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When it is also important how your trademark is commercially strong

Lee Jason Kibler, a disc jockey, brought federal trademark infringement, related state law, and federal trademark dilution claims against Robert Bryson Hall, II, a rapper, and professional entities supporting Hall’s work.

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 though he currently has no record deal. 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. He previously used the names “Young Sinatra” and “Psychological.” Three Oh One Productions is Hall’s personal company and Visionary Music Group his management company. UMG Recording d/b/a Def Jam Recordings is Hall’s record label and William Morris Endeavor Entertainment (“WME”) his booking agent.

In September 2012, Kibler’s attorney sent Visionary Music Group and WME an email ordering them to stop using the name “LOGIC” and to recall any product or advertisement that did. The attorney maintained that such use infringed on Kibler’s mark. The next month, Three Oh One Productions applied to register “LOGIC” as a trademark. In January 2014, Kibler filed suit against the defendants in the U.S. District Court for the Eastern District of Michigan.

In this case, the district court found that “DJ LOGIC” is moderately strong conceptually. The court reasoned that while “DJ” describes Kibler’s craft, “LOGIC” is not even “suggestive of the characteristics of his music.” According to Kibler the court erred in not considering the mark’s incontestability.

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. The court found that third parties have weakened the mark even further by marketing music under nearly ninety variations of “logic.”

The district court properly found that Kibler’s evidence would prevent a reasonable jury from concluding that “DJ LOGIC” is commercially strong. But its analysis was incomplete and at times flawed. The court did not treat survey evidence as a prerequisite for establishing commercial strength. Rather, it also considered whether Kibler had provided marketing evidence. The 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. 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. This means “extensive” marketing and “widespread” publicity around the music and mark. Kibler’s evidence may not create an adverse inference of broad recognition, but it lacks the information jurors would need to find such awareness.

The district court rightly found that Kibler has enjoyed limited commercial success and that this implies that “DJ LOGIC” is not broadly familiar. But the court’s analysis was incomplete. Album sales and even recording contracts are less critical markers of success than before because of widespread internet use. As a result, a plaintiff with low album sales or no representation could nevertheless show commercial success suggesting broad recognition of his mark using web-based indicators of popularity, e.g., YouTube views. Because Kibler has not done that, the court has only his low album sales, current lack of a recording contract, and inability ever to secure a recording contract with a major label. Kibler declared that he has participated “in hundreds of live performances held in at least 46 states,” but he does not indicate the number of people who attended, the number of other artists involved, and whether he ever received top billing. Kibler’s silence on his popularity online and general statement about his performances do not allow for a finding that “most people will be familiar” with “DJ LOGIC.”

The district court found the relatedness factor neutral insofar as the parties’ products are somewhat related, but not directly competitive. The court reasoned that while both Kibler and

Hall perform and sell music, only Hall uses his vocals. Kibler maintained that the factor favors him based on proof that he and Hall both sell hip-hop incorporating turntables and rap. Kibler refers to print and online media about Hall, much of which affiliates him with hip-hop and all of which describes him as a rapper.

The district court correctly found this factor neutral because the record supports that the parties’ products are somewhat related, but not directly competitive. The most relevant evidence is a booking notice describing Hall as a “hot upcoming rapper” and two online ads featuring Hall holding a microphone. They indicate that while both are musicians and perhaps hip-hop artists, Hall markets himself as a rapper and Kibler a disc jockey.

The district court acknowledged that both marks include the prominent word “logic.” Then it noted that the “‘DJ’ portion not only changes the look and sound of the mark but also describes or suggests certain characteristics of Kibler’s music.”

The district court concluded that summary judgment was appropriate because no reasonable jury could find “DJ LOGIC” is famous under the Lanham Act. The court cited its finding that Kibler failed to show the mark is commercially strong for trademark infringement purposes. Kibler contends that the district court erred in discounting proof of his fame. Kibler cites his sworn declaration describing his experience in the music industry and his deposition testimony that he was a guest contributor on a Grammy-winning album.

Kibler’s evidence clearly falls 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. Indeed, having failed to show that his mark is commercially strong for even trademark infringement purposes, Kibler cannot point to a triable issue in case.

Kibler has not provided evidence that would allow a reasonable jury to find relevant consumers are likely to confuse the sources of his and Hall’s products, or that Hall’s mark has diluted his. For these reasons, the court affirmed the grant of summary judgment to defendants on Kibler’s federal trademark infringement, related state law, and federal trademark dilution claims.