIMAN, PHIPPS, and COWEN, Circuit

Judges.

(Filed: September 23, 2021)

Samuel Fineman [Argued]

Cohen Fineman

199 Marlton Pike East, Suite 4

Cherry Hill, NJ 08003

Counsel for Karen Hepp

Joseph C. Gratz

Vera Ranieri [Argued]

Aditya V. Kamdar

Durie Tangri

217 Leidesdorff Street

San Francisco, CA 94111

Counsel for Imgur Inc. and Reddit, Inc.

Dennis L. Wilson

Kilpatrick Townsend & Stockton

1801 Century Park East, Suite 2300

Los Angeles California 90067

Tywanda Lord

Kilpatrick Townsend & Stockton

1100 Peachtree Street, Suite 2800

Atlanta, Georgia 30309

Barry L. Cohen

Royer Cooper Cohen Braunfeld

100 N. 18th Street, Suite 710

Philadelphia, Pennsylvania 19103

Craig S. Primis [Argued]

Kirkland & Ellis

1301 Pennsylvania Avenue, N.W.

Washington, DC 20004

Counsel for Facebook, Inc.

Michael T. Zeller [Argued]

Quinn Emanuel Urquhart & Sullivan

865 S. Figueroa St. 10th Floor

Los Angeles, California 90017

Samuel W. Silver

Bruce P. Merenstein

Schnader Harrison Segal & Lewis

1600 Market Street, Suite 3600

Philadelphia, PA 19103

Counsel for WGCZ SRO

Duncan Crabtree-Ireland

Danielle S. Van Lier

SAG-AFTRA

5757 Wilshire Blvd., 7th Floor

Los Angeles, CA 90036

Ira L. Gottlieb

Bush Gottlieb, A Law Corporation

801 North Brand Boulevard, Suite 950

Glendale, CA 91203-1260

Counsel for Amicus SAG-AFTRA, in support of Karen

Hepp

Kit Walsh

Coryanne McSherry

Electronic Frontier Foundation

815 Eddy Street

San Francisco, CA 94109

Counsel for Amici Electronic Frontier Foundation, the

Copia Institute, iFixit, Engine, and Center for

Democracy and Technology, in support of Imgur, Inc.,

Reddit, Inc., Facebook, Giphy, Inc., and WGCZ SRO

___________

OPINION OF THE COURT

____________

HARDIMAN, Circuit Judge.

Section 230 of the Communications Decency Act of

1996 bars many claims against internet service providers. See

47 U.S.C. § 230(c). But Section 230 does not bar intellectual

property claims. § 230(e)(2). The question presented in this

appeal is whether a Philadelphia newscaster’s state-law claims

for violating her right of publicity are precluded by § 230.

Because those claims are encompassed within the intellectual

property carve-out, § 230(e)(2), we hold they are not

precluded.

Appellant Karen Hepp has worked in the news industry

her entire adult life. Presently, she hosts FOX 29’s Good Day

Philadelphia. As is often the case for television personalities,

Hepp’s professional success as a newscaster depends in part on

her reputation and social media following. She has built an

“excellent reputation as a moral and upstanding community

leader” and has amassed a sizeable social media following. See

App. 59–61. So Hepp’s endorsement can be valuable.

Naturally, that value depends on her ability to control the use

of her likeness.

In 2018, Hepp was told by coworkers that her

photograph was making its way around the internet. The image

depicts Hepp in a convenience store, smiling in the center of

the frame’s foreground. But the photograph was taken without

Hepp’s knowledge or consent. She knows neither the

convenience store’s location nor how the image was posted

online. And she never authorized the image to be used in online

advertisements for erectile dysfunction and dating websites.

Hepp’s allegations included two sets of posts featuring

her photograph. She alleged each violated her right of publicity

under Pennsylvania law.

The first post—which was an advertisement to a dating

app, FirstMet—appeared on Facebook, which is one of the

world’s largest social media companies. The advertisement

used Hepp’s image to promote its dating service. And it

encouraged Facebook users to “meet and chat with single

women near you.”

Second, a Reddit thread linked to an Imgur post of the

photo. Reddit is an online forum that allows users to create

communities organized around topics. Within each

community, users can start conversations by making an initial

post. Other users can note their approval by “upvoting” the

post. See generally https://www.redditinc.com/;

https://www.reddithelp.com/hc/en-us/categories/200073949-

Reddit-101. Imgur is a photo sharing website where users share

digital images. See generally https://imgurinc.com/. In this

case, someone uploaded Hepp’s image to Imgur. Then a Reddit

user posted a link to the Imgur post. The Reddit post spurred

indecent user commentary and was upvoted over one hundred

times.

Hepp sued Facebook, Reddit, and Imgur. The

complaint, as amended, alleges two state-law claims: one for

violating Pennsylvania’s right of publicity statute, 42 PA.

CONS. STAT. § 8316, and the other for violating its common

law. The companies each moved to dismiss the amended

complaint. The District Court dismissed Hepp’s case with

prejudice, holding all three companies were entitled to § 230

immunity. The Court held the § 230(e)(2) limitation—which

prevents § 230 from affecting “any law pertaining to

intellectual property”—did not apply to violations of state law.

Hepp appealed. And Imgur and Reddit filed a joint

cross-appeal to challenge personal jurisdiction.

The District Court, exercising diversity jurisdiction

under 28 U.S.C. § 1332, dismissed Hepp’s amended complaint

with prejudice. So our jurisdiction lies under § 1291, and our

review is plenary. See Martinez v. UPMC Susquehanna,

986 F.3d 261, 265 (3d Cir. 2021).

III

We begin with personal jurisdiction. Facebook

conceded it was amenable to suit in the District Court. But

Reddit and Imgur claimed the District Court lacked personal

jurisdiction over them. We agree. Applying the Supreme

Court’s decision in Ford Motor Co. v. Montana Eighth Judicial

District Court, 141 S. Ct. 1017 (2021), we hold the District

Court did not have personal jurisdiction over Reddit or Imgur.

Personal jurisdiction can be general or specific. General

jurisdiction extends to all claims against a defendant and exists

where a company is “essentially at home.” Id. at 1024. Because

none of the companies are at home in Pennsylvania, we turn to

the Supreme Court’s specific jurisdiction doctrine, which

extends only to particular claims. Id.

There are two prongs to the specific jurisdiction

analysis. First, there must be purposeful availment: minimum

contacts with the forum state that show the defendant took a

deliberate act reaching out to do business in that state. Id. at

1024–25. Second, the contacts must give rise to—or relate to—

plaintiff’s claims. Id. at 1025. Imgur and Reddit concede that

the first prong is satisfied here. Oral Argument at 47:28–47:34.

So we focus on the second.

For the contacts to satisfy the second prong, there must

be “a strong ‘relationship among the defendant, the forum, and

the litigation.’” Id. at 1028 (quoting Helicopteros Nacionales

de Colombia, S. A. v. Hall, 466 U.S. 408, 414 (1984)). Here,

that connection is too weak.

Consider the strong connection in Ford Motor. That

case involved products liability suits stemming from car

accidents in Minnesota and Montana. Id. at 1022. The contacts

between those states and the company were legion. By “every

means imaginable” Ford urged state residents to buy the types

of cars in the accidents. Id. at 1028. The company

“systematically served a market in Montana and Minnesota for

the very vehicles that the plaintiffs allege malfunctioned and

injured them in those States.” Id. So there was the requisite

strong relationship among the defendant, the forum, and the

litigation. Id.

In contrast, Hepp’s allegations focus on how Imgur and

Reddit purposefully availed themselves of the Pennsylvania

market. But those contacts do not relate to this litigation. Hepp

alleges Imgur and Reddit targeted their advertising business to

Pennsylvania. And she alleges Imgur has an online

merchandise store that sells products to Pennsylvanians.

Finally, she points to Reddit’s premium membership business

and an online community organized around Philadelphia. But

none of these contacts forms a strong connection to the

misappropriation of Hepp’s likeness. Hepp did not allege the

merchandise featured her photo. Nor did she allege Imgur and

Reddit used her likeness to sell advertising. Finally, she did not

claim the photo was taken, uploaded, or hosted in

Pennsylvania.

