Bosley Medical Institute, Inc. v. Kremer ( 2005 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
BOSLEY MEDICAL INSTITUTE, INC., a 
Delaware corporation,
Plaintiff-Appellant,
and No. 04-55962
BOSLEY MEDICAL GROUP, S.C., an
Illinois corporation,  D.C. No.
CV-01-01752-WQH
Plaintiff, OPINION
v.
MICHAEL STEVEN KREMER,
Defendant-Appellee.

Appeal from the United States District Court
for the Southern District of California
William Q. Hayes, District Judge, Presiding
Argued and Submitted
March 8, 2005—Pasadena, California
Filed April 4, 2005
Before: Thomas G. Nelson, Barry G. Silverman, and
Richard C. Tallman, Circuit Judges.
Opinion by Judge Silverman
3975
3978 BOSLEY MEDICAL INSTITUTE v. KREMER
COUNSEL
Diana M. Torres, O’Melveny & Myers, Los Angeles, Califor-
nia, for the plaintiff-appellant.
Paul Alan Levy, Public Citizen Litigation Group, Washing-
ton, D.C., for the defendant-appellee.
OPINION
SILVERMAN, Circuit Judge:
Defendant Michael Kremer was dissatisfied with the hair
restoration services provided to him by the Bosley Medical
BOSLEY MEDICAL INSTITUTE v. KREMER 3979
Institute, Inc. In a bald-faced effort to get even, Kremer
started a website at www.BosleyMedical.com, which, to put
it mildly, was uncomplimentary of the Bosley Medical Insti-
tute. The problem is that “Bosley Medical” is the registered
trademark of the Bosley Medical Institute, Inc., which
brought suit against Kremer for trademark infringement and
like claims. Kremer argues that noncommercial use of the
mark is not actionable as infringement under the Lanham Act.
Bosley responds that Kremer is splitting hairs.
Like the district court, we agree with Kremer. We hold
today that the noncommercial use of a trademark as the
domain name of a website — the subject of which is con-
sumer commentary about the products and services repre-
sented by the mark — does not constitute infringement under
the Lanham Act.
Bosley Medical’s cybersquatting claim is another matter.
The issue under the Anticybersquatting Consumer Protection
Act was whether Kremer had a “bad faith intent to profit”
from the use of the trademark in his domain name, such as by
making an extortionate offer to sell the BosleyMedical.com
site to Bosley. Because discovery regarding that claim had not
been completed, and the issue itself was not within the scope
of the summary judgment motions, the district court erred in
granting summary judgment to Kremer as to cybersquatting.
Finally, we hold that the district court should not have
granted Kremer’s motion to strike Bosley Medical’s state-law
claims pursuant to the California anti-SLAPP statute. Bosley
Medical’s complaint about the unauthorized use of its trade-
mark as Kremer’s domain name was not so lacking in merit
as to be susceptible to an anti-SLAPP motion to strike at an
early stage of the case.
3980 BOSLEY MEDICAL INSTITUTE v. KREMER
I. Background
Bosley Medical provides surgical hair transplantation, res-
toration, and replacement services to the public. Bosley Medi-
cal owns the registered trademark “BOSLEY MEDICAL,”1
has used the mark “BOSLEY MEDICAL” since 1992, and
registered the mark with the United States Patent and Trade-
mark Office in January 2001. Bosley has spent millions of
dollars on advertising and promotion throughout the United
States and the rest of the world.
Michael Kremer is a dissatisfied former patient of Bosley.
Unhappy with the results of a hair replacement procedure per-
formed by a Bosley physician in Seattle, Washington, he filed
a medical malpractice lawsuit against Bosley Medical in
1994. That suit was eventually dismissed.
In January 2000, Kremer purchased the domain name
www.BosleyMedical.com, the subject of this appeal, as well
as the domain name www.BosleyMedicalViolations.com,
which is not challenged by Bosley. Five days after registering
the domain name, Kremer went to Bosley Medical’s office in
Beverly Hills, California and delivered a two-page letter to
Dr. Bosley, Founder and President of Bosley Medical. The
first page read:
Let me know if you want to discuss this. Once it is
spread over the internet it will have a snowball effect
and be too late to stop. M. Kremer [phone number].
P.S. I always follow through on my promises.
