Namer v. Broadcasting Board of Governors et al
Filing
84
ORDER AND REASONS granting 66 Motion for Summary Judgment. Signed by Judge Ivan L.R. Lemelle. (lag)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
ROBERT NAMER
CIVIL ACTION
VERSUS
NO. 12-2232
BROADCASTING BOARD
OF GOVERNORS, ET AL.
SECTION “B”(5)
ORDER AND REASONS
Before
the
Court
is
Defendants’,
Broadcasting
Board
of
Governors (“BBG”) and Voice of America (“VOA”) (collectively,
“Defendants”), Motion for Summary Judgment (Rec. Doc. 66), as
well as the responsive pleadings thereto filed by both parties
(Rec. Docs. 75, 78). Defendants move the Court pursuant to Fed.
R. Civ. P. 56 for summary judgment on the following issues:
(1)
That
Plaintiff/Counter-Claim-Defendant,
Robert
Namer
(“Plaintiff”) has infringed the government’s service mark VOICE
OF AMERICA, pursuant to 15 U.S.C. §1114;
(2) That Plaintiff cannot establish the equitable defense
of laches;
(3) That Plaintiff cannot establish the affirmative defense
of invalidity for genericness; and
(4) Defendants are entitled to injunctive relief pursuant
to 15 U.S.C. §1116.
IT IS ORDERED that Defendants’ Motion for Summary Judgment
is GRANTED, as set forth fully below.
Facts and Cause of Action:
This case arises out of the disputed use of the phrase
"Voice of America" as the name of Plaintiff's business and the
use
of
phrase
the
domain
“Voice
name
of
"www.thevoiceofamerica.com"
America”
in
connection
with
and
the
Plaintiff's
websites and publication activities.1 Defendants herein are the
Broadcasting Board of Governors (“BBG”) and Voice of America
(“VOA”). The record reflects that Plaintiff began operating as
the “Voice of America” in the context of seminars, lectures,
print, radio, and television in the United States and in the
State
of
Louisiana
as
Plaintiff
further
Louisiana
corporation
early
as
registered
in
1968.
(Rec.
Voice
1977
of
(Rec.
Doc.
Doc.
America,
1
at
1
at
Inc.
3).
3).
as
In
a
1991,
Plaintiff began airing a radio program under the name “Voice of
America”
on
particular
various
issue
radio
here,
stations.
Plaintiff
“www.thevoiceofamerica.com”
in
1998
(Rec.
Doc.
purchased
and,
1
the
sometime
at
3).
domain
Of
name
thereafter,
used the website hosted at that domain to broadcast his radio
programs over the internet. (Rec. Doc. 1 at 3).
On
February
7,
2000,
Defendant
BBG
corresponded
with
Plaintiff asserting that it had the exclusive legal right to use
the name “Voice of America” and demanded Plaintiff cease using
the name. (Rec. Doc. 1-5). Plaintiff contends he responded to
1
For a detailed statement of the underlying facts, see the Court’s Order and
Reasons granting various portions of Defendants’ Motion to Dismiss (Rec. Doc.
33).
2
this correspondence asserting his prior use of the name and
noting his purchase of the contested domain name in 1998. (See
Rec. Doc. 75-7 at ¶ 9-10).2 BBG does not appear to have taken any
further action at that juncture.
On July 22, 2005, BBG applied for its word mark, number
3205170 for "Voice of America." (Rec. Doc. 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. (Rec. Doc.
66-16).
The
audiences
letter
could
be
indicated
a
confused
by
concern
the
that
Namer's
similarities
website
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. 11-1,
at 2). In a final decision dated December 21, 2011, the Forum
2
It should be noted that although a copy of the BBG’s correspondence to
Plaintiff is included in the record (See Rec. Doc. 1-5), the only evidence
that Plaintiff brought the 1998 domain name registration to the attention of
BBG in response thereto is in the form of a declaration by Plaintiff attached
to his opposition to Defendants’ motion for summary judgment. (Rec. Doc. 75-7
at ¶9-10).
3
panel ordered such transfer. (Rec. Doc. 11-1, at 2; Rec. Doc. 1,
Ex.
G).
The
arbitrator
"www.thevoiceofamerica.com",
opined
was
that
the
identical
domain
or
name,
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. 1, at 8).
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, for plaintiff's failure to effect
proper service of process. (Rec. Doc. 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
filing a "COMPLAINT FOR DECLARATORY JUDGMENT AND OTHER RELIEF."
(Rec. Doc. 1). As to a remedy, the Complaint requested, 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. 1,
at 17).
4
Thereafter, Defendants moved for dismissal of Counts I, II,
and V of Plaintiff’s Complaint,3 which this Court granted. (See
Rec. Doc. 33). Defendants then filed an Answer (Rec. Doc. 34) to
Plaintiff’s Complaint with respect to the remaining counts (III
and IV)4 and further brought a Counterclaim alleging Plaintiff’s
infringement
of
their
trademark
under
15
U.S.C.
§1114
and
requesting the issuance of injunctive relief to prevent further
infringement. (See Rec. Doc. 34 at 9-13). Defendants have since
brought the instant motion seeking summary judgment on their
counterclaims against Plaintiff. (Rec. Doc. 66).
Defendants’
motion
for
summary
judgment
raises
the
following four issues:
(1)
Whether a genuine issue of material fact remains as to
Plaintiff’s alleged infringement of Defendant’s mark
pursuant to 15 U.S.C. §1114;
(2)
Whether a genuine issue of material fact remains as to
Plaintiff’s
inability
to
prove
the
elements
of
the
affirmative defense of laches;
3
These counts consisted as follows: Count I – Plaintiff’s “Prior Use
Defense”; Count II – Plaintiff’s “Fair Use Defense”; Count V – Plaintiff’s
Claim for “Interference with Business Relations.” (Rec. Doc. 1 at 8-16).
4
The remaining counts consisted of: Count III – Plaintiff’s “Generic Defense”
and Count IV – Plaintiff’s “Doctrine of Laches” Defense. (Rec. Doc. 1 at 1214).
5
(3)
Whether a genuine issue of material fact remains to
Plaintiff’s inability to prove the affirmative defense
of invalidity for genericness; and
(4)
Whether Defendants are entitled to injunctive relief.
Contentions of Parties:
(1)
Federal Trademark Infringement under 15 U.S.C. §1114
On this issue, Defendants contend they have affirmatively
established
trademark
the
elements
infringement;
for
a
namely
prima
(1)
facie
that
case
they
of
own
federal
a
validly
registered trademark, (2) that Plaintiff is responsible for an
unauthorized use of that mark, and (3) that Plaintiff’s use is
likely to cause confusion among consumers in the marketplace.
(Rec. Doc. 66-2 at 11)(citing 15 U.S.C. §§ 1114(a), 1115). With
respect
to
“digits of
likelihood
Plaintiff’s
this
last
element,
Defendants
contend
the
eight
confusion” considered by courts in determining the
of
confusion
compel
infringement,
in
relying
favor
primarily
of
on
a
finding
of
statements
of
Plaintiff to the effect that he was aware of the government’s
VOA broadcast at the time of his early operations and also upon
the results of a survey purportedly showing actual confusion
among a significant number of potential users of Plaintiff’s
services.
(See.
Rec.
Doc.
66-2
6
at
13-16).
Accordingly,
Defendants argue they are entitled to summary judgment on the
issue of Plaintiff’s infringement of their trademark.
Plaintiff counters by arguing, first, that Defendants have
failed to prove Plaintiff’s failure to establish the defense of
laches (discussed in detail below) and that this in itself is
sufficient to preclude summary judgment on this issue. (Rec.
Doc. 75 at 7). Alternatively, Plaintiff argues Defendants have
failed to establish infringement because there has not been a
sufficient showing of “likelihood of confusion.” Id. To this
end, Plaintiff attacks the relevance of the survey commissioned
by Defendants on the ground that the survey universe did not
properly
screen
for
“reasonably
prudent
consumers,”
which,
according to Plaintiff, are the consumers made relevant under
applicable
legal
standards.
(Rec.
Doc.
75
at
8-9).
See
Brookfield Commcn’s, Inc. v. West Coast Entm’t Corp., 174 F.3d
1036, 1060 (5th Cir. 1999).
(2)
Plaintiff’s Defense of Laches
Defendants argue Plaintiff has failed to carry his burden
of proving the elements of the affirmative defense of laches,
which are: (1) a delay on the part of Defendants in asserting
their trademark rights, (2) lack of excuse for the delay, and
(3) undue prejudice to Plaintiff caused by the delay. (Rec. Doc.
66-2 at 11)(citing Bd. of Supervisors for Louisiana State Univ.
