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Social Media Presence Is a Factor When Assessing Trademark Strength

By: Davis|Kuelthau’s Intellectual Property Team

The Sixth Circuit Court of Appeals recently turned to the social media presence and marketing of a DJ when evaluating the DJ’s claims of trademark infringement and dilution. In Kibler v. Hall, et al (6th Cir. Dec. 13, 2016), the court affirmed summary judgment for Robert Hall, a rapper performing under the name “Logic” since 2009, in a trademark suit brought by Lee Kibler, a DJ performing under the name “DJ Logic” since 1999.

Kibler previously registered his name as “DJ Logic” as a trademark in 2000 and again in 2013, after a lapse in registration. In 2012 attorneys for Kibler sent a notice to Hall’s management company and booking agent seeking to have Hall stop performing as “Logic” and requesting all of Hall’s products and advertisements using the name “Logic” recalled. Kibler subsequently sued in 2014 alleging trademark infringement and dilution, as well as other claims under Michigan law.

When the court analyzes claims of confusion and dilution of trademarks, an important factor is the commercial strength of the mark. In evaluating the strength of the “DJ Logic” mark, the court stated that “[p]romotion on platforms like Twitter and Facebook not only constitutes marketing, but is among the most popular and effective advertising strategies.” Consequently, Kibler should have included evidence about “how many and what kind of Twitter followers” he had or the “number and kind of Kibler’s Facebook fans, likes, posts, re-posts.” Further, even if Kibler had low album sales or lacked representation by a recording studio, his mark could still be commercially strong if he could have demonstrated web-based indicators of recognition, such as YouTube views.

The Seventh Circuit’s test for trademark infringement and dilution is similar to the test used in the Sixth Circuit. The Seventh Circuit also evaluates the commercial strength of a mark, and the Sixth Circuit’s decision indicates that social media is becoming an important source in the review of trademark claims. How well a business markets itself on the internet and social media platforms can be an important factor in supporting or rebutting trademark claims. Businesses should examine their social media presence when developing and implementing trademarks and branding campaigns.

If you have any questions about this article, please contact your Davis|Kuelthau attorney or the related practice group chair linked here if you have any questions.