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REBELUTION, LLC v. PEREZ (N.D.Cal. 7-29-2010)
PER CURIAM:
Richard Wilder appeals the district court's grant of summary judgment to the appellee organizations on his personal injury claims. An uninvited guest seriously injured Wilder at a fraternity party, and Wilder sued the local, regional, and national organizations alleging their negligent failure to protect him from the injury. We conclude that the organization members owed Wilder no duty to protect him from the criminal acts of third parties under Alabama law. As a result, Wilder's negligence, respondeat superior, negligent supervision, and wantonness claims all fail. Accordingly, we affirm the district court's grant of summary judgment.
I. BACKGROUNDKenneth Gipson stabbed Wilder in the head following a Sigma Nu fraternity party in Tuscaloosa, Alabama, causing Wilder serious injury. Wilder was a guest attending the fraternity party. Gipson and Reginald Barnes, who were not invited to the fraternity party, decided to enter the premises toward its conclusion. In his brief, Wilder describes the initial confrontation between Gipson and members of the fraternity:
Mobley [a fraternity officer], as he was exiting the front door of the Fraternity House, observed Gipson and Barnes entering the Fraternity House. Mobley was supsicious of Gipson and Barnes so he re-entered the Fraternity House in order to observe them. . . .
Mobley solicited the help of McLin and Elmore [two other fraternity officers] to remove Barnes and Gipson from the Fraternity House. Mobley, Elmore and McLin confronted Gipson and Barnes in the dining area of the Fraternity House. At that time, Barnes was pulling two bottles of beer out of an icemaker. . . .
Mobley questioned Barnes and Gipson as to whose beers they were taking and who, if anyone, they knew at the Fraternity House. Mobley, Elmore and/or McLin used profanity and accused Gipson and Barnes of stealing beer. Mobley, Gipson and Barnes exchanged words, and the conversation became heated and everyone's voices started to escalate. . . .
Gipson then punched McLin in the neck, and a fight broke out between the two of them. Elmore broke up the fight and pushed McLin to the other side of the dining area. According to Gipson while in the kitchen area one of the individuals who confronted and represented himself as a member of the fraternity started using racial slurs directed towards him. . . .
At some point in time during these events, Gipson pulled out from his pocket and opened a butterfly knife (the "Knife"). Gipson attempted to back away from the confrontation, using the Knife to ward off the group of individuals in the dining area.
(Appellant's Br. at 8-10 (record citations omitted)).
As Gipson and Barnes exited the house, they encountered more party-goers who had exited the house but remained on the lawn. That group included Wilder. Gipson issued general death-threats to those in hearing range as he walked toward the street. Before their exit was complete, Barnes threw at least one beer bottle toward fraternity members; the fraternity members returned in kind. Violence erupted, and within moments Gipson stabbed Wilder in the head with his butterfly knife.
II. STANDARD OF REVIEW
We review de novo a district court's grant of summary judgment. Fanin v. U.S. Dep't of Veterans Affairs, 572 F.3d 868, 871 (11th Cir. 2009). "[W]e view all evidence and factual inferences in the light most favorable to the nonmoving party," as reflected in our reliance on Wilder's filings with this court for the recitation of facts above. See Lofton v. Sec'y of Dep't of Children Family Sews., 358 F.3d 804, 809 (11th Cir. 2004).
III. DISCUSSION
Wilder's ability to recover against the local and national fraternity organizations depends initially on his capacity to demonstrate that the fraternity's members acted negligently in allowing Gipson to assault him. See Ex Parte Essary, 992 So.2d 5, 9 (Ala. 2007) (explaining that, though wantonness and negligence are distinct tort concepts, they both require the violation or omission of some legal duty); Univ. of Ala. Health Servs. Found., P.C. v. Bush, 638 So.2d 794, 799 (Ala. 1994) ("Under the doctrine of respondeat superior, the master cannot be liable unless one of the master's servants has been found to be negligent."); Hathcock v. Mitchell, 277 Ala. 586, 173 So.2d 576, 584 (1965) ("[T]he master is not liable for having employed incompetent servants unless their incompetency was the proximate cause of the injury. . . ."). Foundational to the existence of a negligence claim is a legal duty flowing from one to another. "It is the general rule in Alabama that absent special relationships or circumstances, a person has no duty to protect another from criminal acts of a third person." Moye v. AG. Gaston Motels, Inc., 499 So.2d 1368, 1370 (Ala. 1986).
Wilder argues primarily that "special circumstances" arose on the night of the fraternity party that created a legal duty on the part of the fraternity to take affirmative action to prevent Gipson's assault. In Alabama, these "special circumstances" arise only when the defendant can foresee the probability of conduct endangering the plaintiff. New Addition Club, Inc. v. Vaughn, 903 So.2d 68, 73 (Ala. 2004). This foreseeability requires a three-part showing: "First, the particular criminal conduct must have been foreseeable. Second, the defendant must have possessed `specialized knowledge' of the criminal activity. Third, the criminal conduct must have been a probability." Id. (internal quotation marks omitted). The Alabama Supreme Court "has rarely held that the danger to an invitee posed by the potential criminal act of a third person was so imminent that the premises owner should have foreseen the eventual consequence." Hail v. Regency Terrace Owners Ass'n, 782 So.2d 1271, 1274-75 (Ala. 1999).
