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Headline: "Local Web Owner, Radio Franchise May Need To Settle Name Game and Logo Lifting in Court."
When it bought KYYS-FM (102.1) in September and fired several
Kansas City radio personalities, American Radio Systems incited a
torrent of protests.
It also provoked a fight with the creator of a local Internet Web site.
Danielle Nelsen, founder and director of "the Zone," a Web site
dedicated to music in Kansas City, is now in a legal battle with
ARS, a radio conglomerate soon to be owned by Westinghouse
Electric Corp.
The battle is over the use of the name "the Zone."
On June 1 Nelsen, with help from her friend Joe Fortunato, opened
their "Zone" Web site (www.thezone.org). The site, which focuses
primarily on so-called alternative music, features a variety of
information on the local music scene: record reviews, calendars,
band biographies, photos from live performances and links to bands'
home pages and other sites related to local music.
Since June 20, when Nelsen began keeping count, the site has taken
more than 3,400 "hits."
After it took over KY-102 on Sept. 19, ARS began airing
commercials about the station's new format. In those commercials
ARS christened the station "the Zone -- Kansas City's new music
alternative" and beamed a logo whose typography and design
looked similar to the logo Fortunato designed for Nelsen's Web site.
Nelsen and her Zone immediately began feeling heat from angry
local musicians and music fans who assumed that the Web site and
the radio station were affiliated.
"I've gotten so many angry, negative remarks and calls from people
who assume I'm part of the `new KY' mess," Nelsen said recently.
"We lost a sponsor who said he didn't want to get caught up in the
confusion."
That confusion is the crux of Nelsen's legal claim, said her attorney,
Denise A. Kirby.
"Damage has been rendered, and what has been damaged is the
reputation they and their Web site have among local music fans and
local bands," Kirby said. "That reputation, the goodwill they built,
has been harmed, and they have a right to protect it.
"The issue is confusion -- their site being confused with the new
radio station -- and it is very damaging confusion."
In a letter dated Sept. 30, Kirby notified the corporation about the
confusion the radio station created by calling its newly acquired
radio station "the Zone" after Nelsen had been using it for several
months.
Mitchell Stabbe, an attorney with Dow, Lohnes & Albertson in
Washington, D.C., responded to Kirby on behalf of ARS in a letter
dated Oct. 16. In the letter Stabbe stated that his firm had
concluded that Nelsen had no claim against ARS. Among his
reasons:
Many Web sites use "the Zone" as part of their address, thus the
service mark had been diluted.
The Web site and the radio station operate in different media,
thus confusion is unlikely.
ARS nicknamed a Sacramento radio station "the Zone" in 1996
and "is therefore the prior user." It also uses the name for a radio
station in Rochester, N.Y.
However, William Rudy, an attorney with the Kansas City law firm
Lathrop & Gage who deals with intellectual-property law, said that
to cite first use, a party would need a federal trademark registration.
Otherwise, he said, the first-use claim was legitimate only within a
certain geographic region.
In other words, if ARS has not registered "the Zone" as a federal
trademark, it could claim first use in Sacramento or Rochester, but
not in Kansas City.
ARS would not return calls from The Star to confirm whether it had
registered "the Zone" as a federal trademark.
However a trademark search conducted by an attorney with
Litman, McMahon & Brown, a Kansas City law firm, showed that
on June 12, American Radio Systems applied to register "94.1 FM
The Zone" as a federal trademark.
"Through registration, a party registers its claim of trademark rights
with the government," said Kent Erickson, an attorney with Litman.
"When you get into a situation where two parties are using the same
mark, the party that started using the mark first is identified as the
senior user, the other as the junior user.
"If simultaneous use of the mark is causing confusion... the senior
user can prevent the junior user from using the mark."
ARS' application is pending, but if approved, it would give ARS
first-use rights of the mark "94.1 FM The Zone" nationwide
retroactive to June 12 -- 11 days after Nelsen opened her Web site.
