One of my favorite cases to teach is Bosley Medical Institute v. Kremer, an ongoing dispute in which Michael Kremer received hair replacement services from the plaintiff — in Seattle, I might add — and was dissatisfied with the result. After a failed medical malpractice claim, Mr. Kremer allegedly registered the domain name bosleymedical.com, and sent letters to the defendant threatening additional litigation and demanding money. Mr. Kremer’s domain name links to a website containing information critical of Bosley Medical. It also contains a disclaimer directing visitors to Bosley’s official site, www.bosley.com. Mr. Kremer allegedly has received numerous electronic communications from third parties intended for plaintiff, to which he does not respond.
From www.bosleymedical.com
In 2001, Bosley brought suit against Mr. Kremer asserting federal and state trademark claims, as well as a federal cybersquatting claim.
In 2004, Mr. Kremer filed motions to strike Bosley’s state trademark claims and to dismiss its federal cybersquatting claim. Mr. Kremer and Bosley also cross-moved for summary judgment on Bosley’s federal trademark claims. After consolidating the motions, the court found for Mr. Kremer on all of the issues.
In 2005, the Ninth Circuit affirmed the Southern District of California’s summary judgment dismissal of Bosley’s federal trademark claims, but reversed the grant of summary judgment as to Bosley’s federal cybersquatting claim. The Ninth Circuit also reversed the order striking the state trademark claims, stating that “domain names … per se are neither automatically entitled to nor excluded from the protections of the First Amendment, and the appropriate inquiry is one that fully addresses particular circumstances presented with respect to each domain name.” The Ninth Circuit decision is captioned as Bosley Medical Institute v. Kremer, 403 F.3d 672 (9th Cir. 2005).
Based on that decision, the Southern District re-opened the case, No. 01-1752. In December 2006, Mr. Kremer filed a motion to dismiss Bosley’s state law claims for common law trademark infringement, statutory trademark dilution, and statutory unlawful business practices. Mr. Kremer argued that the First Amendment protects his registration and use of bosleymedical.com, and bars application of state trademark law in the action. He also argued that Bosley’s allegations of commercial use and likelihood of confusion are insufficient to state claims on which relief can be granted.
On March 22, the court denied Mr. Kremer’s motion (2007 WL 935708). It found: “Plaintiff’s allegations of extortion sufficiently allege commercial use for the purposes of state trademark law, and that Plaintiff’s allegations of actual confusion and a likelihood of confusion are sufficient to state a claim for common law trademark infringement, particularly in light of the doctrine of initial interest confusion and the weight afforded evidence of actual confusion.”
The court also found: “the doctrine of fair use permits ‘the criticizing or commenting upon the famous mark owner’ in some situations”; however, “the allegations of the First Amended Complaint that the registration and publication of bosleymedical.com were in bad faith and with an intent to extort money do not permit dismissal of the state trademark claims pursuant to the fair use exception at this stage of the proceedings.”
The court separately denied Mr. Kremer’s motion for summary judgment on Bosley’s federal cybersquatting claim on Rule 56(f) grounds pending discovery on the issue.