In a trademark infringement action involving the mark DJ LOGIC for music produced using turntables and vocals, the U.S. Court of Appeals for the Sixth Circuit explored evidence of social media promotion submitted by the plaintiff to support the commercial strength of his mark. Kibler v. Hall, 121 USPQ2d 1069 (6th Cir. 2016).
The use of social media to promote products and services is widespread. For artists who advertise and promote their music predominantly online via social media platforms such as Twitter and Facebook, this decision is a welcoming one. The Sixth Circuit endorsed the notion that social media promotion constitutes marketing to show commercial strength of a mark, and further commented that the use of such platforms is among the most popular and effective advertising strategies currently in use.
To successfully demonstrate commercial strength in the trademark context, however, the trademark holder must do more than make generalized assertions that it advertises on social media. In particular, the trademark holder must show extensive marketing and widespread publicity around the mark and the associated goods or services.
Here, the plaintiff submitted the marketing evidence by way of a declaration that he had advertised online, including on Twitter and Facebook. Unfortunately for the plaintiff, the Sixth Circuit found that the proof was not sufficient to permit a reasonable jury to determine that wide segments of the public recognize DJ LOGIC as an emblem of his music.
The Sixth Circuit reiterated that survey evidence is among the strongest evidence a trademark holder can submit. But even without survey evidence, in the context of social media promotion, the trademark holder must make substantial effort to show a large number of tweets, posts, followers, likes, re-tweets and re-posts of relevant content (including use of the mark in the context of the associated goods and services), as well as the extent and types of followers/fans who were exposed to the mark (e.g., evidence of retweets of relevant posts by celebrities to their large number of followers.)
In this case, the Sixth Circuit found that the evidentiary record contained insufficient evidence of the nature and extent of the social media advertising. Because the plaintiff had scant album sales and no recording contract, the Sixth Circuit ruled that the commercial strength of his mark was low.
The Sixth Circuit, noted in dicta that album sales and even recording contracts are less critical markers of success than before because of widespread internet use. As a result, a plaintiff with low album sales and no formal recording or publishing contract could nevertheless show commercial success by submitting evidence of broad recognition of his mark using web-based indicators of popularity, e.g., YouTube views. As this case shows, when submitting this type of evidence,make sure you can show a large number of views to prove widespread publicity around the music and the mark.