The trademark check also showed that American Radio Systems
stated that it first used the name "the Zone" on April 21, 1997, not in
1996 as Stabbe wrote. It does not say where it first used the name.
Nelsen called her electronic 'zine, the precursor to the Web site,
"the Zone" in the first week of April.
"If the Web site had a use prior to (ARS) application for registration
-- assuming ARS had no uses in this area -- they would be
considered the senior user of the mark in this area," Erickson said.
"Whether that means they can stop ARS -- well, it depends on how
all the other factors are interpreted."
Kirby, Nelsen's lawyer, called "irrelevant" ARS' other claim that
other Web sites use "the Zone" in their Internet addresses and have
thus diluted the mark.
"Those other sites aren't creating confusion for my client," she said.
"Danielle's site is about alternative music in Kansas City. ARS came
in portraying themselves as the alternative radio station in Kansas
City without talking to anyone in the local music scene about what
sort of confusion that would create and without gauging what the
public reaction would be."
Michael Milsom, the general counsel for ARS in Boston, told The
Star recently that Nelsen's case had no merit and that the public's
reaction was irrelevant.
"Unfortunately, we can't control the public's reaction," he said. "The
point of view we're trying to get across is that we have the right to
use the name. We've had a radio station since last year calling itself
the Zone, way before she used it."
When asked about the similarities between the Web site's logo and
the ARS logo for the Zone in Kansas City -- which differs from the
logo ARS uses for its Sacramento radio station -- Milsom said, "I
haven't seen (the Web site's) logo so I don't know that they're
similar.... All I can respond to is the matter of legal rights. Their
claim has no merit."
Rudy sees the matter differently: "This is a real from-the-hip shot,
but assuming they weren't saddled with financial issues, (Nelsen)
would have a shot. She has put them in a difficult position... To
sustain a trademark-infringement claim, one must prove that there is
confusion between the... marks. If the facts are as I understand
them, that seems to be the case.
"In a vacuum -- if the playing field were level -- she could have a
case that could stop (ARS)."
The "financial issue" Rudy mentioned is legal fees, which, for a
trademark battle with a powerful corporation, he said, can easily run
into the $300,000 range.
Nelsen, who works part time at a hair salon, said that she and
Fortunato had plenty of energy to continue the battle but that money
was a different matter. Kirby is working on contingency "and out of
the goodness of her heart," Nelsen said.
The name confusion has cost Nelsen in other ways. She and
Fortunato have been trying to find commercial sponsors to
compensate for the time and money they spend keeping the Web
site together.
Fortunato estimated that they have spent more than $500 on film
and processing for the photos they display on their site, plus
thousands of dollars in time and other services.
After ARS moved in, purged KY and deemed itself the Zone, one
potential Web site sponsor decided not to advertise.
"We are concerned with the recent confusion of the ... Web site and
the... radio station," Jay Bredwell, president of Slum Lord
Productions in Bonner Springs, wrote to Nelsen. Slum Lord
manages, promotes and books various local bands.
For now Nelsen and Fortunato are trying to extinguish the confusion
by hanging a disclaimer on the Web page that states that it and the
radio station are not affiliated. ARS told Kirby that the disclaimer
ought to be enough to eliminate any confusion between the two.
"Fine," Kirby said, "but if we must issue a disclaimer, then they
should also issue one on every commercial they run, stating that the
radio station is not affiliated with the Web site."
The confusion has caused problems beyond the Web site. Nelsen
has been a regular guest on KLZR-FM (105.9), a Lawrence radio
station. These days, however, she -- and anyone else -- is forbidden
from mentioning the name of her Web site over the air on KLZR.
Jeff Petterson, the station's assistant music director, issued this edict
Oct. 8:
"Because the phrase `The Zone' has become a primary position
statement for a competing radio station, use of the phrase `The
Zone,' regardless of intent, is not allowed on KLZR to avoid
confusion among listeners and so as not to help draw attention to the
existence of a competing station."
All content © 1997 The Kansas City Star
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