Important new court of appeals ruling on Internet free speech

[David Farber <dave () farber net>]

------ Forwarded Message
From: Paul Levy <plevy () citizen org>
Date: Mon, 04 Apr 2005 18:49:23 -0400
To: <dave () farber net>
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/3B0C93358B88F28D88256FD90056
994B/$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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