Case 2:15-cv-02053 Document 1 Filed 01/21/15 Page 1 of 15

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IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT TENNESSEE
WESTERN DIVISION
RADIO ONE, INC.,
Plaintiff
v.
FLINN BROADCASTING CORP.,
Defendant.

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Civil Action No.

JURY DEMAND

VERIFIED COMPLAINT
For its Complaint, Plaintiff Radio One, Inc. (Radio One) presents claims for relief of
trademark infringement, false designation of origin, deceptive acts and practices, and unfair
competition against Defendant Flinn Broadcasting Corporation (Defendant or Flinn
Broadcasting) and states as follows:
PARTIES
1.

Plaintiff Radio One is a corporation organized under the laws of the State of

Delaware and has its principal place of business at 1010 Wayne Avenue, 14th floor, Silver
Spring, Maryland 20910.
2.

Defendant Flinn Broadcasting is a corporation organized under the laws of the

State of Tennessee and has its principal place of business at 6080 Mount Moriah Road Ext,
Memphis, Tennessee 38115-2645.

Its registered agent is George S. Flinn, Jr., 1325

Eastmoreland Ave., Suite 545, Memphis, Tennessee 38104-7510.

JURISDICTION
3.

This Court has original jurisdiction over this action pursuant to 15 U.S.C. 1121

and 28 U.S.C. 1331 and 1338, inasmuch as this action arises under the Trademark Act of

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1946 (the Lanham Act), as amended, 15 U.S.C. 1051 et seq., and supplemental jurisdiction
over any state-law claims pursuant to 28 U.S.C. 1367.
VENUE
4.

Venue is proper in this Court pursuant to 28 U.S.C. 1391(b)(1) because

Defendant Flinn Broadcasting is a corporation that is deemed to reside in this judicial district, as
that term is defined in 28 U.S.C. 1391(c).
5.

Venue is also proper in this Court pursuant to 28 U.S.C. 1391(b)(2) because a

substantial part of the events giving rise to the claims in this Complaint occurred in this judicial
district.
FACTUAL BACKGROUND
Plaintiffs Trademarks
6.

Radio One is a diversified media company and one of the nations largest radio

broadcasting companies. Directly and through subsidiaries, Radio One currently owns and/or
operates fifty-four broadcast stations located in sixteen urban markets in the United States.
Radio One operates radio stations in Georgia, Indiana, Maryland, Massachusetts, Michigan,
Missouri, North Carolina, Ohio, Pennsylvania, Texas, and Virginia.
7.

Radio One is the assignee of certain registered trademarks and trademark

applications and possesses trademark rights in the BOOM and BOOM FM marks (collectively
the BOOM Marks).
8.

On October 6, 2008, CBS Radio Holdings, Inc. filed with the United States Patent

and Trademark Office (USPTO) an application to register the BOOM FM mark for radio
broadcasting services on the Principal Register. On December 29, 2009, the USPTO registered
the BOOM FM mark to CBS Radio Holdings, Reg. No. 3732472. The registration is valid and

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subsisting, uncancelled, and unrevoked. A true and correct copy of the BOOM FM registered
trademark is attached hereto as Exhibit 1 and is incorporated by reference.
9.

On October 31, 2012, CBS Radio Holdings, Inc. effected a merger with CBS

Radio Stations, Inc. and executed an assignment of the BOOM FM mark to CBS Radio
Stations, Inc. (CBS). The assignment was recorded with the USPTO on October 2, 2014. A
true and correct copy of the assignment is attached hereto as Exhibit 2 and is incorporated by
reference.
10.

On October 3, 2014, CBS filed with the USPTO an application to register the

BOOM mark on the Principal Register for radio broadcasting services and entertainment
services, namely, audio programming services for dissemination via radio broadcasting and
streaming on the global communications network. A true and correct copy of the application to
register the BOOM mark (Serial No. 86413893) is attached hereto as Exhibit 3 and is
incorporated by reference.
11.

On December 19, 2014, CBS executed an assignment to Radio One of the BOOM

Marks. The assignment was recorded with the USPTO on December 22, 2014. A true and
correct copy of the assignment is attached hereto as Exhibit 4 and is incorporated by reference.
12.

