Lee Kibler v. Robert Hall, II

RECOMMENDED FOR FULL-TEXT PUBLICATION
Pursuant to Sixth Circuit I.O.P. 32.1(b)
File Name: 16a0286p.06
UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
_________________
LEE JASON KIBLER, dba DJ Logic, ┐
Plaintiff-Appellant, │
│
│
v. │
> No. 15-2516
│
ROBERT BRYSON HALL, II; VISIONARY MUSIC │
GROUP, INC.; WILLIAM MORRIS ENDEAVOR │
ENTERTAINMENT, LLC; THREE OH ONE │
PRODUCTIONS, LLC; UMG RECORDINGS, INC., dba │
Def Jam Recordings, │
Defendants-Appellees. │
┘
Appeal from the United States District Court
for the Eastern District of Michigan at Detroit.
No. 2:14-cv-10017—Arthur J. Tarnow, District Judge.
Argued: September 27, 2016
Decided and Filed: December 13, 2016
Before:COLE, Chief Judge; DAUGHTREY and MOORE, Circuit Judges.
_________________
COUNSEL
ARGUED: C. Enrico Schaefer, TRAVERSE LEGAL, PLC, Traverse City, Michigan, for
Appellant. David Brafman, AKERMAN LLP, West Palm Beach, Florida, for Hall Appellees.
Michael B. Garfinkel, PERKINS COIE LLP, Los Angeles, California, for Appellee William
Morris Endeavor. Eric J. Shimanoff, COWAN LIEBOWITZ & LATMAN, P.C., New York,
New York, for Appellee UMG Recordings. ON BRIEF: C. Enrico Schaefer, Mark G. Clark,
TRAVERSE LEGAL, PLC, Traverse City, Michigan, for Appellant. David Brafman,
AKERMAN LLP, West Palm Beach, Florida, for Hall Appellees. Michael B. Garfinkel,
PERKINS COIE LLP, Los Angeles, California, for Appellee William Morris Endeavor. Eric J.
Shimanoff, COWAN LIEBOWITZ & LATMAN, P.C., New York, New York, for Appellee
UMG Recordings.
1
No. 15-2516 Kibler v. Hall, et al. Page 2
_________________
OPINION
_________________
COLE, Chief Judge. 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. The district court granted
summary judgment to defendants on all claims. Kibler has appealed that judgment, requiring us
to answer two questions. First, has Kibler provided evidence sufficient to find that relevant
consumers are likely to confuse the sources of his and Hall’s products? Second, has Kibler
provided evidence sufficient to find that Hall has diluted Kibler’s mark? We conclude no and
thus affirm the grant of summary judgment.
I. BACKGROUND
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 (with Hall, “the Hall defendants”). UMG
Recording d/b/a Def Jam Recordings (“Def Jam”) 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.
No. 15-2516 Kibler v. Hall, et al. Page 3
In January 2014, Kibler filed suit against the defendants in the U.S. District Court for the
Eastern District of Michigan. He alleged the following claims: 1) trademark infringement in
violation of the Lanham Act, 15 U.S.C. § 1125(a) (2012); 2) breach of the Michigan Consumer
Protection Act (“MCPA”), Mich. Comp. Laws § 445.901–.922 (1977); 3) unfair competition
under Michigan law; and 4) trademark dilution in violation of the Lanham Act, 15 U.S.C.
§ 1125(c) (2012).
In March 2014, defendants delayed Hall’s tour and first album release due to ongoing
settlement negotiations that ultimately collapsed. Def Jam proceeded to release the album in
October of that year. It sold over 170,000 copies.
In May 2015, defendants moved for summary judgment on all of Kibler’s claims. The
parties fully briefed the matter and the district court held a hearing. In November 2015, the court
granted defendants’ motion in all respects.
II. ANALYSIS
A. Standard of Review
We review a district court’s grant of summary judgment de novo. Med. Mut. of Ohio v. k.
Amalia Enters. Inc., 548 F.3d 383, 389 (6th Cir. 2008); Daddy’s Junky Music Stores, Inc. v. Big
Daddy’s Family Music Ctr., 109 F.3d 275, 280 (6th Cir. 1997) (clarifying that the rule holds in
trademark infringement cases). Summary judgment is appropriate when the record shows “no
genuine dispute as to any material fact.” Fed. R. Civ. P. 56(c). In other words, we affirm
summary judgment when there is no evidence that would allow a reasonable jury to find for the
nonmoving party, entitling the moving party to judgment as a matter of law. See Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Fed. R. Civ. P. 56(c). We view all facts and
inferences in the light most favorable to the nonmoving party. Matsushita Elec. Indus. Co., Ltd.
v. Zenith Radio Corp., 475 U.S. 574, 587 (1986).
