Ray Communications, Inc. v. Clear Channel Communications, Inc.
673 F.3d 294
| 4th Cir. | 2012Background
- RCI owns the federally registered AGRINET service mark for agricultural radio programming; CBC initially registered it in 1972 and assigned rights to Bill Ray in 1986.
- Clear Channel and predecessors used AGRINET or similar names (Oklahoma Agrinet, Tennessee Agrinet, Agrinet of the High Plains) beginning in the 1970s–1990s.
- RCI claims oral, unsolicited licenses of AGRINET to Clear Channel's predecessors; licenses allegedly terminated in 1992, 1997, and 2006 for specific individuals.
- RCI filed suit on June 20, 2008, alleging Lanham Act infringement and UDTPA; Clear Channel asserted laches, acquiescence, and abandonment defenses.
- District court granted summary judgment for Clear Channel on laches, and remanded for further proceedings; on appeal, Fourth Circuit vacated and remanded for fact-intensive review of laches and related relief issues.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether laches can bar both damages and injunctive relief | RCI argues laches should not bar prospective injunctive relief given ongoing likelihood of confusion. | Clear Channel contends laches bars all relief due to long delay. | Remand needed; court did not finally resolve whether laches bars injunctive relief. |
| Whether the district court erred in applying laches based on knowledge of infringing use | RCI knew of infringing uses since 1978 but claims the violation and likelihood of confusion were not established then. | Clear Channel argues knowledge and likelihood of confusion existed, supporting laches. | Reversal in part; district court erred by applying knowledge prong and must reinvestigate timing using Pizzeria Uno factors. |
| Whether laches precludes RCI’s claim for GA injunctive relief on remand | RCI contends laches should not bar prospective relief without explicit analysis of aggravating factors. | Clear Channel asserts laches may bar injunctive relief under certain circumstances. | Remand required to assess availability of injunctive relief with potential aggravating factors. |
| Whether economic or evidentiary prejudice supports laches | RCI argues prejudice to Clear Channel is not shown; any prejudice insufficient as a matter of law. | Clear Channel asserts economic and evidentiary prejudice from delayed enforcement. | Not decided on the merits; remand to evaluate prejudice with a complete evidentiary record. |
Key Cases Cited
- What-A-Burger of Virginia, Inc. v. Whataburger, Inc., 357 F.3d 441 (4th Cir. 2004) (likelihood of confusion necessary before triggering laches period; marketplace analysis)
- Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455 (4th Cir. 1996) (laches factors: knowledge, delay, prejudice; equity considerations)
- Pizzeria Uno Corp. v. Temple, 747 F.2d 1522 (4th Cir. 1984) (nonexclusive likelihood-of-confusion factors for infringement analysis)
- Bridgestone/Firestone Research, Inc. v. Auto. Club De L'Quest De La France, 245 F.3d 1359 (Fed.Cir. 2001) (economic prejudice elements in laches analysis)
- Skippy, Inc. v. CPC Int'l, Inc., 674 F.2d 209 (4th Cir. 1982) (laches framework and relief considerations)
- Costello v. United States, 365 U.S. 265 (Supreme Court 1961) (prejudice requirement for laches; equitable defenses context)