From 2008 to late 2014, CBS used the BOOM FM mark for certain radio

stations and radio broadcasting services.

13.

Since October 2014, Radio One has used the BOOM FM and BOOM marks,

shown below, for its radio stations that specialize in playing only classic hip-hop music and to
identify its services, prominently displaying the mark on advertisements and its associated radio
station internet websites.

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4.

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Radio
o One is onee of the firstt broadcasterrs to adopt aan all classic hip-hop foormat

for its teerrestrial rad

dio stations. The change in formaat has been successful for Radio O
Ones
stations, garnering in
ncreased adv
vertising rev
venue, audieences, and m
media attentiion from nattional
T New Yorkk Times. Seee Daniel Kreeps, Classic Hip-Hop Foormat
publications Rolling Stone and The
Rescuing
g

Radio
o

Statiions,

RollingStone
R
e.com

(Dec.

28,

22014),

http://ww
ww.rollingsto
one.com/mu
usic/news/claassic-hip-hopp-format-resscuing-radio-stations20141228; Ben Sisarrio, Classic Hip-Hop
H
is Spreading
S
oon the Radio Dial, nytim
mes.com (Decc. 15,
2014), htttp://www.nytimes.com//2014/12/16//business/meedia/classic--hip-hop-is-sspreading-onn-theradio-diaal.html?_r=1 (attached heereto as Exh
hibit 5). As a result, Raddio One has achieved naationwide reco
ognition for its BOOM-b
branded radiio stations.
15.

f
and diistinctivenesss of the BO
OOM Markks is also reecognized inn the
The fame

Memphiss broadcastin
ng area and business com
mmunity. SSee Greg Akkers, 96X Chhanges Form
mat to
Throwba
ack

Hip--Hop

(D
Dec.

8,

2014,

11:33

PM),

bizjournals.com,

http://ww
ww.bizjournaals.com/mem
mphis/blog/m
morning_calll/2014/12/966x-changes-format-tothrowbacck-hip-hop.h
html (attacheed hereto as Exhibit
E
6).
16.

Radio
o One operattes its BOOM
M-branded cclassic hip-hhop radio stattions in Houuston,

Boom 92, KR
ROI-FM, lau
unched on October
O
13, 22014); Philaddelphia, Pennnsylvania (B
Boom
Texas (B
107.9, WPHI-FM,
W
launched on November 6, 2014); D
Dallas, Texas (Boom 994.5, KSOC
C-FM,

Case 2:15-cv-02053 Document 1 Filed 01/21/15 Page 5 of 15

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launched on November 17, 2014); and Atlanta, Georgia (Boom 102.9, WAMJ-HD2 and
W275BK, launched on November 25, 2014). Radio One also offers all of the aforementioned
radio stations for streaming over the internet. See Exhibit 7.
17.

Radio One uses the BOOM Marks in advertising on each of its respective radio

stations websites: http://boom92houston.com, http://boom945.com, http://boomphilly.com, and

http://myboom1029.com. A true and correct copy of each example of such advertising is
attached hereto as Exhibit 8 and is incorporated by reference.
18.

The BOOM Marks symbolize the extensive good will and consumer recognition

Radio One, and before it CBS, has created in programming classic hip-hop radio stations through
a substantial investment of time and effort in advertising and promotion.
19.

The registration of the BOOM FM mark also provides sufficient notice to

Defendant of Radio Ones ownership and exclusive rights in the mark.

Defendants Infringing Activity
20.

Flinn Broadcasting is a Memphis-based broadcaster that operates radio and

television stations throughout the United States. Flinn Broadcasting operates television stations
in Alabama, Florida, Minnesota, Mississippi, and Tennessee. Flinn Broadcasting operates radio
stations in Alabama, Arkansas, California, Florida, Georgia, Iowa, Louisiana, Mississippi,
Missouri, Montana, Nevada, Oklahoma, and Tennesse. See http://flinn.com (attached hereto as
Exhibit 9).
21.

