United States District Court, N.D. Illinois, Eastern Division
September 9, 2005.
SPARKNET COMMUNICATIONS, L.P., a Nevada limited partnership, and SPARKNET HOLDINGS, INC., a Nevada corporation, Plaintiffs,
BONNEVILLE INTERNATIONAL CORPORATION, a Utah Corporation, Defendant. BONNEVILLE INTERNATIONAL CORPORATION, a Utah Corporation, Counterclaimant, v. SPARKNET HOLDINGS, INC., A Nevada Corporation, Counterdefendant.
The opinion of the court was delivered by: MORTON DENLOW, Magistrate Judge
MEMORANDUM OPINION AND ORDER
The music radio industry is highly competitive and radio
stations seek to differentiate themselves in a variety of ways.
This case involves a claim for trademark infringement and related
state law claims in which the Plaintiffs claim that their
"PLAYING WHAT WE WANT®" trademark has been infringed by the
Defendant. The Defendant denies that there is a likelihood of confusion in their use of the "70's, 80's . . .
WHATEVER WE WANT!", "70's, 80's . . . WHATEVER WE FEEL LIKE!"
and "TODAY'S NEW MUSIC . . . and WHATEVER WE WANT" slogans, and
denies that it is unfairly competing with Plaintiff.
The Court conducted a bench trial on the papers and heard oral
argument on July 25, 2005. The Court has carefully considered the
numerous declarations filed by the parties,*fn1 the exhibits
introduced into evidence, the briefs and closing arguments of
counsel. The following constitute the Court's findings of fact
and conclusions of law pursuant to Rule 52(a) of the Federal
Rules of Civil Procedure.
A. THE PARTIES.
1. The Plaintiffs are SparkNet Communications, L.P.
("SparkNet"), a Nevada limited partnership, and SparkNet
Holdings, Inc. ("Holdings), a Nevada corporation, (collectively
referred to as "Plaintiffs").
2. The Defendant is Bonneville International Corporation
("Bonneville" or "Defendant"), a Utah corporation. It has been in
the radio business since the mid-1920's. Horowitz Dec. ¶ 20.
Bonneville owns and operates 38 radio stations including WTMX in
Chicago (also known as "101.9 THE MIX"), KKLT in Phoenix (also
known as "98.7 THE PEAK"), WSSM in St. Louis (also known as
"106.5 THE ARCH"), and KZBR in San Francisco (also known as "95.7 MAX FM"). Id. ¶ 6.
B. JURISDICTION AND VENUE.
3. This is an action brought by Plaintiffs for trademark
infringement under § 32 of the Lanham Act, 15 U.S.C. § 1114,
unfair competition under § 43(a) of the Lanham Act,
15 U.S.C. § 1125(a), dilution under § 43(c) of the Lanham Act,
15 U.S.C. § 1125(c), common law unfair competition, and violation of the
Illinois Consumer Fraud and Deceptive Business Practices Act,
815 ILCS 505/10a. Bonneville filed a counterclaim for service mark
cancellation that has not as yet been tried and is not the
subject of this opinion.
4. This Court has jurisdiction over the subject matter of this
action under 28 U.S.C. § 1331, 15 U.S.C. § 1121,
28 U.S.C. §§ 1338(a) and (b), and pursuant to principles of supplemental
jurisdiction under 28 U.S.C. § 1367. The parties have consented
to a Magistrate Judge's jurisdiction pursuant to
28 U.S.C. § 636(c)(1).
5. Venue is proper in this district pursuant to
28 U.S.C. § 1391 because Bonneville is doing business in this district.
C. THE MARK.
6. Robert Perry ("Perry") originally owned the Registered Mark,
PLAYING WHAT WE WANT® (U.S. Trademark Registration No. 2,884,476)
(the "Mark") for use in connection with internet streaming. Perry
Dec. ¶ 2, Ex. A. Perry first used the Mark on May 1, 2001 and he
registered it with the U.S. Patent and Trademark Office ("PTO")
on September 14, 2004. Id. ¶ 3, Ex. A.
7. On June 16, 2005, Perry assigned to Holdings his entire
right, title and interest to the Mark. Holdings recorded the
assignment with the PTO on June 22, 2005. Accordingly, Holdings owns the Mark and all rights therein. Perry Dec. ¶¶ 5-6;
Comp. ¶ 14. The Mark is used in connection with the JACK FM
programming package. Perry Dec. ¶ 4.
8. SparkNet is the exclusive licensee of the Mark in the United
States. Pursuant to its license, SparkNet has the exclusive right
to sublicense the Mark to broadcasters that make radio
programming available throughout the United States. Wall Dec. ¶
9. Before SparkNet became the exclusive licensee of the Mark,
Perry granted Bohn and Associates ("Bohn") the exclusive right to
use the Mark in the United States. Perry Dec. ¶ 5. Perry's
agreement with Bohn (the "Agreement") allowed Bohn to sublicense
the Mark. Id. Bohn subsequently assigned all rights in the
agreement to SparkNet, and Perry consented to that assignment.
Id. ¶ 6.
10. JACK FM is a radio format that was developed by SparkNet
and its predecessors. THE JACK FM branded radio product contains
a broader and more eclectic music playlist than the typical music
radio stations. Burns Dec. ¶ 7. The playlists of stations
offering the JACK FM product typically contains 1200 or more
songs and the song selections defy easy categorization. Id.
Traditional broadcast models include playlists of only 300-400
songs. Johnson Dec. ¶ 6.