7
Agric. And Mech. College v. Smack Apparel Co., 550 F.3d 465,
489-90
(5th
Cir.
2008)).
In
particular,
Defendants
argue
Plaintiff mischaracterizes the relevant timeframe for computing
delay, given that BBG’s letter of February 2000 only referred to
radio programming as opposed to internet activities for purposes
of determining when Defendants were on notice of Plaintiff’s
alleged infringement. (Rec. Doc. 66-2 at 20). BBG argues it
first learned of Plaintiff’s internet activities in April 2011
and contacted him regarding such activity that same year. (Rec.
Doc. 66-2 at 20-21). In any event, Defendants argue the earliest
Plaintiff may contend Defendants should have been aware of his
internet activities is 2004 when content first appeared on the
site. (Rec. Doc. 78 at 5).
Defendants also assert that even if Plaintiff can establish
the
elements
of
delay
and
undue
prejudice,
the
doctrine
of
progressive encroachment precludes Plaintiff’s laches defense.
(Rec. Doc. 66-2 at 22)(citing J. Thomas McCarthy, 2 McCarthy on
Trademarks, §31:20)(4th ed. 2014). According to Defendants, this
is
because
activities
any
tacit
would
be
approval
vitiated
of
by
Plaintiff’s
the
scope
of
early
radio
his
later
widespread infringement over the internet. (Rec. Doc. 66-2 at
21-22).
8
Defendants further argue Plaintiff has failed to establish
the element of undue prejudice because Plaintiff has presented
no
evidence
demonstrating
financial
or
economic
detriment
resulting from Defendants’ alleged delay. (Rec. Doc. 66-2 at 89).
Additionally,
Defendants
argue
Plaintiff
is
barred
from
asserting prejudicial reliance in light of his admission that he
received BBG’s initial letter of 2000, which put him on notice
of Defendants’ objections to his use of the contested mark “in
connection
Finally,
with
[his]
Defendants
programming.”
argue
the
(Rec.
defense
of
Doc.
78
9).
does
laches
at
not
ordinarily operate to bar the issuance of prospective injunctive
relief
when
there
is
strong
evidence
of
likely
or
actual
confusion. (Rec. Doc 78 at 6).
Plaintiff responds that Defendants had actual knowledge of
the existence of his website starting in early 2000 because
Plaintiff responded to BBG’s letter of that year informing it
that
he
had
registered
the
domain
name
“www.thevoiceofamerica.com” in 1998. (Rec. Doc. 75 at 6). In
support
attached
of
to
this
his
contention,
Opposition
Plaintiff
(Rec.
Doc.
cites
a
Declaration
75-7)
to
Defendants’
Motion stating as much. Plaintiff does not, however, attach a
copy
of
any
such
letter.
Plaintiff
relies
on
BBG’s
alleged
notice in 2000 of the domain name registration to argue both in
9
favor
of
undue
encroachment
delay
argument.
and
to
(Rec.
defeat
Doc.
75
Defendants’
at
6).
progressive
According
to
Plaintiff, the competing assertions as to when BBG was first on
notice of Plaintiff’s registration of the domain name, at the
very least, preclude entry of summary judgment on the laches
defense.
(3)
Plaintiff’s Defense of Invalidity of Genericness
Plaintiff initially argued in his Complaint that Defendants
could not validly challenge his use of the mark, asserting the
defense of genericness. (Rec. Doc. 1 at 12)(citing 15 U.S.C.§
1064(3), Eastern Air Lines, Inc. v. New York Air Lines, Inc.,
559 F. Supp. 1270, 1274 (S.D.N.Y. 1983)). Plaintiff contended
that
the
terms
“Voice”
and
“America”
were
both
generic
components which combined to create a generic compound; one that
is not properly protected under federal trademark law. (Rec.
Doc. 1 at 14).
Defendants argue federal registration constitutes a strong
presumption of validity of the registered mark and that the
registered term is not generic. (Rec. Doc. 66-2 at 22)(citing J.
Thomas McCarthy, 2 McCarthy on Trademarks, §12:2)(4th ed. 2014)).
Further, Defendants argue, Plaintiff, as challenger, bears the
burden of overcoming such presumption. Id. Defendants note that
Plaintiff
has
submitted
no
affirmative
10
evidence
concerning
public understanding of the term “Voice of America” and that the
deadline for doing so has passed. (Rec. Doc. 66-2 at 23)(citing
J. Thomas McCarthy, 2 McCarthy on Trademarks, §12:12, “Consumer
surveys
have
become
almost
de
rigeur
in
litigation
over
genericness.”) Additionally, as Defendants note, Plaintiff has
failed to make any arguments to the contrary in his Opposition
to Defendants’ Motion for Summary Judgment. (Rec. Doc. 78 at 4).
(4)
Defendants’ Claim for Injunctive Relief
Finally,
elements
for
Defendants
a
showing
contend
of
they
entitlement
have
to
satisfied
injunctive
the
relief;
namely, (1) they have suffered irreparable injury, (2) there is
no adequate remedy at law, (3) that, considering the balance of
hardships between the parties, a remedy at law is warranted, and
(4) that it is in the public’s interest to issue the injunction.
(Rec.Doc. 66-2 at 12)(citing Audi AG v. D’Amato, 469 F.3d 534,
550 (6th Cir. 2006); eBay Inc. v. MercExchange, L.L.C., 547 U.S.
388, 391 (2006)).
In
these
respects,
Defendants
cite
the
Declaration
of
Steven Springer, a Senior Executive Producer with VOA, stating
that the worldwide reputation and goodwill associated with VOA
would be irreparably harmed if a visitor to Plaintiff’s website
confused VOA as the source of that content or affiliated with
that content. (Rec. Doc. 66-2 at 24-25)(citing Rec. Doc. 66-17).
11
Further, U.S. foreign policy objectives would be frustrated if
VOA’s mission to other countries were hindered. Id. Defendants
also
argue
that
injunctive
relief
is
a
common
remedy
in
trademark infringement matters. (Rec. Doc. 66-2 at 25). Finally,
Defendants contend Plaintiff would suffer no hardship in the
event
the
Court
were
to
issue
injunctive
relief
because
Defendants have no objection to Plaintiff’s continued use of his
other
domain
name,
“www.hottalkradio.com”,
so
long
as
the
content of that page is amended to remove references to the
disputed mark. (Rec. Doc. 66-2 at 26).
Plaintiff’s sole response on the issue of injunctive relief
is that Defendants have not shown the risk of irreparable harm
because they have failed to take comparable action against the
“even more similar” domain name, “www.voiceofamerica.com”, which
apparently is owned by another private entity. (Rec. Doc. 75 at
11-12). On this point, Defendants respond that the foregoing URL
does not appear to resolve a functioning site at present. (Rec.
Doc. 78 at 13). Defendants further note that Plaintiff fails to
address
the
fact
that
injunctions
issue
as
a
standard
and
routine remedy in trademark infringement and unfair competition
cases.
(Rec.
Doc.
78
at
13)(citing
J.
Thomas
McCarthy,
4
McCarthy on Trademarks, §30:2)(“Injury is presumed because if
confusion is likely, it is also probable that the senior user’s
12
reputation is placed in the hands of another—the junior user.
The
law
views
the
owner
of
a
trademark
as
damaged
by
an
infringing use ‘which place[s] the owner’s reputation beyond its
control, though no loss in business is shown.’”).
Analysis:
Summary Judgment Standard
Summary judgment is proper if the pleadings, depositions,
interrogatory
affidavits,
answers,
show
that
and
there
admissions,
is
no
together
genuine
issue
with
as
to
any
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.
242, 248 (1986).
Anderson v. Liberty Lobby, Inc., 477 U.S.
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).
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,
13
depositions,
answers
to
interrogatories,
affidavits’
and
which
it
admissions
believes
on
file,
demonstrate
together
the
absence
with
of
a
genuine issue of material fact.” Id. (citing Fed. R. Civ. P.
56). If and when the movant carries this burden, the nonmovant
must
then
go
depositions,
beyond
the
interrogatory
pleadings
responses,
evidence to establish a genuine issue.
and
use
admissions,
affidavits,
or
other
Matsushita Elec. Indus.
Co. V. Zenith Radio Corp., 475 U.S. 574, 586 (1986). “[W]here
the non-movant bears the burden of proof at trial, the movant
may merely point to an absence of evidence, thus shifting to the
non-movant
judgment
the
burden
proof
that
of
demonstrating
there
is
an
by
issue
competent
of
summary
material
fact
warranting trial. . . . Only when ‘there is sufficient evidence
favoring the nonmoving party for a jury to return a verdict for
that party’ is a full trial on the merits warranted.” Lindsey v.
Sears Roebuck and Co., 16 F.3d 616 (5th Cir. 1994) 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).
