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FM 103.1, INC. v. UNIVERSAL BROADCASTING OF NEW YO

April 24, 1996

FM 103.1, INC. and JUKEBOX RADIO, INC., Plaintiffs,
v.
UNIVERSAL BROADCASTING OF NEW YORK, INC., et al., Defendants.



The opinion of the court was delivered by: LECHNER

 LECHNER, District Judge

 This is an action brought by plaintiffs FM 103.1, Inc. and Jukebox Radio, Inc. (collectively "Jukebox") against defendants Universal Broadcasting of New York, Inc. ("Universal"), Howard Warshaw and Miriam Warshaw (collectively the "Defendants") seeking a temporary restraining order and preliminary and permanent injunctive relief enjoining Defendants from alleged service mark infringement, unfair competition and passing off under section 43(a) of the Lanham Act, as amended 15 U.S.C. § 1125(a), N.J.S.A. 56:4-1 and state common law. A complaint (the "Complaint") was filed on 15 April 1996. Jurisdiction is alleged pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1338 (a) and (b) and 1367(a). Currently before the court is a motion for a temporary restraining order and a preliminary injunction filed by Jukebox (collectively the "Motion for Injunctive Relief"). *fn1" For the reasons set forth below, the Motion for Injunctive Relief is denied.

 Facts

 A. The Parties

 FM 103.1, Inc. and Jukebox Radio, Inc. are corporations incorporated under the laws of the State of New Jersey. Complaint, PP 4-5. Jukebox creates radio programming for WJUX-FM, a station broadcasting from Monticello, New York, whose signal reaches Orange, Ulster, Putnam and Sullivan Counties, New York, Sussex County, New Jersey and Wayne and Pike Counties, Pennsylvania. Turro Dec., P 13; Complaint, PP 6, 10. WJUX-FM's programming is distributed and repeated on translators located in Pomona, New York (94.3 FM) and Bergen County, New Jersey (103.1 FM). Complaint, PP 6, 10. As of January 1994, Jukebox became the successor-in-interest to Bergen County Community Broadcast Foundation, Inc. ("BCCBF"). Turro Dec., P 11; Complaint, P 10.

 Universal is a corporation incorporated under the laws of the State of New York. Complaint, P 7. Universal owns the radio station WVNJ-AM (1160 AM). Id., P 23. In the latter part of 1995, WVNJ-AM switched its format and began broadcasting big band music. Id., P 27. Miriam Warshaw is President of Universal and Howard Warshaw is Vice President of Universal. Id., PP 8-9. Jukebox alleges Miriam Warshaw and Howard Warshaw personally directed the alleged acts of infringement, unfair competition and passing off. Id.

 B. The Alleged Service Marks

 Jukebox states from May 1993 to present it or BCCBF has used the alleged service mark "YOUR HOMETOWN RADIO STATION" to identify itself and its programming, repeating the phrase on-air approximately seventy times each day. Turro Dec., P 20; Complaint, P 11. Jukebox contends it has used the phrase "YOUR HOMETOWN RADIO STATION" in connection with promotional materials and on-air endorsements. Turro Dec., P 23; see also Complaint, PP 12-13. Jukebox submitted five newspaper articles discussing the radio station, one of which makes reference to Jukebox's use of the phrase "BERGEN COUNTY'S HOMETOWN RADIO STATION." Turro Dec., P 26 and Exh. E-2; see also Complaint, PP 12-13.

 In January 1994, Jukebox began broadcasting a daily on-air program entitled MAKE BELIEVE BALLROOM and featuring big band music of the 1940s and 1950s. Turro Dec., P 16; Complaint, P 14. Jukebox alleges it used the phrase "MAKE BELIEVE BALLROOM" to identify the program since its inception in 1994. Complaint, P 14. Jukebox further alleges it used the phrase "MAKE BELIEVE BALLROOM" following abandonment of the service mark by New York station WNEW-AM. Id., P 15. In 1992, WNEW-AM had stopped broadcasting music and switched to an all-talk format. Id., P 16.

 Jukebox "purchased from WNEW [in 1992], inter alia, the entire music library which formed the basis for [WNEW-AM's] MAKE BELIEVE BALLROOM program, including the opening musical theme of the program, entitled 'It's Make Believe Ballroom Time.'" Id. ; Turro Dec., P 10. Jukebox states it promoted its MAKE BELIEVE BALLROOM program vigorously, repeating the phrase "MAKE BELIEVE BALLROOM" on-air more than thirty-five time each day. Turro Dec., P 19; see also Complaint, P 17. Jukebox alleges it has used the phrase "MAKE BELIEVE BALLROOM" in connection with promotional materials and on-air endorsements. Id., PP 18-19. Of the five newspaper articles Jukebox submitted, none referred to Jukebox's MAKE BELIEVE BALLROOM program. See Turro Dec., P 26; see also Complaint, PP 18-19.

