thank you your honors my name is craig and rico schaefer and i am the attorney for jason lee kibler who is the opponent and plaintiff in the underlying action i'll be reserving three minutes for rebuttal you may proceed this is an appeal from a district court decision granting summary judgment in favor of the defendants in a trademark infringement case between my client as the plaintiff who won as d j logic or logic against the defendant who is a new wrapper into the space by the name of logic the central issue in the case is whether relevant consumers are likely to believe that there are products or services by the parties that are affiliated in some way is our position that the lower court had misappropriated applied some of the underlying cases to the first factors in appropriately engaging wing of the evidence and did not in fact view the evidence in a light most favorable to my client plaintiff i know that your owners have reviewed the facts and so i'll reserve my introduction of the facts as we go through the first factors the court essentially found that one of the factors actual confusion slightly favored my client that two of the factors favored the defendants those being the strength of the market and the similarity of the market and that the other factors were neutral ultimately concluding that on balance and considering all the factors together that no reasonable jury could find that consumers would be likely to confuse d j logic with logic in the marketplace in a trademark case context is always everything in these are always fact specific case so i think it's really important for us to remind ourselves what we're talking about here we're talking about music music is inherently cross john john where musicians borrow from many different influences in order to come up with their unique sounds and at one point in my preparation of this case i got the impression that there are lots of people in music who use the word logic that there's two am logic three logic logic funk logic hard logic kid logic relied chick etc so would you say that there's a likelihood of confusion with respect to all of those so that you could stop all of those people whoever they are from using those names your honor thank you for the question in the answer is number one most of those would not be admissible in the underlying action because on their face their web page pronouncer not even trademark registration mind the evidence in this case is there is no other registered trademark for logic that was admitted no other right if it but my question is really can you bar you could you could turn it into a hypothetical if that makes it easier could you bar the use of all of those names by anybody in the music industry who's doing popular stuff it would be the same analysis as we're going through here but most of these over ninety percent of them don't do business in the united states or at least there's no evidence that they do their foreign language websites they're clearly from the u k new zealand latin america with no proof by these defendants who are the ones that bear the burden of proof on this issue they were in the us you're potentially yes you could but potentially us if they're likely to cause confusion so it will depend on again the fish factors there but if we look at the dock liberation of miss price which was this third party issue you can see just by looking at the exhibit one to her duck liberation that the first one d j full logic foreign language site no evidence of any us use and keep in mind in trademark case it's all territorial territoriality governs what is relevant evidence anything outside the united states would even be admissible since it's not relevant to the inquiry as to whether or not in u s commerce there's ben and they use second one d j logic spain third one d j logic u k fourth one d j logic three hundred page likes fifth one d j logic official no longer available web page six one d j logical new zealand so our position with the lower court is they have these so in the other cases such as as is the daddy case it cetera people were admitting third party us trademark registrations there were none in this case  let me just see if i heard you right so there are other not just other musicians that logic somewhere in their name but there are other d j logics in the us there's evidence of one  another and there are others i'm just in the us there's one yes but there are others around the world potentially around the world potentially around the world but the issue here is that's correct so there is or was a wedding d j in georgia apparently who used d j logic so in this case the relevant evidence would be one of the uses no other trademark uses strength of the market because my question really goes to the commercial strength of the market how we should be looking at that is there the district court found that there really was no great strength i think to the to the mark here in the d j logic as well recognize has not attained a great deal of public recognition and is not well advertised but not as commercially successful as mr paul so it's a great question in the answer is we should be looking at whether or not there is a material triable issue of fact on that issue given the evidence that was submitted here is what the evidence  part of the record shows the trial court so there was no evidence of marketing in fact there was there was evidence of marketing they found that they the court concluded that sixty thousand album sales over sixteen years somehow showed a lack of recognition well could that have been a reference to the last three years when there were only an average of a hundred albums a year through that would be part of the evidence that a finder of fact we believe could conclude is this mark a strong mark correct but sixty thousand album sales sure compared to be on say may not be a lot but for small medium sized businesses across the united states if you sell sixty thousand of something used you certainly have the ability to make an argument that your