No. 15-2516 Kibler v. Hall, et al. Page 4
B. Trademark Infringement
Kibler has made no separate arguments for his state law claims, and they rely on the same
allegations as his federal trademark infringement claim. For these reasons, we address the state
law claims along with the trademark infringement claim.
This court considers whether trademark infringement has occurred using a two-step test.
First, we determine whether plaintiff’s mark is protectable. Innovation Ventures, LLC v. N.V.E.,
Inc., 694 F.3d 723, 728 (6th Cir. 2012). Then, we assess whether relevant consumers are likely
to confuse the sources of the parties’ products. Id.; Homeowners Grp., Inc. v. Home Mktg.
Specialists, Inc., 931 F.2d 1100, 1107 (6th Cir. 1991). The relevant consumers are potential
buyers of defendant’s products. Maker’s Mark Distillery, Inc. v. Diageo N. Am., Inc., 679 F.3d
410, 419 (6th Cir. 2012). Here, the parties agree Kibler’s mark is protectable. So we focus on
the likelihood that potential buyers of rap would believe Kibler’s music is Hall’s or vice-versa.
In assessing the likelihood of confusion, we take into account the following eight
“Frisch” factors: 1) strength of the plaintiff’s mark, 2) relatedness of the products, 3) similarity
of the marks, 4) evidence of actual confusion, 5) parties’ marketing channels, 6) likely degree of
purchaser care, 7) defendant’s intent in selecting the mark, and 8) probability that the product
lines will expand. CFE Racing Prods., Inc. v. BMF Wheels, Inc., 793 F.3d 571, 592 (6th Cir.
2015) (citing Frisch’s Rest., Inc. v. Shoney’s Inc., 759 F.2d 1261, 1264 (6th Cir. 1985)).
Plaintiff need not establish each factor to prevail. Id. Each case is unique, so not all of
the factors will be helpful. Homeowners, 931 F.2d at 1107. Further, there is no designated
balancing formula for the factors. CFE Racing, 793 F.3d at 592. “The[ir] enumeration is meant
‘merely to indicate the need for weighted evaluation of the pertinent facts in arriving at the legal
conclusion of confusion.’” Id. (quoting Frisch, 759 F.2d at 1264).
No. 15-2516 Kibler v. Hall, et al. Page 5
1. Strength of Plaintiff’s Mark
The first Frisch factor favors defendants. While Kibler has shown that “DJ LOGIC” is
moderately strong conceptually, he has failed to provide evidence of the mark’s commercial
strength.
The stronger a mark is, the greater the risk of confusion. Homeowners, 931 F.2d at 1107.
A mark cannot be strong unless it is both conceptually and commercially strong. Maker’s Mark,
679 F.3d at 419. And it cannot be conceptually strong unless it is inherently distinctive. Id.Arbitrary marks, which convey something unrelated to the product they announce, e.g., the
“Apple” in “Apple computers,” are distinctive. Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d
623, 631 (6th Cir. 2002); see also Maker’s Mark, 679 F.3d at 420 (finding red dripping wax seal
announcing bourbon inherently distinctive, and hence conceptually strong). Descriptive marks,
which describe the product they announce, are usually indistinctive. See, e.g., Therma-Scan,
295 F.3d at 632 (finding “Therma-scan,” which describes the services plaintiff performs,
indistinctive, and hence conceptually weak).
Further, courts presume that an incontestable mark is conceptually strong. Daddy’s,
109 F.3d at 282. A mark is incontestable when it has not been successfully challenged within
five years of its registration. Id.; see Dieter v. B & H Indus. of Sw. Fla., Inc., 880 F.2d 322, 328
(11th Cir. 1989) (explaining that merely descriptive marks cannot be registered as trademarks
unless they have acquired a secondary meaning).
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.” Kibler v. Hall, No. 14-10017, 2015 WL 6865928, at *2 (E.D.
Mich. Nov. 9, 2015). Defendants concede this. Kibler contends only that the court erred in not
considering the mark’s incontestability. We need not address this argument because we agree
with the district court’s assessment, which renders “DJ LOGIC” at least as conceptually strong
as a finding of incontestability would.
But a mark can be conceptually strong without being commercially strong, and thus weak
under Frisch. Maker’s Mark, 679 F.3d at 419–20. A mark’s commercial strength depends on
No. 15-2516 Kibler v. Hall, et al. Page 6
public recognition, the extent to which people associate the mark with the product it announces.
Id. at 419.
