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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

Bally Total Fitness Holding Corporation v. Andrew S. Faber

29 F. Supp. 2d 1161 (C.D.Cal., Nov. 23, 1998)

Defendant maintains a web site devoted to airing his complaints and negative views about health clubs operated by plaintiff Bally Total Fitness Holding Corporation ("Bally"). Called "Bally sucks," the web site opens with the image of plaintiff's federally registered trademark "Bally", across which appears the word "sucks." Immediately following are the words "Bally Total Fitness Complaints! Unauthorized". Defendant's site can be found at the url "" Defendant, a website designer, neither sells nor offers any products for sale on this website.

Bally sued defendant to compel him to discontinue this use of its mark. In its complaint, Bally asserted that defendant's actions constituted trademark infringement, dilution and unfair competition. The court disagreed, and on defendant's motion for summary judgment, dismissed the complaint.

The touchstone of a trademark infringement claim is the likelihood of consumer confusion. When the adversaries are marketing related goods, the likelihood of confusion is determined by application of a familiar test which balances eight factors, such as the strength of the mark and evidence of actual consumer confusion. The court determined, however, that the parties' goods were not related because defendant was a web site designer, while plaintiff operated health clubs. As a result, the standard eight factor balancing test did not apply to the case at bar.

The court went on to conclude that the average consumer was not likely to be confused by defendant's use of the "Bally" mark as to the source of defendant's "Bally sucks" website, or assume that it was created or authorized by the plaintiff. Quite the contrary, the average consumer would assume that the site was not authorized by Bally, and was put up by an unaffiliated party. Accordingly, plaintiff's trademark infringement claims failed as a matter of law. Said the court:


Faber's site states that it is "unauthorized" and contains the words "Bally sucks". No reasonable consumer comparing Bally's official website with Faber's would assume Faber's site to come from the same source, or thought to be affiliated with, connected with, or sponsored by, the trademark owner. Therefore, Bally's claim for trademark infringement fails as a matter of law.

The court went on to hold that even if it did apply the standard eight factor balancing test, plaintiff had failed to adequately demonstrate a likelihood of consumer confusion sufficient to sustain a trademark infringement claim. In reaching this conclusion, the court held that (1) the respective marks used by the parties were not similar, due to defendant's placement of the word "suck" over the "Bally" mark; (2) there was no evidence of actual consumer confusion; (3) the parties did not market competing products; (4) plaintiff had no intention of expanding its business into the arena of website design, defendant's specialty; and (5) whether consumers did or did not exercise extensive care in product selection, defendant's website was not likely to confuse them about the parties' relationship.

The court also rejected plaintiff's trademark dilution claim. To sustain a dilution claim, the plaintiff must show that defendant is making a commercial use of plaintiff's famous mark that causes dilution by lessening the capacity of the mark to identify plaintiff's goods and services. The court held that plaintiff' claim failed because of plaintiff's inability to establish that defendant's use of the Bally mark was commercial.

The site on which the mark in question appeared was devoted solely to the expression of consumer criticism concerning plaintiff's operations. No products were sold or offered for sale on the site. As such, this use of the mark was not commercial. Plaintiff argued that defendant's use of the "Bally" mark was commercial because of a link that connected that site to another operated by defendant. On this linked site, defendant marketed his website designer services. Defendant placed a link on this site to the "Bally's sucks" site to show an example of his work. The court rejected this argument, finding that defendant was not, by this link, using the Bally mark to sell his services.

The court also found that defendant's actions did not impermissibly tarnish plaintiff's mark. The fact that the site contained non-commercial criticism of plaintiff's operations cannot be utilized to sustain a dilution claim because such criticism is protected by the First Amendment.

The court further held that the fact that defendant's site contained a link to another site operated by defendants which featured and offered for sale pictures of nude men, was insufficient as a matter of law to establish dilution by tarnishing. This holding is likely to be of great interest to the Internet community. Said the court:


Including linked sites as grounds for finding commercial use or dilution would extend the statute far beyond its intended purpose of protecting trademark owners from uses that have the effect of "lessening...the capacity of a famous mark to identify and distinguish goods or services." 15 U.S.C. § 1227. Further, it is not logical that a reasonably prudent Internet user would believe that sites which contain no reference to a trademark and which are linked to, or within the same domain, as a site that is clearly not sponsored by the trademark owner are in some way sponsored by the trademark owner.

The court rejected the balance of plaintiff's claims, and dismissed the complaint.

Perhaps the most significant aspect of the court's ruling is its determination that a party who builds a non-commercial website to promote consumer criticism of an entity can use that entity's trademark in the meta tags of his site to attract users to it. Said the court:


[The] average Internet user may want to receive all the information available on Bally. The user may want to access the official Internet site to see how Bally sells itself. Likewise, the user may also want to be apprised of the opinions of others about Bally. This individual will be unable to locate sites containing outside commentary unless those sites include Bally's marks in the machine readable code. The machine readable code is the hidden part of the Internet upon which search engines rely to find sites that contain content which the individual user wishes to locate. The basic mechanics is that the web page designer places certain keyword in an unreadable portion of the web page that tells the search engines what is on a particular page upon which search engines rely. Prohibiting Faber from using Bally's name in the machine readable code would effectively isolate him from all but the most savvy of Internet users.

The full text of the court's decision can be found on a web site maintained by Prof. Jack Balkin of the Yale Law School.

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