Wilder argues that the question of duty, hinged on the issue of foreseeability, is at least a factual question to be resolved by a jury. For the proposition, Wilder relies on the appellate court decision in Whataburger, Inc. v. Rockwell, 706 So.2d 1220 (Ala. Civ.App. 1997), In Whataburger, the plaintiff sued a restaurant for failing to intervene or solicit aid for him before he was injured in a fight on the premises. Three young men harassed the plaintiff, and despite the plaintiffs request that the manager summon the police, the manager simply told the group to "take it outside." Id. at 1222. The court held that the foreseeability of the plaintiffs physical injury was a factual question to be resolved by the jury. Id. at 1224.
We acknowledge that the decision in Whataburger implies a legal duty to protect others when a premises owner has specific knowledge of probable physical injury awaiting an invitee. But we are doubtful about the viability of its assertion that debatable questions of foreseeability, and thus duty, are reserved for the jury in light of more recent Alabama case law. "In Alabama, the existence of a duty is a strictly legal question to be determined by the court." Bryan v. Ala. Power Co., 20 So.3d 108, 116 (Ala. 2009) (internal quotation marks omitted). Even when addressing questions of foreseeability in the context of duties to third parties, the Alabama Supreme Court has held that the question of duty "is a question of law to be determined by the trial judge." New Addition Club, 903 So.2d at 73 (internal quotation marks omitted); see also State Farm Fire Cos. Co. v. Owen, 729 So.2d 834, 837-39 (Ala. 1998) (observing the conflicting Alabama case law regarding whether the existence of a duty should be resolved by judge or jury and ultimately holding "that the existence of a duty is a question of law to be determined by the trial judge"). We think Alabama law sufficiently clarifies the court's function as the final arbiter of the foreseeability analysis in the context of determining legal duty. Nevertheless, as we note below, even if Whataburger were controlling, our result would be the same.
Wilder attempts to cast the fraternity members as the instigators of both confrontations to argue that the fraternity members had a duty to defuse the situation they created. In his brief, Wilder takes some liberty with the facts to make this characterization — the same facts we quoted from above. Wilder contends that "[t]he Sigma Nu members' racial epithets led to a fight that was serious enough that Gipson threatened the Sigma Nu members with a knife." He further argues that "[t]he evidence, when viewed in a light most favorable to Wilder, shows that one or more of the members called Gipson and Barnes `niggers,' and incited the altercation with Gipson and Barnes."
Wilder's factual characterizations cross the line from a "favorable light" to an alternate reality. By Wilder's own admission in his brief, the physical confrontation between Gipson and the fraternity members developed after Gipson threw the first punch. Moreover, Wilder's own sequence of events suggests that Gipson did not hear the alleged racial epithets until after fraternity members had intervened to break up the physical altercation. Wilder's attempt to characterize the fraternity members as the aggressors fundamentally ignores the fact that Gipson and Barnes were trespassers who were confronted while stealing property, a fact admitted by Wilder. At best for Wilder, all of the actors in the initial confrontation were mutually responsible for the physical and verbal altercation.
We now apply the relevant law to these facts to determine whether the fraternity had a duty to protect Wilder from Gipson's later actions. At bottom, we must determine whether a premises owner, aware of a brief physical altercation on his property, has reason to anticipate as probable another, nearly fatal altercation in a different area of the property during the trespassers' retreat. Alabama case law leads us to conclude that Gipson's assault on Wilder was not foreseeable.
In New Addition Club, the plaintiffs estate sued a bar after a bar patron murdered the plaintiff. The plaintiff attempted to show that the murder was foreseeable to the bar by introducing evidence that the patron had previously brandished a shotgun at the bar, had assaulted his girlfriend in the bar's parking lot, and was known as "hot tempered." 903 So.2d at 75. The Alabama Supreme Court held that none of the evidence sufficiently established the foreseeability of the particular murder. Id. at 75-76.
The facts in New Addition Club contrast with those in Whataburger, where the plaintiff actually requested that the premises manager intervene and call the police. 706 So.2d at 1223. The plaintiff contended that the manager failed to call the police before the fight broke out, despite his pleas. Id. This, the appellate court concluded, raised the factual possibility that the manager could have foreseen the imminent probability of harm awaiting the plaintiff. Id. at 1224.
In this case, the facts surrounding the fraternity member's knowledge of the dangerousness of the situation do not indicate that they were aware of the probability of the specific harm that befell Wilder. In Whataburger, the premises manager ignored the plaintiffs pleas for intervention, but no such requests were made here. Moreover, the manager in Whataburger had knowledge of the specific circumstances that led to the plaintiffs injuries because she observed both the victim and the assailants interacting before the altercation occurred. Here, however, the fraternity members might have observed a hostile trespasser, but they had no reason to anticipate that his hostility would be taken out on a nonparticipant in the initial confrontation.
We note that, even applying the standard set forth in Whataburger, we do not believe that a genuine issue of material fact exists about the foreseeability of Gipson's violent assault on Wilder.
The circumstances here are more like those in New Addition Club, where the bar owner had knowledge of the assailant's hostile temperament and possession of a firearm. Here, according to Wilder, the fraternity members were aware of both Gipson's aggression and possession of a weapon. But, as in New Addition Club, knowledge about temperament and weapons does not create the probability of a particular type of criminal activity. Any fraternity member's knowledge that Gipson was a hostile, armed individual does not indicate that he should have known the probability that Gipson would stab a bystander in the head during Gipson's exit. Because there are no "special circumstances" based on which the fraternity or its members should have foreseen the probability of Gipson's assault, we hold that neither the fraternity nor its officers and members owed a duty to protect Wilder from Gipson's criminal acts.
