Sullivan v. Cbs Corp.

• Decision Date: 24 September 2004
• Docket Number: No. 02-2058.,02-2058.
• Citation: 385 F.3d 772
• Parties: Frank M. SULLIVAN III, Plaintiff-Appellant, v. CBS CORPORATION, et al., Defendants-Appellees.
• Court: U.S. Court of Appeals — Seventh Circuit

385 F.3d 772

Frank M. SULLIVAN III, Plaintiff-Appellant, v. CBS CORPORATION, et al., Defendants-Appellees.

No. 02-2058.

United States Court of Appeals, Seventh Circuit.

Argued December 2, 2003.

Decided September 24, 2004.

Appeal from the United States District Court for the Northern District of Illinois, William J. Hibbler, J.

COPYRIGHT MATERIAL OMITTED

Annette M. McGarry (argued), Wildman, Harrold, Allen & Dixon, Chicago, IL, for Plaintiff-Appellant.

Richard J. O'Brien, Sidley, Austin, Brown & Wood, David E. Fink, White, O'Connor, Curry, Gatti & Avanzado, Los Angeles, CA, Christopher B. Wilson, Perkins Coie, Chicago, IL, Andrew M. White (argued), White, O'Connor, Curry, Gatti & Avanzado, Los Angeles, CA, for Defendants-Appellees.

Before RIPPLE, MANION, and DIANE P. WOOD, Circuit Judges.

DIANE P. WOOD, Circuit Judge.

Seeking to protect his trademark in the band name "Survivor" (the Band), Frank Sullivan brought an action alleging trademark infringement, federal and common law trademark dilution, unfair competition, and deceptive trade practices against defendants CBS Corporation, CBS Broadcasting, Survivor Productions, TVT Records and Tee Vee Toons, (collectively referred to as CBS), the producers and distributors of music CDs and merchandise bearing the logo of the well-known television show, "Survivor" (the Series). Sullivan, who registered the mark "Survivor" in connection with the Band in 1994, claims that the defendants cannot use the word "Survivor" on their CDs and merchandise. The district court granted summary judgment in favor of the defendants, holding that although Sullivan's mark is entitled to protection, Sullivan cannot demonstrate any likelihood of confusion as to the origin of the CDs or merchandise related to the Series, nor can Sullivan show any likelihood of dilution. On our de novo review, we too conclude that Sullivan cannot show any likelihood of confusion or dilution, and so we affirm the judgment of the district court.

I

A

Sullivan and four other men formed Survivor the Band in 1977. Throughout the 80s, the Band released a number of albums and had a number of hit songs, including "Eye of the Tiger," the theme song for the well-known movie Rocky III. The Band toured extensively and won several music industry awards. Survivor released its first greatest hits collection in 1989, and followed up with another collection containing two new songs in 1993.

Over the years, various members left the Band. A former lead singer for the Band then began performing with different musicians under the name Survivor. Litigation followed, leading Sullivan and another member, James Peterik, to apply for a trademark registration for the name "Survivor" in March 1994. Sullivan and Peterik sought to use the name in connection with "Entertainment services: namely providing band and/or musical services." The registration did not encompass merchandising. Peterik later assigned his rights to Sullivan, who remains the sole holder of the mark.

Sullivan continues to perform as Survivor, though the Band has not released any new music in the United States since 1993. At these concerts, Survivor sells its CDs and other products like t-shirts. Survivor also licenses music to television shows and commercials. Record stores sell the Band's CDs and radio stations continue to play the Band's music. Sullivan claims that the Band sells millions of dollars' worth of records and merchandise, and that he spends millions of dollars each year advertising and promoting the Band, but he offered no evidence in support of these contentions.

B

In May 2000, CBS debuted a weekly reality television series called "Survivor." On the Series, sixteen participants are "marooned" on an island or otherwise inaccessible area. The castaways face various trials and contests, all while trying to survive the harsh realities of life in the deserted location. Every few days, the castaways vote to evict one member of the group. This continues until two castaways remain. The eliminated participants then vote on which of the two left should win the $1 million prize. The Series has been a great success.

Before the Series first aired, CBS developed a logo for use in promotions and advertising. The logo features an oval with the word "SURVIVOR" across the center, surrounded by a scene reflecting the current season's location. The words "OUTWIT," "OUTPLAY," and "OUTLAST" surround the perimeter of the oval. In the second season, for example, the inside scene showed a kangaroo and sunset on an Australian outback scene. The inside phrase was changed from "SURVIVOR," to "SURVIVOR-AUSTRALIAN OUTBACK."

