Sometimes a Judge simply cannot resist the urge have some fun with the facts of the case before him. The Honorable Barry G. Silverman of the Ninth Circuit U.S. Court of Appeals succumbs to temptation today in ruling on a case of alleged trademark infringement.
The holding in the case will be welcomed by many, and especially by angry consumers with Web access. The Court holds that the non-commercial use of a trademark as the domain name for a web site critical of the trademark owner is not an infringement of the trademark under the Lanham Act.
Here is the introductory portion of Judge Silverman's opinion, which includes the Judge's moment of weakness:
Defendant Michael Kremer was dissatisfied with the hair restoration services provided to him by the Bosley Medical Institute, Inc. In a bald-faced effort to get even, Kremer started a website at www.BosleyMedical.com, which, to put it mildly, was uncomplimentary of the Bosley Medical Institute. The problem is that 'Bosley Medical' is the registered trademark of the Bosley Medical Institute, Inc., which brought suit against Kremer for trademark infringement and like claims. Kremer argues that noncommercial use of the mark is not actionable as infringement under the Lanham Act. Bosley responds that Kremer is splitting hairs.
Like the district court, we agree with Kremer. 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.
(Italics added.) Later in the opinion, Judge Silverman makes clear that he is not jesting in concluding that Bosley Medical is overreaching in its effort to use its intellectual property rights against Kremer and his critiques:
Any harm to Bosley arises not from a competitor's sale of a similar product under Bosley's mark, but from Kremer's criticism of their services. Bosley cannot use the Lanham Act either as a shield from Kremer's criticism, or as a sword to shut Kremer up.
The news is not all good for Kremer: the Court also finds that the trial judge acted prematurely in dismissing Bosley Medical's "cybersquatting" claims, and in finding that Bosley Medical's state law claims are barred by California's Anti-SLAPP statute.
The Court's full opinion in Bosley Medical Institute v. Kremer (April 4, 2005), Case No. 04-55962, is available from the 9th Circuit's site at the following link in PDF format.
Comments