Members of plaintiff’s non-profit corporation owned and operated more than 4,000 hotels and lodging properties under the BEST WESTERN mark. Defendants included various anonymous bloggers who posted messages on an Internet website criticizing plaintiff. According to BWI’s complaint, the website where defendants posted their messages, freewrite.net--though not authorized or approved by BWI--identified itself as a site where "members and staff of Best Western" could "exchange information on a 100% confidential basis." Plaintiffs conceded that anyone could access the blog, even its competitors. Plaintiff filed claims for defamation, breach of contract, breach of fiduciary duty, revealing confidential information, trademark infringement, and unfair competition. Plaintiff requested permission, through its motion for accelerated and expedited discovery, to serve subpoenas on numerous Internet Service Providers to force them to reveal the identities of the John Doe defendants. Plaintiff also requested that the court order the ISPs to preserve all evidence of defendants’ identities pending the outcome of this action. The court established first, regarding the First Amendment, that not all internet activities are the same. Unlike the cases cited by plaintiff where music downloaders ultimately possessed only a "limited" First Amendment protection, the actions of the defendants here, "expressing their views on issues of interest to BWI members and governors in a forum specifically designed for an exchange of opinions and ideas anonymously," were entitled to "substantial" First Amendment protection because their actions were "purely expressive." Regarding jurisdiction, the plaintiff argued that because the proposed subpoenas would be served in other districts, only those courts could determine the propriety of each subpoena. The court held that it "can and should address the First Amendment issues raised by BWI’s discovery motion," because the defendant’s First Amendment right to anonymous speech will unalterably be "preserved or defeated" by the discovery orders. The court affirmed its authority to address the issue because a party’s discovery rights in other districts cannot exceed the discovery rights in the district where the trial takes place. The court defined the relevant First Amendment law in four points. The court affirmed, first, that the First Amendment protects anonymous speech and, second, that this protection extends to the Internet. Third, the court held that "civil subpoenas seeking information regarding anonymous individuals raise First Amendment concerns." Last, the court held that the right to speak anonymously is not absolute and that the right of anonymous speech must be weighed against the right of plaintiffs to seek redress for alleged wrongs. Given the First Amendment rights of the defendants in this case, the court first examined, what showing of harm plaintiff must produce to obtain the proposed discovery. The possible standards ranged from requiring plaintiff to have a good faith basis for asserting its claim, to pleading sufficient facts to survive a motion to dismiss, to a showing of a prima facie case to overcome a motion for summary judgment. Noting the lack of factual support in plaintiff’s complaint, the court that to eliminate defendant’s First Amendment rights, more is needed than a "good faith allegation of wrongdoing, devoid of factual detail." The court decided that plaintiff must establish a prima facie case using the facts within plaintiff’s control. The court adopted the five-part test used by other courts for this standard. This test first requires a "concrete" showing of a prima facie claim of an actionable harm. Second, the test considers the specificity of the discovery request. Third, the test examines whether alternative means exist to obtain the subpoenaed information. Fourth, the test requires a "central need for the subpoenaed information to advance the claim." Fifth, the test examines the John Doe Defendants’ expectations of privacy. The court held that, though plaintiff established the second, third, and fourth parts of the test, plaintiff failed to make a showing that could withstand summary judgment. The court noted that plaintiff may be able to make the necessary showing in a renewed motion. The court also noted that if plaintiff succeeds in satisfying the summary judgment standard it should give notice to defendants over the Internet so that defendants could oppose discovery before plaintiff took for itself the "important form of relief that comes from unmasking an anonymous defendant." In summary, the court denied plaintiff’s motion for accelerated and expedited discovery, but granted plaintiff’s motion to preserve documents pertaining to the identity of John Doe defendants.
One of the "John Doe" defendants, H. James Dial, voluntarily appeared in the case. Dial moved to dismiss plaintiff’s trademark infringement, unfair competition, and dilution claims because there was no allegation that defendants used plaintiff’s mark in commerce or in connection with goods or services. Plaintiff moved to amend its complaint to allege that defendants’ use of the marks occurred "in commerce." Defendant argued that this proposed amendment was futile because plaintiff still failed to allege that defendants’ use of plaintiff’s marks was "in connection with goods or services," an essential element of all of the Lanham Act claims. Plaintiff responded that its amendment satisfied the statute because defendants’ activities "affected Plaintiff’s goods and services and [were] thus ‘in connection with commerce.’" The court rejected this argument, however, and held that the Lanham Act "expressly require[d] that the wrongful conduct occur in connection with goods or services." Accordingly, the court granted defendant’s motion to dismiss plaintiff’s claims for trademark infringement and unfair competition under the Lanham Act and the common law and denied plaintiff’s motion to amend. Regarding plaintiff’s dilution claim, the court found this to be a "closer question." It noted that the FTDA does not expressly require use of the mark in connection with goods and services, but it does require use of the mark in commerce. The court noted, however, that in Bosley Medical Institute v. Kremer, the Ninth Circuit referred to the "use in commerce" language as "simply a jurisdictional predicate to any law passed by Congress under the Commerce Clause" and focused its analysis on whether the wrongful trademark use was "in connection with a sale of goods and services." The Bosley court held that if the defendant’s use of plaintiff’s mark on his website was not in connection with a sale of goods of services, then the use was "noncommercial" and thus not actionable. Here, plaintiff did not allege that defendant used its marks in connection with goods or services, that defendant earned any revenues from its activities, or that defendant’s website directed visitors to any of plaintiff’s competitors. In short, "[t]he dangers the Lanham Act was designed to address are not at issue in this case." The court thus granted defendant’s motion to dismiss plaintiff’s dilution claim. Next, citing Bosley and Nissan Motor, the court dismissed plaintiff’s argument that its "competitive injury" could establish "use in commerce" as "over-expansive" and declined to adopt such an "effect on commerce" test. Finally, plaintiff renewed its motion to conduct accelerated and expedited discovery, including subpoenas seeking disclosure of the identities of the anonymous persons behind the website. The court granted plaintiff’s motion, holding that plaintiff had established a prima facie case on its breach of contract claims and sufficiently justified removing the anonymity of the remaining defendants. According to the court, the First Amendment’s protection for anonymous critics was not absolute and that defendants could not "use the First Amendment to improperly encroach upon valid contractual rights of Plaintiff."