GoDaddy & Instagram Avoid Liability for Users’ Photos of Knockoff Goods–Franklin v. X Gear 101

The plaintiff owns copyright and trademark registrations in a bear logo. He claims a defendant created a similar-looking bear logo and marketed goods using that logo:

 

I’ll focus on the court’s treatment of plaintiffs’ claims against GoDaddy and Instagram. The court summarizes:

The Complaint’s only allegations that explicitly reference Instagram and GoDaddy are that GoDaddy provides web hosting services to X Gear and Tydlacka, and that Instagram provides an application on which X Gear and Tydlacka publish images of the infringing logo. We thus construe the Complaint to allege that Instagram and GoDaddy are contributorily liable for trademark and copyright infringement because they induced X Gear and Tydlacka’s actions.

The magistrate recommends dismissing both parties from the lawsuit:

No Trademark Use in Commerce.

As for Instagram, the Complaint does not contend that it placed the ORIGINAL WORK logo on any clothing or other goods that it sold or that Instagram sold its photo sharing services by use of the ORIGINAL WORK logo. Rather, it alleges only that Instagram published — or “exploit[ed]” — images “in conjunction with X Gear and Joshua Tydlacka” on its application, with no further explanation. Similarly, the Complaint contends that GoDaddy provided “web hosting services to X Gear 101 and Joshua Tydlacka,” but not that GoDaddy used the mark in connection with selling or advertising its web hosting services. Moreover, it is apparent from the other allegations of the Complaint that it is X Gear and Tydlacka who allegedly “used” Franklin’s trademark in connection with the sale of goods — not GoDaddy or Instagram.

No “Unfair Competition” (State TM Claim). “the allegations do not show that Instagram or GoDaddy acted in bad faith in providing web hosting services or photo-sharing services to X Gear and Tydlacka.”

No Copyright Infringement.

the Complaint contains only a single allegation to support an inducement claim: namely, that defendants induced X Gear’s copyright violation — assuming it constituted direct infringement — because they received a notice of infringement. Because inducement requires a showing of intent to promote infringing uses, and the Complaint does not allege that the defendants provided services to X Gear and Tydlacka with the intent to induce copyright infringement, this single allegation is insufficient to support the claim

No Unjust Enrichment/Conversion Due to Section 230.

1. They qualify as ICS providers: “Franklin seeks to hold GoDaddy liable for providing web hosting services to X Gear and Tydlacka, and Instagram for providing “a photo sharing computer and/or mobile phone application” on which X Gear published the allegedly infringing images”

2. Publisher/Speaker claim: “the Complaint seeks to hold Instagram and GoDaddy liable for conversion and unjust enrichment based on their acts in publishing
or disseminating the infringing logo by X Gear and Tydlacka.”

3. Based on third party content: “the Complaint rests entirely on allegations that X Gear and Tydlacka published photos of clothing and other goods bearing the infringing logo on a website hosted on GoDaddy’s servers and to a profile hosted on Instagram’s servers. The Complaint nowhere alleges that Instagram or GoDaddy provided the infringing logo or contributed even in part to the development of X Gears’ logo. Thus, Instagram and GoDaddy have established that
the conversion and unjust enrichment claims are “based on information provided by another information content provider” — that is, X Gear and Tydlacka.”

Case citation: Franklin v. X Gear 101, 2018 WL 3528731 (S.D.N.Y. July 23, 2018)