Sixth Circuit Drops the Beat: Social Media Relevant in Determining Likelihood of Confusion
The US Court of Appeals for the Sixth Circuit affirmed a grant of summary judgment, holding that the plaintiff provided insufficient evidence to find that relevant consumers were likely to confuse the sources of his and the defendant’s products or that defendant diluted the plaintiff’s mark. Lee Jason Kibler, dba DJ Logic v. Robert Bryson Hall, II, et al., Case No. 15-2516 (6th Cir., Dec. 13, 2016) (Cole, J).
DJ Lee Jason Kibler performs under the stage name DJ LOGIC, on which he owns a trademark registration. Kibler uses turntables and other vocals to produce music containing jazz and funk elements and has released several albums. He has also performed since 1999. The defendant, Robert Bryson Hall, II, is a rapper who performs under the name Logic and has done so since 2009. In 2014, Kibler sued Hall for federal trademark infringement, federal trademark dilution, breach of the Michigan Consumer Protection Act and unfair competition, arguing that Hall’s use of the name Logic infringed on Kibler’s trademark. After settlement negotiations failed, Hall moved for summary judgment. Kibler appealed.
In assessing the likelihood of confusion, the Sixth Circuit examined the following eight factors that courts routinely use: “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 while Kibler showed that DJ LOGIC is moderately strong conceptually, he did not provide enough evidence of the mark’s commercial strength, such as survey evidence. The Court also found that Kibler did not provide enough evidence of marketing. The Court explained, however, that the district court erred in finding that Kibler had not provided any marketing: “promotion on platforms such as Twitter and Facebook not only constitutes marketing, but is among the most popular and effective advertising strategies today.”
The Sixth Circuit further noted that the relatedness of the products factor was neutral and that the products—DJ services and rapping—were somewhat related but not directly competitive. The Court also agreed with the district court that the similarity of the marks factor weighed in favor of Hall, explaining that “the anti-dissection rule requires us not to dwell on the prominent features of a mark and instead consider it as a whole,” meaning examining “DJ LOGIC” as a whole, including its appearance, sound, language and impression.
Moreover, Kibler’s evidence of actual confusion included 10 instances of actual confusion, which the Sixth Circuit found only slightly favored him. “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.”
Finally, the Sixth Circuit found that the remaining factors were neutral and that the district court was correct in disregarding the likely degree of purchaser care factor, because the degree of care exercised by music consumers varies greatly by consumer and transaction. The Court agreed that Kibler’s evidence fell short of proving fame and that therefore there was no trademark dilution.