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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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Radio Channel Networks, Inc. v. Broadcast.Com, Inc., f/k/a/ Audionet, et al.

98 Civ. 4799 (RPP), 1999 U.S. Dist. Lexis 2577 (S.D.N.Y., March 5, 1999), aff'd. mem. 201 F.3d 432 (2d Cir., Nov. 17, 1999)

Plaintiff Radio Channel Networks, Inc. operates a web site at under the name "The Radio Channel." At this site, users are provided with both a directory of radio stations and information about products advertised thereon. Plaintiff's application for federal trademark registration of "Radio Channel" was rejected on the ground that the proposed mark was descriptive. Plaintiff did register its "Radio Channel" mark on the Supplemental Register.

Defendant, Inc. operates a website at which it provides "streaming media programming." The content on its site is grouped into 16 channels, including the Business Channel, the CD Juke Box Channel and the Education Channel. One of these channels was titled the "Radio Channel." As with all other channels on its site, the "home" page for the Radio Channel contained the words the Radio Channel in the upper-right hand corner of the page, and's trademark and logo in the upper left hand corner of the page.

Plaintiff commenced suit, asserting that defendant's use of the phrase "Radio Channel" constituted trademark infringement and unfair competition in violation of the Lanham Act. The Court disagreed, finding this a protected "fair use" of the mark, and, on defendant's motion for summary judgment, dismissed the action.

To establish a fair use of the mark, the defendant must demonstrate that he "has used the mark (1) in good faith and (2) in its descriptive sense." The Court held that the phrase "Radio Channel" was a commonly used descriptive term, particularly when used on the Internet. The Court further held that had used the phrase in its descriptive sense to describe the content of a segment of its website. Said the Court:

Defendant's use of the phrase "Radio Channel" must be placed in the context of the use of "channels" on Internet websites. BCI organized its website into sixteen channels, or sections, with each channel being described by a preceding word or phrase -- "radio," "television," or "music," for example. By using the term "channel" to refer to the way it groups its streaming programming, BCI draws upon a common meaning of the term "channel." ... The word "channel" thus captures a certain characteristic of defendant's Internet service and is, broadly speaking, used in its "descriptive sense." ... [I]t is apparently common for Internet websites to be organized into "channels," with various descriptive terms or phrases placed in front of the word "channel" to describe the contents of a particular section of the web site.

The Court further found that defendant decided to use this phrase in good faith "to describe one of the many different segments of its program offerings" and not with the intention of capitalizing on plaintiff's reputation and goodwill. This finding was supported both by the presence of defendant's own trademark and logo on the pages containing the "Radio Channel" phrase, and the descriptive nature of that term. The court's conclusion was not altered by the fact that the challenged use of the "Radio Channel" phrase might lead to defendant's website individuals using search engines to locate plaintiff. Said the Court:

Granting too much credit to the associative possibilities of the Internet would present an intractable problem for trademark law, however. Notwithstanding the fact that any word can be keyed into a search engine to locate a web site, the operator of a website surely should not be held responsible for having used every word on its page in a source-identifying manner. The intent of the alleged infringer, and not the associations actually formed by the consuming public, must remain the touchstone for evaluating whether words have been used in good faith in their descriptive sense.
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