Wilder argues also that a "special relationship" existed between Wilder and the fraternity because the fraternity incited the hostile situation but failed to intervene. As we discussed above, Wilder's contention that the fraternity incited the violence conflicts with his own account of the facts. Moreover, under Alabama law the "special relationship" exception to the duty rule appears to be too narrow to accommodate the facts here. See, e.g., Young v. Huntsville Hosp., 595 So.2d 1386, 1388-89 (Ala. 1992) (discussing a "dependence test" for the "special relationship" exception and concluding that a hospital owes a duty of protection to an anesthetized or sedated patient).
Because no one at the fraternity party owed Wilder any legal duty to protect him from the criminal acts of Gipson, no one acted negligently in failing to do so. As a result, all of Wilder's claims presented in this appeal must fail. Without negligent conduct, there can be no direct claim for negligence or for vicarious liability. In the absence of negligent conduct, any negligent hiring, training, or supervision could not have caused Wilder's injuries. Finally, in the absence of a legal duty to protect Wilder, no claim against the organizations for wantonness can survive.
IV. CONCLUSION
Rarely does a premises owner have a legal duty to protect others from the criminal acts of a third party. In circumstances like this, only when the party knows or should know that a particular type of crime is probable does it have a duty to protects its guests. The facts in this case fail to create the kind of foreseeability necessary to impose on the fraternity and its members a duty to protect their guests. In the absence of a legal duty, there can be no negligence, negligent training, vicarious liability, or wantonness. Accordingly, we affirm the district court's grant of summary judgment in favor of the Appellees.
AFFIRMED.
It would be difficult, if not impossible, for Perez to demonstrate that he intended to refer to plaintiff when he used plaintiff's mark. Perez concedes that prior to releasing his album, he had never heard of plaintiff. Defendants' Exhibits, Exh. D (Perez Aff.) ¶ 4. Instead, Perez adopted the word rebelution because he saw it on a store front in Miami: "I was driving by, and I seen it, and I said, Wow, that is a great word, because it had everything to do with me in the music business, my family in Cuba and me just as a fighter in general." Docket No. 128 (Perez Depo.) at 11:20-24. Perez also claims that "Rebelution" symbolizes the struggle in his life, and is a made-up word that is an amalgamation of some subset of the words rebel, revolution, and evolution. Id. at 45:10-18, 171:10-17; Perez Aff. ¶ 3. Importantly, nowhere does any defendant claim that defendants' use refers to plaintiff or the reggae band Rebelution.
Defendants reliance upon Roxbury Entertainment v. Penthouse Media Group, 669 F. Supp. 2d 1170 (C.D. Cal. 2009), is unpersuasive. At issue there was defendants' use of the term "Route 66," a mark from a 1970s television program. The court held: "With respect to the first prong [of Rogers], Defendants' use of `Route 66' is relevant to the underlying work. Defendants have introduced evidence demonstrating at least some relationship between the mental imagery associated with the term `Route 66,' e.g., road trips, cross-country travel, and the content of Defendants' movie." Id. at 1175-76 (internal citation omitted). Thus, Roxbury too relates to defendants' reference to the meaning associated with plaintiff's mark. Perez's argument — that the content of his album bears relevance to his interpretation of the word rebelution — is therefore unsupported by Roxbury. This argument, at its logical conclusion, would allow any person to ascribe their own meaning to a mark and thereafter argue that their artistic work bears relevance to this opportunistically-defined meaning. Indeed, it would allow defendants to co-opt the most fanciful marks — marks afforded great protection under trademark law — as those marks are the most susceptible to differing interpretations. That is not the law. The court now turns to defendants' contention that no likelihood of confusion exists here.
II. Likelihood of confusion
Under the Lanham Act, a trademark is defined as "any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others." 15 U.S.C. § 1127. In other words, a trademark identifies the source of particular goods and services, i.e., a brand name. Accuride Int'l, Inc. v. Accuride Corp., 871 F.2d 1531, 1534, 1536 (9th Cir. 1989).
In order to prevail on its trademark claims, plaintiff must show that defendants' use of its mark creates a likelihood of confusion among consumers. 15 U.S.C. § 1125(a); see Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 632 (9th Cir. 2008) ("The critical determination is whether an alleged trademark infringer's use of a mark creates a likelihood that the consuming public will be confused as to who makes what product." (internal quotations omitted)). This likelihood of confusion analysis is the relevant test for all claims at issue here. New West Corp. v. NYM Co., 595 F.2d 1194, 1201 (9th Cir. 1979) ("Whether we call the violation infringement, unfair competition or false designation of origin, the test is identical[:] is there a `likelihood of confusion?'").
"Likelihood of confusion is a factual determination." Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 901 (9th Cir. 2002). Eight factors are relevant to determining whether confusion is likely: 1) strength of the mark; 2) proximity of the goods; 3) similarity of the marks; 4) evidence of actual confusion; 5) marketing channels used; 6) type of goods and the degree of care likely to be exercised by the purchaser; 7) defendant's intent in selecting the mark; and 8) likelihood of expansion of the product lines. Sleekcraft, 599 F.2d at 348-49. Both federal and state trademark claims are analyzed using these factors. Jada Toys, 518 F.3d at 632. A likelihood of confusion determination may rest on all eight factors or, alternatively, on only those factors that are most pertinent. Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 631 (9th Cir. 2005) ("[T]he test is a fluid one and the plaintiff need not satisfy every factor, provided that strong showings are made with respect to some of them."). In assessing the likelihood of confusion to the consuming public, the standard used by the courts is "the typical buyer exercising ordinary caution." Sleekcraft, 599 F.2d at 353. Each of the eight Sleekcraft factors is addressed in turn.
