Court Trims Hair Replacement Clinic Lawsuit for Infringement

It’s a hairy situation, but the Ninth Circuit has trimmed the ability of a hair replacement clinic to sue for trademark infringement.

A dissatisfied customer of the Bosley Medical Institute, Inc. decided the best way to get even with what he felt was a bad restoration and replacement of his hair by the clinic was to make his feelings felt on a website under the domain name bosleymedical.com, which incorporated the trademark “Bosley Medical.” The appellate court found that the website “to put it mildly, was uncomplimentary of the Bosley Medical Institute.” The Institute sued the former patient Michael Kremer for trademark infringement and cybersquatting.

The court found that the Institute could not maintain the trademark infringement action because the website was not a commercial site, even though it linked to a discussion group site that did contain advertising. Kremer earned no revenue from the website nor were there any goods or services sold on the website.

In order to maintain an infringement claim, there must be commercial use, the court said. “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,” the court wrote. Thus, there is no Lanham Act violation since the Act applies only in commercial contexts.

“Kremer’s use of the Bosley Medical mark simply cannot mislead consumers into buying a competing product-no customer will mistakenly purchase a hair replacement service from Kremer under the belief that the service is being offered by Bosley,” the opinion stated. However, as to whether his website violates the Anticybersquatting Consumer Protection Act, that is another question. Under the Anticybersquatting act, no commercial use is required. Because the trial court found that commercial use was required under the Anticyberquatting Act, the appellate court reversed the dismissal of that count and remanded the case back to the trial court.

Bosley Medical Institute, Inc. et al. v. Michael Steven Kremer, Ninth Cir. No. 04-55962, April 4, 2005.