(1)
Federal Trademark Infringement
There is no dispute that Defendants have registered the
mark “Voice of America” pursuant to applicable federal trademark
laws. As such, Defendants’ registration is “prima facie evidence
14
of
the
validity
of
the
registered
mark
.
.
.
and
of
the
registrant’s right to use the registered mark in commerce or in
connection
with
the
goods
or
services
specified
in
the
registration . . . .” 15 U.S.C. §1115(a). These uses include,
pursuant to the registration statement, “production of radio or
television programs [and] publication of electronic newspapers
accessible via a global computer network. . . .” (Rec. Doc. 66-5
at
2).
covered
Plaintiff
by
the
does
terms
not
of
dispute
this
that
language
his
and
activities
further
does
are
not
contend his use is unauthorized by Defendants.5 Accordingly, the
only
contested
issue
for
purposes
of
the
instant
motion
is
whether Plaintiff’s use creates a “likelihood of confusion in
the minds of potential customers as to the source, affiliation,
or sponsorship” of the product. Westchester Media v. PRL USA
Holdings, Inc., 214 F.3d 658, 663 (5th Cir. 2000). This, in
turn, is determined by reference to the so-called “digits of
confusion,” including: (1) the type of mark allegedly infringed,
(2) the similarity between the two marks, (3) the similarity of
the products or services, (4) the identity of the retail outlets
and purchasers, (5) the identity of the advertising media used,
(6)
the
confusion,
defendant's
as
well
as
intent,
(8)
(7)
the
5
any
degree
evidence
of
care
of
actual
exercised
by
With the exception of any claims of tacit approval relating to his defense
of laches, discussed in detail in the section relating thereto.
15
potential
purchasers.
Bd.
of
Supervisors
for
Louisiana
State
Univ. Ag. and Mech. College v. Smack Apparel Co., 550 F.3d 465,
478 (5th Cir. 2008)(citing Westchester Media, 214 F.3d at 664).
No single factor is dispositive and a “finding of a likelihood
of
confusion
need
not
be
supported
by
a
majority
of
the
factors.” Id. “[L]ikelihood of confusion is synonymous with a
probability of confusion, which is more than a mere possibility
of confusion.” Id. (citing Westchester Media, 214 F.3d at 66364).
The Court takes each digit in turn:
(1)Type of Mark
With respect to this digit, courts look generally to the
“strength of the mark.” Smack Apparel, 550 F.3d at 478-79. This
often involves reference to the length of use by the mark holder
balanced against any possible “extensive” third-party use, which
can weaken a mark, negating the likelihood of confusion. Id. On
this digit, Defendants refer to BBG’s use of “Voice of America”
dating back to the World War II era and, as reflected by a U.S.
Patent and Trademark Office Registration Statement, as early as
1942.
(Rec.
Doc.
66-2
at
14).
Additionally,
Defendants
cite
statements of President Eisenhower in 1957 that “[f]or fifteen
years
now
the
Voice
of
America
has
been
bringing
to
people
everywhere the facts about world events, and about America’s
16
policy in relation to these events.” (Rec. Doc. 66-7 at 1).
Plaintiff
effectively
presents
no
contrary
evidence
and
the
Court concludes Defendants have established a strong mark for
purposes of the first digit. This, in turn, weighs in favor of
Defendants’ position.
(2)The Similarity between the Two Marks
As to this digit, there is no credible argument that “Voice
of
America,”
Defendants’
“www.thevoiceofamerica.com,”
registered
Plaintiff’s
domain
mark,
name,
and
are
not
virtually identical. Accordingly, this digit weighs in favor of
a finding of likelihood of confusion created by Plaintiff’s use.
See,
e.g.,
Brookfield
Commc’ns,
Inc.
v.
West
Coast
Entm’t
Corp., 174 F.3d 1036, 1055 (9th Cir. 1999)(requiring comparison
between allegedly infringing mark and claimant’s trademark and
concluding that “MovieBuff” and “moviebuff.com” were “for all
intents and purposes, identical in terms of sight, sound, and
meaning.”).
(3) Similarity of Products or Services
As to this third digit, “[t]he degree of similarity of the
marks
needed
to
prove
likely
confusion
will
vary
with
the
difference in the goods and services of the parties. Where the
goods
and
services
are
directly
competitive
the
degree
of
similarity [in marks] to prove a likelihood of confusion is less
17
than in the case of dissimilar products.” J. Thomas McCarthy, 4
McCarthy on Trademarks and Unfair Competition, §23:20.50 (4th ed.
2014)(hereafter
“McCarthy”).
Conversely,
“the
greater
the
similarity in the marks, the lesser the similarity required in
the goods or services of the parties to support a finding of
likely confusion.” Id. As noted above, the marks presently at
issue are virtually identical. Accordingly, a relatively lesser
degree of similarity in products or services will suffice in
order
for
this
digit
to
weigh
in
favor
of
a
likelihood
of
confusion between the two.
In
support
Declarations
of
of
their
Steven
position
Springer,
a
here,
Senior
Defendants
Executive
cite
Producer
with VOA, and deposition testimony of Plaintiff himself. (See
Rec. Doc. 66-2 at 15). Springer is quoted as stating: “the Voice
of
America
(VOA)
is
a
dynamic
multimedia
news
organization
funded by the U.S. Government that delivers accurate, balanced,
and
comprehensive
audience
via
news
radio,
and
information
television,
the
to
an
international
internet
and
mobile
devices.” (Rec. Doc. 66-2 at 15)(citing Rec. Doc. 66-17 at 2).
Plaintiff,
in
turn,
“www.thevoiceofamerica.com”
is
as
quoted
a
“’news
as
characterizing
information
portal’
including commentary, political news, and economic news.” (Rec.
18
Doc. 66-2 at 15)(citing Rec. Doc. 66-9 at 23-24).6 Indeed, the
record clearly reflects that Plaintiff’s website is aimed at
providing
news
information
and
commentary
with
a
particular
focus on politics and economics. (See, e.g., Rec. Doc. 75-2 at
23-24).
Plaintiff
again,
effectively
fails
to
dispute
this
contention, preferring instead to place all of his proverbial
eggs in the basket of challenging the relevance of the survey
commissioned by Defendants on the issue of “actual confusion”
(discussed
fully
below).
In
light
of
the
high
degree
of
similarity between the marks at issue, the relative similarity
between
their
product
and
service
offerings
(they
are
both
effectively news dissemination organizations focused on issues
concerning America and the American public), and the lack of
competing evidence submitted by Plaintiff, the Court concludes
this
digit
weighs
in
favor
of
a
finding
of
likelihood
of
confusion.
(4) Identity of the Retail Outlets and Purchasers
To
the
traditional
extent
retail
this
context,
digit
the
bears
Court
relevance
construes
beyond
it
to
the
refer
effectively to distribution outlets and target audiences in the
particular context here of information dissemination. Defendants
note that both parties distribute news-oriented website content
6
Although summarized to omit various interruptions and the general laconic
nature of Plaintiff’s responses, Defendants’ characterization of Plaintiff’s
deposition testimony is accurate.
19
via the internet. (Rec. Doc. 66-2 at 15). However, Defendants
contend that because Plaintiff admitted in deposition to having
no information or data concerning the actual visitors to and
viewers
of
“www.thevoiceofamerica.com”,
this
factor
is
indeterminate beyond the similarity in distribution platforms.
(Rec. Doc. 66-2 at 15). The Court is not compelled to take so
charitable a view. Framed at the highest level of generality,
both parties target consumers of news media via the internet. As
such,
there
is
at
least
a
nominal
degree
of
similarity
in
consumers. Keeping in mind that no single factor is dispositive
(and
that
this
digit
far
from
tips
the
balance),
the
Court
concludes this digit weighs at least nominally in favor of a
finding of likelihood of confusion.7
(5) The Identity of the Advertising Media Used
Neither
party
addresses
this
digit
in
pleadings
and,
indeed, the record contains no evidence as to the various media
used to promote either party’s content, if any. Accordingly,
this digit is indeterminate.
(6) The Accused Infringer’s Intent
“Proof of an intent to confuse the public is not necessary
to
a
finding
of
a
likelihood
7
of
confusion.”
Elvis
Presley
A different conclusion might obtain if, for instance, Plaintiff distributed
content via traditional print media while Defendants focused exclusively on
digital media, or vice versa. However, here, there is at least some potential
for confusion given the similarity of distribution channels.
20
Enters.,
Inc.
v.
Capece,
141
F.3d
188,
203
(5th
Cir.
1998)(citing Fuji Photo Film Co. v. Shinohara Shoji Kabushiki
Kaisha,
754
F.2d
591,
597
(5th
Cir.
