Namer v. Broadcasting Board of Governors et al
Filing
33
ORDER AND REASONS granting 11 Motion to Dismiss Counts I, II, and V of the Complaint or, in the Alternative, for Summary Judgment. Signed by Judge Ivan L.R. Lemelle. (ijg, )
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
ROBERT NAMER
CIVIL ACTION
VERSUS
NO. 12-2232
BROADCASTING BOARD OF GOVERNORS
AND VOICE OF AMERICA
SECTION “B”(5)
ORDER AND REASONS
Before the Court is Defendants' Motion to Dismiss Counts I,
II, and V of the Complaint or, in the Alternative, for Summary
Judgment. (Rec. Doc. No. 11). In response, Plaintiff filed an
Opposition to Defendants' motion. (Rec. Doc. No. 19). Defendants
filed a reply thereto. (Rec. Doc. No. 23). Accordingly, and for the
reasons enumerated below IT IS ORDERED that Defendants' Motion to
Dismiss Counts I, II, and V or, in the Alternative, for Summary
Judgment be GRANTED.
Cause of Action and Facts of the Case:
This case arises out of the use of the phrase "Voice of
America" as the name of Plaintiff's business and the use of the
domain name "www.voiceofamerica.com" for Plaintiff's website. In
1968, Plaintiff Namer ("Plaintiff" or "Namer") began operating as
the "Voice of America" in seminars, lectures, print, radio, and
television in the United States and in the State of Louisiana.
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(Rec. Doc. No. 1, at 3). In 1977, Namer formed the corporation
Voice of America, Inc. ("Voice of America") in the State of
Louisiana. Namer is the president of Voice of America and owns 100%
of all shares of its stock. (Rec. Doc. No. 1, at 3). In 1991, Namer
began airing a radio program called "Voice of America" on various
radio stations. Id. These broadcasts were also aired over the
Internet and were exclusively limited to the continental United
States. Id. In 1998, Namer legally purchased the domain name
"www.thevoiceofamerica.com." Id.
On February 7, 2000, the Broadcasting Board of Governors
("BBG") corresponded with Namer asserting that they had the legal
right to use the name "Voice of America" and demanded that Namer
cease using the name. (Rec. Doc. No. 1-5). Namer responded that he
had purchased the domain name in 1998. Id. BBG did not take any
action at that time.
On July 22, 2005, BBG applied for its word mark number 3205170
for "Voice of America." (Rec. Doc. No. 1-6). Thereafter, the word
mark was published for opposition on November 21, 2006 and was
registered on February 6, 2007 with the U.S. Patent and Trademark
office. Id. In April 2011, Namer received a letter from the BBG
alleging, among other things, that it had used the phrase "Voice of
America" since before World War II, and that starting in 1990, all
U.S. Governmental international broadcasting services began to work
more closely together. The letter indicated that Namer's website
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audiences could be confused by the similarities between Mr. Namer's
use of the domain "www.thevoiceofamerica.com" and BBG's alleged
"Voice of America" service mark.
On November 9, 2011, the BBG submitted a Complaint to the
National Arbitration Forum pursuant to the Uniform Domain Name
Dispute Resolution Policy ("URDP") seeking transfer of the domain
name "thevoiceofamerica.com" to the BBG. (Rec. Doc. No. 11-1, at
2). In a final decision dated December 21, 2011, the Forum panel
ordered the transfer of the domain name to the BBG. (Rec. Doc. No.
11-1, at 2; Rec. Doc. No. 1, Ex. G). The arbitrator opined that the
domain
name,
"www.thevoiceofamerica.com"
was
identical
or
confusingly similar to the word mark of BBG; that Namer had no
legitimate interest in the domain name; and that Namer registered
and used the disputed domain name in bad faith. (Rec. Doc. No. 1,
at 8). Namer alleges that no consideration of his many years of
work and expense was proposed. Id.
On January 4, 2012, Plaintiff Robert Namer filed a civil
action
to
prevent
transfer
"thevoiceofamerica.com"
to
of
the
Defendant
domain
BBG,
name
but
registration
that
case
was
dismissed on July 12, 2012, due to plaintiff's failure to effect
proper service of process. (Rec. Doc. No. 11-1, at 2; see Namer v.
Broadcasting Bd. of Governors, Civ. No. 12-14, 2010 WL 3597081 at
*1 (E.D.La. August 20, 2012)).
On September 7, 2012, plaintiff commenced this lawsuit by
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filing a "COMPLAINT FOR DECLARATORY JUDGMENT AND OTHER RELIEF."
(Rec. Doc. No. 1). As to a remedy, the Complaint requests, inter
alia, that the Court grant plaintiff's Complaint for Declaratory
Judgment and declare that Namer has the legal right to continue
doing business under the name "Voice of America." (Rec. Doc. No. 1,
at 17).
