Lee Kibler, who is better known as “DJ Logic,” was dealt an unfavorable ruling in his trademark fight against rapper Robert Bryson Hall, WME-IMG, and Hall’s record label, Def Jam, last week by the U.S. Court of Appeals for the Sixth Circuit. Kibler, who alleges that he has been known as “DJ LOGIC” and simply, “LOGIC” since 1999 and has released several albums under that name, sued Hall for trademark infringement and dilution, among other claims, in 2014 in the U.S. District Court for the Eastern District of Michigan, alleging that Hall subsequently adopted the DJ Logic name.
The Lower Court’s Decision
Kibler asserts in his complaint that he registered “DJ LOGIC” in 2000 as a trademark, though he allowed it to lapse in 2003 and filed to re-register the name in 2013. Hall, on the other hand, began performing under the name “LOGIC” in 2009 and released an album in 2014 that sold over 170,000 copies.
The lower court sided with Hall, holding that Kibler’s mark lacked the necessary strength to create a risk of confusion. The legally-minded amongst us will know that a likelihood of confusion is one of the key elements required in a trademark infringement case, and that the stronger a mark is, the greater the risk of confusion. (These same individuals will also be curious to know that the court used the eight ‘likelihood of confusion’ factors set forth in Frisch's Rest., Inc. v. Shoney's Inc., 759 F.2d 1261 (6th Cir. 1985)).
The court held that in order for a trademark to be considered “strong,” and thus, susceptible to confusion and infringement, it must be “both conceptually and commercially strong.” While the court held that, conceptually, the “DJ Logic” mark is strong, it lacks “commercial strength” in connection with Kibler. Commercial strength is the amount of marketplace recognition associated with the mark. In short: it refers to how widely known and recognized the mark is among the public.
Without having commercial strength (which may be proven by showing "extensive marketing" and "widespread publicity" around the mark, according to the 6th Circuit), a conceptually strong mark is likely to be declared “weak” for the purposes of likelihood of confusion.
Here, the district court concluded that "DJ LOGIC" is commercially weak. The court cited Kibler's lack of survey or marketing evidence and limited commercial success. He had sold fewer than 60,000 albums in the past 16 years and fewer than 300 albums in the past year; he currently does not have a record contract; and has never obtained a recording contract with a major label.
Kibler provided the court with other “marketing evidence” of the strength of his mark – such as a sworn declaration that he advertised in print and online, including on Myspace, Twitter and Facebook; a couple print articles that featured him and his music; and information regarding various television appearances on shows, include the Tonight Show Starring Jimmy Fallon, the Today Show, and Good Morning America – but the lower court held that it was insufficient to prove commercial strength.
The Sixth Circuit
Overall, the Sixth Circuit sided with the lower court in holding that Kibler failed to provide evidence of commercial strength that would permit a reasonable jury to determine that “wide segments” of the public would recognize “DJ LOGIC” as a mark.
But – and this is where it gets interesting – the Sixth Circuit held that the number and quality of Kibler’s Twitter followers could serve as evidence of commercial strength. According to Chief Judge R. Guy Cole Jr., who drafted the opinion:
Promotion on platforms such as Twitter and Facebook not only constitutes marketing, but is among the most popular and effective advertising strategies today … 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. We can say the same of the number and kind of Kibler's Facebook fans, likes, posts, and re-posts.
Courts Go Social
Given the widespread viewing of certain individuals’ social media posts and the largescale active audiences that these platforms maintain, it comes as little surprise that courts are deeming them to be sources that are just as relevant – if not more relevant – than traditional media.
You may recall that courts have been warming to the use of technologically savvy mediums in a number of ways. For instance, courts have allowed parties initiating lawsuits to deliver the initial court documents to the defendants by way of email – something that was previous prohibited in accordance with court rules on civil procedure. As we saw in Williams v. Advertising Sex LLC, the court permitted Allison Williams, a former Miss West Virginia, to effect service of process on three foreign defendants via electronic mail in connection with her lawsuit, which alleged that 59 individuals and business entities defamed her by falsely identifying her as participant in graphic sex video that they advertised on multiple websites.
Other courts have gone as far as allowing for service of process by way of Facebook. In September 2014, a New York judge made headlines when he allowed a man to use Facebook to serve his ex-wife with notice that he was seeking to terminate his child support obligation. In another suit, Baidoo v. Blood-Dzraku, 5 N.Y.S. 3d 709 (2015), which a New York state court judge issued an opinion authorizing service of divorce papers on a husband completely via Facebook, the judge held: “In this age of technological enlightenment, what is for the moment unorthodox and unusual stands a good chance of sooner or later being accepted and standard, or even outdated and passé.”
It will be interesting to see if other courts apply social media statistics when considering public recognition.
* The case is KIBLER v. HALL et al (2:14-cv-10017).