In sum, the alleged contacts do not relate to

misappropriation, and the alleged misappropriation does not

relate to any of the contacts. Because Hepp failed to establish

the strong connection present in Ford Motor, we hold the

District Court lacked personal jurisdiction over Imgur and

Reddit.1

Hepp also named a Czech company, WGCZ, in connection

with a pornographic website that hosted her image after a user

posted it to an illicit gallery. The District Court granted

WGCZ’s motion to dismiss because it did not operate the

website during the relevant time. Hepp concedes WGCZ did

not run the pornography website at issue. Oral Argument at

1:18:50–1:19:05. So there were no relevant contacts to

With Facebook as the only remaining party to this

appeal, we consider whether it is immune under § 230.

Passed in 1996, Section 230 of the Communications

Decency Act was intended to promote the internet. See

47 U.S.C. § 230(b). It specifically sought to preserve “the

vibrant and competitive free market”—“unfettered by Federal

or State regulation.” § 230(b)(2). The Act also promoted

filtering technology and the vigorous enforcement of criminal

obscenity laws. § 230(b)(5). In essence, Congress fostered a

largely unregulated free market online while snuffing out

certain objectionable content.

Section 230(c) strikes the balance. It provides “Good

Samaritan” protection, which enables “blocking and screening

of offensive material” as follows:

(1) TREATMENT OF PUBLISHER OR

SPEAKER . No provider or user of an

interactive computer service shall be

treated as the publisher or speaker of

establish personal jurisdiction, and the District Court correctly

held it lacked personal jurisdiction over WGCZ. The District

Court also concluded § 230 barred Hepp’s claims, so it denied

her leave to add the appropriate website owner. As explained

below, we disagree with the District Court about § 230. See

infra Part IV. So while Hepp’s suit against WGCZ was

properly dismissed for lack of jurisdiction, we will vacate the

District Court’s decision denying leave to amend.

any information provided by another

information content provider.

(2) CIVIL LIABILITY . No provider or

user of an interactive computer

service shall be held liable on account

of—

(A) any action . . . to restrict

access to . . . objectionable

. . . [material]; or

(B) any action taken to enable

. . . the technical means to

restrict access to material

described in paragraph [A].

§ 230(c). This provision bars attempts to treat websites as

publishers or speakers of content posted by others. Id. And it

encourages companies to host and moderate third-party content

by immunizing them from certain moderation decisions. Id. In

other words, it forgoes some publisher liability and paves the

way for service providers to make their own moderation

decisions.

Lest the liability provisions in § 230(c) be read too

broadly, however, the Act also carves out five limitations in

§ 230(e). Subsection (e) ensures several legal domains remain

unaffected by § 230(c). Most relevant here, § 230 has “[n]o

effect on intellectual property.” § 230(e)(2). Indeed, “[n]othing

in [§ 230] shall be construed to limit or expand any law

pertaining to intellectual property.” Id. Similarly, § 230(c) does

not affect federal criminal law, communications privacy law,

or sex trafficking law. § (e)(1), (4), (5). Among these

limitations, state law is mentioned several times. For instance,

in the communications privacy and sex trafficking domains,

“similar” or coextensive state laws also fall outside § 230(c)’s

scope. See § (e)(4), (5). Finally, the Act also provides a general

state law limitation, stating consistent state laws are not

affected. See § 230(e)(3). In sum, § 230(e) cabins the reach of

the Act’s liability provisions.

This appeal turns on whether § 230(c) makes Facebook

immune or whether § 230(e)(2) places Hepp’s claims outside

§ 230(c)’s reach. We resolve that issue in two steps. First, we

consider whether § 230(e)(2) can apply to any state law claims.

We then turn to whether § 230(e)(2) applies to Hepp’s

statutory claim.

In the twenty-five years since the Communications

Decency Act was passed, there are precious few cases

interpreting § 230’s intellectual property provision. The first

noteworthy case is Universal Communication Systems, Inc. v.

Lycos, Inc., 478 F.3d 413 (1st Cir. 2007). There, a company

sued internet message board providers alleging that some posts

contained “false, misleading” content about the company’s

financial prospects. See id. at 415–16. The suit alleged

violations of federal law, as well as trade name dilution in

violation of Florida law. Id. at 417. The First Circuit treated the

Florida dilution claim separately because “[c]laims based on

intellectual property laws are not subject to Section 230

immunity.” Id. at 422–23 (citing 47 U.S.C. § 230(e)(2)). As to

the merits of the state-law claim, the court reasoned that

“[t]rademark injury arises from an improper association

between the mark and [someone else’s] products or

services”—not from “criticism” leading to reputational harm.

See id. at 423. Ultimately, the court held “that even though

Section 230 immunity does not apply, the claim was properly

dismissed as a matter of [Florida] trademark law” “because of

the serious First Amendment issues that would be raised by

allowing [Plaintiff’s] claim.” See id. at 423 & n.7. But that

decision was necessary only because the court held § 230(e)(2)

preserved the state law claim.

Soon after the First Circuit announced its decision in

Lycos, the Ninth Circuit went the other way in Perfect 10, Inc.

v. CCBill LLC, 488 F.3d 1102 (9th Cir. 2007). There, a website

operator alleged violations of federal law and a state right of

publicity law. Id. at 1108. The district court dismissed the

complaint and the Ninth Circuit affirmed, reasoning that

federal intellectual property’s scope was more established

compared to state laws. Id. at 1118. And it explained the Act’s

policy goal—to insulate the internet from regulation—would

be hindered if federal immunity varied based on state laws. Id.

In the Ninth Circuit’s view, § 230(e)(2) includes only “federal

intellectual property.” Id. at 1119 (emphasis added).

Another notable case is Atlantic Recording Corp. v.

Project Playlist, Inc., 603 F. Supp. 2d 690 (S.D.N.Y. 2009).

There, record companies brought copyright claims under both

state and federal law. See id. at 694 & n.5. The district court

found the statute’s text was clear. Id. at 703. It emphasized that

Congress specified whether local, state, or federal law applied

four times in subsection (e): once discussing federal criminal

law, § (e)(1); twice in the general state law provision, § (e)(3);

and again in the communications law context, § (e)(4). Id. The

court held that “if Congress wanted the phrase ‘any law

pertaining to intellectual property’ to actually mean ‘any

federal law pertaining to intellectual property,’ it knew how to

make that clear, but chose not to.” Id. Indeed, when Congress

added the sex trafficking provision to the limitations in § (e), it

referenced state laws twice more. See Allow States and

Victims to Fight Online Sex Trafficking Act of 2017, § 4(a),

Pub L. No. 115-164, 132 Stat. 1253, 1254 (2018) (adding

47 U.S.C. § 230(e)(5)).

With those precedents in mind, we turn to the parties’

arguments.

In dismissing Hepp’s amended complaint, the District

Court adopted the Ninth Circuit’s approach, holding that

§ 230(e)(2)’s limitation applies only to federal intellectual

property. Facebook asks us to affirm that holding on three

bases: the text and structure of § 230(e); the statute’s own

policy provision, § 230(b); and practical policy reasons.

Facebook’s appeal to text and structure rightly urges us

to read § 230 as an integrated whole. It suggests § 230(e)

makes federal limitations the default and includes state laws

only when specified. In other words, § 230(e)’s limitations are

“directed to certain federal statutes and include state laws only

where they are coextensive with federal law.” Facebook Br. 17.

Because state-law rights of publicity do not mirror an

analogous federal law, Facebook argues Hepp’s claim is not

included in § 230(e)(2)’s intellectual property limitation.

Hepp counters that her claims arise under state law

“pertaining to intellectual property,” so § 230(c) cannot block

them. And she cites Atlantic Recording as support. We agree

with Hepp.

In our view, Facebook’s interpretation strays too far

from the natural reading of § 230(e)(2). We disagree that “any

law pertaining to intellectual property” should be read to mean

“any federal law pertaining to intellectual property.” To

support this “federal” reading, Facebook points to the statute’s

structure. But the structural evidence it cites cuts both ways.

