-------- Original Message -------- Subject: Ninth Circuit protects freedom of speech online Date: Mon, 04 Apr 2005 18:48:43 -0400 From: Paul Levy <plevy@private> To: <declan@private> 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/3B0C93358B88F28D88256FD90056994B/$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 _______________________________________________ Politech mailing list Archived at http://www.politechbot.com/ Moderated by Declan McCullagh (http://www.mccullagh.org/)
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