Defendants argue that plaintiff cannot demonstrate its mark is famous. This argument conflates the standard for trademark dilution with that of trademark infringement. Compare 15 U.S.C. § 1125(c) (referring to dilution), with id. § 1125(a) (referring to infringement). For purposes of infringement, plaintiff need not demonstrate that its registered mark is famous. Plaintiff does not claim trademark dilution; consequently, defendants' arguments regarding dilution are misplaced.
Trademarks fall into a spectrum comprising five categories. A strong mark "is inherently distinctive, for example, an arbitrary or fanciful mark" and is "entitled to a greater degree of protection than a weak one, because of its unique usage." Id. at 349. A weak mark is merely descriptive and is protected only when secondary meaning is shown. Id. "The two strongest sets of marks are `arbitrary' or `fanciful' marks, which trigger the highest degree of trademark protection." Surfvivor, 406 F.3d at 631. Arbitrary marks are common words having no connection with the actual product. Fanciful marks, for example "Kodak" or "Aveda," are "coined phrases" having no commonly known connection with the associated product. Id. at 632. Marks falling into a third category, "suggestive" marks, "do not describe the product's features but suggest them. . . . The exercise of some imagination is required to associate a suggestive mark with the product." Id. The fourth and fifth categories of trademark are "descriptive" and "generic" marks, respectively. Id.
Plaintiff's mark appears, at first blush, to be fanciful. The word rebelution is a made up term; it is not in the dictionary and has no commonly known connection with music recordings. Indeed, as discussed above, Perez himself has ascribed multiple different meanings to the word rebelution. For the same reasons, the mark is not purely descriptive or generic. However, as a rather obvious amalgamation of the common words rebel and revolution, or of rebellion and revolution, the word rebelution is not very fanciful. In fact, the amalgamation could render the mark suggestive, because with the exercise of some imagination, a typical music buyer could associate the word rebelution with the rogue spirit of some types of music. Consequently, the strength of the mark lies somewhere between the suggestive and fanciful categories. It is semi-strong.
Defendants' reliance on Tsiolis v. Interscope Records, Inc., 946 F. Supp. 1344 (N.D. Ill. 1996), and Pump, Inc. v. Collins Mgmt., Inc., 746 F. Supp. 1159 (D. Mass. 1990), to establish the mark as weak is unpersuasive. In Tsolis, the use of a mark incorporating the word aftermath, which generally refers to the consequences of an event, was found not to implicate trademark concerns because of the word's commonplace nature. 946 F. Supp. at 1352 ("the court finds that the term `aftermath' is a term undeserving of trademark protection."). The Pump court, which analyzed a mark incorporating the common word pump, used a different standard than used in the Ninth Circuit to determine the strength of the mark; consequently, it is inapposite with respect to this prong. 746 F. Supp. at 1170-71 (determined strength of the mark by analyzing "(1) the length of time it has been used and the plaintiff's renown in its field; (2) the strength of the mark in the field; and (3) the plaintiff's actions in promoting its mark."). Thus, neither Tsiolis nor Pump affects the strength of mark analysis since the mark at issue is not a common word. Due to this fundamental difference, defendants' reliance on these cases for this factor, as well as for the broad proposition that an established band has carte blanche to use the component parts of others' marks in its own album name, is misguided. Indeed, "a lack of commercial strength cannot diminish the overall strength of a conceptually strong mark so as to render it undeserving of protection. Otherwise, a mark which is conceptually strong may never have the opportunity to blossom into its full commercial potential through effective marketing." M2 Software, Inc. v. Madacy Ent., 421 F.3d 1073, 1081 (9th Cir. 2005). The fact that plaintiff's music does not have the extent of commercial success attributed to defendants' music does not significantly alter the analysis.
Defendants have, however, presented evidence that the mark was weakened by third-party use by pointing to five other federal trademark registrations for the word rebelution along with numerous other third-party uses. Only uses within the relevant industry actually weaken the mark. Id. at 1088 ("[u]se of similar marks by third-party companies in the relevant industry weakens the mark at issue."); Eclipse Assocs. Ltd. v. Data Gen. Corp., 894 F.2d 1114, 1119 (9th Cir. 1990) ("Evidence of other unrelated potential infringers is irrelevant to claims of trademark infringement and unfair competition under federal law."). Since the relevant industry here is unquestionably the music industry, the following evidence is irrelevant: 1) registration of "Rebelution" for the sale of tee-shirts and hats, and hair care products; 2) the registration of "The Rebelution" and the existence of www.therebelution.com for use with digital audio tapes associated with a Christian organization aimed at teenagers; 3) the registration of "Rebelution Design" for the purposes of clothing; and 4) the naming of a scholarship fund as "Rebelution" by the University of Nevada. Defendants' Exhibits, Exh. G (Wolfe Aff.) ¶¶ 28-33.
Cmte for Idaho's High Desert v. Yost, 92 F.3d 814 (9th Cir. 1996), is inapposite because it discussed ownership, not strength of the mark. Id. at 821 ("[s]o long as plaintiff proves rights superior to defendant, that is enough. Defendant is no less an infringer because it is brought to account by a plaintiff whose rights may or may not be superior to the whole world." (quotation and citation omitted)).