The second page was entitled “Courses of action against
BMG” and listed eleven items. The first item stated: “1. Net
web sites disclosing true operating nature of BMG. Letter 3/
1
Bosley also owns the following trademarks: BOSLEY, BOSLEY
HEALTHY HAIR, BOSLEY HEALTHY HAIR FORMULA, and BOS-
LEY HEALTHY HAIR COMPLEX.
BOSLEY MEDICAL INSTITUTE v. KREMER 3981
14/96 from LAC D.A. Negative testimonials from former cli-
ents. Links. Provide BMG competitors with this information.”
The letter contains no mention of domain names or any other
reference to the Internet.
Kremer began to use www.BosleyMedical.com in 2001.
His site summarizes the Los Angeles County District Attor-
ney’s 1996 investigative findings about Bosley, and allows
visitors to view the entire document. It also contains other
information that is highly critical of Bosley. Kremer earns no
revenue from the website and no goods or services are sold
on the website. There are no links to any of Bosley’s competi-
tors’ websites. BosleyMedical.com does link to Kremer’s sis-
ter site, BosleyMedicalViolations.com, which links to a
newsgroup entitled alt.baldspot, which in turn contains adver-
tisements for companies that compete with Bosley. Bos-
leyMedical.com also contained a link to the Public Citizen
website. Public Citizen is the organization that represents
Kremer in this case.
Bosley brought this suit alleging trademark infringement,
dilution, unfair competition, various state law claims, and a
libel claim that was eventually settled. Bosley sought to take
discovery aimed at the trademark and libel claims. The magis-
trate judge granted limited discovery on the libel claims. Fol-
lowing discovery, Bosley dismissed the libel claims and
amended the complaint.
Kremer moved to dismiss the First Amended Complaint
and in addition moved for partial summary judgment on the
issues of commercial use and likelihood of confusion. Bosley
filed a cross-motion for partial summary judgment on the
infringement and dilution claims. Kremer agreed that the facts
were undisputed with regard to the issues of commercial use
and likelihood of confusion, and that these issues were ripe
for summary judgment.
Ruling that Kremer’s use of “Bosley Medical” in the
domain name was noncommercial and unlikely to cause con-
3982 BOSLEY MEDICAL INSTITUTE v. KREMER
fusion, the district court entered summary judgment for
Kremer on the federal claims and dismissed the state law
claims under Claifornia’s anti-SLAPP statute. Bosley now
appeals.
II. Jurisdiction and Standard of Review
We have jurisdiction under 28 U.S.C. § 1291 and review a
district court’s grant of summary judgment de novo, viewing
the evidence in the light most favorable to the non-moving
party. Prison Legal News v. Lehman, 397 F.3d 692, 698 (9th
Cir. 2005). A district court’s grant of a special motion to
strike under California’s anti-SLAPP statute, Cal. Civ. P.
Code § 425.16, is also reviewed de novo. Vess v. Ciba-Geigy
Corp., 317 F.3d 1097, 1102 (9th Cir. 2003).
III. Analysis
A. Trademark Infringement and Dilution Claims
[1] The Trademark Act of 1946 (“Lanham Act”) prohibits
uses of trademarks, trade names, and trade dress that are
likely to cause confusion about the source of a product or ser-
vice. See 15 U.S.C. §§ 1114, 1125(a). In 1996, Congress
amended § 43 of the Lanham Act to provide a remedy for the
dilution of a famous mark. See 15 U.S.C. § 1125(c).
[2] Infringement claims are subject to a commercial use
requirement. The infringement section of the Lanham Act, 15
U.S.C. § 1114, states that any person who “use[s] in com-
merce any reproduction, counterfeit, copy, or colorable imita-
tion 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, or to cause mistake, or to deceive . . .” can be held
liable for such use. 15 U.S.C. § 1114(1)(a).
[3] In 1996, Congress expanded the scope of federal trade-
mark law when it enacted the Federal Trademark Dilution Act
BOSLEY MEDICAL INSTITUTE v. KREMER 3983
(“FTDA”). The FTDA allows the “owner of a famous mark”
to obtain “an injunction against another person’s commercial
use in commerce of a mark or trade name . . . .” 15 U.S.C.
§ 1125(c)(1) (emphasis added). While the meaning of the
term “commercial use in commerce” is not entirely clear, we
have interpreted the language to be roughly analogous to the
“in connection with” sale of goods and services requirement
of the infringement statute. See Mattel, Inc. v. MCA Records,
Inc., 296 F.3d 894, 903 (9th Cir. 2002) (“Although this statu-
tory language is ungainly, its meaning seems clear: It refers
to a use of a famous and distinctive mark to sell goods other
than those produced or authorized by the mark’s owner.”); see
also Huthwaite, Inc. v. Sunrise Assisted Living, Inc., 261 F.
