A DJ asserting trademark infringement and dilution claims against a similarly named rapper failed partly due to a lack of apparent popularity on social media, the U.S. Court of Appeals for the Sixth Circuit ruled on December 13. In Kibler v. Hall, et al., No. 15-2516 (6th Cir. Dec. 13, 2016), the appellate court affirmed summary judgment granted below for Hall, a rapper performing as “Logic” in a suit brought by Kibler, who performs as “DJ Logic.” While the Sixth Circuit agreed with the district court’s rejection of DJ Logic’s claims, it called the district court’s analysis “incomplete and at times flawed,” and pointed out the importance of social media engagements in determining trademark strength.
In 2012, an attorney for DJ Logic, who has been using the moniker since 1999, sent an email to the management company and booking agent of Hall, who has been performing as Logic since 2009, ordering them to stop using the name Logic. The email did not prove persuasive and DJ Logic sued in 2014, asserting claims of trademark infringement and trademark dilution under the Lanham Act, as well as two claims under Michigan law. The district court granted summary judgment in November 2015, dismissing all of DJ Logic’s claims.
On appeal, the Sixth Circuit considered the issues of likelihood of confusion and trademark dilution and affirmed the grant of summary judgment. In its opinion, the court discussed in detail the commercial strength of the “DJ Logic” mark. The Sixth Circuit explained that the district court erred in concluding that DJ Logic had not provided marketing evidence, pointing out that “[p]romotion on platforms such as Twitter and Facebook not only constitutes marketing, but is among the most popular and effective advertising strategies today.” As such, the Appellate Court intimated that a convincing case for commercial strength should have included evidence such as numbers of Twitter and Facebook likes, followers, and re-posts. Additionally, with album sales and recording contracts “less critical markers of success” in the internet age, evidence such as YouTube views could have demonstrated commercial success.
In addition to commercial strength, the Sixth Circuit weighed the other seven Frisch factors, determining that they were either neutral or weighed against DJ Logic. Accordingly, the trademark infringement claim failed. The court then explained that, due to the higher standard for fame required for a trademark dilution claim, since DJ Logic “failed to show that his mark is commercially strong for even trademark infringement purposes,” his dilution claim failed, as well.
The decision indicates that, even while analyzing claims under familiar frameworks, courts can be receptive to the internet and social media as sources of evidence to support or rebut a party’s claims.
1. The factors originating from Frisch’s Rest., Inc. v. Shoney’s Inc., 759 F.2d 1261 (6th Cir. 1985) are (1) strength of plaintiff’s mark; (2) relatedness of products; (3) similarity of marks; (4) evidence of actual confusion; (5) marketing channels used by the parties; (6) likely degree of consumer care; (7) defendant’s intent in mark selection; and (8) probability of product line expansion.