Sullivan v. CBS

Citation: Sullivan v. CBS Corp., 385 F.3d 772, 72 U.S.P.Q.2d (BNA) 1586 (7th Cir. 2004)(full-text).

Factual Background
Plaintiff and four others formed the rock band “Survivor” in 1977 and owned the federally registered trademark SURVIVOR for “entertainment services” covering musical services but not merchandise. Plaintiff’s band, best known for the Rocky III theme song “Eye of the Tiger,” continued to perform live, sell merchandise and CDs, and license their music for television shows and commercials.

Defendant, the producer and broadcaster of the famous reality TV show “Survivor,” offered collateral merchandise tied to the show including two music CDs and various other items such as clothing, bags, calendars, and mugs. The first CD featured original music from the “Survivor” TV show and the second CD featured music “inspired” by the show. The CDs and other merchandise all featured a “Survivor” logo, which consisted of an oval with the word SURVIVOR across the center surrounded by a scene reflecting the current season’s location, and the words OUTWIT, OUTPLAY, and OUTLAST on the perimeter of the oval.

Trial Court Proceedings
Plaintiff sued for trademark infringement and dilution regarding defendant’s use of SURVIVOR on its CDs and other merchandise but not for the show name. The district court granted summary judgment for defendant on both claims.

Appellate Court Proceedings
The court of appeals affirmed. At the outset, the Seventh Circuit examined the district court’s finding that plaintiff’s mark was descriptive but nonetheless protectable because it had acquired secondary meaning. It disagreed with classification of plaintiff’s mark as descriptive, instead classifying it as arbitrary and thus inherently strong. The inherent strength of plaintiff’s mark, however, did not “automatically mean that the mark is entitled to strong protection.”

The strength of the SURVIVOR mark in the marketplace was also relevant to the mark’s scope of protection. According to the court, “[a] mark can be arbitrary for one purpose but it may still be used extensively in other areas.” In this regard, the court noted that plaintiff “might enjoy strong protection for his mark as against other aspiring rock bands or musical groups, but that he would have only weak or nonexistent protection outside that particular niche.”

For plaintiff to succeed, he needed to show that his mark was strong enough that consumers would mistakenly associate CDs and other merchandise from defendant’s TV show with his band. The court then considered several of the likelihood-of-confusion factors. Regarding the strength of plaintiff’s mark, plaintiff failed to offer any evidence of how well known the band was today, the amount he spent on promoting or advertising the band, or how much money the band had earned. The court also noted that plaintiff had not released a new album in the U.S. since 1983.

Plaintiff did introduce newspaper articles mentioning the band, but they only announced an upcoming performance or mentioned that the band recorded a particular song. The similarity-of-the-marks factor also favored defendant. Although the dominant part of defendant’s mark was clearly the term SURVIVOR, it never appeared alone on defendant’s merchandise but rather was always displayed as part of the “oval” logo discussed above. Moreover, the first CD stated that it was “The Official Soundtrack to the Hit CBS TV Series” and the second stated that it was “Music Inspired by the Hit CBS TV Series.” According to the court, defendant took “substantial steps to make the association between its CDs and its television show readily apparent from the face of the CD” and this “prominent display of different names on the marks” reduced any likelihood of confusion.

The similarity-of-products factor favored defendant as well, but it was a closer question. Although the parties both offered CDs and clothing, they differed in the way they were sold. The parties’ respective CDs could be sold in the same stores, but they were sold in different sections—“rock” for plaintiff’s CDs and “soundtracks” for defendant’s. And plaintiff sold t-shirts only at the band’s concerts. In light of these facts, the Seventh Circuit “concluded that no rational fact finder could conclude that any consumer would be confused as to the source of [defendant’s] merchandise.”

Finally, plaintiff took exception with the district court’s finding that no evidence of actual confusion existed. First, plaintiff objected to the use of defendant’s survey involving one of the CDs because it “improperly focused on confusion about music, not trade identities,” was limited to only one CD, and did not include any questions about the other merchandise. Plaintiff, however, had the opportunity to conduct his own survey, but chose not to do so.

And the appeals court has previously upheld similar surveys. Second, plaintiff presented no “evidence” of actual confusion except for results of searches conducted on two Internet search engines, both of which retrieved websites related to defendant’s TV series and plaintiff’s band. But this “evidence” did not establish that the search engine was “confused.” This evidence simply took the court back to the question “would a consumer, looking at the different web-sites, think that CBS and the Band were from the same source”? The court concluded that no such evidence existed and “the websites contain the same additional information from CBS that distinguishes its ‘Survivor’ from all others.”

Because there was no triable issue of fact on the likelihood of confusion, the court held there was no trademark infringement. The court also affirmed the dismissal of plaintiff’s dilution claim because he failed to present any evidence of actual dilution as required by the Supreme Court’s decision in Moseley v. V Secret Catalogue.

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