Supp. 2d 502, 517 (E.D. Va. 2003) (holding that the commer-
cial use requirement of the FTDA is “virtually synonymous
with the ‘in connection with the sale, offering for sale, distri-
bution, or advertising of goods and services’ requirement” of
the Lanham Act).
The inclusion of these requirements in the Lanham Act
serves the Act’s purpose: “to secure to the owner of the mark
the goodwill of his business and to protect the ability of con-
sumers to distinguish among competing producers.” Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 774 (1992)
(internal quotation marks and citations omitted). In other
words, the Act is designed to protect consumers who have
formed particular associations with a mark from buying a
competing product using the same or substantially similar
mark and to allow the mark holder to distinguish his product
from that of his rivals. See Avery Dennison Corp. v. Sumpton,
189 F.3d 868, 873 (9th Cir. 1999).
The Supreme Court has made it clear that trademark
infringement law prevents only unauthorized uses of a trade-
mark in connection with a commercial transaction in which
the trademark is being used to confuse potential consumers.
See Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924) (“A
trade-mark only gives the right to prohibit the use of it so far
3984 BOSLEY MEDICAL INSTITUTE v. KREMER
as to protect the owner’s good will against the sale of anoth-
er’s product as his.” [emphasis added]); see also Mishawaka
Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203,
205 (1942) (explaining that the main purpose of the Lanham
Act is to prevent the use of identical or similar marks in a way
that confuses the public about the actual source of goods and
services).
As the Second Circuit held, “[t]he Lanham Act seeks to
prevent consumer confusion that enables a seller to pass off
his goods as the goods of another . . . . [T]rademark infringe-
ment protects only against mistaken purchasing decisions and
not against confusion generally.” Lang v. Ret. Living Publ’g
Co., Inc., 949 F.2d 576, 582-83 (2d Cir. 1991) (internal quota-
tion marks and citation omitted) (emphasis added).
As a matter of First Amendment law, commercial speech
may be regulated in ways that would be impermissible if the
same regulation were applied to noncommercial expressions.
Florida Bar v. Went For It, Inc., 515 U.S. 618, 623 (1995).
“The First Amendment may offer little protection for a com-
petitor who labels its commercial good with a confusingly
similar mark, but trademark rights do not entitle the owner to
quash an unauthorized use of the mark by another who is
communicating ideas or expressing points of view.” Mattel,
296 F.3d at 900 (internal quotation marks and citations omit-
ted).
The district court ruled that Kremer’s use of Bosley’s mark
was noncommercial. To reach that conclusion, the court
focused on the “use in commerce” language rather than the
“use in connection with the sale of goods” clause. This
approach is erroneous. “Use in commerce” is simply a juris-
dictional predicate to any law passed by Congress under the
Commerce Clause. See Steele v. Bulova Watch Co., 344 U.S.
280, 283 (1952); OBH, Inc. v. Spotlight Magazine, Inc., 86 F.
Supp. 2d 176, 185 (W.D.N.Y. 2000). 15 U.S.C. § 1127 states
that “unless the contrary is plainly apparent from the context
BOSLEY MEDICAL INSTITUTE v. KREMER 3985
. . . [t]he word ‘commerce’ means all commerce which may
lawfully be regulated by Congress.” Therefore, the district
court should have determined instead whether Kremer’s use
was “in connection with a sale of goods or services” rather
than a “use in commerce.” However, we can affirm the dis-
trict court’s grant of summary judgment on any ground sup-
ported by the record. Lamps Plus, Inc. v. Seattle Lighting
Fixture Co., 345 F.3d 1140, 1143 (9th Cir. 2003). The ques-
tion before us, then, boils down to whether Kremer’s use of
Bosley Medical as his domain name was “in connection with
a sale of goods or services.” If it was not, then Kremer’s use
was “noncommercial” and did not violate the Lanham Act.
Bosley argues that it has met the commercial use require-
ment in three ways. First, it argues that a mark used in an oth-
erwise noncommercial website or as a domain name for an
otherwise noncommercial website is nonetheless used in con-
nection with goods and services where a user can click on a
link available on that website to reach a commercial site. Nis-
san Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th
Cir. 2004). However, Bosley’s reliance on Nissan is
unfounded.
