Case Analysis: Evidence for Trademark Infringement

After bands perform for many years, they often assume that they will be able to easily prevent others from using their names -- if the names are registered trademarks -- on CDs and other merchandise.

However, the Court of Appeals for the Seventh Circuit in Chicago held on Sept. 24 that Frank Sullivan, a founding member of the band Survivor, couldn't prevent the CBS reality-TV series "Survivor" from using the same name on its soundtrack albums and merchandise.

In its opinion, the court stated: "This case turns, in our view, on Sullivan's failure to submit enough evidence on the likelihood of confusion point to survive summary judgment."

The three-judge panel provided a virtual laundry list of evidence that may have persuaded it to rule differently if the results favored Sullivan. This list, which follows, may be helpful to those preparing a case based on trademark infringement or dilution of a famous mark.

Sullivan failed to back up his claim based on dilution of a famous mark, the court wrote, because he didn't show that the band's name is famous enough for consumers to believe that the reality-show's CDs came from the band.

The court suggested that he "might have offered" (1) specifics on how well-known the name still is today, (2) how much money he spends on promoting the band, (3) how much money he spends on advertising the band, (4) how much money the band has earned and (5) evidence that the band enjoys fame and recognition as the "originator of any products other than rock albums and concert T-shirts."

On the trademark-infringement claim, the court first noted that the band's name was entitled to strong protection against other "aspiring rock bands or musical groups," but Sullivan "would have only weak or nonexistent protection outside that particular niche." Therefore, offering evidence in support of the likelihood-of-confusion element in a trademark infringement action was essential.

To disprove any confusion in the minds of consumers between the two Survivors, CBS conducted a survey and presented it to the court. Sullivan challenged the findings, claiming that the survey focused on confusion about music rather than "trade identities." Also, the survey was limited to only one CD and failed to include any questions about merchandise.

The court accepted the survey, stating that Sullivan had "ample opportunity" to conduct his own survey, although was not required to do so if there were enough evidence in some other form of confusion between the products. However, Sullivan offered results only of an Internet search that retrieved Web sites relating to both the band and the television show.

The judges disregarded this search, indicating that a search engine simply responds to a query; it cannot be presumed that consumers would be confused by the search results.

In the final analysis, this case seems to prove the point that specific evidence is essential to succeed on a trademark-infringement claim, even if the band believes its name is famous.

Case: Frank M. Sullivan III v. CBS Corporation, et al., Case No. 00C5060
Opinion: U.S. Court of Appeals for the Seventh Circuit, Judge Ripple, Manion and Wood, written by Judge Wood, Sept. 24, 2004