Cumulus Media v. Clear Channel Communications

• Citation: 304 F.3d 1167
• Decision Date: 06 September 2002
• Docket Number: No. 01-16189.,No. 01-16647.,01-16189.,01-16647.
• Parties: CUMULUS MEDIA, INC., Plaintiff-Appellee, v. CLEAR CHANNEL COMMUNICATIONS, INC., Defendant-Appellant.
• Court: United States Courts of Appeals. United States Court of Appeals (11th Circuit)

Page 1167

304 F.3d 1167

CUMULUS MEDIA, INC., Plaintiff-Appellee, v. CLEAR CHANNEL COMMUNICATIONS, INC., Defendant-Appellant.

No. 01-16189.

No. 01-16647.

United States Court of Appeals, Eleventh Circuit.

September 6, 2002.

Sylvia H. Walbolt, Carlton, Fields, Ward, Emmanuel, Smith & Cutler, P.A., Saint Petersburg, FL, W. Douglas Hall, Carlton, Fields, Ward, Emmanuel, Smith & Cutler, P.A., Frederick Townsend Hawkes, Carlton Fields, Tallahassee, FL, for Defendant-Appellant.

James W. Dabney, Pennie & Edmonds, New York City, Claude R. Walker, Tallahassee, FL, for Plaintiff-Appellee.

Appeals from the United States District Court for the Northern District of Florida.

Before BIRCH and MARCUS, Circuit Judges, and FULLAM^*, District Judge.

MARCUS, Circuit Judge:

Clear Channel Communications, Inc. ("Clear Channel") appeals from the district court's entry of a preliminary injunction in this trademark infringement suit. At issue is whether Clear Channel has infringed the rights of Cumulus Media, Inc. ("CMI") by identifying its Tallahassee, Florida radio station by the name "The Breeze." While Clear Channel asserts that CMI has abandoned its rights in the name, the district court found otherwise and preliminarily enjoined Clear Channel from using "The Breeze" to identify its radio station. After thorough review, we can find no error in the entry of the preliminary injunction and accordingly affirm.

I.

The facts relevant to this appeal are straightforward. The parties own and operate competing radio stations in the Tallahassee, Florida market: CMI operates WBZE-FM at 98.9 on the FM dial and Clear Channel operates WTLY-FM at 107.1.

In January 1994, CMI began using the name "The Breeze," along with a distinctive logo and trading style incorporating the name, to identify WBZE. Between 1994 and September 2000, CMI used "The Breeze" in many forms of advertising and promotion for WBZE radio broadcasts, including radio and television advertising, outdoor signage, business cards, cups, mugs, license plates, t-shirts, post-it notes, and stickers. From 1998 to 2000 alone, CMI spent more than a million dollars in the advertising and promotion of "The Breeze."

In September 2000, CMI began identifying WBZE on the air as "Star 98" instead of "The Breeze" and announced the change through on-air advertisements. At the same time, CMI altered its music programming from "mainstream adult contemporary," which targets listeners twenty-four to fifty-four years old, to "hot contemporary," which targets a slightly younger demographic of eighteen to forty-nine year olds. Other aspects of WBZE's programming, such as its call-in shows, remained unchanged.

After the change, "The Breeze" name continued to appear on some WBZE materials, including, inter alia, a large outdoor sign at WBZE's headquarters, where listeners come to collect promotional awards, business cards used by WBZE management and sales representatives, and promotional materials such as cups and license plate holders. Third parties also apparently maintained a continuing association of "The Breeze" with WBZE. As recently as September 2001, a full year after WBZE's name change and a mere month before this suit commenced, the Arbitron rating agency, which measures radio audience market share, continued to credit WBZE if a listener reported listening to "The Breeze" in Tallahassee.

On October 8, 2001, approximately thirteen months after CMI's name change, Clear Channel changed WTLY's on-air name from "The Mix" to "The Breeze" and adopted a logo nearly identical to WBZE's "The Breeze" logo. Clear Channel, which spent more than $25,000 to promote WTLY as "The Breeze," announced the name change with on-air advertisements making statements such as "It's back ... and it's now at 107.1 FM — The Breeze" and "The Breeze has blown up the dial." One advertisement announced that "WTLY has completed the most comprehensive radio research study in the history of Tallahassee ... and you told us you want The Breeze back ... so we did exactly what you wanted .... The Breeze is back and on the air at 107.1 FM." WTLY uses a mainstream adult contemporary format, apparently similar to the one used by WBZE before its format change. The district court found that WTLY and WBZE appeal to substantially the same listeners (even after WBZE's format change) and seek to generate revenue from the same advertisers in the same geographic market.

