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HP Fights Lawsuit Over Penis Size App Known as 'Chubby Checker' (Updated)

A judge is told that the app was removed from the Palm App Catalog after singer Chubby Checker sent a cease-and-desist letter.

Chubby Checker 2010 - P 2013
Bill McKay/Getty Images
Singer Chubby Checker

Hewlett-Packard says that a lawsuit over a mobile phone app allowing men to measure the size of their penis doesn't add up. At issue is the "Chubby Checker,"  the punning app which in February provoked action in California federal court by Ernest Evans, the singer-songwriter famously known as Chubby Checker.

Evans says that HP has tarnished his name, violated his trademarks and knowingly invaded upon his publicity rights. In a statement to the court, HP says that it can't be held legally responsible for third parties that would make available such an item in its app store.

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UPDATE: On Thursday, a judge allowed the singer to assert trademark infringement but tossed his unfair competition and right of publicity claims.

The dispute is shaping up as one that will measure the liability of app distributors.

HP says it had no involvement in creating or naming the app, and that until receiving a cease and desist letter, it had no knowledge of Evans' claimed trademarks. Once it did, the app was removed, and HP says that in the period of time that the app was available, just 88 copies were downloaded at a retail price of $0.99.

Attorneys for Evans tell the judge "the first primary point of law in dispute is whether Defendants can be held directly liable for their acts given their 'hands-on' policy and procedure of approving each and every software app created for Defendants [sic] own smart phones."

If Evans can't hold HP responsible for direct infringement of his trademarks, he wants them punished for contributory infringement.

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A joint case-management statement (read here) by the parties over this funnily named penis-measuring app discusses various defenses that HP is raising in an attempt to cut the lawsuit. Among them is the "innocent publisher defense," based on law that is supposed to provide sanctuary from trademark claims for newspapers, magazines and periodicals over paid advertising. HP is also looking for safe harbor under Section 230 of the Communications Decency Act, which has often been used by digital publishers to shield themselves from liability over readers' posted comments. The company says that this statute can bar Evans' publicity rights claims.

There's other issues here, from jurisdiction to what kind of monetary relief Evans can get over an app that made only $16.58 when it was available for download.

Evans' attorneys note, "Although the Defendants claim to have stopped selling the app, Plaintiffs remain unsatisfied and Defendants continued to make reference to the app after the date the claim sales ceased."

On Thursday. U.S. District Judge William Alsup denied HP's motion to dismiss trademark claim, ruling that there were factual allegations to draw a reasonable inference of its liability.

On the trademark claim, HP denied any knowledge, but the judge writes, "Construed favorably to the plaintiffs, these allegations are sufficient to permit an inference that defendants knew, or could have reasonably deduced that the owner of the Chubby Checker mark would never have consented to license the mark for such a vulgar purpose."

The judge has agreed with HP, though, that Section 230 bars the plaintiff's state law claims, leaning on precedent from a class action brought against Facebook by users upset their likenesses were used in advertisements called "sponsored stories." This means an end to Evans' claim that the company violated Pennsylvania's unfair competition and trademark laws and California's right of publicity statutes.

Here's the ruling.

E-mail: Eriq.Gardner@THR.com
Twitter: @eriqgardner