Eastern District Heavyweight Bout Ends in Stunning Trademark Technical Knockout
Floyd Mayweather and Connor McGregor's late-August 2017 matchup may be the most highly anticipated boxing event in decades. But while "The Money Team" and UFC's lightweight champion have been preparing to defend their trash talk in the ring, two judicial combatants were defending their clients in a federal courtroom in the Eastern District of New York.
Anthem Media Group Inc. ("Anthem") and Fight Media Inc. ("Fight Media") scored a major victory in a dispute with CSI Entertainment ("CSI"), which had sought to protect its trademarks "Fight Sports" and "Fight Sports Network" by seeking an injunction to enjoin Anthem from using their "Fight Network" mark. (CSI Entertainment, Inc. v. Anthem Media Group, Inc., No. 15-03508 (E.D.N.Y. June 27, 2017)). CSI, a multimedia company and syndicated television network that distributes fight-related content globally to regional sports networks (RSNs) and others, had registered "Fight Sports Network" with the United States Patent and Trademark Office (USPTO) on January 10, 2006. Anthem and Fight Media, the duo of Canadian companies behind the linear combat sports cable television channel Fight Network, have been using their "Fight Network" mark in Canada since September 23, 2005.
In 2007, CSI learned of Anthem's use of the "Fight Network" mark in Canada and sent a cease-and-desist letter requesting Anthem to stop using the term. Anthem and Fight Media responded that CSI's mark was generic and its own use was not infringing, communicating that "unless I hear from you to the contrary, FN will consider this matter settled to CSI's satisfaction." CSI apparently failed to respond to the letter, which proved to be a body blow to their argument of irreparable harm over Anthem's continued use of "Fight Network." In subsequent years, the Anthem and Fight Media brand continued to grow, as the companies invested millions of dollars in establishing a domestic and international presence. A year or so before the litigation began, Anthem applied to the USPTO to register their "Fight Network" mark, but its application was rejected based on, among other things, its similarity to CSI's "Fight Sports Network" mark.
Anthem and Fight Media's earnest push into the U.S. market and its unsuccessful trademark application prompted CSI to seek a preliminary injunction in the Eastern District of New York that would bar the duo from expanding their use of "Fight Network" in the U.S. In response, Anthem landed a flurry of legal blows to their opponent's motion, which was knocked out in a decision by Magistrate Judge Ramon E. Reyes last December and confirmed in June 2017 by Eastern District Judge Ann M. Donnelly.
The most devastating punch was landed when the court affirmed the magistrate's conclusion that CSI was not likely to succeed on the merits of its claims, its "Fight Sports Network" mark was not sufficiently used in commerce to be entitled to Lanham Act protection, and its "Fight Sports" mark was likely generic. The magistrate found that CSI failed to use the "Fight Sports Network" mark in commerce because it generally was used to identify its products on "sizzle reels" displayed during private negotiations with RSNs and not used publically to identify or mark its goods. Moreover, the court found that CSI's "Fight Sports" mark was likely generic, as it was a term that CSI itself and trade journals use to describe combat sports generally. Indeed, Jon Franklin, CEO of Glory Kickboxing and witness for the plaintiff, admitted that the terms "fight sports" and "combat sports" were synonymous.
In addition, the court found CSI's support for its allegations of customer confusion and irreparable harm were lacking. In determining there was no sufficient basis to infer a likelihood of confusion between CSI's "Fight Sports" mark and the defendant's "Fight Network" mark, the court held that CSI's mark was descriptive and the consumers of its product were sophisticated industry insiders, making the likelihood of confusion low. According to the court, CSI also failed to establish a showing of irreparable harm because, among other things, it had waited in its corner over one year after Anthem entered the U.S. market before filing suit – CSI knew of the defendants' existence since 2007, making its "wait-and see" approach unreasonable.
Finally, the court found that CSI failed to offer evidence of any reputational harm, loss of sales, or goodwill or evidence of confusion with customers. The court determined that CSI, which distributes fight-related content, and Anthem, which focuses on fight lifestyle issues and combat sports events (other than those which CSI has the right to), are "inherently different, rather than confusingly similar." In the court's opinion, the different nature of syndicated block programming as compared to a 24/7 linear channel prevented the two products from necessarily being in direct competition.
CSI's request for an injunction appears to have been an overreach, which allowed Anthem to duck the attack and deliver a fierce counterpunch. The first few rounds between these two heavyweights have ended, with Anthem ahead on points. It remains unclear as to whether CSI will answer the bell to continue this litigation or will throw in the towel and forfeit the bout.