[4] In Nissan, Nissan Motor Company sued Nissan Com-
puter Corporation for using the Internet websites
www.Nissan.com and www.Nissan.net. Id. at 1006. In Nis-
san, however, commercial use was undisputed, as the core
function of the defendant’s website was to advertise his com-
puter business. Id. Additionally, the defendant in Nissan, like
the defendant in Taubman Co. v. Webfeats, 319 F.3d 770 (6th
Cir. 2003), placed links to other commercial businesses
directly on their website. 319 F.3d at 772-73. Kremer’s web-
site contains no commercial links, but rather contains links to
a discussion group, which in turn contains advertising. This
roundabout path to the advertising of others is too attenuated
to render Kremer’s site commercial. At no time did Kremer’s
BosleyMedical.com site offer for sale any product or service
or contain paid advertisements from any other commercial
3986 BOSLEY MEDICAL INSTITUTE v. KREMER
entity. See TMI, Inc. v. Maxwell, 368 F.3d 433, 435, 438 (5th
Cir. 2004) (holding that the commercial use requirement is
not satisfied where defendant’s site had no outside links).
[5] Bosley also points out that Kremer’s site contained a
link to Public Citizen, the public interest group representing
Kremer throughout this litigation. We hold that Kremer’s
identification of his lawyers and his provision of a link to
same did not transform his noncommercial site into a com-
mercial one.
[6] Bosley’s second argument that Kremer’s website satis-
fies the “in connection with the sale of goods or services”
requirement of the Lanham Act is that Kremer created his
website to enable an extortion scheme in an attempt to profit
from registering BosleyMedical.com. In Panavision Interna-
tional, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998), this
court held that a defendant’s “commercial use was his attempt
to sell the trademarks themselves.” Id. at 1325. Similarly, in
Intermatic Inc. v. Toeppen, 947 F. Supp. 1227 (N.D. Ill.
1996), the court found that “Toeppen’s intention to arbitrage
the ‘intermatic.com’ domain name constitute[d] a commercial
use.” Id. at 1239; see also Boston Prof’l Hockey Ass’n., Inc.
v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004, 1010 (5th
Cir. 1975) (holding that trademark law protects the trademark
itself, despite the fact that only “a reproduction of the trade-
mark itself is being sold, unattached to any other goods or ser-
vices”).
[7] However, in this case, there is no evidence that Kremer
was trying to sell the domain name itself. The letter delivered
by Kremer to Bosley’s headquarters is a threat to expose neg-
ative information about Bosley on the Internet, but it makes
no reference whatsoever to ransoming Bosley’s trademark or
to Kremer’s use of the mark as a domain name.
Bosley argues that it was denied an opportunity to pursue
discovery on commercial use, and had it been allowed to pro-
BOSLEY MEDICAL INSTITUTE v. KREMER 3987
ceed with discovery, it could further establish that Kremer has
attempted to sell the domain name. However, in opposing
Kremer’s motion for summary judgment, Bosley did not
make any such objections. Bosley failed to request further dis-
covery under Federal Rule of Civil Procedure 56(f), but
instead moved for summary judgment itself. Although Bos-
ley’s reply brief supporting its own motion for summary judg-
ment complained about limited discovery in a footnote,
Bosley did not move for leave to take discovery. The district
court did not abuse its discretion in granting the summary
judgment without permitting further discovery.
Bosley’s third and final argument that it satisfied the com-
mercial use requirement of the Lanham Act is that Kremer’s
use of Bosley’s trademark was in connection with Bosley’s
goods and services. In other words, Kremer used the mark “in
connection with goods and services” because he prevented
users from obtaining the plaintiff’s goods and services. See
People for the Ethical Treatment of Animals v. Doughney,
263 F.3d 359 (4th Cir. 2001) (“PETA”). In PETA, defendants
created a site that promoted ideas antithetical to those of the
PETA group. Id. at 362-63. The Fourth Circuit held that the
defendant’s parody site, though not having a commercial pur-
pose and not selling any goods or services, violated the Lan-
ham Act because it “prevented users from obtaining or using
PETA’s goods or services.” Id. at 365.
