|
|
|
Internet
Law
Update |
|
By
Martin H. Samson
| |
|
April 20, 2005 |
Davidoff Malito & Hutcher LLP
|
|
|
|
Thank you for
your interest in the Internet Law Update, which provides
in-depth analysis of recent noteworthy court decisions
affecting those who do business on the Internet. Over 350 additional court decisions
are analyzed in the Internet Library of Law and Court
Decisions, one of the webs foremost case digests. The Internet Library, at http://www.internetlibrary.com provides
both short squibs and in-depth coverage of decisions
resolving a broad array of legal problems faced by your
peers.
If you are
a movie buff, you can test your acumen by trying our
movie trivia quiz. Know someone who would like to
receive my free Internet
Law Updates?
Forward this to a friend.
Use Of Trademark In Non-Commercial Gripe Site's Domain
Does Not Constitute Trademark
Infringement Or
Dilution, Bosley
Medical Institute, Inc., et al. v. Michael Steven Kremer, No.
04-55962 (9th Cir., April 4,
2005)
The Ninth
Circuit holds that the use of another’s trademark as the
domain name for a non-commercial gripe site does not
constitute trademark infringement or dilution in violation of
the Lanham Act.
To run afoul of the Lanham Act, a mark must be used in
connection with the sale of goods or services. A web site which is
merely critical of another’s goods or services does not fit
this bill. The
Ninth Circuit accordingly affirmed the District Court’s grant
of summary judgment, dismissing plaintiff’s trademark
infringement and dilution claims.
The Ninth Circuit
reversed, however, so much of the District Court’s decision
which dismissed plaintiff’s Anticybersquatting Consumer
Protection Act (“ACPA”) claim. The ACPA does not have
a commercial use requirement, and, accordingly, establishing
that the mark was used as the domain for a non-commercial
gripe site does not absolve the griper from potential
liability under the ACPA. Because that was the
basis on which the lower court dismissed plaintiff’s ACPA
claim, its dismissal was reversed. The matter was
remanded to the District Court to determine whether defendant
used the mark with a bad faith intent to profit therefrom, in
violation of the ACPA.
|
The
Ninth Circuit holds that the use of another’s trademark
as the domain name for a non-commercial gripe site does
not constitute trademark infringement or dilution in
violation of the Lanham Act. To run afoul of
the Lanham Act, a mark must be used in connection with
the sale of goods or services, which does not occur on a
web site merely critical of another’s goods or
services.
Such
a use may, however, give rise to a claim under the
Anticybersquatting Consumer Protection Act if done with
a bad faith intent to profit thereon. Such is the
case, holds the Ninth Circuit, because the ACPA does not
have a commercial use requirement. Accordingly,
establishing that the mark was used as the domain for a
non-commercial gripe site does not absolve the griper
from potential liability under the ACPA .
|
Dissatisfied
Consumer Launches Non-Commercial Gripe
Site
Defendant Michael
Kremer (“Kremer”) was dissatisfied with the hair restoration
services he was provided by plaintiff Bosley Medical Institute
(“Bosley Medical”).
As a result, he launched a web site at the domain
BosleyMedical.com that was highly critical of plaintiff and
its services.
“Bosley Medical” is a registered trademark owned by
plaintiff, which it uses to market its hair restoration
services.
Kremer did not
sell or offer to sell any products at this site, nor did he
derive any revenue from its operation. No advertisements were
displayed on this site.
The only links on the site were to the website of the
lawyers representing Kremer, and to another site Kremer
operated at bosleymedicalviolations.com. This second site, in
turn, contained a link to a newsgroup which contained
advertisements for plaintiff’s
competitors.
After acquiring
the BosleyMedical.com domain, but prior to the launch of his
website, Kremer sent Bosley Medical a letter urging them to
engage in settlement discussions. Failing that, Kremer
would publicize his negative views about Bosley Medical on the
Internet. The
letter did not contain an express offer to sell the
BosleyMedical.com domain to plaintiff.
Bosley Medical
responded by commencing this suit, asserting, inter alia, claims for
trademark infringement and dilution under the Lanham Act, as
well as a claim that defendant’s use of the mark violated the
ACPA.
Non-Commercial Use Neither
Infringes Nor
Dilutes
Kremer moved for
summary judgment, arguing that the non-commercial use of
plaintiff’s mark in his web site did not run afoul of the
Lanham Act. The
Ninth Circuit agreed.
To establish an
infringement claim under the Lanham Act, the trademark owner
must demonstrate a use of his mark “in commerce . . . in
connection with the sale, offering for sale, distribution or
advertising of any goods or services . . .”. 15 U.S.C.
§1114(1)(a). The
Ninth Circuit held an “analogous” requirement is found in the
Federal Trademark Dilution Act’s (“FTDA”) strictures against
“another person’s commercial use in commerce of a mark or
trade name . . .”.
15 U.S.C. §1125(c)(1).
The Ninth Circuit
held such a requirement was lacking in a non-commercial gripe
site. Kremer
derived no revenue from the operation of his site, which
contained no advertisements, nor offered any products for
sale. It merely
contained information critical of Bosley
Medical.