There remain five artists that all released albums named "Rebelution" prior to plaintiff's use of the mark. Specifically, Tony Stampley released an album called "Rebelution" on Trichord Records in 2000, Yami Bolo released an album called "Rebelution" on Zion High Records in 2003, Soul Rebels released an album called "Rebelution" on Barn Burner Music in 2004, Tanya Stevens released an album called "Rebelution" on VP Records in 2006, and recording artist Starratz released an album called "Rebelution" on Perris Records in 2006. Stipulated Facts ¶¶ 5-8; Wolfe Aff. ¶ 8. Moreover, more than twenty songs have the word rebelution in their title. Wolfe Aff. ¶¶ 24-26, 34-39 (listing bands).
Moreover, the band "New Rebelution" released a reggae album in 2007, Stipulated Facts ¶ 9, but now appears to be defunct. A band named "Southern Rock Rebelution" sold music in connection with festivals, but was disclosed to the USPTO before plaintiff's application was approved. Id. ¶ 10.
Although defendants demonstrate the existence of various third-party users, they fail to provide any evidence regarding recognition of these artists by the relevant consuming public. See M2 Software, 421 F.3d at 1087-88 (third-party uses can demonstrate that its "less likely that [plaintiff's] customers would associate [plaintiff's] products with those of [defendant], as opposed to other third parties."). With respect to Yami Bolo, defendants present biographies, discographies, reviews and search results, but fail to present evidence regarding recognition amongst the relevant consuming public. Wolfe Aff. ¶¶ 4, 9; id., Exhs. 1-3, 11-16. The same is true for the Soul Rebels, Tony Stampley and Starratz. Id. ¶¶ 5-7; Exhs. 4-6. For Tanya Stevens, in addition to biographies, discographies, reviews, interviews, newspaper articles, press releases and search results, defendants present evidence that her album was a top rated Reggae album in 2006, but little of this pertains to recognition amongst the relevant consuming public. Id. ¶¶ 8, 13-20; id., Exhs. 7-10, 17-34. The evidence regarding visitors to Stevens' website is simply wrong, as it relates to www.myspace.com, the popular social networking site, not to Stevens' page on that site. Id., Exh. 35. Although Stevens appears to be popular in the Carribean, the effect of Stevens' album — released contemporaneously with plaintiff's USPTO application for its mark — on the relevant consuming public here is unclear. See id., Exh. 25 (September 14, 2006 Miami Music article about Stevens' reggae album named Rebelution), Exh. 26 (Reggae magazine discussing Stevens' album, but failing to discuss its relative popularity). Similarly, the evidence with respect to Bolo's website demonstrates it is ranked at number 7,876,919, not that seven million visitors have visited the site. Indeed, defendants' own evidence states that the site "gets little to no traffic." Id., Exh. 11. However, his interview published in Rolling Stone magazine, which was not provided to the court, may indicate recognition.
The evidence presented suggests that plaintiff's mark was weakened; however, without evidence of the scope of use by third-parties, the degree to which plaintiff's mark was weakened by these users cannot be determined. Moreover, plaintiff presents evidence suggesting that these users are all little known, and consequently raises a factual question as to whether these users bear any degree of threat to the strength of its mark. Docket No. 113 (Stricchiola Supp. Dec.) ¶¶ 12-31 ("Based on how both search engines . . . presently generate search results, as well as the lack of web site promotion (and in fact lack of web site existence) of other music artists who have previously been associated with the term `Rebelution,' I believe that the vast majority of confusion around the term Rebelution is generated by Defendant Pitbull's use of the term, as opposed to any other music artist's use of the term."). Since the mere existence of third-party users does not significantly reduce the strength of plaintiff's mark, this factor favors plaintiff at this juncture.
Defendants argue, as a defense, that plaintiff does not have exclusive rights to the mark because of the existence of senior users. Plaintiff's registered mark, however, provides at least some rights to use the mark in association with pre-recorded compact disks. The issue here is the strength of the mark, and consequently the likelihood of confusion, in light of the other users.
B. Proximity of goods
Consumers are more likely to be confused when "users of similar marks or names sell related goods." Accuride, 871 F.2d at 1536. In other words, the closer the parties are in competitive proximity, the higher the likelihood of confusion. For related goods, the public may mistakenly assume there is an association between the producers of the related goods even though no such association exists. Sleekcraft, 599 F.2d at 350. Both plaintiff and defendants offer the same type of goods and services: musical sound recordings and live musical performances based on a musical album that includes the word rebelution in its title.
Defendants argue that because they operate in a different genre of music than plaintiff — Latin flavored urban pop music as opposed to Cali-reggae or Roots music — their products should not be considered related to or in close competitive proximity with plaintiff's goods. This characterization of the music industry at a fine granularity in order to create an artificial distinction between the plaintiff's and defendants' products is unpersuasive. The prevalence of fusion artists, or artists that cannot be easily categorized, further underscores this point. Distinctions between the parties' relative styles during live performances is similarly unpersuasive.
Even if defendants' bright-line characterization of musical genres is accepted, the relevant music-consuming public includes a subset that consumes music across genres. Defendants themselves market their album to reggaeton consumers because "a part [of Pitbull's] audience is the reggaeton audience." Docket No. 144 (Supp. Smith Dec.), Exh. C (Fuller Depo.) at 157:18-19; see Docket No. 104 (Smith. Dec.), Exh. 5 (Martinez Depo) at Exh. 6 (Phase One Marketing Plan) at 11 (Facebook banner advertisement for defendants that targets users who list reggaeton in their profiles; specifically targeting "Reggaeton Online" and "World Reggaeton" for advertising). Since reggaeton is derived from reggae, Fuller Depo. at 157:20-22, plaintiff's and defendants' markets overlap to some degree. Thus, this factor favors plaintiff because defendants market their products to a wide range of potential buyers, many of whom could also be consumers of plaintiff's music.
