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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.

© 2017 Proskauer Rose LLP.

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L. Robert Batterman, Labor, Management, Sports, Attorney, Proskauer, Law Firm
Partner

A partner since 1974, Bob Batterman has considerable experience representing both individual employers and multi-employer groups in union relations and collective bargaining. Much of Bob’s time is spent in day-to-day contact with clients, often in “crisis” situations where a rapid resolution of union-related problems is vital.

Bob is a senior member of our nationally recognized Sports Law Group, serving as labor counsel to the National Hockey League, Major League Soccer and the National Football League. He has extensive experience in collective bargaining and related litigation in...

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Michael Cardozo, Commercial Litigation Attorney, Proskauer, Law Firm
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Michael A. Cardozo is a Partner in Proskauer’s Litigation Department and the former Corporation Counsel for the City of New York. As the city's 77th and longest serving Corporation Counsel, he was the city’s chief legal officer, headed the city's Law Department of more than 700 lawyers, and served from 2002 through 2013 as legal counsel to Mayor Michael Bloomberg, elected officials, the city and its agencies.

Michael’s experience managing large litigations in both the private and public sectors provides him with unique insight into litigation assessments, risk management and mitigation issues. In his role as head of the New York City Law Department, he effected numerous changes that resulted in significantly increased efficiency. He achieved this by greatly expanding the use of technology and statistical data allowing for effective risk/cost analysis of cases.

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Robert L. Freeman, Technology, Media, Sports, Attorney, Proskauer, Law Firm
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Robert E. Freeman is a Partner in the Corporate Department and a member of the Sports Law Group and Technology, Media & Communications Group.

Rob began his career as an intellectual property litigator before shifting the focus of his practice to intellectual property-related transactions. Today, he helps lead a team of media, sports and entertainment attorneys representing clients such as Time Warner Cable, Discovery Communications, the WTA, the Orlando Magic, Scripps Networks, Armstrong Cable, the PAC-12, Insight Communications and CBS Sports. Rob’s work for these clients...

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Howard Ganz, Sports, Employment Attorney, Proskauer, Law Firm
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Howard Ganz is co-head of the Sports Law Group and former co-Chair of the Labor & Employment Law Department.

Howard represents and counsels clients with respect to a wide variety of labor and employment matters, such as employment discrimination, sexual harassment, wrongful discharge, defamation, breach of contract, discipline, and large-scale reductions-in-force. His litigation experience has run the gamut, from single plaintiff lawsuits to major class actions, in federal and state courts in New York and elsewhere. The clients Howard has represented include the National...

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Wayne D. Katz, Finance, Sports, Attorney, Proskauer, Law Firm
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Wayne D. Katz is a Partner in the Corporate Department, specializing in the sports industry.

Wayne's experience includes the representation of the National Basketball Association and National Hockey League in their various corporate matters, including team ownership transfers and team financings. Major transactions he has worked on for the leagues include the NBA’s purchase and sale of the New Orleans Hornets; the NBA's grant of expansion franchises to Toronto, Vancouver and Charlotte; the NHL's grant of expansion franchises to Nashville, Atlanta, Columbus and Minnesota; the NBA’s $...

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