By: David Oxenford, Wilkinson Barker Knauer, LLP www.broadcastlawblog.com
We’ve written (see, e.g. our articles here, here and here) about the pending petitions asking the FCC to reconsider decisions reached last year to end the UHF discount, to leave the TV local ownership rules in place and to make attributable new TV Joint Sales Agreements, and to not adopt any change in the FCC radio ownership rules in “embedded markets.” Recently, that list of items on the table before the FCC has expanded, with a number of radio groups making a concerted push to change the FCC rules on ownership “subcaps” – limiting the number of AM or FM stations that can be owned in a single market. Thus, while a broadcaster can own up to 8 radio stations in the largest markets, no more than 5 can be either AM or FM. In the smallest markets, broadcasters can own up to 3 as long as they do not exceed half the stations in a market, but only 2 can be of the same service. The new petitions seek to eliminate those subcaps, allowing owners to own up to the maximum number of stations in a market without regard to whether those stations are AMs or FMs.
A group of radio broadcasters have filed a letter with the FCC asking that these subcaps be abolished, citing the change in the media landscape in the 20 years since the rules were adopted. A more detailed economic study was submitted by a Syracuse radio broadcaster, here, showing that the growth in digital and mobile advertising to local companies already exceeds the share of advertising enjoyed by radio generally, and is likely to grow in the coming years. Google alone, according to this analysis, has as much local advertising in Syracuse as the entire radio industry. To compete against these growing new media entities that are eating into local advertising dollars, the radio broadcasters have asked that they be allowed to own more radio stations in a single service – AM or FM – than currently allowed.
As the FCC has told the Court of Appeals (where some parties filed an appeal of last September’s ownership decision) that they plan to review the entire ownership decision, not just those areas singled out by petitions for reconsideration, the radio ownership issue is now before the FCC. There has been some limited grumbling against these new proposals, some observers suggesting that AM radio would be further imperiled if big broadcasters gave up their AM holdings to pursue the ownership of more FM stations. Of course, if that were to happen, there would be nothing stopping ethnic programmers and others who are making more and more uses of the AM spectrum to acquire more AM stations, perhaps at lower prices, to pursue their innovative programming. This is an issue that will be debated in the coming months, as broadcasters adjust to the reality that all of the old rules are now subject to reexamination by this new FCC.
David Oxenford is MAB’s Washington Legal Counsel and provides members with answers to their legal questions with the MAB Legal Hotline. Access information here. (Members only access).
There are no additional costs for the call; the advice is free as part of your membership.
By: Mitchell Stabbe, Wilkinson Barker Knauer, LLP via the Broadcast Law Blog
Less than a week ago, the National Collegiate Athletic Association filed a trademark infringement action in federal court against a company that runs an online sports-themed promotions and contests under the marks “April Madness” and “Final 3.” The NCAA is seeking injunctive relief, damages, the defendant’s profits, punitive damages and an award of attorneys’ fees.
Last year, I wrote about the risks of publishing ads or engaging in promotional activities that “play off” the NCAA Collegiate Basketball Playoffs. Clearly, such activities continue to carry great risks. Accordingly, I am republishing last year’s post on this subject:
It’s March Madness! Know the NCAA’s Rulebook or Risk A Foul Call Against the Unauthorized Use of Its Trademarks
With the NCAA Basketball Tournament about to begin, broadcasters, publishers and other businesses need to be wary about potential claims arising from their use of terms and logos associated with the tournament, including March Madness,® The Big Dance,® Final Four® or Elite Eight,® each of which is a federally registered trademark.
The NCAA Aggressively Polices the Use of its Trademarks
It has been estimated that, last year, the NCAA earned $900 million in revenue associated with the NCAA Basketball tournament. Moreover, its returns from the tournament have historically grown each year. Most of this income comes from broadcast licensing fees. It also has a substantial amount of revenue from licensing March Madness® and its other marks for use by advertisers. As part of those licenses, the NCAA agrees to stop non-authorized parties from using any of the marks. Indeed, if the NCAA did not actively police the use of its marks by unauthorized companies, advertisers might not feel the need to get a license or, at least, to pay as much as they do for the license. Thus, the NCAA has a strong incentive to put on a full court press to prevent non-licensees from associating their goods and services with the NCAA tournament through unauthorized use of its trademarks.
Activities that May Result in a Whistle
The NCAA acknowledges that media entities can sell advertising that accompanies the entity’s coverage of the NCAA championships. Even so, as discussed in greater deal in my earlier discussion of the “Do’s and Don’ts” of Super Bowl-related promotions, unless authorized by the NCAA, any of the following activities may result in a cease and desist demand:
Accepting advertising that refers to the NCAA, the NCAA Basketball Tournament, March Madness, The Big Dance, Final Four, Elite Eight or any other NCAA trademark or logo (The NCAA has posted a list of its trademarks here.)
Example: An ad from a retailer that starts, “Come Get Your Big Screen TV in Time to Watch March Madness.”
Local programming that uses any NCAA trademark as part of its name.
Example: A locally produced program previewing the tournament called “The Big Dance: Pick a Winning Bracket.”
Selling the right to sponsor the overall coverage by a broadcaster, website or print publication of the tournament.
Example: During the sports segment of the local news, introducing the section of the report on tournament developments something such as “March Madness, brought to you by [name of advertiser].”
Sweepstakes or giveaways that include any NCAA trademark in its name.
Example: “The Final Four Giveaway.”
Sweepstakes or giveaways that offer tickets to a tournament game as a prize.
Example: the sweepstakes name may not be a problem, but including game tickets as a prize will raise an objection by the NCAA.
Events or parties that use any NCAA trademark to attract attendees.
Example: a radio station sponsors a happy hour where fans can watch a tournament game and prominently places any of the NCAA marks on signage.
There is one more common pitfall that is unique to the NCAA Basketball: tournament brackets used in office pools where participants predict the winners of each game in advance of the tournament. The NCAA’s view is that the unauthorized placement of advertising within an NCAA bracket or corporate sponsorship of a tournament bracket is misleading and constitutes an infringement of its intellectual property rights. Accordingly, it says that any advertising should be outside of the bracket space and should clearly indicate that the advertiser or its goods or services are not sponsored by, approved by or otherwise associated with the NCAA or its championship tournament.