11. THE JACK FM format has strong commercial appeal to
companies such as Infinity Broadcasting Company and has been
described as "fresh, irreverent, and unique." Barnett Dec. ¶ 5;
Strassell Dec. ¶ 5. As a result, Bohn was able to sublicense the
JACK FM product to Infinity Broadcasting Corporation for use in
Dallas, Los Angeles, Seattle, Minneapolis, Baltimore, Buffalo,
New York City, and Chicago. Id. ¶ 7. Infinity has not launched the JACK FM format in San Francisco because Bonneville
started up a MAX FM station in San Francisco on or about May 12,
2005 which uses the slogan "70's, 80's . . . WHATEVER WE FEEL
LIKE." Id. ¶ 8. Infinity did launch the JACK FM format in
Chicago on June 3, 2005, after Bonneville started up its new
format and slogan in March, 2005. Solk Dec. ¶ 13; Strassel Dec. ¶
12. Those stations that have licensed the JACK FM format
consider the PLAYING WHAT WE WANT mark to be an integral part of
the JACK FM product. Strassel Dec. ¶ 6.
13. SparkNet and its predecessor have licensed the JACK FM
format and the related PLAYING WHAT WE WANT trademark for use in
at least 15 cities in the United States and expects to add many
new stations. Wall Dec. ¶ 13. SparkNet and its licensees have
spent and expect to spend millions of dollars to promote the JACK
FM concept and the associated PLAYING WHAT WE WANT Mark. Id. ¶
14. SparkNet fears that it will suffer irreparable harm unless
Bonneville is enjoined from using similar slogans. Id. at ¶¶
37-42. Plaintiffs believe that Bonneville's radio products are
inferior to their JACK FM branded product. Wall Dec. ¶ 41.
Bonneville feels that its radio stations are better than
Plaintiffs. Hevner Dec. ¶¶ 19-25; Kijowski Dec. ¶¶ 141-8; Solk
Dec. ¶¶ 11-17.
D. BONNEVILLE'S USE OF SLOGANS.
15. Bonneville has been in the radio industry since the
mid-1920's. Horowitz Dec. ¶ 6. Bonneville presently operates 38
stations in the United States. Id. Bonneville's primary
competitors include Clear Channel Communications, Infinity
Broadcasting, Emmis Communications, Entercom Communications, Cox Radio, Citadel
Broadcasting, and Susquehanna Radio. Id. ¶ 7.
16. In each city in which Bonneville operates a station, the
program director has discretion to tailor the station and its
slogan to the geographic market. Id. ¶ 8.
17. There are three Bonneville slogans at issue. They are used
in four cities. In Phoenix and St. Louis, Bonneville's stations
use the slogan "70's", 80's. . . . . WHATEVER WE WANT." Hevner
Dec. ¶ 8; Kijowski Dec. ¶ 10. In Chicago, Bonneville uses the
slogan "TODAY'S NEW MUSIC . . . AND WHATEVER WE WANT." Solk Dec. ¶
14. Bonneville's San Francisco station uses the slogan "70's,
80's. . . . WHATEVER WE FEEL LIKE!" Tweedle Dec. ¶ 22. Bonneville
has spent in excess of $1,500,000 to promote, publicize and market
these three slogans. Horowiz Dec. ¶ 23. The slogans were
developed without an intention to copy Plaintiffs' Mark. Solk
Dec. ¶ 11.
18. Bonneville's slogans in Chicago, Phoenix, San Francisco and
St. Louis never appear without the relevant stations' name and
frequency. Horowitz. Dec. ¶ 18.
19. Bonneville has not received any communications from any of
its listerners that have either confused Bonneville's slogans
with Plaintiffs' slogans or associated Bonneville's slogans with
Plaintiffs' stations. Id. ¶ 20.
1. Phoenix 98.7 THE PEAK.
20. Larry Hevner ("Hevner") is the Program Director of 98.7 THE
PEAK, KPKX-FM in Phoenix, Arizona. He was initially hired in
August, 2000 by Emmis Communications, to be the Program Director
for KKLT-FM, which was an Adult Contemporary Radio station.
Hevner Dec. ¶ 4. 21. Hevner is responsible for all programming for 98.7 THE
PEAK. Id. In addition, he consults with 106.5 THE ARCH in St.
Louis, Missouri, and 95.7 MAX-FM in San Francisco, California.
Id. ¶ 5.
22. Bonneville acquired 98.7 THE PEAK on December 1, 2004, from
Emmis Communications. At the time of the acquisition, THE PEAK
was already using its current format and slogan "70's, 80's . . .
WHATEVER WE WANT." Id. ¶ 8.
23. When Bonneville acquired THE PEAK on December 1, 2004,
Bonneville believed that its slogan "70's, 80's . . . Whatever We
Want" had significant value and the reason the acquisition was
made was because of the brand recognition, the ratings and cash
flow of THE PEAK. Solk ¶ 7.
24. The predecessor of THE PEAK was KKLT-FM. KKLT-FM had
operated as an adult contemporary station since the late 1980's.
After Hevner joined the station in August, 2000, he made changes
to the format, broadened the playlist, added personalities to the
station, and spent thousands of dollars in marketing. Despite
these changes, KKLT found itself in a head-to-head battle with
KESZ, another adult contemporary radio station. Id. ¶ 9.
25. In January, 2004, Emmis hired Coleman Research to conduct a
research project for the Phoenix radio market. The research
revealed an opportunity for a format playing music from the 1970s
through today. Coleman Research conducted a music test. Based on
the Coleman research study and Hevner's own experience, Emmis
made the format change and launched THE PEAK on May 28, 2004. The
station adopted the following name and slogan at that time: "98.7
THE PEAK, 70's, 80's . . . WHATEVER WE WANT." Id. ¶ 10. THE PEAK's format was created specifically for the Phoenix market
after research uncovered listerner demand for more 70's classic
hits music. Hevner Supp. Dec. ¶ 21 and Ex. F.
