By Peter Reap, J.D., LL.M.
Through their use of the stage name LOGIC, hip hop artist Robert Bryson Hall, II, and professional entities supporting Hall’s work (together, the "defendants") were not likely to cause consumer confusion or dilute plaintiff disc jockey Lee Jason Kibler’s registered DJ Logic mark, the U.S. Court of Appeals in Cincinnati has decided. A ruling by the federal district court in Detroit was affirmed because Kibler failed to provide evidence that would allow a reasonable jury to find that the relevant consumers are likely to confuse the sources of his and Hall’s products, or that Hall’s mark has diluted his (Kibler v. Hall, II, December 13, 2016, Cole, R.).
Kibler uses turntables and others’ vocals to produce music containing jazz and funk elements, among others. He has performed and released several albums under the name "DJ LOGIC" since 1999. Kibler registered "DJ LOGIC" as a trademark in 2000, allowed the registration to lapse in 2003, and re-registered the name in 2013. He has also been known as just "LOGIC." Hall has performed under the name "LOGIC" since 2009.
In January 2014, Kibler filed suit against the defendants in the U.S. District Court for the Eastern District of Michigan. He alleged federal trademark infringement and dilution, as well as state law claims. In November 2015, the district court granted defendants’ motion in all respects. Kibler appealed.
Kibler made no separate arguments for his state law claims, and they relied on the same allegations as his federal trademark infringement claim. For these reasons, the court addressed the state law claims along with the trademark infringement claim.
Here, the parties agreed that Kibler’s mark is protectable. So the court focused on the likelihood that potential buyers of rap would believe Kibler’s music is Hall’s or vice-versa. In assessing the likelihood of confusion, the court takes into account the following eight "Frisch" factors: 1) strength of the plaintiff’s mark, 2) relatedness of the products, 3) similarity of the marks, 4) evidence of actual confusion, 5) parties’ marketing channels, 6) likely degree of purchaser care, 7) defendant’s intent in selecting the mark, and 8) probability that the product lines will expand.
Strength of plaintiff’s mark. The first Frisch factor favored the defendants, according to the court. While Kibler showed that "DJ LOGIC" is moderately strong conceptually, he failed to provide evidence of the mark’s commercial strength.
The district court properly found that Kibler’s evidence would prevent a reasonable jury from concluding that "DJ LOGIC" is commercially strong, the Sixth Circuit held. But its analysis was incomplete and at times flawed. The lower court did not treat survey evidence as a prerequisite for establishing commercial strength. Rather, it also considered whether Kibler provided marketing evidence. The district court erred, however, in finding that he had not. Promotion on platforms such as Twitter and Facebook not only constitutes marketing, but is among the most popular and effective advertising strategies today. And whether publicity like magazine interviews and television appearances constitutes marketing or a separate form of evidence, it speaks to commercial strength.
But some proof is not enough, according to the appellate court. Kibler must offer evidence that would permit a reasonable jury to determine that wide segments of the public recognize "DJ LOGIC" as an emblem of his music. Kibler’s evidence lacked the information jurors would need to find such awareness. For instance, how many and what kind of Twitter followers does Kibler have? A large number of followers, or celebrities likely to re-tweet Kibler’s messages to their large number of followers, for example, would suggest that many types of people know his work and mark. The same could be said of Kibler’s Facebook fans, likes, posts, and re-posts.
The district court rightly found that Kibler enjoyed limited commercial success and that this implied that "DJ LOGIC" is not broadly familiar. Nor did the defendants show that the third parties use the marks in the relevant market. Because the record reflected that "DJ LOGIC" is moderately strong conceptually, but weak commercially, the first Frisch factor favors the defendants.
Relatedness of products. The district court correctly found this factor neutral because the record supported that the parties’ products are somewhat related, but not directly competitive. The parties’ products are comparable to the bourbon and tequila goods that only to belong to the same broad category of high-end distilled spirits, the court observed.
Similarity of the marks. The anti-dissection rule requires courts not to dwell on the prominent features of a mark and instead consider it as a whole. The district court properly found this factor favored the defendants by correctly applying the anti-dissection rule, according to the Sixth Circuit. This meant examining "DJ LOGIC" as a whole, including its appearance, sound, language, and impression. Kibler’s call for this court to "focus on the dominant features of each mark and disregard the non-dominant features" was precisely what the anti-dissection rule forbids.
Evidence of actual confusion. Kibler offered evidence of at most ten instances of actual confusion. Because past confusion is the best proof of future confusion, any evidence at all favored the plaintiff, the court noted. Kibler offered some proof, but it was scant. If "LOGIC" really threatened to confuse consumers about the distinctions between Hall and Kibler, one would see much more than ten incidents throughout 170,000 album sales, 1.7 million album downloads, and 58 million YouTube views. The fact that none of the incidents were purchases would further prevent a jury from finding that this factor significantly helps Kibler. In sum, Kibler did not present the quantity or type of proof that would tilt the actual confusion factor substantially in his favor.
Marketing channels. Kibler showed that the parties market their products on the same websites, Twitter and Facebook, and target the same customers, users of Amazon or iTunes. At first glance, this overlap was compelling, the court noted. But the popularity of these channels makes it that much less likely that consumers will confuse the sources of the parties’ products. There are just too many other contenders. For these reasons, shared use of the above websites did not help determine the likelihood of confusion. The marketing channels factor is neutral because there was minimal evidence that the parties’ advertising methods or targeted customers substantially overlap beyond shared use of congested websites like Facebook and iTunes.
Degree of purchaser care. The degree of care exercised by music consumers varies greatly by consumer and transaction. The district court was right to disregard this factor, the appellate court held.
Intent on selecting the mark. The district court properly found this factor neutral because the record prevented a reasonable jury from inferring intent. There was no proof that Hall searched for "logic music" or "logic musician," no reason to believe he had to, and thus no evidence he knew of "DJ LOGIC" before adopting "LOGIC." Hall’s testimony shows, to the contrary, that he avoided choosing a mark that might lead consumers to confuse his product with that of another musician.
Likelihood of expansion. The district court rightly concluded that this factor is neutral. With no sign of any future overlap in the market, the parties’ mutual use of hip-hop was irrelevant.
Balance of the factors. Evidence of actual confusion favored Kibler only marginally and both the strength of plaintiff’s mark and similarity of the marks favored the defendants. Though the Frisch inquiry is flexible and contextual, these are the most important factors, the court said. Further, the remaining factors are either neutral or insignificant.
The district court properly concluded that summary judgment was appropriate because no reasonable jury could find "DJ LOGIC" is famous under the Lanham Act. Kibler’s evidence clearly fell short of the high threshold for fame under the Lanham Act. "DJ LOGIC" is simply in a different league from the marks that have met this threshold, the court explained.
The case is No. 15-2516.
Attorneys: C. Enrico Schaefer (Traverse Legal, PLC) for Lee Jason Kibler. David Brafmen (Akerman LLP) for Robert Bryson Hall, II.
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