Facebook is correct that the explicit references to state law in

subsection (e) are coextensive with federal laws. But those

references also suggest that when Congress wanted to cabin the

interpretation about state law, it knew how to do so—and did

so explicitly. Because the evidence cuts both ways, the

structure does not change the natural meaning. So the text and

structure tell us that § 230(e)(2) can apply to federal and state

laws that pertain to intellectual property.

Facebook also points to the policy enacted as part of

§ 230. As the company would have it, “Congress enacted

Section 230 to avoid subjecting internet service providers to a

web of inconsistent, ‘fettering’ state regulations like the laws

governing rights of publicity.” Facebook Br. 20–21. In support

of this argument, Facebook focuses on § 230(b)(2). That

provision seeks “to preserve the vibrant and competitive free

market that presently exists for the Internet and other

interactive computer services, unfettered by Federal or State

regulation.” § 230(b)(2). Facebook contends that because

rights of publicity vary from state to state, increasing those

protections would require censorship, limit free speech, and

impair the online marketplace.

Facebook’s premise is right: Congress enacted a pro-

free-market policy. But its desired conclusion does not

necessarily follow. Section 230’s policy goals do not erase

state intellectual property rights as against internet service

providers. Facebook errs by downplaying the role of property

in markets. After all, state property laws—along with contract

laws—enable “the resulting formation of effective markets.”

Ford Motor, 141 S. Ct. at 1029. Because state property rights

can facilitate market exchange, interpreting the § 230(e)(2)

limitation to include state intellectual property laws tracks

Congress’s pro-free-market goal. So the enacted policies do

not require an alternate reading.

Third, Facebook offers policy arguments independent

of the statute’s text. According to Facebook, our reading would

increase uncertainty about the precise contours of immunity in

cases involving state intellectual property law. See Facebook

Br. 29 (citing Perfect 10, 488 F.3d at 1119 n.5). But policy

considerations cannot displace the text. For that reason, other

courts have rejected such considerations, at least implicitly. In

Lycos, the First Circuit decided the case on state law grounds

because “Section 230 immunity does not apply.” 478 F.3d at

423 n.7. And in Atlantic Recording, the district court took a

similar approach. Well over a decade has passed since those

cases were decided, yet neither Facebook nor its amici provide

evidence that the rulings created the disarray they now predict.

Even if we considered policy outside the statute’s text,

it too could cut the other way. For example, if likeness interests

are disregarded on the internet, the incentives to build an

excellent commercial reputation for endorsements may

diminish. Cf. Zacchini v. Scripps-Howard Broad. Co.,

433 U.S. 562, 573 (1977) (explaining the economic theory

underlying the right of publicity). That would cut against the

statute’s explicit policy objectives because information

provided by promotional advertisements can enhance market

efficiency and vibrancy. So these policy arguments do not

carry the day for Facebook either.

The parties present a clear split of persuasive authority.

Facebook and its amici offer arguments based on the statute’s

text and policy considerations. But there are strong textual and

policy arguments to the contrary. Because we adhere to the

most natural reading of § 230(e)(2)’s text, we hold that

§ 230(e)(2) is not limited to federal laws. Simply put, a state

law can be a “law pertaining to intellectual property,” too.

Having held the § 230(e)(2) limitation applies to state

intellectual property law, we turn to whether Hepp’s statutory

cause of action against Facebook constitutes such a claim.

Facebook argues the right of publicity is rooted in

privacy. But it acknowledges the right has been categorized as

“both a ‘privacy right’ . . . and a ‘property right’.” Facebook

Br. 24–25 (quotation omitted). Amici supporting Facebook

take a different tack. They argue we should read “any law

pertaining to intellectual property” to “embrace its traditional

core”—exclusively federal copyright and patent law. EFF Br.

8 & n.5 (excluding trademarks). These amici also warn us of

the “parade of horribles,” EFF Br. 19, that would ensue should

we adopt Hepp’s interpretation, especially limitations on free

speech.

For her part, Hepp contends the right to publicity is an

intellectual property right. See Hepp Br. 11. And she argues

that she “has dedicated considerable time, effort and money

into building her brand.” Hepp Br. 17. Her amicus adds that

state courts have long recognized individuals have property

interests in their personas. They cite a 1907 case involving the

legendary Thomas Edison. SAG Br. 19. There, the New Jersey

court confirmed Edison could enjoin the use of his picture as

an endorsement for a product he did not sell. See Edison v.

Edison Polyform Mfg. Co., 67 A. 392, 394 (N.J. Ch. 1907). The

court reasoned there was no distinction between the intellectual

property protections afforded a person’s name and trademark-

like protections for likenesses used on a label. See id.

With these arguments in mind, we return to the statute’s

text. “Nothing in [§ 230] shall be construed to limit or expand

any law pertaining to intellectual property.” § 230(e)(2). So to

decide whether Hepp’s statutory claim against Facebook falls

within § 230’s intellectual property limitation, we must first

establish whether it arises from a “law pertaining to intellectual

property.” That requires us to determine the meaning of the

phrase “intellectual property.” To do so, we turn to several

sources.

For starters, Black’s Law Dictionary defines

“intellectual property” to include “publicity rights.” See

Intellectual Property, BLACK’S LAW DICTIONARY (11th ed.

2019); accord id. (7th ed. 1999). But not every dictionary does.

For instance, Ballentine’s defines the term as “those property

rights which result from the physical manifestation of original

thought.” Intellectual Property, BALLENTINE’S LAW

DICTIONARY (3d ed. 1968). Absent unanimity about the

meaning of “intellectual property,” we survey dictionary

definitions. See infra Appendices A and B. See generally

ANTONIN SCALIA & BRYAN A. GARNER, READING LAW 417

(2012) (explaining “comparative weighing of dictionaries is

often necessary”).

We begin by noting that “intellectual property” is best

understood as a compound term—not a generic two-word

phrase—because both legal and lay dictionaries treat it as such.

See infra Appendices A and B. So we do not combine the

definitions of “intellectual” and “property” in isolation; we

interpret the compound term as a unified whole.

Second, legal dictionaries take precedence here. See

infra Appendix A. Section 230(e) addresses the Act’s impact

on other laws. Because the term is used in a legal sense, the

proper definition of “intellectual property” is the term’s

ordinary legal meaning. See SCALIA & GARNER, supra, at 73.

Our survey of legal dictionaries reveals “intellectual

property” has a recognized meaning which includes the right

of publicity. This conclusion follows from several

observations.

First, two of the legal dictionaries explicitly list the right

of publicity as an intellectual property right. See infra

Appendix A (Black’s and McCarthy’s). These dictionaries are

especially apt. Black’s is renowned, and McCarthy’s directly

addresses the subject. A third legal dictionary, Bouvier’s,

provides more support. It sets forth a test that Pennsylvania’s

right of publicity statute satisfies because the statute grants

people monopolies in their likenesses. The statute also

provides for property-like relief, including the ability to obtain

damages and injunctions against trespassers. Compare 42 PA.

CONS. STAT. § 8316(a) (allowing for damages and injunctions

when one’s monopoly over her likeness is infringed), with

infra Appendix A (Bouvier’s test, requiring the same). In sum,

these definitions provide strong evidence that the term

“intellectual property” includes Pennsylvania’s statutory right

of publicity.

Along with that explicit evidence, the legal definitions

provide implicit support as well. For instance, one definition

does not mention the right of publicity—but it includes

trademark. See infra Appendix A (Dictionary of Modern Legal

Usage). And that inclusion implies the right to publicity by

analogy. Cf. Zacchini, 433 U.S. 562.

In Zacchini, the Supreme Court explained the right of

publicity is an individual property right that is “closely

analogous to . . . patent and copyright” because it focuses “on

the right of the individual to reap the reward of his endeavors

and [has] little to do with protecting feelings or reputation.” Id.

at 573. That focus also fosters market function by preventing

the “unjust enrichment by the theft of goodwill.” See id. at

575–76. And just as the right is “closely analogous” to patent

and copyright, so too for trademark. Like the right to publicity,

trademarks secure commercial goodwill. USPTO v.

Booking.com, 140 S. Ct. 2298, 2302 (2020). Trademarks also

foster the marketplace because they protect consumers’ ability

to distinguish between competitors. Id. So the right of publicity

and trademark are close analogues.2

For an academic account, see Stacey L. Dogan & Mark A.