1985)).
“Trademark
infringement is a no-fault business tort. . . . The good faith
junior user who negligently, ignorantly or innocently stumbles
into
supra
confusing
at
the
public
§23:107.
infringer’s]
is
still
Nevertheless,
intent
to
confuse
an
infringer.”
“[e]vidence
is
relevant
of
to
McCarthy,
[an
the
alleged
issue
of
likelihood of confusion and to the terms of an injunction and
damages.” McCarthy, supra at §23:108 (emphasis added).
With
respect
to
this
digit,
Defendants
cite
deposition
statements by Plaintiff reflecting his awareness of BBG’s VOA
broadcast during the same period he was working on his initial
radio program. See Rec. Doc. 66-2 at 15-16 (citing Rec. Doc. 669 at 25-27). The referenced testimony, however, is inconclusive
as reflected by the relevant passage:
Q. And during your days working for the
radio program, you never heard of the Voice
of America in connection with the government
radio program?
A. That’s not correct.
Q. So you had heard about it?
[Attorney objections omitted]
Q. I’ll just rephrase. I’ll repeat the
question.
Q. I mean Voice of America broadcast of the
Federal Government.
A. When?
Q. At the time – yeah. During your days
working on your radio program, had you ever
21
heard of the term Voice of America in
connection with a broadcast of the Federal
Government?
A. I heard that there was. Never heard it,
but I’ve heard of a government overseas –
that the government broadcasted overseas on
the, I guess – whatever you call it. Name
Voice of America?
(Rec.
Doc.
66-9
at
25-6).
Plaintiff’s
testimony
reflects
familiarity with a government broadcast overseas which may or
may not extend as far as knowledge of the specific name of that
broadcast.
context,
Although
in
it
may
true
courts
particular,
be
that
have
“[i]n
the
appropriately
Internet
recognized
that the intentional registration of a domain name knowing that
the second-level domain is another company’s valuable trademark
weighs
in
favor
questionable
of
likelihood
evidence
here
to
of
confusion,”
suggest
such
there
is
knowledge
on
Plaintiff’s behalf in registering his domain, due in part to
equivocal
positioning
by
Plaintiff.
Brookfield
Commc’ns,
174
F.3d 1036.
Defendants
proceed,
however,
to
refer
to
specific
logos
used on Plaintiff’s website; in particular, a seal or crest-type
logo
depicting
a
stylized
eagle
emblazoned
with
stars
and
colored in red, white, and blue, as well as a banner composed of
an
American
flag
“THEVOICEOFAMERICA.COM”
background
superimposed
22
with
in
white
the
type
words
and
also
incorporating the aforementioned crest. (See Rec. Doc. 66-2 at
16).
These
items
do
reflect
an
undeniable
“governmental”
aesthetic. Although this, in itself, is not conclusive of an
intent to confuse or deceive, it bears noting that no form of
disclaimer appears on Plaintiff’s website clarifying the absence
of governmental affiliation or endorsement. Nevertheless, many
sources recognize that use of a disclaimer is often ineffective
to dispel likely confusion. See, e.g., McCarthy at §23:51 (and
sources cited therein). By contrast, some courts have viewed
inclusion
of
a
disclaimer
as
evidence
of
lack
of
intent
to
confuse. See CCA and B, LLC v. F? W Media Inc., 819 F. Supp. 2d
1310, 1328 (N.D. Ga. 2011).
In
light
Plaintiff’s
of
the
knowledge
at
less
the
than
conclusive
relevant
time
as
evidence
well
as
of
the
generally dispensable nature of an alleged infringer’s intent
for purposes of trademark infringement under the Lanham Act, the
Court concludes that this digit is indeterminate.
(7)
Any Evidence of Actual Confusion
“The best evidence of likelihood of confusion is provided
by evidence of actual confusion.” Exxon Corp. v. Texas Motor
Exch. Of Houston, Inc., 628 F.2d 500, 506 (5th Cir. 1980)(citing
Roto-Rooter
Corp.
v.
O’Neal,
513
F.2d
44
(5th
Cir.
1975));
McCarthy, supra at §13:13 (“Convincing evidence of significant
23
actual confusion occurring under actual marketplace conditions
is the evidence of a likelihood of confusion. Any evidence of
actual confusion is strong proof of the fact of a likelihood of
confusion.”)
“Parties
often
introduce
survey
evidence
in
an
effort to demonstrate that there is a likelihood of confusion.”
Exxon
Corp.,
628
F.2d
at
506.
“In
borderline
cases
where
evidence of confusion is not available or is not persuasive, the
gap can sometimes be filled by a properly conducted survey of
the relevant class of prospective customers of the goods or
services
at
issue.”
McCarthy,
supra
at
§23:17.
Nevertheless,
“[m]ost surveys do not measure actual confusion.” Id. at n.3.
(citing
Perlman,
The
Restatement
of
the
Law
of
Unfair
Competition: A Work in Progress,” 80 Trademark Rep. 461, 472
(1990)). “[A] survey can produce ‘evidence’ (e.g. a likelihood
of confusion), but it cannot and should not be seen as ‘proof’
(e.g. level of actual confusion).” McCarthy, supra at §23:17,
n.3
(citing
M.
Rappeport,
Design
Issues
for
Controls,
in
Trademark and Deceptive Advertising Surveys, p. 217 (ABA Eds
Diamond & Swann 2012)).
For purposes of the present motion, Defendants attach as an
exhibit the expert report of a survey8 conducted by Dr. Bruce
Isaacson, the mechanics of which are summarized as follows:
8
Attached at Rec. Doc. 66-15.
24
[T]he survey and analysis presented in the
Expert Report of Dr. Bruce Isaacson was
based on 640 initial interviews, which
resulted in a final set of 599 respondents
for the survey. See DA258 (Isaacson Report,
¶45), SOF, ¶24.
Survey respondents were segregated into four
cells and shown either a test image of
thevoiceofamerica.com or a control image
used to remove background noise. See DA 252255 (Isaacson Report, ¶¶25-31, 34), SOF,
¶25. No survey respondents mentioned Robert
Namer
in
response
to
survey
questions
inquiring as to the source or affiliation
for the test images. See SOF, ¶¶26-27.
The net level of all measured confusion was
19.1%. See DA264-266 (Isaacson Report ¶¶ 6571, Tables D-F), SOF, ¶28. Dr. Isaacson
concluded that “that there is a significant
likelihood of confusion between the website
operated at www.thevoiceofamerica.com and
the Voice of America.” See DA266 (Isaacson
Report ¶ 71), SOF, ¶29.
(Rec. Doc. 66-2 at 17-18).9
Defendants rely on Dr. Isaacon’s determination of a “net
level of confusion of 19.1%” to indicate that “effectively one
of every five visitors to Namer’s website would be confused as
9
From a layperson’s perspective, the survey effectively consisted of showing
static images captured of Plaintiff’s website to one group of consumers while
showing a modified version of the web pages (which changed certain aspects
to, e.g., replace “Voice of America” with “Talk of America”) to a control
group. (See Summary and Results of Survey at Rec. Doc. 66-15). Participants
were first asked to identify the perceived source of the content on the web
pages. Next, participants were asked whether they believed the website shown
to be affiliated with, sponsored or endorsed by any other entities. In the
event of an affirmative answer, participants were asked to specifically
identify whom they believed to be the source of the site content or whom they
believed to be associated with the site (they did not select from a list of
options, instead they manually entered a response). Dr. Isaacson then appears
to have parsed the various responses, counting those identifying some
iteration of “the government” or “Voice of America” as the affiliated entity.
25
to the source or affiliation with Defendants.” (Rec. Doc. 66-2
at 18). Additionally, Defendants cite a string of cases in which
courts
found
a
likelihood
of
confusion
relying
on
similarly
derived “confusion levels” in ranges as low as approximately
10%. (Rec. Doc. 66-2 at 18)(citing for the quoted propositions,
Humble Oil v. American Oil Co., 405 F.2d 803, 817 (8th Cir.
1969) (“The percentage figure varies from 11% to as high as 49%.
The lower figure itself is not an insignificant percentage.”);
Starbucks Corp. v. Samantha Lundberg, Civ. No. 02-948, 2005 WL
3183858 at *9 (D. Or. November 29, 2005) (“The percentage of
consumers likely to be confused can be in the range of 10 to 15
percent or even lower.”); Miles Labs. Inc. v. Naturally Vitamin
Supplements.
Inc.,
1
U.S.P.Q.2d
1445,
1457
(T.T.A.B.
1987)
(“surveys disclosing likelihood of confusion ranging from 11% to
25% have been found significant.”); James Burrough Ltd. v. Sign
of the Beefeater, Inc., 540 F.2d 266, 279 (7th Cir. 1976) (“We
cannot
agree
that
15%
is
‘small.’”);
Jockey
Int'l,
Inc.
v.
