Bosley Medical Institute v. Kremer: the Winds Shift to Protect Cybergripers and a Circuit Split Blows Into Town

• Citation: Vol. 23 No. 4
• Publication year: 2010

Georgia State University Law Review

Volume 23 , „

Article 2

Issue 4 Summer 2007

6-1-2007

Bosley Medical Institute v. Kremer: The Winds Shift to Protect Cybergripers and a Circuit Split Blows into Town

Anita Bhushan

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Recommended Citation

Bhushan, Anita (2006) "Bosley Medical Institute v. Kremer: The Winds Shift to Protect Cybergripers and a Circuit Split Blows into Town," Georgia State University Law Review: Vol. 23: Iss. 4, Article 2. Available at: http://digitalarchive.gsu.edu/gsulr/vol23/iss4/2

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BOSLEYMEDICAL INSTITUTE V. KREMER: THE WINDS SHIFT TO PROTECT CYBERGRIPERS AND A CIRCUIT SPLIT BLOWS INTO TOWN

Introduction

As today's consumers are becoming more technology-savvy, an increasing number are turning to the Internet to air their complaints about Corporate America's products and services.¹ In other words, "[c]onsumer protests against big business are going digital." The following scenario is all too familiar to 80% of Fortune 1000 companies³: Mr. and Mrs. Consumer decide to purchase and use Big Corporation's product.⁴ When that product does not live up to the Consumers' expectations, they create an Internet site to complain about it using Big Corporation's registered trademark or a part of the trademark as their website's domain name.⁵ The Consumers' website does not offer any goods for sale, nor are any advertisements available on their website.⁶ The site is merely used for unflattering commentary about Big Corporation's product - in other words, the site is used for "cybergriping". Big Corporation subsequently sues the Consumers for trademark infringement based on the use of its

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trademark in the site's domain name. Whether Big Corporation prevails in suit against the Consumers depends on where the suit is filed.⁹

A key element of traditional trademark infringement Big Corporation must prove is that the Consumers' unauthorized use of

1. See, e.g., Robert Trigaux, Gripe.com, St. Petersburg times, Jan. 31, 1999, at 1H (Estimating "more than half of the Fortune 1000 companies have encountered some type of Web site critical of their business.").

2. Id.

3. Id. ("More than 80% of Fortune 1000 companies are victims of some type of trademark misuse on the Internet----").

4. See generally, Christopher Quinn, Gripe Site is Sued by the Griped-About, chi. trib., Oct. 24, 2004, at 7G.

5. Id.

6. See, e.g., http://www.spraysiding.com (last visited Oct. 14, 2005).

7. Id.

8. See generally, Quinn, supra note 4, at 7G.

9. See infra Part IV.

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its trademark occurred in connection with the sale, offering for sale, distribution, or advertising of goods or services.¹⁰ The Courts of Appeal for the Second, Third, Fourth and Eighth Circuits have held that this requirement is satisfied because the Consumers' websites may prevent or hinder Internet users from accessing Big Corporations' services on its own website.¹¹ Accordingly, in these jurisdictions, the Consumers would be found liable for trademark infringement.¹² In the Court of Appeals for the Sixth Circuit, and due to the recently decided case of Bosley Medical Insitute, Inc. v.

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Kremer, in the Court of Appeals for the Ninth Circuit, the mere fact that the Consumers' website dissuades viewers of their website from using Big Corporations' services on its own website is not enough to meet the "use in connection" requirement of traditional trademark infringement.¹⁴ Consequently, the Consumers would not be found liable for classic trademark infringement in these jurisdictions.¹⁵ These two approaches are the centerpieces in the debate over whether or not cybergripers who maintain websites critical of trademark holders' products or services that employ a registered trademark as the domain name, without more, are liable for trademark infringement.¹⁶

Part I of this Comment provides a general overview of cybergriping and trademark infringement.¹⁷ Further, it pays close attention to the various legal recourses available to a trademark holder and the interplay between these available infringement causes of action with each other and the First Amendment right to Free

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Speech. Part II discusses the different approaches taken by the Circuit Courts of Appeal when confronted by infringement suits

10. See PETA v. Doughney, 263 F.3d 359, 364 (4th Cir. 2001).

11. See, e.g., PETA, 263 F.3d 359 (4th Cir. 2001); Coca-Cola Co. v. Purdy, 382 F.3d 774, 789 (8th Cir. 2004).

12. See, e.g., Jews for Jesus v. Brodsky, 159 F.3d 1351 (3d Cir. 1998).

13. Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005).

