Ray Commc'ns, Inc. v. Clear Channel Commc'ns, Inc.

• Decision Date: 08 March 2012
• Docket Number: No. 11–1050.,11–1050.
• Citation: 673 F.3d 294,101 U.S.P.Q.2d 2027
• Parties: RAY COMMUNICATIONS, INCORPORATED, Plaintiff–Appellant, v. CLEAR CHANNEL COMMUNICATIONS, INCORPORATED; Clear Channel Broadcasting, Incorporated; Katz Media Group, Incorporated; Katz Communications, Incorporated, Defendants–Appellees.
• Court: U.S. Court of Appeals — Fourth Circuit

101 U.S.P.Q.2d 2027
673 F.3d 294

RAY COMMUNICATIONS, INCORPORATED, Plaintiff–Appellant,
v.
CLEAR CHANNEL COMMUNICATIONS, INCORPORATED; Clear Channel Broadcasting, Incorporated; Katz Media Group, Incorporated; Katz Communications, Incorporated, Defendants–Appellees.

No. 11–1050.

United States Court of Appeals, Fourth Circuit.

Argued: Dec. 7, 2011.Decided: March 8, 2012.

[673 F.3d 296]

ARGUED: Michael Steven Culver, Millen, White, Zelano & Branigan, PC, Arlington, Virginia, for Appellant. Bart Wescott Huffman, Cox Smith Matthews Incorporated, San Antonio, Texas, for Appellees. ON BRIEF: Marissa Helm, Cox Smith Matthews Incorporated, San Antonio, Texas, for Appellees.

Before KING, GREGORY, and DAVIS, Circuit Judges.

[673 F.3d 297]

Vacated and remanded by published opinion. Judge DAVIS wrote the opinion, in which Judge KING and Judge GREGORY joined.

OPINION DAVIS, Circuit Judge:

Plaintiff–Appellant Ray Communications, Inc. (“RCI”) filed this action alleging trademark infringement under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1); federal unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); and unfair competition and deceptive trade practices under the North Carolina Unfair and Deceptive Trade Practices Act (“UDTPA”), N.C. Gen.Stat. § 75–1.1, thereby challenging the use of its federally-registered AGRINET trademark by Defendants–Appellees Clear Channel Communications, Inc., Clear Channel Broadcasting, Inc., Katz Media Group, Inc., and Katz Communications, Inc. (collectively “Clear Channel” or “Appellees”). RCI appeals the district court's order granting summary judgment to Clear Channel on its affirmative defense of laches. Ray Commc'ns, Inc. v. Clear Channel Commc'ns, 760 F.Supp.2d 544 (E.D.N.C.2010).

Upon our de novo review of the summary judgment record,¹ we conclude that the district court erred in determining that Clear Channel established its defense as a matter of law and, separately, in failing to consider whether laches bars RCI's claim for prospective injunctive relief. Accordingly, we vacate the judgment and remand this action for further proceedings consistent with this opinion.

I.

RCI is a radio network owned by William (“Bill”) and Lisa Ray, the company's corporate representatives in this suit. RCI owns the federal registration for the service mark AGRINET. The U.S. Patent and Trademark Office initially issued the AGRINET registration to Charlottesville Broadcasting Corporation (“CBC”) in 1972 for “educational services rendered through the medium of radio; namely, a program of interest to farmers.” J.A. 37. Bill Ray began his career in radio programming as a farm broadcaster with CBC in 1966. CBC licensed the AGRINET mark to Bill Ray in 1976 and granted him a full assignment of rights to the mark in 1986. RCI maintains that it has used, and continues to use, the AGRINET mark to identify itself as the source of agricultural news radio programming.

Clear Channel is also a radio network. In the late 1970s and early 1980s, Clear Channel's predecessors began using the terms Oklahoma Agrinet, Tennessee Agrinet, and Kentucky Agrinet, without RCI's permission, to identify their agricultural news programming on the air and in marketing.² Clear Channel has also used the names Agrinet of the High Plains and Alabama Agrinet to identify its agricultural news networks in Texas and Alabama, respectively. It is undisputed that RCI was aware of these uses.

[673 F.3d 298]

RCI contends that it permitted certain uses of the AGRINET mark by Clear Channel's predecessors. For instance, RCI claims that it gave several oral licenses without consideration to individual employees of Clear Channel's predecessor companies sometime before 1986, including Jimmy “Krit” Stubblefield (Kentucky Agrinet), Dan Gordon (Tennessee Agrinet), and Ron Hays (Oklahoma Agrinet). RCI asserts that it terminated the license to Stubblefield in 1992, terminated the license to Gordon in 1997, and terminated the license to Hays in 2006. RCI maintains that it has never licensed or otherwise permitted Clear Channel to use Alabama Agrinet or Agrinet of the High Plains. Of the marks RCI claims to have permitted Clear Channel's predecessors to use, Clear Channel continues to use only Oklahoma Agrinet and Tennessee Agrinet. ³ Clear Channel asserts that neither it nor its predecessors have ever had any agreement with RCI regarding use of the AGRINET mark.