Note that none of these restrictions prevents media companies from using any of the marks in providing customary news coverage of or commentary on the tournament. Just be sure that they are just used to identify the tournament and its stages, and don’t in any way imply that there is an association between the station itself or any sponsor who does not have the rights to claim such association and the NCAA.
A Surprising History of “March Madness”
The NCAA was not the first to use “March Madness” as a trademark in connection with basketball tournaments. In fact, beginning in the 1940’s, the Illinois High School Association (IHSA) used it in connection with the Illinois state high school basketball championship playoffs.
The NCAA also may not have been the first to license the use of “March Madness.” Beginning in the early 1990’s, the IHSA licensed it for use by other state high school basketball tournaments and by corporations.
Moreover, the NCAA did not originate the use of “March Madness” to promote its collegiate basketball tournament. Rather, a CBS broadcaster is credited with first using “March Madness” in 1982 to describe the tournament. As CBS was licensed by the NCAA to air the tournament, the NCAA apparently claims that as its date of first use.
Finally, the NCAA was not the first to register “March Madness” as a trademark. That honor went to a company called Intersport, Inc., which used the mark for sports programs it produced and registered the mark in 1989.
So, how did the NCAA get to claim ownership of the March Madness® trademark? The short answer is through litigation and negotiations over a period of many years. Although it has also been able to obtain federal registrations for Final Four® and Elite Eight,® it was late to the gate and was unable to snag “Sweet Sixteen” or “Sweet 16,” which are registered to the Kentucky High School Athletic Association (KHSAA). (The NCAA, however, has the KHSAA’s approval to register “NCAA Sweet Sixteen” and “NCAA Sweet 16.”)
The Final Score
Having invested so much in its trademarks, the NCAA takes policing its trademark rights very seriously. Even so, although the NCAA may send a cease-and-desist letter over the types of activities discussed above, some of its claims would not be a slam-dunk as there may be arguments to be made on both sides of these issues. If you plan to accept advertising incorporating an NCAA trademark or logo or plan to use an NCAA trademark or logo other than in the context of reporting on the tournament, you should consult with an experienced trademark attorney so you can make an informed decision about the level of risk that you may be taking on.
Over 200 radio and almost 80 TV stations named in the audit notice, including Michigan stations.
By: David Oxenford, Wilkinson Barker Knauer, LLP www.broadcastlawblog.com
In the swirl of news about the deregulatory efforts of the new FCC, one could almost forget that there are still many regulations in place that require significant amounts of paperwork retention by broadcasters. That point was hammered home last week, when the FCC released its first EEO audit letter of 2017 for radio and TV broadcasters. The FCC’s public notice announcing the commencement of the audit includes the audit letter that was sent to all of the targeted stations. The list of over 200 radio stations subject to the audit is here. The list of almost 80 TV stations is here. Responses are due March 28, 2017. As employment information for all stations within a named station’s “employment unit” must be provided in response to the audit, the reach of this notice goes far beyond the 300 stations targeted in the audit notices. While the FCC is considering a proposal to allow online recruiting sources to suffice to meet a broadcaster’s wide dissemination requirements (as we wrote here), that proposal is still at an early stage and, as this audit notice evidences, the underlying rules remain in place.
The FCC reminds stations that were targeted by the audit to put a copy of the audit letter in their public file. The response, too, must go into the file. For all the TV stations hit by the audit letter, and those radio stations that have already converted to the online public file, that will mean that the audit letter and response go into that FCC-hosted online public file.
The Commission has pledged to randomly audit 5% of all broadcast stations and cable systems each year to assure their compliance with the Commission’s EEO rules – including the requirements for wide dissemination of information about job openings and non-vacancy specific supplemental efforts to educate a station’s community about job opportunities in the media industry. We recently summarized FCC EEO issues here, reminding broadcasters of the possibility of being audited. The FCC also has the opportunity to audit larger broadcasters’ EEO performance when they file their FCC EEO Mid-Term Report. We also wrote about the start of the obligations for the filing of FCC Form 397 EEO Mid-Term Reports – which started the year before last for radio groups with more than 11 full-time employees and last year for TV licensees with 5 or more full-time employees in a few months, and are filed on the 4th anniversary of the filing deadline for the station’s license renewal – which will give the FCC another chance to review station EEO performance.
The audit letter requires all stations with five or more full-time (30 or more hours per week) employees to provide a significant amount of information about their EEO programs and recruiting efforts (including copies of their two latest Annual EEO public file reports and documentation backing up the efforts listed on those reports). Even stations with fewer than five full-time employees need to report the job titles of their employees and the number of hours they are assigned to work each week, and provide any information about law suits, EEOC complaints or similar employment actions brought as a result of equal employment or discrimination matters. Information about any time brokerage agreement must also be disclosed.
If any station in your cluster is on the list, all stations in that “station employment unit” (a group of commonly owned stations serving the same area with at least one common employee) must respond. But, if a cluster has been audited in 2014 or 2015, or if its renewal was granted in the last 18 months, the FCC may allow you to avoid responding to this audit – but you have to request that “pass” from the FCC. If a station that is being audited is involved in an LMA with another broadcaster, the audit may require that the broker provide employment information as well as the licensee.
Many broadcasters complain that the EEO rules are among the more burdensome paperwork requirements, and no doubt much time and money will be spent responding to this audit notice. But whether a broader review of the EEO requirements, beyond simply looking at the acknowledgement that online recruiting is how recruiting is now done, will be in the cards at the FCC remains to be seen.
David Oxenford is MAB’s Washington Legal Counsel and provides members with answers to their legal questions with the MAB Legal Hotline. Access information here. (Members only access).
There are no additional costs for the call; the advice is free as part of your membership.
By: Mitchell Stabbe, Wilkinson Barker Knauer, LLP via the Broadcast Law Blog
Last year, we posted some guidelines about engaging in or accepting advertising or promotions that directly or indirectly alludes to the Super Bowl without a license from the NFL. We are at that time of year again, so here is an updated version of our prior post.
