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Evan L. Richards v. Cable News Network, Inc.

Plaintiff holds a federal trademark in the mark "World Beat." Plaintiff's registration, filed in 1989, claims use of the mark in connection with the production, sale and distribution of pre-recorded audio cassette tapes, phonograph records and compact discs. Plaintiff is, and has for many years been, a successful reggae musician who operates a record label under the name "World Beat Records and Tapes." Plaintiff's label only sells reggae music.

Long after plaintiff registered his mark, defendant Cable News Network, Inc. ("CNNI") created a television program named "World Beat." This program presents music news from around the globe. A companion website was created by CNNI at the domain name http://www.cnn.com/WorldBeat. Reggae music was not the sole focus of defendant's program. Rather, it featured stories concerning a variety of music styles from around the world. CNNI did not sell pre-recorded music, either on its television program or website.

Arguing that defendant's use of the "World Beat" mark infringed his trademark in violation of Section 1114 of the Lanham Act, plaintiff commenced suit seeking, inter alia, to enjoin defendant's further use of the mark. The Court rejected plaintiff's claims and, finding that defendant was free to continue its use of the mark, denied plaintiff's motion for injunctive relief.

The Court characterized plaintiff's suit as a "reverse confusion" case. "Reverse confusion" occurs when a larger, more powerful junior user infringes on the trademark of a smaller, less powerful senior user, causing confusion as to the source of the senior user's goods and services because the junior user saturates the market with a similar trademark and overwhelms the senior user's product.

In determining the merits of a "reverse confusion" claim, the Court applies the same test as a "direct confusion" case. Thus:

 

Plaintiff must show that: (1) the mark is valid and legally protectable; (2) the mark is owned by the plaintiff; and (3) the defendant's use of the mark to identify goods or services is likely to create confusion concerning the origin of the goods or services.

Applying this test to the case at bar, the court determined that plaintiff's claim was likely to fail for a number of reasons. The Court first found that defendant's use of the mark in connection with a television program and companion website was outside the use for which plaintiff had registered the mark - - the sale of pre-recorded music. This alone, noted the court, could prove fatal to plaintiff's claim.

Plaintiff's infringement claim would also fail, determined the court, because defendant's use of the mark was not likely to cause confusion among consumers as to the source or origin of goods or products, a prerequisite to a successful infringement claim. In reaching this conclusion the court relied on the fact that (a) the mark was not used in connection with the sale of the same products or services (distinguishing between sale of pre-recorded music and a music news program); (b) defendant's program discussed news related to a variety of different music styles, not just reggae; (c) while defendant used a mark identical to that owned by plaintiff, its logo had a different design; (d) plaintiff's mark was weak in the area of defendant's use; (e) there was no evidence of actual confusion; (f) the parties advertised in different mediums; and (g) the parties sought to sell their products to different customers.

Alternatively, the court held that plaintiff could not prevent CNNI from using "World Beat" to denote a style or type of music, because the term "World Beat" had become a generic term widely used by the public to describe a style of music. As such, determined the court:

 

the term World Beat is a "multi-use" term which, while used to denote a variety of different meanings, would seem to have become generic to describe a genre of music.

Trademark owners are not permitted to withdraw generic terms from public usage.

 

A trademark owner is not allowed to withdraw from the public domain a name that the public is using to denote someone else's good or service, leaving that someone and his customers speechless.

This alternative holding did not leave plaintiff without any trademark rights -- it just limited such rights to the sale of pre-recorded music.

 

We do not by this holding eliminate Richards's right to use WORLD BEAT as a record label for pre-recorded reggae music, or the right to stop other record producers who attempt to use the same label for pre-recorded music.