Lemley, What the Right of Publicity Can Learn from

Trademark Law, 58 STAN. L. REV. 1161, 1164, 1190 (2006)

(contending trademark law “is by far the closest analogy to the

right of publicity”).

And this analogy has been recognized in the courts for

over a century. For example, a New Jersey court in Edison

analogized the right in one’s likeness to trademark. 67 A. at

393–94. That same year, a federal court granted an injunction

to stop the “deceptive use of the Emperor Franz Josef’s name

and portrait” because it falsely implied his endorsement. See

Von Thodorovich v. Franz Josef Beneficial Ass’n, 154 F. 911,

913 (C.C.E.D. Pa. 1907). More recently, the Florida Supreme

Court explained the harm caused by a right to publicity

violation is that “it associates the individual’s name or . . .

personality with something else.” Tyne v. Time Warner Ent.

Co., 901 So. 2d 802, 806 (Fla. 2005) (cleaned up). Because

trademark and the right to publicity are analogues, the legal

definition including trademark also supports including the right

of publicity as “intellectual property.”

Like the legal dictionaries, many lay dictionaries

explicitly include trademark. See Appendix B. So they too

favor including the right to publicity within “intellectual

property.” It is true that a handful of definitions fail to mention

trademark. See infra Appendix A (Ballentine’s); see also infra

Appendix B (American Heritage and Merriam Webster). But

those three dictionaries are a distinct minority compared to the

majority view that includes the right to publicity either

explicitly or by analogy. And the statute’s context favors

adopting the majority view. Dictionary definitions tend to

“state[] the core meaning of a term,” omitting the “periphery.”

SCALIA & GARNER, supra, at 418. And here, statutory context

clarifies we should include the periphery. Section 230(e)(2)

uses the modifiers “any” and “pertaining to”—“any law

pertaining to intellectual property.” So not only are core

intellectual property laws included, but so are laws pertaining

to the subject. See Ali v. Fed. Bureau of Prisons, 552 U.S. 214,

218–19 (2008) (“any”); cf. Morales v. Trans World Airlines,

Inc., 504 U.S. 374, 383 (1992) (“relating to”). And not some of

them—any of them. Thus the term’s statutory context confirms

our holding.

In conclusion, we hold that Hepp’s statutory claim

against Facebook arises out of a law pertaining to intellectual

property. For that reason, the § 230(e)(2) limit applies, and

Facebook is not immune under § 230(c). So we will reverse the

District Court’s order dismissing Hepp’s amended complaint

against Facebook with prejudice.

We close by emphasizing the narrowness of our

holding. First, it does not threaten free speech. Hepp’s statutory

claim against Facebook clarifies the point. She alleges her

likeness was used to promote a dating service in an

advertisement. And she claims that misappropriated the effort

she spent to build a valuable reputation, so it could confuse

consumers by suggesting she endorses the service. Again, the

analogy to trademark is striking. Just as a counterfeit item can

misappropriate a trademark owner’s goodwill, so too might the

unauthorized use of Hepp’s image in the ad. Further, both

misappropriations could create consumer confusion and

undercut efficient incentives. In this way, trademark claims

typically avoid violating free speech by addressing misleading

commercial speech. See Facenda v. N.F.L. Films, Inc.,

542 F.3d 1007, 1018 (3d Cir. 2008). So too for Hepp’s

statutory claim against Facebook. Thus, Hepp’s statutory claim

against Facebook is about the commercial effect on her

intellectual property, not about protected speech.

Second, our holding does not open the floodgates.

Pennsylvania’s statute is limited. For instance, it provides a

right of publicity cause of action only for those whose valuable

interest in their likeness “is developed through the investment

of time, effort, and money.” 42 PA. CONS. STAT. § 8316(e).

And we express no opinion as to whether other states’ rights of

publicity qualify as intellectual property as a matter of federal

law.

Third, having resolved the appeal on statutory grounds,

we offer no opinion about the Pennsylvania common law

claim. Facebook and Hepp briefed that issue in the District

Court, but neither party focused on it here. So it is best left to

the District Court on remand.

* * *

Section 230 does not preclude claims based on state

intellectual property laws. Hepp’s statutory claim against

Facebook fits that bill. For that reason, we will reverse in part

the District Court’s order dismissing her complaint with

prejudice as to her statutory claim against Facebook. But the

District Court lacked personal jurisdiction over the other

parties, so they should be dismissed for lack of jurisdiction.

And we will vacate the District Court’s orders regarding leave

to amend and Hepp’s common law claim against Facebook.

Finally, we will remand for further proceedings consistent with

this opinion.

APPENDICES

1. A category of intangible rights protecting

commercially valuable products of the human

intellect. • The category comprises primarily

trademark, copyright, and patent rights, but also

includes trade-secret rights, publicity rights,

moral rights, and rights against unfair

competition.

2. A commercially valuable product of the

human intellect, in a concrete or abstract form,

such as a copyrightable work, a protectable

trademark, a patentable invention, or a trade

secret.

Intellectual Property, BLACK’S LAW DICTIONARY (7th

ed. 1999).

1. A category of intangible rights protecting

commercially valuable products of the human

intellect. • The category comprises primarily

trademark, copyright, and patent rights, but also

includes trade-secret rights, publicity rights,

moral rights, and rights against unfair

competition. . . . .

2. A commercially valuable product of the

human intellect, in a concrete or abstract form,

such as a copyrightable work, a protectable

trademark, a patentable invention, or a trade

secret.

Intellectual Property, id. (8th ed. 2004); id. (9th ed.

2009); id. (10th ed. 2014); id. (11th ed. 2019).

Those property rights which result from the

physical manifestation of original thought.

Intellectual Property, BALLENTINE’S LAW DICTIONARY

(3d ed. 1969).

Intellectual property comprises two

subdivisions: industrial property and copyright.

Industrial property includes patents, inventions,

trademarks, and industrial designs. Copyrights

are property rights in literary, musical, artistic,

photographic, and film works as well as in maps

and technical drawings.

Intellectual Property, DICTIONARY OF MODERN LEGAL

USAGE (2d ed. 1995)

Protection under the law for interests in creations

and inventions. Intellectual property is the whole

set of intangible rights that authors, inventors,

and other creators have in the items they write,

invent, or create. To have intellectual property in

a thing is to have an effective monopoly on its

use, such that the property rights holder may

enjoin or recover from others who infringe on the

rights through unfair duplication or wrongful

use. Intellectual property in anything is usually

limited in time, although the lengths of time and

manner of calculation vary dramatically among

and within the categories.

Intellectual property is usually divided among

three categories: copyright, patent, and

trademark. In the United States, each is the

province of federal regulation, as well as the

common law. There is also a growing field of

international law regulating intellectual property

both as a field of international agreements unto

itself and as an aspect of the regulation of trade.

Intellectual Property, THE WOLTERS KLUWER

BOUVIER LAW DICTIONARY (2012).

[patent—trademark—unfair competition—

creations of the human mind that are given the

legal aspects of a property right. “Intellectual

property” is an all-encompassing term now

widely used to designate as a group all of the

following fields of law: patent, trademark, unfair

competition, copyright, trade secret, moral

rights, and the right of publicity.

Intellectual Property, MCCARTHY’S DESK

ENCYCLOPEDIA OF INTELLECTUAL PROPERTY (1991)

(square brackets in the original).

1. Any of various products of the intellect that

have commercial value, including copyrighted

property such as literary or artistic works, and

ideational property, such as patents, business

methods, and industrial processes.

2. The set of rights protecting such works and

property from unlawful infringement.

Intellectual Property, THE AMERICAN HERITAGE DICTIONARY

OF THE ENGLISH LANGUAGE (5th ed. 2011).

A product of the intellect that has commercial

value, including copyrighted property such as

literary or artistic works, and ideational property,

such as patents, appellations of origin, business

methods, and industrial processes.

Intellectual Property, id. (4th ed. 2009)

Law. Property that results from original creative

thought, as patents and trademarks.