On information and belief, on or about December 7, 2014, Flinn Broadcasting

began its unauthorized use of the BOOM Marks in connection with two of its newly re-formatted
radio stations, WIVG-FM 96.1 from Memphis, Tennessee, and Tunica, Mississippi; and WOXFFM 105.1 from Oxford, Mississippi. Both stations are known as Boomin 96 Throwback Hip

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Hop and specialize in playing only classic hip-hop music. See Lance Venta, Classic Hip-Hop is
Boomin in Memphis, RadioInsight.com, http://radioinsight.com/blog/headlines/netgnomes/
91097/flinn-scraps-memphis-sports-move-launching-classic-hip-hop (last updated Dec. 8, 2014,
8:15 AM) (attached hereto as Exhibit 10).
22.

In or about December 2014, Radio One became aware of Flinn Broadcastings

unauthorized use of the BOOM Marks.

23.

Flinn

Broadcasting

advertises

its

radio

stations

via

its

website,

http://flinn.com/index.php. See Exhibit 9. Flinn Broadcasting uses the infringing marks on its
website in advertising the radio stations:

WIVG-FM 96.1, http://flinn.com/index.php?option=

com_content&view=article&id=98&catid=97;

and

WOXF-FM 105.1, http://flinn.com/

index.php?option=com_content&view=article&id=129&catid=92Flinn. Flinn Broadcasting also

uses the infringing marks on the shared website for each of its Boomin 96-branded radio
stations, http://www.boomin96.com.

A true and correct copy of each example of such

advertising is also attached hereto as Exhibit 11 and is incorporated by reference. As shown

below, the word mark BOOM figures prominently in the logo of the two infringing and
confusingly similar Boomin 96 Flinn Broadcasting stations.

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24.
via

its

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Flinn Broadcasting also uses the infringing marks to advertise its radio stations
Twitter

Page

(@Boomin96)

and

via

its

Facebook

page

(https://

www.facebook.com/boomin96). A true and correct copy of each example of such advertising is

attached hereto as Exhibit 12 and is incorporated by reference.
25.

On December 17, 2014, CBS sent a letter to Duane Hargrove, General Manager

of WIVG-FM 96.1, to demand that it cease and desist the use of its confusingly similar Boomin
96 marks in connection with WIVG-FM 96.1 or any other Flinn Broadcasting station in light of
CBS ownership of the BOOM Marks. A true and correct copy of the letter from counsel for
CBS to Duane Hargrove is attached hereto as Exhibit 13 and is incorporated by reference.
26.

Upon information and belief, Flinn Broadcasting did not respond to the December

17, 2014 cease-and-desist letter.

27.

On January 6, 2015, subsequent to the assignment of the BOOM Marks to Radio

One, Radio One sent a second letter to Duane Hargrove, reiterating the previous demand that
Flinn Broadcasting immediately cease and desist the use of its confusingly similar Boomin 96
marks in connection with WIVG-FM 96.1 or any other Flinn Broadcasting station in light of
Radio Ones ownership of the BOOM Marks. A true and correct copy of the letter from counsel
for Radio One to Duane Hargrove is attached hereto as Exhibit 14 and is incorporated by
reference.
28.

At the time of the filing of the instant Complaint, Flinn Broadcasting has not

responded to the January 6, 2015 cease-and-desist letter.

29.

Upon information and belief, after Flinn Broadcasting received the two cease-

and-desist letters, it began offering smart-phone apps for streaming its Boomin 96-branded
classic hip-hop radio stations to various smart devices, including smart phones and tablets. Both

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the Apple and Android Boomin 96 apps incorporate the Boomin 96 logo that contains the
unauthorized use of the BOOM Marks.
30.

According to the Google Play website, the Boomin 96 streaming app for

Android products was released on January 9, 2015.

See https://play.google.com/store/

apps/details?id=com.flinnbroadcasting.flinn.boomin96. According to the Apple iTunes website,

the Boomin 96 streaming app for Apple products was released on January 14, 2015. See
https://itunes.apple.com/us/app/boomin-96/id951179027?ls=1&mt=8. A true and correct copy
of each example of such advertising is attached hereto as Exhibit 15 and is incorporated by
reference.
31.

Flinn Broadcasting has been engaging in the willful infringement of the BOOM

Marks since at least its receipt of the December 17, 2014 cease-and-desist letter.
32.

