Neely ex rel. Neely v. Rutherford County Schools

Citation: 851 F. Supp. 888Docket: No. 3:93-1073

Court: District Court, M.D. Tennessee; May 10, 1994; Federal District Court

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A preliminary injunction was issued by Judge Leinenweber following the recommendation of Magistrate Judge Pallmeyer regarding Plaintiff Pride Communications Limited Partnership’s application. After a two-day hearing on January 24-25, 1994, during which witness testimonies were heard, and evidence and arguments from both parties were considered, the Magistrate Judge concluded that the Plaintiff was entitled to preliminary injunctive relief. The Court accepted this recommendation, ordering effective January 26, 1994, that the defendants, including WCKG, INC. and its affiliates, are prohibited from using the names “STAR 107.9” or any similar designations without the Plaintiff's consent. They are also restrained from using any confusingly similar trademarks to “STAR 105.5 RADIO,” which is the Plaintiff’s registered trademark for their radio station WZSR-FM, broadcasting from Crystal Lake, Illinois. The Plaintiff's $10,000 security for the temporary restraining order will cover any potential damages from wrongful injunctions. The injunction will remain in effect until further court order, with a status hearing scheduled for February 25, 1994.

On December 31, 1993, WCKG, Inc., a subsidiary of Cox Broadcasting, acquired the Chicago radio station WYSY-FM, which broadcasts at 107.9 MHz. The station adopted a programming format focused on '70s music and rebranded as “STAR 107.9.” The Plaintiff, who operates WZSR-FM at 105.5 MHz, filed a complaint on January 14, 1994, alleging trademark infringement and unfair competition under the Lanham Act, the Illinois Trademark Registration Act, and the Illinois Uniform Deceptive Trade Practices Act. The Plaintiff asserts that its mark “STAR 105.5” is valid and protectable due to its Illinois registration and claims that it has acquired secondary meaning, arguing that “STAR 107.9” could confuse listeners. A temporary restraining order against the use of “STAR 107.9” was issued on January 14, 1994, and the case was referred for a preliminary injunction hearing. The Plaintiff holds an FCC license for WZSR, which broadcasts an “adult contemporary” format and has used the “STAR 105.5” name since August 1991, prominently promoting it through various media and events, with an estimated promotional expenditure of $92,000. The geographic broadcast areas of WZSR and WYSY overlap significantly, covering approximately 80% of the Plaintiff's target audience. WYSY's new format and name were chosen based on listener feedback.

Michael G. Disney, Vice President and General Manager of WCKG and WYSY, was unaware until January 5, 1994, that another Chicago radio station, Star 105.5, existed prior to the launch of WYSY, branded as Star 107.9. Disney learned of Star 105.5 only a day before WYSY's scheduled broadcast when operations manager Debbie Morel informed him during a meeting. Following this revelation, Disney confirmed the station's identity by listening to WZSR, which identified itself as Star 105.5.

WYSY began broadcasting as Star 107.9 on January 6, 1994, using this name prominently in their promotional materials. Bob Karraker, a former intern at WZSR, contacted the station on January 10, 1994, inquiring if WZSR had acquired a new station, assuming Star 107.9 was part of WZSR due to the shared name. On the same day, James Hooker called Disney to object to WYSY's use of the name, to which Disney responded that he was unaware of Star 105.5 until just before airing and that his lawyers had advised no legal issues with using the name.

WYSY's new owners had invested significantly in branding, including commissioning logos and planning a substantial advertising campaign worth hundreds of thousands of dollars. They had also sought to change the station's call letters to WWST, a request that was withdrawn after a temporary restraining order was issued. Additionally, Arbitran, a radio ratings service, collects listener data through diaries, allowing listeners to identify stations by name or frequency.

Arbitran distributes a quarterly questionnaire to select radio stations, requesting identification for its diaries. Listings for the Chicago broadcasting area from September and December 1993 indicate that WZSR-FM operates in McHenry, Kane, and Lake Counties, using the name “STAR105.5 TODAY’S HITS YES.” Robert Watson, who runs a marine service center and snow removal business in Crystal Lake and advertises on WZSR, reported spending $6,000 to $8,000 on advertising and noted that he and others commonly refer to the station as “Star” or “Star 105.” He expressed that if he encountered another station named “Star,” he would assume it was connected to the Plaintiff. David R. Nelson, an account executive for Great Lakes Networks with extensive experience in radio, stated that naming a station often involves research or casual assessment. He identified WZSR as "Star 105," acknowledging that if he heard “Star 107.9,” he would suspect name misappropriation. Nelson also noted that listeners in a Barrington clothing store frequently tuned into Star 105.5 without knowing its call letters. ABC/SMN, a radio network, provided the “Starstation” format, which was minimally identified on-air before being discontinued in 1994, though still marketed. A trademark search indicates various uses of "star" in radio, with multiple registrations across states, but only “Star 105.5 Radio” is registered in Illinois by the Plaintiff.

No federally-registered trademark exists for “Star” as it relates to radio frequencies. Webster's Dictionary defines "star" in various contexts, including celestial bodies, symbols of excellence, and notable individuals in arts or professions. For a preliminary injunction, a party must demonstrate: (1) likelihood of success on the merits, (2) no adequate legal remedy and potential for irreparable harm if denied, (3) potential irreparable harm to the non-moving party if granted, and (4) public interest considerations. The court balances these factors, aiming to minimize the risk of error in its decision.