C. Similarity of marks
Similarity of marks "is tested on three levels: sight, sound, and meaning." Sleekcraft, 599 F.2d at 351. Each mark must be considered as it is encountered in the marketplace, and similarities between the two marks will weigh more heavily than differences. Id. While the word rebelution does not have a dictionary definition, its connotation is obvious: it expresses a sense of rebellion and revolt. There is no evidence that the word is intended otherwise by the parties to this action.
There is no dispute that Perez uses the word rebelution as part of his album title. Defendants argue that the name of Perez's album is not simply "Rebelution," but rather, is "Pitbull starring in Rebelution." Although this difference is taken into account when considering the visual similarity of the marks, the importance of this difference is diminished because plaintiff has presented evidence suggesting that the album title is usually shortened to simply "Rebelution." See, e.g., Perez Depo. at 99:3-101:7 ("The title of the album is Rebelution."); Fuller Depo. at 117:7-16 (same).
Defendants further argue that because each of their uses of the word rebelution is alongside an image of Perez or his own mark, both of which are larger than the font used for the word rebelution, the consuming public could not be confused by defendants' use of the word. See Sleekcraft, 599 F.2d at 351 (use of defendants' own mark, i.e., a housemark, alongside plaintiff's mark can reduce the likelihood of confusion). Again, despite defendants' claim, evidence in the record reveals instances where defendants have used the word without the accompanying words "Pitbull starring in," see Docket No. 118 (Raissen Dec.), Exh.1 (screenshots of Pitbull's Myspace page), Exh. 15 (screenshots of Pitbull's YouTube page), and also without both "Pitbull starring in" and Pitbull's name and image, see id., Exh. 2 (screenshot of "AT T Presents the Rebelution Tour"), Exh. 12 (Twitter announcements from AT T using the word without reference to Pitbull). Moreover, defendants admit that they advertised their products based on internet searches of only the word rebelution. Supp. Smith Dec., Exh. B (Boghigian Depo.) at 112:7-11 (due to media company's efforts, a search for the word rebelution would lead to an advertisement for Pitbull).
Defendant Sony negotiated a contract with AT T that referenced "the applicable usage rights to the name and trademarks for Artist [i.e., Pitbull] and Artist's album `Rebelution'," which can demonstrate a tacit approval by Sony of AT T's use of the word rebelution. See Supp. Smith Dec., Exh. D2 (Eng Depo. Exhibit) at Sony713. Moreover, AT T maintains that "AT T, a mere passive sponsor, received approval from Sony with respect to all uses of `Rebelution.'" Id., Exh. D1.
Even if defendants' use of the word rebelution was always accompanied by the use of their own mark, "[s]imilarities weigh more heavily than differences." Sleekcraft, 599 F.2d at 352. Indeed, "the more closely related the goods are, the more likely consumers will be confused by similar marks." Entrepreneur Media v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002). Given that both plaintiff and defendants create musical content, the consuming public could assume that Pitbull had joined the band Rebelution or could otherwise understand "Pitbull starring in Rebelution" or "The Rebelution Tour" as a joint venture between the parties. Indeed, rap and reggae artists can, and do, perform at the same live event. This is especially true with respect to festival-type concerts. Thus, defendants' use of the phrase "Pitbull starring in Rebelution" could result in consumer confusion as to the association between Pitbull and the band Rebelution. See Brookfield Comm. Inc. v. West Coast Ent. Corp., 174 F.3d 1036, 1057-58 (9th Cir. 1999) (Lanham Act protects against many different forms of confusion); cf. Miss Universe, Inc. v. Flesher, 605 F.2d 1130 (9th Cir. 1979) (Miss U.S.A. pageant was protected from the Miss Nude U.S.A. pageant because association could demonstrate a likelihood of confusion).
Finally, defendants argue that their visual representation of the mark is distinguishable from the mark itself because the mark uses a stylized script whereas defendants use the word in small, simple block letters. While this is true, a similar argument was rejected in Sleekcraft, where the Ninth Circuit held that even though the mark was often used in connection with a logo, "the word Sleekcraft is frequently found alone in trade journals, company stationery and various advertisements." 599 F.2d at 351. Here, considering the mark as it is encountered in the marketplace by potential consumers, both parties' uses of the word appear in identical font on websites where both parties sell music and concert tickets. Raissen Dec., Exh. 7 (results of a search for rebelution on Ticketmaster.com), Exh. 8 (results of a search for rebelution on Google.com); Docket No. 112 (Stricchiola Dec.) ¶¶ 22-25 (describing search engines' and vendor websites' confusion); id., Exh. 5 (results of a search for rebelution on Ticketmaster.com), Exh. 7 (results of a search for rebelution on Amazon.com). Therefore, as encountered in the online marketplace, where plaintiff has the exclusive right to use the mark for downloadable musical sound recordings, defendants' use of the word rebelution is visually similar enough to plaintiff's to cause consumer confusion. Contra Pump, 746 F. Supp. at 1167-68 (finding stylistic differences important in a 1990 decision, which pre-dates the internet).
Additionally, since defendants' use of the word includes an identical spelling and is pronounced in the same way as the mark, there is also a likelihood of confusion based on sound.
In sum, defendants' use of the word rebelution apart from the Pitbull housemark has a potential for causing consumer confusion. Even where the housemark is used, the appearance of an association between Pitbull and the band Rebelution could cause consumer confusion. And as used in electronic commerce, defendants' use of the word rebelution is at least similar, if not identical, to plaintiff's use, which may cause confusion amongst online purchasers. This factor favors plaintiff.
