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April 29, 2004.


The opinion of the court was delivered by: WILLIAM Q. HAYES, District Judge

Defendant Michael Kremer moves to dismiss and for partial summary judgment on Plaintiff's federal claims, and to strike Plaintiff's state law claims. Plaintiff Bosley Medical Institute, Inc. moves for summary judgment on Plaintiff's federal trademark infringement and trademark dilution claims. On April 2, 2004 counsel for the parties appeared for oral argument before the Honorable William Q. Hayes, United States District Judge. Having considered the parties' briefs and oral argument, the Court enters the following decision. Background

Plaintiff Bosley Medical Institute, Inc. manages and markets surgical and consultation offices which provide hair transplantation, restoration, and replacement services. First Amended Complaint ("FAC") ¶ 6. Bosley owns the following trademarks and service marks: Bosley, Bosley Medical, Bosley Healthy Hair, Bosley Healthy Hair Formula and Bosley Healthy Hair Complex for hair care products, surgical hair restoration, and consulting relating to the hair and scalp (collectively, "the marks"). Id ¶ 8. Defendant Michael Kremer is a dissatisfied former Bosley patient. Id ¶ 26. In 1991 Kremer received hair replacement services from Dr. David Smith at a Bosley facility in Seattle, Washington. Id In 1994 Kremer filed a medical malpractice lawsuit against Bosley, but the court dismissed the suit through summary judgment. Id. ¶ 27.

  Bosley alleges that Kremer attempted to extort money from Dr. Smith and Dr. L. Lee Bosley, the company's founder. Id ¶¶ 28-35. Specifically, Bosley alleges that Kremer first delivered a letter to Dr. Smith's home in May 1999, demanding $400,000 to "prevent the possibility of being brought down" with the Bosley organization. Id ¶¶ 28-29. On January 7, 2000 Kremer purchased and registered the Internet domain name "" Id ¶ 31. Bosley alleges that on January 12, 2000 Kremer left a letter at Bosley's Beverly Hills office, threatening to criticize Bosley on the website unless his monetary demands were met. Id ¶ 32. On March 29, 2001 Kremer purchased and registered the domain name "" Id ¶ 34. Bosley alleges that in November 2001 Kremer sent letters to some of Bosley's affiliated physicians, threatening publication of derogatory, critical information on websites located at his two registered domain names. Id ¶ 35. Kremer continues to maintain the websites for the purpose of publishing "numerous derogatory and critical statements that refer to and identify Bosley, its president, Dr. L. Lee Bosley, hair care and restoration services provided by Bosley, and Bosley's business." Id. ¶ 41.

  On November 28, 2000 Bosley filed a complaint with the World Intellectual Property Organization ("WIPO") Arbitration and Mediation Center. Bosley alleged that Kremer had purchased and registered domain names identical or confusingly similar to Bosley's marks in bad faith, that he could not establish a legitimate right in the domain names, and that he was using the domain names to harass and intimidate Bosley and its employees. The WIPO panel found in Kremer's favor, concluding that there was no potential trademark violation because Kremer's domain names were not registered for a commercial purpose. The panel further found that Bosley had instituted the WIPO proceedings for the purpose of "squelching" Kremer's negative commentary.

  On June 12, 2001 Bosley filed suit against Kremer in the Northern District of Illinois, bringing claims for cyberpiracy, trademark infringement, trademark dilution, unfair competition, libel and actual malice. Kremer filed several motions attacking the pleadings, including a motion to dismiss for lack of personal jurisdiction or, in the alternative, to transfer venue. Bosley consented to the venue transfer, and on September 27, 2001 the case was transferred to the Southern District of California. In October 2001 Kremer moved to dismiss the complaint for failure to state a claim, to dismiss the cyberpiracy, libel and actual malice claims for lack of subject matter jurisdiction, and to strike the pleadings under California's anti-SLAPP statute. Bosley requested, and was granted, limited discovery in order to respond to the motions. In October 2003 the parties reached a settlement concerning the libel-based claims.

  On October 9, 2003 Bosley filed the FAC, effectively mooting the pending motions. The FAC alleges claims for (1) trademark infringement under the Lanham Act, (2) unfair competition under the Lanham Act, (3) trademark dilution under the Lanham Act, (4) cybersquatting, (5) trademark infringement under California law, (6) trademark dilution under California law and (7) unlawful business practices under California Business and Professions Code § 17200. Kremer now moves to dismiss the federal trademark claims, to strike the state law claims under the anti-SLAPP statute, and for partial summary judgment. Bosley cross-moves for summary judgment on its trademark infringement and dilution claims. Legal Standards