The Court held
that neither Kremer’s links to his lawyer’s site, nor his
links to a sister site which contained a link to a newsgroup
that displayed competitors’ advertising, rendered his site
commercial. Said
the Court:
Kremer’s website
contains no commercial inks, but rather contains links to a
discussion group, which in turn contains advertising. This roundabout path
to the advertising of others is too attenuated to render
Kremer’s site commercial. At no time did
Kremer’s BosleyMedical.com site offer for sale any product or
service or contain paid advertisements from any other
commercial entity.
In reaching this
result, the Court rejected Bosley Medical’s contention that
Kremer’s use of its mark was commercial because it prevented
users from obtaining plaintiff’s goods and services. This argument had
found favor with the Fourth Circuit in People for the
Ethical Treatment of Animals v. Doughney, 263 F.3d 359
(4th Cir. 2001).
The appropriate
inquiry, held the Court, was instead whether Kremer offers
competing services.
Failing that, his use of plaintiff’s mark was not one
against which the Lanham Act was designed to protect. Said the Court:
[T]he appropriate
inquiry is whether Kremer offers competing services to
the public.
Kremer is not Bosley’s competitor; he is their
critic. His use
of the Bosley mark is not in connection with a sale of goods
or services — it is in connection with the expression of his
option about
Bosley’s goods and services.
The dangers that
the Lanham Act was designed to address are simply not at issue
in this case. The
Lanham Act, expressly enacted to be applied in commercial
contexts, does not prohibit all unauthorized uses of a
trademark.
Kremer’s use of the Bosley Medical mark simply cannot
mislead consumers into buying a competing product — no
customer will mistakenly purchase a hair replacement service
from Kremer under the belief that the service is being offered
by Bosley.
Neither is Kremer capitalizing on the good will Bosley
has created in its mark.
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.
Anticybersquatting Consumer
Protection Act Claim Reinstated
The Court held
that the Anticybersquatting Consumer Protection Act (“ACPA”)
did not impose the same commercial use requirement. The Court rejected
Kremer’s argument that such a commercial use requirement was
found in the language of 15 U.S.C. §1125(c)(4). While that language
states that a “noncommercial use of the mark” “shall not be
actionable under this section,” the Court held this language
inapplicable to ACPA claims. The Court rested its
decision, in part, on the ACPA’s prohibitions against the
registration of another’s mark with a bad faith intent to
profit thereon, as well as the Act’s listing of noncommercial
use as only one factor to be used by the Court in analyzing
whether the defendant acted in bad faith. Because the lower
court held to the contrary, its decision was reversed, and
plaintiff’s ACPA claims remanded for a determination of
whether Kremer acted in bad faith, in light, inter alia, of his
pre-launch letter threatening to publish his criticisms of
Bosley Medical if his dispute was not settled.
Finally, the Ninth
Circuit reversed the District Court’s grant of Kremer’s motion
to dismiss under California’s SLAPP statute. Said the Court:
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 speech rights.
|
|
|
|
Here are summaries of the most recent
cases that have appeared in Internet Law Update. If you
missed one of these issues, simply request it in a reply
to this email and we will forward it on to you.
|
1. |
Court Allows Trademark
Infringement Action Arising Out Of Alleged Use
Of Defendant's Marks To Trigger Display Of Third
Party Sponsored Links In Search Engine
Results To
Proceed, Google
Inc. v. American Blind & Wallpaper Factory,
Inc.,
Case No. C03-05340-F (N.D. Cal., March 30, 2005).
Court denies
motion to dismiss trademark infringement and dilution
claims asserted by American Blind arising out of
Google’s alleged use of American Blind’s trademarks to
trigger the display of third party advertisements in
search engine results for those marks. The Court
declined at this stage of the proceedings to hold that
use of American Blind’s trademarks in this fashion was
insufficient to give rise to trademark infringement or
dilution claims because it did not constitute a use of
the marks to identify the source of goods or services
supplied by Google.
|
|
2.
|
Linking To Infringing Images
May Give Rise To Copyright
Infringement, Batesville
Services, Inc., et al. v. Funeral Depot, Case No.
1:02-cv-1011-DFH-TAB (S. D. Ind., November 10,
2004). Court holds
that defendant Funeral Depot may be infringing
plaintiffs’ copyright in advertising materials by
placing small thumbnail images of those copyrighted
materials on defendant’s website linked to allegedly
infringing full size copies of those same materials
defendant arranged to have placed on a third party’s
website.
While this website is owned by one of plaintiffs’
authorized dealers, visitors to the web pages containing
the challenged images view defendant Funeral Depot’s
contact information, as well as prices for these caskets
set by defendant.
Because issues of fact existed as to whether the
third party dealer had an implied license to use the
advertising materials in this fashion, the Court could
not determine if defendant was infringing plaintiff’s
copyright on the parties’ respective summary judgment
motions.
|
|
3.
|
Apple Allowed To Proceed
With Subpoena Seeking Blogger's
Source, Apple
Computer v. Doe 1, et al.,
Case No. 1-04-CV-032178 (Superior Ct., Ca., March 11,
2005). Court denies
bloggers’ motion to quash a subpoena served by Apple
Computer on an e-mail service provider, which subpoena
sought materials that would identify the individual(s)
who transmitted trade secret information about an Apple
product to PowerPage, which information PowerPage
subsequently published on its blog/website. The Court held
that the bloggers were not entitled to such relief under
either California’s ‘Shield Law’ or the First
Amendment.
