Ninth Circuit Splits Hairs on Trademark Infringement Suit
Last month, the 9th Circuit Court of Appeals ruled that non-commercial use of a party’s trademark as a domain name may not constitute trademark infringement.
The case involved the use of the Bosley Medical Institute’s BOSLEY trademark, which it uses for its hair replacement system. Bosley Medical Institute’s brush with defendant Michael Kremer started when the former disgruntled employee registered the domain name www.bosleymedical.com and then proceeded to write some unfavorable — shall we say hairy — things about his former employer. Bosley Medical brought suit, allegiing trademark infringement of its registered mark.
After combing through the facts, the 9th Circuit held that Kremer’s use of the trademark was non-commercial speech, that no consumer would be confused by his use of the mark, and that the Lanham Act cannot be used as a shield against free speech or criticism.
It’s clear that Kremer’s web site was a bald-faced attempt to divert traffic from the Bosley Medical program. Still, without proof that the site was confusing consumers, or that Kremer was selling hair pieces himself, Bosley is stuck with the wigged-out web site.