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US Trade marks: Use of social media in likelihood of confusion analysis




The Sixth Circuit Court of Appeals, in the case of Lee Jason Kibler, d/b/a DJ Logic v Robert Bryson Hall, II, et al, issued a ruling which set forth several instructional tips on the value of marketing through social media channels in seeking to demonstrate the strength of a trade mark.

Plaintiff, Lee Jason Kibler, a disc jockey who performs under the name "DJ Logic" and owns a trade mark registration for the mark DJ Logic, filed a complaint in the Eastern District of Michigan alleging, among other things, trade mark infringement against the defendant, Robert Bryson Hall, a rapper who performs under the name "Logic". The District Court found that although the DJ Logic mark was conceptually strong, it was commercially weak, and, in turn, granted the defendant's motion for summary judgment. The plaintiff appealed the decision to the Sixth Circuit.

The Sixth Circuit took an extensive look at whether Kibler had provided the District Court with sufficient evidence to find that relevant consumers are likely to confuse the source of the services offered by the parties. Although the Sixth Circuit agreed that the District Court was correct in finding that the evidence did not support the position that the DJ Logic mark was commercially strong, it disagreed with the manner in which the District Court considered the marketing evidence proffered by the plaintiff.

In making its finding, the District Court had determined that the plaintiff had not provided marketing evidence even though he provided a sworn declaration that he advertises on various social media sites. The Court of Appeals held that the District Court had erred in finding as such. The Court specifically held that "promotion on platforms such as Twitter and Facebook not only constitutes marketing, but is among the most popular and effective advertising strategies today".

However, the Court noted that the plaintiff did not provide sufficient information about his social media marketing to enable a juror to gauge whether the public recognises "DJ Logic" as a source identifier for his services. In this connection, the Court indicated that the plaintiff should have provided information about the number of Twitter followers he has, as well as information about the number of Kibler's Facebook fans, likes, posts and re-posts. Similarly, the Court noted that "album sales and even recording contracts are less critical markers of success than before because of widespread internet use". Kibler did not provide evidence of web-based indicators of popularity such as YouTube views, which would "…show commercial success suggesting a broad recognition of his mark" even though he had low album sales.

While the Court did not indicate whether the decision would have been different had Kibler provided the types of information suggested, its commentary on the applicability of social media is instructional for the types of evidence that future plaintiffs seeking to demonstrate the strength of their marks should provide.

Karen Artz AshBret J Danow

Katten Muchin Rosenman LLP
575 Madison Avenue
New York, NY 10022-2585
United States
Tel: +1 212 940 8554
Fax: +1 212 940 8671
karen.ash@kattenlaw.com
www.kattenlaw.com


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