Survey evidence is not a prerequisite for establishing public recognition, but it is the most
persuasive evidence of it. See, e.g., id. at 421 (characterizing proof of “extensive marketing” and
“widespread publicity” around a mark as abundant evidence of public recognition); Frisch,
759 F.2d at 1265 (relying on evidence that around thirty percent of respondents identify non-
plaintiff restaurants with plaintiff’s mark to conclude mark is commercially weak). Proof of
marketing is not a prerequisite either. Therma-Scan, 295 F.3d at 632. But plaintiffs lacking such
proof must provide other evidence of “broad public recognition.” Id.Conversely, proof that third parties have extensively used a trademark or similar
trademarks in the relevant market indicates the trademark is commercially weak. Homeowners,
931 F.2d at 1108. The presumption is that the third parties have muddled the mark’s source. In
Homeowners, for example, defendant offered evidence that many “real estate related firms” were
using trademarks identical or similar to plaintiff’s. Id. We found that a reasonable jury could
determine that the use had weakened plaintiff’s mark because plaintiff sold to real estate brokers
and defendant sold to real estate sellers. Id. at 1103, 1108. Compare id. at 1108 with Maker’s
Mark, 679 F.3d at 420–21 (denying third-party use of similar marks has weakened plaintiff’s
mark because it occurred among all distilled spirits rather than the relevant market of tequila).
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. Kibler,
2015 WL 6865928, at *3 (noting sale of fewer than 300 albums in past three years and fewer
than 60,000 albums in past sixteen years; current lack of a recording contract; and inability ever
to secure a recording contract with a major label). The court found that third parties have
weakened the mark even further by marketing music under nearly ninety variations of “logic.”
Kibler admits he offered no survey evidence, but claims that the district court treated it as
a prerequisite. He further argues he provided marketing evidence. First is a sworn declaration
that he advertises in print and online, including on MySpace, Twitter, and Facebook. Second are
a 2006 Downbeat article featuring him, a 2001 New York Times review mentioning him, and a
No. 15-2516 Kibler v. Hall, et al. Page 7
1999 Gig article featuring him. Third is a sworn declaration that he has appeared on television
shows such as The Tonight Show Starring Jimmy Fallon, The Today Show, and Good Morning
America. Kibler also points to his tours and online music sales as proof of marketing.
Additionally, Kibler insists he is commercially successful, noting that there is no fixed number of
album sales establishing commercial success. Kibler denies that third parties have weakened his
mark.
Defendants reinforce the district court’s findings. Def Jam and WME argue that Kibler’s
failure to provide the number of his Facebook “likes” or Twitter followers creates an adverse
inference, dismiss the publications as obscure and out-of-print, and question the number of
people who have attended Kibler’s concerts. All of the defendants highlight Kibler’s deposition
testimony that he appeared on the television shows to support other, headlining artists.
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. See Maker’s Mark, 679 F.3d at 421.
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. Id. Kibler’s evidence may not create an adverse inference of broad recognition, but it
lacks the information jurors would need to find such awareness. 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.
No. 15-2516 Kibler v. Hall, et al. Page 8
Similarly, Kibler fails to provide the circulations or target audiences of Downbeat and
Gig, which appear to be niche publications. Further, the New York Times review focuses on two
other artists, placing “DJ Logic” in a series of supporting musicians. This leaves a slim chance
that readers noticed and recalled Kibler. In any event, both the Gig article and New York Times
review are over fifteen years old. Even if they suggested broad recognition, Kibler would have
to show continuing awareness of his mark to justify a likelihood of confusion.
Kibler has neither refuted nor explained his deposition testimony that he appeared on
television shows to support other, headlining artists. For instance, he testified that Carly Simon,
“the main act,” introduced “the guests she had playing with her” on the Fallon show. (Kibler
Dep., R. 92-3, PageID 2930.) We do not know how many guests there were, if Simon
introduced them individually, if she said anything other than their names, etc. Kibler did not
need to address each of these considerations. But they indicate the sort of information a jury
would need to assess the extent to which the public affiliates “DJ LOGIC” with Kibler’s music.
Finally, Kibler’s performances and songs are his products, not advertisements or
publicity. Artists may attract consumers directly through their work, as when someone enjoys a
musician’s concert enough to then buy the music online. But treating the products that
advertisements are meant to sell as advertisements themselves would mean finding marketing
proof in virtually every infringement action, making the consideration superfluous. This is not
what Frisch intended. Viewing the evidence in the light most favorable to Kibler, we take his
tours and online sales as proof of his commercial success, discussed below.
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, we have only his low album sales, current lack of a recording contract, and inability
ever to secure a recording contract with a major label. Kibler declares that he has participated
“in hundreds of live performances held in at least 46 states,” but he does not indicate the number
No. 15-2516 Kibler v. Hall, et al. Page 9
of people who attended, the number of other artists involved, and whether he ever received top
billing. (Kibler Decl., R. 91-1, PageID 2702.) 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.” Therma-Scan, 295 F.3d at 632.