26. At the time, Hevner was monitoring the development of the
"Bob" and "Jack" formats in Canada. Paul Ski at the Chum Group
was using the slogan "80's, 90's and WHATEVER" at his "Bob"
station in Winnepeg. Emmis obtained permission from Ski to use
the "70's, 80's . . . WHATEVER WE WANT" slogan. Id. ¶ 13. The
slogan was developed by Emmis Communications and was first used
on May 28, 2004. Id. ¶ 8. At the time, there was only one JACK
FM station in the United States located in Denver, Colorado.
Hevner Supp. Dec. ¶ 20. The "Bob FM" concept and the "80's, 90's
and WHATEVER" slogan was first used on CFWM in Winnepeg, Canada
on March 4, 2002. Wall Dec. Ex. E.
27. THE PEAK is currently rated by Arbitron as the number one
radio station in Phoenix for adults betwen the ages of 25-54.
Hevner Supp. Dec. ¶ 16.
28. Only a small percentage of THE PEAK's total audience of
approximately 275,000 listens via the internet. Id. ¶ 29. The
overwhelming majority of THE PEAK's listeners reside in the
Phoenix metropolitan area. Id. ¶ 30.
29. Bonneville has spent over $500,000 since January 1, 2005,
to promote THE PEAK. Id. ¶ 32. THE PEAK would suffer
significant monetary harm if it were required to adopt a new
slogan. Id. ¶¶ 34-35.
30. When the decision was made to use THE PEAK's current
format, Hevner was aware of the JACK FM and "Bob" formats in
Canada. However, Hevner did not rely on the JACK FM format
because he viewed it as generic and he wanted to customize a
format for the Phoenix community. Id. ¶ 19.
31. THE PEAK's slogan never appears without the station's call
letters and frequency. Therefore, every time a consumer sees the
station's slogan, the consumer will also see THE PEAK and 98.7.
Id. ¶ 26.
32. THE PEAK has received no communications from anyone to
suggest any confusion between Plaintiffs' Mark and THE PEAK or
THE PEAK's slogan. Id. ¶ 28.
2. St. Louis 106.5 THE ARCH.
33. Bonneville purchased the 106.5 FM dial position in St.
Louis in October, 2000. At the time, the station used a young
country format. Bonneville changed the format to smooth jazz in
January, 2001. For the next four plus years, the station's
ratings continued to struggle. Kijowski. Dec. ¶ 6.
34. In 2000, John Kijowski was appointed General Manager for
two of Bonneville's St. Louis stations, 101.1 The River and 106.5
Smooth Jazz. Id. ¶ 3. In November, 2004 he was promoted to Vice
President Market Manager with responsibility for four St. Louis
stations including 106.5 FM. Id. ¶ 4.
35. With revenues declining with the 106.5 smooth jazz format,
Kijowski decided to reposition the station to a format with
appeal to both genders. Id. ¶ 7.
36. At the time, he was aware that Bonneville's sister station
in Phoenix, THE PEAK, was having great success with its new
format and slogan, "70's, 80's . . . WHATEVER WE WANT." Id. ¶
8. Kijowski began experimenting with THE PEAK format on a sister
station for several weekends using the slogan "Whatever We Want
Weekends." The listener response was positive. Id. ¶ 9. 37. Because of THE PEAK's success in Phoenix and the promising
results generated by the weekend tests of its format, it was
decided to rebrand 106.5 after THE PEAK and to adopt its slogan.
On April 10, 2005, the station was rebranded "106.5 THE ARCH"
with the slogan "70's, 80's, . . . WHATEVER WE WANT!" Id. ¶¶
10-11. The station's advertising seeks to promote its identity as
a St. Louis station as opposed to the generic JACK FM name used
by Plaintiffs. Id. ¶¶ 10-13.
38. THE ARCH's slogan never appears without its call letters
"THE ARCH" and its frequency 106.5. Therefore, consumers are
always presented with the station's frequency and call letters
whenever the slogan is used. Id. ¶ 19.
39. Only a small percentage of THE ARCH's audience of 182,000
listens via internet streaming. Id. ¶ 22.
40. THE ARCH has not received a single phone call, letter, or
other correspondence from any listener expressing any confusion
between THE ARCH and SparkNet's slogan or JACK FM station. Id.
41. Bonneville has spent at least $125,000 promoting THE ARCH
and plans to spend over $1,500,000in promoting the brand over the
next five years. Id. ¶¶ 26-27. It would be expensive for THE
ARCH to change its slogan. Id. ¶¶ 28-29.
3. San Francisco 95.7 MAX FM.
42. Bonneville has operated a radio station in San Francisco at
96.5 FM for a number of years. The station had always been
Bonneville's "problem child" due to consistently poor ratings. In
approximately 2003, the station adopted a country music format.
Unfortunately, the station did not reach its rating goals. Tweedle Dec. ¶ 9.
43. Charles Tweedle ("Tweedle") has worked for Bonneville as
Vice President and General Manger of KOIT 96.5 from 1985 until
1997, when Bonneville acquired two additional San Francisco
stations, at which time he was named Market President and KOIT
General Manager. In 2000, he was promoted to Senior Regional Vice
President of Bonneville San Francisco and St. Louis. In November
2004, he was reassigned to directly oversee the Bonneville San
Francisco stations and to work on special projects in addition to
his role as Senior Regional Vice President. Id. ¶¶ 5-6.