On June 20, 2008, RCI filed the instant trademark infringement action against Clear Channel Communications, Inc., Clear Channel Broadcasting, Inc., and Katz Media Group, Inc., in the Eastern District of North Carolina. RCI sought injunctive and monetary relief under the Lanham Act, 15 U.S.C. §§ 1114(1) and 1125(a), and the UDTPA, N.C. Gen.Stat. § 75–1.1. RCI subsequently amended its complaint to join Katz Communications, Inc. Clear Channel asserted several affirmative defenses, including laches, acquiescence, and abandonment. After the close of discovery, Clear Channel moved for summary judgment on its affirmative defenses and, in the alternative, for partial summary judgment on RCI's claim for damages. With respect to its laches defense, Clear Channel argued that RCI knew of the allegedly infringing use of the AGRINET mark by Appellees, but unreasonably and inexcusably waited more than 30 years to enforce its rights, resulting in undue prejudice to them.

The district court granted Clear Channel's motion for summary judgment as to its affirmative defense of laches, entered judgment in favor of Clear Channel, and dismissed as moot several outstanding motions. The district court concluded that Clear Channel had established its affirmative defense of laches as a matter of law and that no reasonable jury could find in favor of RCI, but it did not separately address whether application of laches barred both damages and injunctive relief. The district court also did not address Clear Channel's affirmative defenses of acquiescence or abandonment, nor did it consider Clear Channel's motion for partial summary judgment on RCI's claim for monetary damages. RCI timely filed this appeal.

II.

Preliminarily, we note that on appeal RCI claims infringement only as to Clear Channel's continued use of Oklahoma Agrinet, Tennessee Agrinet, and Agrinet of the High Plains. With respect to these

[673 F.3d 299]

particular uses of its federally-registered AGRINET trademark, RCI first contends that the district court erred in granting summary judgment on the basis of laches because it improperly resolved genuine disputes of material fact and failed to draw all reasonable inferences in favor of RCI, the non-moving party. RCI further maintains that the district court erred in applying laches to preclude both injunctive and monetary relief. We consider these issues in turn.

A.

At the outset, however, we clarify the two-part standard applicable to our review of a laches determination made on summary judgment. As is generally the case, we review the district court's grant of summary judgment de novo. See PBM Prods., L.L.C. v. Mead Johnson Nutrition Co., 639 F.3d 111, 119 (4th Cir.2011). Summary judgment is appropriate when there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(a). On the other hand, we review the district court's application of the equitable doctrine of laches for abuse of discretion. PBM Prods., L.L.C., 639 F.3d at 119. The court “has abused its discretion if its decision is guided by erroneous legal principles or rests upon a clearly erroneous factual finding.” Brown v. Nucor Corp., 576 F.3d 149, 161 (4th Cir.2009).

Accordingly, where a district court has granted summary judgment on the basis of laches, we review the sufficiency of the evidence in support of or in opposition to summary judgment de novo, but we review the district court's application of laches elements to the undisputed material facts for abuse of discretion. See Pro Football, Inc. v. Harjo, 565 F.3d 880, 882 (D.C.Cir.2009) (internal citations omitted); Chattanoga Mfg. v. Nike, Inc., 301 F.3d 789, 792–93 (7th Cir.2002). In other words, “as long as the district court applies the correct legal standard on summary judgment and does not resolve disputed issues of material fact against the non-movant, its determination of whether the undisputed facts warrant an application of laches is reviewed for an abuse of discretion.” Nat'l Ass'n of Gov't Emp. v. City Pub. Serv. Bd. of San Antonio, 40 F.3d 698, 707 (5th Cir.1994); see also Hot Wax, Inc. v. Turtle Wax, Inc., 191 F.3d 813, 819 (7th Cir.1999) (“[I]n cases in which there is no dispute as to the material facts, the district court's decision that laches bars the action is subject to review by the abuse of discretion standard.”) (internal citations and quotation marks omitted).

Where, as here, the movant seeks summary judgment on an affirmative defense, it must conclusively establish all essential elements of that defense. See Celotex Corp. v. Catrett, 477 U.S. 317, 331, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (defendant may prevail on a motion for summary judgment on an affirmative defense when it has produced credible evidence that would entitle it to a directed verdict if not controverted at trial). When the defendant has produced sufficient evidence in support of its affirmative defense, the burden of production shifts to the plaintiff to “come forward with specific facts showing that there is a genuine issue for trial.” Brinkley v. Harbour Recreation Club, 180 F.3d 598, 614 (4th Cir.1999) (internal citations and quotation marks omitted). However, “where the movant fails to fulfill its initial burden of providing admissible evidence of the material facts entitling it to summary judgment, summary judgment must be denied, even if no opposing evidentiary matter is presented, for the non-movant is not required to rebut an insufficient showing.”

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