trademark is significant and potentially strong and sixty thousand album sales from our point of view would allow a finder of fact to conclude that d j logic in fact had a strong trademark based on that number now just because he hadn't released an album in in a couple of years that was commercially successful doesn't mean you can't look at the entirety of his record from one thousand nine hundred nine up against somebody please only one album has sold one hundred seventy thousand copies of it i mean everything's relative everything is relative in your honor it is one of the facts that i think that they find are fact would have to take into consideration i think if you look even at the preliminary injunction hearing transcript that the trial judge seemed to have this sense that whoever is bigger wins that is the say that clearly the defendant with def jam records behind it has sold more and potentially may sell many more but just because the defendant sells more widgets or records or albums than the plaintiff does not mean in the trademark world that they when the issue is one of likelihood of confusion or reverse confusion as a result of tremendous sales so when the court found that there was no recording contract in fact there had been recording contracts through the years in order to distribute these many records the court found there was no record label in fact there were record labels as indicated in the declaration of mr killer for all of his album releases and so there are clearly erroneous findings which ignore the evidence in the case and certainly do not take the evidence in the light most favorable plaintiff i think that your honor also raises a really good issue which is in this space in this market people really you know the album stores record stores are largely obsolete recording artists do two things live performances and distribute over the internet and in fact there was evidence of marketing over the internet in this case plaintiff testified that he distributed his music through the same channels as defendant i tunes amazon download streaming services who only pick up certain are insists like pandora and spotify those are overlapping markets that would allow a jury a reasonable jury to conclude then fact some real distinctions in terms of the rose in which they operate there are some distinctions i mean major distinctions and there are distinctions but in music when you go it's number one this is a low cost item you go you download you you go to you do a search for logic or in things come back right but both of our clients and so while there is a difference between the types of music the john raw is still potentially hip hop and my clients that  the the thing that my client achieved in the market over since one thousand nine hundred nine is the ability to use a turntable as an instrument similar to a guitar now so one fact would be that yes this is edgy r  wearing degrading of women police brutality lyrics in my client is none of those things right but it's hip hop and what do rappers use and have they use since the beginning turntable us d and in fact my client even though he's the turntable this works with other artists who provide vocals so these are the types of fact issues that we believe a jury should be able to assess just one more question of your time as experiment my colleagues to be able to ask some questions but the record shows as i understand it only possible instances of actual fuchsia are not really in purchasing decisions really just inquiries parties a bit maybe confuse about whether it was d j logic playing in one place or logic those names that's a very small number of  not just really demand of us especially in light of the hundred seventy thousand albums that mr hall sold in the last seven or eight months well we actually think that it's that agrees well jury could conclude that ten actual instances of confusion is in fact significant  fact in some of the cases that are cited it was only a single instance of confusion that the this court of appeals found was for the jury to decide is to whether or not that was significant so ten instances of actual confusion if any one of them this is a strong incidence of actual confusion that solves the issue because that shows a likelihood of confusion is your best case to say that ten or fewer instances alone would be enough to show a likelihood of confusion or at least to get it to a jury sure i see the dead is junkie music instance was one single instance of confusion and the court of appeals decided that factors in the factor first test well ok so then you still have to look at all the other factors but on that narrow issue the ruling was that the single instance of confusion allowed the issue of whether or not there was actual confusion to go to the jury that is to say again actual confusion pretty much resolves the whole case in terms of material issue of fact because if there's actual confusion in the marketplace then we know there's a likelihood of confusion even though actual confusion isn't ever required and a lack of actual confusion does not help their motion at all because courts recognize that rarely does it ever exist ok in this case we had ten and we believe that that is significant and then that that would allow a jury to find a likelihood of confusion along with all the other factors one of the things that puzzled me was trial judges determination that the intent in selecting the mark was a neutral factor as i recall the defendant came up with the term logic a demure nation his original name which was psychological or psychological it would seem there's no bad intent if ali's done as short a name that he's been using a name that i gather you wouldn't have any problem with the testimony was that he actually did an internet search before choosing the name to see if anything else was out there and since my client was out there in predominant on the internet as d j logic we believe a jury could easily conclude that he knew of the mark in the test isn't whether or not he wanted to