Some credit Donald Trump’s win to his savvy social media presence, including tweeting. He reached millions of voters and caught the nation’s attention with his tweets. The courts are now recognizing this phenomenon.
In a recent trademark dispute between a DJ and a rapper over the trademark “LOGIC,” the Sixth Circuit recently criticized a district court decision for being “incomplete and at times flawed,” because it failed to properly consider Facebook likes and other social media as proof of marketing. The Court explained that “[p]romotion on platforms such as Twitter and Facebook not only constitutes marketing, but is among the most popular and effective advertising strategies.” President Elect Trump would agree with this statement.
Specifically, the case involved a suit brought by DJ Lee Jason Kibler who performs under and owns the federally registered trademark “DJ LOGIC.” See Kibler, dba DJ Logic, v. Hall, et. al, No. 15-2516 (6th Cir. Dec., 13, 2016). The DJ sued rapper Robert Bryson Hall, III (aka Logic”) for federal trademark infringement, federal trademark dilution, breach of the Michigan Consumer Protection Act and unfair competition. In essence, the DJ thought the rapper’s use of the trademark would confuse fans, improperly trade on his good name and dilute his brand. Last week, the Sixth Circuit granted summary judgment in favor of the rapper thereby shutting down the DJ’s lawsuit. In assessing the likelihood of confusion, the Sixth Circuit examined eight factors courts routinely examine: “1) the strength of the plaintiff’s mark; 2) relatedness of the products; 3) similarity of the marks; 4) evidence of actual confusion; 5) plaintiff’s marketing channels; 6) likely degree of purchaser care; 7) defendant’s intent in selecting the mark; and 8) the probability that the product lines will expand.”
The Sixth Circuit found that although the DJ had shown that DJ LOGIC was moderately strong conceptually, he had not offered evidence of the mark’s commercial strength. Significantly, the DJ failed to provide survey evidence. The Sixth Circuit pointed out the flaws in the district court’s analysis described above with respect to this factor. Although the tweets and Facebook popularity should be considered, the DJ had failed to provide evidence of widespread recognition. The district court’s analysis was incomplete because it concentrated only on “low album sales, current lack of a recording contract and inability ever to secure a recording contract with a major label.” The Sixth Circuit explained that “[a]lbum sales and even recording contracts are less critical markers of success than before because of widespread internet use.”
Anyone heard of a guy named Justin Bieber who was discovered on YouTube? Who hasn’t downloaded music from the iTunes store? In fact, I am not even sure if my niece and nephew even own a physical album like the ones I purchased growing up. Despite the district court ignoring this evidence, the DJ failed to provide the Sixth Circuit with enough evidence to persuade it that the DJ LOGIC mark was commercially strong.
The Sixth Circuit agreed that the relatedness of the products factor was neutral. The products (e.g., DJ services and rapping) were somewhat related, but not directly competitive. Only the rapper used his vocals.
The third factor weighed in favor of the rapper because when you examine “DJ LOGIC” as a whole DJ is the prominent feature. As for the fourth factor of actual confusion, the DJ was favored only slightly with his ten instances of actual confusion. These “ten instances paled in comparison to [the rapper’s] 170,000 album sales and his popularity on YouTube, Facebook and Twitter.
The fifth factor—marketing channels—was neutral even though the district court had underestimated the impact of widespread internet use. The Sixth Circuit explained that there was “minimal evidence that the parties’ advertising methods or targeted customers substantially overlapped beyond shared use of congested Websites like Facebook and iTunes.”
The district court rightfully disregarded the likely degree of purchaser care. Further, the district court properly found the intent factor to be neutral as there was no reason to believe he knew about the DJ before choosing his “LOGIC” mark. Finally, the district court also found the likelihood of expansion to be neutral. There was no proof that the DJ was going to become a rapper or vice versa.
This decision shows that social media needs to be considered in trademark disputes (and many other cases) and litigants need to come with proof to prevail.