Intellectual Property, RANDOM HOUSE WEBSTER’S SCHOOL

AND OFFICE DICTIONARY (1999).

Property (as an idea, invention, or process) that

derives from the work of the mind of intellect;

also: an application, right, or registration relating

to this.

Intellectual Property, MERRIAM WEBSTER’S COLLEGIATE

DICTIONARY (11th ed. 2003).

A general name for property (such as patents,

trademarks, and copyright material) which is the

product of invention or creativity, and which

does not exist in a tangible, physical form.

Intellectual Property, OXFORD ENGLISH DICTIONARY (2d ed.

1989).

Property (such as patents, trademarks, and

invention or creativity, and does not exist in a

tangible, physical form.

Intellectual Property, id. (3d ed. 2010).

COWEN, Circuit Judge, concurring in part and dissenting in

part.

I concur in Section III (and Footnote 1 to the extent it

affirms the District Court’s dismissal of the claims against

WGCZ for lack of personal jurisdiction) of the majority

opinion. However, I must respectfully dissent from Section

IV of the opinion. I believe that the “intellectual property”

exception or exclusion to immunity under § 230(e)(2) of the

Communications Decency Act of 1996 (“CDA”), 47 U.S.C. §

230(e)(2) (“Nothing in this section shall be construed to limit

or expand any law pertaining to intellectual property”), is

limited to federal intellectual property laws (i.e., federal

patent, copyright, and trademark laws) and—at most—state

laws only where they are co-extensive with such federal laws.

Because Hepp’s statutory and common law “right of

publicity” claims under Pennsylvania law are clearly not co-

extensive with federal intellectual property laws, the

exception does not apply, and Facebook (as well as NKL

Associates, S.R.O. (“NKL”)) are entitled to immunity.1

Initially, the majority indicates that there is a circuit

split between the First and Ninth Circuits regarding the scope

of § 230(e)(2). However, there is no existing split in the

While Facebook argues that the exception applies to

federal and co-extensive state intellectual property laws,

Imgur, Reddit, and WGCZ contend that the exception only

applies to federal claims (and Amicus EFF contends that it is

limited to patent and copyright claims). Because the claims at

issue here are not co-extensive with federal intellectual

property laws, I need not—and do not—decide which

approach is correct.

circuits on this issue. On the contrary, it is the majority that

creates such a split.

In Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102 (9th

Cir. 2007), the Ninth Circuit did conclude that the intellectual

property exception “includes only ‘federal intellectual

property.’” (Majority Opinion at 12 (quoting Perfect 10, 488

F.3d at 1119).) The circuit court succinctly and persuasively

explained why it construed “the term ‘intellectual property’ to

mean ‘federal intellectual property’”:

The CDA does not contain an express

definition of “intellectual property,” and there

are many types of claims in both state and

federal law which may—or may not—be

characterized as “intellectual property” claims.

While the scope of federal intellectual property

law is relatively well-established, state laws

protecting “intellectual property,” however

defined, are by no means uniform. Such laws

may bear various names, provide for varying

causes of action and remedies, and have varying

purposes and policy goals. Because material on

a website may be viewed across the Internet,

and thus in more than one state at a time,

permitting the reach of any particular state’s

definition of intellectual property to dictate the

contours of this federal immunity would be

contrary to Congress’s expressed goal of

insulating the development of the Internet from

the various state-law regimes. See 47 U.S.C. §

230(a) and (b); see also [Batzel v. Smith, 333

F.3d 1018, 1027 (9th Cir. 2003)] (noting that

“courts construing § 230 have recognized as

critical in applying the statute the concern that

lawsuits could threaten the ‘freedom of speech

in the new and burgeoning Internet medium’”

(quoting [Zeran v. Am. Online, Inc., 129 F.3d

327, 331 (4th Cir. 1997)])). In the absence of a

definition from Congress, we construe the term

“intellectual property” to mean “federal

intellectual property.”

Id. at 1118-19 (footnote omitted). Accordingly, the Perfect

10 court determined that the defendants “are eligible for CDA

immunity for all of the state claims [i.e., unfair competition,

false advertising, and right of publicity claims] raised” by the

plaintiff. Id. at 1119.

The majority also states that the First Circuit “held §

230(e)(2) preserved the state law claim.” (Id. (discussing

Universal Commc’n Sys., Inc. v. Lycos, Inc., 478 F.3d 413

(1st Cir. 2007)).) Unlike the Ninth Circuit, the First Circuit

simply stated without any further discussion (or even

acknowledgement that there could be an issue regarding the

scope of the statutory exception) that:

Claims based on intellectual property

laws are not subject to Section 230 immunity.

See [§ 230(e)(2)] (“Nothing in this section shall

be construed to limited or expand any law

pertaining to intellectual property.”); see also

Gucci Am., Inc. v. Hall & Assocs., 135 F. Supp.

2d 409, 413 (S.D.N.Y. 2001) (finding that the

“plain language of Section 230(e)(2) precludes

[the defendant’s] claim of immunity” from a

claim for trademark infringement).

Universal Commc’n, 478 F.3d at 422-23. It then noted that,

while the district court held that the claim was in effect a

defamation claim and that defendants thereby would be

shielded from the claim by CDA immunity, “[w]e reason

somewhat differently, holding that even though Section 230

immunity does not apply, the claim was properly dismissed as

a matter of trademark law.” Id. at 423 n.7.

The Ninth Circuit itself addressed Universal

Communication in disposing of the plaintiff’s unsuccessful

petition for rehearing. Initially, it noted that “neither party in

that case raised the question of whether state law counts as

‘intellectual property’ for purposes of § 230 and the court

seems to simply have assumed that it does.” Perfect 10, 488

F.3d at 1119 n.5. The Perfect 10 court further observed that

“Universal Communication demonstrates the difficulties

inherent in allowing state laws to count as intellectual

property for CDA purposes”—and in the process reiterated its

concern about the disparate nature of putative state

“intellectual property” laws:

We note that Universal Communication

demonstrates the difficulties inherent in

allowing state laws to count as intellectual

property for CDA purposes. In that case, the

district court struggled with the question of

whether the “trademark dilution” claim brought

under Florida Law counted as intellectual

property for purposes of the CDA, and

concluded that it was more like a defamation

claim than a trademark claim. [Universal

Commc’n, 478 F.3d at 423 n.7]. Rather than

decide how to draw the line between

defamation and trademark, the First Circuit held

that “because of the serious First Amendment

issues that would be raised” if Lycos were

found liable, defendant had not violated the

Florida statute. Id. at 423.

The First Circuit was able to sidestep the

question of what counted as intellectual

property on First Amendment grounds. But we

cannot do so here. States have any number of

laws that could be characterized as intellectual

property laws: trademark, unfair competition,

dilution, right of publicity and trade defamation,

to name just a few. Because such laws vary

widely from state to state, no litigant will know

if he is entitled to immunity for a state claim

until a court decides the legal issue. And, of

course, defendants that are otherwise entitled to

CDA immunity will usually be subject to the

law of numerous states. An entity otherwise

entitled to § 230 immunity would thus be forced

to bear the costs of litigation under a wide

variety of state statutes that could arguably be

classified as “intellectual property.” As a

practical matter, inclusion of rights protected by

state law within the “intellectual property”

exemption would fatally undermine the broad

grant of immunity provided by the CDA.

Id. at 1119 n.5. (See also id. at 12 (“Ultimately, the [First

Circuit] held ‘that even though Section 230 immunity does

not apply, the claim was properly dismissed as a matter of

[Florida] trademark law’ ‘because of the serious First

Amendment issues that would be raised by allowing

[Plaintiff’s] claim.’” (quoting Univ. Commc’n, 478 F.3d at

423 & n.7)).)

Instead of simply applying its purported holding

concerning the scope of § 230(e)(2) and state laws, the First

Circuit subsequently assumed “without deciding” that the

plaintiffs’ remaining state law claims “come within the

compass of this exception.” Jane Doe No. 1 v.