Flinn Broadcasting has no license, authority, or other permission from Radio One

to use the BOOM Marks in connection with radio broadcasting services or audio programming
services for dissemination via radio broadcasting and streaming on the global communications
network.
33.

Flinn Broadcasting has been engaging in the above-described infringing activities

knowingly and intentionally or with reckless or willful disregard to Radio Ones rights, or with
bad faith, for the purpose of trading on Radio Ones goodwill and reputation in its mark.
34.

Flinn Broadcastings activities, as described above, are likely to create a false

impression and deceive consumers, the public, and the trade into believing that there is a
connection, association, or sponsorship between the infringing services and Radio One.

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35.

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Upon information and belief, Flinn Broadcasting does not have any state or

federal trademark registration for its Boomin 96 mark, nor any pending state or federal
trademark applications for such a mark.
36.

Upon information and belief, Flinn Broadcasting intends to continue to design,

manufacture, advertise, promote, import, distribute, sell, and/or offer for sale the infringing
products and services, unless otherwise restrained.
37.

Radio One is suffering irreparable injury, has suffered substantial damages as a

result of Flinn Broadcastings activities, and has no adequate remedy at law.

COUNT I: TRADEMARK INFRINGEMENT
38.

Each of the foregoing paragraphs of this Complaint is hereby incorporated in this

Count by reference.
39.

Defendants use of Radio Ones registered trademark BOOM FM in connection

with its Boomin 96-branded radio stations is in violation of Radio Ones rights as a trademark
owner.
40.

The foregoing acts of Defendant are intended to cause, have caused, and/or are

likely to continue to cause confusion or mistake, or to deceive consumers, the public, and the
trade into believing that Defendants infringing services are licensed, authorized, affiliated with
or sponsored by Radio One.
41.

Upon information and belief, Defendant has acted with knowledge of Radio

Ones ownership of the BOOM FM mark, and has acted with deliberate intention or willful
blindness to unfairly benefit from the incalculable goodwill inherent in the mark.
42.

Defendants acts constitute trademark infringement in violation of Radio Ones

rights under Section 32 of the Lanham Act, 15 U.S.C. 1114.

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Upon information and belief, Defendant has made and will continue to make

substantial profits and gains to which it is not entitled in law or equity.

44.

Defendants acts have damaged and are likely to further damage Radio One and

the goodwill which Radio One has amassed in those marks.

45.

Unless Defendant is enjoined from further infringement of Radio Ones

trademarks, Radio One will suffer irreparable injury for which there is no adequate remedy at
law.
COUNT II: FALSE DESIGNATION OF ORIGIN OR SPONSORSHIP AND UNFAIR
COMPETITION
46.

Each of the foregoing paragraphs of this Complaint is hereby incorporated in this

Count by reference.
47.

The BOOM Marks have been used in conjunction with radio stations since at least

2008. Radio One has used the BOOM Marks with its radio stations that specialize in the classic
hip-hop format since October 2014.
48.

Defendants promotion, advertising, distribution, sale, and/or offering for sale of

the infringing services is intended, and likely, to confuse, mislead, or deceive consumers, the
public, and the trade as to the origin, source, sponsorship, or affiliation of the infringing services,
and is intended, and likely, to cause such parties to believe in error that the infringing services
have been authorized, sponsored, approved, endorsed, or licensed by Radio One, or that
Defendant is in some way affiliated with Radio One.
49.

Defendants acts, as alleged herein, constitute a false designation of origin, false

or misleading description of fact, false or misleading representation of fact, and unfair

competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).

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50.

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Upon information and belief, Defendant has made and will continue to make

substantial profits and gains to which they are not entitled in law or equity.
51.

Upon information and belief, Defendant intends to continue its infringing acts,

unless restrained by this Court.

52.

As a result of Defendants actions, Radio One has suffered irreparable harm to its

valuable trademarks and the goodwill associated therewith and has no adequate remedy at law.
Radio One has been, and, unless Defendant is preliminarily and permanently restrained from its
actions, will continue to be, irreparably harmed.
53.

As a direct and proximate result of Defendants conduct, Radio One has suffered,

and will continue to suffer, damages in an amount to be proven at trial.

54.

