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An e-mail from the vice president of marketing arrives one morning with a link to a Web site. “There must be something we can do about this,” he pleads. The Web address includes the client’s trademarked business name, plus the ubiquitous.com. Clicking on the link, you are transported to a site that is essentially a diatribe focusing on your client, complaining about the client’s products and services and repeating less-than-complimentary news reports and court filings made about the client. Your task, as the vice president’s e-mail makes clear: “Make this site go away!” But, as recent cases have illustrated, shutting down so-called “gripe sites” is not as easy as it might seem. The Internet has provided an unprecedented opportunity for individuals to disseminate information widely at a very low cost. Domain names are available for less than $10, and Web hosting can cost as little as $50 a year. For those truly on a shoestring, there are services that will allow anyone to create and maintain a blog — which is essentially a Web site — for free. This means that virtually anybody who wants to distribute a message can do so. It is this sense of empowerment that may drive individuals to spend the time and energy to create so-called gripe sites: sites devoted to complaints about a particular product, service, company, organization, or individual. Frequently these sites employ trademarks owned by their targets, sometimes in the site’s domain name itself, and always in the text of the site. Internet search engines pick these references up, so that the gripe sites often turn up side by side with official corporate sites in response to Internet searches. The prominence of some of these gripe sites adds to the frustration of trademark owners that otherwise might be willing to ignore less visible critics. And many of these sites are eager to display — like badges of honor — the cease-and-desist letters received from the trademark owner’s attorneys, particularly where the letters are filled with stern threats of the dire legal consequences that will follow if the sites are not taken down and the domain names delivered over to the trademark owner. ‘BOSLEY MEDICAL V. KREMER’ A recent case from the 9th U.S. Circuit Court of Appeals provides some guidance about the legal issues a trademark owner will confront when dealing with the use of its mark in the domain name or body of a gripe site. Michael Kremer was a patient of the Bosley Medical Institute, and was dissatisfied with Bosley’s hair restoration services. In what the court glibly termed a “bald-faced effort to get even,” he purchased the BosleyMedical.com domain name and started a site where he made a number of uncomplimentary statements about Bosley and posted copies of public documents, including records of court and disciplinary proceedings, that related to the company and its physicians. Bosley sued, alleging among other things that Kremer’s use of the “Bosley Medical” mark in the domain name and on the site constituted trademark infringement. Kremer moved for partial summary judgment on the trademark claim, arguing that he was not making commercial use of the Bosley mark and that there was no likelihood of confusion from his use of the mark in his site. The district court agreed, and entered summary judgment for Kremer on the trademark infringement claims. Bosley appealed. The 9th Circuit affirmed the district court’s ruling on the trademark infringement claim. [FOOTNOTE 1] In so doing, it addressed in detail the question of whether Kremer’s use of the Bosley mark involved the “commercial use” of that mark under trademark law. Kremer earned no revenue from his site. No goods or services were sold on or through it, and it did not contain any links to Bosley’s competitors. Kremer’s site did include a link to another Kremer-owned site that was not at issue in the case, BoselyMedicalViolations.com, which at the time included a link to another “discussion group” site that was not affiliated with Kremer. This discussion group site contained advertisements for companies that competed with Bosley. Kremer’s BosleyMedical.com Web site also included a link to a not-for-profit public interest group named Public Citizen, which was representing Kremer throughout his litigation with Bosley. Kremer argued that he was not making commercial use of the Bosley name or his BosleyMedical.com Web site. The 9th Circuit panel noted that, under the Lanham Act, an infringing use of a trademark must be “in connection with the sale, offering for sale, distribution, or advertising of any goods or services.” 15 U.S.C. �1114. Trademark infringement law thus prevents unauthorized uses of a trademark “in connection with a commercial transaction in which the trademark is being used to confuse potential customers.” It also ruled that the Federal Trademark Dilution Act, 15 U.S.C. �1125(c)(1), which permits the owner of a famous mark to enjoin another’s “commercial use in commerce” of a mark, included a generally analogous commercial use requirement. Viewed against these standards, the court found that Kremer’s use of the BosleyMedical.com domain name and use of the Bosley name in his site were noncommercial uses and so did not fall under the Lanham Act. It rejected Bosley’s argument that the site’s links constituted a commercial use of the site. The link on Kremer’s BosleyMedical.com site to Kremer’s second site that then linked to a discussion group that accepted advertising was “too attenuated to render Kremer’s site commercial,” and the Public Citizen link was likewise deemed to be non-commercial. Another “commercial use” argument advanced by Bosley — that Kremer’s use was commercial because