Trademark: User-Generated Content

If you host user-generated content, such as user comments, you should be aware of your potential liability for that content under trademark law. For instance, a website user could post another blog's logo in a comment, eliciting a cease-and-desist letter from the competing blogger. While you would have a good argument that inclusion of a logo in a single comment does not create a likelihood of confusion between your two sites, you might consider whether you are responsible at all for material posted by a user. Unfortunately, while the so-called "safe harbor" provisions of the Digital Millennium Copyright Act (DMCA) and section 230 of the Communications Decency Act protect you from liability for user-generated content in a number of situations, they do not protect you against trademark claims, with one possible exception discussed below. The same point holds for third-party content you host on your site through news feeds or other aggregation mechanisms.

DMCA Safe Habors

Section 512 of the DMCA, 17 U.S.C. § 512, contains the DMCA's "safe-harbor" provisions for online service providers. These safe harbor provisions may shield you from liability for the copyright infringements of your site's users and for linking to copyright infringing material from other online sources, so long as you establish effective "notice-and-takedown" procedures, promptly remove content when a copyright owner notifies you that it is infringing, and have no actual or effective knowledge that the material in question is infringing. For details, please see Protecting Yourself Against Copyright Claims Based On User Content.

The DMCA safe harbor provisions only apply to claims of copyright infringement. Therefore, they do not provide any protection against trademark claims, whether for trademark infringement, trademark dilution, or cybersquatting. There may be times when you receive a DMCA takedown notice for material that is technically not eligible for safe-harbor treatment, like an allegedly infringing use of a trademark. If it satisfies the complaining person that you take the material down, and you have no serious objection, you might want to do so.

For information on the difference between copyright and trademark, see the Chilling Effects FAQ on Trademark.

Section 230 of the Communications Decency Act

Section 230 of the Communications Decency Act (CDA 230) protects website owners from many claims based on user comments and other third-party content, but it does not apply to "intellectual property" claims. 47 U.S.C. § 230(e)(2). Courts consider federal trademark claims to be "intellectual property" claims, so CDA 230 will not stop a federal trademark lawsuit based on user-generated or other third-party content.

A closer question is whether trademark claims under state law are "intellectual property" claims. One court has held that only federal intellectual property claims are outside the protection of CDA 230. See Perfect 10 v. CCBill LLC, 488 F.3d 1102 (9th Cir. 2007). Under this view, CDA 230 gives you a defense against state trademark claims based on user-generated content. More recently, another court held that CDA 230 does not bar state intellectual property claims. See Doe v. Friendfinder Network, Inc., 2008 WL 803947 (D.N.H. Mar. 27, 2008). Under this view, CDA 230 does not give you a defense against state trademark claims based on user-generated content.

For details on CDA 230, please see our Primer on Immunity and Liability for Third-Party Content Under Section 230 of the Communications Decency Act.


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