The former only protects journalists from being
found in contempt for failing to produce information,
while the latter cannot be used to prevent the
disclosure of information related to criminal activity
such as that at issue here, the disclosure of trade
secrets.
|
|
4.
|
Gripe Site Operator Loses
Rights To "Your
Company.com" Domain, Glenn
Harrison v. Microfinancial, Inc., Civil Action No.
03-11437-GAO, 2005 U.S. Dist. Lexis 2804 (D. Mass.,
February 24,
2005). ourt
finds that a disgruntled customer violated the
Anticybersquatting Consumer Protection Act by
registering a domain name containing defendant
Microfinancial’s trademark, at which domain plaintiff
operated a website critical of defendant. The Court
determined that plaintiff had registered the domain name
with a bad faith intent to profit therefrom, in large
part because plaintiff had offered to transfer the
domain to Microfinancial if it redressed the grievances
he and others had with the company.
|
| 5. |
Unauthorized Use Of
Spyware To Capture Online Communications Violates
Florida Law, Beverly
Ann O’Brien v. James Kevin O’Brien,
Case No. 5D03-3484 (Dist. Crt. App., Fla., February 11,
2005). Court holds
that the unauthorized use of a spyware program to
capture screen shots of a husband’s online
communications violates Florida’s Security of
Communications Act, modeled after the Federal Wiretap
Act, 18 U.S.C. Section 2501, et seq. An intermediate
Florida appellate court accordingly affirms the trial
court decision to bar the wife from introducing these
screen shots into evidence in her divorce proceeding
with her husband.
|
| 6. |
DMCA And CDA Immunize Amazon
From Copyright Infringement And Other Claims Arising
Out Of Unauthorized Sale By Nonaffilated
Vendors Of Copyrighted Images, Corbis
Corporation v. Amazon.com, Inc., et al., No.
CV03-1415L (W.D. Wash., December 21,
2004). Digital
Millennium Copyright Act immunizes Amazon from copyright
infringement damage claims arising out of the
unauthorized sale by nonaffiliated vendors on Amazon.com
of plaintiff’s copyrighted and/or licensed
photographs.
In reaching this result, the Court held that
Amazon qualified for protection under 17 U.S.C.
§ 512(c), which protects service providers from
liability for copyright infringement by reason of their
storage of infringing materials at the direction of a
third party. The Court
further held that the Communications Decency Act
immunizes Amazon from Washington State law Consumer
Protection Act and tortious interference with business
relations claims arising from such sales. Finally, the
Court held that issues of fact precluded dismissal of
copyright infringement claims plaintiff asserted arising
out of the alleged use of one of its copyrighted images
in an advertisement on a separate website owned by
Amazon. |
|
7. |
"Sponsored
Links" Displayed By Search Engine Infringe If
They Contain Searched For Trademark, And Do
Not If Such Trademarks Are
Absent, Government
Employees Insurance Company v. Google,
Inc.,
Civ. Action No. 1:04cv507 (E.D., Va., December 15,
2004).
In a
bench ruling, Court holds that the display by search
engine giant Google of third party ads denominated
“sponsored links” triggered by the entry of a trademark
as a search term runs afoul of the Lanham Act when the
“sponsored links” contain the searched-for trademark,
but does not when the “sponsored links” do not contain
such trademarks. The Court did not
resolve the issue of Google’s potential liability for
the display of such third party ads, noting that Google
had a policy prohibiting its advertisers from displaying
“sponsored links” containing trademarks of third parties
used as the triggering search term. It should also
be noted that the Court’s finding that consumers would
not be confused by “sponsored links” that did not
contain a trademark was based, in large part, on its
rejection of the particular survey evidence presented by
the mark holder on this issue.
|
|
|
|
|
 Last Week's
Winners.
Congratulations to Tina D., Wendy
L., Saraann P.
and Kohel H. for
correctly answering last week's hard quiz - This
is the only movie I can think of where a one word clue
allows you easily to identify it. No you say?
Wanna bet? So here's the word - "Yo." Name
this movie and its stars.
Rocky (1976) starring Sylvester Stallone as Rocky Balboa,
Talia Shire as Adrian, Burt Young as Paulie, Carl Weathers as
Apollo Creed and Burgess Meredith as Mickey.
This Week's
Quiz.
Now for this week's quiz - A murderess is afoot. Your
job, in this movie, is to figure out who it is. The
murder follows the script laid out in an author's book, which
makes her a suspect. But then again, it could have been
the good doctor who did it, given her obsession with the
author and all who know her. Only the location
of an ice pick at the movie's end lets you know which one
did it for sure. Name this movie and its
stars. |
|
|
Martin
H. Samson, Esq.
msamson@internetlibrary.com |
Copyright ©
2004, Martin H. Samson, All Rights
Reserved |