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The Communications Decency Act of 1996 does not immunize an Internet service provider from liability for trademark infringement associated with one of its customers, U.S. District Court Judge Richard Berman of the Southern District of New York ruled Wednesday. In a case of first impression, Berman found that service provider Mindspring, now part of EarthLink Inc., cannot escape liability for direct and contributory trademark infringement in a case involving the Gucci mark and an Internet marketer of jewelry. Berman, in Gucci America v. Hall & Associates, 00 Civ. 549, denied Mindspring’s motion to dismiss the case based on Section 230(c)(1) of the act, which states that “no 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.” The judge, however, agreed with lawyers for Gucci who argued that the controlling language in the act is in Section 230(e)(2). “Section 230(e)(2) unambiguously constrains the court to construe Section 230(c)(1) in a manner that would neither ‘limit or expand any law pertaining to intellectual property,’ ” he said. “ Thus the inquiry involves the application of existing intellectual property law,” which allows publishers, in certain circumstances, to be held liable for infringement. And, under U.S. Supreme Court precedent, he said, manufacturers or distributors can be held liable for infringement if they continue to supply a product to a customer the company knew or should have known is involved in trademark infringement. Gucci said Mindspring was put on notice by two e-mails Gucci sent to the company in 1999 informing Mindspring that Denise Hall was infringing on the Gucci mark by marketing jewelry on her “goldhaus” Web site. Gucci also contended in the lawsuit, which seeks money damages and injunctive relief for Lanham Act violations, that Hall continued to market the jewelry in breach of a settlement agreement reached between Gucci and Hall & Associates in 1997. Despite Mindspring’s argument to the contrary, Judge Berman said, “Nowhere does Section 230 state that the laws to which it refers are, as Mindspring suggests, limited to intellectual property laws as they existed in 1996.” IMMUNITY ASSERTED Mindspring asserted that Congress had the opportunity to alter the extent to which Internet service providers (ISPs) may assert statutory immunity from trademark infringement when it passed the Digital Millennium Copyright Act (DMCA) of 1998, but chose not to do so. But the judge did not find this persuasive. “The court respectfully disagrees with Mindspring’s conclusion and finds that Congress’ enactment of the DMCA — pertaining only to copyright infringement two years after Section 230 was passed, lends further support to the proposition that Section 230 does not automatically immunize ISPs from all intellectual property infringement claims,” Berman said. “To find otherwise would render the immunities created by the DMCA from copyright infringement actions superfluous.” Mindspring contended that the purpose of Section 230 was to “immunize online service providers from liability for content they did not produce,” while preserving their discretion to adopt editorial policies that could result in the deletion of objectionable content. But Gucci countered, and Berman agreed, that Section 230 was passed, in part, as a response to the case of Stratton-Oakmont, Inc. v. Prodigy Services Co., 1995 NYMisc Lexis 229 (N.Y. Sup. Ct. 1995). In Stratton-Oakmont, the court held that Prodigy could be held liable for defamatory statements made about the investment banking firm on one of Prodigy’s message boards because Prodigy “exercised sufficient control over its computer bulletin boards to render it a publisher with the same responsibilities as a newspaper.” But Berman said the legislative history cited by Mindspring “indicates only that Section 230(c) immunizes ISPs from defamation and other, non-intellectual property, state law claims arising from third-party content.” Milton Springut and Tal S. Benschar of New York’s Kalow & Springut represented Gucci. Robert L. Corn-Revere of Washington, D.C.’s Hogan & Hartson represented Mindspring. Hall & Associates did not participate in the motion.

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