IVAN L.R. LEMELLE, District Judge.
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.
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 the domain name "www.thevoiceofamerica.com" and the phrase "Voice of America" in connection with Plaintiff's websites and publication activities.
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 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).
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 letter indicated a concern that Namer's website audiences could be confused by the similarities between Mr. Namer's use of the domain "
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 panel ordered such transfer. (Rec. Doc. 11-1, at 2; Rec. Doc. 1, Ex. G). The arbitrator opined that the domain name, "
On January 4, 2012, Plaintiff Robert Namer filed a civil action to prevent transfer of the domain name registration "thevoiceofamerica.com" to Defendant BBG, but 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).
Thereafter, Defendants moved for dismissal of Counts I, II, and V of Plaintiff's Complaint,
Defendants' motion for summary judgment raises the following four issues:
On this issue, Defendants contend they have affirmatively established the elements for a prima facie case of federal trademark infringement; namely (1) that they own 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 this last element, Defendants contend the eight "digits of confusion" considered by courts in determining the likelihood of confusion compel in favor of a finding of Plaintiff's infringement, relying primarily on 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 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).
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. 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 any tacit approval of Plaintiff's early radio activities would be vitiated by the scope of his later widespread infringement over the internet. (Rec. Doc. 66-2 at 21-22).
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 8-9). 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 with [his] programming." (Rec. Doc. 78 at 9). Finally, Defendants argue the defense of laches does 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 of this contention, Plaintiff cites a Declaration attached to his Opposition (Rec. Doc. 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 favor of undue delay and to defeat Defendants' progressive encroachment argument. (Rec. Doc. 75 at 6). 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.
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 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).
Finally, Defendants contend they have satisfied the elements for a showing of entitlement to injunctive 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). 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 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.'").
Summary judgment is proper if the pleadings, depositions, interrogatory answers, and admissions, 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). 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. 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). "[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 the burden of demonstrating by competent summary 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) 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).
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 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). Plaintiff does not dispute that his activities are covered by the terms of this language and further does not contend his use is unauthorized by Defendants.
The Court takes each digit in turn:
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 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.
As to this digit, there is no credible argument that "Voice of America," Defendants' registered mark, and "
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 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 of their position here, Defendants cite Declarations of Steven Springer, a Senior Executive 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 news and information to an international audience via radio, television, the internet and mobile devices." (Rec. Doc. 66-2 at 15)(citing Rec. Doc. 66-17 at 2). Plaintiff, in turn, is quoted as characterizing "www.thevoiceofamerica.com" as a "`news information portal' including commentary, political news, and economic news." (Rec. Doc. 66-2 at 15)(citing Rec. Doc. 66-9 at 23-24).
To the extent this digit bears relevance beyond the traditional retail context, the Court construes it to 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 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.
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.
"Proof of an intent to confuse the public is not necessary to a finding of a likelihood of confusion." Elvis Presley 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 confusing the public is still an infringer." McCarthy, supra at §23:107. Nevertheless, "[e]vidence of [an alleged infringer's] intent to confuse is relevant to the 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. 66-9 at 25-27). The referenced testimony, however, is inconclusive as reflected by the relevant passage:
(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. Although it may be true that "[i]n the Internet context, in particular, courts have appropriately recognized that the intentional registration of a domain name knowing that the second-level domain is another company's valuable trademark weighs in favor of likelihood of confusion," there is questionable evidence here to suggest such 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 background with the words "THEVOICEOFAMERICA.COM" superimposed in white type 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 of the less than conclusive evidence of Plaintiff's knowledge at the relevant time as well as 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.
"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 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 survey
(Rec. Doc. 66-2 at 17-18).
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 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 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 survey. Instead, Plaintiff responds by challenging the relevance of Dr. Isaacson's methodology and resulting data. According to Plaintiff, 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, it must address that question." (Rec. Doc. 75 at 8)(citing Brookfield Commc'ns, 174 F.3d at 1060). Plaintiff cites deposition testimony of Dr. Isaacson as conclusive of the 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:
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:
The following passage is likewise instructive:
(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 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 testimony revealed as much and more:
(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.
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 action is that the universe "include a fair sampling of those purchasers most likely to partake of the alleged infringer's goods or services." Exxon Corp, 628 F.2d at 500.
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 the website located at "www.thevoiceofamerica.com." Additionally, a 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.
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 detail, besides Defendants' summary of the methodology underlying the survey set forth above. Relevant excerpts from Dr. Isaacson's expert report are set forth below:
(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 was carefully designed to gather participants' conclusions both as to the specific source of 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 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 the grant of a summary judgment of dismissal for lack of a triable issue of a likelihood of confusion. A court may find evidence of actual confusion insufficient to present a triable issue of fact where evidence in rebuttal provides a reasonable explanation discounting isolated instances of confusion." McCarthy, supra §23:13. In this case, Plaintiff has come forward with no affirmative evidence of his own to dispute the evidence 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.
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 of retail outlets and purchasers (consumers), and (7) evidence of actual confusion weigh in favor of Defendants, the Court 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 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.
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 by competent summary 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 respect to the first element, the parties dispute whether the relevant period for delay begins in 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 this issue on other grounds, a detailed discussion of these various positions is unwarranted. Notwithstanding any arguments concerning the doctrine of progressive encroachment,
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 as to any business or economic activity or benefit associated with his challenged activities and 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 light of the foregoing, the Court concludes that Plaintiff has failed to carry his burden for purposes of opposing summary judgment on the issue of the defense of laches. Accordingly,
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
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 for genericness. In the context of a summary judgment motion, when the nonmoving party bears 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."
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) 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)).
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 Angel Flight of Georgia, Inc. v. Angel Flight America, Inc., 522 F.3d 1200, 1209 (11th Cir. 2008). As discussed above, this Court concludes Defendants have established their entitlement to summary judgment on the issue 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 25-26)(citing 22 U.S.C. §6202(c)). Defendants also note the potential harm to U.S. foreign policy with respect to 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, 174 F.3d at 1066. The Court also notes that Defendants have 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 amended to omit use of Defendants' mark and to operate consistently with any orders to issue from this Court.
In light of the foregoing, the Court concludes Defendants have shown entitlement to injunctive relief pursuant to 15 U.S.C. §1116.
In summary, the Court finding for Defendants on all issues presented by the instant motion,
