ORIGINALLY POSTED ON APRIL 18, 2005
9th Circuit Supports Non Commercial Use of Trademark in Domain Name – good news for “consumer commentary” websites
In a decision issued on April 4, 2005, the 9th Circuit Court of Appeals upheld a lower decision that the noncommercial use of a trademark in a domain name of a website which contained consumer commentary about the products and services represented by the trademark is not considered infringement under the Lanham Act (the federal trademark statute). In Bosley Medical Institute, Inc v. Kremer, the website in question (www.BosleyMedical.com) did not earn any revenue, sell any goods or services on the website or have any links to any of Bosley’s competitors. The court relied on the US Supreme Court’s decision in Prestonettes, Inc. v. Coty, 264 U.S. 359 (1924) which states that “trademark infringement law prevents only unauthorized uses of a trademark in connection with a commercial transaction in which the trademark is being used to confuse potential consumers.” Since there wasn’t any commercial activity taking place on the website or on other websites that were linked to the website in question, the use of the mark in the domain name did not constitute trademark infringement. However, Bosley could still have a claim under the Anticybersquatting Consumer Protection Act – if they can show that Kramer had a“bad faith intent to profit” from the use of the trademark. So we will have to keep track of this one and see how it goes at the trial court level. For right now it seems to be a victory for proponents of free speech and consumer commentary websites.
