Ninth Circuit Protects Online Speech
In a significant victory for free speech on the Internet, the United States Court of Appeals for the Ninth Circuit on Monday 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 federal trademark laws.
That conclusion, in Bosley Medical Institute v. Kremer, had been urged by an amici curiae brief submitted to the court by the Berkman Center Clinical Program in Cyberlaw on behalf of 15 distinguished intellectual property law faculty. Adopting the standard urged by the Berkman brief as the only one that is permissible under well-settled trademark law, the court found that the “gripe site” was noncommercial because its domain name used the trademark for criticism rather than “in connection with a sale of goods or services.” Rejecting an attempt to use the trademark laws to stifle valuable speech, the court made clear that “Bosley cannot use the Lanham Act either as a shield from Kremer’s criticism, or as a sword to shut Kremer up." Elsewhere in its opinion, however, the court reinstated Bosley’s separate cybersquatting claim because the district court failed properly to evaluate the specific "bad faith intent to profit" factors enumerated in the ACPA statute and to give Bosley sufficient notice and opportunity to conduct discovery on that claim.
That conclusion, in Bosley Medical Institute v. Kremer, had been urged by an amici curiae brief submitted to the court by the Berkman Center Clinical Program in Cyberlaw on behalf of 15 distinguished intellectual property law faculty. Adopting the standard urged by the Berkman brief as the only one that is permissible under well-settled trademark law, the court found that the “gripe site” was noncommercial because its domain name used the trademark for criticism rather than “in connection with a sale of goods or services.” Rejecting an attempt to use the trademark laws to stifle valuable speech, the court made clear that “Bosley cannot use the Lanham Act either as a shield from Kremer’s criticism, or as a sword to shut Kremer up." Elsewhere in its opinion, however, the court reinstated Bosley’s separate cybersquatting claim because the district court failed properly to evaluate the specific "bad faith intent to profit" factors enumerated in the ACPA statute and to give Bosley sufficient notice and opportunity to conduct discovery on that claim.