Plaintiff contends that his use of "Voice of America" and
"www.thevoiceofamerica.com" is protected by the fair use defense
articulated in 15 U.S.C. § 1115(b)(4). (Rec. Doc. No. 1, at 10).
Defendants
contends
requirement
that
that
his
Plaintiff
use
"www.thevoiceofamerica.com"
of
is
unable
"Voice
constitutes
of
use
to
satisfy
America"
other
than
the
and
as
a
trademark and thus cannot invoke the fair use defense. (Rec. Doc.
No. 11-1, at 10). Defendants also contend that Count I of the
complaint should be dismissed for failure to state a claim upon
which relief can be granted and that Count V of the Complaint
should be dismissed for lack of subject matter jurisdiction.
Plaintiff did not respond to Defendants' latter two contentions.
Law and Analysis:
A. Summary Judgment
Summary judgment is proper if the pleadings, depositions,
interrogatory
answers,
and
admissions,
4
together
with
any
affidavits, show that there is no genuine issue as to any material
fact and that the moving party is entitled to judgment as a matter
of law.
Fed. R. Civ. P. 56; see also Celotex Corp. v. Catrett, 477
U.S. 317, 327 (1986). A genuine issue exists if the evidence would
allow a reasonable jury to return a verdict for the nonmovant.
Anderson
v.
Liberty
Lobby,
Inc.,
477
U.S.
242,
248
(1986).
Although the Court must consider the evidence with all reasonable
inferences in the light most favorable to the nonmoving party, the
nonmovant must produce specific facts to demonstrate that a genuine
issue exists for trial.
Webb v. Cardiothoracic Surgery Assocs. of
N. Texas, 139 F.3d 532, 536 (5th Cir. 1998). “[T]he issue of
material fact required by Rule 56 to be present to entitle a party
to proceed to trial is not required to be resolved conclusively in
favor of the party asserting its existence; rather, all that is
required is that sufficient evidence supporting the claimed factual
dispute be shown to require a jury or judge to resolve the parties’
differing versions of the truth at trial.” First National Bank of
Arizona v. Cities Service Co., 391 U.S. 253, 288-89 (1968). The
moving party bears the initial responsibility of informing the
district court of the basis for its motion. Celotex, 477 U.S. at
323.
The
movant
must
point
to
“portions
of
‘the
pleadings,
depositions, answers to interrogatories, and admissions on file,
together with affidavits’ which it believes demonstrate the absence
of a genuine issue of material fact.” Id. (citing Fed. R. Civ. P.
5
56). If and when the movant carries this burden, the nonmovant must
then go beyond the pleadings and use affidavits, depositions,
interrogatory responses, admissions, or other evidence to establish
a genuine issue.
Matsushita Elec. Indus. Co. V. Zenith Radio
Corp., 475 U.S. 574, 586 (1986). Accordingly, conclusory rebuttals
of the pleadings are insufficient to avoid summary judgment.
Travelers Ins. Co. v. Liljeberg Enter., Inc., 7 F.3d 1203, 1207
(5th Cir. 1993).
B. The Fair Use Defense
15 U.S.C. § 1115(b)(4) provides a defense to a claim of
infringement on a registered mark where "the use of the name, term,
or device charged to be an infringement is a use, otherwise than as
a mark, . . . of a term or device which is descriptive of and used
fairly and in good faith only to describe the goods or services of
such party, or their geographic origin." 15 U.S.C.A. § 1127 defines
the term “trademark” to include any word, name, symbol, or device,
or any combination thereof used "to identify and distinguish his or
her goods, including a unique product, from those manufactured or
sold by others and to indicate the source of the goods, even if
that source is unknown." (emphasis added).
The “fair-use” defense, articulated in 15 U.S.C 1115(b)(4) is
one of several permissible defenses to use of an “incontestable”
mark. See Venetianaire Corp. v. A & P Import Co., 429 F.2d 1079,
1081-82 (5th Cir. 1970). "The fair-use defense allows a party to
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use a term in good faith to describe its goods or services, but
only in actions involving descriptive terms and only when the term
is used in its descriptive sense rather than in its trademark
sense." Sugar Busters LLC v. Brennan, 177 F.3d 258, 271 (5th Cir.
1999).
The
defense
prevents
a
trademark
registrant
from
"appropriat[ing] a descriptive term for his exclusive use and so
prevent[ing] others from accurately describing a characteristic of
their goods." Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1185
(5th Cir. 1980); see also Citrus Grp., Inc. v. Cadbury Beverages,
Inc., 781 F. Supp. 386, 390-91 (D. Md. 1991)("It is not a trademark
infringement to use words in their ordinary, rather than in their
special, trademark meaning.").