44. Tweedle made the decision to develop and launch a new
format on 95.7 by using funds set aside for undeveloped
properties. Id. ¶ 11.
45. Tweedle considered a number of formats and ultimately
decided to adapt Bonneville's successful THE PEAK format in
Phoenix to the San Francisco market. Id. ¶ 13. He was aware of
the JACK FM format that had been developed in Canada, but was not
familiar with its specific characteristics. Id. ¶ 14.
46. He chose the name MAX because it is easy to remember, it is
a name, and is an abbreviation of the word maximum connoting
"maximum music and maximum variety." Id. ¶ 20. He did not chose
the name MAX because of any alleged association with JACK FM.
There are a number of radio stations that have adopted the names
of natural persons. Id. ¶ 21.
47. In early May, 2005, he was informed that litigation was
pending by Plaintiffs against Bonneville. He therefore chose a
slogan that he believed was markedly different: "70's, 80's . . . WHATEVER WE FEEL LIKE!" Id. ¶¶ 22-23.
48. MAX FM has not received any communication indicating any
actual confusion with Plaintiffs' slogans or stations. Id. ¶
49. Bonneville has already spent over $700,000 to promote its
MAX FM brand and format. Id. ¶ 29.
4. Chicago 101.9 THE MIX.
50. Bonneville currently has three radio stations in Chicago,
including 101.9 FM known as THE MIX. Solk Dec. ¶¶ 3 and 9.
51. Greg Solk joined Bonneville in 1997. He is currently
responsible for all of Bonneville's Chicago properties in his
role as Chief Programmer. Id. ¶¶ 3-4. In early 2005, he
received additional responsibilities as National Program Director
Music for Bonneville Radio nationwide for 34 music-based radio
stations. Id. ¶ 4.
52. In adopting a new format and slogan for THE MIX, Solk was
primarily influenced by THE PEAK's success in Phoenix with its
slogan "70's, 80's . . . Whatever We Want." Id. ¶ 10.
53. THE MIX adopted the slogan "TODAY'S NEW MUSIC . . . AND
WHATEVER WE WANT" in March, 2005. Id. ¶ 13. Plaintiffs began
their JACK FM station and related slogan in Chicago on June 3,
2005 on 104.3 FM. Id. ¶ 13; Strassel Dec. ¶ 8.
54. The decision to adopt the new format and slogan for THE MIX
was prompted by the success of the format and slogan by THE PEAK
in Phoenix and not the JACK FM slogan or format. Id. ¶¶ 10-11.
55. THE MIX's slogan always appears with its call letters and
frequency. Id. ¶ 20. 56. THE MIX has not received any
communications indicating actual confusion with Plaintiffs'
slogan or the JACK FM format. Id. ¶ 21.
57. Fewer than 10% of THE MIX's listeners listen via the
internet and the overwhelming majority reside in the Chicago
area. Id. ¶¶ 23-25.
58. THE MIX is planning to spend over $500,000 to promote the
slogan through 2005.
E. INTERNET STREAMING AND TERRESTRIAL RADIO BROADCASTING.
59. In the past several years, internet streaming has become
increasingly popular. Hanson Dec. ¶ 8. Internet streaming is not
regulated by the Federal Communications Commission ("FCC"). Id.
60. Internet streaming differs from commercial radio
broadcasting in that there are high barriers to entry in
terrestrial radio broadcasting which generally require a
multi-million dollar investment for capital equipment, FCC
licensing, and other startup and operating expenses. Id. ¶¶
61. In contrast, it costs very little to establish and operate
an internet streaming service. All that is needed is a computer,
the appropriate software, and a little imagination. No FCC
license is required. Id. ¶ 13.
62. Thousands of terrestrial radio stations offer internet
streaming to their listeners as a supplemental service. Id. ¶
15. 63. The internet radio market and the terrestrial radio market
are radically different in terms of cost, regulation and market
players. Id. ¶ 18.
F. THE RELATIVE IMPORTANCE OF CALL LETTERS, RADIO FREQUENCY
64. Call letters and radio frequency are significantly more
important than slogans in identifying radio stations by
consumers. Krakowitz Dec. ¶¶ 3-17. Hevner Supp. Dec. ¶¶ 41-0. The
overwhelming majority of listeners identify radio stations by
frequency. Krakowitz Dec. ¶¶ 13-15. Fewer than 10% of listeners
identify radio stations by slogan. Id.
65. On June 14, 2005, Arbitron, Inc. and Edison Media Research
released a detailed report entitled "Adult Hits: An Early Look at
the Numbers Driving Radio's Newest Format" (the "Report"). Hevner
Supp. Dec. Ex. A. The Report examined eight radio stations using
an adult hit format including four JACK FM stations, three "Bob"
stations and THE PEAK. Hevner Supp. Dec. ¶ 5.
66. The Report reveals that 68% of listeners identify radio
stations by frequency, 35% identify them by call letters and only
19% identify radio stations by station name and/or slogan. Id.
¶ 6. Because the report lumps the two categories of station name
and slogan together it is necessary to examine the actual
Arbitron diary entries to break this category apart. An
examination of all 173 diary entries concerning THE PEAK
discloses that not one listener identified the station by its
slogan. Instead, every listener classified by the Report as
identifying 98.7 THE PEAK by station name and/or slogan did so by
station name rather than the slogan. Id. ¶ 8.
67. The JACK FM stations display JACK FM more prominently than
the Mark on their websites and promotional materials. Quinto Dec. ¶¶ 5 and
13, Ex. E.