[8] However, in PETA, the defendant’s website “provide[d]
links to more than 30 commercial operations offering goods
and services.” Id. at 366. To the extent that the PETA court
held that the Lanham Act’s commercial use requirement is
satisfied because the defendant’s use of the plaintiff’s mark as
the domain name may deter customers from reaching the
plaintiff’s site itself, we respectfully disagree with that ratio-
nale. While it is true that www.BosleyMedical.com is not
sponsored by Bosley Medical, it is just as true that it is about
Bosley Medical. The PETA approach would place most criti-
cal, otherwise protected consumer commentary under the
3988 BOSLEY MEDICAL INSTITUTE v. KREMER
restrictions of the Lanham Act. Other courts have also
rejected this theory as over-expansive. See L.L. Bean, Inc. v.
Drake Publishers, Inc., 811 F.2d 26, 33 (1st Cir. 1987); see
also Ford Motor Co. v. 2600 Enters., 177 F. Supp. 2d 661,
664 (E.D. Mich. 2001).
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.2 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. “[T]rademark laws are
intended to protect” consumers from purchasing the products
of an infringer “under the mistaken assumption that they are
buying a product produced or sponsored by [the trademark
holder].” Beneficial Corp. v. Beneficial Capital Corp., 529 F.
Supp. 445, 450 (S.D.N.Y. 1982). Limiting the Lanham Act to
cases where a defendant is trying to profit from a plaintiff’s
trademark is consistent with the Supreme Court’s view that
“[a trademark’s] function is simply to designate the goods as
the product of a particular trader and to protect his good will
against the sale of another’s product as his.” United Drug Co.
v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918); see also
1 McCarthy on Trademarks and Unfair Competition § 2:7
(4th ed. 2004).
[9] The Second Circuit held in United We Stand America,
Inc. v. United We Stand, America New York, Inc., 128 F.3d
86, 90 (2d Cir. 1997), that the “use in connection with the sale
of goods and services” requirement of the Lanham Act does
not require any actual sale of goods and services. Thus, the
2
In fact, such a holding would suggest that any time a non-holder of a
trademark uses the mark as his domain name, he would violate the Lan-
ham Act. However, when Congress amended the Lanham Act to add the
Anticybersquatting Consumer Protection Act, it limited violations only to
situations where a person registers the site with a bad faith intent to profit.
To find a Lanham Act violation without finding commercial use may con-
tradict Congress’ intent.
BOSLEY MEDICAL INSTITUTE v. KREMER 3989
appropriate inquiry is whether Kremer offers competing ser-
vices 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.
[10] The dangers that the Lanham Act was designed to
address are simply not at issue in this case. The Lanham Act,
expressly enacted to be applied in commercial contexts, does
not prohibit all unauthorized uses of a trademark. Kremer’s
use of the Bosley Medical mark simply cannot mislead con-
sumers 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.
Neither is Kremer capitalizing on the good will Bosley has
created in its mark. Any harm to Bosley arises not from a
competitor’s sale of a similar product under Bosley’s mark,
but from Kremer’s criticism of their services. Bosley cannot
use the Lanham Act either as a shield from Kremer’s criti-
cism, or as a sword to shut Kremer up.3
B. Anticybersquatting Consumer Protection Act
In 1999, Congress passed the Anticybersquatting Consumer
Protection Act (“ACPA”), 15 U.S.C. § 1125(d), as an amend-
ment to the Lanham Act to prohibit cybersquatting.
[C]ybersquatting occurs when a person other than
the trademark holder registers the domain name of a
well known trademark and then attempts to profit
from this by either ransoming the domain name back
to the trademark holder or by using the domain name
to divert business from the trademark holder to the
domain name holder.
3
Because we hold that Kremer’s use of Bosley’s mark was noncommer-
cial, we do not reach the issue of initial interest confusion which was
addressed in Interstellar Starship Services, Ltd. v. Epix, Inc., 304 F.3d 936
(9th Cir. 2002).
3990 BOSLEY MEDICAL INSTITUTE v. KREMER
DaimlerChrysler v. The Net Inc., 388 F.3d 201, 204 (6th Cir.
2004) (internal quotation marks omitted).
The ACPA states:
A person shall be liable in a civil action by the
owner of a mark . . . if, without regard to the goods
or services of the parties, that person (i) has a bad
faith intent to profit from that mark . . . ; and (ii) reg-
isters, traffics in, or uses a domain name [that is con-
fusingly similar to another’s mark or dilutes
another’s famous mark].