CMI quickly learned of Clear Channel's use of "The Breeze." On October 12, four days after Clear Channel began identifying WTLY as "The Breeze," CMI filed a complaint in the district court against Clear Channel for trademark infringement and unfair competition in violation of § 43(a) of the Trademark Act of 1946 (Lanham Act), 15 U.S.C. § 1125(a); the Florida Deceptive and Unfair Trade Practices Act, Fla. Stat. § 501.204 ("FDUTPA"); and Florida common law. On the same day, CMI forwarded a courtesy copy of the complaint to Clear Channel along with a cease and desist demand.

Six days later, on October 18, CMI filed a motion for a preliminary injunction. On October 24, the district court conducted a hearing on the motion, during which it received evidence from both parties. CMI submitted evidence aimed at showing its continuing use of "The Breeze." This evidence included cups, license plates, bumper stickers and other advertising items featuring "The Breeze" name; the business cards of WBZE managers showing "The Breeze" logo; and pictures of the large billboard outside the WBZE office depicting "The Breeze" logo. CMI also submitted an audio recording of an on-air conversation, recorded October 22, 2001, between the WBZE operations manager and an anonymous caller, who evinced confusion over WTLY's use of "The Breeze." Clear Channel submitted evidence as well, largely in the form of affidavits from its own employees stating their belief that CMI had changed WBZE's name from "The Breeze" to "Star 98."

On November 1, the district court issued its order. It found that CMI had made continuous, commercial use of "The Breeze" rather than abandoning it, and thus had continuing rights in the name under both FDUTPA and the Lanham Act. It also found that Clear Channel had changed WTLY's name to "The Breeze" to divert audience market share from WBZE to WTLY and to trade off of preexisting public awareness of "The Breeze." It thus found that Clear Channel's use of "The Breeze" had been calculated to mislead substantial numbers of Tallahassee radio listeners into believing that WTLY's "The Breeze" was a continuation of (or somehow affiliated with) WBZE's "The Breeze." The district court further found that Clear Channel's use of the name had in fact confused Tallahassee radio listeners. Based on these findings, the district court concluded that CMI would likely succeed on its infringement and unfair competition claims. After further concluding that the balance of hardships and the public interest tipped in CMI's favor, the district court entered a preliminary injunction restraining Clear Channel from using "The Breeze" to identify WTLY or any WTLY broadcasts and from using or displaying any imitation of the trading style of WBZE's "The Breeze."

Immediately after the district court issued its preliminary injunction order, Clear Channel filed a notice of appeal, which is the basis of Appeal No. 01-16189, and moved the district court for a stay pending appeal. On November 2, the district court denied the stay motion.

On November 6, Clear Channel filed a motion for modification of the injunction, arguing that it was overbroad because it prevented Clear Channel from making any use of "The Breeze" name, even "curative uses" designed to dispel confusion, such as identifying WTLY as "The Breeze 107.1" or "The New Breeze." Clear Channel also moved for a second hearing to submit testimony and other evidence, arguing that it had not been provided sufficient time to prepare for the hearing held on October 24. On November 20, the district court denied these motions and Clear Channel filed a second notice of appeal from these denials, which is the basis of Appeal No 01-16647. We have consolidated Clear Channel's two appeals.

II.

A.

Clear Channel's sole argument in the district court was that CMI is not entitled to a preliminary injunction because it has abandoned "The Breeze" as a protectable trade name.¹ The district court rejected Clear Channel's abandonment argument, finding that CMI had continued to make "continuing commercial use" of "The Breeze" even after the September 2000 name change. Clear Channel contends on appeal that the district court erred as a matter of law because it continued to impose upon Clear Channel a "strict burden of proof" after Clear Channel established what it believes to be a prima facie case of abandonment. Leaving this burden on its shoulders, Clear Channel contends, contravenes our holding in E. Remy Martin & Co., S.A. v. Shaw-Ross Int'l Imports, Inc., 756 F.2d 1525 (11th Cir.1985). After careful review, we find no legal error in the district court's analysis.

We begin our review by noting how deferential it is. Preliminary injunctions are, by their nature, products of an expedited process often based upon an underdeveloped and incomplete evidentiary record. See Revette v. Int'l Ass'n of Bridge, Structural & Ornamental Iron Workers, 740 F.2d 892, 893 (11th Cir.1984) (per curiam) ("[T]he grant or denial of a preliminary injunction is almost always based on an abbreviated set of facts ....") (quoting Gray Line Motor Tours, Inc. v. City of New Orleans, 498 F.2d 293, 296 (5th Cir. 1974)). As is usually the case, the trial court is in a far better position than this Court to evaluate that evidence, and we will not disturb its factual findings unless they are clearly erroneous. See CBS Broad., 265 F.3d at 1200; E. Remy Martin, 756 F.2d at 1529 ("Factual findings... will be reversed only if clearly erroneous").

The expedited nature of preliminary injunction...