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Namer v. Broadcasting Board of Governors

United States District Court, E.D. Louisiana

November 5, 2014



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.

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 the domain name "" and the phrase "Voice of America" in connection with 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 early as 1968. (Rec. Doc. 1 at 3). Plaintiff further registered Voice of America, Inc. as a Louisiana corporation in 1977 (Rec. Doc. 1 at 3). In 1991, Plaintiff began airing a radio program under the name "Voice of America" on various radio stations. (Rec. Doc. 1 at 3). Of particular issue here, Plaintiff purchased the domain name "" in 1998 and, sometime 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 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 letter indicated a concern that Namer's website audiences could be confused by the similarities between Mr. Namer's use of the domain "" 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 "" 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, "", was identical or confusingly similar to the word mark of BBG; that Namer had no legitimate interest in the domain name; and that Namer registered and used the disputed domain name in bad faith. (Rec. Doc. 1, at 8).

On January 4, 2012, Plaintiff Robert Namer filed a civil action to prevent transfer of the domain name registration "" 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, [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) 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 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).

(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. 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 "" 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.

(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 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, 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, "", 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, "", 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 Standard

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).

(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 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.[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 defendant's intent, (7) any evidence of actual confusion, as well as (8) the degree of care exercised by 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 663-64).

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 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' registered mark, and ", " Plaintiff's domain name, 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 ...

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