C

In August 2000, CBS released a soundtrack featuring a compilation of original music from the Series. The word "SURVIVOR" is printed in large block letters across the front of the album, while the words "THE OFFICIAL SOUNDTRACK TO THE HIT CBS TV SERIES" are printed underneath. The lower right of the CD shows the Series' oval logo. CBS released a second CD in November 2000, this one proclaiming that it featured music "inspired" by the Series. The front of the second CD shows the oval Series logo, with flames coming through the top of the oval, and the words "OFFICIAL PARTY SURVIVAL KIT" printed below the logo. This CD contains previously recorded songs with survival and island themes. Both CDs are marketed primarily to Series viewers and are classified as soundtracks. In June 2000, CBS launched a line of merchandise, including t-shirts, mugs, bags, calendars, and books, all bearing the oval Series logo.

II

Sullivan claims that the defendants are infringing his Band mark with their use of the word "Survivor" on the two CDs and the related merchandise, in violation of Sections 32(1) and 43(a)(1)(A) of the Lanham Act, 15 U.S.C. §§ 1114(1), 1125(a)(1)(A), the Illinois Trademark Registration and Protection Act, 765 ILCS § 1036/65, the Uniform Deceptive Trade Practices Act, 815 ILCS §§ 510 et seq., the Consumer Fraud and Deceptive Business Practices Act, 815 ILCS §§ 505 et seq., as well as the common law of unfair competition. Only the trademark infringement and dilution theories are before us on appeal. To prevail on his trademark infringement claims, Sullivan must show that his mark is entitled to protection and that there is a likelihood of confusion between his mark and CBS's mark. The district court found that Sullivan's mark, "Survivor" (referring to the Band), was descriptive, but that it had acquired secondary meaning. The court then applied a seven-factor test and found that Sullivan failed to demonstrate any likelihood of confusion.

Although CBS does not contest the district court's classification of Sullivan's mark as descriptive, in our view that classification is incorrect. Ultimately, this does not change the outcome for Sullivan, but the mark, "Survivor," for a band, is properly classified as arbitrary, not descriptive. Trademarks are classified in one of four categories — fanciful, arbitrary, descriptive, and generic. The amount of protection inherently available tends to increase from generic to fanciful. Generic words are entitled to no protection, whereas fanciful terms are usually entitled to strong protection.

A descriptive term is one that describes a characteristic or ingredient of a product. Descriptive terms are usually not entitled to protection "`because they are [a] poor means of distinguishing one source of services from another and because they are often necessary to the description of all goods or services of a similar nature.'" Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d 934, 936 (7th Cir.1986) (quoting M.B.H. Enter., Inc. v. WOKY, Inc., 633 F.2d 50, 54 (7th Cir.1980)). Sullivan argues, correctly, that the word "survivor" is not descriptive of a musical band. The word "survivor" when used as a band name is arbitrary; there is nothing about the word which is necessary to the description of a band, or of Sullivan's band. Because the word "survivor" is a common word that is being applied to a service unrelated to its meaning, the Band name, properly considered, is an arbitrary mark.

Classifying "Survivor" as an arbitrary mark does not, however, automatically mean that the mark is entitled to strong protection. The strength of a mark is determined partly by its classification, but the courts are still free to examine the strength of a mark outside its area of use. In other words, just 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. See McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d 1163, 1170-71 (7th Cir.1986). We can assume that Sullivan's mark is entitled to strong protection as against other band names, but there is no presumption that his mark is equally strong outside that realm.

This case turns, in our view, on Sullivan's failure to submit enough evidence on the likelihood of confusion point to survive summary judgment. Sullivan had to submit evidence that, if believed by a trier of fact, would show that consumers are likely to be confused as to the source of the CDs and merchandise at issue. In assessing the likelihood of confusion, courts have identified seven relevant factors that help in deciding the ultimate question: (1) the similarity of the marks; (2) the similarity of the products; (3) the area and manner of concurrent use; (4) the degree of care likely to be used by consumers; (5) the strength of the plaintiff's mark; (6) whether any actual confusion exists; and (7) the defendant's intent to palm off its goods as those of the plaintiff. Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808, 812 (7th Cir.2002). The district court found that similarity of the marks, similarity of the products, degree of care, strength of mark, actual confusion, and intent all favored CBS. Area and manner of concurrent use favored Sullivan.

We begin by considering the strength of Sullivan's mark....