infringe it's whether or not he had notice of our mark before selecting his own so who was it that testified that he did that internet search it was the defendant hole himself testified that he did an internet search before selecting the name a jury could easily conclude he must have seen our our our prior trademark use because our guy was predominant unless he looked and decided that shortening his to logic wasn't the same as d j logic and want to hadn't did it you know now we have a lawsuit to resolve that it's not crazy to have come to that conclusion well and we see this all the time right where the plane the defendant doesn't understand trademark law enough to know that there may be no distance from a legal point of view difference between the two but if he was aware of it that satisfies the intent element under the big daddy case it doesn't have to be knowledge of infringement it's knowledge of the mark ok thank you your honor so have your full rebuttal t provided no survey evidence his sales of five albums over sixteen years is meager and there are ninety plus other artists who are selling in amount well perhaps in a short time period for one album maybe but we're talking about his entire career his sixteen seventeen year career all of his albums that's a small number of s most recently reflected in the only time we have annual sales on the record are the two and a half years last two and a half years of discovery where he sold only three hundred albums over those two and a half years in total and  represented there are ninety other logic formative market trademarks you connect with music being sold in the us not foreign sales in the u s on amazon and we have the evidence and we say to it on page six of our brief your honour's as i understand he was your opponent was trying to say that because they were foreign that they didn't count in this factoring perhaps but i heard him say that they're not in the united states but these are u amazon dot com i tunes in the united states you can right now on your computers go there and buy the album you search on logic you're going to get all these hits and we have the printouts in the record it's a crowded field and the d j logic if you ignore the d j you're ignoring what distinguishes his mark from most of those other ninety other logic artists that are selling music in the united states so in the context especially in the context of all those crowded to take that factor to the jury we cite a number of cases in our briefs your honor i have found in context a small number more than one ten and fifteen whatever the numbers are in our brief  more than one are de minimus and are if anything given the right circumstances and facts show the lack of a lack of confusion because there's so few instances of  much is enough to create a jury question that's really what others that is what we've got to look at and understood there is no bright line test your honor but i can tell you with the facts are that twit you judge the ten against the facts are that both parties have been making music and providing music services for years since two thousand and nine they've both been in the marketplace contemporaneously there were one point nine million downloads of mr hall's pre death  albums his youtube videos have been washed fifty eight million times he has four hundred thousand plus followers on twitter over half a million followers on facebook when mr hall puts out a  the big areas of the failure of evidence on the part by a talented lawyer is the extent of his marketing if he wants to prove consumer ignition how much as he spent on advertising how many people visit his web page is it one a year is it a million a year no evidence there's no evidence of the extent of his marketing he cited the daddy's junky music as an example of where one actual event of confusion was enough to get the case to the jury how would you respond to that on page twenty nine of our brief we have a number of cases that we cited where seven isolated instances was considered de minimus that was the king of the mound sports case we have some banks case fewer than fifteen instead i'm asking you about daddy's junky music and i'm sorry i think you know i said he cited daddy's junky music as saying that one incident of actual confusion was enough to get to the jury and i was asking how would you distinguish that because your honor in that case both parties were marketing their their stores as daddy's and there were a lot of facts over lots of factors that cause the court there to in total on balance decide yeah we need to send this to a jury it was not merely because there was a single person  confused in addition as far as the the actual confusion evidence goes it's was also qualitatively in significant because non of those instances involve a confused consumer making a purchase which is the core of what before mr hall had issued his first commercial album with def jam to try to stop that sort of plummeting injunction to stop the album and in fact he argued that those same ten pieces of evidence showed there would be massive confusion that was his phrase and his brief plenary injunction massive confusion if mr hall were allowed to have his def jam album released and tour in support of that album well the police injunction was denied the album was released we had seven months of sales that hundred seventy thousand sold in this day and age of m p three sharing he still sold one hundred seventy thousand units he's towards nationally for the seven months we have seven months of discovery there's not a whit of actual confusi evidence resulting from any of that activity it's got the same ten pieces that he started the case with your honor in terms of intent to infringe i think was judge daughtry who noted correctly  the record is pretty clear in high school mr hall had use that the stage name psychological and when he decided to try to make a name for himself he jordan it to logic that was adopted by mr hall in two thousand and nine three years before being contacted by appellant