Burkard, 185 U.S.P.Q. 201, 203 (S.D. Cal. 1975) (11.4%): James
Burrough Ltd. v. Lesher, 309 F. Supp. 1154, 1160 n.6 (S.D. lnd.
1969) (11%); Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397,
400 (8th Cir. 1987) (survey evidence showing 10% likelihood of
confusion sufficient)). (Rec. Doc. 66-2 at 12). With a level of
confusion
of
19.1%,
the
instant
26
case
is
well
within
the
appropriate
range
for
determining
Plaintiff’s
use
presents
a
“likelihood of confusion” to the relevant consumer base.
Plaintiff presents no contrary evidence to the results of
Dr.
Isaacson’s
challenging
resulting
survey.
Instead,
the
relevance
of
data.
According
Dr.
to
Plaintiff
Isaacson’s
Plaintiff,
responds
by
methodology
and
under
the
familiar
principles of Daubert v. Merrell Dow Pharmaceuticals, 509 U.S.
579, 589, 125 L.Ed. 2d 469 (1993), Federal Rule of Evidence 702
requires district courts to perform a “gatekeeping” function to
ensure that admitted scientific evidence is both relevant and
reliable. (Rec. Doc. 75 at 7). While conceding Dr. Isaacson’s
educational and experience-based qualifications as an expert in
this field, Plaintiff challenges that Dr. Isaacson’s opinion was
targeted toward the question at issue in this case. (Rec. Doc.
75 at 8). Plaintiff contends, “[t]he appropriate inquiry, which
is used in numerous appellate circuits in addition to the Fifth
Circuit,
is
whether
a
reasonably
prudent
consumer
in
the
marketplace would be likely to be confused as to the origin or
source of the goods or services bearing one of the marks or
names at issue in the case. For Dr. Isaacson’s opinion to be of
any
use,
8)(citing
it
must
address
Brookfield
that
Commc’ns,
question.”
174
F.3d
at
(Rec.
Doc.
1060).
75
at
Plaintiff
cites deposition testimony of Dr. Isaacson as conclusive of the
27
issue that the survey did not screen for “reasonably prudent
consumers” and that it is therefore inapposite for the purposes
relied upon. (See Rec. Doc. 75 at 8-12). Before turning to the
merits of the parties’ arguments on this issue, the Court looks
to relevant precedent governing the reliability and relevance of
survey evidence in trademark infringement cases under the Lanham
Act.
In Exxon Corp v. Texas Motor Exch. Of Houston, Inc., 628
F.2d 500, 506 (5th Cir. 1980), the Fifth Circuit considered the
standard for evaluating the type of “likelihood of confusion”
survey evidence presented here. The court stated:
Prior to examining the findings of the
survey, it is important to determine exactly
what weight is to be given to the evidence.
There are two important factors which affect
the weight to be granted to these surveys:
the format of the questions and the manner
of conducting the survey. Holiday Inns, Inc.
v. Holiday Out in America, 481 F.2d 445, 447
(5th Cir. 1973).
. . .
The first factor to be considered in
evaluating the validity of a survey is the
format of the questioning. Surveys that
involve
nothing
more
than
showing
an
individual a trademark and asking if it
brings anything else to mind are given
little weight in this Circuit. Id.; Amstar
Corp. v. Domino’s Pizza, Inc. Id. at 448.
These surveys are seen as little more than
word-association tests.
. . .
28
The second factor to evaluate[] in assessing
the validity of a survey is the adequacy of
the universe. ‘The appropriate universe
should include a fair sampling of those
purchasers most likely to partake of the
alleged infringer[’]s goods or services.’
Amstar Corp. v. Domino’s Pizza, 615 F.2d at
264.
628 F.2d 506-7; see also, Amstar Corp. v. Domino’s Pizza, Inc.,
615 F.2d at 264 (5th Cir. 1980).
With the foregoing in mind, the Court turns to a closer
inspection of Plaintiff’s position and Dr. Isaacson’s testimony
on the issue of the disputed survey’s relevance. Plaintiff’s
primary
challenge,
as
reflected
by
the
following
excerpt,
appears to be to the sufficiency of the universe screened for
participation
in
the
survey,
so
the
Court
takes
this
issue
first:
Unfortunately for Defendants, Dr. Isaacson testified
during his deposition that his analysis was not
intended to test whether the reasonably prudent
consumer would be likely to be confused. Consider the
following exchange, during which Dr. Isaacson was
being asked about the survey that he used in preparing
his report:
Was one of the purposes of these questions
to
identify
whether
or
not
a
given
participant
was
a
reasonably
prudent
consumer?
[Attorney objection omitted].
THE WITNESS: I don't know what you mean by
reasonably prudent. And I guess I also don't
know what you mean by consumer.
29
The following passage is likewise instructive:
When you first got this assignment and you
began to work on this project for BBG, did
you, say, take out a legal source -McCarthy, for example -- and consult the
legal criteria that this report would be
trying to satisfy?
A. I don't recall whether I've done so in
this case, but I know that I've consulted
McCarthy
on
Trademarks,
to
take
that
particular
source,
many,
many
times,
hundreds
of
times
for
likelihood
of
confusion cases. I don't recall whether I
specifically consulted it in this matter.
But what I did in this matter certainly
would have been informed in part by my
consultation of that source over the years
that I've been doing this kind of work.
Q Okay. So these consultations -- and I'm
not limiting this just to McCarthy, but you
refer to past precedent. In your experience
with reviewing the past precedent, do you
have an understanding of what a reasonably
prudent consumer would be?
[Attorney objection omitted]
A Do I have an understanding of what
reasonably prudent consumer would be?
a
Q Yes.
A I recall seeing the phrase, but you're
asking me about three very specific terms
and a very specific phrase, and I'd want to
recheck the source materials if I was going
to define that phrase for you.
Q Sure.
30
A I do have an understanding of how to
qualify people for likelihood of confusion
surveys.
Q But am I correct in understanding your
testimony, that when you say you have an
understanding of how to qualify people for
likelihood of confusion surveys, that your
understanding does not encompass qualifying
them based on whether or not they are
reasonably prudent consumers?
A I'm saying that in this case, I did not
qualify anybody as a consumer of anything. I
qualified people as visiting a Website and
visiting specific kinds of Websites, but I
did not qualify people on purchase. I did
not qualify people on prospective purchase.
And so the phrase "consumer" does not apply
to the kinds of respondents that were in my
survey; thus the phrase "reasonably prudent
consumer" cannot
apply because consumer
doesn't apply.
Q So then you're not talking about the
likelihood
that
a
reasonably
prudent
consumer would be confused between the
Website
thevoiceofamerica.com
and
the
governmental entity Voice of America owned
by BBG.
[Attorney objection omitted].
THE WITNESS: I think you and I have talked
about the word "consumer" throughout the
morning
or
afternoon,
but
I
haven't
qualified consumers as participants in my
survey because the kinds of people who would
come
to
thevoiceofamerica.com
are
not
necessarily consumers.
They're visitors to a Website. They may
leave that Website. They may never buy
anything on that Website or on any sponsor
to that Website. So we're not dealing with a
context where we're talking about goods that
31
are sitting on a supermarket shelf. We're
dealing with a context where we're talking
about consumers of a particular -- we're
talking about visitors to a particular
Website, not consumers of a particular brand
of shampoo, for example.
Q Okay. So then as just a yes-or-no question
-I
do
understand
that
we've
been
discussing this, but I'm trying to make sure
that I'm clear and that we're on the same
page in understanding the terms. Your survey
is not designed to test the likelihood that
a reasonably prudent consumer would be
confused
between
the
Website
thevoiceofamerica.com and the governmental
entity Voice of America, is it?
[Attorney objection omitted].
THE WITNESS: If you're only looking for a
yes-or-no answer to that question, I can't
give you a yes-or-no answer.
Q So you can't testify that you created a
survey designed to test the likelihood of
confusion on the part of a reasonably
prudent consumer.
[Attorney objection omitted].
THE WITNESS: I'm happy to give the same
answer I gave you a few minutes ago. But my
survey did not interview consumers, nor
would consumers be the relevant audience for
a survey in this matter, nor are consumers
the subject of this matter.
(Rec. Doc. 75 at 8-10). From this exchange, Plaintiff concludes
“[a]gain and again, Dr. Isaacson was asked if his report was
aimed at determining whether a reasonably prudent consumer would
be confused, and he not only rejected the idea that he should be
32
testing
for
reasonability,
he
rejected
the
applicability
of
consumers themselves to the case at bar.” (Rec. Doc. 75 at 11).
