[Ecommerce] Re: [Politech] Paul Levy on 9th Circuit protecting freedom of speech online [fs]

[Jeff Williams]

Declan and all,

  At least one circuit is getting things right here...  I am sure the RIAA
will be reviewing this decision very closely...

Declan McCullagh wrote:

> -------- Original Message --------
> Subject: Ninth Circuit protects freedom of speech online
> Date: Mon, 04 Apr 2005 18:48:43 -0400
> From: Paul Levy <plevy@citizen.org>
> To: <declan@well.com>
>
>         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
>
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Regards,

--
Jeffrey A. Williams
Spokesman for INEGroup LLA. - (Over 134k members/stakeholders strong!)
"Be precise in the use of words and expect precision from others" -
    Pierre Abelard

"If the probability be called P; the injury, L; and the burden, B;
liability depends upon whether B is less than L multiplied by
P: i.e., whether B is less than PL."
United States v. Carroll Towing  (159 F.2d 169 [2d Cir. 1947]
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