6
Apr/05

Gratuitous Hostility Possible Defense to ACPA; Purposeful Hostility, Maybe Not


Ok, let’s say I have a dispute with you.  Maybe you’re my former employee and you have cheated me out of the pension that is rightfully mine.  Or you’re the town police department and you unfairly ticketed my Cooper mini.  Or we have some other transaction that leaves me feeling hard done by, and I go to your office to demand that you make amends.

So you tell me to go pound sand and on the way out the door I grab some piece of your office equipment and I say “you’ll get this back when we resolve this dispute on my terms.”

I want something of value from you (resolution of my claim), and I’m ransoming something of yours as leverage, exposing you to hardship until resolution.

It’s my view that if I have a dispute with you, and I grab a domain name that could divert traffic from you, and use it for speech that on its face is non-commercial, that my overall use of the domain name may still be in bad faith because I registered it to obtain a personal commercial advantage from you, namely favorable settlement of our dispute.

This is not necessarily the majority view and I’ve aways been concerned that cases dismissing cybersquatting in this fact pattern provided a road-map for successfully extortion.

Now we turn, as they say, to the instant case.

A guy named Kremer gets a hair transplant.  Stop me if you heard this one.  The hair transplant goes badly it seems, and Kremer sues Bosley Medical for malpractice.  Malpractice case gets dismissed, don’t know why.

Kremer bears a grudge.  He registers BOSLEYMEDICAL.COM and BOSLEYMEDICALVIOLATIONS.COM.  Five days later he delivers to Bosley a letter that is cryptic and doesn’t mention the domain names, but it does begin:

“Do you want to discuss this?”

and the letter does refer to using the Internet to disseminate negative information about Bosley.  Kremer waits a while and then begins to use websites at the domain names to disseminate negative information about Bosley.

Ok, what’s going on here?  What was Kremer’s intent in registering the names?

Kremer maintained the site with non-commercial critical commentary (including information on a D.A. investigation of Bosley) and importantly, he didn’t fall into traps that doomed other ‘non-commercial’ cybersquatting defendants in that he did not link to, for example, any revenue-producing activity of his own, or to that of competitors.

Bosley brought a UDRP (regarding only the bosleymedical.com name), and lost.  The Bosley UDRP decision was notable, like the Bridgestone UDRP decision, in that in both cases registrant utilized a non-commercial use defense to retain control of a ‘per se’ version of a name (that defense being more successful in, for example, a __SUCKS.COM scenario).

Bosley brought a civil action under trademark infringement and ACPA.  The district court dismissed and Bosley appealed to the Ninth Circuit.

There is a lengthy discussion of trademark infringement and the Court held that Kremer did not make commercial use of Bosley’s marks (and it dismissed the infringement cause).  I don’t think this is surprising (but am surprised that others don’t think its surprising).

What’s interesting (to me) is the ACPA discussion (p. 3988-93).  The Ninth Circuit notes that, unlike infringement, there is no commercial use requirement.  It also notes that:

Allowing a cybersquatter to register a domain name with a bad faith intent to profit but get around the law by making noncommercial use of the mark would run counter to the purpose of the Act.

Determining that the District Court erred by imposing a commercial use requirement, the Circuit Court remanded the ACPA claim and if you read between the lines, it appears to direct Bosley to focus on the ‘extortion’ angle to see if that proves bad intent.

I’ve surveyed the blogosphere and this decision is being characterized as a victory for ‘gripe sites.’ (See here, here, and here).  With regard to the infringement analysis, it is.

However, I think the fact that the ACPA count survived is important.  It is hard to prove intent, and it is hard to reveal purposeful hostility masquerading as gratuitous hostility.  But this case takes one of the hardest ACPA cases to win and suggests a way.

Bosley Medical v. Kremer, 04-55962 (9th Circuit, April 4, 3005).

 

 

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