Namer v. Broad. Bd. of Governors

ROBERT NAMER v. BROADCASTING BOARD OF GOVERNORS, ET AL.

CIVIL ACTION NO. 12-2232 SECTION "B"(5)

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF LOUISIANA

November 5, 2014

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 the domain name "www.thevoiceofamerica.com" 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 "www.thevoiceofamerica.com" 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 tothis 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 "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 Forumpanel ordered such transfer. (Rec. Doc. 11-1, at 2; Rec. Doc. 1, Ex. G). The arbitrator opined that the domain name, "www.thevoiceofamerica.com", was identical or confusingly similar to the word mark of BBG; that Namer had no legitimate interest in the domain name; and that Namer registered and used the disputed domain name in bad faith. (Rec. Doc. 1, at 8).

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,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)(4^th 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 D...