By Scott Hervey
While the producers of American Idol, FreemantleMedia North America, appreciate just how much people love the show, it’s now obvious Freemantle doesn’t agree with the old adage that imitation is the sincerest form of flattery. In late December, Freemantle filed suit against a strip club in Austin, Texas that ran a stripper talent contest, and called it “Stripper Idol” and also used the American Idol logo. Freemantle claimed that the strip club owner’s use of “Stripper Idol” in connection with its stripper talent contest constitutes Federal trademark infringement because such use “is likely to cause confusion, mistake, or to deceive as to the affiliation, connection, or association” of the strip club owners with Freemantle or the American Idol program.
Under section 43 of the Lanham Act, infringement occurs when the use by one party of a mark is likely to cause confusion, or to cause mistake, or deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship or approval of his or her goods, services, or commercial activities by another person. Under the Ninth Circuit’s ruling in AMF Incorporated v. Sleekcraft Boats, the determination of “likelihood of confusion” is made by examining the following factors: 1) the strength of the mark; 2) the proximity of the goods; 3) the similarity of the marks; 4) the evidence of actual confusion; 5) the marketing channels used; 6) the type of goods and the degree of care likely to be exercised by the purchaser; 7) the defendant’s intent in selecting the mark; and 8) likelihood of expansion of the product line. This line of analysis is similar for most jurisdictions.
Likelihood of confusion is synonymous with a probability that confusion would result; a mere possibility of confusion is not sufficient. Let’s review the Sleekcraft factors and the facts as they are now known and see whether it is probable that confusion between American Idol and Stripper Idol would result.
Strength of the Marks
Generally, arbitrary and fanciful marks are entitled to wide protection while marks that are suggestive are entitled to a restricted range of protection. Where a suggestive mark is the subject of a suit, infringement will be found only if the marks in question are very similar and the goods are closely related.
Freemantle’s “American Idol” mark is not descriptive of the quality, characteristics or results of its talent show. As such, its mark would be considered a strong mark – either arbitrary or only slightly suggestive. As a strong mark, it is entitled to a wider degree of protection.
Relatedness of the Goods/Services
For related goods, the danger is that the public will mistakenly assume there is an association between the producers of the related goods, even though no such association exists. Where the goods are complementary and the public is more likely to make such an association, the less similar in appearance the marks need to be to support a finding of likelihood of confusion.
Here, Freemantle’s registered trademarks alleged to be infringed cover entertainment services in the nature of a television talent show. The strip club also uses its “Stripper Idol” mark in connection with a talent show, but that’s where the similarities end. The strip club’s talent show is not televised, does not involve singing, and one won’t find Randy, Simon or Paula deciding the contestants’ fate. Just how related is a televised singing competition to a stripping contest, and is it likely that the public would assume the two are somehow associated? The facts seem to show that the services are not so related that consumers would believe they are associated or emanate from a single source.
Similarity of the Marks
Similarity of the marks is tested on three levels: sight, sound, and meaning. Each must be considered as they are encountered in the marketplace. Although similarity is measured by the marks in their entirety, similarities weigh more heavily than differences.
It is not necessary that every word of a trademark be appropriated in order for there to be an infringement. Where the marks are exactly the same and the goods are competitive, infringement is almost always found. Where there are differences between the marks those differences must be looked at in tandem with the similarities or differences in the goods or services. Where the goods or services are directly competitive, the degree of similarity required to prove a likelihood of confusion is less than in the case of dis-similar goods or services.
Freemantle’s American Idol mark and the Stripper Idol mark do share the word “Idol.” If this were the extent of the similarities between the marks, it may not be enough to favor a finding of likelihood of confusion. However, because the strip club also incorporates the unique font and logo elements from the American Idol, this would tend to favor a finding of likelihood of confusion.
Evidence of Actual Confusion
Evidence that use of the two marks has already resulted in consumer confusion is persuasive proof that future confusion is likely. Where a plaintiff is able to introduce evidence of actual confusion it’s likely the court will find infringement. Since we have no facts which show actual confusion this factor is neutral in our analysis.
Convergent marketing channels increase the likelihood of confusion. This is because likelihood of confusion is not determined in a vacuum; it is determined by the context that a customer perceives the marks in the marketplace.
We know (or at least those that watch American Idol know) that Freemantle uses all media platforms to market its television program. It runs advertisements on television, radio and in print, and also uses the Internet. While it’s not clear yet the extent to which the strip club markets its striper talent show, the strip club does have a website through which it markets its show.
Evidence showing that the defendant intended to incorporate elements of the plaintiff’s mark favors a finding of likelihood of confusion. Courts presume that the defendant can accomplish his purpose: that is, that the public will be deceived.
Here, it is abundantly clear that the strip club intended to incorporate elements of Freemantle’s mark. It utilized Freemantle’s logo and distinct text font in its mark; replacing the word “American” with “Stripper.”
Likelihood of Expansion
Inasmuch as a trademark owner is afforded greater protection against competing goods, a "strong possibility" that either party may expand his business to compete with the other will weigh in favor of finding that the present use is infringing. When goods are closely related, any expansion is likely to result in direct competition.
While it would be in the realm of possibilities for Freemantle to expand the American Idol franchise into a dancing competition, but not a stripping competition. Likewise, its no likely that the strip club would ditch stripping for singing.
In reviewing the above Sleekcraft factors and applying them to the facts, it appears that Freemantle would not likely establish that consumer confusion is probable. However, likelihood of confusion is a question of fact and the reviewing court may have a much different outlook. What do you think? Visit www.theiplawblog.com and leave your comments. I will print the results in my next article.