Disc jockey Lee Jason Kibler uses turntables and other performers' vocals to produce music containing jazz and funk elements. Since 1999, he has performed and released several albums under the name "DJ Logic." At the time of the litigation described here, however, he did not have a 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 simply "Logic."

Robert Bryson Hall II, a rapper, has performed under the name "Logic" since 2009. Three Oh One Productions and Visionary Music Group are companies owned by, or professionally connected with, Hall. He had a recording contract with UMG Recording d/b/a Def Jam Recordings (Def Jam) at times pertinent to the case described here. William Morris Endeavor Entertainment (WME) is Hall's booking agent.

In September 2012, Kibler's attorney sent Visionary Music Group and WME an e-mail 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 DJ LOGIC mark. In January 2014, Kibler filed suit in the U.S. District Court for the Eastern District of Michigan against Hall and the firms noted above. Kibler alleged claims for trademark infringement and trademark dilution in violation of the federal Lanham Act. In March 2014, the defendants delayed Hall's tour and first album release because of ongoing settlement negotiations that ultimately collapsed. Def Jam proceeded to release the album in October of that year. The album sold more than 170,000 copies.

In May 2015, the defendants moved for summary judgment on each of Kibler's claims. After a hearing, the district court granted the defendants' motion.

Cole, Chief Judge

[Kibler's appeal requires] us to answer two questions. First, [regarding the trademark infringement claim,] 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?

Trademark Infringement

This court considers whether trademark infringement has occurred using a two-step test. First, we determine whether plaintiff's mark is protectable. Then, we assess whether relevant consumers are likely to confuse the sources of the parties' products. The relevant consumers are potential buyers of defendant's products. 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 Products, Inc. v. BMF Wheels, Inc., 793 F.3d 571, 592 (6th Cir. 2015) (citing Frisch's Restaurants, Inc. v. Shoney's Inc., 759 F.2d 1261, 1264 (6th Cir. 1985)).

Plaintiff need not establish each factor to prevail. Each case is unique, so not all of the factors will be helpful. 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).

1. Strength of Plaintiff's Mark

The stronger a mark is, the greater the risk of confusion. Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1107 (6th Cir. 1991). A mark cannot be strong unless it is both conceptually and commercially strong. Maker's Mark Distillery, Inc. v. Diageo North America, Inc., 679 F.3d 410, 419 (6th Cir. 2012). 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). 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 Junky Music Stores, Inc. v. Big Daddy's Family Music Center, 109 F.3d 275, 282 (6th Cir. 1997). A mark is incontestable when it has not been successfully challenged within five years of its registration. Id. 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." 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. A mark's commercial strength depends on public recognition, the extent to which people associate the mark with the product it announces. Maker's Mark, 679 F.3d 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. 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.

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 noted Kibler's] sale of fewer than 300 albums [during the previous] three years and fewer than 60,000 albums [during the] past sixteen years, [his] current lack of a recording contract, and [his] inability ever to secure a recording contract with a major label.

Kibler admits he offered no survey evidence, but . . . 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 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.

Defendants . . . 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. [Defendants] also highlight Kibler's deposition testimony that he appeared on the television shows to support other, headlining artists.

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. Maker's Mark, 679 F.3d at 421. Kibler's evidence . . . 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.

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.

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. We do not know how manyguests 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.

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 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.

DJ LOGIC lacks commercial strength. 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.

Products belonging to the same industry are not necessarily related. To be related, they must be marketed and consumed in ways that lead buyers to believe they come from the same source. 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. They indicate that while both are musicians and perhaps hip-hop artists, Hall markets himself as a rapper and Kibler a disc jockey. Incidental overlap of their customers [would] not sustain a finding of direct competition at trial. Accordingly, the factor is neutral.

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. We consider the marks' pronunciation, appearance, and verbal translation. The anti-dissection rule requires us not to dwell on the prominent features of a mark and instead consider it as a whole. See Little Caesar Enterprises, Inc. v. Pizza Caesar, Inc., 834 F.2d 568, 571-72 (6th Cir. 1987) (finding differences in sound, appearance, and syllables distinguish "Little Caesar" from "Pizza Caesar USA" despite the prominent word they share).

The district court concluded that 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." The district court . . . correctly appl[ied] the anti-dissection rule [by] examining DJ LOGIC as a whole, including its appearance, sound, language, and impression. Kibler's call [in his brief] 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. 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. But the weight we give that evidence depends on the amount and type of confusion. On one end of the spectrum are persistent mistakes and confusion by actual customers. 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 [very large] scale of defendant's operations. Id.

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 inquiriesabout whether Kibler would be performing somewhere advertising "logic" and referring to Hall. 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.

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. 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. 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.

Here, the district court found the marketing channels factor favors neither party. 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. Defendants [highlight] Kibler's deposition testimony that thousands of artists have played two of the fifteen venues and [note] that Hall has never appeared in Downbeat or Gig. [Defendants also urge] 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. 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. Most musical artists use those websites to advertise and sell their products today. 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.

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. This happens when consumers have expertise in the items and when the items are particularly expensive. 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. [T]he district court's analysis was sound and the factor is insignificant here.

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.

Having found no evidence of intent, the district court concluded that the factor is neutral in this case. Kibler asserts that two pieces of evidence to do a triable issue. 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 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."

The district court properly found the factor neutral because the record prevents a reasonable jury from inferring intent. 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. As with intent, a finding that neither party will expand its business is irrelevant in determining the likelihood of confusion.

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 identifies book excerpts, press clippings, and deposition testimony describing his experimentation with different musical genres as proof he will expand his reach. He adds [in his brief that] there is "no evidence that [Hall] will not continue to expand his musical reach as well." Kibler stresses that the parties' mutual use of hip-hop predisposes them to expansion.

The district court rightly concluded that this factor is neutral. 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. 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

We note that evidence of actual confusion favors Kibler only marginally and that 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 trademark infringement claim.

Trademark Dilution

Kibler also alleges trademark dilution in violation of the Lanham Act. 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." 15 U.S.C. § 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 Services, 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. See, e.g., Audi AG v. D'Amato, 469 F.3d 534, 547 (6th Cir. 2006) (finding AUDI marks [are] famous under Lanham Act because Audi had spent millions of dollars on them and they are known globally); Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 105 (2d Cir. 2009) (finding 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) (finding 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.

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['s dilution provision].

Kibler contends that the district court erred in discounting proof of his fame. He 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 trademark dilution claim.

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. [Therefore, the district court did not err in granting summary judgment to defendants on Kibler's trademark infringement and trademark dilution claims.]

The FACTS of the case: What happened? Who was involved? What were the legal issues?

The HOLDING of the court: What was the decision of the court?

The Reasoning of the Court: Why did the court reach its decision?

What other significant elements should be included in the summary? Dissent?

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FACTS OF THE CASE DJ Lee Jason Kibler Kibler has performed and released music under the name DJ Logi... View the full answer