 C. Defendants' Use of the Alleged Service Marks

 Jukebox contends WVNJ-AM began using the phrase "YOUR HOMETOWN RADIO STATION" to identify itself and its programming in or around December 1995. Turro Dec., P 34; see also Complaint, P 28. Defendants state, however, they have used the phrase "HOMETOWN RADIO STATION" since August 1995. Warshaw, P 7. Jukebox states WVNJ-AM has expanded its use of the phrase "YOUR HOMETOWN RADIO STATION" since hiring ten of Jukebox's staff beginning in May 1995. Turro Dec., PP 35, 43; see also Complaint, PP 29-30. Jukebox submitted a copy of a WVNJ-AM advertisement in which WVNJ-AM refers to itself as "NORTH JERSEY'S HOMETOWN RADIO STATION." Turro Dec., P 39 and Exh. F.

 Jukebox claims that on or about 26 February 1996 Defendants began using the name "MAKE BELIEVE BALLROOM" in connection with a big band music program airing during a "virtually ... identical time slot" as the Jukebox program and featuring the same theme song "It's Make Believe Ballroom Time." Complaint, P 31; see also Turro Dec., P 37. Jukebox alleges Defendants have recently promoted their program as the "ORIGINAL MAKE BELIEVE BALLROOM." Complaint, P 31. WVNJ-AM's MAKE BELIEVE BALLROOM program is hosted by disc jockey Bill Owen who, until February 1996, had been employed at Jukebox where he was the on-air host of Jukebox's MAKE BELIEVE BALLROOM program. Turro Dec., PP 36-37; Complaint, P 32.

 Jukebox asserts WVNJ-AM's use of the alleged service marks and hiring of Jukebox employees has caused confusion. The evidence presented by Jukebox of this alleged confusion consists of three examples. First, according to an employee of Jukebox, Dara Hershman, General Manager of the John Harms Center for the Arts, inquired "whether or not Jukebox had the right to use the service mark MAKE BELIEVE BALLROOM, because she had seen WVNJ[AM]'s use of the [same] service mark." Epstein Dec., P 3. According to the president of Jukebox, Geoffrey Moore of the Bergen County Museum of Arts and Science "expressed concern that WVNJ[-AM] ... was also using the service mark MAKE BELIEVE BALLROOM." Turro Dec., P 47. Bruce Emra, radio listener, stated that WVNJ-AM and Jukebox "seemed so similar" because they have the "same big band format ... and also broadcast the same service marks." Emra Dec., PP 11, 14.

 D. Efforts By Jukebox to Stop Defendants' Use of the Alleged Service Marks

 On 20 March 1996, Jukebox wrote Defendants requesting they cease and desist from using the alleged service marks. Manna Dec., P 2 and Exh. A. On 21 March 1996, Defendants requested Jukebox provide documentation of service mark registration for the two phrases. Manna Dec., P 2 and Exh. B. On 22 March 1996, Jukebox repeated its demand Defendants cease and desist from using the alleged service marks without providing documentation of service mark registration. Manna Dec., P 3 and Exh. C. On 27 March 1996, Defendants informed Jukebox it considered its claims to exclusive use of the alleged service marks without basis in law or fact. Manna Dec., P 4 and Exh. D. Defendants have not stopped using the alleged service marks. *fn2" Complaint, P 36.

 Defendants contend countless radio stations, both locally and across the nation, refer to themselves as that market's "Hometown Radio Station." Warshaw Aff., P 6. Defendants also contend the phrase "MAKE BELIEVE BALLROOM" is identified with big band music through common usage. Id., P 8. Defendants point to several examples of the use of the phrase "MAKE BELIEVE BALLROOM" or similar phrases to describe big band music: a song entitled "It's Make Believe Ballroom Time", a radio program broadcast since the 1970s to portions of New Jersey entitled "America's Ballroom", a Saturday night music program in which songs are introduced with the phraseology "coming in from the make believe ballroom, here's a song entitled ...." broadcast into the Bergen County market from radio station WQEW in New York City and a radio station in Boca Raton, Florida which uses the phrase "MAKE BELIEVE BALLROOM." Id., PP 9-13.

 On 15 April 1996, Jukebox filed the Complaint initiating this action. Jukebox presently seeks a temporary restraining order and a preliminary injunction pursuant to Rule 65 of the Federal Rules of Civil Procedure enjoining the alleged service mark infringement, unfair competition and passing off under section 43(a) of the Lanham Act, as amended 15 U.S.C. § 1125(a), N.J.S.A. 56:4-1 and state common law.

 Discussion

 A. Preliminary Injunction and Temporary Restraining ...


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