kibler in a cease and desist letter there's no i have does the record show in terms of mr hall understanding the use of d j logic at the time that mr hall chose the name logic mr hall testified to flat out that he had never heard of mr kibler or d j logic when he adopted the mark and in this testimony which we cite in our brief of mr kibler mr crimble admits he has no reason to think that mr hall would have known of him before the cease and desist letter in two thousand and two so there wasn't an internet search or anything like that by mr hall  hall testified to was that when he was adopting the mark he searched for other rappers named logic that's his testimony and mr kibler submitted a declaration saying well if you had searched on musician logic on that phrase you would have found out about me so they're trying to argue there should be an inference that if you searched on musician logic you would find mr kibler then he had knowledge as a lot of flaws with that argument number one mr hall didn't testify he searched on that phrase musician logic he said he was searching for other rappers named logic number two the fact that he did the search on logic shows he really had chosen the name logic before he would have found mr kubler even had he done that hypothetical search beyond all of that your honors i believe that the case law is not as it's been described to you but the case law is mere knowledge is not enough in the autozone case for example in several of the cases we cite to it's not a question of just knowledge of the existence of a prior mark autozone was famous for dilution purposes in that case and radio shack knew about it but when you named it store power zone the issue the court said was not did you hear of the mark but did you intend to trade on the goodwill of the other parties mark was there an intention to confuse there was none there and there's absolutely none here in fact it makes no sense why would a twenty year old rapper want to trade on the goodwill of a forty year old turntable list eclectic musician with meager sales and who finds a rap lyrics offensive it makes no sense there's no intent to confuse there's no evidence even of any knowledge has expired thank you  may please the court american off here on behalf of the label def jam i just want to pick up where we left off in the discussion of intent as mr brightman pointed out the law is very clear that mere knowledge of another person's trademark does not equal intent to usurp someone's good will or intent to cause confusion if that were the case then no trademark case could ever be decided on summary judgment because under the  virtue of registration that everyone in the world about somebodies rights and if mere knowledge or even constructive knowledge was enough then we'd never have any summary judgement in a trademark case plus i think it's just already pointed out you can do a trade mark church you can make a determination based on all the evidence you see in front of you that the mark is not going to infringe even if you do conduct a trademark search so the only cases where the courts have talked about me are knowledge always were in conjunction with other factors that pointed to a likely confusion i also want to make a point because it seems from the very beginning that mr kibler would like to analyze trademark infringement in a vacuum and not focus on what's happening in the marketplace which is what i was lays the foundation for the true test of likelihood of confusion he talks about third party uses that none of these were registrations well actually the laws the opposite the law is that mere registrations which are not proof of use don't show what's going on in the marketplace but internet printouts do show what's going on in the marketplace and even without the full scope of these uses the sheer numerosity of these third party uses shows that mr kibler is only entitled to a very very narrow scope of enforcing his rights and that's where everything stems back to in this case because you can't just say well factor one under frisch went to defend inspector two under first went to plaintiffs the rest were neutral everything has to be advised in the context of what is the marketplace reality and the marketplace reality here is that defendant has a very weak mark commercially he was told so when he came to seek his preliminary injunction and on summary judgment he produced nothing we sat there it is deposition and said as you sit here today can you tell us what is the scope and extent of your marketing promotional advertising efforts and he said no we didn't see any evidence just because someone is on the internet i think is the sixth circuit pointed out it's no different than if somebody were listed in the yellow pages because that's all it is we don't have any evidence as to the strength i also want to talk quickly about the evidentiary issues that were brought up  including the foreign registrations while trademark rights are territorial and mr kibler can assert extra or territorially trademark rights in the us whether his market is weak or strong in the us is contingent upon what consumers are exposed to in the united states and even if there are some uses in the u k or abroad the fact that other consumers can see those and can download that music off of i tunes shows in the u s marketplace regardless of where these this music originates in the u s marketplace is mark is very weak and i do know that i'm out of time if you have any questions i mean that i think ok thank you very much it please the court my name is michael garfinkel i'm here representing defendant appellee william morris endeavor entertainment l l c we join in the argument you've heard from our defense the other defendants and i'm here just to add a couple points because we are in a different situation than our codefendant william morris endeavor also known as w i me is a talent agency it books in addition to representing people in t v it book shows it has nothing to do with the sales of records so an artist like logic is