In addition to the monies it receives annually for the right to broadcast the Super Bowl, the NFL receives more than $1 billion in income from licensing the use of the Super Bowl trademark and logo. Not surprisingly, they are extremely aggressive in protecting its golden goose from anything it views as unauthorized efforts to trade off the goodwill associated with the game. Accordingly, with the coin toss almost upon us, advertisers need to take special care before publishing ads or engaging in promotional activities that refer to the Super Bowl. Broadcasters and other news publishers have latitude to use the phrase “Super Bowl” in their news and other editorial content, but they need to be wary of engaging in activities, particularly in advertising and promotion, that the NFL may view as trademark or copyright infringement. (These risks also apply to the use of “Final Four” or “March Madness” in connection with the upcoming NCAA Basketball Tournament.)
Simply put, the NFL views any commercial activity that uses or refers to the Super Bowl to draw attention as a violation of its trademark rights. Many of the activities challenged by the league undoubtedly deserve a yellow flag. However, the NFL’s rule book defines trademark violations very broadly. If anyone were willing to throw the red flag to challenge the league’s position, a review from the booth might reverse some of those calls.
Advertising that Refers to the Super Bowl: Under trademark law, use of a third party’s trademark is considered to be permissible “nominative fair use” if the use does not suggest a relationship between the advertiser and the trademark owner and the trademarked goods or services cannot be readily identified without using the trademark. This is why broadcasters can talk about the game in their news and other topical programming, using the words “Super Bowl.” Nevertheless, the NFL objects to any unauthorized advertising that refers to the Super Bowl. For example, the use in advertising of taglines such as “Stock Up for the Super Bowl” for beer or snacks or “Get the Best View of the Super Bowl” for big-screen TVs has routinely led to the prompt issuance of cease-and-desist letters. The claim may be made directly against the advertiser, as well as against a broadcaster or other news organization that publishes the ad. As a result, many broadcasters will not accept advertising that specifically refers to the Super Bowl unless the advertiser first shows that it has NFL approval.
Other Marks: To overcome these problems, many advertisers now replace any reference to the “Super Bowl” with “The Big Game.” When advertisers widely began using this tactic, NFL Properties tried to register THE BIG GAME as a trademark with the United States Patent and Trademark Office. (The NFL also has federal trademark protection for “Super Sunday,” “Gameday” and “Back to Football,” and over a hundred other marks.) Over20 different parties threatened to oppose the application and the NFL voluntarily abandoned the application. We are not aware of any reported claims by the NFL against advertisers based upon the use of “The Big Game.”
Following are some examples of other activities that create a significant risk of an objection by the NFL:
“Super Bowl” Events or Parties: A bar or restaurant that has a public performance license to show television programs on their premises has the right to show the Super Bowl broadcast to its patrons, but if it uses the words “Super Bowl” in its advertising to attract customers, the league will object. Similarly, a company should not be listed as the sponsor of a “Super Bowl” event or party. And, under copyright law, a fee should not be charged to watch the game.
Famously, in 2007, the NFL sent a cease and desist letter to an Indiana church group that had used “Super Bowl” to describe a viewing party for the game and would charge $3.00 per person to cover the cost of snacks. The NFL, however, will not object to a church viewing party for the Super Bowl if it is held in the church’s usual place of worship and no fee is charged for attending. In addition, the League will likely not object to religious organizations that refer to their events as a Super Bowl party, provided that no NFL logos are used.
Sweepstakes or Giveaways (Naming or Prizes): Any sweepstakes or giveaway that incorporates “Super Bowl” in its name or as a prominent feature of its advertising should be avoided. Further, the NFL takes the position that game tickets cannot be offered as a prize or award. In most situations, the “first sale” doctrine provides that the buyer of goods may do whatever it wants with its purchase, including reselling it or giving it away. Faced with this argument some years ago, the NFL (as well as the other sports leagues) now includes language on the back of tickets, prohibiting their use as part of a sweepstakes, giveaway or other promotion. It can be argued that the purchaser of a ticket will not even see this language until after the purchase is completed and therefore the terms have not been agreed to and are not binding. Tickets to an event are legally considered a license to attend the event, rather than a good that is sold, and therefore can condition entry on any basis that does not violate public policy.
Names of Programs: Even if a broadcaster is not with the network that carries the Super Bowl (this year, CBS), it may want to produce a television program about the game. In years past, the NFL has repeatedly challenged local broadcasters that include the name of a team in a weekly program dedicated to discussions about the team. Thus, it would not be surprising if the NFL similarly objected to naming a pre-Super Bowl television program about the game if it incorporated “Super Bowl” in the title. (As discussed above, there is a strong argument that such naming constitutes permissible “nominative fair use.”)
Special Advertising: Newspapers and online news providers frequently have a special “section” that is devoted to coverage of the Super Bowl. The organization should be able to solicit advertising to accompany its stories, just as it does for any of its news reporting. It would be risky, however, to have an advertiser “sponsor” the coverage, particularly if “Super Bowl” is part of the name of the section.
Disclaimers: A disclaimer such as, “Not an Official Sponsor of the Super Bowl” or “This Advertisement (or Event) Has Not Been Licensed or Authorized by the NFL” will not ward off a cease-and-desist letter. Moreover, in the event of litigation, it is unlikely to provide a defense to a claim of infringement. And, even if ultimately did so, the defendant would still incur significant attorneys’ fees and other costs of litigation.
Risk Analysis: The policy underlying protection of trademarks is to protect consumers against consumer confusion. That said, is there a meaningful difference between, for example, an ad that invites consumers to “Stock up for the Super Bowl” as opposed to one that says, “Stock up for the Big Game!” Do they convey different messages? Is one more likely than the other to confuse consumers into believing that the product being advertised is sponsored by, endorsed by, or otherwise affiliated with the NFL? Probably not.