In Soweco, Inc. v. Shell Oil Co., the Fifth Circuit ruled that
a company that used the word "larvicide" in connection with a
product that was meant for killing fly larvae was a fair use of the
term to describe the product and was thus protected under §
1115(b)(4). 617 F.2d at 1186-87. We do not have a similarly
descriptive
term
before
us.
Plaintiff
Namer's
website
is
essentially a place to access various news articles - the phrase
"Voice of America" is not as obviously descriptive of a compilation
of news articles as the term "larvicide" is in referring to a
product that kills larvae. Furthermore, where the term is used “ as
being indicative of source or origin of that product, the term is
not being used as a trademark.” Citrus Grp., 781 F. Supp. at 390-91
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(citing Schmid Laboratories v. Youngs Drug Products Corp., 482
F.Supp. 14, 21 (D.N.J.1979) (emphasis in original); see also Sierra
On–Line, Inc. v. Phoenix Software, Inc., 739 F.2d 1415, 1423 (9th
Cir. 1984)(examining whether a term was used to “associate it with
a manufacturer” and consequently, constituted a trademark). Namer
contends
that
he
"uses
the
'Voice
of
America'
as
a
purely
descriptive means in which users can access [his] goods and
services." (Rec. Doc. No. 1, at 11). Additionally, the Voice of
America homepage states that "THEVOICEOFAMERICA.com is America's
news
and
information
center
for
the
21st
century.
Thevoiceofamerica.com brings news, information, and commentary to
the world." (Rec. Doc. No. 11-2, at 3). Plaintiff's account of his
use of the phrase demonstrates that it is intended to identify the
source of the goods and where they can be accessed. To say
"thevoiceofamerica.com brings news..." is not to say that the news
itself is "the Voice of America" but rather to describe the website
as a locus for news. Thus, in this case, the phrase is being used
to identify the source of the news.
Furthermore, other courts have found that use of a term in a
web address is not descriptive. In TCPIP Holding Co., Inc. v. Haar
Communications, Inc., 244 F.3d 88, 104 (2d Cir. 2001), the holder
of the trademark "The Children's Place" brought suit alleging that
the creator of portal on the internet was liable for infringement
for using
"thechildrensplace.com" as the address/name of its
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website. The court found that this use was simply not an adjectival
- rather is was certainly a use as a mark. Id. The court noted that
had the Defendant named the website differently but referred to it
in publicity materials as "a children's place" the outcome may have
been different. Similarly, the use of "thevoiceofamerica.com" is
not adjectival - it designates the address where Namer's goods can
be found.
Additionally, courts have noted that "indications of trademark
use include whether the term is used as a “symbol to attract public
attention.” JA Apparel Corp. v. Abboud, 568 F.3d 390, 400 (2d Cir.
2009). This can be demonstrated by “the lettering, type style, size
and visual placement and prominence of the challenged words.”
Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt.,
Inc., 618 F.3d 1025, 1040 (9th Cir. 2010); see also Packman v.
Chicago Tribune Co., 267 F.3d 628, 639 (7th Cir. 2001) (noting that
a newspaper's distinctive masthead, which appeared prominently on
the
front
page
of
the
paper,
identified
the
source
of
the
products.)
In the case at hand, Plaintiff's website has a banner that
runs across the top of the homepage. The banner has portions of an
American flag as its background and "THEVOICEOFAMERICA.COM" runs
across
the
banner.
Additionally,
a
circle
that
contains
an
animation of a stylized eagle and the words "Voice of America"
running along the inside of the top half of the circle, above the
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eagle, is located at the right end of the banner. (See Rec. Doc.
No. 11-2, at 3, 39). That banner is essentially a masthead and the
circle containing the phrase and the eagle is a symbol of the
organization that reappears in other parts of the website. Thus,
Plaintiff has failed to demonstrate that there exists an issue of
material fact as to whether his use of the phrase "the Voice of
America"
and
"www.thevoiceofamerica.com"
is
as
a
mark
and
consequently, he cannot invoke the fair use defense under 15 U.S.C.
§ 1115(b)(4).
C. Counts 1 and 5 of Plaintiff's Complaint
As Plaintiff's response to Defendants' Motion to Dismiss
Counts I, II and V of the Complaint or, in the Alternative, for
Summary Judgment has failed or declined to respond to Defendants'
allegations as to Counts 1 and 5 of the complaint, IT IS ORDERED
that those Counts are DISMISSED.
Accordingly, and for the reasons pronounced above, IT IS
ORDERED that Defendants' Motion to Dismiss Counts I, II, and V of
the Complaint or, in the Alternative, for Summary Judgment (Rec.
Doc. No. 11) is GRANTED.
New Orleans, Louisiana, this 10th day of September, 2013.
______________________________
UNITED STATES DISTRICT JUDGE
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