We Media, Inc. v. General Elec. Co.

• Citation: 218 F.Supp.2d 463
• Decision Date: 23 August 2002
• Docket Number: No. 01 Civ. 0424(VM).,01 Civ. 0424(VM).
• Parties: WE MEDIA INC., Plaintiff, v. GENERAL ELECTRIC CO., National Broadcasting Company Holding, Inc., National Broadcasting Company, Inc., Cablevision Systems Corp., Rainbow Media Holdings, Inc., American Movie Classics Co., WE: Women's Entertainment, LLC, Defendants.
• Court: U.S. District Court — Southern District of New York

218 F.Supp.2d 463

WE MEDIA INC., Plaintiff, v. GENERAL ELECTRIC CO., National Broadcasting Company Holding, Inc., National Broadcasting Company, Inc., Cablevision Systems Corp., Rainbow Media Holdings, Inc., American Movie Classics Co., WE: Women's Entertainment, LLC, Defendants.

No. 01 Civ. 0424(VM).

United States District Court, S.D. New York.

August 23, 2002.

COPYRIGHT MATERIAL OMITTED

Arthur M. Lieberman, Dawn L. Rudenko, Keith D. Nowak, Lieberman & Nowak, LLP, New York City, for Plaintiff.

James W. Dabney, Pennie & Edmonds, LLP, New York City, for Defendants.

DECISION AND ORDER

MARRERO, District Judge.

Plaintiff We Media Inc. ("WEM") filed this action on January 19, 2001, asserting four causes of action against defendants General Electric Co., National Broadcasting Company Holding, Inc., National Broadcasting Company, Inc., Cablevision Systems Corp., Rainbow Media Holdings, Inc., American Movie Classics Co., and WE: Women's Entertainment, LLC (collectively, "Defendants"). Three claims are before the Court under 28 U.S.C. § 1331 (federal question jurisdiction) that seek injunctive and monetary relief for: (1) trademark infringement pursuant to 15 U.S.C. § 1114 — 18; (2) trade name infringement pursuant to 15 U.S.C. § 1125(a); and (3) trademark dilution pursuant to 15 U.S.C. § 1125(c). WEM's fourth cause of action, for unfair competition pursuant to New York common law, is before this Court pursuant to 28 U.S.C. § 1338(b). Defendants move for summary judgment against all three Federal claims.

I. BACKGROUND

The parties do not dispute the underlying facts. Rather, each side seeks to spin them in opposite directions: the Defendants assert that WEM's evidence is insufficient to demonstrate a triable issue of fact; WEM argues that its case is strong enough to reach a jury. The Court, therefore must weigh the arguments and identify the more persuasive perspective.

WEM holds several trademarks beginning with the pronoun "we", including WE and WEMEDIA.¹ All are intended to indicate WEM as the source of products and services directed towards people with disabilities. WEM has applied for registrations for use of its marks in additional fields of use. At this point, however, WEM's marks are not registered for use in the network or cable television contexts.

WEM's stated business goal "was to become the first full cross-media company addressing and attempting to mainstream the needs and interests of the disabled community." (Plaintiff We Media Inc.'s Memorandum of Law in Support of its Opposition Against Defendant's Motion for Summary Judgment ("Pl.Mem."), at 2.) In 1997, WEM launched WE Magazine, a publication designed as a lifestyle magazine for women and men with disabilities, their families and friends. WEM changed the name of WE Magazine to WeMedia Magazine and later suspended its publication following the September 11, 2002 attack on the World Trade Center. WEM launched a website (WEMEDIA.COM) in 1999 and provided network, cable and webcasting coverage for the Paralympic Games in 2000. WEM hoped to provide similar coverage for the 2002, 2004 and 2006 Paralympic Games and obtained an option to negotiate for those rights. Likewise, WEM has been a paid sponsor of numerous events in the disabled community. Seeking income, WEM negotiated to enter joint ventures with various medical organizations that it forecasted would turn a profit. To date, however, WEM has operated at a loss.

Nevertheless, WEM's efforts achieved some recognition. As further evidence of recognition WEM introduced a list of "Key Events" (Ex. 11) that cites: New York City Mayor Giuliani's "Proclamation" of "WE Magazine Day" on an unspecified date during May of 1997; receipt of a "Millennium Award for Communications" in 1999; a "Century of Inclusion Award" which was presented at the United Nations in 1999; "Trumpet Advertizing Award/American Advertizing Awards" in 1999 and 2000; a "Media Organization of the Year" award from the National MS Society in 2000; an "Outstanding Service Award" from the New York City ADA Achievement Awards in 2000; a "Tash Image Award" in 2001; and a 2001 "Gracie Allen Award" from the Foundation of American Women in Radio and Television for programming that presents a positive and realistic portrayal of women in television; being ranked as one of the "Top 50/100 Best Sites" by the internet company Yahoo! in 2001 and 2002. Also, WE points to the various media and internet industry publications, and other periodicals, that mentioned WEM in some capacity. Celebrities, too, were attracted to promote its cause.

