Since its first broadcast on February 1, 1942, the Voice of America radio service (VOA) has aired countless hours of programming in dozens of languages to what is currently an estimated global audience of over 100 million people. Although the history of the VOA name is storied and long, VOA’s efforts to protect that name are of a more recent vintage. VOA didn’t apply to register its name as a federal trademark until 2005, and didn’t get around to registering an internet domain name until after sites such as voiceofamerica.com had already been snapped up by private parties (VOA had to make due with VOANews.com).
But that appeared to change about a decade ago, when administration of VOA was transferred from the U.S. Information Agency to a new autonomous federal entity, the Broadcasting Board of Governors (BBG). BBG began to take steps to protect the VOA brand and, on November 7, 2014, the Eastern District of Louisiana rewarded those efforts by enjoining what was allegedly a forty-five year infringement of the VOICE OF AMERICA mark.
Robert Namer and the “VOA View”
Conservative radio talk show host Robert Namer claims that he began using the term “Voice of America” in commerce in 1968. In 1977, Namer formed Voice of America, Inc., a Louisiana corporation, and in 1991 he began hosting the “Voice of America” syndicated radio talk show. In 1998, Namer registered the domain name www.thevoiceofamerica.com, which he ultimately used as a news aggregation site and platform for the same political views he espoused on his radio show. The site’s content included links to news stories from the mainstream press, often followed by a short one-line commentary called the “VOA View.” Examples of recent commentary include: “VOA View: Government ineptness is more damaging tha[n] terrorists;” “VOA View: The Obama regime is deceiving the public – there is no job improvement;” and “VOA View: The 24% that approved [the President’s handling of the deficit] are blacks, fools and those on public subsidies.”
In 2000, after Namer had registered the domain name but before he built his website, BBG sent a letter to Namer protesting his use of the VOA name. Then, nothing happened for another ten years or so, during which time Namer began building his website. In 2011, BBG initiated a Uniform Domain Name Dispute Resolution proceeding to stop Namer from using www.thevoiceofamerica.com, which by this time had become the principal outlet for Namer’s radio show. An arbitrator ruled in favor of BBG and ordered that the domain name be transferred from Namer to BBG.
In response, Namer brought an action for declaratory judgment in early 2012 (a few weeks before the mark would have become incontestable), asking the Eastern District of Louisiana to declare that he could continue to use the “Voice of America” moniker for his website because, inter alia, BBG’s VOICE OF AMERICA mark was “generic,” Namer’s use of it was a fair use, and because he was entitled to a laches defense. BBG, represented by the Department of Justice, asserted a counterclaim for trademark infringement and requested a permanent injunction.
Dismissal of the “Fair Use” Defense
On September 10, 2013, the Court issued an opinion addressing BBG’s partial motion to dismiss Namer’s “fair use” theory. Namer, relying the doctrine of classic fair use, had alleged that he was only using the name “Voice of America” to refer to his own radio show. Because it was a call-in show, Namer argued, it allowed “the people of America to voice their opinions through an open airway, i.e. voice of America,” and therefore the term was merely descriptive of the program’s content.
The Court was unimpressed by this argument. Focusing on the website, the Court held that the term “Voice of America” was not “obviously descriptive of a compilation of news articles.” Rather, the Court held, Namer was using the name in a trademark sense to indicate the source of a product or service, in this case news commentary. The Court allowed BBG’s partial motion to dismiss and the parties proceeded to take discovery on the remaining claims and counterclaims.
Summary Judgment and the “Governmental Aesthetic”
After discovery, BBG moved for summary judgment and, on November 5, 2014, the Court issued its opinion. First, the Court addressed BBG’s counterclaim for trademark infringement. The Court agreed with BBG that there was a likelihood of confusion, including because the VOA mark was strong, because Namer’s use was confusingly similar, and because the parties offered similar services (i.e., news) through similar channels (e.g., the internet).
Although essentially dicta, the most interesting part of the Court’s discussion was with respect to whether Namer had an intent to deceive. BBG presented evidence that the website had used multiple indicia of government affiliation, including a stylized eagle logo and an American flag banner. The Court agreed that “these items do reflect an undeniable ‘governmental’ aesthetic,” and was further concerned that Namer’s site did not contain a disclaimer clarifying the absence of a government affiliation. Nevertheless, the Court didn’t find that this evidence was conclusive of an intent to cause such confusion, but it find that there was a likelihood of confusion despite a lack of intent to cause it.
Laches and Genericness Defenses Dismissed
The Court then addressed Namer’s defenses. As to laches, the Court held that, even if the delay period extended back to 2000, Namer was on notice of BBG’s objections from that point forward and continued to use the mark at his own risk. As to the argument that “Voice of America” was generic, Namer had argued that since both “Voice” and “America” were generic, their combination created a “generic compound.” The Court found that Namer had provided no evidence as to public perception on this point other than conclusory statements and rejected the defense. In fact, the Court went out of its way to state that Namer had been “intransigent” with respect to discovery and in general had a “detrimentally blasé attitude as to the seriousness of the instant motion.”
Irreparable Harm to US Foreign Policy
Finally, Namer argued that, even if there was a likelihood of confusion, BBG had not made a showing of irreparable harm and therefore was not entitled to an injunction. The Court disagreed and found that, not only was there convincing evidence of likely harm in the form of consumer confusion but, if Namer’s controversial views were mistakenly attributed to VOA, it could cause harm to VOA’s reputation and damage its foreign policy mission.
On November 7, 2014, the Court ordered Namer to turn over the domain name and enjoined him “from using the mark VOICE OF AMERICA, or any mark likely to cause confusions therewith, in offering news and entertainment content on the internet.” Namer has until December 8 to stop using the mark online, including by removing references to “Voice of America” and “VOA View” from all of his websites (including www.hottalkradio.com, which is still active).
Do we think this is the future of IP (trademark, patent, copyright) causes of action – latches and statue of limitations just don’t mean anything any more? It seems at some point, if the plaintiff does not timely pursue their claim in court, the plaintiff should suffer the consequences of the delay. Between this case and Petrella (copyright) our clients need to be aware of long-term consequences of their actions.
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