Backpage.com, LLC, 817 F.3d 12, 26 (1st Cir. 2016). It

recognized that “[t]he application of the exemption to the

appellants’ state law claims for the unauthorized use of

pictures is not free from doubt.” Id. at 26 n.9. “At least one

court of appeals has suggested that state law intellectual

property claims are not covered by this exemption. See

[Perfect 10, 488 F.3d at 1118-19, 1119 n.5]; but cf. Lycos,

478 F.3d at 422-23, 324 n.7 (applying section 230(e)(2) to a

claim under state trademark law, albeit without detailed

analysis).” Backpage.com, 817 F.3d at 26 n.9. In fact,

“Backpage argues that the unauthorized use of pictures claims

do not involve intellectual property but, rather, stem from

property rights protected by tort law.” Id. Upholding the

dismissal of the plaintiff’s claims under state law, the First

Circuit explained that “[w]e need not reach either of these

issues.” Id.; see also Almeida v. Amazon.com, Inc., 456 F.3d

1316, 1324 (11th Cir. 2006) (stating that, while district court

should have addressed § 230(e)(2) before invoking grant of

immunity, it was unnecessary to address difficult issue of

applying CDA because Florida right of publicity claim would

not withstand motion to dismiss under state law).

While there may be district court cases (like Atlantic

Recording Corp. v. Project Playlist, Inc., 603 F. Supp. 2d 690

(S.D.N.Y. 2009)) that have applied the intellectual property

exception to state law claims, we are the first circuit court to

take such a step. The majority takes issue with Facebook’s

assertion that its reading would increase uncertainty about the

precise contours of immunity in cases involving purported

state intellectual property laws. However, the 2007 Perfect

10 decision was the only circuit court clearly on point, and it

kept the proverbial door closed on a potential influx of

disparate and downright confusing state law “intellectual

property” claims that would be contrary to Congress’s

express goals in enacting § 230. Perfect 10, 488 F.3d at

1118-19 & n.5. We now open this door and, as I explain in

more detail below, this drastic step undermines the broad

policy objectives codified in § 230.

“Facebook’s appeal to text and structure rightly urges

us to read § 230 as an integrated whole.” (Majority Opinion

at 13.) In short, the other immunity exceptions set forth under

subsection (e) refer to only specified federal laws and, in

certain instances, to co-extensive state laws. Accordingly, §

230(e)(1) states that “Nothing in this section shall be

construed to impair the enforcement of section 223 or 231 of

this title, chapter 71 (relating to obscenity) or 110 (relating to

sexual exploitation of children) of Title 18, or any other

Federal criminal statute.” Section 230(e)(4) states that

“Nothing in this section shall be construed to limit the

Electronic Communications Privacy Act of 1986 or any of the

amendments made by such Act, or any similar State law.”

Section 230(e)(5) provides that “Nothing in this section (other

than subsection (c)(2)(A)) shall be construed to impair or

limit” either “(A) any claim in a civil action brought under

section 1595 of Title 18, if the conduct underlying the claim

constitutes a violation of section 1591 of that title,” “(B) any

charge in a criminal prosecution brought under State law if

the conduct underlying the charge would constitute a

violation of section 1591 of Title 18,” or “(C) any charge in a

criminal prosecution under State law if the conduct

underlying the charge would constitute a violation of Section

2421A of Title 18, and promotion or facilitation of

prostitution is illegal in the jurisdiction where the defendant’s

promotion or facilitation of prostitution was targeted.” Given

such narrowly circumscribed categories, should § 230(e)(2)

be read to apply to “any number of [disparate state] laws that

could be characterized as intellectual property laws:

trademark, unfair competition, dilution, right of publicity and

trade defamation, to name just a few”—which all have

“varying causes of action and remedies, and have varying

purposes and policy goals,” Perfect 10, 488 F.3d at 1118,

1119 n.5? Would Congress have really gone so far as to grant

immunity from a wide range of state and federal laws—

including state criminal law—yet permit claims to go forward

under the nebulous (and expansive) category of state

“intellectual property”/“rights of publicity” laws?2

In fact, counsel for Facebook points out at oral

argument that Congress specified as part of the Defend Trade

Secrets Act of 2016 that the amendments made by this statute

“shall not be construed to be a law pertaining to intellectual

property for purposes of any other Act of Congress.” 18

U.S.C. § 1833 Statutory Note. In turn, the Digital

balanced system of notices, takedowns, and counternotices

[with respect to purported copyright infringement] that allows

platforms to host users’ speech with relative confidence.”

The majority acknowledges that “the structural

evidence [Facebook] cites cuts both ways.” (Majority

Opinion at 14.) However, the codified findings and policies

clearly tilt the balance in Facebook’s favor. I believe that the

more expansive interpretation would gut the immunity system

established by Congress and undermine the policies and

findings that Congress chose to codify in the statute itself.

The “Findings” and “Policy” explicitly set forth in §

230(a) and (b) emphasize, inter alia, the importance of the

Internet, its continued development, the free exchange of

information, and the need to keep governmental regulation of

this forum to a minimum:

(a) Findings

The Congress finds the following:

(1) The rapidly developing array of Internet

and other interactive computer services

available to individual Americans represent an

extraordinary advance in the availability of

educational and informational resources to our

citizens.

(2) These services offer users a great degree of

control over the information that they receive,

(Amicus EFF’s Brief at 17 (addressing 17 U.S.C. § 512).)

Given these restrictions, how could one conclude that §

230(e)(2) is applicable to a wide range of state “intellectual

property” laws (including right of publicity claims)?

as well as the potential for even greater control

in the future as technology develops.

(3) The Internet and other interactive services

offer a forum for a true diversity of political

discourse, unique opportunities for cultural

development, and myriad avenues for

intellectual activity.

(4) The Internet and other interactive computer

services have flourished, to the benefit of all

Americans, with a minimum of government

regulation.

(5) Increasingly Americans are relying on

interactive media for a variety of political,

educational, cultural, and entertainment

services.

(b) Policy

It is the policy of the United States—

(1) to promote the continued development of

the Internet and other interactive computer

services and other interactive media;

(2) to preserve the vibrant and competitive free

market that presently exists for the Internet and

other interactive computer services, unfettered

by Federal or State regulation;

(3) to encourage the development of

technologies which maximize user control over

what information is received by individuals,

families, and schools who use the Internet and

other interactive computer services;

(4) to remove disincentives for the

development and utilization of blocking and

filtering technologies that empower parents to

restrict their children’s access to objectionable

or inappropriate online material; and

(5) to ensure vigorous enforcement of Federal

criminal laws to deter and punish trafficking in

obscenity, stalking, and harassment by means of

computer.

§ 230(a)-(b).

“The majority of federal circuits have interpreted the

CDA to establish broad ‘federal immunity to any cause of

action that would make service providers liable for

information originating with a third-party user of the

service.’” Perfect 10, 488 F.3d at 1118 (quoting Almeida,

456 F.3d at 1321 (quoting Zeran, 129 F.3d at 331)). In short,

Congress—concerned about protecting and encouraging the

freedom of expression in a new and important forum of

speech—meant to protect and encourage such speech

unfettered by the burden of intrusive governmental regulation

in the form of civil litigation and liability. In one of the first

cases to interpret § 230, the Fourth Circuit undertook a

thorough and persuasive examination of the purpose of the

statutory immunity established by Congress. The Zeran court

concluded that § 230 barred the plaintiff’s defamation claim

against the service provider. Zeran, 129 F.3d at 328. As the

Fourth Circuit explained, “Congress recognized the threat that

tort-based lawsuits pose to freedom of speech in the new and

burgeoning Internet medium.” Id. at 330. “The imposition of

tort liability on service providers for the communications of

others represented, for Congress, simply another form of

intrusive government regulation of speech,” and “Section 230

was enacted, in part, to maintain the robust nature of Internet

communication and, accordingly, to keep government

interference in the medium to a minimum.” Id. (quoting §

230(a)(3), (a)(4), (b)(2)). While observing that “the original

culpable party who posts defamatory messages would [not]

escape accountability,” the Zeran court stated that “Congress

made a policy choice, however, not to deter harmful online

speech through the separate route of imposing tort liability on

companies that serve as intermediaries for other parties’

potentially injurious messages.” Id. at 330-31. Furthermore,

the Fourth Circuit observed that “[i]nteractive computer

services have millions of users” and that “[t]he amount of

information communicated via interactive computer services

is therefore staggering.” Id. at 331 (citing Reno v. ACLU,

521 U.S. 844, 850-51 (1997)). The possibility of tort liability

in such a context would have an obvious chilling effect, with

service providers (who could not possibly screen each of their

millions of postings) possibly forced to impose severe

restrictions on such on-line speech. Id. “Congress considered

the weight of the speech interests implicated and chose to

immunize service providers to avoid any such restrictive

effect.” Id. (stating that other purpose of legislation is to

encourage providers to self-regulate dissemination of

offensive material); see also, e.g., Universal Commc’n, 478

F.3d at 418-19 (relying on Zeran to find that § 230 immunity

should be broadly construed).

