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).

This is the oddest descriptor I’ve come across in a while: NEAR WATER.  According to this NY Times article on the Coca Cola Company in Japan, its a flavored water.

Press Release: The Bank of Sweden Prize in Economic Sciences in Memory of Alfred Nobel 2005

1 April 2005

The Royal Swedish Academy of Sciences has decided that the Bank of Sweden Prize in Economic Sciences in Memory of Alfred Nobel, 2005, is to be awarded to:

Ravi Kunz-Vallstein Panjandrum-Lipshitz
Massachusetts Institute of Technology, USA

“for methods of measuring trademark dilution”

Dr. Panjandrum-Lipshitz, is the first quantum physicist to be awarded the prize in Economics.   Intrigued by his use of scanning tunneling microscopy to photograph sub-atomic particles, several large trademark owners commissioned him to tackle such issues as: “What is the diminution of the market capitalization of Intel Corporation if an art gallery in Massachusetts adopts the name “Art Inside?”  Dr. Panjandrum-Lipshitz’ most well-known paper on the ‘death by 1000 cuts’ theory of dilution, is notable as proposing the first new calculus since that of Newton,  seeking to show that 1000 multipled by zero is more than zero.

The ‘money graf’ in the Court’s decision in Google v. American Blind on Google’s motion to dismiss the direct liability cause (in other words, Google’s liability not for what the advertiser does but for Google’s act itself of selling the advertiser the keyword), was:

“In light of the very liberal standard applicable to Rule 12(B)(6) motions, the Ninth Circuit’s expansive holidng in Playboy (fn omitted), and the obvious commercial importance of this case . . . the Court concludes that resolution of the novel legal questions presented by this case should await the development of a full factual record.”

Also read footnote 24.

So this doesn’t really change the ‘destined’ legal treatment of Google’s liability but it does perhaps encourage others to sue Google thinking that at least their suit will likely make it past the pleadings stage.

John Batelle’s Search Blog is reporting that Google’s Motion to Dismiss certain claims by American Blind in its litigation regarding Google’s sale of keywords has been denied.

Background here.

Put in perspective, part of the significance of the American Blind case is that the mark AMERICAN BLIND (and some of the other American Blind trademarks owned by plaintiff) is not as distinctive or unique as for example, the mark GEICO.  If Google has liability for this sort of keyword, then its policing costs will be increased and its potnetial inventory of salable keywords will go down.

Having said that, bear in mind that this was a motion to dismiss.  The court is only allowing the plaintiff the opportunity to prove its case.

Deeper background: NY Times article noting that Google’s lawsuits are beginning to ad up.  Well, what is the exposure?  We’re not aware of private settlements of course but the pending cases are American Blind, Geico, LVMH, Viaticum, AFP, Preispiraten – am I leaving any out?  Ok, legal fees, use $300k per, so we’re not over $2 million yet.  There’s reportedly another 15 cases being brought in France. Damages? No final judgments yet.  I think Viaticum has been awarded about $100k but that will probably be appealed.  I assume that AFP is asking for the highest amount at $17 million.

Google has $3 billion in annual sales, so it will be likely to foot the bill for now.

Parodies of romance novel covers here. Hat tip Copyfight.

The INTA lists serv was nostalgic or something this week and I wasn’t blogging in 2000, so I may as well as bring up the BODACIOUS-TATAS.COM decision  in which the UDRP arbitrator, and perhaps, the complainant, the Indian firm TATA, were seemingly unaware of the connotation of the term BODACIOUS TATAS.

Narcissistic Complainant press release suggesting that the Bodacious Tatas site had intended to free ride on the image of the famous TATAS mark here.

List of breast euphemisms here.

The term ‘bodacious’ was, we are told, coined in the comic strip “Barney Google and Snuffy Smith” (Snuffys wife Loweezy pictured here), which strip is available for syndication from the good folk at King Features.

This lengthy post and comment thread via Waxy.org discusses efforts an entity named WordPress that allegedly uses its high Google page-rank to alter Google results for ‘high cost advertising words.’