The opinion of the court was delivered by: REBECCA R. PALLMEYER
Plaintiff Pride Communications Limited Partnership holds a Federal Communications Commission license for radio station WZSR-FM, which broadcasts from Crystal Lake, Illinois at a frequency of 105.5 Mhz. WZSR characterizes its format as "adult contemporary," and its target audience as adults age 25 to 54. Since August 1991, WZSR has used "STAR 105.5" or "STAR 105.5 Radio" as its on-air name or "tag," on promotional products such as coffee cups and refrigerator magnets, and on printed materials. Plaintiff holds an Illinois Trademark Registration for the mark STAR 105.5 RADIO.
On December 31, 1993, Defendant WCKG, Inc., a corporation owned by Cox Broadcasting, Inc. purchased WYSY-FM, a Chicago radio station operating at the frequency of 107.9 Mhz. WYSY's new owners adopted a programming format of '70's music designed to appeal to an audience similar to that of WZSR. When WYSY went on air on January 6, 1994, calling itself "STAR 107.9," Plaintiff cried foul.
Plaintiff filed its complaint on January 14, 1994, charging Defendants with trademark infringement and unfair competition in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); the Illinois Trademark Registration Act, 765 ILCS 1035/1 et seq.; and the Illinois Uniform Deceptive Trade Practices Act, 815 ILCS 510/1 et seq. Plaintiff contends that its mark, "STAR 105.5," is prima facie valid and protectable by virtue of its Illinois registration. Alternatively Plaintiff urges that its mark has secondary meaning and that Defendants' use of "STAR 107.9" will cause confusion among listeners. District Judge Harry Leinenweber entered a temporary restraining order against Defendants' use of the "STAR 107.9" mark on January 14, 1994, and referred the matter to this court for hearing on Plaintiff's motion for preliminary injunction. For the reasons that follow, that motion should be granted.
1. Plaintiff holds an FCC license for radio station WZSR-FM. WZSR is registered at Woodstock, Illinois and broadcasts at a frequency of 105.5 and at 3000 watts power into McHenry County and surrounding counties, including Cook, Lake, DuPage, Kane and Boone Counties in Illinois and counties in southeast Wisconsin. WZSR's format is "adult contemporary"; WZSR plays music of the 60's, 70's, 80's and 90's and has adopted as a descriptive slogan the words, "Today's hits, yesterday's favorites." In addition to music, WZSR broadcasts periodic news, traffic and weather reports.
2. Since August 1991, Plaintiff has used the names "STAR 105.5 RADIO" or "STAR 105.5" or "ST*R 105.5 FM" (with the*in place of the A) for its radio broadcasting services. WZSR repeats the name "STAR 105.5" on air at least twelve times every hour, 24 hours per day. In addition, Plaintiff has used the mark on promotional materials, including several large banners that Plaintiff carries to and displays at events in the northwest suburban region; stationery and other printed material; coffee cups; plastic water bottles; foam beverage can holders; refrigerator magnets; and other goods. WZSR's mark appears on a mobile broadcast van that Plaintiff uses for traffic reporting. In addition, the mark appears on Plaintiff's "Giant Rolling Radio," a trailer modeled to look like a large portable radio, which Plaintiff transports to marketing and promotional events in the northwest suburbs. James Hooker, General Manager for WZSR, estimates that Plaintiff has spent at least $ 92,000.00 since August 1991 in efforts to promote the "STAR 105.5" name and mark.
3. On December 31, 1993, Defendant WCKG, Inc., purchased radio station WYSY, Aurora, Illinois, for approximately $ 9 million. WYSY broadcasts at a frequency of 107.9 Mhz and at 22,500 watts power. Its broadcast range over the greater Chicago area overlaps with a portion of WZSR's geographic broadcasting area; Plaintiff estimates that the overlap covers 80% of Plaintiff's target population.
4. WYSY's new owners adopted a new programming format for the station of exclusively '70's music. After reviewing the results of a listener poll, in which listeners were asked to choose from five possible names, Cox executives chose the name "Star," and adopted, as WYSY's new "tag," the words, "Star 107.9, Greatest Hits of the '70's all the time."
5. Michael G. Disney, Vice President and General Manager of WCKG and WYSY, was unaware prior to January 5, 1994, that any other radio station in the Chicago area used the word "Star" as its name. Mr. Disney believes that none of the other Cox executives who participated in selecting "Star 107.9" as WYSY's name was aware of the existence of a radio station calling itself Star 105.5. Mr. Disney first learned of these circumstances on Wednesday, January 5, 1994, the day before the new station's first scheduled broadcast. On that day, the station's operations manager, Debbie Morel, participated in a meeting with sales people in which one of her staff members, Elizabeth Melendez, introduced herself as having previously worked for Star 105.5 in Crystal Lake. Ms. Morel came to Mr. Disney and asked him whether he was aware that there was a station calling itself "Star" in the suburbs. Mr. Disney recalls that he reacted by saying, "You've got to be kidding." To find out for himself, Mr. Disney immediately got into his car and drove northwest until his car radio picked up WZSR. Mr. Disney listened to WZSR for about an hour, and heard the announcer identify the station as "Star 105.5" repeatedly.
7. Bob Karraker is a communications student who worked for WZSR in the summer and fall of 1993 as an intern. On January 10, 1994, Mr. Karraker telephoned WZSR and spoke to Kathy Sandoz, the station's business manager. After exchanging small talk, Mr. Karraker asked Ms. Sandoz whether WZSR had acquired a new station. He told her that he had heard "Star 107.9" on the air, and assumed, because of the use of the Star name, that WZSR must have purchased it.
8. On January 10, 1994, James Hooker telephoned Michael Disney and objected to WYSY's use of the "Star" name. Mr. Disney told Mr. Hooker that "until Wednesday afternoon of the day before we went on the air, I did not know you existed." Mr. Disney stated that his attorneys had advised him "there is no problem," and that Defendants intended to continue to use the name.
9. WYSY's new owners have made a significant investment in plans to use the "Star" name. They contracted with an artist to prepare several sample logos. Prior to entry of the temporary restraining order, Defendants were poised to spend several hundreds of thousands of dollars on a television promotion. Defendant Cox Communications, Inc., prepared a package of materials to be faxed to potential advertisers over several days in which WYSY is referred to as "STAR 107.9 FM." Defendant's attorneys submitted a request to the FCC to change the call letters of WYSY to WWST; following entry of the temporary restraining order, that request was withdrawn.
10. Arbitron is a radio ratings service that collects information regarding radio broadcasting in a variety of ways. To determine the number of listeners tuning in to various stations, Arbitron distributes "diaries" to a sample of listeners and asks them to keep records of their listening. Listeners are expected to identify the radio stations to which they listen; they may do so by listing call numbers or frequencies or by listing the radio's "tag." Thus, a listener may simply list the name of the radio station to which he or she is listening, for example, "Q," or "Q101" rather than "WKQX-FM."
11. Once each calendar quarter, Arbitron submits a questionnaire to radio stations having some minimum number of listeners and asks the radio station to identify its name for purposes of the Arbitron diaries. A listing of the radio stations broadcasting in any geographical area can be obtained from Arbitron. Plaintiff's Exhibits 11 and 12 are Arbitron listings for the eleven-county
Chicago broadcasting area dated September 10, 1993 and December 23, 1993. These listings identify WZSR-FM as broadcasting in ...