The application of § 230(e)(2) to various state

“intellectual property” laws would be inconsistent with the

objectives of § 230. On the one hand, federal intellectual

laws are relatively well established. As Amicus EFF explains

in some detail, “copyrights and patents are relatively clear,

relatively knowable, and embody a longstanding balance

between rightsholders, future creators and inventors, and the

public at large.”3 (Amicus EFF’s Brief at 14-15.) In turn,

Federal patent and copyright laws: (1) are

specifically authorized by the Constitution, which mandates

that such exclusive rights must “promote the Progress of

Science and the useful Arts,” U.S. Const. art. I, § 8, cl. 8; (2)

are traditionally viewed as sharing a common origins in

Venetian monopolies from the 1400s and 1500s (see EFF’s

Amicus Brief at 8-9 (citing Joanna Kostlyo, From Gunpowder

to Print: The Common Origins of Copyright & Patent,

Privilege & Property: Essays on the History of Copyright

(Ronan Deazly et al. eds., 1st ed. 2010) (available at

https://jstor.org/stable/j.ctt5vjt9v.5))); (3) embody a

fundamental bargain in which the government grants a

limited monopoly to encourage and reward creativity and

innovation and then provides that the public gets the benefit

of such efforts after the monopoly’s expiration, see, e.g.,

Fogerty v. Fantasy, Inc., 510 U.S. 517, 524 (1994) (“The

primary objective of the Copyright Act is to encourage the

production of original literary, artistic, and musical

expression for the good of the public.” (citation omitted));

Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 9

(1966) (“The patent monopoly was not designed to secure to

the inventor his natural right in his discoveries. Rather, it was

Facebook notes that “[a] trademark is a very unique type of

property.” Pirone v. MacMillan, Inc., 894 F.2d 579, 581 (2d

Cir. 1990). A trademark is defined by the Lanham Act as

“any word, name, symbol, or device, or any combination

thereof” used by a person “to identify and distinguish his or

her goods, including a unique product, from those

manufactured or sold by others and to indicate the source of

the goods, even if that source is unknown.” 4 15 U.S.C. §

1127; see also, e.g., Pirone, 894 F.2d at 581 (explaining that

trademark is not property in ordinary sense and, like majority,

highlighting role of consumer confusion). On the other hand,

a reward, an inducement, to bring forth new knowledge.”);

(4) are limited in scope (with copyrights available for

expressive works as set forth in the Copyright Act, see, e.g.,

Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 344-

61 (1991), and patents available for new, useful, and non-

obvious inventions concerning certain subject matter, see,

e.g., Bonito Boats v. Thunder Craft Boats, Inc., 489 U.S. 141,

146-56 (1989); (5) involve exclusive rights that are secured

(as the Constitution mandates) for “limited Times;” (6) are

obviously (as federal statutes) national in application; and (7)

are alienable, see, e.g., 17 U.S.C. § 201(d); 35 U.S.C. § 261.

I note that the Ninth Circuit has ruled that § 230(e)(2)

“does not apply to false advertising claims brought under §

1125 of the Lanham Act, unless the claim itself involves

intellectual property” (although it does apply to claims

pertaining to an established intellectual property right under

federal law, including “those inherent in a . . . trademark”).

Enigma Software Grp. USA, LLC v. Malwarebytes, Inc., 946

F.3d 1040, 1053 (9th Cir. 2019), cert. denied, 141 S. Ct. 13

(2020).

“state laws protecting ‘intellectual property,’ however

defined, are by no means uniform,” with such laws bearing

various names (e.g., trademark, unfair competition, dilution,

and right of publicity), legal elements, remedies, and

purposes. Perfect 10, 488 F.3d at 1118-19 & n.5. Such

confusion is only magnified by the fact that “material on a

website may be viewed across the Internet, and thus in more

than one state at a time,” and “defendants that are otherwise

entitled to CDA immunity will usually be subject to the law

of numerous states.” Id. Permitting litigation and liability

under such a tangle of disparate state law schemes would

threaten “the continued development of the Internet” as well

as “the vibrant and competitive free market that presently

exists for the Internet and other interactive computer services,

unfettered by Federal or State regulation”—even though

Congress found that the “Internet and other interactive

services offer a forum for a true diversity of political

discourse, unique opportunities for cultural development, and

myriad avenues for intellectual activity” and that the Internet

has flourished to the benefit of all Americans, “with a

minimum of government regulation.” § 230(a)(3), (4), (b)(1),

(2). In other words, the imposition of such liability would

simply constitute “another form of intrusive government

regulation of speech,” which Congress sought to prevent in

the first place. Zeran, 129 F.3d at 330.

“This web of inconsistent state laws is the very

definition of the ‘fettering’ state regulation that Congress

sought to avoid in enacting Section 230.”5 (Facebook’s Brief

The majority recognizes that Congress enacted a pro-

free-market policy. But it contends that Facebook downplays

the role of property in the functioning of a free market, noting

at 25 (quoting § 230(b)(2)). In fact, “right of publicity” laws

epitomize this “web” of disparate state laws.

“The appearance of near-uniformity in the adoption of

some version of the right of publicity belies the degree to

which the exact contours of the right differ significantly from

jurisdiction to jurisdiction.” Karyn A. Temple, U.S.

Examining Moral Rights in the United States, at 115 (2019),

https://wwww.copyright.gov/policy/moralrights/full-

report.pdf (citing Joshua L. Simmons & Miranda D. Means,

Split Personality: Constructing a Coherent Right of Publicity

Statute, Landside, at 38 (May/June 2018),

https://www.americanbar.org/groups/intellectual_property_la

w/publications/landside/2017-18/may-june/split-

personality/)). For example, some states specifically define

the aspects of a person’s identity that may serve as the basis

for the claim, see, e.g., Okla. Stat. Ann. tit. 12, § 1449(A)

(“name, voice, signature, photograph, or likeness”); 42 Pa.

Cons. Stat. Ann. § 8316(a) (“name or likeness”), while other

states evidently bar uses that merely evoke a person, like a

modified race car, see Motschenbacher v. R.J. Reynolds

Tobacco Co., 498 F.2d 821 (9th Cir. 1974), or a celebrity

catch-phrase, see Carson v. Here’s Johnny Portable Toilets,

698 F.2d 831 (6th Cir. 1983). “And while most states

historically view the right as nondescendible, the modern

trend holds it capable of surviving the death of the celebrity.”

that “state property laws—along with contract laws—enable

the resulting formation of effective markets.’” (Majority

Opinion at 15 (quoting Ford Motor Co. v. Mont. Eighth Jud.

Dist Ct., 141 S. Ct. 1017, 1029 (2021)).) I note, however,

that § 230(e) does not include a “contract” exception.

Stacey L. Dugan & Mark Lemley, What the Right of

Publicity Can Learn from Trademark Law, 58 Stan. L. Rev.

1161, 1174 (2006) (citing 1 J. Thomas McCarthy, The Rights

of Publicity & Privacy § 9:18 (2d ed. 2005)); see also §

8316(b)(3), (c) (providing for survival of action after person’s

death with repose period of 30 years). Other differences

include whether a claim of right must be registered in order to

pursue a posthumous claim, whether the claimant must live in

the state whose law he or she wishes to invoke, and whether

the claimant needs to prove sufficient fame or show that his

or her persona has economic value. Temple, supra, at 115-16;

see also, e.g., § 8316(a) (“[a]ny natural person whose name or

likeness has commercial value”).