“DJ LOGIC” lacks commercial strength though we find no proof that third parties have
weakened it. Defendants identify the parties’ marks as trademarks in their brief, but do not show
they are registered. See AutoZone, Inc. v. Tandy Corp., 373 F.3d 786, 794 (6th Cir. 2004)
(involving evidence of 745 trademarks using “ZONE”); Induct-O-Matic Corp. v. Inductotherm
Corp., 747 F.2d 358, 362 (6th Cir. 1984) (involving evidence of numerous trademarks using
“induct”).
Nor do defendants show that the third parties use the marks in the relevant market.
Defendants imply that the market is music sold in the U.S. over Amazon and iTunes. But that is
far too broad a market to assume that marks similar or even identical to “DJ LOGIC” weaken it
simply by inhabiting the same space. In Maker’s Mark, we denied that all distilled spirits was
narrow enough of a field to conclude that similar marks in that industry had weakened the mark
of a tequila brand. 679 F.3d at 420–21. We found that tequila itself was the relevant market. Id.Likewise, the relevant market here is not countless types of music or even hip-hop, but DJ music
sold in the U.S. over Amazon and iTunes. Because defendants have not shown which, if any of
the marks, operate in that market, no reasonable jury could find the marks have weakened
“DJ LOGIC.”
Because the record reflects that “DJ LOGIC” is moderately strong conceptually, but
weak commercially, the first Frisch factor favors defendants.
2. Relatedness of Products
This court uses the following test to decide whether relatedness favors either party: 1) if
the parties’ products compete directly with each other, consumer confusion is likely if the
parties’ marks are sufficiently similar; 2) if the products are somewhat related, but do not
compete directly, the likelihood of confusion will depend on other factors; 3) if the products are
completely unrelated, confusion is unlikely. Daddy’s, 109 F.3d at 282.
No. 15-2516 Kibler v. Hall, et al. Page 10
Products belonging to the same industry are not necessarily related. Homeowners,
931 F.2d at 1109. To be related, they must be marketed and consumed in ways that lead buyers
to believe they come from the same source. Id. Take Therma-Scan, in which we found two
thermology services unrelated enough that confusion was unlikely. 295 F.3d at 633. We noted
that the parties marketed the services to different populations. Id. Compare id. with Maker’s
Mark, 679 F.3d at 423 (concentrating on other Frisch factors after finding both products high-
end distilled spirits, but not directly competitive given their price differential); Little Caesar
Enters., Inc. v. Pizza Caesar, Inc., 834 F.2d 568, 571 (6th Cir. 1987) (finding Italian food
services related enough to cause confusion because both concentrate on pizza).
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 maintains 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. (Booking Notice, R. 91-4, PageID 127.) They indicate that while both
are musicians and perhaps hip-hop artists, Hall markets himself as a rapper and Kibler a disc
jockey. The parties’ products are comparable to the bourbon and tequila goods we found only to
belong to the same broad category of high-end distilled spirits in Maker’s Mark. 679 F.3d at
423. Incidental overlap of their customers could not sustain a finding of direct competition at
trial. Id. at 421 (affirming district court’s conclusion that products only somewhat related despite
district court’s finding that indeterminate number of defendant’s customers likely patronize
plaintiff given drinkers’ habits); see Maker’s Mark Distillery, Inc. v. Diageo N. Am., Inc.,
703 F.Supp.2d 671, 692 (W.D. Ky. 2010). Accordingly, the factor is neutral.
No. 15-2516 Kibler v. Hall, et al. Page 11
3. Similarity of Marks
The more similar the marks are, the more likely it is that relevant consumers will confuse
their sources. We determine the similarity of marks by considering whether either mark would
confuse a consumer who did not have both marks before her and had only a vague impression of
the other mark. Daddy’s, 109 F.3d at 283. We consider the marks’ pronunciation, appearance,
and verbal translation. Id.; see, e.g., Maker’s Mark, 679 F.3d at 421–22 (finding factor favors
plaintiff because marks are facially similar and some companies offer several kinds of distilled
spirits).
The anti-dissection rule requires us not to dwell on the prominent features of a mark and
instead consider it as a whole. Little Caesar, 834 F.2d at 571–72; see, e.g., Jet, Inc. v. Sewage
Aeration Sys., 165 F.3d 419, 423–24 (6th Cir. 1999) (finding distinctions in appearance,
syllables, language, and pronunciation prevent “JET” and “AEROB-A-JET” from being
confusingly similar despite their common word); Little Caesar, 834 F.2d at 572 (finding
differences in sound, appearance, and syllables distinguish “Little Caesar” from “Pizza Caesar
USA” despite the prominent word they share).