Sometime prior to November 28, 2000, Defendants² decided to "rebrand" the cable television channel then known as Romance Classics by promoting it under a new name. Defendants selected the name "WE: Women's Entertainment" and sought clearance from an internal legal department for its use. Apparently, clearance consisted of attorney review of a trademark search conducted on November 6, 2000 which investigated the prior registrations and use of the words "WE" along with "WOMEN" or "MEN" or "ENTERTAINMENT". Once cleared, Defendants filed two applications with the PTO to register the words "WE: Women's Entertainment" as a mark on November 16, 2000.

WEM claims Defendants' rebranding constitutes knowing infringement of its marks and marshals circumstantial evidence to support its claim. WEM submitted affidavits regarding a November 28, 2000 meeting between WEM employees and Mr. William Cela ("Cela"), of McCann-Erickson, intended to discuss a potential advertising agreement between the companies. Cela commented that WEM's name arose at a separate meeting during which a television network's name change was discussed, but did not identify the television network or anyone else present at the meeting (the "Cela Conversation"). WEM would deduce Defendants' knowledge that Defendants' rebranding infringes WEM's trademarks from the fact that Cindy Crawford and Alexandra Paul appeared as celebrity sponsors at certain WEM events, and later also appeared in Defendant's promotional campaign for the rebranded television network. Similarly, WEM co-hosted a charity event with the New York Rangers, which is owned by defendant Cablevision. Continuing in this vein, WEM negotiated to lease equipment from NBC, in which Rainbow Media Holdings, Inc., holds a 50 percent interest. WEM also noted that it televised the 2000 Paralympic Games via, inter alia, Fox SportsNet, of which defendant Rainbow Media Holdings, Inc., holds a 26 percent interest. Moreover, WEM contends that its coverage of the 2000 Paralympic Games was so high profile that it made Defendants aware of WEM and its trademarks.

Defendants announced the new name "WE: Women's Entertainment" in December, 2000, and launched a print and video advertising campaign on January 1, 2001 for it using the song "We Are Family." By any name, Defendants' cable television channel at issue ("WWE") is marketed towards women viewers, primarily between the ages of 25 to 49, who are urban, single and have a college-education. Defendants sell WWE through distributors who provide cable, satellite or other pay television systems. Defendants also provide a website on which scheduling information for WWE may be found. Defendants consider WWE's competitors to be other cable television channels marketed towards women, including Oxygen and Lifetime. Finally, WWE is involved in "pro-social initiatives", such as sending children to camp, promoting adoption, and teaching children to read, that are called "WE CARE".

The issues before the Court continued to develop after WEM filed the Complaint. On April 16, 2001, the PTO denied WWE's applications to trademark "WE WOMEN'S ENTERTAINMENT" because it considered that mark to be very similar to the registered mark WE MEDIA, held by WEM. Meanwhile, also, WEM claims it has lost proposed projects and business ventures since January 2001. In particular, Walter Cronkite, who is a member of WEM's advisory board, declined to host a series of interviews intended to be aired on television for WEM. Future joint business ventures with The Hearst Corp. and Specialty Med Alliance foundered as well. Apparently, also, WEM chose to not exercise its option to negotiate for rights to future Paralympic Games. WEM's theory of causation appears to be based on its claim that the WWE's media "blitz" destroyed WEM's partnerships and plans because, in the media industry, two media companies cannot share the word "WE" in their titles.

Additionally, WEM submitted evidence that it received inquiries via email and voicemail from what it alleges are confused WWE viewers seeking to reach WWE. In addition, a third party, Linda Shepard ("Shepard"), stated that she received 10 to 15 emails and 45 to 50 phone calls from individuals who thought WWE was part of WEM. Shepard has been employed as executive director at various organizations that advocate for individuals with disabilities. Indeed, she asserts that she made an inquiry to WEM about providing cable television content for WWE on the mistaken impression that WWE was a part of WEM. Neither party submitted evidence showing that individuals contacted WWE in hopes of reaching WEM.

II. DISCUSSION

A. STANDARD OF REVIEW

Summary judgment is appropriate only when the "pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits" demonstrate an absence of any genuine issue of material fact and "the moving party is entitled to judgment as a matter of law." Fed. R.Civ.P. 56(c); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). To support a granting of the motion, the Court must determine from the record before it that a reasonable trier of fact would not be able to find in favor of the non-movant. See Brady v. Colchester, 863 F.2d 205, 211 (2d Cir.1988). In considering the motion, the evidence is viewed in the light most favorable to the non-moving party, and...