These differences are not surprising given the

confusion that exists regarding the specific basis of the right

of publicity. “In enacting right of publicity statutes,

commentators have noted that many states struggled to adopt

a strong, consistent theory of why the right exists and what it

should be designed to protect.” Temple, supra, at 115 n.652

(quoting Simmons & Means, supra, at 38). Amicus SAG-

AFTRA acknowledges that the right of publicity “derived

originally from laws protecting one’s privacy.” (Amicus

SAG-AFTRA’s Brief at 18.) Especially when compared with

patent and copyright laws, this area of the law is relatively

new. See, e.g., Dugan & Lemley, supra, at 1167 (“Before the

late nineteenth century, individuals had little recourse against

the use of their names or images by unauthorized parties.”).

As the law review article cited by the majority indicated, the

right had its origins in the famous 1890 law review article by

Samuel Warren and future Justice Louis Brandeis proposing a

new “Right to Privacy.” Id. at 1167-68 (citing Samuel D.

Warren & Louis D. Brandeis, The Right to Privacy, 4 Harv.

L. Rev. 193 (1890)). “Although their article occasionally

strayed into broad generalities suggesting that individuals

should have property rights in their personalities, their

proposed cause of action focused narrowly on the problem at

hand: ‘to protect the privacy of private life.’” Id. at 1168-69

(quoting Warren & Brandeis, supra, at 215). Accordingly, §

625C of the Restatement (Second) of Torts provides that

“[o]ne who appropriates to his own use or benefit the name or

likeness of another is subject to liability to the other for

invasion of privacy.” While recognizing that the right is in

the nature of a property right, Comment a to this section goes

on to state that “the protection of his personal feelings against

mental distress is an important factor leading to a recognition

of the rule.”6 See also Corabi v. Curtis Publ’g Co., 273 A.2d

899, 918 (Pa. 1971) (addressing Restatement), abrogation on

other grounds recognized by Am. Future Sys. v. Better Bus.

Bureau of E. Pa., 923 A.2d 389 (Pa. 2007). Furthermore, it is

clear that, at least in certain states, the right of publicity is

particularly broad in nature—and certainly broader than the

purported federal counterparts.7 See, e.g., White v. Samsung

Hepp similarly alleged (as the majority recognizes)

that her likeness was used to promote a dating service,

thereby misappropriating the effort she spent to build a

valuable reputation (which could confuse consumers by

suggesting that she endorses the service). However, she also

alleged that “Defendants’ sexualization of Plaintiff’s image

and use for prurient and illicit purposes is abhorrent and

disgusting.” (A61.)

Amicus EFF asserts that, “despite the Supreme

Court’s rough analogy in [Zacchini v. Scripps-Howard

Broadcasting Co., 433 U.S. 562 (1977), between rights of

Elec. Am., Inc., 989 F.2d 1512, 1514 (9th Cir. 1993)

(Kozinski, J., dissenting from order rejecting suggestion for

rehearing en banc) (“[I]t’s now a tort for advertisers to remind

the public of a celebrity. Not to use a celebrity’s name, voice,

signature or likeness; not to imply the celebrity endorses a

product; but simply to evoke the celebrity’s image in the

public’s mind. This Orwellian notion withdraws far more

from the public domain than prudence and common sense

allow. It conflicts with the Copyright Act and the Copyright

Clause. It raises serious First Amendment problems. It’s bad

law, and it deserves a long, hard second look.”).

publicity on the one hand and patents and copyrights on the

other hand], it is hard to see how publicity rights fulfill any

public interest in promoting creativity or invention, rather

than a general interest in protecting people against unfair

commercial exploitation and unwanted attention.” (Amicus

EFF’s Brief at 13.) “Celebrities do not need any special

incentive to have a public identity, nor do regular people.”

(Id.) Dugan and Lemley likewise rejected this

“incentive/copyright model” for right of publicity claims.

Dugan & Lemley, supra, at 1186-90. According to them,

there was no empirical evidence to show that celebrities

would invest less energy and talent in becoming famous

without a publicity right, id. at 1187-88, and, in any event, “it

is not at all clear that society should want to encourage fame

for fame’s sake,” id. at 1188 (footnote omitted) (“Unlike

valuable works of authorship that enhance the quality of

discourse and understanding in our society—the right of

publicity rewards those who, with luck, hard work, or

accident of birth, happen to join the ranks of the famous.”

(footnote omitted)).

The majority attempts to limit the scope and effect of

its ruling. Accordingly, it contends that its holding neither

threatens free speech nor opens the proverbial floodgates.

“And we express no opinion as to whether other states’ rights

of publicity qualify as intellectual property as a matter of

federal law.” (Majority Opinion at 22.) The majority

likewise offers no opinion about Hepp’s Pennsylvania

common law claim.

However, this decision—which it bears repeating is

the first circuit court ruling to hold that the intellectual

property exception applies to state “intellectual property”

laws (specifically including at least one state’s right of

publicity statute) and in the process to reject the Ninth

Circuit’s holding in Perfect 10—does threaten to open the

floodgates. Internet service providers now face the prospect

that so troubled the Ninth Circuit—“Because such laws vary

widely from state to state, no litigant will know if he is

entitled to immunity for a state claim until a court decides the

legal issue.” Perfect 10, 488 F.3d at 1119 n.5. In this case,

Facebook does not even know whether Hepp’s common law

right of publicity claim falls under § 230(e)(2). Such

uncertainty as well as the probability of additional litigation

in the future together with the real possibility of being held

liable under disparate and often very expansive state law

“intellectual property” regimes would encourage internet

service providers to censor more content—even though

Congress “recognized the threat that tort-based lawsuits pose

to freedom of speech in the new and burgeoning Internet

medium,” enacted § 230 “to maintain the robust nature of

Internet communication, and, accordingly, to keep

government interference in the medium to a minimum,” and

made the policy choice “not to deter online speech through

the separate route of imposing tort liability on companies that

serve as intermediaries for other parties’ potentially injurious

messages.” Zeran, 129 F.3d at 330-31. The fact that

“defendants that are otherwise entitled to CDA immunity will

usually be subject to the law of numerous states,” Perfect 10,

388 F.3d at 1119 n.5, only further compounds the pressure to

restrict speech.

Section 230 “paved the way for a robust new forum for

public speech as well as ‘a trillion-dollar industry centered

around user-generated content.’” Bennett v. Google, LLC,

882 F.3d 1163, 1166 (D.C. Cir. 2018) (quoting Eric Goldman

& Jeff Kosseff, Commemorating the 20th Anniversary of

Internet Law’s Most Important Judicial Decision, The

Recorder (Nov. 10, 2017), perma.cc/RR2M-UZ2M). The

Internet has seen “staggering” growth since the 1990s. (See,

e.g., Amicus SAG-AFTRA’s Brief at 16-17 (noting that there

were about 40 million Internet users in 1997 but that, in 2020,

there are roughly 4.66 billion users).) Even Hepp

acknowledges that “it may be true that the protections

afforded Internet-based Internet companies under § 230 of the

CDA initially played a crucial role in creating what is now the

modern Internet.” (Appellant’s Brief at 16-17; see also id. at

16 (“In 2007, when Perfect 10 was decided, the Internet with

its concomitant limitless potential for opening portals for

commerce, public discourse, science, education and other

areas, was in its adolescence.”).) The parties and their

respective amici dispute whether the protections of § 230 are

still necessary and whether the negative consequences of

immunity in this context (continue to) outweigh its positive

effects (including whether or not the technology necessary to

monitor and remove materials from their sites is readily

available). However, these are all matters for Congress—and

not the courts—to address.

Under the circumstances, I have no choice but to

follow the Ninth Circuit’s example and conclude that §

230(e)(2) is limited to federal intellectual property laws

and—at most—state laws only where they are co-extensive

with such federal laws. Because Pennsylvania’s right of

publicity law clearly is not co-extensive with federal

intellectual property law,8 I would affirm the District Court’s

dismissal of Hepp’s claims against Facebook as well as its

denial of the motion to amend with respect to NKL.

Although the majority compares the right of publicity

to patent, copyright, and (especially) trademark rights, they

clearly are not the same thing.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.