G. USE OF SIMILAR SLOGANS BY THIRD PARTIES.
68. At least nine radio stations in the United States use
descriptive slogans as follows:
a. 97.3 "Joe-FM" in Saginaw, Minnesota which uses the
slogan "80's, 90's . . . whatever we want";
b. 106.9 KZY in Ocala/Gainesville, Florida which uses
the slogan "The 80's, 90's . . . whatever we want!";
c. 92.7 "My-FM" in Fargo, North Dakota which uses the
slogan "we play everything";
d. 103.3 "Ed-FM" in Albuquerque, New Mexico which
uses the slogan "we play stuff we like";
e. 103.9 "Ted-FM" in Columbus, Ohio which uses the
slogan "we play everything";
f. 103.9 "Bob-FM" in Spokane, Washington which uses
the slogan "80's . . . 90's . . . & Whatever";
g. 105.1 "Mike-FM" in Santa Maria, California which
uses the slogan "playing anything!";
h. 95.7 "Ben-FM" in Philadelphia, Pennsylvania which
uses the slogan "Playing anything we feel like"; and
i. 92.5 "The Chief" in Champaign/Urbana, Illinois
which uses the slogan "The Chief Plays Whatever The
Id. ¶ 13 and Ex. C.
II. TRIAL ON THE PAPERS
69. This case comes before the Court by means of a trial on the
papers in which the parties have submitted briefs and supporting
exhibits which constitute the record in this case. See Sullivan
v. Bornemann, 384 F.3d 372, 375 (7th Cir. 2004) (noting that a
district court decision, rendered after reviewing the stipulated
facts of the parties, was more akin to a bench trial than summary judgment, and was thus governed by
Federal Rule of Civil Procedure 52(a)); Hess v. Hartford Life &
Accident Ins. Co., 274 F.3d 456, 461 (7th Cir. 2001) (entering a
judgment based upon a stipulation of facts that made up an
administrative record was treated as a bench trial governed by
Fed.R.Civ.P. 52(a)); Brach's Confections, Inc. v. McDougall,
320 F.Supp. 2d 726 (N.D. Ill. 2004) (conducting a trial on the
papers in an ERISA case); Morton Denlow, Trial on the Papers: An
Alternative to Cross-Motions for Summary Judgment, Fed. Lawyer,
Aug. 1999, at 30. The parties agreed to proceed in this manner
and to waive their right to present oral testimony and they have
waived their right to a jury. The parties agree that the Court
may make findings to decide contested issues of fact. The parties
agree that the Court may consider the declarations and given them
such weight as the Court deems appropriate based on the Court's
review after considering the arguments of counsel. The trial on
the papers is intended to decide only the issue of liability in
connection with Plaintiffs' Second Amended Complaint.
III. BURDEN OF PROOF ON LIKELIHOOD OF CONFUSION
70. The Lanham Act provides national protection of trademarks
in order to secure to the owner of the marks the goodwill of its
business and to protect the ability of customers to distinguish
among competing businesses. Park `N Fly, Inc. v. Dollar Park and
Fly, Inc., 469 U.S. 189, 198 (1985). National protection of
trademarks is desirable because trademarks foster competition and
the maintenance of quality by securing to a company the benefits
of a good reputation. Id.
71. In order to prevail under their federal trademark
infringement claim (count I), federal unfair competition claim (count II), trademark dilution
claim (count III), state common law unfair competition claim
(count IV), and Illinois Consumer Fraud and Deceptive Business
Practices Act claim (count V), Plaintiffs must prove at least two
facts by a preponderance of the evidence: 1) their mark is
protectable; and 2) Bonneville's use of its competing slogans is
likely to cause confusion among consumers. CAE, Inc. v. Clean
Air Eng'g, 267 F.3d 660, 673-74 (7th Cir. 2001); Eli Lilly &
Co., v. Natural Answers, Inc., 233 F.3d 456, 461 (7th Cir.
2000). In this case, Plaintiffs hold a federal registration for
the MARK. There is a dispute regarding the prior use of
Bonneville's marks and whether the Mark is protectable. Because
the Court can decide this portion of the case without deciding
the issue of validity, the Court will reserve ruling on the issue
of validity until it considers Bonneville's counterclaim for
service mark cancellation. Therefore, the principal issue is
whether consumers are likely to be confused about the identity or
source of the radio stations in the marketplace. Reed-Union
Corporation v. Turtle Wax, Inc., 77 F.3d 909, 911-12 (7th Cir.
72. The Court's ultimate conclusion on the likelihood of
confusion is a question of fact. CAE, Inc., 267 F.3d at 677.
The plaintiff must prove a "likelihood" of confusion, not a mere
"possibility" of confusion. See Eli Lilly & Company v. Natural
Answers, Inc., 233 F.3d 456, 461-62 (7th Cir. 2000); August
Storck K.G. v. Nabisco, Inc., 59 F.3d 616, 619 (7th Cir. 1995)
(finding no preliminary injunction should issue because there was
only a possibility of consumer confusion). Because a trademark is
an identifier rather than a property "right," the use of a
competitor's mark that does not cause confusion as to source is permissible. Libman Co. v. Vining Indus., Inc.,
69 F.3d 1360, 1362 (7th Cir. 1995); see 15 U.S.C. § 1114(1)(b). The
likelihood of confusion must be determined with reference to the
realities of consumer behavior in the relevant market. Rust
Env't & Infrastructures Inc. v. Teunissen, 131 F.3d 1210, 1216
(7th Cir. 1997). Plaintiffs must prove that such likelihood of
confusion would occur to a significant number of consumers and
not merely in an isolated situation. CAE, Inc.,
267 F.3d at 677; Door Systems, Inc. v. Pro-Line Door Systems, Inc.,
83 F.3d 169, 173 (7th Cir. 1996) (affirming summary judgment for
defendant finding "we think it is wholly unlikely that any
significant number of consumers would be misled. And this is the
test."); Libman Co. v. Vining Industries, Inc., 69 F.3d 1360,
1364 (7th Cir. 1995) (holding no trademark infringement where no
evidence that a "significant fraction" of the relevant market
could have been misled).
