Clearinghouse Topic Areas: |
|
|
|
|
 Having a Bad Hair Day? Customer tries to get even with Bosley Medical.Ameet Patel, DePaul University College of Law Technology/Intellectual Property Clinic, September 14, 2005
Abstract: In a domain name dispute, the Ninth Circuit found that the use of another’s trademark as part of a domain name for a noncommercial gripe site does not constitute trademark infringement or dilution under the Lanham Act. However, the court remanded the matter back to the district court to determine whether in registering his domain name the defendant had a “bad faith intent to profit” from plaintiff's trademark which would allow recovery under the Anticybersquatting Consumer Protection Act (ACPA).
In Bosley Medical Institute v. Kremer, the defendant, Michael Kremer (Kremer),
was dissatisfied with the hair restoration service provided by the plaintiff, Bosley
Medical Institute (Bosley). As a result, Kremer launched a website under the domain
name BosleyMedical.com that was
highly critical of Bosley and its services. Bosley, which owns the trademark
to the name “Bosley Medical,” brought suit alleging trademark infringement and
dilution under the Lanham Act, as well as a claim under the
Anticybersquatting
Consumer Protection Act (ACPA).
Athough Kremer’s website contained information critical of Bosley, it did not offer for sale any goods or services, nor contain any commercial advertising. The website had no links to
Bosley's competitors but did have a link to a newsgroup chat room, which in turn contained links to competitors and to Public Citizen-the organization
representing Kremer in the case.
In rejecting Bosley’s trademark claims, the District Court concluded that Bosley failed to show that Kremer’s website was a "use in commerce" as required by the Lanham Act. On appeal, the Ninth Circuit stated that "use in commerce" was merely a jurisdictional predicate and the proper inquiry was whether Kremer's website was "in connection with a sale of goods or services," in other words, "commercial use." Bosley advanced three arguments to support its assertion that Kremer's website was in fact a commercial use.
First, Bosley argued that although the website itself did not include
advertising, it contained a link to a newsgroup chat room, which in turned
contained links to advertisements from Bosley’s competitors. The court rejected
this argument because the linking to other sites was “too attenuated” to render
Kremer’s website commercial. The court also held that Kremer's identification of his lawyers with a link did not constitute commercial use.
Second, Bosley argued that Kremer planned to profit from registering the domain name by extorting money from Bosley and thereby making his use of the domain name commercial. The court rejected this argument because the record contained no evidence that Kremer was trying to sell the domain
name itself.
Finally, Bosley argued that Kremer's website was a commercial use because using Bosley's trademark as its domain name prevented users from obtaining Bosley’s goods or services. In support of this, Bosley relied on the Fourth Circuit’s decision in
People for the Ethical Treatment of Animals v. Doughney.
In that case, the Fourth Circuit held that a parody site that criticized PETA satisfied
the commercial use requirement because it prevented users from obtaining PETA’s
goods or services. Although the court distinguished PETA from the present case - the website in PETA directly linked to other commercial sites - it disagreed with the Fourth Circuit’s rationale in determining whether a website is a commerical use. According to the court, such an expansive
reading of the commercial use requirement would place all consumer commentary sites under the reach of the Lanham
Act. Instead, the court stated that the appropriate inquiry was whether the defendant offered competing goods or services. The court concluded that no customer would mistakenly purchase a hair replacement service from Kremer under the belief that the service was offered by Bosley. As such, the court concluded that Bosley failed to prove that Kremer's website satisfied the commercial use requirement under the Lanham Act.
Although the court rejected Bosley’s claims under the Lanham Act, it did leave
open the possibility that Bosley could pursue a claim under the ACPA. The court
reversed the District Court’s holding that Kremer did not violate the ACPA
because his website was noncommercial. The Ninth Circuit clarified that the ACPA
does not have a commercial use requirement, and stated that the district court should
have decided the issue based on whether Kremer had a “bad faith intent to
profit” from Bosley’s trademark. The court stated that allowing a defendant to register a domain name in bad faith but get around the statute by making
noncommercial use of the trademark would defeat the purpose of the ACPA. Accordingly, the court concluded that Bosley was entitled to discovery on whether Kremer had a bad faith intent to profit from the use of the domain name.
|
|
 Recent C&Ds |
|
|
| Related News |
|
|
| Related Resources |
|
|
|
