[DMCA-Activists] 9th C: TMs in Critical Domain Names Legal

[Seth Johnson]

-------- Original Message --------
Subject: [IP] Important new court of appeals ruling onInternet
free speech
Date: Mon, 04 Apr 2005 19:15:22 -0400
From: David Farber <address@hidden>
Reply-To: address@hidden
To: Ip <address@hidden>


------ Forwarded Message
From: Paul Levy <address@hidden>
Date: Mon, 04 Apr 2005 18:49:23 -0400
To: <address@hidden>
Subject: Important new court of appeals ruling on Internet free
speech


 Squarely rejecting trademark infringement and dilution claims,
the United States Court of Appeals for the Ninth Circuit today
held that citizens who use a trademark as the domain name for a
noncommercial consumer criticism site about the trademarked goods
do not violate the trademark laws.  Bosley Medical Institute v.
Kremer, No. 04-55962 (April 4, 2005).  The opinion can be read
online on the Ninth Circuit's web site at
http://www.ca9.uscourts.gov/ca9/newopinions.nsf/3B0C93358B88F28D88256FD90056994B/$file/0455962.pdf?openelement.

 The case involved a pair of web sites at www.bosleymedical.com
and www.bosleymedicalviolations.com, on which Michael Kremer, a
dissatisfied former customer of Bosley's, disclosed the results
of several investigations by law enforcement and medical
disciplinary authorities.  Bosley sued, claiming that the mere
use of its trademark in the domain names violated the trademark
laws, and the district court granted summary judgment as well as
striking the state law claims under the California anti-SLAPP
statute.

 The Court of Appeals affirmed, although on somewhat different
grounds than the trial court.  The Court of Appeals held that
both trademark infringement and trademark dilution claims can
proceed only when the defendant is using the trademark in
connection with the sale of goods and services, and an Internet
web site, even if it criticizes those goods and services, is
simply not the sort of commercial use to which the Lanham Act is
directed.

 On the other hand, the Court of Appeals decided that there was
insufficient attention paid to the ACPA claims in the district
court, and in particular to the nine "bad faith intent to profit"
factors listed in the statute, and accordingly it sent the case
back to the district court of decision of those issues. 
Similarly, the court ruled that although summary judgment might
have been appropriate on the state law trademark claims, a SLAPP
ruling was inappropriate.

 Although the technical aspects of the decision about the ACPA
and state law claims means that Kremer will have to win those
claims again in the district court, the trademark portions of the
opinion represent an important victory for free speech online. 
The key holding is stated on the first page of the opinion (page
3979 on the Ninth Circuit's web site version): "We hold today
that the noncommercial use of a trademark as the domain name of a
website - the subject of which is consumer commentary about the
products and services represented by the mark - does not
constitute infringement under the Lanham Act." Internet "gripers"
will be well-protected by this decision, so long as they do
nothing that can be perceived as an attempt to shake down the
trademark holder for a payment in return for the domain name.

Paul Alan Levy
Public Citizen Litigation Group
1600 - 20th Street, N.W.
Washington, D.C. 20009
(202) 588-1000
http://www.citizen.org/litigation

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