The
Court
considers
this
latter
proposition
specious.
Dr.
Isaacson clearly resisted the notion of “consumer” as that term
is understood in a traditional retail context (i.e., a purchaser
of goods), but confirmed that he screened for potential visitors
to
Plaintiff’s
website.
Dr.
Isaacons’s
further
revealed as much and more:
THE WITNESS: Yeah, I don't want to comment
on exactly what's meant by the phrase
"reasonably prudent." And as I've mentioned
before, I view these people, particularly in
this survey, as respondents who are not
necessarily consumers because we haven't
qualified on purchase -- I haven't qualified
people as actually buying anything or even
potentially buying anything.
But there are two comments that I would make
based on that phrase. One comment is that
when I qualify people for surveys, generally
I qualify people who are – who include
people from -- with a variety of knowledge
about a particular subject.
Some people are more knowledgeable, and some
people are less knowledgeable, so that every
respondent in the survey is someone who's
been qualified to participate but may or may
-- may be more knowledge or may be less
knowledgeable; the same way that if you went
to a supermarket or a department store, you
would see some consumers who are very
knowledgeable about the products that they
might be shopping for and others who are
less knowledgeable.
33
testimony
The second issue that becomes relevant in
qualifying respondents for a survey like
this is we need -- I need to qualify to make
sure that I have, as I've mentioned before,
a base of respondents who are relevant to
the particular matter and, in particular,
relevant to the party in the matter whose
customers or potential customers or Website
visitors I'm wishing to survey.
. . .
In this context I was looking to survey
consumers or respondents who were relevant
to thevoiceofamerica.com, and I was looking
to survey people who were engaged in the
kinds of activities that would be likely to
make them visitors to the Website located at
thevoiceofamerica.com.
And those are the questions that I asked.
And the ways in which -- if I understand
your question correctly, the ways in which
they become relevant reasonably prudent is
that some of these people are going to be
experts
or
more
knowledgeable
on
the
subjects relating to the survey and some of
them going to be less knowledgeable on
subjects relating to the survey.
(Rec. Doc. 78-3 at 27-8, 30). Plaintiff’s rigid adherence to the
term “reasonably prudent consumer” is an exercise in pedantry
that
does
nothing
to
discredit
Dr.
Isaacson’s
method
of
selecting the universe for the survey.10 Further, Dr. Isaacson’s
10
There is a further misunderstanding as to the relevant universe reflected
in the colloquy between Plaintiff’s counsel and Dr. Isaacson concerning
whether the relevant users are potential visitors to Plaintiff’s site or the
potential audience for Defendants’ offerings. This claim is not raised by
Plaintiff but is addressed by Defendants. It does not merit detailed
discussion here, save to note that the proper audience is the one selected
(i.e., for Plaintiff’s website). See (Rec. Doc. 78 at 10-11); McCarthy, supra
at §23:10 (“The traditional pattern of classic ‘forward confusion’ occurs
when customers mistakenly think that the junior user’s goods or services are
34
resistance to defining the term “reasonably prudent consumer” in
the context of his deposition is justified both in that term’s
status as a legal term of art (beyond the area of his expertise)
as well as the considerably unsettled nature of its meaning
among the federal circuits themselves. The leading treatise on
this area of law states:
The courts have come up with many various
definitions of how the reasonably prudent
buyer makes his or her selections in the
marketplace. Some of these definitions are
wildly at variance with each other. While
some courts say the average buyer is
“reasonably discerning,” other courts say
the buyer is “hasty, heedless and easily
deceived.”
McCarthy, supra at §23:92. The term has been recognized to bear
significant
similarities
to
the
concept
of
the
“reasonable
person,” ubiquitous in American tort law, and is highly context
specific. See McCarthy, supra at §23:95 (citing, inter alia,
Restatement Third, Unfair Competition, §20). As such, it defies
precise definition. What matters in the context of a trademark
infringement
sampling
of
action
those
is
that
purchasers
the
universe
most
likely
“include
to
partake
a
of
fair
the
alleged infringer’s goods or services.” Exxon Corp, 628 F.2d at
500.
from the same source as or are connected with the senior user’s goods or
services. “)
35
Dr. Isaacson’s testimony above clearly reflects that the
screening
procedures
employed
for
selecting
the
universe
of
survey participants was aimed at selecting those visitors who
would
be
likely
to
visit
“www.thevoiceofamerica.com.”
the
website
Additionally,
a
located
at
cross-section
of
visitors reflecting a spectrum of knowledge or familiarity with
the subject matter at issue was selected. As such, the Court is
unable to conclude that the universe was improperly selected for
purposes of Dr. Isaacson’s survey.11
The
final
issue
remaining
as
to
the
survey
evidence,
therefore, is the validity of the format of the questioning.
Exxon, 628 F. 2d 506-7. Neither party addresses this issue in
any
particular
methodology
detail,
underlying
besides
the
survey
Defendants’
set
forth
summary
above.
of
the
Relevant
excerpts from Dr. Isaacson’s expert report are set forth below:
My confusion survey used an Eveready format,
a well-accepted format in which respondents
are exposed to a junior mark to see whether
it is confused with a well-known senior
mark. The survey tested two images showing
the website at thevoiceofamerica.com. One
image was dated December 22, 2011, and
showed news and commentary from that date;
11
The survey information reflects the following demographic and behavioral
information concerning participants: (Gender) 49.1% Male, 50.9% Female; (Age)
18-34 years 32.1%; 35-54 years 35.6%; 55 years and over 32.4%; (Media
Consumption in Past Month) Visited a website 100%, Watched television 96.3%;
Read a magazine 84.9%, Listened to the radio 92.6%; (Visited a Website for
Specific Purposes in Past Month) To read news or news commentary 100%; To
shop for products or services 91.3%; To conduct banking or pay bills 86%; To
play games or solve puzzles 62.2%, etc. (Rec. Doc. 66-15 at 286-289).
36
the second image was dated March 12, 2014,
and showed more recent news and commentary.
During the survey, respondents were shown
one of the two test images, or one of two
control images. The control images were
identical to the test images, except that
they were altered to replace any mention of
“Voice of America” with “Talk of America.”
For
example,
“thevoiceofamerica.com”
was
replaced with “the talkofamerica.com,” and
“Voice of America” was replaced with “Talk
of America.” The two control images had the
same dates as the test images, and showed
the same news and commentary as the matching
test image.
. . .
The survey
confusion:
provides
three
measures
for
i.
Confusion as to Source: The survey asked
respondents what company, organization, or
person operates the website they were shown.
ii.
Confusion as to Affiliation or Connection:
The survey asked respondents whether they
think that whoever operates the website in
the picture is affiliated or connected with
another company, organization, or person.
Those answering yes were asked what other
company,
organization,
or
person
is
affiliated
or
connected
with
whoever
operates the website.
iii. All
Measured
Confusion:
All
measured
confusion sums confusion as to source plus
unduplicated confusion as to affiliation or
connection. This calculation excludes double
counting by counting each respondent only
once, even if they mentioned a company,
organization, or person in response to more
than one question. [Via Footnote: “For
example,
a
respondent
who
provided
a
response in one question indicating they
were confused as to source, and answered
37
later a question indicating that they were
confused as to affiliation or connection,
would be counted only once for all measured
confusion.”]
(Rec. Doc. 66-15 at 2-3). In light of the foregoing, the survey
questions
were
clearly
targeted
at
the
relevant
issue
for
purposes of this matter; namely, whether visitors to Plaintiff’s
site would be confused as to the possibility of Defendants as
the source of or affiliated with the content posted there. The
format of the questions was not simple “word association” as
rejected, for example in Holiday Inns, Inc. v. Holiday Out in
America, 481 F.2d 445 (5th Cir. 1973). In that case, the Fifth
Circuit
affirmed
a
district
court’s
conclusion
that
showing
participants a placard bearing the words “Holiday Out” and then
simply questioning as to their “state of mind” degenerated into
“a mere word-association test entitled to little weight because
the
format
failed
to
account
for
the
number
of
responses
attributable to use of the word ‘Holiday’ as distinguished from
the service mark Holiday Out.” Id. at 447-48. Here, by contrast,
the
survey
conclusions
was
carefully
both
as
to
the
designed
specific
to
gather
source
of
participants’
the
content
reflected in the images shown as well as the identity of any
affiliates or sponsors of such content. As such, the survey went
beyond mere word association and instead focused participants on
38
the specific and relevant issue of their impression as to the
sources of and behind the content shown. Accordingly, the Court
concludes the format of the questions was valid and relevant. In
light
of
Dr.
