United States: Federal Government Wins Trademark Battle To Shut Down "Voice Of America" Website With "Undeniable Governmental Aesthetic"

Last Updated: November 26 2014
Article by David A. Kluft

Since its first broadcast on February 1, 1942, the Voice of America radio service (VOA) has aired countless hours of programming in dozens of languages to what is currently an estimated global audience of over 100 million people. Although the history of the VOA name is storied and long, VOA's efforts to protect that name are of a more recent vintage. VOA didn't apply to register its name as a federal trademark until 2005, and didn't get around to registering an internet domain name until after sites such as voiceofamerica.com had already been snapped up by private parties (VOA had to make due with VOANews.com).

But that appeared to change about a decade ago, when administration of VOA was transferred from the U.S. Information Agency to a new autonomous federal entity, the Broadcasting Board of Governors (BBG). BBG began to take steps to protect the VOA brand and, on November 7, 2014, the Eastern District of Louisiana rewarded those efforts by enjoining what was allegedly a forty-five year infringement of the VOICE OF AMERICA mark.

Robert Namer and the "VOA View"

Conservative radio talk show host Robert Namer claims that he began using the term "Voice of America" in commerce in 1968.  In 1977, Namer formed Voice of America, Inc., a Louisiana corporation, and in 1991 he began hosting the "Voice of America" syndicated radio talk show.  In 1998, Namer registered the domain name www.thevoiceofamerica.com, which he ultimately  used as a news aggregation site and platform for the same political views he espoused on his radio show. The site's content included links to news stories from the mainstream press, often followed by a short one-line commentary called the "VOA View." Examples of recent commentary include: "VOA View: Government ineptness is more damaging tha[n] terrorists;" "VOA View: The Obama regime is deceiving the public – there is no job improvement;" and "VOA View: The 24% that approved [the President's handling of the deficit] are blacks, fools and those on public subsidies."

In 2000, after Namer had registered the domain name but before he built his website, BBG sent a letter to Namer protesting his use of the VOA name. Then, nothing happened for another ten years or so, during which time Namer began building his website.  In 2011, BBG initiated a Uniform Domain Name Dispute Resolution proceeding to stop Namer from using www.thevoiceofamerica.com, which by this time had become the principal outlet for Namer's radio show. An arbitrator ruled in favor of BBG and ordered that the domain name be transferred  from Namer to BBG.

In response, Namer brought an action for declaratory judgment in early 2012 (a few weeks before the mark would have become incontestable), asking the Eastern District of Louisiana to declare that he could continue to use the "Voice of America" moniker for his website because, inter alia, BBG's VOICE OF AMERICA mark was "generic," Namer's use of it was a fair use, and because he was entitled to a laches defense.  BBG, represented by the Department of Justice, asserted a counterclaim for trademark infringement and requested a permanent injunction.

Dismissal of the "Fair Use" Defense

On September 10, 2013, the Court issued an opinion addressing BBG's partial motion to dismiss Namer's "fair use" theory.  Namer, relying the doctrine of classic fair use, had alleged that he was only using the name "Voice of America" to refer to his own radio show.  Because it was a call-in show, Namer argued, it allowed "the people of America to voice their opinions through an open airway, i.e. voice of America," and therefore the term was merely descriptive of the program's content.

The Court was unimpressed by this argument. Focusing on the website, the Court held that the term "Voice of America" was not "obviously descriptive of a compilation of news articles."  Rather, the Court held, Namer was using the name in a trademark sense to indicate the source of a product or service, in this case news commentary. The Court allowed BBG's partial motion to dismiss and the parties proceeded to take discovery on the remaining claims and counterclaims.

Summary Judgment and the "Governmental Aesthetic"

After discovery, BBG moved for summary judgment and, on November 5, 2014, the Court issued its opinion. First, the Court addressed BBG's counterclaim for trademark infringement. The Court agreed with BBG that there was a likelihood of confusion, including because the VOA mark was strong, because Namer's use was confusingly similar, and because the parties offered similar services (i.e., news) through similar channels (e.g., the internet).

Although essentially dicta, the most interesting part of the Court's discussion was with respect to whether Namer had an intent to deceive. BBG presented evidence that the website had used multiple indicia of government affiliation, including a stylized eagle logo and an American flag banner. The Court agreed that "these items do reflect an undeniable 'governmental' aesthetic," and was further concerned that Namer's site did not contain a disclaimer clarifying the absence of a government affiliation. Nevertheless, the Court didn't find that this evidence was conclusive of an intent to cause such confusion, but it find that there was a likelihood of confusion despite a lack of intent to cause it.

Laches and Genericness Defenses Dismissed

The Court then addressed Namer's defenses.  As to laches, the Court held that, even if the delay period extended back to 2000, Namer was on notice of BBG's objections from that point forward and continued to use the mark at his own risk.  As to the argument that "Voice of America" was generic, Namer had argued that since both "Voice" and "America" were generic, their combination created a "generic compound." The Court found that Namer had provided no evidence as to public perception on this point other than conclusory statements and rejected the defense. In fact, the Court went out of its way to state that Namer had been "intransigent" with respect to discovery and in general had a "detrimentally blasé attitude as to the seriousness of the instant motion."

Irreparable Harm to US Foreign Policy

Finally, Namer argued that, even if there was a likelihood of confusion, BBG had not made a showing of irreparable harm and therefore was not entitled to an injunction. The Court disagreed and found that, not only was there convincing evidence of likely harm in the form of consumer confusion but, if Namer's controversial views were mistakenly attributed to VOA, it could cause harm to VOA's reputation and damage its foreign policy mission.

On November 7, 2014, the Court ordered Namer to turn over the domain name and enjoined him "from using the mark VOICE OF AMERICA, or any mark likely to cause confusions therewith, in offering news and entertainment content on the internet." Namer has until December 8 to stop using the mark online, including by removing references to "Voice of America" and "VOA View" from all of his websites (including www.hottalkradio.com, which is still active).

To view Foley Hoag's Trademark and Copyright Law Blog please click here

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
14 Dec 2017, Seminar, Boston, United States

The trustees of The Foley Hoag Foundation invite you to the upcoming Speaker Series event with David Friedman, Senior Vice President, Legal & Government Affairs of the Boston Red Sox.

15 Dec 2017, Seminar, Boston, United States

The New England Electricity Restructuring Roundtable has been meeting bimonthly since 1995 to discuss current topics related to important changes in the electric power industry in Massachusetts and throughout New England.

 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Emails

From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.