14. See id. at 679-80; Taubman Co. v. Webfeats, 319 F.3d 770, 778 (6th Cir. 2003).

15. See Taubman, 319 F.3d at 778; Bosley, 403 F.3d at 679-680.

16. See John M. Tanner, New Trademark Ruling for Internet Gripe Sites, http://www.fwlaw.conVgripe.html (last visited Feb. 12, 2008).

17. See infra Part I.

18. See infra Part I.A-B.

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against cybergripers.¹⁹ Part III discusses the new approach adopted by the Ninth Circuit Court of Appeals in Bosley Medical Institute v. Kremer, Part IV examines the widening circuit split caused by the decision in Bosley. Finally, Part V analyzes which approach to cybergriping cases is better from the perspective of the accurateness of the underlying concepts of the Internet upon which the opposing decisions rest. Part V concludes by arguing that because the Ninth Circuit's conception of the Internet is the most accurate the approach taken by the Ninth Circuit in Bosley has the added benefit of being consistent with the purposes of trademark law.²³

I. Cybergriping and Trademark Infringement: An Overview

A. Cybergriping Generally

The scenario between the Consumers and Big Corporation mentioned above describes the quintessential case of "cybergriping," which occurs "when a consumer creates a web page on the Internet to voice an opinion (usually a negative one) about a particular product, company, or service."²⁴ Further, as illustrated above, a disgruntled consumer typically engages in an "unauthorized use of famous marks in [the] [w]eb site's domain name[]."²⁵ Unlike the practice of "cybersquatting"—using famous marks in a web site's domain name with the intent "to profit from the unauthorized use of a mark by holding a domain name hostage from the owner of a mark" —the cybergriper's sole intent in using the mark in the domain name is generally "to aid in the dissemination of a negative message about the mark owner."²⁶

19. See infra Part II.

20. See infra Part III.

21. See m/ra Part IV.

22. See infra FartV.

23. Id

24. Rebecca S. Sorgen, Trademark Confronts Free Speech on the Information Superhighway: "Cybergripers"Face a Constitutional Collision, 22 loy. L.A. ENT. L. Rev. 115, 115 (2001).

25. Blossom Lefcourt, The Prosecution of Cybergripers Under the Lanham Act, 3 cardozo Pub. L. Pol'y & Ethics J. 269,272 (2004).

26. Id. at 272-73.

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The problem with cybergriping from the trademark holder's perspective is that the unauthorized use of its mark in a domain name constitutes infringement that misleads or confuses the public about the products associated with their mark.²⁷ Additionally, trademark owners fear that the unauthorized use of their mark in domain names degrades the capacity of the famous mark to identify and distinguish

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their goods or services, a practice known as trademark dilution. These results are particularly bothersome to trademark holders because trademarks generally "help customers select goods of a known quality with low transaction costs, and they operate as symbols of . . . [the mark holder's] goodwill." Many trademark holders think that cybergriping disparages their mark and want potential cybergripers to know that they take this denigration seriously.³⁰ Hence these fears often lead trademark holders to file suit against cybergripers.³¹

B. Legal Recourses for Trademark Holders

Trademark holders can "protect the uniqueness of their brand identity by enforcing the federal property rights granted to them" under the Lanham Act. Under the Act, trademark holders can bring claims against cybergripers for infringement due to consumer confusion, unfair competition, and trademark dilution. Moreover, claims for trademark infringement on the Internet can also

27. See RONALD J. MANN & JANE K. WlNN, ELECTRONIC COMMERCE 67 (2d ed. 2005).

28. See 15 U.S.C.S. § 1127 (1997).

29. Martha Kelley, Is Liability Just a Link Away? Trademark Dilution by Tarnishment Under the Federal Trademark Dilution Act of 1995 and Hyperlinks on the World Wide Web, 9 J. intell. prop. l. 361,362 (2002).

30. See Tresa Baldas, The Cost of Griping on the Web: Lawsuits—Companies Sue to Close "Gripe Cites", 27 Nat'l L.J., Nov. 29, 2004, at Col. 1, available at, http://www.law.com/jsp/article.jsp?id=l 101738481523

31. See id.

32. See Hannibal Travis, The Battle for Mindshare: The Emerging Consensus that the First Amendment Protects Corporate Criticism and Parody on the Internet, 10 VA. J.L. & TECH. 3, 18 (2005). The Lanham Act is the Congressional legislation that established a uniform federal standard for trademark protection. See generally 15 U.S.C.. §§ 1114, 1125, 1127 (2000).

33. See 15 U.S.C. § 1114 (2000).

34. See 15 U.S.C. § 1125(a) (2000).

35. See 15 U.S.C. § 1125(c) (2000).

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be brought under the portion of the Lanham Act designated as the Anti Cybersquatting Protection Act (ACPA).³⁶ Finally, trademark holders can arbitrate to enjoin the use of their mark under Internet Corporation for Assigned...