The conduct of Defendant, as described herein, was, and is, being undertaken

maliciously, fraudulently, deliberately, and willfully, and with knowledge of the BOOM Marks
owned by Radio One. As a result, this is an exceptional case within the meaning of Section
35(a) of the Lanham Act, 15 U.S.C. 1117(a), entitling Radio One to recover its reasonable
attorneys fees.
COUNT III: COMMON-LAW UNFAIR COMPETITION
55.

Each of the foregoing paragraphs of this Complaint is hereby incorporated in this

Count by reference.
56.

Defendants actions constitute unfair competition under the common law of

Tennessee.
57.

By reason of Defendants actions, Radio One has suffered irreparable harm to its

valuable trademarks and the goodwill associated therewith. Radio One has been and, unless

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Defendant is preliminarily and permanently restrained from its actions, will continue to be
irreparably harmed.
58.

As a direct and proximate result of Defendants conduct, Radio One has suffered

and will continue to suffer damages in an amount to be proven at trial.

WHEREFORE, Radio One respectfully requests prays for the following relief:
1.

A finding that: Defendant has violated Section 32 of the Lanham Act (15 U.S.C.

1114), Section 43(a) of the Lanham Act (15 U.S.C. 1125(a)), and has engaged in unfair
competition under the common law of Tennessee;
2.

An injunction, pursuant to Rule 65 of the Federal Rules of Civil Procedure and 15

U.S.C. 1116, preliminarily and permanently restraining and enjoining Defendant, its officers,
agents, employees, and attorneys, and all those persons or entities in active concert or
participation with them from:
a. manufacturing, importing, advertising, marketing, promoting, supplying,
distributing, offering for sale, or selling any products or services which bear the BOOM
Marks, or any other mark or design element substantially similar or confusing thereto,
including, without limitation, the infringing products and services, and engaging in any
other activity constituting an infringement of any of Radio Ones rights in its trademarks;
and
b. engaging in any other activity constituting unfair competition with Radio One,
or acts and practices that deceive consumers, the public, and/or trade, including without
limitation, the use of designations and design elements associated with Radio One; and

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3.

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An order requiring Defendant to recall from distribution and for the destruction or

other disposition of all remaining inventory of all infringing products, including all
advertisements, promotional and marketing materials therefore, as well as means of making
same;
4.

An order requiring Defendant to file with this Court and serve on Radio One

within thirty (30) days after entry of the injunction a report in writing under oath setting forth in
detail the manner and form in which Defendant has complied with the injunction;
5.

An order directing such other relief as the Court may deem appropriate to prevent

consumers, the public, and/or the trade from deriving any erroneous impression that any product
or service at issue in this action that has been manufactured, imported, advertised, marketed,
promoted, supplied, distributed, offered for sale, or sold by Defendant, has been authorized by
Radio One, or is related in any way with Radio One and/or its products and services;
6.

An order directing Defendant to disgorge all profits and other gains obtained as a

result of its wrongful acts of infringement as described herein;

7.

An order to Defendant to pay to Radio One all actual damages Radio One has

suffered as a result of its infringing activities;

8.

An order to Defendant to pay to Radio One all statutory damages as provided by

9.

An order to Defendant to pay to Radio One all punitive or exemplary damages as

law;

provided by law;
10.

An order that this is an exceptional case under 15 U.S.C. 1117(a) and awarding

Radio One its costs and reasonable attorneys fees and any applicable pre- and post-judgment
interest; and

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11.

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An award to Radio One of any such additional and further relief as the Court

deems just and proper.

JURY DEMAND
Radio One, by and through counsel, demands a trial by jury of the relevant issues in this
action.
Respectfully submitted,
WYATT, TARRANT & COMBS, LLP
s/ James C. Bradshaw III
WYATT, TARRANT & COMBS, LLP
James C. Bradshaw III (TN Bar No. 13170)
jbradshaw@wyattfirm.com
Carl Eppler (TN Bar No. 31112)
ceppler@wyattfirm.com
2525 West End Ave., Suite 1500
Nashville, TN 37203
Telephone: (615) 244-0020
Fax: (615) 256-1726
Attorneys for Plaintiff Radio One, Inc.

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