So, why is the NFL so aggressive? The answer almost certainly lies in the fact that official “sponsors” of the Super Bowl or other licensees of the NFL would not be willing to pay for the right to do so if a competitor could freely use the Super Bowl to promote itself without also paying a license fee. This risk is particularly high for those who have been promised exclusivity in a given category and the right to promote themselves as “The Official ——– of the Super Bowl.” Thus, looking at the big picture, the NFL has a huge incentive to prevent any advertising that may cross the line.
Moreover, any news organization that wants press credentials for the game faces an additional risk. Although news organizations are not required to have permission to report on an event, as a practical matter, their ability to do so from inside the stadium will be hampered by a refusal by the NFL to issue press credentials. (And, yes, we have seen professional sports leagues make such a threat.)
For these reasons, for most broadcasters and other news organizations, the better course is to be aware of and avoid any possible pitfalls, rather than run the risk of litigation.
Commercial radio broadcasters have been seeing numerous communications over the last week about Global Music Rights (GMR) and its seemingly contentious music royalty negotiations with the Radio Music License Committee (RMLC). Many stations are confused about this controversy and what it is all about. The five questions below will hopefully shed some light on these issues. Stations need to carefully consider their options, and seek advice where necessary, to determine what they will do by January 31 with respect to the interim license that GMR has offered to stations. The questions below hopefully provide some background on these issues.
1. What is GMR and why isn’t the music they represent covered by the other organizations like BMI, ASCAP, and SESAC?
GMR is a new performing rights organization. Like ASCAP, BMI and SESAC, they represent songwriters and collect royalties from music users for the public performance of these songwriter’s compositions. They will collect not just from radio – they have already reached out to business music services that provide the music played in retail stores, restaurants and other businesses and no doubt have or will license other companies that make music available to the public. Most songwriters represented by GMR used to be represented by ASCAP or BMI, but these songwriters have withdrawn from ASCAP and BMI and joined GMR. For radio, these withdrawals became effective on January 1 of this year, when the old license agreements between ASCAP and BMI and the commercial radio industry expired.
2. What does a station need to do, in order to protect itself while negotiations are going on?
Because the penalties for playing a song without a license can be as much at $150,000 per play, stations either need to purge all GMR music from their stations or sign a license agreement with GMR. If you decide to purge their music from your stations, don’t forget about music that may appear in commercials or syndicated programming. Also remember that we are talking about the musical composition, not the recording of the song by any particular band or singer. Even the broadcast of a high school band playing a GMR song at half time of some football game, or the broadcast of a local middle school choral concert, could trigger the royalty obligation to GMR.
3. What does the “Interim License” through September mean?
The Radio Music License Committee (RMLC) is the group that represents most commercial radio broadcasters in music royalty negotiations with the various organizations that represent songwriters. They have been trying to reach a license agreement with GMR, but have not been able to reach one at rates that they consider to be an appropriate reflection of the airplay received by songs written by GMR songwriters. RMLC has actually sued GMR, arguing that GMR has violated the antitrust laws in the negotiation process, and asking that an arbitration process be set up to determine rates (and GMR has, seemingly in response, sued RMLC).
Since it was clear that no final agreement between RMLC and GMR could be reached by January 1, to avoid having stations that play GMR music being subject to lawsuits for copyright violations, GMR has offered an interim license that lasts for 9 months. Presumably, if in that time GMR and RMLC settle their disputes and arrive at a reasonable royalty rate, and that royalty rate is less than the interim rate, some credit for part of the sums paid under this interim rate could potentially be built into the new rates.
GMR has this week reached out to many station groups with specific proposals as to an interim rate. Commercial stations that did not receive information from GMR can reach out to them and ask for the rate information. GMR has given stations until January 31 to agree to that rate, sign the interim license agreement and pay the first month’s royalties. If a station does not choose to sign the interim deal and has not negotiated its own royalty agreement, and if it continues to play music written by GMR artists, then it is potentially subject to a copyright infringement lawsuit.
4. Is this going to lead to more people making demands for payment for songs broadcast on the radio?
If GMR is successful in collecting enough money to pay its songwriters more than writers receive from ASCAP and BMI, this could encourage other organizations to create similar licensing organizations. Some large publishing companies have already suggested that possibility, and there are certain other companies that specialize in maximizing royalties for songwriters that have the potential to do the same thing. However, starting a performing rights organization like ASCAP, BMI and SESAC is not easily accomplished as it requires setting up infrastructure for collection, reporting, distribution and enforcement activities. It also requires waiting for existing contracts granting performance rights to expire. Thus, new organizations are not likely to pop up overnight.
5. Is this related at all to the radio streaming waiver with SONY that the NAB is urging stations to consider?
The GMR issues all involve the rights to perform the underlying words and music to a song, not the rights to perform a recording of that song as recorded by any particular band or singer. The recording by a particular performing artist is called a “sound recording” or “master recording.” Broadcasters do not pay for the over-the-air performance of sound recordings, but they do pay performance fees when those recordings are streamed. The Sony waiver involves the digital performance right to sound recordings, and some of the rules that apply under the license for those digital performances. It is unrelated to the GMR controversy.
For more detailed information about some of these issues, I have written a number of articles discussing music rights on my Blog – www.broadcastlawblog.com.
Once you have identified your marks and sought protection through registration for some or all of them, there are still going to be other issues that you will need to consider. Trademark owners have an obligation to police their marks and take steps to stop infringers. Otherwise, they may run the risk that someone else will profit off their marks or tarnish the reputation they have developed for those marks. In extreme cases, the failure to police one’s marks may result in losing them entirely. The biggest issues in trademark protection today arise from the use of trademarks on the Internet. In this blog, we identify some situations that you may encounter or want to think about.
You undoubtedly have one or more websites to promote your services, to interact with your listeners or viewers or to make video or audio available for online viewing or listening. You have spent a fair amount of time and money promoting your sites. Then, you learn that someone else has registered and is using a domain name that is confusingly similar to your domain name or one of your trademarks to attract traffic to their site. There are numerous ways that these cybersquatters can register a variation on your domain name or mark: adding (or dropping) a hyphen, adding a generic term, misspelling a word, omitting a letter, and replacing the letter “o” with a “zero” or the letter “l” with a “one” are some of the most common.