The district court concluded this factor favors defendants based on the anti-dissection
rule. The 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.” Kibler, 2015 WL 6865928, at *3. Kibler
claims that the district court misapplied the anti-dissection rule in two ways. First, it overvalued
“DJ,” which is merely descriptive. Second, it neglected to compare just “LOGIC,” which Kibler
has also gone by, to Hall’s “LOGIC.” Kibler argues that both approaches conflict with Daddy’s.
Defendants accept the district court’s findings.
The district court properly found this factor favors defendants by correctly applying the
anti-dissection rule. This meant examining “DJ LOGIC” as a whole, including its appearance,
sound, language, and impression. Kibler’s call for this court to “focus on the dominant features
of each mark and disregard the non-dominant features” is precisely what the anti-dissection rule
forbids. Kibler Opening Br. 19. Further, the “DJ” in “DJ Logic” is more distinctive than the
No. 15-2516 Kibler v. Hall, et al. Page 12
“Family Music Store” in “Big Daddy’s Family Music Store,” which did raise an issue of fact as
to whether “Daddy’s” was sufficiently similar. Daddy’s, 109 F.3d at 284.
The district court also correctly declined to compare Kibler’s “LOGIC” to Hall’s
“LOGIC.” Kibler’s reliance on Daddy’s is again misplaced. There, we faulted the district court
for not comparing just the “Daddy’s” in “Daddy’s Junky Music Stores” with defendant’s mark
because “Daddy’s” itself was a separate trademark. Id. at 278, 284. Here the parties agree that
Kibler has not registered “LOGIC” alone as a trademark. Thus, the anti-dissection rule requires
the similarity of marks factor to favor defendants here.
4. Evidence of Actual Confusion
Evidence of actual confusion is the strongest proof of likely confusion. Frisch, 759 F.2d
at 1267. So any such evidence favors the non-movant. Therma-Scan, 295 F.3d at 635. But the
weight we give that evidence depends on the amount and type of confusion. Id. at 634. On one
end of the spectrum are persistent mistakes and confusion by actual customers. Homeowners,
931 F.2d at 1110. On the other are relatively few instances of confusion and inquiries rather than
purchases. The analysis is, above all, contextual.
In Therma-Scan, for example, the court found that six email inquiries implying that
plaintiff manufactured the defendant’s products provided only weak support for the conclusion
that relevant consumers were likely to confuse the two. 295 F.3d at 635–36. The court
considered the number of emails against the scale of defendant’s operations. Id. (noting
defendants sold 3,200,000 products and received 11,000 calls per month around the time of the
emails). Further, it found that the evidence implied carelessness rather than confusion. Id. at
636 (noting that a mistaken internet search could easily yield the wrong email address).
Kibler offers evidence of at most ten instances of actual confusion. These include tweets
and webpages advertising a performance by “DJ Logic,” but meaning Hall; an email offering to
book “DJ Logic,” but meaning Hall; and inquiries about whether Kibler would be performing
somewhere advertising “logic” and referring to Hall.
No. 15-2516 Kibler v. Hall, et al. Page 13
The district court concluded that the evidence of actual confusion favors Kibler only
slightly. The court suggested that the ten instances paled in comparison to Hall’s 170,000 album
sales and popularity on YouTube, Facebook, and Twitter. The court also indicated that computer
rather than human error caused the confusion on the webpages. Kibler argues that the court
neglected to consider the evidence in the light most favorable to him. The Hall defendants claim
that the district court erred in finding that this factor favors Kibler at all. They add that the
record shows no mistaken purchases.
Because past confusion is the best proof of future confusion, any evidence at all favors
the plaintiff. Kibler has offered some proof, but it is scant. 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. The fact that none of the incidents were purchases would further prevent a jury
from finding that this factor significantly helps Kibler. Homeowners, 931 F.2d at 1110.
In sum, Kibler has not presented the quantity or type of proof that would tilt the actual
confusion factor substantially in his favor.
5. Marketing Channels
The marketing channels factor requires us to compare both how the parties market their
products and their main customers. Homeowners, 931 F.2d at 1110. The more channels and
buyers overlap, the greater the likelihood that relevant consumers will confuse the sources of the
parties’ products. The reverse is true too. In Homeowners, for instance, the court found little
overlap where one party marketed to real estate brokers through telemarketing, brochures, and
conventions, and the other marketed to real estate owners through newspaper and direct ads. Id.
at 1111. That is, the methods used and consumers targeted lessened the chance that a buyer
would encounter both products, let alone confuse their sources. See id. at 1110–11.
