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FilmOn Sues Aereo for False Designation of Origin and False Endorsement under the Lanham Act

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FilmOn v. Aereo By Alex Shank – Edited by Michelle Sohn Complaint,, Inc. v. Aereo, Inc., No. CV13-00912 (C.D. Cal. Feb. 7, 2013) Complaint (hosted by Scribd) [caption id="attachment_3030" align="alignleft" width="150"] Photo By: Luis Alberto Martinez Riancho - CC BY 2.0[/caption] Online TV site, Inc. (“FilmOn”) filed a complaint against competitor Aereo, Inc. (“Aereo”) on counts of false designation of origin and false endorsement under the Lanham Act on February 7, 2013 in the United States District Court of the Central District of California. FilmOn also seeks declaratory judgment that its use of the names “Aero” and “Aereokiller” do not violate the Act and that any trademark right in the name “Aereo” claimed by Aereo is invalid. Since early 2012, FilmOn has marketed and sold the “WinTV-Aero-m” antenna manufactured by Hauppauge Computer Works, Inc. (“Hauppauge”). Just one day before the complaint was filed, Hauppauge assigned the trademark rights to “Aero” to FilmOn. In late 2011, Aereo changed its name from Bamboom Labs, Inc. to Aereo, the name under which it started its online TV site in early 2012. FilmOn argues that Hauppauge had sold “WinTV-Aero-m” antennas since early 2011 and that Aereo intentionally changed its name later that same year to confuse consumers and to attract them to Aereo by capitalizing on the Aero name. The Hollywood Reporter provides an overview of the case and a discussion of prior legal actions between FilmOn and Aereo. Virtual Strategy Magazine features a brief profile of FilmOn and its reaction to continuing lawsuits brought against it by major TV networks. JOLT Digest covered the recent denial of a preliminary injunction to stop Aereo from broadcasting its television content over the Internet. According to FilmOn’s complaint, Hauppauge began manufacturing and selling its “WinTV-Aero-m” television antenna early in 2011. Under an agreement with Hauppauge, in January 2012 FilmOn started selling the antenna on its website under the name “FilmOn Air.” The antenna name was changed to “FilmOn.TV Aero” at an unspecified date. In late 2011, Aereo changed its name from “Bamboom Labs, Inc.” to “Aereo, Inc.” after filing an application with the USPTO for a service mark for the name “Aereo.” In February 2012, Aereo launched its online TV streaming service. The day before FilmOn filed this complaint against Aereo, Hauppauge assigned the trademark rights to the “Aero” name to FilmOn. In its first claim for relief, FilmOn alleges that Aereo violated the Lanham Act by intentionally selecting a name “confusingly similar to ‘Aero.’” Complaint at 4. Under the Lanham Act, any seller of goods that uses a “false designation of origin” or “misleading representation of fact” that would likely “cause confusion” can be held liable by any person who believes that he or she is “likely to be damaged by such act.” 15 U.S.C. § 1125(a) (2012). FilmOn argues that Aereo has damaged and continues to damage FilmOn’s right to the “Aero” name by attempting to draw an association between “Aereo” and “Aero” that is likely to cause consumer confusion. As reported by The Hollywood Reporter, Aereo spokesperson Virginia Lam called the lawsuit “not only baseless but frivolous” and said that Aereo would respond “as appropriate.” Lam also suggested that the complaint was filed as a response to a recent letter that Aereo sent to FilmOn requesting that it stop trading on the “Aereo” name through FilmOn’s partner website, “Aereokiller.” FilmOn directly addresses the letter from Aereo under its second claim for relief, seeking declaratory judgment that FilmOn’s use of “Aero” and “Aereokiller” do not violate the Lanham Act. FilmOn further argues that any trademark rights that Aereo has in “Aereo” are invalid. In addition to seeking the declaratory judgment and compensatory and punitive damages, FilmOn requests a permanent injunction prohibiting Aereo from using the “Aereo” name and that the domain name be transferred to FilmOn. As of today, Aereo has not yet filed an answer to the complaint. In separate actions, both FilmOn and Aereo have been sued for copyright infringement by major television networks including ABC, CBS, FOX, and NBC. The United States Court of Appeals for the Second Circuit is currently hearing an appeal from a decision issued by the United States District Court for the Southern District of New York denying a preliminary injunction to prevent Aereo from broadcasting its online content. In contrast, FilmOn is appealing a preliminary injunction issued by the United States District Court for the Central District of California prohibiting its services within the “geographical boundaries” of the United States Court of Appeals for the Ninth Circuit. The Hollywood Reporter speculates that the circuit split may eventually lead to a U.S. Supreme Court hearing on the legality of online television distribution. Alex Shank is a 1L at Harvard Law School.