Sullivan, Frank M. v. CBS Corporation ( 2004 )

In the
United States Court of Appeals
For the Seventh Circuit
____________
No. 02-2058
FRANK M. SULLIVAN III,
Plaintiff-Appellant,
v.
CBS CORPORATION, et al.,
Defendants-Appellees.
____________
Appeal from the United States District Court for
the Northern District of Illinois, Eastern Division.
No. 00 C 5060—William J. Hibbler, Judge.
____________
ARGUED DECEMBER 2, 2003—DECIDED SEPTEMBER 24, 2004
____________
Before RIPPLE, MANION, and WOOD, Circuit Judges.
WOOD, Circuit Judge. Seeking to protect his trademark
in the band name “Survivor” (the Band), Frank Sullivan
brought an action alleging trademark infringement, federal
and common law trademark dilution, unfair competition, and
deceptive trade practices against defendants CBS Corporation,
CBS Broadcasting, Survivor Productions, TVT Records and
Tee Vee Toons, (collectively referred to as CBS), the pro-
ducers and distributors of music CDs and merchandise
bearing the logo of the well-known television show, “Survivor”
(the Series). Sullivan, who registered the mark “Survivor”
in connection with the Band in 1994, claims that the
defendants cannot use the word “Survivor” on their CDs and
2 No. 02-2058
merchandise. The district court granted summary judgment
in favor of the defendants, holding that although Sullivan’s
mark is entitled to protection, Sullivan cannot demonstrate
any likelihood of confusion as to the origin of the CDs or
merchandise related to the Series, nor can Sullivan show
any likelihood of dilution. On our de novo review, we too con-
clude that Sullivan cannot show any likelihood of confusion
or dilution, and so we affirm the judgment of the district
court.
I
A
Sullivan and four other men formed Survivor the Band in
1977. Throughout the 80s, the Band released a number of
albums and had a number of hit songs, including “Eye of
the Tiger,” the theme song for the well-known movie Rocky
III. The Band toured extensively and won several music
industry awards. Survivor released its first greatest hits
collection in 1989, and followed up with another collection
containing two new songs in 1993.
Over the years, various members left the Band. A former
lead singer for the Band then began performing with dif-
ferent musicians under the name Survivor. Litigation fol-
lowed, leading Sullivan and another member, James Peterik,
to apply for a trademark registration for the name “Survivor”
in March 1994. Sullivan and Peterik sought to use the name
in connection with “Entertainment services: namely pro-
viding band and/or musical services.” The registration did
not encompass merchandising. Peterik later assigned his
rights to Sullivan, who remains the sole holder of the mark.
Sullivan continues to perform as Survivor, though the
Band has not released any new music in the United States
since 1993. At these concerts, Survivor sells its CDs and
other products like t-shirts. Survivor also licenses music to
television shows and commercials. Record stores sell the
No. 02-2058 3
Band’s CDs and radio stations continue to play the Band’s
music. Sullivan claims that the Band sells millions of dol-
lars’ worth of records and merchandise, and that he spends
millions of dollars each year advertising and promoting the
Band, but he offered no evidence in support of these
contentions.
B
In May 2000, CBS debuted a weekly reality television
series called “Survivor.” On the Series, sixteen participants
are “marooned” on an island or otherwise inaccessible area.
The castaways face various trials and contests, all while
trying to survive the harsh realities of life in the deserted
location. Every few days, the castaways vote to evict one
member of the group. This continues until two castaways
remain. The eliminated participants then vote on which of
the two left should win the $1 million prize. The Series has
been a great success.
Before the Series first aired, CBS developed a logo for use
in promotions and advertising. The logo features an oval with
the word “SURVIVOR” across the center, surrounded by a
scene reflecting the current season’s location. The words
“OUTWIT,” “OUTPLAY,” and “OUTLAST” surround the
perimeter of the oval. In the second season, for example, the
inside scene showed a kangaroo and sunset on an Austra-
lian outback scene. The inside phrase was changed from
“SURVIVOR,” to “SURVIVOR-AUSTRALIAN OUTBACK.”
C
In August 2000, CBS released a soundtrack featuring a
compilation of original music from the Series. The word
“SURVIVOR” is printed in large block letters across the front
of the album, while the words “THE OFFICIAL SOUND-
TRACK TO THE HIT CBS TV SERIES” are printed un-
derneath. The lower right of the CD shows the Series’ oval
4 No. 02-2058
logo. CBS released a second CD in November 2000, this one
proclaiming that it featured music “inspired” by the Series.
