Bosley Medical Institute, Inc. v. Kremer, 403 F.

3d 672 (2005)
74 U.S.P.Q.2d 1280, 05 Cal. Daily Op. Serv. 2849, 2005 Daily Journal D.A.R. 3915

KeyCite Yellow Flag - Negative Treatment West Headnotes (18)

Abrogation Recognized by Just Tacos, Inc. v. Zezulak, D.Hawai'i, July 12,
2013
403 F.3d 672 [1] Federal Courts Summary judgment
United States Court of Appeals, 170B Federal Courts
Ninth Circuit. 170BXVII Courts of Appeals
170BXVII(K) Scope and Extent of Review
170BXVII(K)2 Standard of Review
BOSLEY MEDICAL INSTITUTE, INC.,
170Bk3576 Procedural Matters
a Delaware corporation, Plaintiff–Appellant, 170Bk3604 Judgment
and 170Bk3604(4) Summary judgment
(Formerly 170Bk776)
Bosley Medical Group, S.C., District court's grant of summary judgment is
an Illinois corporation, Plaintiff, reviewed de novo.
v.
5 Cases that cite this headnote
Michael Steven KREMER,
Defendant–Appellee. [2] Federal Courts Pleading
170B Federal Courts
No.
170BXVII Courts of Appeals
04 170BXVII(K) Scope and Extent of Review
–55962. 170BXVII(K)2 Standard of Review
| 170Bk3576 Procedural Matters
Argued and Submitted March 8, 2005. 170Bk3587 Pleading
| 170Bk3587(1) In general
Filed April 4, 2005. (Formerly 170Bk776)
District court's grant of motion to strike under
Synopsis California's Anti-Strategic Lawsuit Against
Background: Trademark owner sued dissatisfied customer, Public Participation (anti-SLAPP) statute is
who had started website critical of owner, for infringement. reviewed de novo. West's Ann.Cal.C.C.P. §
The United States District Court for the Southern District of 425.16.
California, William Q. Hayes, J., 2004 WL 964163, granted
partial summary judgment for customer, and owner appealed. 11 Cases that cite this headnote

[3] Trademarks Purpose and construction in

Holdings: The Court of Appeals, Silverman, Circuit Judge, general
held that: 382T Trademarks
382TI In General
[1] noncommercial use of mark was not infringing, but 382Tk1003 Constitutional and Statutory
Provisions
[2] owner's state law claims were subject to dismissal 382Tk1005 Purpose and construction in general
under California's Anti-Strategic Lawsuit Against Public (Formerly 382k331 Trade Regulation)
Participation (anti-SLAPP) statute. Lanham Act is designed to protect consumers
who have formed particular associations with
mark from buying competing product using same
Affirmed in part, reversed in part, and remanded. or substantially similar mark and to allow mark
holder to distinguish his product from that of his
rivals. Lanham Trade-Mark Act, § 1 et seq., 15
U.S.C.A. § 1051 et seq.

© 2023 Thomson Reuters. No claim to original U.S. Government Works. 1

Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672 (2005)
74 U.S.P.Q.2d 1280, 05 Cal. Daily Op. Serv. 2849, 2005 Daily Journal D.A.R. 3915

Mark Act, §§ 32(1), 43(a), 15 U.S.C.A. §§

9 Cases that cite this headnote 1114(1), 1125(a).

101 Cases that cite this headnote

[] Trademarks Infringement
382T Trademarks
382TVIII Violations of Rights
382TVIII(A) In General
382Tk1418 Practices or Conduct Prohibited in
General;  Elements
382Tk1421 Infringement
(Formerly 382k331 Trade Regulation)
Trademark infringement law prevents only
unauthorized uses of trademark in connection
with commercial transaction in which trademark
is being used to confuse potential consumers.
Lanham Trade-Mark Act, §§ 32(1), 43(a), 15
U.S.C.A. §§ 1114(1), 1125(a).
54 Cases that cite this headnote
[7] Trademarks Nature of defendant's use;
 use in commerce
382T Trademarks
382TVIII Violations of Rights
382TVIII(A) In General
382Tk1422 Nature of defendant's use;  use in
commerce
(Formerly 382k332 Trade Regulation)
“Use in commerce” element of trademark
infringement claim is simply jurisdictional
predicate to any law passed by Congress under
Commerce Clause. U.S.C.A. Const. Art. 1, § 8,
cl. 3; Lanham Trade-Mark Act, §§ 32(1), 43(a),
15 U.S.C.A. §§ 1114(1), 1125(a).