Under Section 43(a) of the Lanham Act, civil liability arises from the use of terms or symbols likely to confuse or deceive regarding affiliation or product origin. A plaintiff can prove trademark infringement by establishing (a) the validity of the STAR 105.5 mark, (b) ownership of the mark, and (c) likelihood of confusion with the “STAR 107.9” mark used by defendants. The core issue in trademark infringement is the likelihood of confusion, which requires the claimed mark to be sufficiently distinctive for prima facie protection. Marks are categorized as generic, descriptive, suggestive, or arbitrary, with generic terms receiving no protection, descriptive terms needing secondary meaning for protection, and suggestive or arbitrary terms often qualifying for protection without secondary meaning.

Secondary meaning indicates that the consuming public primarily associates a product with its producer rather than the product itself. This principle can be established through various forms of evidence, including consumer testimony, surveys, advertising efforts, and sales data. Under Illinois law, the registration of “STAR 105.5 RADIO” as a trademark serves as prima facie evidence of its validity. Although the lack of federal registration may limit this presumption, the mark's enforceability against defendants remains intact. The court finds that "star" is not descriptive of radio services, as conceded by the defendants, and instead carries a suggestive quality. Even if deemed descriptive, the plaintiff has demonstrated that the mark has acquired secondary meaning within its broadcasting area, as evidenced by listener recognition and substantial advertising efforts. The plaintiff has invested approximately $92,000 in promoting the mark over two years, which further supports its distinctiveness. Thus, the plaintiff is entitled to exclusive use of the mark in the relevant market.

Trademark infringement under the Lanham Act and Illinois law is assessed based on the likelihood of confusion. A minimal instance of actual confusion was presented by the Plaintiff, where a listener inquired about a potential acquisition of another station after hearing the Defendants' broadcast featuring the "Star" name. This confusion is considered significant, though actual confusion is not a prerequisite for establishing infringement; the focus is on the likelihood of confusion. 

The court's determination of likelihood is a factual finding, supported by seven factors identified by the Seventh Circuit: similarity of marks, similarity of products, area and manner of concurrent use, consumer care level, strength of the complainant’s mark, actual confusion, and intent to mislead. In this case, the marks "Star 107.9" and "Star 105.5" are similar in spelling and sound, and Defendants' station is positioned close to the Plaintiff's on the radio dial. Testimony indicated that consumers may not accurately remember station call letters, increasing the likelihood of confusion.

Defendants, as the second user of the "Star" name, carry the responsibility to avoid confusion. Even without fraudulent intent, they have a duty to take precautions against potential confusion. Their lack of knowledge about the Plaintiff's existence does not exempt them from this obligation.

Lastly, the Plaintiff's common law unfair competition claim and claim under the Illinois Trademark Act are encompassed within the finding of trademark infringement under the Lanham Act, indicating that the Plaintiff is likely to succeed on the merits of these claims as well.

In trademark infringement cases, courts may presume irreparable injury when there is a likelihood of consumer confusion, as established in several precedents. The Plaintiff argues that confusion among listeners completing Arbitron diaries could lead to a loss of credit for its listenership, which is crucial for advertising sales. The Defendants, on the other hand, have not demonstrated that they would suffer irreparable harm if preliminary relief is granted. Although they claim significant expenses in promoting the "Star" mark, much of this spending occurred after they were aware of the Plaintiff's claims. The Defendants can still choose alternative non-infringing marks and have managed to secure higher advertising prices despite a temporary restraining order.

The balance of equities favors the Plaintiff, who has invested significantly in establishing its mark over two years. Legal precedent suggests that preventing further use of an infringing mark can protect the infringing party from future challenges. The Defendants were aware of the Plaintiff's competing use when adopting the "Star" mark, thus acting at their own risk. The public interest is not harmed by a preliminary injunction, as Defendants can continue broadcasting under a different name. Overall, the Plaintiff has shown a substantial likelihood of success on the merits of its claims under the Lanham Act and related state laws, indicating that the potential harm to the Plaintiff outweighs any harm to the Defendants from the injunction.

Two primary issues warrant attention regarding the motion for a preliminary injunction. First, Defendants assert that other entities are using the "Star" name, suggesting that the Plaintiff's use is not exclusive. However, there is no evidence that any other broadcaster in the Chicago area uses "Star" as a name or tag. The recommended relief would not prevent other broadcasters from using the term "star" in contexts outside of a name or tag for Defendants’ station. Second, Defendants cite the Seventh Circuit case M.B.H. Enterprises, Inc. v. WOKY, Inc. to argue against the Plaintiff's petition. In M.B.H., the court found the defendant's use of a slogan to be descriptive rather than a name, which differentiated it from the current case, where the Plaintiff has actively used, registered, and promoted the "STAR 105.5" mark. The Defendants have adopted a confusingly similar mark and continued to use it despite the Plaintiff's objections. The court is advised to issue a preliminary injunction similar to the existing temporary restraining order, with a requirement for Plaintiff to post appropriate security. Counsel must file objections within ten days of service, or risk waiving the right to appeal. The affected jurisdictions include several counties in Illinois, Wisconsin, and Indiana.