Amicus Brief: Bosley Medical Institute Inc. v. Michael Steven Kremer

November 2, 2004

Introduction:

The parties listed at Appendix A submit this brief as amici curiae supporting affirmance of the District Court’s order, which found no basis for applying the Lanham Act to “cybergriping” sites that were “purely noncommercial”. Bosley Med. Inst., Inc. v. Kremer, No. Civ.01-1752WQHJMA, 2004 WL 964163, at *5, *9 (S.D. Cal. Apr. 30, 2004).According to the District Court, the Lanham Act could not apply because“[n]o genuine issues of material fact” existed with respect to the issue of“commercial use”: Bosley Medical Institute, Inc. (“Bosley”) had no evidence that Michael Kremer’s (“Kremer”) use of Bosley’s marks in the“bosleymedical.com” and “bosleymedicalviolations.com” websites was related to any business purpose. Id. at *9.

The Lanham Act was expressly designed for and has been exclusively applied to commercial contexts. On appeal, Bosley makes several arguments that, if adopted, would abandon this bedrock principle and result in a fundamental misapplication of trademark law.

In particular, Bosley urges this Court to impermissibly circumvent the core concept of commerciality when it argues:
(a) links from a non-commercial site to an unaffiliated commercial site satisfy the commercial use requirement (Bosley Br. at 28);
(b) an adverse impact on a trademark owner constitutes commercial use (Id. at 29-30); and
(c) the Lanham Act’s likelihood of confusion requirement is met “as a matter of law” simply by a showing of initial confusion upon accessing a website (Id. at 40).

Bosley’s misunderstanding of the dividing line between unauthorized commercial uses of trademarks, which may be actionable, and unauthorized non-commercial uses, which are not, is perhaps most evident in Bosley’sefforts to force this case into the section of the Lanham Act tailored to address cybersquatting, the Anticybersquatting Consumer Protection Act(“ACPA”), 15 U.S.C. § 1125(d).

Bosley argues that:
(d) ACPA does not require use of a mark in connection with the sale of goods or services or some other commercial context (Bosley Br. at 18);
(e) the non-commercial purpose of a website using a domain name is irrelevant to ACPA (Id. at 20); and
(f) settlement negotiations constitute a bad faith intent to profit under ACPA (Id. at 22-23).

These arguments seriously distort the purpose of the Lanham Act,which is to guard against the misuse of trademarks in ways that are likely to lead to mistaken purchasing decisions. Moreover, Bosley’s overbroad approach to commercial use is wholly inconsistent with the First Amendment values that operate to limit the scope of trademark law.

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April 16, 2015