73. In evaluating the likelihood of consumer confusion for this
claim of trademark infringement, the factors to be considered
a. the degree of similarity between the marks in
appearance and suggestion;
b. the similarity of the products for which the name
c. the area and manner of concurrent use;
d. the degree of care likely to be exercised by
e. the strength of the complainant's mark;
f. any evidence of actual confusion; and
g. an intent on the part of the alleged infringer to
palm off its products as those of another. Ty Inc. v. Jones Group, Inc., 237 F.3d 891, 897
(7th Cir. 2001). None of these factors by itself is
dispositive of the likelihood of confusion question;
different factors will weigh more heavily from case
to case, depending upon the particular facts and
circumstances involved. Id. at 898. Even if the
majority of the factors tilt the scale in favor of
one side, the "weight and totality of the most
important factors in each case will ultimately be
determinative of the likelihood of confusion." Id.
Often, the three most important factors are the
similarity of the marks, the intent of the defendant,
and the evidence of actual confusion." Id.
IV. APPLICATION OF THE LIKELIHOOD OF CONFUSION FACTORS TO THE
A. THE MARKS ARE NOT SIMILAR IN APPEARANCE AND SUGGESTION
The first factor is the similarity in appearance and
suggestion. The Mark and Bonneville's slogans are not similar in
appearance and suggestion for several important reasons. First,
the Mark and Bonneville's slogans are always used in conjunction
with the radio station's call letters and station frequency.
Plaintiffs' Mark is used in connection with the JACK FM radio
brand and the specific frequency, for example 104.3 JACK FM
PLAYING WHAT WE WANT. The Mark is used secondarily to promoting
the JACK FM brand and the frequency on which the station
broadcasts. The reason for this is simple. If you want listeners
to tune in, they must be able to locate the station. Therefore,
Plaintiffs always promote the radio frequency when they use the
MARK. Second, Bonneville's slogans contain additional information
not contained in Plaintiffs' Mark, "70's, 80's . . . WHATEVER WE
WANT!", "70's, 80's . . . WHATEVER WE FEEL LIKE!" and "TODAY'S NEW MUSIC . . . and WHATEVER WE WANT." These slogans are
more specific in describing the music era than Plaintiffs'
"PLAYING WHAT WE WANT®" Mark. While on JACK FM one might expect
to hear classical and folk music in addition to rock,
Bonneville's slogan is more limiting in its description of the
type of music the listener should expect to hear.
74. The Court must consider similarities and dissimilarities
between the marks in their entireties and in the light of what
occurs in the marketplace, not in the courtroom. James Burroughs
Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266, 275 (7th Cir.
1976). When viewed in this light, it is clear that Bonneville's
slogans are not similar in appearance and suggestion because they
are always used in conjunction with the station's call letters
and frequency and because they contain descriptive modifiers
"70's, 80's," or "TODAY'S NEW MUSIC", which Plaintiffs choose to
ignore, but which the Court must consider.
B. THE PRODUCTS ARE SOMEWHAT SIMILAR
75. Although Plaintiffs and Bonneville both offer music on the
radio, there are significant differences in their formats. A
comparison of Bonneville's 98.7 THE PEAK format with JACK FM
reveals the following differences. THE PEAK:
(a) has distinctive radio personalities, including
John O'Hurley of Seinfeld fame as "Mr. Peakerman";
(b) has male and female local disc jockeys;
(c) conducts research relating to the station's
audience and customizes the station accordingly; (d) hosts local competitions and contests;
(e) provides weather information;
(f) provides traffic information;
(g) regularly announces special events occurring with
(h) presents the news; and
(i) features discussions of topics of concern to
Hevner Dec. ¶ 21.
76. In contrast, the JACK FM format is generally characterized
by the following:
(a) no use of radio personalities;
(b) no disc jockeys, but rather pre-recorded
announcements over and over;
(c) no research for the purpose of customizing the
format to local markets;
(d) no weather information;
(e) no traffic information;
(f) no news;
(g) no announcements of special events in the local
(h) no discussions or on-air commentary; and
(i) the same name i.e., "Jack FM" across all
Hevner Dec. ¶ 22. Similar differences exist between 106.5 THE
ARCH and JACK FM. Kijowski Dec. ¶¶ 14-16. Similar differences
exist between 101.9 THE MIX and the JACK FM format. Solk Dec. ¶¶
15-16. Similar differences also exist between 95.7 MAX FM and the
JACK FM format. Tweedle Dec. ¶¶ 16-18.
77. The Court's inquiry under this factor in comparing the two
products is not whether they are interchangeable, but whether "the parties'
products are the kind the public might very well attribute to a
single source." International Kennel Club of Chicago, Inc. v.
Mighty Star, Inc., 846 F.2d 1079, 1089 (7th Cir. 1988). It is
possible that a listener of a local radio station could perceive
an internet radio station as coming from the same source.
However, because both parties take care to identify their brands
as JACK FM, THE PEAK, THE ARCH, THE MIX, and MAX FM, this factor
does not weigh in Plaintiffs' favor.