15 U.S.C. § 1125(d)(1)(A) (2004).
The district court dismissed Bosley’s ACPA claim for the
same reasons that it dismissed the infringement and dilution
claims — namely, because Kremer did not make commercial
use of Bosley’s mark. However, the ACPA does not contain
a commercial use requirement, and we therefore reverse.
Kremer argues that the “noncommercial use” proviso that
appears in the dilution portion of § 1125 applies to cyber-
squatting claims with equal force. Admittedly, the language in
§ 1125 is confusing. 15 U.S.C. § 1125(c)(4) reads: “The fol-
lowing shall not be actionable under this section: . . . (B) Non-
commercial use of a mark.” 15 U.S.C. § 1125(c)(4)(B).
Kremer asserts that by using the word “section,” rather than
the more precise term “subsection,” Congress meant for the
proviso to apply to all of § 1125, as opposed to subsection (c).
[11] This argument fails for two reasons. The noncommer-
cial use exception, which appears in a different part of the
Lanham Act, is in direct conflict with the language of the
ACPA. The ACPA makes it clear that “use” is only one possi-
ble way to violate the Act (“registers, traffics in, or uses”).
Allowing a cybersquatter to register the domain name with a
bad faith intent to profit but get around the law by making
BOSLEY MEDICAL INSTITUTE v. KREMER 3991
noncommercial use of the mark would run counter to the pur-
pose of the Act. “[T]he use of a domain name in connection
with a site that makes a noncommercial or fair use of the mark
does not necessarily mean that the domain name registrant
lacked bad faith.” Coca-Cola Co. v. Purdy, 382 F.3d 774, 778
(8th Cir. 2004) (internal quotation marks and citation omit-
ted); see also H.R. Rep. No. 106-412 at 11 (1999) (“This fac-
tor is not intended to create a loophole that otherwise might
swallow the bill, however, by allowing a domain name regis-
trant to evade application of the Act by merely putting up a
noninfringing site under an infringing domain name.”). “It is
a well-established canon of statutory construction that a court
should go beyond the literal language of a statute if reliance
on that language would defeat the plain purpose of the stat-
ute.” Bob Jones Univ. v. United States, 461 U.S. 574, 586
(1983); see also Albertson’s, Inc. v. Commissioner, 42 F.3d
537, 546 (9th Cir. 1994).
Additionally, one of the nine factors listed in the statute
that courts must consider is the registrant’s “bona fide non-
commercial or fair use of the mark in a site accessible under
the domain name.” 15 U.S.C. § 1125(d)(1)(B)(i)(IV). This
factor would be meaningless if the statute exempted all non-
commercial uses of a trademark within a domain name. We
try to avoid, where possible, an interpretation of a statute “that
renders any part of it superfluous and does not give effect to
all of the words used by Congress.” Nevada v. Watkins, 939
F.2d 710, 715 (9th Cir. 1991) (internal quotation marks and
citation omitted).
[12] Finally, other courts that have construed the ACPA
have not required commercial use. In DaimlerChrysler, the
Sixth Circuit held that a
trademark owner asserting a claim under the ACPA
must establish the following: (1) it has a valid trade-
mark entitled to protection; (2) its mark is distinctive
or famous; (3) the defendant’s domain name is iden-
3992 BOSLEY MEDICAL INSTITUTE v. KREMER
tical or confusingly similar to, or in the case of
famous marks, dilutive of, the owner’s mark; and (4)
the defendant used, registered, or trafficked in the
domain name (5) with a bad faith intent to profit.
388 F.3d at 204. See also Ford Motor Co. v. Catalanotte, 342
F.3d 543, 546 (6th Cir. 2003); E. & J. Gallo Winery v. Spider
Webs Ltd., 129 F. Supp. 2d 1033, 1047-48 (S. D. Tex. 2001),
aff’d, 286 F.3d 270 (5th Cir. 2002) (“As reflected by the lan-
guage of the ACPA and the case law interpreting it, there is
no requirement . . . that the ‘use’ be a commercial use to run
afoul of the ACPA”).
[13] The district court erred in applying the commercial use
requirement to Bosley’s ACPA claim. Rather, the court
should confine its inquiry to the elements of the ACPA claim
listed in the statute, particularly to whether Kremer had a bad
faith intent to profit from his use of Bosley’s mark in his site’s
domain name. Bosley has met the first prong of the ACPA
(that the domain name is identical to the mark) because
Kremer used an unmodified version of Bosley’s mark as his
domain name.
