M. B. H. Enterprises, Inc. v. WOKY, Inc.
| Citation | 633 F.2d 50 |
| Decision Date | 15 October 1980 |
| Docket Number | No. 80-1210,80-1210 |
| Parties | M. B. H. ENTERPRISES, INC., Plaintiff-Appellant, v. WOKY, INC., Defendant-Appellee. |
| Court | United States Courts of Appeals. United States Court of Appeals (7th Circuit) |
Gregg I. Anderson, Denver, Colo., for plaintiff-appellant.
Andrew O. Riteris, Milwaukee, Wis., for defendant-appellee.
Before PELL and BAUER, Circuit Judges, and CROWLEY, District Judge. *
Stated simply, the issue here is whether plaintiff M. B. H. Enterprises, Inc. ("MBH"), may, by virtue of its registration with the United States Patent and Trademark Office of the words "I LOVE YOU" as a service mark for "entertainment services in the nature of radio programs and personal appearances by a disc jockey," prevent defendant Milwaukee radio station WOKY, Inc., from broadcasting and pasting on billboards and auto bumpers that it "loves" the City of Milwaukee, Wisconsin. The issue was submitted to the district court on MBH's motion for a preliminary injunction and WOKY's motion for summary judgment. Denying the former and granting the latter, the court ruled that, under 15 U.S.C. § 1115(b)(4), WOKY was entitled to judgment in its favor because it had in good faith merely described its radio services and had not attempted to identify them or to confuse them with those of another station. We affirm.
MBH is a Colorado corporation that has for some time marketed to radio stations a promotional campaign in which client stations profess their love for their locality. The "heart" of the campaign, MBH avows, is the federally registered radio entertainment service mark "I LOVE YOU". 1 Taking Denver, Colorado, where the promotion was first used, as an example, the MBH campaign proceeds as follows: MBH licenses a Denver radio station to employ the MBH service mark by broadcasting the words "I LOVE YOU DENVER." The station's message is then reinforced by repetition in television, billboard, newspaper, and bumper sticker advertisements. MBH also arranges for a local ratailer to sell T-shirts and glassware supplied to it by MBH and bearing the words "I LOVE YOU DENVER." The retailer advertises itself over the client station as the source of "official" "I LOVE YOU DENVER" T-shirts and glassware. From the sale of these objects MBH derives the bulk of its profit. Since the promotion was first used in Denver in 1970, MBH has sold it to over thirty radio stations in cities including Boston, Massachusetts; Dallas, Texas; Pittsburgh, Pennsylvania; Tulsa, Oklahoma; and Milwaukee, Wisconsin.
In December of 1976, MBH licensed the promotion to Milwaukee radio station WISN. WISN proceeded to broadcast approximately 180 times a week the words "I LOVE YOU MILWAUKEE." The slogan was also carried on bus placards and formed the theme for an "art contest" co-sponsored by the station and a Milwaukee museum. A local Gimbels store carried the T-shirts and glassware, which apparently sold well. When WISN renewed the license in 1978, plans were in the works for new local and national promotional efforts centered on the "I LOVE YOU" theme. Also contemplated were "jingle packages" that would, presumably, have sung WISN's praises of Milwaukee. Sometime prior to June of 1979, we are not informed precisely when, WISN cancelled the agreement with MBH.
During or prior to March of 1979, WOKY began its own campaign to tell Milwaukee of its love. Although aware of aspects of the WISN campaign and MBH "I LOVE YOU" efforts in other cities, WOKY apparently decided, on advice of counsel, that it was entitled to say in an organized and persistent manner that it "loved" Milwaukee. There is some suggestion in the record that WOKY personnel believed that a Milwaukee radio station was not morally obliged to pay a Colorado corporation for the right to say that it loved Milwaukee. In any event, WOKY adopted three verbal formulations of its affection for its city and displayed them on billboards and bumper stickers, broadcasted them, and aired them in television advertisements. The simplest was "WOKY LOVES MILWAUKEE." As a variant, the message, "I LOVE MILWAUKEE!" was disseminated, signed by WOKY's call letters. Finally, WOKY's disc jockeys declared their feelings in slogans that took the form, for example, of "ROBB EDWARDS LOVES MILWAUKEE." All the above advertisements carried WOKY's call letters and prominently displayed its frequency, "Radio 92." WOKY sold no T-shirts, glassware, or other objects; the bumper stickers were apparently given to the public without charge.