The front of the second CD shows the oval Series logo, with
flames coming through the top of the oval, and the words
“OFFICIAL PARTY SURVIVAL KIT” printed below the
logo. This CD contains previously recorded songs with sur-
vival and island themes. Both CDs are marketed primarily
to Series viewers and are classified as soundtracks. In June
2000, CBS launched a line of merchandise, including t-
shirts, mugs, bags, calendars, and books, all bearing the
oval Series logo.
II
Sullivan claims that the defendants are infringing his
Band mark with their use of the word “Survivor” on the two
CDs and the related merchandise, in violation of Sections
32(1) and 43(a)(1)(A) of the Lanham Act, 15 U.S.C. §§ 1114(1),
1125(a)(1)(A), the Illinois Trademark Registration and
Protection Act, 765 ILCS § 1036/65, the Uniform Deceptive
Trade Practices Act, 815 ILCS §§ 510 et seq., the Consumer
Fraud and Deceptive Business Practices Act, 815 ILCS
§§ 505 et seq., as well as the common law of unfair competi-
tion. Only the trademark infringement and dilution theories
are before us on appeal. To prevail on his trademark in-
fringement claims, Sullivan must show that his mark is
entitled to protection and that there is a likelihood of con-
fusion between his mark and CBS’s mark. The district court
found that Sullivan’s mark, “Survivor” (referring to the
Band), was descriptive, but that it had acquired secondary
meaning. The court then applied a seven-factor test and
found that Sullivan failed to demonstrate any likelihood of
confusion.
Although CBS does not contest the district court’s clas-
sification of Sullivan’s mark as descriptive, in our view that
classification is incorrect. Ultimately, this does not change
the outcome for Sullivan, but the mark, “Survivor,” for a
No. 02-2058 5
band, is properly classified as arbitrary, not descriptive.
Trademarks are classified in one of four categories—
fanciful, arbitrary, descriptive, and generic. The amount of
protection inherently available tends to increase from gen-
eric to fanciful. Generic words are entitled to no protection,
whereas fanciful terms are usually entitled to strong protec-
tion.
A descriptive term is one that describes a characteristic
or ingredient of a product. Descriptive terms are usually not
entitled to protection “ ‘because they are [a] poor means of
distinguishing one source of services from another and
because they are often necessary to the description of all
goods or services of a similar nature.’ ” Liquid Controls Corp.
v. Liquid Control Corp., 802 F.2d 934, 936 (7th Cir. 1986)
(quoting M.B.H. Enter., Inc. v. WOKY, Inc., 633 F.2d 50, 54
(7th Cir. 1980)). Sullivan argues, correctly, that the word
“survivor” is not descriptive of a musical band. The word
“survivor” when used as a band name is arbitrary; there is
nothing about the word which is necessary to the description
of a band, or of Sullivan’s band. Because the word “survivor”
is a common word that is being applied to a service unre-
lated to its meaning, the Band name, properly considered,
is an arbitrary mark.
Classifying “Survivor” as an arbitrary mark does not,
however, automatically mean that the mark is entitled to
strong protection. The strength of a mark is determined
partly by its classification, but the courts are still free to
examine the strength of a mark outside its area of use. In
other words, just because a trademark is arbitrary, if it is
used only in a narrow area, others may use a similar mark
for different goods without any trademark infringement.
See McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d 1163,
1170-71 (7th Cir. 1986). We can assume that Sullivan’s mark
is entitled to strong protection as against other band names,
but there is no presumption that his mark is equally strong
outside that realm.
6 No. 02-2058
This case turns, in our view, on Sullivan’s failure to sub-
mit enough evidence on the likelihood of confusion point to
survive summary judgment. Sullivan had to submit evi-
dence that, if believed by a trier of fact, would show that
consumers are likely to be confused as to the source of the
CDs and merchandise at issue. In assessing the likelihood
of confusion, courts have identified seven relevant factors
that help in deciding the ultimate question: (1) the similar-
ity of the marks; (2) the similarity of the products; (3) the
area and manner of concurrent use; (4) the degree of care
likely to be used by consumers; (5) the strength of the
plaintiff’s mark; (6) whether any actual confusion exists;
and (7) the defendant’s intent to palm off its goods as those
of the plaintiff. Promatek Indus., Ltd. v. Equitrac Corp., 300
F.3d 808, 812 (7th Cir. 2002). The district court found that
similarity of the marks, similarity of the products, degree of
care, strength of mark, actual confusion, and intent all
favored CBS. Area and manner of concurrent use favored
Sullivan.
We begin by considering the strength of Sullivan’s mark.
Sullivan contends that because “Survivor” is arbitrary as a
band name, it is entitled automatically to wide protection in
any field as against any competitor. The law draws finer
lines than this. A mark can be arbitrary for one purpose but
it may still be used extensively in other areas. As applied to
Sullivan, this means that he might enjoy strong protection
for his mark as against other aspiring rock bands or
musical groups, but that he would have only weak or
nonexistent protection outside that particular niche. See
Source Services Corp. v. Source Telecomputing Corp., 635 F.