C. THE AREA AND MANNER OF CONCURRENT USE IS DIFFERENT
78. In examining whether the area and manner of concurrent use
is likely to cause confusion, the issue is "whether there is a
relationship in use, promotion, distribution, or sales between
the goods or services of the parties." Ty Inc.,
237 F.3d at 900. Several relevant factors are important, including 1) the
relative geographical distribution areas, see Rust Env't &
Infrastructure, Inc. v. Teunissen, 131 F.3d 1210, 1217 (7th Cir.
1997); 2) whether there exists evidence of direct competition
between the products, see Smith Fiberglass Prods., Inc. v.
Ameron, Inc., 7 F.3d 1327, 1330 (7th Cir. 1993); and 3) whether
the product is sold through the same marketing channels, see
Nike, Inc., v. "Just Did It" Enters., 6 F.3d 1225, 1230 (7th
Cir. 1993). Ty Inc., 237 F.3d at 900.
79. Plaintiffs' JACK FM stations have not operated in Phoenix,
San Francisco or St. Louis. Horowitz Dec. ¶ 21.
80. Plaintiffs' argument that its broadcasts are available over
the internet does not prove that consumers from other cities
actually tune in. Plaintiffs have failed to prove actual
listeners to its JACK FM stations in Phoenix, San Francisco or
St. Louis or the quantity of those listeners. Plaintiffs have failed to prove concurrent use
in those cities.
81. Only a very small percentage of Bonneville's total audience
in Chicago, Phoenix, San Francisco and St. Louis tune into
stations through the internet. Hevner Dec. ¶¶ 27-28. Therefore,
it is highly unlikely that any significant number of consumers in
these four cities will confuse a Bonneville station for a JACK FM
station or associate Bonneville's slogans with Plaintiffs' Mark.
D. THE CONSUMERS ARE LIKELY TO EXERCISE CARE IN SELECTING
THEIR RADIO STATION
82. The Plaintiffs have failed to prove that consumers are not
likely to exercise care in selecting their radio station. Because
Plaintiffs' print ads use the MARK in conjunction with the JACK
FM brand and the station's frequency, consumers seeking to hear
the JACK FM brand of music will easily identify the source.
Furthermore, those scanning their dial are much more likely to
decide whether to remain on a particular station by the music
they hear, rather than a slogan or Plaintiffs' Mark. Plaintiffs
simply have not proven that a listener who happens to hear
Bonneville's "70's, 80's . . . WHATEVER WE WANT!" slogan will be
so turned off by the station that she will not listen to another
JACK FM station or that she will steer away from JACK FM. This is
a far fetched theory based on mere speculation.
E. PLAINTIFFS HAVE FAILED TO PROVE THE STRENGTH OF THEIR MARK
IN THE MARKETPLACE.
83. The term "strength" as applied to trademarks refers to the
distinctiveness of the mark, or more precisely, its tendency to
identify the goods sold under the mark as emanating from a
particular source. Eli Lilly, 233 F.3d at 464.
84. Plaintiffs have failed to prove that they have a strong
mark such that a radio listener is likely to be confused as to the source of the music
or station. Plaintiffs' witnesses all include the different
components of the JACK FM brand (i.e., the name "JACK FM", the
frequencies, and the slogan, "Playing What We Want") when
discussing the strength of the Mark. The Plaintiffs have failed
to provide the Court with survey or other evidence to demonstrate
a likelihood of confusion. In fact, Bonneville's evidence that
over 80% of consumers identify a station by its frequency and
less than 10% identify a station by its slogan is persuasive.
Krakowitz Dec. ¶¶ 13-16.
85. Even a JACK FM licensee acknowledges that it is highly
unlikely that Bonneville's use of its slogans will cause
confusion because the slogans are always featured in conjunction
with the relevant station's name and frequency. Simmons Dec. ¶ 5.
86. The fact that Plaintiffs have spent money on advertising
does not answer the question of whether the advertising was
successful in identifying the Mark as a source as opposed to
identifying JACK FM and the station's frequency as the source.
87. Plaintiffs' Mark is hardly unique. The Mark is neither
invented nor arbitrary. Instead, it represents a collection of
commonly used words: "playing" "what" "we" "want." Used together
as a mark, these words mean to choose their own music. This
common meaning of the words renders such mark weak and greatly
limits its scope of protection. M-F-G Corp. v. EMRA Corp.,
817 F.2d 410, 411 (7th Cir. 1987) (noting that a plaintiff cannot
exclusively appropriate "part of the language that it has neither
created nor enriched" nor deny another party "a natural
description for its products"). Bonneville's slogans constitute a
natural description for its music using basic English words. F. THERE WAS NO EVIDENCE OF ACTUAL CONFUSION.
88. In considering this factor, the Court must look to evidence
of actual confusion, not a mere risk of confusion. Eli Lilly,
233 F.3d at 465.
89. There was no evidence of actual confusion. Hevner Dec. ¶
28; Horowitz Dec. ¶ 20; Kijowski Dec. ¶ 21; Solk Dec. ¶ 21. There
was much self-serving speculation by Plaintiffs. Barnett Dec. ¶
12; Burns Dec. ¶¶ 13-14; Hague Dec. ¶ 9; and Johnson Dec. ¶
G. BONNEVILLE DID NOT INTEND TO PALM OFF ITS STATIONS AS THAT
90. The final factor is Bonneville's intent. Plaintiffs have
failed to prove that Bonneville was attempting to trade on
Plaintiffs' goodwill or to mislead the public into believing that
its radio stations were in some way affiliated with Plaintiffs.
Bonneville acted in good faith to develop a competitive product
based upon its own independent research and the success of THE
PEAK in Phoenix. Plaintiffs' format, including its broad
playlist, is not subject to trademark protection any more than
the myriad of radio music formats such as: smooth jazz, country,
adult standards, hot adult contemporary, top 40, young country,
alternative rock, and mainstream. Bonneville is entitled to
describe its music through its slogan. It has properly done so.