What should you do? You should establish a budget for taking action against cybersquatting. As a practical matter, however, you cannot pursue every one of these domain name registrations – you would need an unlimited budget. Our view is that you should only go after those domain names that have an active website that damages you in some way or are so close to your domain name or marks that they are drawing a lot of traffic. For example, does the domain name re-direct people who are looking for your website to a competitor’s site? Does it contain offensive content? Is it being used for some sort of scam or fraudulent activity?
Once you decide that there is a problem, what are your options? If it is a competitor, a cease and demand letter may do the trick. In many cases, however, you may not even be able to determine the true identity of the registrant. You probably do not want to incur the expense of bringing a civil action in court. There is an alternative. There is a relatively inexpensive and fast remedy, called the Uniform Dispute Resolution Policy. It is essentially a mandatory arbitration that all domain name registrants must agree to accept. There are three things that you will need to prove: (1) the domain name is identical or confusingly similar to one of your trademarks; (2) the registrant has no legitimate interests in the domain name; and (3) the domain name was registered and has been used in bad faith. If you prevail, the domain name will be assigned to you. Trademark owners win over 85% of all cases filed and they typically are resolved in about 60 days.
Finally, there are two types of websites where you may just need to accept them and take no action. First, parked or “pay-per-click” webpages incorporate various links to third party sites or advertisements. The domain name registrant receives a small payment for each person who clicks on one of these links. Such websites are extremely common and it is not usually going to be worth it for you to go after them unless there is a pressing need for that particular domain name. Second, if someone has registered a domain name similar to your mark and is using it only for legitimate criticism, they are protected under the First Amendment and you are unlikely to prevail. In fact, your actions may be posted on the website to claim that you are a hypocrite for asserting your own First Amendment rights as a broadcaster, while not respecting those of others. So, the better course may be to just grin and bear it.
Defensive Domain Name Registrations
You can avoid some of these problems by registering domain names that are similar to your domain name or trademarks, even though you do not want or need them. Your costs in registering such domain names may be less than the cost of having to take action against even one cybersquatter. An attorney who is experienced in this area can provide you with suggestions on the most common types of variations on your mark that you may want to register.
The New Top Level Domains
In the past, a trademark owner only had to worry about what cybersquatting in a limited number of top level domains (the part of the domain name that appears to the right of the dot), e.g., .com .net, .org and a few others. Even so, as discussed above, the scope of the problem has not been similarly limited because of the numerous possible variations on your domain name or mark.
Over the last two years, the organization that is responsible for the management of the Internet, ICANN, has approved the launch of hundreds of new top level domains, with more to come. These new top level domains fall in numerous categories: truly generic (e.g., .online, .site, .website, .cloud, .help, .xyz), geographic (e.g., .nyc, .london), industry (e.g. .news, .press, .accountant) and others. Thus, the potential number of problems has grown exponentially as has the cost of obtaining defensive registrations for your trademarks.
Very few, if any, of these new gTLDs have caught on with the public and it is expected that many will ultimately fail. It is my view that most businesses should be very selective in registering their marks in any of the new gTLDs. For example, the European Broadcasting Union has been chosen by ICANN to administer the “.radio” domain name as a community top level domain. Thus, it will only be open to members of the International Radio Community. Radio station licensees may want to register their call letters and other trademarks as .radio domain names.
Anyone who wants to register a mark as a second level domain should get that mark registered with the Trademark Office. Marks that are federally registered can then be registered in a database called the Trademark Clearinghouse, which will then allow the owner to seek registration in a new gTLD for a sixty-day period before the registry can make its domain names available to the public.
Do you ever conduct a search on the Internet and wonder why the first-listed results are even there? It happens because someone is paying the search engine to lists its ad (or “sponsored link”) in response to searches for a particular term (or “keyword”). Sometimes, these terms may be one of your trademarks and, in some cases, the sponsored link may be for one of your competitors. Unless your trademark appears in the sponsored link, however, most courts have become unwilling to take action. More and more often, they conclude that there is no likelihood of confusion because the sponsored link is typically somehow set off or distinguished from the actual search results, such as by incorporating the word “Ad,” and consumers have become used to seeing these sponsored links and are not likely to think that they are associated with the owner of a brand that he or she was searching. Where, however, the sponsored link or the web page to which it is linked includes a reference to your trademark, you may have a remedy. If you decide to bid on your competitor’s trademarks as a keyword that will generate a sponsored link to your website, you equally need to avoid making any visible reference to the competitor or its marks.
Concurrent Use of Trademarks on the Internet
Historically, television and radio stations have been local. If two stations in the same market used similar slogans, consumers would likely be confused. Advertising for one station could result in more listeners for the other station. Similarly, one station might get credit from Arbitron for a listener who was tuned to a different station. In that situation, the broadcaster that used the slogan first would have a trademark infringement claim available as a remedy. In contrast, a station in Chicago, a station in Miami and a station in Los Angeles could each use the identical slogan without any problems. For example, Arbitron could determine that a listener who used a slogan to identify a station could easily determine which one it was based on where the listener lived.
Streaming of broadcasts meant that a listener in Chicago might be able to listen to the broadcast from Miami or Los Angeles on any Internet enabled device. Or, someone who conducted an Internet search using the slogan as a search term could easily be directed to the web site for any of these stations. Courts have resolved many claims based on webcasting or other activity on the Internet by finding that being on the Internet is not always the same as engaging in activity in every geographic area nationally. If one party has a federal registration for its mark, the answer may be more complex.
These issues will continue to arise in cases involving Internet-only radio stations or webcasters. Even though FCC-licensed broadcasters cannot use the same call letters as another licensed station, webcasters can try to identify themselves any way that they want, particularly if they are using four letter “call” letters that begin with a “W” or a “K.” Issues can arise when the website operator uses “call letters” as part of a format this is a “tribute” to a defunct station, but the call letters have since been assigned by the FCC to another radio station.