Supp. 600, 611 (N.D.Ill. 1986) (citing Sun Banks of Florida,
Inc. v. Sun Fed. Sav. & Loan Ass’n, 651 F.2d 311, 315 (5th
Cir. 1981) (finding that although the word “sun” was arbi-
trary when used as the name of a financial institution, the
mark was still weak because of the common use of the word
“sun” in other marks)).
No. 02-2058 7
The ultimate concern in a trademark case like this one is
the tendency of the mark to indicate the origin of the pro-
duct in the eyes of the purchasing public. McGregor-Doniger
Inc. v. Drizzle Inc., 599 F.2d 1126, 1131 (2d Cir. 1979). The
crucial question is whether the mark is strong enough that
the public will form an association between the mark and the
source of that particular good. See 2 McCarthy, Trademarks
and Unfair Competition § 11:73 (4th ed. 2003) (“The legal
strength of a mark is usually the same as its economic and
marketing strength.”).
Sullivan claims that his mark is famous enough to make
consumers think the Series’ merchandise is likely to come
from his band. But he offered no evidence to back up this
guess. He might have offered specifics on how well-known
the name “Survivor” still is today as the identifier of a rock
band, but he did not. Survivor has not released a new
album in the United States since 1993. Sullivan offered
nothing about how much money he spends promoting the
Band, or on advertising for the Band, nor did he provide
any evidence of how much money the Band has earned.
Sullivan presented newspaper articles mentioning the Band,
but these stories were not about the Band; they either
announced the Band’s upcoming performance, or identified
Survivor as the band that recorded a particular song. There is
simply no evidence that “Survivor” the Band enjoys fame
and recognition as the originator of any products other than
rock albums and concert t-shirts.
Looking next at the similarity of the two marks, we make
the comparison “in light of what happens in the market-
place and not merely by looking at the two marks side-by-
side.” Ty, Inc. v. The Jones Group, Inc., 237 F.3d 891, 898 (7th
Cir. 2001) (citations omitted). “[I]f one word or feature of a
composite trademark is the salient portion of the mark, it
may be given greater weight than the surrounding ele-
ments.” Henri’s Food Prods. Co. v. Kraft, Inc., 717 F.2d 352,
356 (7th Cir. 1983). It is “inappropriate to focus on minor
8 No. 02-2058
stylistic differences to determine if confusion is likely” if the
public does not usually encounter the two marks together.
Meridian Mut. Ins. Co. v. Meridian Ins. Group, Inc., 128
F.3d 1111, 1115 (7th Cir. 1997).
Sullivan encourages us to focus our analysis only on the
word “Survivor,” which obviously appears in both marks.
Sullivan argues that CBS’s version of the mark, which in-
cludes an oval background containing a drawing relevant to
the season’s location, and the words, “Outplay, Outlast,
Outwit,” adds only minor, stylistic differences. Sullivan is
correct that the dominant portion of CBS’s mark is the
word, “Survivor.” Nonetheless, the word “Survivor” never
appears alone on any of CBS’s merchandise at issue. The
term always appears over a relevant scene of some kind and
surrounded by the words, “Outplay, Outlast, Outwit.”
Consumers in the marketplace never see CBS’s mark as the
word “Survivor” alone.
CBS responds that when we focus on the ultimate ques-
tion, it is plain that despite the similarity of the dominant
portion of the marks, there can be no confusion. We agree.
In a case comparing the marks “Yogowhip” and “Miracle
Whip,” the court acknowledged that the word “whip,” was
prominent and identical, but it held that when consumers
viewed the labels as a whole, as they always would at the
grocery store, there could be no confusion. Henri’s Food
Prods., 717 F.2d at 355. The court explained, “[b]ased on
our examination of the marks, we think that a purchaser,
even a supermarket shopper who will make a selection
quickly and without careful examination, is likely to differ-
entiate between the products.” Id. We find the same to be
true here. The marks, when viewed in their entirety, are
quite different. Additionally, on the two products that give
rise to the greatest concern—the music CDs—CBS has taken
additional steps to associate the CDs with the television
show.