Today, most parties advertise online. Network Automation, Inc. v. Advanced Sys.
Concepts, Inc., 638 F.3d 1137, 1151 (9th Cir. 2011) (finding shared use alone of a ubiquitous
marketing channel like the internet does not clarify the likelihood of confusion). We consider
the following in deciding whether certain online marketing could support a finding of likely
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confusion. First, do the parties use the internet as a substantial marketing channel? Therma-
Scan, 295 F.3d at 637 (citing Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1151 (9th Cir.
2002)). Second, are the parties’ marks used with web-based products? Id. See, e.g., Brookfield
Commc’n., Inc. v. W. Coast Entm’t. Corp., 174 F.3d 1036, 1042, 1057 (9th Cir. 1999)
(identifying “MovieBuff,” which denoted software, and “moviebuff.com,” which denoted a
website, as marks used with web-based products). Third, do the parties’ marketing channels
overlap in any other way? Therma-Scan, 295 F.3d at 637. Only one case has conducted this
analysis and there it was straightforward: the plaintiff did not produce web-based products or
market them online. Id.Here, the district court found the marketing channels factor favors neither party because
both Kibler and Hall failed to produce any evidence on it. The court rejected Kibler’s promotion
on social media and proof of online sales because it “does not support an affirmative answer to
any of [the] three questions.” Kibler, 2015 WL 6865928, at *4.
Kibler maintains that he has offered proof that would allow a reasonable jury to find the
factor favorable to him. This includes deposition testimony 1) that he advertises on a personal
website, MySpace, Twitter, and Facebook; 2) that he sells his music on Amazon and iTunes; and
3) that the parties have played fifteen of the same venues. It also includes tweets promoting
Hall’s album and performances and screenshots of Hall’s Facebook page. Kibler counts his
press clippings, use of a booking agent, and sheer length of his career as supporting evidence too.
Defendants reinforce the district court’s findings, highlighting Kibler’s deposition
testimony that thousands of artists have played two of the fifteen venues and noting that Hall has
never appeared in Downbeat or Gig. WME urges us to discount the parties’ online advertising,
reasoning that such a pervasive channel as the internet cannot clarify the likelihood of confusion.
The district court correctly concluded that this factor is neutral, but underestimated the
impact of widespread internet use on the Therma-Scan framework. Kibler has shown that the
parties market their products on the same websites, Twitter and Facebook, and target the same
customers, users of Amazon or iTunes. At first glance, this overlap is compelling. But we must
assess the likelihood of confusion in the real-life circumstances of the market. Under that rubric,
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most musical artists use those websites to advertise and sell their products today. As a result,
most plaintiffs belonging to that group will meet parts one and two of the Therma-Scan test. At
the same time, the popularity of these channels makes it that much less likely that consumers will
confuse the sources of the parties’ products. There are just too many other contenders. For these
reasons, shared use of the above websites does not help us determine the likelihood of confusion.
Though evidence of the parties’ common venues comes closest, it would not permit a
reasonable jury to find that Kibler’s and Hall’s customers substantially overlap. Kibler himself
admitted that thousands of artists have played two of the fifteen venues. The more artists there
are, the fewer the chances of any one attendee encountering both Kibler’s and Hall’s songs, let
alone confusing their sources. Proof of the remaining venues carries minimal weight without
information about their traditional line-ups or patrons, for example.
Kibler’s press clippings, moreover, are not probative at all. He has not shown that any of
the same publications have featured Hall. Further, shared use of the press cannot support a
finding of significantly overlapping marketing channels. The vast majority of artists seek
publicity and the medium itself has infinite variations, with everything from amateur zines to
well-established newspapers. Similarly, mere use of a booking agent and the length of Kibler’s
career do not tell us anything about how he has advertised or whom he has targeted.
The marketing channels factor is neutral because there is minimal evidence that the
parties’ advertising methods or targeted customers substantially overlap beyond shared use of
congested websites like Facebook and iTunes.
6. Likely Degree of Purchaser Care
When consumers are more likely to exercise caution in purchasing items, they are less
likely to confuse their origins. Champions, 78 F.3d at 1120. This happens when consumers have
expertise in the items and when the items are particularly expensive. Id.; see, e.g., Homeowners,
931 F.2d at 1111 (finding factor weighs against likelihood of confusion where plaintiff’s
customers, real estate brokers, are savvy commercial buyers, and defendant’s customers, people
seeking to sell their home, are engaging in one of the most consequential transactions of their
lives).
