Domain Name Used For Non-Commercial Criticism Did Not Infringe Trademark, But Could Violate Anti-Cybersquatting Law

The Ninth Circuit held this week that using a trademark as a domain name for non-commercial criticism of a business does not constitute infringement under the Lanham Act. However, the court remanded the case to allow the plaintiff to pursue claims under the federal Anticybersquatting Consumer Protection Act because that act is not limited to commercial uses. Bosley Med. Inst. v. Kremer, No. 04-55962 (9th Cir. April 04, 2005).

The Bosley case concerned the website bosleymedical.com. That site was set up by Michael Kremer, a disgruntled customer of Bosley Medical Institute, a hair replacement clinic, and contains criticism of Bosley Medical. Bosley Medical has a federal registered trademark for the mark BOSLEY MEDICAL. Bosley Medical sued Kremer for trademark infringement and dilution under the Lanham Act, violation of the Anticybersquatting Consumer Protection Act, unfair competition, and state law claims. The district court granted summary judgment for Kremer and dismissed Bosley Medical’s state law claims under California’s anti-SLAPP statute.

With respect to Bosley Medical’s trademark infringement and dilution claims under the Lanham Act (15 U.S.C. §§ 1114, 1125(a) and 1125(c)), the Ninth Circuit held 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."

In reaching its conclusion, the court looked to statutory language limiting infringement and dilution claims to commercial uses, and the purpose of the Lanham Act “to secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers.” The court also noted that broader application of the Lanham Act would interfere with free speech rights protected by the First Amendment.

Applying these tests, the court found that the bosleymedical.com site did not infringe plaintiff's trademark because it did not use the mark in connection with the sales of goods or services. The court noted that the site did not contain any direct links to commercial sites. Further, the court rejected plaintiff's argument that by using the domain name, defendant interfered with the sale of plaintiff's services. In rejecting this argument, the Bosley court declined to follow the Fourth Circuit's decision in People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001), noting that the PETA approach raised First Amendment concerns.

However, the court sided with the plaintiff on the Anticybersquatting Consumer Protection Act (ACPA), holding that the Act reached non-commercial uses. In reaching its conclusion, the court noted that the act prohibits registering or trafficking in a domain name with bad faith intent to profit from the trademark. The court also observed that one of nine statutory factors for a court to consider was registrant’s “bona fide noncommercial or fair use of the mark in a site accessible under the domain name.” 15 U.S.C. § 1125(d)(1)(B)(i)(IV). This factor would be meaningless if the statute exempted all noncommercial uses of a trademark within a domain name. The court directed that the plaintiff be allowed to pursue discovery on whether Kremer registered the domain name with a bad faith intent to profit.

Finally, the court also reversed the dismissal of plaintiff's state law claims. These claims had been dismissed under California's Anti-Strategic Lawsuit Against Public Participation (“anti-SLAPP”) statute, Cal. Civ. Proc. Code § 425.16(a). The court held that dismissal under the anti-SLAPP statute was improper because the state law trademark claims could have merit and whether the First Amendment was implicated should be decided upon the particular circumstances presented with respect to each domain name.