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When the Supreme Court considers trademark issues, it is often the result of a split between the circuits over interpretation of the Lanham Act, our federal trademark statute. Recent examples include dilution in Victoria’s Secret in 2003 and fair use in KP Permanent Make-Up in 2004. A new split is now emerging over the requirement of commercial use for trademark infringement. Falling on one side of the part is the recent case Bosley Medical Institute Inc. v. Kremer, (9th Cir., April 4, 2005).To prove trademark infringement under the Lanham Act, the plaintiff must show that the defendant: “use[s] in commerce any … colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion … ” 15 U.S.C. 1114(a). Michael Kremer, a dissatisfied hair transplant patient, used the domain name BosleyMedical.com to criticize the Bosley Medical Institute, a hair transplant clinic. Kremer’s Web site contained public documents and other negative information about Bosley. Kremer earned no revenue from the site and sold no goods or services.When the district court dismissed Bosley’s trademark claim because Kremer’s conduct was not “use in commerce,” the 9th Circuit disagreed because that clause is merely a jurisdictional predicate to a law passed under the Commerce Clause of the Constitution. Nevertheless, the 9th Circuit affirmed the result because the Lanham Act only applies to use “in connection with a sale of goods or services,” that is, “commercial use.” Since Kremer was not using “Bosley” in connection with the sale of any goods or services, his use was not “commercial” and therefore was not actionable as trademark infringement. Relying on the 4th Circuit’s decision People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001)(PETA), Bosley argued that Kremer’s conduct was actionable because it prevented users from obtaining Bosley’s services. Enjoining the use of PETA mark for a noncommercial parody site, the 4th Circuit had followed a line of New York District Court decisions holding that such use was “in connection with” the sale of goods or services if it was “likely to prevent or hinder Internet users from accessing plaintiffs’ services on plaintiffs’ own Web site.” The 9th Circuit “respectfully” declined to follow the 4th Circuit: “The PETA court’s 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. This broad view of the Lanham Act is supported by neither the text of the statute nor the history of trademark laws in this country.” The 6th Circuit took a similar position in Taubman Co. v. Webfeats, 319 F.3d 770 (6th Cir. 2003). When Henry Mishkoff used the domain name ShopatWillowbend.com for an unofficial fan site about Taubman’s mall with no commercial links, the 6th Circuit agreed the site was noncommercial, stating:”[W]e find no use ‘in connection with the advertising’ of goods and services to enjoin, and the Lanham Act cannot be properly invoked.” However, when Mishkoff added commercial links to a shirt company and to his own Web design company, his conduct was use “in connection with the advertising” of goods and services, and was “precisely what the Lanham Act prohibits.” A nice split thus divides the circuits. Based on PETA and the cases on which it relies, it appears that “noncommercial” use — that is, using a mark not to sell goods and services, but for comment, criticism or artistic expression — may be actionable as trademark infringement in the 2nd and 4th circuits if the noncommercial use hinders the plaintiff’s commercial use of the mark. In contrast, that same noncommercial use apparently would not be actionable as trademark infringement in the 9th and 6th circuits. This split does not extend to cybersquatting claims. Although the Bosley court required commercial use for trademark infringement and dilution claims, the same requirement was not found in the Lanham Act’s cybersquatting provision (the ACPA), where bad faith registration alone may be sufficient. Thus, Bosley was permitted to proceed with discovery to prove that Kremer’s noncommercial use of the domain name BosleyMedical.com violated the ACPA.Similarly, the 8th Circuit in Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004), found violations of the ACPA where the defendant made noncommercial use of famous brands to mislead Internet users to antiabortion protest sites. Although bona fide noncommercial use is a factor considered under the ACPA, it is not a threshold test for stating an ACPA claim. Perhaps the circuit split observed here provides another opportunity for the Supreme Court to shape federal trademark law. Until then, the choice of forum could have a material effect on the outcome of infringement cases involving noncommercial use. Mark V.B. Partridge is a partner in the Chicago office of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP and the author of “Guiding Rights: Trademarks, Copyright and the Internet.”

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