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In this case, the district court found this factor unhelpful because the degree of care
exercised by music consumers varies greatly by consumer and transaction. The court compared
buying a song on iTunes to purchasing an expensive concert ticket, and a “turntabling
aficionado” to a “casual fan of rap.” Kibler, 2015 WL 6865928, at *4.
Kibler does not address this factor and the Hall defendants agree with the district court.
Def Jam and WME, on the other hand, argue that the factor favors the defendants. They reason
that “fans of each artist know their music” and tend to exercise substantial care in buying
recordings. Def Jam Br. 27 (emphasis added); WME Br. 2 n.1 (incorporating the other
defendants’ arguments).
The district court was right to disregard this factor. Def Jam and WME artificially
narrow the pool of consumers of Hall’s music. These consumers range from people seeking a
variety of recordings for use in their cars to fans following Hall on tour. Thus, the district court’s
analysis was sound and the factor is insignificant here. See Homeowners, 931 F.2d at 1107 (“not
all of the[] factors may be particularly helpful in any given case”).
7. Intent in Selecting the Mark
This court may infer a likelihood of confusion from evidence that defendant chose its
mark to confuse consumers about the source of the parties’ products. Therma-Scan, 295 F.3d at
638. The standard assumes that defendant itself believed that using the mark would divert
business from plaintiff. Daddy’s, 109 F.3d at 286. Circumstantial evidence of intent is sufficient
when direct evidence is unavailable (as it often is). Therma-Scan, 295 F.3d at 638–39. And
evidence that defendant knew of plaintiff’s trademark while using its mark constitutes such
circumstantial evidence. Daddy’s, 109 F.3d at 286–87. In Champions, the court treated
testimony that defendant learned of plaintiff’s trademark before using it as slight evidence that
could support a finding of intent at trial. 78 F.3d at 1121. The testimony trumped the
defendant’s identification of independent reasons for choosing the mark, including the
“championship” caliber of a local basketball team and horses. Id. Conversely, a lack of intent
has no effect on the determination of likelihood of confusion.
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Having found no evidence of intent, the district court concluded that the factor is neutral
in this case. See Daddy’s, 109 F.3d at 287. On appeal, Kibler asserts that two pieces of evidence
create a triable issue here. One is his sworn declaration that a Google or YouTube search for
“logic music” or “logic musician” yielded “DJ LOGIC” and Kibler’s picture or music before
Hall adopted “LOGIC.” The other is Hall’s deposition testimony that he ran Google, Facebook,
and Twitter searches for “any other rappers” using “LOGIC” before adopting it. (Hall Dep., R.
92-2, PageID 2878.) Hall testified that he ran the search “[t]o see if [any rapper] with this name
was already at a level where it wouldn’t make sense for two people to coexist with the same
name.” (Hall Dep., R. 92-2, PageID 2879.) Def Jam and WME argue that Kibler must show that
defendants intended to “usurp [his] goodwill.” Def Jam Br. 22; WME Br. 2 n.1 (incorporating
the other defendants’ arguments).
The district court properly found the factor neutral because the record prevents a
reasonable jury from inferring intent. As an initial matter, Def Jam and WME cite the wrong
legal standard. Evidence that defendants knew of “DJ LOGIC” while using “LOGIC” would be
sufficient circumstantial proof of intent. Daddy’s, 109 F.3d at 286. Def Jam and WME’s
reliance on a non-binding and distinguishable case is puzzling given the clear and applicable law.
See Chrysler Grp. LLC v. Moda Grp. LLC, 796 F.Supp.2d 866, 871 (E.D. Mich. 2011) (“In this
case, Plaintiff’s mark has not been deemed protectable. Therefore, it would be unreasonable to
infer intent here.”).
Here, we have no proof that Hall searched for “logic music” or “logic musician,” no
reason to believe he had to, and thus no evidence he knew of “DJ LOGIC” before adopting
“LOGIC.” Hall’s testimony shows, to the contrary, that he avoided choosing a mark that might
lead consumers to confuse his product with that of another musician. The factor is therefore
neutral.
8. Likelihood of Expansion
A strong possibility that either party will expand its business to compete with the other’s
increases the likelihood of consumers confusing the sources of the parties’ products. Daddy’s,
109 F.3d at 287–88 (finding evidence of preliminary negotiations by plaintiff to buy stores in
No. 15-2516 Kibler v. Hall, et al. Page 18
state where defendant operates could support a finding of likelihood of confusion). As with
intent, a finding that neither party will expand its business is irrelevant in determining the
likelihood of confusion. Champions, 78 F.3d at 1122.
The district court concluded that this factor is neutral after finding it “unlikely that the
parties will expand their markets to put them in competition.” Kibler, 2015 WL 6865928, at *4.