it was part of a scheme to extort money from Bosley Medical — failed for lack of evidence. Unlike a number of cases where trademarked domain names were purchased by third parties and “ransomed” back to the trademark owners, there was no evidence that Kremer had approached Bosley with an offer to sell the Bosley-Medical.com domain name for any amount of money, let alone an exorbitant sum. The court also rejected Bosley’s argument that Kremer’s use of the BosleyMedical.com site was a commercial use because it interfered with Bosley’s own services — by preventing users to Kremer’s site from obtaining services from Bosley. A similar argument had been accepted by the 4h Circuit in People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001) (PETA). In PETA, an individual had purchased the PETA.org domain name and had built a Web site that parodied PETA’s organizational goals by extolling the virtues of eating meat. One of PETA’s arguments was that the defendant’s site was likely to prevent Internet users from reaching the official PETA site. The 4th Circuit agreed, adopting the district court’s reasoning that Internet users who were looking for the official PETA site but found defendant’s Peta.org Web site first might be frustrated or confused to the point that they would not search further for the official site. The 9th Circuit both distinguished and rejected the PETA case. It noted that, unlike Kremer’s BosleyMedical.com Web site, the site at issue in PETA included direct links to more than 30 commercial sites that offered goods and services. Further, it disagreed with the 4th Circuit’s rationale that frustrating users who were looking for the official PETA site constituted a commercial use of the Peta.org domain name and site. “The PETA approach would place most critical, otherwise protected consumer commentary under the restrictions of the Lanham Act,” the court ruled. It noted that such a broad reading of the Lanham Act “would encompass almost all uses of a registered trademark, even when the mark is merely being used to identify the object of consumer criticism,” a view that it said was not supported by the statute’s text or “the history of trademark laws in this country.” The court then returned its focus to what it considered to be the appropriate inquiry. Citing the 2nd Circuit in United We Stand America, Inc. v. United We Stand, America New York, 128 F.3d 86, 90 (2d Cir. 1997), the court said that “the appropriate inquiry is whether Kremer offers competing services to the public. Kremer is not Bosley’s competitor; he is their critic. His use of the Bosley mark is not in connection with a sale of goods or services — it is in connection with the expression of his opinion about Bosley’s goods and services.” Accordingly, Kremer was not liable to Bosley for trademark infringement. The Kremer case offers some helpful guide points when evaluating gripe sites. Obviously, if the site is selling or promoting goods or services, there is an argument that the site is being put to a potentially confusing commercial use. Similarly, direct links to sites that sell or promote goods or services may also support such an argument. It is an open question whether a plea on the site for direct donations from the public constitutes a commercial use of a site; arguably, given a sufficiently generous viewing public, the gripe site owner could recoup the expenses of maintaining the site and even turn a profit on the venture. Similarly, communications with gripe site owners should be monitored carefully. An unsolicited offer from the gripe site owner to sell the domain name to the trademark owner may constitute either a commercial use of the site, or may be considered cybersquatting under 15 U.S.C. �1125(d), which would result in the turnover of the domain name to the trademark owner. The content of the gripe site should also be reviewed periodically. Web sites are extremely malleable, and material that is there one day may be gone the next. While the very nature of a gripe site means that reviewing the content may be offensive to the trademark owner, the focus of such a review is really whether the content will confuse customers. Where, for example, the site commentary crosses over from criticism of the trademark owner’s products or services to endorsement of a competitor’s, consumers who see the gripe site may be confused or induced to purchase from a competitor. In any case, where the content of the site is questionable, it is important to capture the site image in a tamper-resistant file storage format (a CD-ROM, for example) and record the time, date and manner of the capture for future use as evidence. Gripe site content should also be reviewed for the accuracy of its complaints. While gripe site owners may be protected by the First Amendment, it does not protect them from commentary that constitutes trade libel. CONCLUSION Gripe sites, though often offensive to trademark owners, have been allowed by courts to continue to exist even though they use and refer to the trademarks belonging to their targets. The manner in which such uses have been permitted is not unlimited, however. Paying careful attention to what courts have permitted and why can give trademark owners guidance as to when it is appropriate to take action against such sites and when it is best simply to let them be. Kelly D. Talcott is a partner in the New York office of Kirkpatrick & Lockhart Nicholson Graham, where he practices intellectual property and technology law. ::::FOOTNOTES:::: FN1 1. Bosley Medical Institute, Inc. v. Michael Steven Kremer, 2005 WL 752337 (9th Cir, April 4, 2005) (opinion available for a limited time at www.ca9.uscourts.gov).

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