Users of social media frequently adopt a name or handle that is identical to a well-known trademark. In many cases, there is no bad faith and making a complaint to the individual may result in unwanted publicity. Most social media have adopted policies to address complaints by trademark owners, but many are not responsive to the concerns of trademark owners. Here, too, defensive registrations of names in social media may be the best approach.
The increasing uses of the Internet have been a great boon to most businesses, but has created many new problems as well. They may seem overwhelming at times, but, with some planning, they can be managed whether your business is large or small. And, like most problems, they will not disappear if we ignore them.
This concludes our Trademarks Basics series – we hope you’ve enjoyed learning about this fun and engaging area of law.
For more in our series on trademark basics, see Part One on what a trademark is and why it is important. Part Two talked about the importance of trademark searches. Part Three, as set out above, dealt with the benefits of Federal trademark registration. Part Four suggested conducting a trademark audit to make sure that you are maximizing the value of the brands that you own.
Oxenford notes that “The dates set out on the calendar include FCC filing deadlines and dates by which the FCC requires that certain documents be added to a station’s public file. These dates just recently changed for noncommercial broadcasters as the FCC suspended its requirement that noncommercial stations file Biennial Ownership reports every other anniversary of their license renewal filing here. Instead, their reports will be due on December 1 deadline which is the deadline for all stations, both commercial and noncommercial, to file these Biennial reports. That deadline is included on this calendar. In some states there are political windows even in what seemingly is an off year for elections (two governors and several big-city mayoral races are particularly noteworthy). The date for the beginning of the lowest unit rate window for the November general election is on the calendar, but stations need to check locally for primary dates and for any special elections that may be held in their service areas. Also included are some copyright deadlines, including dates to make payments to SoundExchange for Internet streaming royalties.”
“While the dates on this calendar may change, and new ones may be added, this at least gives you a start in planning your regulatory obligations. And, remember, you should always talk to your own attorney to make sure what dates are important to you.”
As we discussed last week, federal registration gives you many benefits and it is the most cost-effective way to protect your brand. Once you have those registrations in hand, however, it is important to periodically take stock in what you own and what you are (or are no longer) using. This can help you identify (1) new brands that can be exploited, potentially opening up new lines of licensing revenue, (2) vulnerabilities in your current trademark practices that could expose you to the risk of litigation, and (3) cost savings by identifying marks that are no longer in use and discontinuing their maintenance and enforcement. Proactively maintaining your trademark portfolio can also help you avoid surprises. Imagine discovering that an important trademark registration has lapsed only through the due diligence being conducted by a potential buyer of your station or station group. Not only is that an embarrassing position to be in, but it could compromise your valuation and your negotiating power.
Now that we have hopefully convinced you that conducting a trademark audit is a worthwhile effort, here are five easy DIY steps that will set you in the right direction:
Identify your registered marks. The first step in a trademark audit is to identify any federal and state registered marks you own. Gather up a complete list of your active federal and state registrations and any pending applications. If you need help identifying what marks you own, your trademark attorney can help you by running a search in the federal and state databases.
Identify what marks you use, but have not registered. Do you have any marks that are/have been heavily promoted, but are not registered? If so, consider whether filing a state or federal application would make sense.
Tip: When trying to assess whether a mark or logo is being used as a trademark, look to see whether it’s something that consumers or advertisers will associate with your goods or services. Think broadly – it could be a logo, the name of a show, a tagline, a radio show host’s name, an element of your social media branding, your app logo, etc. Consider whether you have any non-traditional marks, such as sound marks (think of the NBC chimes). If in doubt, catalog the mark and call your trademark counsel for an assessment.
Identify your media outlets. Take stock of all potential places where you might be using your marks, such as websites, over-the-air, in advertisements or marketing brochures, etc.
Assess how the marks are being used. Review all of your media outlets carefully. Are your registered marks being used as registered, and for the services for which they are registered? Is proper notice being made (g., use of the ® symbol)? Take special note of any punctuation inconsistencies or design differences –small discrepancies can create big problems! Do the terms and conditions for your website provide notice of your trademark rights and include a warning that visitors are not free to copy your marks and use them for any purpose without your permission?
Tip: It is critical to review the description of goods and/or services in a given registration to assess whether the mark is being used as described. If you are using the mark in a new way due to changes in technology or marketing strategies, then you may need to file another application to obtain adequate protection for your mark. For example, a radio station may have its call letters registered for “radio broadcasting services” in Class 38, but that registration arguably would not cover a downloadable streaming app. With today’s rapidly evolving technology, you may be using technologies that didn’t even exist when you first filed your trademark application.
Assess what marks are registered but no longer in use. You can save some money in legal costs by identifying those marks that are registered, but are no longer in use.
There are other steps you can take as well, such as collecting examples of each mark in use, confirming that the chain of ownership in your registrations is accurate, reviewing the terms of your licensing agreements to ensure that they adequately protect you, etc., but the steps outlined above will get you started. Of course, if you need help or have questions along the way, just ask your friendly trademark attorney.
For more in our series on trademark issues, see Part One on what a trademark is and why it is important. Part Two talked about the importance of trademark searches. Part Three, as set out above, dealt with the benefits of Federal trademark registration. Part Five will run in the next MAB News Briefs, the week of January 9, 2017.
By: Kelly Donohue and Radhika “Ronnie” Raju, Wilkinson Barker Knauer, LLP
In last week’s Part Two of our series on Trademark Basics, we discussed the benefits of conducting a clearance search to try to ensure that the mark you are considering adopting doesn’t infringe on the rights of anyone else. Say the results of your clearance search have come back clean and, according to your trusted legal advisor, you should be able to use your trademark without worrying about being slapped with a demand letter. Why not just use your mark and save yourself the time and money it takes to obtain a federal registration?
Quite simply, federal registration gives you many valuable benefits at an extremely low cost (the filing fee for a trademark application can be as low as $225) and it is the most cost effective way to protect your brand. Here are the top nine reasons you should take the next step and file a trademark application with the Patent and Trademark Office (PTO), along with a quick overview of the registration process. For those of you that have been following our five part series on Trademark Basics, we will divulge the 10th reason for seeking federal registration in our upcoming trademark webinar, the date for which we will be announcing soon.
