April 05, 2005
Bosley Medical Institute v. Kremer--Victory for Gripers
Bosley Medical Institute v. Kremer, No. 04-55962, 9th Cir. Apr. 4, 2005. Kremer launches gripe site at www.bosleymedical.com, using the trademark of his target (with no additional words/letters) in the domain name. The court’s response was a big victory for gripers everywhere: “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.”
On the critical question of whether the griper was using the domain name in commerce, the site generated no revenues and did not promote any goods or services. It did link to another website, which through a series of further links could lead to commercial advertisements. It would be ridiculous to collapse this chain of links into a conclusion that the domain name use was commercial, and the Ninth Circuit wisely rejected that illogic. (“This roundabout path to the advertising of others is too attenuated to render Kremer’s site commercial.”) The court distinguished Nissan Motor v. Nissan Computer because, in that case, the domain name owner put ads directly on his site.
Many courts have upheld gripers’ rights so long as do not use TM.com, so this case could be a turning point for letting gripers pick a domain name of choice. The court disagreed with the PETA v. Doughney case on the argument that registering TM.com blocks customers of the TM owner from obtaining the TM owner’s goods, because in this case the bosleymedical.com site was, indeed, about Bosley Medical. The court limits the doctrine to situations where the domain name registrant offers competing services. Thus, in a strongly-worded sentence, the court concludes “Bosley cannot use the Lanham Act either as a shield from Kremer’s criticism, or as a sword to shut Kremer up.”
(In a footnote, the court says that the initial interest confusion does not apply because the griper’s use was non-commercial).
The court reversed the griper’s summary judgment ruling on the ACPA claim, rejecting that the non-commercial determination under the Lanham Act insulates the griper from a bad faith determination under ACPA (citing the Coca-Cola v. Purdy case). Therefore, it’s still possible the trial court will find against the griper on ACPA.
(Disclaimer: I signed on to an amicus brief prepared by the Berkman Center supporting Kremer in this case).
UPDATE: Marty Schwimmer has a contrarian take on the case.