looking to do sales with def jam that has nothing do with us if the artist is looking to tour to come to cincinnati for a show that's where they go to  books performances though reach out and book a performance w me is not a manager logic has a manager who looks at his career makes decisions with him and make sure that he's on the on the on the  you know the path that they want him to as an artist does his book and again that's only services the testimony in this case is so therefore i should just point out that that means there's no direct liability even if the court were to disagree with my colleagues there is no liability as a w m e w me is only booking the act at the act at different venues the testimony comes from the booking agent who says he called what he does is called different places and tries to figure out if there's people interested in him booking him and katie vonn who does tour marketing who testified she does not do advertising she has no input in advertising me had nothing to do with the selection of the name logic all it does is book logical step logic is the name d j logic would you then potentially have some liability if you didn't check to make sure that he wasn't the same or different than the other d j logic we have no obligation to police the side of the hard rock case which is the case that we get into on the contributory liability there's no object you know opportunity no responsibility for us to police but if if i may then go on to the contributory negligence which is where you're leading and in that case would with the plaintiff those rely upon in were in with labs and say that you can be contributory liable if it continues to supply a product to one who knows or has reason to know that the person is engaging in trademark infringement well there is no evidence of any knowledge by me of any infringement dubey me the best they can do is say with me got a demand letter a desist letter in two thousand and twelve well what the testimony is is they got the letter what we cite to cases that show that a demand letter alone does not put you on notice of an infringement may put your notice of a potential claim but not an infringement and what w did was turn it over to to plaintiff i mean scuse me to defend that logic his manager and his counsel and say you know here i got this letter and then he never did nobody w me ever heard about it again there was no follow up there was never anything to put them on notice that there might be a problem continuing and then i would just add that from there the plaintiff goes into a bunch of cases which we would which we've addressed and addressed in the lower court papers if necessary which i don't think it is  where they take the plaintiff is basically trying to say there's some kind of willful blindness by me and those cases are easily distinguishable distinguishable but i see amount of time so i would be happy to address any of them if if the court would like that think counsel and and i agree on one thing that we are talking about what our consumers are exposed to so while my client didn't advertise in the newspaper or put it ads in big magazines let's talk about what consumers were exposed to they were exposed to over four hundred live performances sixty thousand people bought albums my client has played on jimmy fallon the today show good morning america c n n b b c to say that there is no fact issue as to whether or not the public recognizes d j logic as a d j logic or even logic would have would require you to ignore the record in the case he's played with carly simon john mayer widespread panic all these famous artists over a career they have played it fifteen of the same exact than humans so there is evidence from in this record from which a reasonable jury could conclude that there is similarity in marketing channels that the marks are similar and that there is sufficient overlap in the market keep in mind big daddy's really is the case that we rely on is what we think is the controlling case here it's very similar they at the core reversed the district court's grant  summary judgment when the marks were big daddy's family music store versus daddy's junky music stores and it went back for trial on the merits and here we have d j logic versus logic big daddies you had used equipment versus new equipment here we have hip hop one is a turntable this one has a rap artist the arse our case we believe this much stronger than big daddy's across most of the factors what we hear is this this concept that bigger is somehow has the advantage that if you're bigger if you become more popular than the original the superior trademark owner that somehow you win now we get that that creates certain fact issues about how much confusion there might be an otherwise but in america under trademark law being bigger doesn't mean you win the small companies medium sized companies have trademark rights too and they have a right to a jury on those rights there's so there is evidence of exposure and there is evidence of marketing so in big daddy says that the test is not whether or not someone buying a record is likely to confuse there's a great quote big daddy that essentially says that it is whether or not someone even being somewhat careless in the general market might be confused and specifically rejects the proposition that it has to be point sale that is not the law on the six circuit with regards to wu no i mean contributory infringement the fair deals case is the one they rely on we also agree indicates that sixteen days notice in that case was not adequate and because there was no registered trademark in this case you had a year and a half notice the filing of the complaint notice ultimately holding off on the release of the album preliminary injunction and you had a registered trademark so even under that case it's up to the jury to find whether or not there's contributory friendship thank you your honor ok thank you mr shafer and thanks to all counsel who appeared today we appreciate your arguments the case will be submitted