D. Actual confusion
Evidence that use of a mark or name has already caused actual confusion as to the source of a product or service is "persuasive proof that future confusion is likely." Sleekcraft, 599 F.2d at 352. However, actual confusion is not necessary to a finding of likelihood of confusion under the Lanham Act. New West Corp., 595 F.2d at 1201.
To demonstrate actual confusion, plaintiff lists instances where fans questioned the band or its employees regarding the association between the band and Pitbull. Defendants' Exhibits, Exh. B (Interrogatory Responses) at 9-11. Specifically, according to plaintiff's responses to interrogatories, the band's fans asked them about "The Rebelution Tour" and sought to know whether the band was on tour with Pitbull or vice-versa. Id. Others queried the band as to whether it was related to Pitbull. Id. This evidence, which was not presented under oath by either the speaker or the listener with personal knowledge, is inadmissible. However, such queries, especially those by Rebelution fans regarding the tour — who undoubtedly form plaintiff's target market — could demonstrate that prospective purchasers of the band's concert tickets are confused.
Defendants' objections are overruled. Questions by plaintiff's followers are not assertions, and therefore not hearsay. Nor is this evidence irrelevant, overly prejudicial or argumentative.
The other instances of purported actual confusion are not persuasive. Firstly, dismay over Pitbull's use of the word rebelution is not evidence of actual confusion; instead, it displays a lack of confusion. Id. ("[d]id you know the artist Pitbull is trying to steal your name? Not cool."). Secondly, any confusion amongst defendants themselves, although telling, is not persuasive because there is no evidence that they are prospective customers of plaintiff's music. See Supp. Smith Dec., Exh. E (Leak Depo.) at 183:13-185:2; Boghigian Depo. at 162:8-22; Fuller Depo. at 220:7-19 (three defense witnesses — including persons most knowledgeable about marketing and use of the mark — testified that they could not determine whether particular search results referred to plaintiff or to defendants). Finally, evidence of confused websites does not demonstrate actual confusion, as those websites are also not prospective consumers of plaintiff's goods. See Raissen Dec. ¶ 5d (Ticketmaster.com shows concert dates for defendants' tour when the word rebelution is searched), ¶ 5a-b (Billboard.com shows defendants' album with the heading "Pitbull Ready for a Rebelution" on plaintiff's "Artist Feed" page). Although none of this evidence demonstrates actual confusion by prospective customers, it is nonetheless probative. For instance, the websites' confusion could lead to confusion amongst the relevant consuming public.
Defendants also argue that plaintiff did not suffer any harm as a result of their use of the word rebelution. In the absence of actual confusion, direct monetary harm may not yet exist. Actual harm, however, is not determinative of the likelihood of confusion analysis.
There is no evidence of actual confusion because plaintiff failed to appropriately present its evidence; however, this absence is generally not noteworthy. Brookfield, 174 F.3d at 1050.
E. Marketing channels
"Convergent marketing channels increase the likelihood of confusion." Sleekcraft, 599 F.2d at 353. Accordingly, plaintiff argues that defendants' marketing channels overlap its own because both parties use the internet to market their services. Some use of the internet for marketing does not, in itself, constitute overlapping marketing channels. Entrepreneur Media, 279 F.3d at 1151. Instead, the proper inquiry relates to "whether both parties use the Web as a substantial marketing and advertising channel . . . and whether the parties' marketing channels overlap in any other way." Id. (emphasis in original).
The parties use both the internet and traditional channels to market and advertise their products. Specifically, Pitbull and Rebelution both extensively utilize internet search engines such as Google, Yahoo and YouTube, online retailers such as iTunes and Amazon, and social networking sites such as Myspace, Twitter and Facebook. See generally Docket No. 117 (Carey Dec.); Raissen Dec.; Phase One Marketing Plan. Moreover, both make use of Ticketmaster, the popular ticket vendor, and perform concerts at similar or identical venues. Id.
Defendants argue that reggae albums are marketed in different ways than hip-hop or pop albums. Defendants' Exhibits, Exh. E (Llord Aff.) ¶ 12 (noting differences in marketing activities based on size of marketing budget); id., Exh. F (Lucas Aff.) ¶¶ 11-12 (describing marketing activities of major record labels with respect to pop artists). Again, defendants' attempt to minimize the effect of the internet and paint the music marketplace as a divided world where consumers ignore cross-genre marketing is unpersuasive. Moreover, defendants' legal support for this characterization pre-dates the widespread commercialization of the internet, and is therefore distinguishable. See, e.g., Tsiolis, 946 F. Supp. 1344. Gone are the days when music consumers went to the neighborhood record store to browse an aisle carefully organized into genres by a music afficionado. Tower Records has been replaced by iTunes, traditional marketing campaigns by Facebook banner ads and YouTube videos, and both plaintiff and defendants make substantial use of these online tools. Both also make substantial use of traditional marketing, such as live concerts, and do so at identical or similar venues. Thus, this factor weighs in favor of plaintiff.
F. Degree of care
Likelihood of confusion is determined from the standpoint of a "reasonably prudent consumer." Brookfield, 174 F.3d at 1060. Expectations of the reasonably prudent consumer are largely based on her level of sophistication and the nature of the goods and services involved. For example, "[w]hen the goods are expensive, the buyer can be expected to exercise greater care in his purchases" and "[w]hen the buyer has expertise in the field, a higher standard is proper." Sleekcraft, 599 F.2d at 353.