Isaacson’s
finding
of
an
adjusted
19.1%
net
confusion rate, Defendants have successfully shown at least some
degree of actual confusion with respect to Plaintiff’s use of
the disputed mark. As noted above, although this is not required
for a finding of “likelihood” of confusion (the relevant Lanham
Act
inquiry),
it
is
certainly
relevant
and
persuasive.
“The
existence of some evidence of instances of actual confusion does
not
necessarily
prevent
dismissal
for
lack
confusion.
A
court
the
of
a
may
grant
triable
find
of
a
issue
evidence
summary
of
of
of
likelihood
a
judgment
of
actual
confusion
insufficient to present a triable issue of fact where evidence
in
rebuttal
isolated
this
instances
case,
evidence
provides
of
of
Plaintiff
his
own
a
reasonable
confusion.”
has
to
come
explanation
McCarthy,
forward
dispute
the
discounting
supra
with
no
evidence
§23:13.
In
affirmative
presented
by
Defendants and the deadlines for doing so have long passed.
Accordingly, the Court concludes the “actual confusion” digit
weighs in favor of Defendants.
39
(8)
Degree of Care Exercised by Potential Purchasers
Plaintiff
asserts
no
arguments
as
to
this
digit
and
Defendants contend it is indeterminate in light of the fact that
Plaintiff admits to having no information or data of any kind as
to the actual viewers of his website. The Court therefore finds
this digit indeterminate.
In light of the foregoing, specifically that the digits of
(1) type of mark, (2) similarity of marks, (3) similarity of
products
or
services,
(4)
identity
purchasers
(consumers),
and
(7)
weigh
favor
in
of
of
evidence
Defendants,
the
retail
of
Court
outlets
actual
and
confusion
determines
that
Plaintiff’s use of the mark “Voice of America” in his published
content and domain name produces a “likelihood of confusion” for
purposes
of
Trademark
Infringement
under
the
Lanham
Act,
15
U.S.C. §§1051, et seq. The Court also notes particularly that
the high degree of similarity between the marks and the relative
overlap in potential audience, make the result here especially
clear.
See,
e.g.,
McCarthy,
supra,
§23:20
(“Cases
where
a
defendant uses an identical mark on competitive goods hardly
ever find their way into the appellate reports. Such cases are
‘open and shut’ and do not involve protracted litigation to
determine liability for trademark infringement.”) Given that the
opportunity
for
Plaintiff
to
seek
40
to
introduce
contradictory
evidence is foreclosed at this juncture, the Court concludes
there remains no genuine issue of material fact as to this issue
and therefore that Defendants are entitled to summary judgment
on the issue of trademark infringement.12 Accordingly,
IT IS ORDERED THAT Defendants’ motion for summary judgment
is GRANTED on the issue of Plaintiff’s trademark infringement.
(2) Plaintiff’s Laches Defense
Having
found
for
Defendants
on
the
issue
of
trademark
infringement the Court turns, briefly, to Plaintiff’s asserted
defenses. A prima facie defense of laches requires the alleged
infringer to show (1) delay in the senior user’s asserting its
trademark rights, (2) lack of excuse for the delay, and (3)
undue prejudice to the alleged infringer caused by the delay. As
an
affirmative
defense,
Plaintiff
bears
the
burden
of
establishing each of these elements by a preponderance of the
evidence. In the context of a summary judgment motion, “where
the non-movant bears the burden of proof at trial, the movant
may merely point to an absence of evidence, thus shifting to the
non-movant
the
burden
of
demonstrating
12
by
competent
summary
Where there is substantial similarity between the competing marks and an
absence of evidence to support a genuine fact dispute, trademark infringement
actions are properly resolved on summary judgment.
See, Beef/Eater
Restaurants, Inc. v. James Burrough Ltd., 398 F.2d 637, 639 (5th Cir.
1968)(affirming grant of summary judgment by district court in favor of
finding of likelihood of confusion where marks were very similar,
notwithstanding the fact that parties were not in direct competition and
goods and services were not identical.)
41
judgment
proof
that
there
is
an
issue
of
material
fact
warranting trial. . . . Only when ‘there is sufficient evidence
favoring the nonmoving party for a jury to return a verdict for
that party’ is a full trial on the merits warranted.” Lindsey v.
Sears
Roebuck
and
Co.,
16
F.3d
616
(5th
Cir.
1994)(citing
Celotex Corp v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548,
2558, 91 L.Ed.2d 265 (1986); Moody v. Jefferson Parish Sch. Bd.,
2 F.3d 604, 606 (5th Cir. 1993); Duplantis v. Shell Offshore,
Inc., 948 F.2d 197. 190 (5th Cir. 1991); Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 2511, 91 L.Ed.2d
202 (1986)).
With
whether
respect
the
to
the
relevant
first
period
for
element,
delay
the
parties
begins
in
dispute
2000,
when
Plaintiff received Defendants’ first letter pertaining to his
radio
activities;
some
intermediate
period
(potentially
beginning in 2004 when content was first posted to Plaintiff’s
site); or 2011, the date of BBG’s letter specifically addressing
web activities. (See Rec. Docs. 75 at 6; 78 at 5). Because the
Court
resolves
discussion
of
Notwithstanding
this
issue
these
any
on
various
arguments
other
grounds,
positions
concerning
is
the
a
detailed
unwarranted.
doctrine
of
progressive encroachment,13 there is no dispute as to the fact
13
Which “may provide an excuse for an otherwise reasonable delay” when a
junior user expands the use of the contested mark so as to bring it more
42
that
Plaintiff
received
Defendants’
letter
of
2000.
(See
Declaration of Plaintiff, Rec Doc. 75-7 at ¶ 9)(“On February 7,
2000, the BBG sent me a letter asserting that they had the legal
right to use the name, “Voice of America”, and demanded that I
cease
using
the
name.”).
This
letter
specifically
directed
Plaintiff to cease “using this name and initials in connection
with [his] programming.” (Rec. Doc. 1-5). “The Fifth Circuit has
long recognized that actions taken after the receipt of a cease
and
desist
letter
have
an
important
impact
on
a
court
of
equity’s decision in a trademark infringement case.” Abraham v.
Alpha Chi Omega, 796 F. Supp. 2d 837, 853 (N.D. Tex 2011)(citing
Conan Props. v. Conans Pizza, Inc., 752 F.2d 145, 152-53 (5th
Cir. 1985). “Any acts after receiving a cease and desist letter
are at the defendant’s own risk because it is on notice of the
[claimant’s] objection to such acts.” Elvis Presley Enters. v.
Capece, 141 F.3d 188, 205 (5th Cir. 1998)(cited in
Abraham,
supra at 854). Under the present facts, even affording Plaintiff
the benefit of the doubt in terms of gauging the delay period
from
the
earliest
of
the
various
dates
(2000),
there
is
no
question that Plaintiff was on notice of Defendants’ objections
to
his
use
of
the
service
mark
in
connection
with
his
squarely into competition with the senior user. See Abraham v. Alpha Chi
Omega, 796 F. Supp. 2d 837, 853 (N.D. Tex 2011).
43
programming. As such, he continued to use the contested mark at
his own risk.
Despite any issues relating to the excuse of any delay, to
the extent any such might exist, Plaintiff’s defense fails on
the third-prong entirely. Plaintiff has provided no evidence to
suggest undue prejudice in the event Defendants are allowed to
assert the validity of their mark against him and to obtain
injunctive relief. (Rec. Doc. 78 at 7). Plaintiff has provided
no
information
benefit
as
associated
to
any
with
business
his
or
challenged
economic
activity
activities
and
or
the
deadlines for doing so have passed. In fact, Plaintiff has shown
himself to be intransigent with respect to particular matters of
discovery and has done so to his own detriment. Additionally,
Plaintiff
may
not
rely
on
mere
prejudicial
or
detrimental
reliance in light of the undisputed cease-and-desist letter he
received.
In
Plaintiff
light
has
of
the
failed
foregoing,
to
carry
the
his
Court
burden
concludes
for
that
purposes
of
opposing summary judgment on the issue of the defense of laches.
Accordingly, IT IS ORDERED that Defendants’ motion for summary
judgment on this issue is GRANTED and this claim is DISMISSED.
(3)
Plaintiff’s Defense of Invalidity for Genericness
44
Federal trademark law distinguishes between a variety of
classes of terms for purposes of protection under the Lanham
Act. Relevant for present purposes, as a general proposition, a
“generic term is not capable of distinguishing the source of one
product from another, [and] cannot be registered as a trademark
or
service
mark
.
.
.
.”
McCarthy,
supra
at
§12:1.
“[A]
registered mark may be canceled at any time on the grounds that
it has become generic.” Park ‘N Fly, Inc. v. Dollar Park and
Fly, Inc., 469 U.S. 189, 105 S.Ct. 658, 83 L.Ed.2d 582 (5th Cir.
