Notes & Comment
Vol. 2004, No. 9
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Trademarks
Voted Off the Island: "Survivor" the Band
As one might expect, the stunning success of CBS TV's "Survivor" has met with certain tribal challenges of its own. In reality, it would seem, CBS can outplay, outlast and outwit the best of them -- at least when it comes to issues of trademark law. That is the outcome of a recent decision issued by the U.S. Court of Appeals for the Seventh Circuit striking down a rock band's trademark challenge to the network's use of "Survivor". Frank M. Sullivan III v. CBS Corporation , U.S. Court of Appeals for the Seventh Circuit, No. 02-2058 (September 24, 2004), available at www.ca7.uscourts.gov (select "Opinions" tab, search by case number or party name).
"Survivor", the Band
Frank Sullivan formed "Survivor" in 1977, recording such hits as "Eye of the Tiger", the movie theme for "Rocky III". In 1994, following defections from the band that led to another group using the "Survivor" name, Sullivan and a partner obtained a federal trademark registration for "Survivor' in connection with “Entertainment Services; namely, providing band and/or musical services." The registration did not encompass merchandising. Over the years, the band toured extensively but hadn't released new music in the U.S. since 1993. It sells CDs and merchandise at its concerts and licenses its work to television shows. Record stores still sell its albums, and radio stations play its music.
In May 2000, CBS and related production entities ("CBS") debuted a weekly television series "Survivor", which pits marooned contestants against each other in a battle of wits, athleticism and strategy, leading to weekly dismissals of players and, ultimately, to the crowning of a single victorious "survivor." Over the summer and fall of 2000, CBS sold merchandise and released a soundtrack of the original TV series music, employing the "Survivor" logo in connection with such music and merchandise but carefully doing so in a manner designed to associate the merchandise and music to the TV series.
Sullivan didn't contest CBS's use of "Survivor" for the television broadcast itself. He did claim that CBS's use of the mark in connection with related CDs and merchandise infringed his registered trademark of "Survivor" for "entertainment services," and he sued for federal and state trademark infringement, dilution and related claims. The trial court granted summary judgment for CBS and the Court of Appeal affirmed.
The "Survivor" Trademark Issues
Evaluating Sullivan's trademark infringement claims, the Court of Appeals zeroed in on two questions: was his registered "Survivor" trademark entitled to strong protection, and if so, was there a likelihood of consumer confusion between his mark and CBS's usage of "Survivor".
Protection of the Trademark. On the issue of protection, the Court said that Sullivan's "Survivor" mark was "arbitrary" and was entitled to strong protection. There are four categories of trademarks -- fanciful, arbitrary, descriptive, and generic -- and the Court held that along that spectrum, "fanciful" marks (because they are the most unique) are entitled to the most protection while "generic" marks (because they are the least unique) are entitled to the least protection. Here, the Court concluded, Sullivan's "Survivor" mark was arbitrary and presumably entitled to strong protection, but only in connection with band names: "[J]ust because a trademark is arbitrary, if it is used only in a narrow area, others may use a similar mark for different goods without any trademark infringement."
Evidence of likely consumer confusion. Even if the mark was entitled to strong protection, said the Court, the case really turned on the plaintiff's failure to submit any facts supporting likelihood of confusion. CBS had produced some evidence (a survey) that consumers weren't confused about the origin of the TV show's music and merchandise. Therefore, Sullivan needed to produce some contrary evidence in order to establish a triable issue of fact and avoid summary judgment. While he claimed that the mark was famous, he offered no supporting evidence. Sullivan maintained that internet search results for “Survivor” turned up web sites both for the band and the CBS series, but the Court ruled that such internet search results weren't probative of likely consumer confusion.
Sullivan further contended that because "Survivor" was an arbitrary mark, he was automatically entitled to wide protection from any use in any field by any competitor. But the Court disagreed, restating that Sullivan's mark was entitled to strong protection only against aspiring rock bands or musical groups: "The ultimate concern in a trademark case like this one is the tendency of the mark to indicate the origin of the product in the eyes of the purchasing public...The crucial question is whether the mark is strong enough that the public will form an association between the mark and the source of that particular good."
The Court emphasized “substantial steps” taken by CBS to use the "Survivor" logo on the music CDs and merchandise in a manner that associated those products only with the TV show. CBS never used "Survivor" standalone, but combined the logo with words, symbols and images that allowed the user to link CBS's merchandising usage of the logo to the TV show. Because Sullivan had not provided any evidence to the contrary, this permitted an inference that consumers differentiated between CDs and merchandise originating with the "Survivor" band and affiliated with the CBS broadcast. Finally, the Court considered the respective distribution channels. While Sullivan's band sold CDs and merchandise at concerts, CBS employed different outlets, and the parties' goods were not advertised in the same manner.
Summary and Conclusion
The result in Frank M. Sullivan III v. CBS Corporation is sound and based on common sense. An established but non-productive rock band and a hit television series have little in common, even though they may sell similar merchandise. In most trademark cases, the plaintiff seeks to prevent a defendant from leveraging its good name, but the facts here turned that dynamic on its head. The basic purpose of trademark law permits suppliers of goods and services to differentiate their wares from those of others so consumers aren't confused about the origin of their respective goods and services. Strong trademarks used in very narrow markets shouldn't convey an absolute monopoly that bars others from using the same mark in connection with goods and services which don't compete. And when the question of infringement is at least arguable (as it was here), it's important that the new kid on the block use the mark carefully and conscientiously, taking steps to differentiate its goods and services so that, in the end, customers really aren't confused about whose goods and services they are buying.
© Matthew Joseph 2004. Law Offices of Matthew Joseph, San Mateo, California, practices in the areas of intellectual property licensing, commercial real estate leasing, and corporate and business transactions. No legal advice is intended by the information provided herein and recipients should independently consult counsel before taking any action related to this subject matter.