In the district court, MBH sought both an injunction and damages on trademark infringement, trademark disparagement, and unfair competition theories. The court granted WOKY's motion for summary judgment on all counts, reasoning that the infringement action was defeated by the absence of any genuine issue of fact concerning WOKY's entitlement to a "fair use" defense under 15 U.S.C. § 1115(b)(4), and further reasoning that the unfair competition count failed because the uncontroverted facts demonstrated no likelihood of public confusion due to the similarities between WOKY's slogans and the MBH/WISN campaign. The court apparently viewed the disparagement count as turning on the disposition of the infringement count.
The primary focus of the district court's reasoning was § 1115(b)(4), which provides, in pertinent part, that it shall be a defense to an infringement action to demonstrate
That the use of the ... term, or device charged to be an infringement is a use, otherwise than as a trade or service mark, ... of a term or device which is descriptive of and used fairly and in good faith only to describe to users the goods or services of such party .... 2
In applying the defense to the facts at bar, the court found, first, that WOKY had not used its slogans as service marks because the call letters "WOKY," and not the slogans, were used by WOKY to identify itself to the public. Second, the court found that WOKY had acted fairly and in good faith merely to describe its services when it disseminated the slogans because its inclusion of its call letters in the slogans demonstrated that it had no desire to confuse or mislead the public as to the origin of its broadcasts. Finally, the court found that WOKY's slogans merely described its services by attributing to them the quality of "civic involvement," an attribution, the court said, WOKY was entitled to make.
On appeal, MBH argues primarily that material issues of disputed fact exist with respect to each of the above rulings. 3 MBH first argues that WOKY used its slogans as service marks, and supports its contention by noting that WOKY submitted its slogans to Arbitron, a radio audience measuring service, to aid Arbitron in determining whether members of the public that it polled had listened to WOKY. WISN apparently also submitted its "I LOVE YOU MILWAUKEE" slogan to Arbitron for a similar purpose. Second, MBH contends that WOKY did not act in good faith because it knew of WISN's promotion, it sought advice of counsel before it disseminated its slogans, and it allegedly did not express its love for Milwaukee "without thought of commercial gain." Rather, MBH maintains that WOKY sought to plagiarize MBH's successful campaign and to persuade the public that WOKY, and not WISN, "is the true radio station identified as the lover of Milwaukee." Finally, MBH contends that WOKY's slogans are not descriptive both because they are unnecessary to the description of radio services and because they are "arbitrary, fanciful, and distinctive" when applied to a radio station. Asserting that WOKY's slogans can hardly be viewed as the result of WOKY's "genuine heartfelt affection," MBH opines,
If WOKY really loved Milwaukee and wanted to say so, why did they attach "WOKY" to all their statements? True love does not require the identity of the lover.
Nothing of record supports this last observation.
WOKY's response to the foregoing is that it is a "radio station which indeed loves Milwaukee and says so." Affidavits by WOKY personnel to this effect are of record. In essence, WOKY's position on appeal is that the district court's ruling on the basis of the "fair use" defense is correct, but that, in any event, its slogans are protected speech under the First Amendment. This last contention was raised in the trial court but was not reached.
Having chronicled the jousts of the knights who seek the hand of the lady, and keeping in mind the judgment Shakespeare's Rosalind passed upon ideals of high romance, 4 we first state what is not at issue here. The validity of MBH's mark, except so far as the Constitution is involved, is not at issue. WOKY has not contested the validity of the mark under the statute. Independent questions of unfair competition and trademark disparagement are also not at issue. MBH has argued only the infringement question before this Court, apparently conceding that the pendent unfair competition count and the disparagement count may not succeed if the infringement count fails. 5 Accordingly, the only issue we must address is whether the district court erroneously held that no genuine issue of material fact existed with respect to each of the following propositions: First, that WOKY's slogans were not service marks; second, that WOKY employed them in good faith merely to describe its services; and, third, that the slogans were in fact descriptive of WOKY's services. Before turning to these issues, we note that the material facts of record concerning each issue are undisputed. We further observe that the case was submitted to the district court on MBH's motion for preliminary injunction and WOKY's motion for summary judgment on the present record by agreement of both parties. Accordingly, we need only inquire whether the district court erred as a matter of law in its application of the "fair use" defense to the undisputed facts of record.
As will become apparent, whether WOKY's...
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