1985). “If [claimant] has a federal registration, it constitutes
a strong presumption that the term is not generic and defendant
bears the burden of overcoming the presumption.” McCarthy, supra
at §12:12.”
As
to
this
issue,
Defendants
assert
that
Plaintiff
has
submitted no evidence in support of his defense. (Rec. Doc. 66-2
at 23). Additionally, Defendants cite the McCarthy treatise for
the proposition that
Consumer surveys have become almost de
rigueur in litigation over genericness.
Judges are now used to survey evidence and
often
expect
to
receive
evidentiary
assistance by surveys in resolving generic
disputes. A litigant who alleges that a
designation is not a valid trademark because
it is perceived as a generic name of a
product or service and does not introduce a
survey to support this challenge may be
viewed as less than serious by some judges.
45
McCarthy,
supra
at §12:14. However, it should be noted that
“there is no need for a survey if other evidence overwhelmingly
proves that the disputed designation is a generic name.” Id.
As
noted
above,
because
Defendants
hold
a
validly
registered mark, Plaintiff bears the burden of proof on the
defense
of
invalidity
summary
judgment
for
motion,
genericness.
when
the
In
the
nonmoving
context
party
of
bears
a
the
burden of proof at trial, it must “go beyond the pleadings” and
by
affidavits,
or
record
evidence,
designate
“specific
facts
showing there is a genuine issue for trial.” Celotex Corp. v.
Catrett,
477
U.S.
317,
324,
106
S.Ct.
2548,
91
L.ed.2d
265
(1986).
Plaintiff has provided no evidence aside from conclusory
statements in his initial answer to Defendants’ counterclaim as
to the genericness of the mark “Voice of America.”14
He has
additionally failed even to respond to Defendants’ arguments in
this respect in his opposition to the instant motion. (See Rec.
Doc. 75). The Court notes that Plaintiff has shown a consistent
lack of diligence in the instant proceedings or, at the very
least, a detrimentally blasé attitude as to the seriousness of
14
It should be noted that even these contentions may be incorrect to the
extent they rely on a conclusion that the combination of two generic
components yields a generic composite. See McCarthy, supra at §12:57 (“The
Federal Circuit has said that a genericness analysis must be applied to a
challenged phrase as a whole, ‘for the whole may be greater than the sum of
its parts.’”)
46
the instant motion for purposes of the continued viability of
his
cause
forward
action.15
of
with
any
Because
evidence
possibility
of
success
in
defense
genericness
at
of
Plaintiff
has
sufficient
to
establishing
trial,
the
Defendants
failed
to
come
demonstrate
elements
are
of
a
the
entitled
to
summary judgment on this issue. Accordingly,
IT IS ORDERED THAT Plaintiff’s defense of genericness is
dismissed.
(4)Injunctive Relief
Finally, the Court turns to Defendants’ requested relief of
a permanent injunction proscribing Plaintiff’s continued use of
Defendants’ mark in connection with any of his activities. (See
Rec.
Doc.
66-3).
As
noted
above,
injunctive
relief
properly
issues when the movant shows (1) they have suffered irreparable
injury,
(2)
considering
there
the
is
no
balance
adequate
of
remedy
hardships
at
between
law,
the
(3)
that,
parties,
a
remedy at law is warranted, and (4) that it is in the public’s
interest to issue the injunction. (Rec.Doc. 66-2 at 12)(citing
Audi AG v. D’Amato, 469 F.3d 534, 550 (6th Cir. 2006); eBay Inc.
v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006)).
15
The record reflects that Plaintiff was previously the subject of a motion
for sanctions, which ultimately resulted in Magistrate Judge North issuing an
order requiring the supplementation or correction of various discovery
responses in light of Plaintiff’s failure to satisfactorily comply with
discovery obligations. (See Rec. Doc. 63). See also Rec. Doc. 66-4 at 11
detailing Plaintiff’s failure to serve or execute a large number of potential
discovery requests.
47
Plaintiff’s sole challenge to Defendants’ entitlement to
injunctive relief in this case consists of an argument that
Defendants have failed to show irreparable harm. In support of
this
contention,
Plaintiff
argues
Defendants
have
allegedly
failed to take similar action against the “even more similar”
domain
name
“www.voiceofamerica.com,”
which
public
records
reveal to be owned by a private entity. (Rec. Doc. 75 at 12).
Defendants respond by noting that, at the time of writing of
their pleadings (and, as the Court will take judicial notice of,
the writing of this opinion), that domain name does not appear
to resolve a functioning website. (See Rec. Doc. 78 at 13). This
argument is irrelevant to the issue presented.
“An
injunction
is
the
usual
and
standard
remedy
once
trademark infringement has been found. Consider the alternative.
If a court were to award some monetary compensation and permit
the
infringer
to
continue,
the
result
would
be
a
kind
of
judicially imposed compulsory license. Such a mandated license
would
permit
likely
confusion
to
continue
and
deprive
the
consuming public of a truthful marketplace.” McCarthy, supra at
§30:1 (citing
America,
discussed
Inc.,
Angel Flight of Georgia, Inc. v. Angel Flight
522
above,
F.3d
this
1200,
1209
(11th
Court
concludes
Cir.
2008).
Defendants
As
have
established their entitlement to summary judgment on the issue
48
of Plaintiff’s infringement of their registered mark under the
Lanham Act. Additionally, Defendants complain of the harm that
will result from the continued likelihood of confusion (inherent
in the Court’s determination of infringement), which will hinder
Defendants’ statutory requirement “to serve as a consistently
reliable
and
authoritative
source
of
news
.
.
.
that
is
accurate, objective and comprehensive.” (Rec. Doc. 66-2 at 2526)(citing
potential
22
U.S.C.
harm
to
§6202(c)).
U.S.
foreign
Defendants
policy
with
also
note
respect
to
the
any
hindrance of Defendants’ mission to other countries. (Rec. Doc.
66-2 at 25). Not only are the specific instances of harm cited
by Defendants compelling, it is clear that there is no adequate
remedy at law, given the impracticability of requiring parties
to continually bring actions for and to prove damages, were the
Court
to
permit
Plaintiff’s
continued
infringement.
Additionally, the public interest is best served by preventing
confusion in the marketplace. See, Brookfield Commc’ns,
F.3d
at
1066.
The
Court
also
notes
that
Defendants
have
174
no
objection (to be sure, they could not reasonably contend to the
contrary) to Plaintiff’s continued operations on his domain name
“www.hottalkradio.com,” so long as the content of that page is
49
amended
to
omit
use
of
Defendants’
mark
and
to
operate
consistently with any orders to issue from this Court.16
In light of the foregoing, the Court concludes Defendants
have
shown
entitlement
to
injunctive
relief
pursuant
to
15
U.S.C. §1116.17 IT IS ORDERED that summary judgment is entered in
their favor.
Conclusion
In summary, the Court finding for Defendants on all issues
presented by the instant motion, IT IS ORDERED THAT:
(1)
Summary judgment is entered on Defendants’ counterclaim
of
trademark
infringement
against
Plaintiff,
pursuant to 15 U.S.C. §1114;
(2)
Plaintiff’s defense of laches is dismissed;
(3)
Plaintiff’s defense of genericness is dismissed; and,
16
The Court notes Plaintiff’s bewilderingly inapposite argument in opposition
to Defendants’ motion for summary judgment that: “While there are debatable
questions regarding whether a reasonably prudent consumer would be confused
between
the
word
mark
Voice
of
America
and
the
website
URL
thevoiceofamerica.com, there is absolutely no basis to conclude that such a
consumer would be likely to confuse the URL hottalkradio.com with the word
mark Voice of America. As such, that website is not properly at issue herein,
and Defendants are not entitled to a summary judgment of infringement as to
that site.” (Rec. Doc. 75 at11). Quite -- however, this statement completely
overlooks the fact that at issue presently is Plaintiff’s infringement by
virtue of the use of the phrase “Voice of America” in connection with his
activities. To the extent the website accessible via the domain name
hottalkradio.com includes content impermissibly identifying itself under this
moniker, it is unquestionably at issue in the present matter.
17
The statute provides: “The several courts vested with jurisdiction of civil
actions arising under this chapter shall have power to grant injunctions,
according to principles of equity and upon such terms as the court may deem
reasonable, to prevent the violation of any right of the registrant of a mark
registered in the Patent and Trademark Office . . . .” 15 U.S.C. §1116(a).
50
(4)
Defendants are entitled to injunctive relief, pursuant
to 15 U.S.C. §1116.
New Orleans, Louisiana, this 5th day of November, 2014.
____________________________
UNITED STATES DISTRICT JUDGE
51
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