The Benefits of Federal Registration
Broadcasters have a lot of balls in the air, from finding advertisers to managing on-air personalities to creating content, all while trying to stay within the FCC’s regulatory lines and within budget. So why add seeking federal registration for your trademarks to your to-do list? Here’s why we think it is well worth your effort:
Deters Others From Using a Similar Mark. All applications and registrations are publicly available and searchable in the PTO’s electronic database, called TESS. Therefore, your mark will be easy to find when others do even a minimal clearance search. This notice deters others from using or adopting a mark that could be confusingly similar to yours and could fend off problems before they even start.
Prevents Registration of Similar Marks. One of the PTO’s functions is to prevent others from registering confusingly similar marks. Once your mark is registered, the PTO will refuse to register any marks that are confusingly similar to yours. This is a wonderful free service that the PTO provides to owners of registered marks.
Shows Trademark Savviness. Obtaining a federal registration allows you to use the registered mark symbol, ®, next to your trademark. This shows the world that you are trademark savvy and are serious about protecting your brand.
Nationwide Rights. If you file an application and it is granted, you gain the legal presumption that you have the exclusive nationwide right to use your mark as of the application date. While broadcasting is still a local business, establishing nationwide rights remains critical, especially where you have a substantial online presence that extends beyond your local community, syndicate a program nationally, or operate a station whose contours span across more than one state.
Cybersquatters. Federal registration of your mark will also make it easier to take action against cybersquatters, as will be discussed in the fifth and final part of this series.
Nationwide Notice. A federal registration provides nationwide “constructive” (as opposed to actual) notice that you are the exclusive owner of the mark. This benefit of registration will enhance your ability to enforce your mark against infringing uses. If, for example, you file for and obtain a federal registration for CRANK for radio broadcasting services, an unrelated station that subsequently adopts that same mark anywhere in the US cannot successfully argue that it lacked notice of your use (even if it did not actually know about your mark). Thus, if you want to adopt the CRANK mark at another station you own or license the mark for use by another broadcaster’s station in a different market, a broadcaster who is already using the mark there, but began using the mark after you filed your federal application, will not be able to defend its use on the grounds that it adopted the mark in good faith and without notice of your mark.
Federal Jurisdiction. A federal registration allows you to sue infringers in federal court, where judges are often more savvy about trademark matters. Also, in certain cases, it allows you to recover treble damages, meaning the court can award triple the amount of the actual damages and even attorney’s fees if you prevail in the suit.
Facilitates Foreign Registration. A federal registration gives you the ability to use your federal registration as a basis for seeking registration in foreign countries, allowing you to protect your brand as you expand into foreign markets. More and more broadcasters are marketing their digital properties (streamed stations, apps, etc.) beyond the U.S. borders, so this benefit should not be overlooked.
Helps Stop Counterfeiting. A federal registration of a mark can be recorded with U.S. Customs and Border Protection so that it can stop the importation into the US of counterfeit or infringing goods. This tool is particularly important in the media and entertainment industry, where counterfeiting is rampant and can have a substantial impact on revenues.
Obtaining and Maintaining a Federal Registration
Hopefully, we have convinced you that federally registering your trademarks is a good idea and you are now ready to register. Thankfully, for the most part, the application process is fairly straightforward. The first step is to figure out which kind of application you should file. If you are already using the mark, you would file what is called a “used based” application. If you are still in the planning stages and haven’t yet started using the mark, you would then file what is called an “intent to use” (“ITU”) application.
Both used-based and ITU applications require a few pieces of information, such as the name and address of the applicant, the mark and a copy of the design (if you are seeking registration of a logo). If the mark is currently in use, you will need to provide the date on which it was first used. Easy enough, right? From here, it gets a bit trickier:
Drafting A Description of Goods and Services. First, you will need to identify the goods and services for which you want to register your mark. There is a real art to crafting these descriptions. For use-based applications, you want to cover all of your goods and services accurately and be sure that you can document that the mark has been used to sell or promote each and every one listed. For intent-to-use applications, you must also cover all of your goods and services with which you intend to use your mark, but you also want to leave yourself some wiggle room, in case you expand into areas that you might not have contemplated when you first filed the application. If you have not used the mark for some of them when it comes time to prove use, you can delete them from the application. If you do not include them at the outset, you will not be allowed to add them later. It is extremely important to strike the right balance. If your description of services is too vague or overbroad, your application may be rejected and you will be required to provide a more limited description. Conversely, if it is too narrow, you may find yourself using the mark down the road in ways that are not covered by your registration (in which case you would have to file a new application to cover the new goods or services, an avoidable expense!).
Selecting Classes of Goods and Service. Second, you will have to identify in which “classes” your goods and/or services fall. There are forty-four different classes of goods and services and the description you have selected will determine how they are classified. The classes that you use are one of the factors that the PTO uses in determining whether a subsequently filed application for a similar mark should be allowed or denied. Also, you may not realize that different aspects of your business need to be set out separately and registered in separate classes. For example, radio broadcasting services falls under Class 38. But what if you also have a website or you stream online? What if you also offer advertising services under your mark? What if you have a downloadable app? Figuring out which classes in which your mark could comfortably fit can get complicated.
Providing a Specimen with the Application. If you are filing a use-based application, you will have to include an example of your mark in use (this is called a “specimen” in trademark terms) for at least one of the goods and/or services listed in each class. Depending on which classes of services you are filing in, a specimen can be anything from a printout of your website to an audio clip of a show to pictures of a t-shirt bearing your station’s logo. No matter what your specimen, it is essential that it reflect the use of the mark as contemplated by your description of goods and/or services. The PTO can reject your application if your specimen does not support your description.
Providing a Specimen After the Application is Filed. If your application is based on an intent to use the mark, before the mark can be registered, you will need to make a separate filing, claiming use, providing the date of first use and providing specimens evidencing that you are using the mark. You can submit this filing before the Trademark Office approves your application or within six months of the date assigned after the application is approved. You can also extend the time for filing for an additional six months up to five times. The filing with the claim of use and each request for extension of time will require an additional fee.
