Citation Edit

Bally Total Fitness Holding Corp. v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998) (full-text).

Factual Background Edit

Plaintiff, owner of the federally registered trademarks BALLY and BALLY TOTAL FITNESS, sued defendant who operated a “Bally Sucks” website dedicated to complaints and commentaries about Bally’s health-club business practices. Defendant’s website featured the word “Sucks” superimposed over Bally’s logo (consisting of the words BALLY TOTAL FITNESS and a stylized “B”) and stated “Bally Total Fitness Complaints! Unauthorized.” Defendant sought summary judgment on plaintiff’s claims for trademark infringement, dilution by tarnishment, and unfair competition.

Trial Court Proceedings Edit

The court first considered plaintiff’s claim for trademark infringement. Assessing the likelihood of confusion factors, the court held that the parties’ marks were not similar, as the addition of the word “sucks” could not be considered a “minor change.” The court also found that the parties’ websites were not competitive, because one was a commercial advertisement while the other consisted of consumer commentary. It noted that defendant’s use of the terms “Unauthorized” and “sucks” would make it unlikely that a reasonably prudent person would mistake defendant’s website for plaintiff’s official site.

The court rejected plaintiff’s argument that potential users of its services might become frustrated and angry when searching for its website, and might fail to continue searching if they came upon defendant’s site. It doubted that such frustration would occur if a user were forced to sift through one additional website before finding plaintiff’s site.

As to defendant’s intent in selecting the mark, the court rejected plaintiff’s argument that defendant used more of the mark than necessary when making his commentary. It held that “[a]n individual who wishes to engage in consumer commentary must have the full range of marks that the trademark owner has to identify the trademark owner as the object of the criticism.” (This finding is arguably at odds with the fair-use cases generally holding that use of the plaintiff’s mark in its logo form is more than is needed to comment on the mark.) The court then held that there was no likelihood of confusionand granted summary judgment on the trademark infringement claim.

Although defendant apparently did not use any BALLY-formative domain names or metatags, the court nonetheless addressed these points in the context of plaintiff’s infringement claim. The court stated that use of “” as a domain name would not necessarily be a violation of plaintiff’s trademark rights as a matter of law. It distinguished “cybersquatter” cases such as Panavision where a user might believe the appropriated domain name was the trademark owner’s official website and stated that no reasonably prudent user would believe that “” was the official Bally website.

The court also noted that if defendant were prohibited from using plaintiff’s marks as metatags, Internet users seeking all available information and commentary about plaintiff would be unable to locate such material.

On its dilution claim, plaintiff argued that defendant tarnished its mark by associating it with pornography. Defendant also created websites containing pornographic images and there were previously links between these sites and the “Bally Sucks” webpage. But the court cautioned against including linked sites as a basis for finding dilution. If it were to look beyond the “Bally Sucks” website for purposes of a dilution analysis, the court would essentially have to include the entire Internet.

The court also found no commercial use to support the dilution claim. According to the court, defendant merely used his “Bally Sucks” webpage to demonstrate and market his website design skills, which was akin to an online resume, not use in commerce. Furthermore, the court stressed the First Amendment implications and held that plaintiff could not stifle defendant’s right to free expression. If plaintiff wished to respond to defendant’s contentions, it could likewise use the Internet to do so. The court thus granted summary judgment on plaintiff’s claims for dilution and unfair competition.

Source Edit

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