Bonneville identified its stations by their call letters and
frequency when using the slogans. It did not act with intent to
confuse the public. M.B.H. Enterprises, Inc. v. WOKY, Inc.,
633 F.2d 50, 54 (7th Cir. 1980) (Party acted in good faith when
identifying itself by call letter and frequency when using
slogan). H. PLAINTIFFS HAVE FAILED TO PROVE A LIKELIHOOD OF CONFUSION.
91. As explained in McCarthy on Trademarks and Unfair
Competition § 23.63 (4th ed. 2005), "There are at least three
evidentiary routes to prove a likelihood of confusion: 1. survey
evidence; 2. evidence of actual confusion; and/or 3. argument
based on an inference arising from a judicial comparison of the
conflicting marks themselves and the context of their use in the
marketplace." The Court has weighed all of the evidence and finds
that Plaintiffs have failed to meet their burden of proving a
likelihood of confusion. No survey evidence. No direct evidence.
No evidence as to the strength of the Mark's brand name awareness
separate and apart from the use of the JACK FM brand and station
frequency. The Court finds no reasonable inference can be made
that confusion in the market will "likely" occur. Possible
confusion? Only a slight and far fetched possibility. The Court
has no doubt that Plaintiffs' able counsel can concoct a scenario
by which confusion possibly could occur. However, possibilities
and proof are two different things. There has been a failure of
proof and therefore Plaintiffs cannot prevail.
92. Furthermore, even if Plaintiffs could prove a "likelihood
of confusion" with competent evidence, Plaintiffs did not
demonstrate that such confusion would affect a "substantial" or
"significant" number of radio listeners in the marketplace.
Plaintiffs are not operational with stations in St. Louis, San
Francisco or Phoenix, and they have provided no evidence
regarding internet listenership to out-of-state stations in these
cities. Similarly, they were second to market in Chicago and have
shown no actual or likely confusion between its "104.3 JACK FM
PLAYING WHAT WE WANT" listeners and the "101.9 THE MIX TODAY'S NEW MUSIC . . . AND WHATEVER WE WANT" listeners.
Plaintiffs' case is rife with speculation and self-serving
testimony but little proof. As the Seventh Circuit has stated:
"[A] finding of likely confusion can no more be based on pure
conjecture or a far fetching narrative alone than any other
finding on an issue on which the proponent bears the burden of
proof." Libman Co. v. Vining Industries, Inc., 69 F.3d 1360,
1363 (7th Cir. 1995).
V. PLAINTIFFS' ANTI-DILUTION CLAIM
93. There are four elements to a Trademark Dilution Claim: 1)
the Mark is famous; 2) Bonneville adopted their slogans after the
Mark became famous; 3) Bonneville's use of its slogans causes
dilution of the Mark; and 4) Bonneville's use of its slogans is
commercial and in commerce. 15 U.S.C. § 1125(c)(1); Eli Lilly,
233 F.3d at 466. The likelihood of confusion and whether
Bonneville competes with Plaintiffs are irrelevant. See
15 U.S.C. § 1127; Eli Lilly, 233 F.3d at 466.
94. Plaintiffs have failed to prove either a sufficiently
famous mark or that its Mark is being diluted. Therefore,
Plaintiffs' anti-dilution claim fails.
VI. PLAINTIFFS' STATE LAW CLAIMS
95. Having failed to prove a likelihood of confusion,
Plaintiffs cannot recover under its state unfair competition
claim (count IV), or the Illinois Uniform Deceptive Trade
Practices Act (count V). See McGraw-Edison Co. v. Walt Disney
Productions, 787 F.2d 1163, 1174 (7th Cir. 1986) ("[L]ikelihood
of confusion has the same meaning in unfair competition cases
under the Deceptive Trade Practices Act as it has in traditional
infringement cases."); AHP Subsidiary Holding Co. v. Stuart Hale
Co., 1 F.3d 611, 619 (7th Cir. 1993) ("The state unfair competition claim is analyzed under
the likelihood of confusion standard and thus mirrors our
Plaintiffs and Bonneville compete in certain markets for music
radio listeners. Plaintiffs have promoted the JACK FM brand and
have used the slogan PLAYING WHAT WE WANT® in connection with its
JACK FM brand. Plaintiffs acknowledge that they do not seek to
prevent Bonneville from copying its format, but only to prevent
Bonneville from infringing its Mark and competing unfairly.
Bonneville denies that it is copying the JACK FM format, which it
perceives to be inferior to its own music radio formats.
Bonneville does not infringe Plaintiffs' Mark and does not
unfairly compete with Plaintiffs because its slogans fairly
describe the music it plays and its slogans are used in
connection with its own radio frequencies and station names.
Plaintiffs have failed to meet their burden of proof.
Plaintiffs have failed to prove that consumers are likely to be
confused about the identity or source of the radio stations in
the marketplace. This battle is better fought in the marketplace
than in court. Trademark protection should not interfere with the
traditional policies of a competitive market because the public
benefits from competition. If every radio station that adopts a
slogan containing one or more overlapping words, which describes
the music they play, is brought into court, only the lawyers will
benefit. Plaintiffs are not entitled to a permanent injunction or
any other relief. Pursuant to the foregoing findings of fact and conclusions of
law, the Court enters judgment in favor of defendant, Bonneville
International Corporation, and against Plaintiffs, SparkNet
Communications, L.P., and SparkNet Holdings, Inc., on all counts
of Plaintiffs' Second Amended Complaint.
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