Responding to PTO Inquiries/Arguments. Once you have filed your application, the PTO reviews your application and may come back to you with questions or requests for more information. Worse yet, they may refuse your mark altogether for various reasons (conflicts with a registered mark, descriptiveness, etc.). You will get six months in which to try to get the Trademark Examiner to withdraw the refusal. If you are successful, the mark gets published in the Trademark Gazette, allowing third parties thirty days in which to oppose your application.
Keeping Track of Maintenance Filings. Even after your mark registers, there are routine filing requirements that are critical, such as declarations of use and renewals at the five- and ten-year marks, respectively. While these are very straightforward filings, missing them can cause your registration to lapse. So it is very important to know what these deadlines are and docket them accordingly. If your attorneys prepare and file the application for you, they will docket these deadlines and send you reminders about them when the time draws near.
Is Federal Registration Right for You?
Although federal registration provides the broadest protection, for some trademark owners, it is not necessarily the best option. In most states, state registration provides very little substantive legal protection, although it can provide notice if someone does a state trademark search before adopting a mark and it is less expensive than seeking federal registration. For marks that are only used in an extremely limited geographic territory, state registration may be sufficient. In the radio industry in particular, where different radio stations in different parts of the country use the same slogans, state registration is often the best course of action.
Now that you have invested the time and money to register your marks, how do you make the most of these valuable assets? Next week, we will discuss strategies on how to best manage your trademark portfolio, including conducting a periodic audit of your trademark assets. Until then, Keep Calm and Trademark On!
Note: Part Four of this series will follow in the next MAB News Briefs. Part Two discussed the importance of trademark searches, and can be found here. Part One provided an explanation of what trademarks are and why they are important and is available here.
By: Kelly Donohue and Radhika “Ronnie” Raju, Wilkinson Barker Knauer, LLP
In our last article beginning this series on Trademark Basics, we gave an overview of trademark basics and discussed why building up a strong trademark portfolio should be an important part of any media company’s overall business strategy. This week, we will discuss why identifying marks that you may use must be a key feature of your branding strategy. The reason is simple – you don’t want to invest thousands of dollars in a mark – building websites and social media campaigns around it, promoting it on air, creating bumper stickers, calendars, t-shirts, and other swag – only to get slapped with a demand letter from someone claiming that it owns the rights to that mark. That user can potentially force you to cease using the mark on air and online, destroy all physical materials that use the mark and pay damages for your infringing use of the mark. This development could blow a station’s marketing budget in the blink of an eye. Thankfully, this scenario is avoidable by doing some advance sleuthing before committing to a mark. So, what steps can you take to stay out of legal hot water?
There is a common misconception that, once you register a trademark at the federal level, you are “protected” against any claims of infringement. As a result, many companies skip the sleuthing and simply file a federal trademark application when they adopt a new mark. This is a very dangerous practice that could potentially cost you in the end because the application might be rejected by the Trademark Office or opposed by someone with prior rights in the mark. Indeed, even if a mark is federally registered, someone with prior rights has five years in which to challenge your use or registration of the mark. In order to minimize these possibilities, it is critical that, before you settle on a new mark, you conduct a trademark search. Running a search will allow you to see what, if any, other parties may have rights in marks identical or similar to your proposed mark. What does this entail, exactly?
Some searches are simple and can be done by your marketing or operations team – simply log onto the USPTO’s database (called “TESS”) and plug in the proposed mark. This type of search will help you quickly identify any obvious impediments. If a similar or identical mark pops up for the same or similar services, then the sleuthing is over – your proposed mark has been “knocked out” by the registered mark and you must move on to your next mark.
However, the analysis of these searches can get complicated very quickly. What if one or more similar marks are registered for similar services? What if an identical mark is registered, but for somewhat different services? What if the search identifies a mark that differs from your proposed mark by a single word or has the same words in a different order? What if there is a registered mark for the identical services, but an Internet search locates no use of the mark? What if the mark is federally registered, but an Internet search indicates that the mark is only being used in a limited geographic market that is not near your area of proposed use? An experienced trademark lawyer who is familiar with interpreting these results may be needed.
Moreover, even if your proposed mark is “clear” at the federal level, your sleuthing is not yet over. In the US (unlike most other countries), someone who is using a trademark or service mark, but has not registered it, has what are called “common law rights” in the mark. Those rights are limited to the geographic area in which the mark is used and the services are provided. The prior user of an unregistered mark that is similar to yours could preclude you from using your mark in its market, even if you federally register your mark.
As you can see, the simple act of “clearing” a trademark is rarely simple. Many trademark-savvy companies will run a quick preliminary search in-house, but if a mark is not clearly “knocked out,” will turn to counsel to run what is called a “comprehensive search.” These searches, while not totally foolproof, identify similar or identical marks at the federal, state, and common law levels, and can also search business names, domain names and in some cases, marks registered internationally that could lead to a claim of trademark rights in the US. Practiced trademark attorneys vet hundreds of marks per year and can help you assess the level of risk associated with the adoption of a proposed mark by analyzing these search results. They may also identify reputational risks that you may not have considered, e.g., if your proposed mark is being used by an adult-themed website, is slang for something you weren’t aware of (for example, the former SciFi Channel’s “text-friendly” rebranded name “Syfy” also turned out to be slang for syphilis) or otherwise has negative connotations you hadn’t considered. If, however, your mark “clears” a comprehensive search, you can feel fairly confident that you have picked a mark that presents a low risk. Often clients have “fallen in love” with a mark that has some level of risk associated with it, but, if a search is conducted, at least that risk is assumed with eyes wide open and can be factored into the company’s business strategy and legal budget.
The costs of conducting trademark searches are relatively low when compared to both the reputational and the monetary costs associated with rebranding or otherwise defending an infringement claim. So don your best detective hat and get sleuthing! In next week’s Trademark Tuesday installment, we will discuss the benefits of federally registering your marks, and how to go about doing so. There is much more to it that meets the eye! Part three of this series will be in the next MAB News Briefs.