29 Cases that cite this headnote

[5] Constitutional Law Commercial Speech
in General
92 Constitutional Law [8] Federal Courts Theory and Grounds of
92XVIII Freedom of Speech, Expression, and Decision of Lower Court
Press 170B Federal Courts
92XVIII(A) In General 170BXVII Courts of Appeals
92XVIII(A)2 Commercial Speech in General 170BXVII(K) Scope and Extent of Review
92k1535 In general 170BXVII(K)1 In General
(Formerly 92k90.2) 170Bk3548 Theory and Grounds of Decision of
As matter of First Amendment law, commercial Lower Court
speech may be regulated in ways that would 170Bk3549 In general
be impermissible if same regulation were (Formerly 170Bk759.1)
applied to noncommercial expressions. U.S.C.A. District court's grant of summary judgment can
Const.Amend. 1. be affirmed on any ground supported by record.

2 Cases that cite this headnote 2 Cases that cite this headnote

[6] Trademarks Internet use [9] Trademarks Internet use

382T Trademarks
382TVIII Violations of Rights
382TVIII(A) In General
382Tk1435 Internet use
(Formerly 382k350.1 Trade Regulation)
Use of trademark as domain name of website,
the subject of which was consumer commentary
about products and services represented by mark,
was noncommercial and thus did not constitute
infringement under Lanham Act. Lanham Trade-
382T Trademarks
382TVIII Violations of Rights
382TVIII(A) In General
382Tk1435 Internet use
(Formerly 382k350.1 Trade Regulation)
Fact that otherwise noncommercial website
contained link to discussion group which in
turn contained links to commercial advertisers
was insufficient to deprive first website of
its noncommercial status, for purpose of
determining whether its domain name infringed

© 2023 Thomson Reuters. No claim to original U.S. Government Works. 2

Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672 (2005)
74 U.S.P.Q.2d 1280, 05 Cal. Daily Op. Serv. 2849, 2005 Daily Journal D.A.R. 3915
trademark. Lanham Trade-Mark Act, §§ 32(1),
43(a), 15 U.S.C.A. §§ 1114(1), 1125(a).
40 Cases that cite this headnote
[10] Trademarks Internet use
382T Trademarks
382TVIII Violations of Rights
382TVIII(A) In General
382Tk1435 Internet use
(Formerly 382k350.1 Trade Regulation)
Fact that otherwise noncommercial website
identified site operator's lawyers and provided
link to same was insufficient to deprive website
of its noncommercial status, for purpose of
determining whether its domain name infringed
trademark. Lanham Trade-Mark Act, §§ 32(1),
43(a), 15 U.S.C.A. §§ 1114(1), 1125(a).
43 Cases that cite this headnote
[11] Federal Civil Procedure Time for
consideration of motion
170A Federal Civil Procedure
170AXVII Judgment
170AXVII(C) Summary Judgment
170AXVII(C)3 Proceedings
170Ak2547 Hearing and Determination
170Ak2553 Time for consideration of motion
(Formerly 382k722 Trade Regulation)
Grant of summary judgment for trademark
infringement defendant without permitting
further discovery was not abuse of discretion,
where plaintiff did not move for leave to take
additional discovery; complaint about limited
discovery, in footnote to reply brief supporting
plaintiff's cross-motion for summary judgment,
was insufficient. Fed.Rules Civ.Proc.Rule 56(f),
28 U.S.C.A.
3 Cases that cite this headnote
[12] Trademarks Internet use
382T Trademarks
382TVIII Violations of Rights
382TVIII(A) In General
382Tk1435 Internet use
(Formerly 382k350.1 Trade Regulation)
© 2023 Thomson Reuters. No claim to original U.S. Government Works.
Otherwise noncommercial website devoted to
criticism of company's products did not satisfy
Lanham Act's commercial use requirement
merely because operator's use of company's
trademark as domain name might deter
customers from reaching company's site itself.
Lanham Trade-Mark Act, §§ 32(1), 43(a), 15
U.S.C.A. §§ 1114(1), 1125(a).
23 Cases that cite this headnote
[13] Trademarks Practices or conduct
prohibited
Trademarks Knowledge, intent, and
motives;  bad faith
382T Trademarks
382TVIII Violations of Rights
382TVIII(C) Misuse of Internet Domain Names;
 Cyberpiracy and Cybersquatting
382Tk1501 Practices or conduct prohibited
(Formerly 382Tk1498, 382k350.1 Trade
Regulation)
382T Trademarks
382TVIII Violations of Rights
382TVIII(C) Misuse of Internet Domain Names;
 Cyberpiracy and Cybersquatting
382Tk1502 Knowledge, intent, and motives;  bad
faith
(Formerly 382k350.1 Trade Regulation)
Anticybersquatting Consumer Protection Act
(ACPA) does not contain a commercial use
requirement; key to cybersquatting claim, rather,
is bad faith intent to profit. Lanham Trade-Mark
Act, § 43(d), 15 U.S.C.A. § 1125(d).
57 Cases that cite this headnote
[14] Statutes Literal, precise, or strict meaning;
 letter of the law
361 Statutes
361III Construction
361III(B) Plain Language;  Plain, Ordinary, or
Common Meaning
361k1093 Literal, precise, or strict meaning;
 letter of the law
(Formerly 361k189)
Court should go beyond literal language of
statute if reliance on that language would defeat
plain purpose of statute.
3
Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672 (2005)
74 U.S.P.Q.2d 1280, 05 Cal. Daily Op. Serv. 2849, 2005 Daily Journal D.A.R. 3915