Concluding that all of Bosley’s claims, including the
ACPA claim, were subject to a commercial use requirement,
the district judge granted summary judgment in Kremer’s
favor. But the ACPA claim was not in front of the district
court in the motions for summary judgment. The court did not
provide notice to Bosley that it would rule on this claim, and
did not give Bosley an opportunity to conduct discovery on
the issue. See Celotex Corp. v. Catrett, 477 U.S. 317, 326
(1986). For this reason, the district court erred in granting
summary judgment for Kremer on the ACPA claim. It
remains to be seen whether Bosley can establish that Kremer
registered the domain name in bad faith or can authenticate
other letters that Bosley alleges were written and sent by
Kremer.
BOSLEY MEDICAL INSTITUTE v. KREMER 3993
C. California’s Anti-SLAPP Law
[14] In 1993, responding to the “disturbing increase in law-
suits brought primarily to chill the valid exercise of the consti-
tutional rights of freedom of speech and petition for the
redress of grievances,” the California Legislature enacted the
Anti-Strategic Lawsuit Against Public Participation (“anti-
SLAPP”) statute. Cal. Civ. Proc. Code § 425.16(a). “The hall-
mark of a SLAPP suit is that it lacks merit, and is brought
with the goals of obtaining an economic advantage over a citi-
zen party by increasing the cost of litigation to the point that
the citizen party’s case will be weakened or abandoned, and
of deterring future litigation.” United States ex rel. Newsham
v. Lockheed Missiles & Space Co., 190 F.3d 963, 970-71 (9th
Cir. 1999) (citing Wilcox v. Superior Court, 33 Cal. Rptr. 2d
446, 449-50 (Cal. Ct. App. 1994)). The anti-SLAPP statute
was designed to curtail these lawsuits by establishing a proce-
dure to promptly expose and dismiss meritless and harassing
claims seeking to chill protected expression. The statute pro-
vides that a defendant may move to strike a plaintiff’s com-
plaint if it “aris[es] from any act of that person in furtherance
of the person’s right of petition or free speech under the
United States or California Constitution in connection with a
public issue.” Cal. Civ. Proc. Code § 425.16(b)(1).
A defendant filing an anti-SLAPP motion to strike “must
make an initial prima facie showing that the plaintiff’s suit
arises from an act in furtherance of defendant’s right of peti-
tion or free speech.” Braun v. Chronicle Publ’g Co., 61 Cal.
Rptr. 2d 58, 61 (Cal. Ct. App. 1997). The defendant need not
show that plaintiff’s suit was brought with the intention to
chill defendant’s speech; the plaintiff’s “intentions are ulti-
mately beside the point.” Equilon Enters., LLC v. Consumer
Cause, Inc., 124 Cal. Rptr. 2d 507, 519 (Cal. 2002).
[15] The district court ruled that Bosley was seeking to
limit Kremer’s free speech and granted Kremer’s anti-SLAPP
motion to strike Bosley’s state law trademark claims. We now
3994 BOSLEY MEDICAL INSTITUTE v. KREMER
reverse. An infringement lawsuit by a trademark owner over
a defendant’s unauthorized use of the mark as his domain
name does not necessarily impair the defendant’s free speech
rights. As noted by the Second Circuit, “[d]omain names . . .
per se are neither automatically entitled to nor excluded from
the protections of the First Amendment, and the appropriate
inquiry is one that fully addresses particular circumstances
presented with respect to each domain name.” Name.Space,
Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir.
2000). In Panavision, we stated that “[a] significant purpose
of a domain name is to identify the entity that owns the web
site,” 141 F.3d at 1327, and we explained in Mattel that a
source identifier is not entitled to full First Amendment pro-
tection. 296 F.3d at 900. While a summary judgment motion
might have been well-taken, an anti-SLAPP motion to strike
was not. We reverse the grant of the anti-SLAPP motion to
strike and remand to the district court for further proceedings
on the state law claims.
IV. Conclusion
We affirm the district court’s entry of summary judgment
in favor of Kremer with respect to the infringement and dilu-
tion claims. We remand the ACPA claim for further proceed-
ings. The district court’s grant of the anti-SLAPP motion to
strike the state law claims is reversed.
AFFIRMED in part, REVERSED in part, and
REMANDED. No costs allowed.