Kibler identifies book excerpts, press clippings, and deposition testimony describing his
experimentation with different musical genres as proof he will expand his reach. He adds there
is “no evidence that [Hall] will not continue to expand his musical reach as well.” Kibler
Opening Br. 26 (emphasis added). Kibler stresses that the parties’ mutual use of hip-hop
predisposes them to expansion.1
The district court rightly concluded that this factor is neutral. But the basis on which it
inferred that expansion was affirmatively unlikely is unclear. All we can conclude is that Kibler
offered no proof that the parties will expand their businesses. Kibler’s supposed evidence says
nothing of the potential for competition with Hall, whether Kibler anticipates rapping or working
closely with a rapper, for example. Further, Kibler inverts the burden of proof under the factor,
which requires plaintiff to present evidence of expansion, not the other way around. With no
sign of any future overlap in the market, the parties’ mutual use of hip-hop is irrelevant. Thus,
the factor is neutral.
9. Balance of Factors
Def Jam and WME claim that Kibler has waived “any challenge” to “the district court’s
ultimate balancing of the Frisch factors.” Def Jam Br. 16 n.1; WME Br. 2 n.1 (incorporating the
other defendants’ arguments). We disagree. As part of de novo review, we have a duty to
consider and weigh the relevant facts in light of the Frisch factors, which Kibler has amply
addressed. CFE Racing, 793 F.3d at 592. Surely, Def Jam and WME would not have us
consider all of their evidence and contentions only to cede the ultimate determination to the
district court.
1
Kibler asserts for the first time on reply that Hall’s homage to Sinatra suggests he will begin producing
jazz. Kibler has waived this argument. Scottsdale Ins. Co. v. Flowers, 513 F.3d 546, 553 (6th Cir. 2008) (“we have
found issues to be waived when they are raised for the first time in . . . replies to responses”).
No. 15-2516 Kibler v. Hall, et al. Page 19
We note then that evidence of actual confusion favors Kibler only marginally and both
the strength of plaintiff’s mark and similarity of the marks favor defendants. Though the Frisch
inquiry is flexible and contextual, these are the “most important factors.” Maker’s Mark, 679
F.3d at 424. Further, the remaining factors are either neutral or insignificant here. Because no
reasonable jury could find a likelihood of confusion based solely on a few instances of actual
confusion, defendants are entitled to judgment as a matter of law on Kibler’s federal trademark
infringement and related state law claims.
C. Trademark Dilution
Kibler also alleges trademark dilution in violation of the Lanham Act, 15 U.S.C.
§ 1125(c). The Act entitles “the owner of a famous mark that is distinctive” to an injunction
against someone who “commences use of a mark . . . in commerce that is likely to cause dilution
. . . of the famous mark” “any time after the owner’s mark has become famous.” § 1125(c)(1).
The Act specifies that a mark is famous when it is “widely recognized by the general
consuming public of the United States as a designation of source of the goods or services of the
mark’s owner.” § 1125(c)(2)(A). In evaluating whether a mark is sufficiently recognized, courts
may consider the duration, extent, and reach of advertising and publicity around the mark;
amount, volume, and extent of product sales; and actual recognition of the mark. Id.
Courts have interpreted the Act to require the mark to be a “household name.” Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1373 (Fed. Cir. 2012). That is, “when the
general public encounters the mark in almost any context, it associates the term, at least initially,
with the mark’s owner.” Id. (internal quotation marks omitted). See, e.g., Audi AG v. D’Amato,
469 F.3d 534, 547 (6th Cir. 2006) (finding “AUDI” marks famous under Lanham Act because
Audi had spent millions of dollars on them and they are known globally); see also Starbucks
Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 105 (2d Cir. 2009) (noting that parties agree
that “Starbucks” marks are famous under the Lanham Act); Louis Vuitton Malletier S.A. v. Haute
Diggity Dog, LLC, 507 F.3d 252, 257, 265 (4th Cir. 2007) (noting that parties agree that “LOUIS
VUITTON” marks are famous under the Lanham Act). It is difficult to establish fame under the
Act sufficient to show trademark dilution. Coach, 668 F.3d at 1373.
No. 15-2516 Kibler v. Hall, et al. Page 20
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. Indeed, it is easier to show public recognition under Frisch than it is under the
Lanham Act. Id. (“While fame for dilution is an either/or proposition . . . fame for likelihood of
confusion is a matter of degree”) (internal quotation marks omitted).
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 here. Thus, we do not address Kibler’s remaining
arguments on his trade dilution claim.
III. CONCLUSION
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, we affirm the grant of summary judgment to defendants on
Kibler’s federal trademark infringement, related state law, and federal trademark dilution claims.