No. 02-2058 9
On both of the CDs issued by CBS, not only is the “Survi-
vor” mark on display in its entirety, but each CD announces
its affiliation with the CBS television show. The first CD,
which contains music composed for the show, states that it
is “The Official Soundtrack to the Hit CBS TV Series.” The
second CD announces that it is “Music Inspired by the Hit
CBS TV Series.” CBS has, in short, taken substantial steps
to make the association between its CDs and its television
show readily apparent from the face of the CD. It is impor-
tant to note that Sullivan makes no claim that his trade-
mark precludes CBS from calling its show “Survivor.” He
wants only to force it to stop using that name on the associ-
ated musical CDs and merchandise. Not only is the mark
different in the ways we have described, but CBS has taken
extra steps to assure that their products are readily differen-
tiated. Although the marks are similar, the prominent
display of different names on the marks reduces any
likelihood of confusion. Ziebart Int’l Corp. v. After Market
Assocs., 802 F.2d 220, 227 (7th Cir. 1986) (citation omitted).
The district court thought that the “similarity of products”
factor also favored CBS, but we are not so sure. We have
held that “a closely related product is one which would
reasonably be thought by the buying public to come from
the same source, or thought to be affiliated with, connected
with, or sponsored by, the trademark owner.” Ty, Inc., 237
F.3d at 900 (citation omitted). The similarity between prod-
ucts focuses on whether the buying public thinks or expects
the products to come from the same source. Sullivan asserts
that because both he and CBS sell CDs and merchandise
like t-shirts and hats, that their products are necessarily
similar. He comes closer to creating a genuine issue of fact
on the similarity factor, with respect to the CDs only. But
even giving him the benefit of the doubt with respect to this
factor is not enough to carry the day for him here. First,
there is nothing magical about these “factors”; they operate
only as a heuristic device to assist in determining whether
10 No. 02-2058
confusion exists. Moreover, it is not as if the Band’s CDs are
identical to the Series’ CDs; they are not. The Band CDs are
placed in the “rock music” section of stores (both physical
and virtual), while CBS’s CDs are grouped with sound-
tracks. There is no indication that CBS has tried to suggest
that all the music on its CDs comes from an eponymous
band.
Both Sullivan and CBS market similar merchandise, but
Survivor the Band sells t-shirts only at their concerts,
whereas CBS sells Survivor the Series t-shirts, hats, and
other merchandise through various outlets. As with the
CDs, Survivor the Series’ merchandise prominently displays
the entire “Survivor” mark. Taking these facts as a whole,
we conclude that no rational factfinder could conclude that
any consumer would be confused as to the source of the
merchandise. Series’ merchandise is not sold through the
same outlets as the Band’s merchandise, nor is it advertised
in the same manner or in similar outlets. Cf. Ty, Inc., 237
F.3d at 899-900.
Sullivan finally takes issue with the district court’s find-
ing that no evidence of actual confusion exists. Sullivan asks
us to disregard the results of a CBS survey demonstrating
no actual confusion. That survey, he claims, improperly
focused on confusion about music, not trade identities; it
was limited to only one CD; and it failed to include any
questions about other merchandise. This court has upheld
similar surveys, however. See Henri’s, 717 F.2d at 356-57.
Sullivan had ample opportunity to conduct his own survey,
but he chose not to. See id. (“Kraft had the opportunity to
conduct and introduce its own survey to remedy the timing
and site selection inadequacies, but chose not to do so.”).
Sullivan was not required to conduct his own survey, but
he presented no other evidence of actual confusion or
likelihood of confusion other than the evidence we have
already discussed, with one exception. That exception is a
No. 02-2058 11
presentation showing the results of searches conducted on
two automated search engines. The search engines retrieved
websites related to both the Band and the Series. This does
not mean, however, that the search engine was “confused”
as to the source of the sites. It is responding to a query that
asks for all records listing “Survivor” as the author. But
those results just take us back to the same point about
confusion: would a consumer, looking at the different web-
sites, think that CBS and the Band were somehow from the
same source? No evidence of such confusion exists, and the
websites contain the same additional information from CBS
that distinguishes its “Survivor” from all others. Because
there is no triable issue of fact on likelihood of confusion, we
conclude that CBS’s “Survivor” mark does not infringe
Sullivan’s “Survivor” mark.
In addition to his trademark infringement claims, Sullivan
also brought claims of trademark dilution. In order to state
a claim of dilution, proof of actual dilution is required, either
through survey, financial, or circumstantial evidence. Moseley
v. V. Secret Catalogue, Inc., 537 U.S. 418 (2003). Sullivan
failed to present any evidence of actual dilution, and thus
his dilution claim must fail.
III
Sullivan, through his band Survivor, has been fortunate
enough to have a successful rock band, succeeding in a bus-
iness where many fail. CBS, through its show Survivor, has
(for better or for worse) revolutionized the world of reality
television. Both Sullivan and CBS are using the same mark,
but we hold that there is no likelihood of confusion in the
minds of consumers. We therefore AFFIRM the judgment of
the district court.
12 No. 02-2058
A true Copy:
Teste:
________________________________
Clerk of the United States Court of
Appeals for the Seventh Circuit
USCA-02-C-0072—9-24-04