302 Pleading
302XVI Motions
302k351 Striking Out Pleading or Defense
[15] Statutes Superfluousness 302k360 Application and proceedings thereon
361 Statutes Defendant filing Anti-Strategic Lawsuit Against
361III Construction Public Participation (anti-SLAPP) motion to
361III(E) Statute as a Whole;  Relation of Parts to strike must make initial prima facie showing
Whole and to One Another that plaintiff's suit arises from act in furtherance
361k1156 Superfluousness of defendant's right of petition or free speech;
(Formerly 361k206)
defendant need not show that plaintiff's suit
Court tries to avoid, where possible,
was brought with intention to chill defendant's
interpretation of statute that renders any part of it
speech. U.S.C.A. Const.Amend. 1; West's
superfluous and does not give effect to all words
Ann.Cal.C.C.P. § 425.16.
used by Congress.
13 Cases that cite this headnote
10 Cases that cite this headnote

[18] Pleading Frivolous pleading

[16] Pleading Frivolous pleading
302 Pleading
302 Pleading 302XVI Motions
302XVI Motions 302k351 Striking Out Pleading or Defense
302k351 Striking Out Pleading or Defense 302k358 Frivolous pleading
302k358 Frivolous pleading
Infringement lawsuit by trademark owner over
California's Anti-Strategic Lawsuit Against
defendant's unauthorized use of mark as his
Public Participation (anti-SLAPP) statute
Internet domain name did not necessarily impair
establishes a procedure to promptly expose
defendant's free speech rights, and thus was
and dismiss meritless and harassing claims
not subject to dismissal under California's Anti-
seeking to chill constitutionally protected
Strategic Lawsuit Against Public Participation
expression. U.S.C.A. Const.Amend. 1; West's
(anti-SLAPP) statute. U.S.C.A. Const.Amend. 1;
Ann.Cal.C.C.P. § 425.16.
West's Ann.Cal.C.C.P. § 425.16.
12 Cases that cite this headnote
14 Cases that cite this headnote

[17] Pleading Frivolous pleading

Pleading Application and proceedings
thereon All Citations
302 Pleading
403 F.3d 672, 74 U.S.P.Q.2d 1280, 05 Cal. Daily Op. Serv.
302XVI Motions
2849, 2005 Daily Journal D.A.R. 3915
302k351 Striking Out Pleading or Defense
302k358 Frivolous pleading

End of Document © 2023 Thomson Reuters. No claim to original U.S.

Government Works.

© 2023 Thomson Reuters. No claim to original U.S. Government Works. 4