Opinion Web site does not infringe trademark

Content Regulation | Feature | April 13, 2005

    News Media Update         NINTH CIRCUIT         Copyright/Intellectual Property         April 13, 2005    


Opinion Web site does not infringe trademark
  • A business' trademarked name can be used as the domain name of a Web site devoted to commentary about the business, the U.S. Court of Appeals in San Francisco ruled.

April 13, 2005 -- Using a business' trademarked name as the domain name of a Web site devoted to commentary and criticism about the business does not violate federal trademark law so long as the trademark is not used to sell goods or services, the U.S. Court of Appeals in San Francisco (9th Cir.) ruled last week.

Because use of the domain name was "noncommercial and unlikely to cause confusion," the three-judge panel affirmed a lower court's dismissal of the claims.

Michael Kremer started www.BosleyMedical.com in 2001 in "a bald-faced effort to get even," the appellate court said, after he was dissatisfied with hair restoration services provided by Bosley Medical Institute Inc. Kremer's Web site summarized a 1996 investigation of Bosley by the Los Angeles County District Attorney and contained criticism and links to other sites critical of Bosley.

The business sued Kremer for trademark infringement, libel and related claims. The libel claims against Kremer were later dropped and a U.S. District Court in San Diego dismissed Bosley's trademark claims.

In affirming the lower court's dismissal, Judge Barry G. Silverman wrote: "Kremer is not Bosley's competitor; he is their critic. His use of the Bosley mark is not in connection with the sale of goods or services -- it is in connection with the expression of his opinion about Bosley's goods and services."

The court found that Kremer's linking to Web sites that linked to other sites that advertised Bosley's competitors was "too attenuated to render Kremer's site commercial."

The court declined to follow a 2001 ruling of the U.S. Court of Appeals in Richmond, Va. (4th Cir.) that a noncommercial parody Web site's use of a trademarked domain name violated the law because it prevented customers from reaching the trademark holder's site.

The Court of Appeals sent the Bosley case back to the trial court for more fact-finding on Bosley's related claim that Kremer violated a federal "cybersquatting" statute by registering the domain name intending to sell it to Bosley for a profit.

The court also rejected Kremer's motion to dismiss the suit under California's anti-SLAPP law, which is meant to protect against "strategic lawsuits against public participation" -- lawsuits filed by parties with the intent of quieting a critic.

"An infringement lawsuit by a trademark owner over a defendant's unauthorized use of the mark as his domain name does not necessarily impair the defendant's free speech rights," Silverman wrote.

(Bosley Medical Institute v. Kremer, Media Counsel: Paul A. Levy, Public Citizen Litigation Group, Washington, D.C.) -- GP

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