The parties have produced declarations demonstrating the extent to which consumers may or may not be confused by defendants' use of the word rebelution. See Stricchiola Dec. ¶¶ 22-25 (describing search engines' and vendor websites' confusion); Llord Aff. ¶ 11 (describing record stores' purchasing behavior); Defendants' Exhibits, Exh. K (Jacobi Aff.) ¶¶ 11-13 (describing information provided to consumer, but not searching or purchasing habits). The conclusory declarations; however, are rife with unwarranted logical leaps, and do not present evidence regarding the actual purchasing behavior of music consumers, especially with respect to individual songs.
Music consumers are generally discriminating customers. In the physical record store context, a purchaser is unlikely to accidently acquire the wrong album as she likely investigates the album art and scans the track list prior to shelling out $13.96. Purchasers may, however, behave differently on the internet, where it is easy to click on a link on a mobile phone to instantly download a searched-for song for a mere 99 cents. Brookfield, 174 F.3d at 1060 ("when dealing with inexpensive products, customers are likely to exercise less care, thus making confusion more likely."). Therefore, at this juncture, this factor does not support either plaintiff or defendants.
G. Defendants' intent
If an alleged infringer "adopts his designation with the intent of deriving benefit from the reputation of the trade-mark or trade name, its intent may be sufficient to justify the inference that there are confusing similarities." Pac. Telesis v. Int'l Telesis Comms., 994 F.2d 1364, 1369 (9th Cir. 1993) (quotation omitted). Defendants contend that prior to this lawsuit Perez had never heard of the band Rebelution, and therefore could not have knowingly adopted plaintiff's mark. Plaintiff does not refute this contention; instead it argues that the Associate Director of Urban Marketing for Sony, who was familiar with both Billboard and iTunes charts when she chose the album name, Fuller Depo. at 40:14-19, must have known of the band Rebelution. This evidence, even if true, does not demonstrate that defendants intended to benefit from the band's reputation, or that they intended to deceive the consuming public. In this instance, Pump is on point because the "lack of evidence is consistent with common sense — why would a world-famous band with proven market power rely on the name of an unknown [band] to help promote its product?" 746 F. Supp. at 1170. While the band Rebelution is not unknown, there is no dispute that Pitbull has had significantly more commercial success than Rebelution. Therefore, it is unlikely that defendants used plaintiff's mark to tread on plaintiff's goodwill. This factor favors defendants. Good faith, in contrast to bad faith, is not very probative with respect to the likelihood of confusion. Sleekcraft, 599 F.2d at 354.
H. Likelihood of expansion
"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." Id. Since the parties already operate in the same marketplace, there is little likelihood that defendants could expand their business to further compete with plaintiff. Although this factor superficially favors defendants, it warrants little weight since defendants already compete with plaintiff in the music marketplace, both online and off.
Plaintiff provided no support for its argument that defendants' use of the word rebelution in connection with AT T cell phones represents an expansion into a common market.
I. Summary
In sum: 1) plaintiff's mark is moderately strong, but may have been weakened by third-party users; 2) plaintiff and defendants are competitors because their principal line of business does not vastly differ; 3) Perez's album name resembles plaintiff's mark; 4) no actual confusion exists; 5) the parties' marketing channels substantially overlap; 6) the degree of care exercised by prospective purchasers is unclear; 7) defendants did not act in bad faith; and 8) the parties do not intend to expand their businesses to more directly compete with each other.
With the aid of these findings, the court turns to the ultimate question posed by Sleekcraft: the likelihood of confusion as to the source of the product. Defendants are correct that the word rebelution is used by various third-parties, and this issue may ultimately pose a significant hurdle for plaintiff in demonstrating the strength of its mark. However, defendants did not met their burden with respect to this issue, and, in any event, the strength of the mark is of diminished importance where the products involved are closely related and the infringing use is similar. Brookfield, 174 F.3d at 1059. At bottom, defendants undisputedly incorporate the word rebelution, as used in plaintiff's mark, on the cover of their musical recording, and also market their musical recording in a similar fashion as plaintiff. Although no evidence of actual confusion or degree of care was presented, given the fluid preferences of the ordinary consumer of popular music, a reasonable jury could find that defendants' use of the word rebelution is "likely to confuse an appreciable number of people as to the source of the product." Entrepreneur Media, 279 F.3d at 1151. Summary judgment in favor of defendants must therefore be denied.
Due to this holding, the court does not reach the initial interest confusion issue.
In the internet context, "the three most important Sleekcraft factors in evaluating a likelihood of confusion are (1) the similarity of the marks, (2) the relatedness of the goods or services, and (3) the parties' simultaneous use of the Web as a marketing channel." Interstellar Starship Servs, Ltd. v. Epix, Inc., 304 F.3d 936, 942 (9th Cir. 2002). When these three factors suggest confusion is likely, the other factors must "weigh strongly" against a likelihood of confusion in order for defendants to prevail. Brookfield, 174 F.3d at 1058. Since each of these three factors favors plaintiff, and the remaining factors do not weigh strongly against a likelihood of confusion, summary judgment with respect to defendants' use of the word rebelution over the internet is denied.
CONCLUSION
To the extent evidence objected to by defendants is included in this order, the objection is overruled. And since plaintiff is the prevailing party, all of plaintiff's objections are denied as moot. See Docket Nos. 155-60, 162, 167, 171.
For the foregoing reasons, defendants' motion for summary judgment is DENIED.
IT IS SO ORDERED.
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