 I. Consideration of Matters Outside the Pleadings

  Kremer moves to dismiss Bosley's federal trademark claims under Rule 12(b)(6) for failure to state a claim upon which relief may be granted. He also moves for partial summary judgment. Together with his moving papers, Kremer presented affidavits with supporting exhibits. Bosley moves to strike the affidavit and accompanying exhibits as matters outside the scope of the pleadings and not subject to judicial notice. As a general rule, a district court may not consider any material beyond the pleadings in ruling on a Rule 12(b)(6) motion. See Lee v. City of Los Angeles, 250 F.3d 668, 688 (9th Cir. 2001). Subject to certain exceptions, when

matters outside the pleadings are presented to and not excluded by the court, the motion shall be treated as one for summary judgment and disposed of as provided in Rule 56, and all parties shall be given reasonable opportunity to present all material made pertinent to such a motion by Rule 56.
Fed.R.Civ.P. 12(b)(6). Notice to the parties that the court will treat the motion as one for summary judgment need not be explicit. In re Rothery, 123 F.3d 546, 549 (9th Cir. 1998). Notice is adequate if the non-moving party is "fairly apprised" before the hearing that the court will look beyond the pleadings. Id. "A party is `fairly apprised' that the court will in fact be deciding a summary judgment motion if that party submits matters outside the pleadings to the judge and invites consideration of them." Id. Here, not only did Bosley file its own cross-motions for summary judgment on the same claims that are the subject of Kremer's Rule 12(b)(6) motion, it submitted material outside the pleadings for the Court's consideration in connection with those motions. Accordingly, the Court may properly treat Kremer's motion to dismiss as a motion for summary judgment under Rule 56(c).

  II. Summary Judgment

  Summary judgment is appropriate under Rule 56 of the Federal Rules of Civil Procedure where the moving party demonstrates the absence of a genuine issue of material fact and entitlement to judgment as a matter of law. Fed.R.Civ.P. 56(c); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). A fact is material when, under the governing substantive law, it could affect the outcome of the case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute over a material fact is genuine if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id.

  A party seeking summary judgment always bears the initial burden of establishing the absence of a genuine issue of material fact. Celotex, 477 U.S. at 323. The moving party may meet this burden in two ways: (1) by presenting evidence that negates an essential element of the nonmoving party's case or (2) by demonstrating that the nonmoving party failed to make a showing sufficient to establish an element essential to that party's case on which that party will bear the burden of proof at trial. Id. at 322-23. If the moving party fails to discharge this initial burden, summary judgment must be denied and the court need not consider the nonmoving party's evidence. Adickes v. S.H. Kress & Co., 398 U.S. 144, 159-60 (1970).

  If the moving party satisfies its initial burden, the nonmoving party cannot defeat summary judgment merely by demonstrating "that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus, Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986); see also Anderson, 477 U.S. at 252 ("The mere existence of a scintilla of evidence in support of the nonmoving party's position is not sufficient."). Rather, the nonmoving party must "go beyond the pleadings and by her own affidavits, or by the depositions, answers to interrogatories, and admissions on file, designate specific facts showing that there is a genuine issue for trial." Celotex, 477 U.S. at 324 (quoting Fed.R.Civ.P. 56(e)) (internal quotations omitted).

  In ruling on a motion for summary judgment, "[t]he district court may limit its review to the documents submitted for purposes of summary judgment and those parts of the record specifically referenced therein." Carmen v. San Francisco Unified Sch. Dist., 237 F.3d 1026, 1030 (9th Cir. 2001). Therefore, the court is not obligated to "scour the record in search of a genuine issue of triable fact." Keenan v. Allen, 91 F.3d 1275, 1279 (9th Cir. 1996) (citing Richards v. Combined Ins. Co., 55 F.3d 247, 251 (7th Cir. 1995)). The court must view all inferences drawn from the underlying facts in the light most favorable to the nonmoving party. Matsushita, 475 U.S. at 587. "Credibility determinations [and] the weighing of evidence . . . are jury functions, not those of a judge, [when] he [or she] is ruling on a motion for summary judgment." Anderson, 477 U.S. at 255.

  When parties submit cross-motions for summary judgment on the same claim or issue, each motion must be considered on its own merits and analyzed under Rule 56. See Fair Housing Council of Riverside County, Inc. v. Riverside Two, 249 F.3d 1132, 1136 (9th Cir. 2001). The court must consider the appropriate evidentiary material identified and submitted in support of both motions, and in opposition to both motions, before ruling on the motions. Id. That both parties assert that no genuine issues of material fact exist does not vitiate the court's responsibility to determine whether disputed issues of material fact are present. Id. (quoting United States v. Fred. A. Arnold, Inc., 573 F.2d 605, 606 (9th Cir. 1978)).

  III. California's Anti-SLAPP Statute

  "California's anti-SLAPP (Strategic Lawsuit Against Public Participation) statute provides a mechanism for a defendant to strike civil actions brought primarily to chill the exercise of free speech." Metabolife Int'l, Inc. v. Wornick, 213 F. Supp.2d 1220, 1221 (S.D. Cal. 2002) (Rhoades, J.) (citing Cal. Civ. Proc. Code § 425.16(b)(1)). "The California Legislature passed the statute recognizing the public interest to encourage continued participation in matters of public significance . . . and finding that this participation should not be chilled through abuse of the judicial process." Id. (citations omitted). Under the anti-SLAPP statute, where an action arises from any act in furtherance of a person's right to petition or to ...

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