The owners of the trademarks on the popular American Idol TV program, FremantleMedia North America, Inc., have filed a lawsuit in the United States District Court for the Western District of Texas, Austin Division. This lawsuit came to my attention as I was watching Bill O’Reilly’s show on FOX, and his legal panel was discussing the merits of the lawsuit and immediately managed to get the law wrong. The women that were talking to O’Reilly stated that the whole case was about likelihood of confusion and that no one would or could ever confuse a stripper contest with American Idol, so there was no chance that the lawsuit would result in a victory for the owners of the American Idol trademark. While I do enjoy O’Reilly, the fact of the matter is that his legal correspondents were dead wrong, as are most legal correspondents when the attempt to pontificate about matters relating to patents, trademarks or copyrights.
O’Reilly did make a good point when he asked why would American Idol bring such a trademark infringement lawsuit because it seems that they are just giving publicity to the strip club, and that is certainly a valid point. News reports are confirming that since the lawsuit was filed by American Idol this little noticed competition is now getting a lot of publicity and is growing in popularity. The owners of the strip club say that they have no intention of stopping the contest, and quite frankly why would they now? They are getting a lot of free publicity, which is always the danger when the owner of a popular trademark sues an unknown infringer for a small, insignificant, local transgression of trademark rights.
Of course, the owners of American Idol have the right to bring a trademark lawsuit, and while some of their theories are based on likelihood of confusion, they do allege trademark dilution. In the copy of the complaint I have been able to find there are 4 specific counts raised, and Cout IV is the one that alleges trademark dilution under Texas law. Count I is based on federal law regarding the likelihood of confusion, and Count II is based on unfair competition under Texas law. There actually is no Count III, which might have been inadvertently omitted, it is hard to tell. It would seem that a logical Count III would have been based on federal dilution law, which would supplement Count IV, which is dilution under Texas law.
In any event, dilution is the theory that most likely will be successful in this case, assuming there is no settlement and no backing down by the owners of the American Idol trademark. Under a dilution theory it is generally possible to prevent uses of a trademark even when there would be no likelihood of confusion when the use of the similar mark conjures up unsavory images that would then be associated with the trademark in question, here the American Idol trademark. This type of dilution is called tarnishment, and is it would seem that the use of a similar trademark for what many would call unsavory sexual acts (i.e., stripping) would be the type of thing that dilution law is intended to prevent.
This is not to say that there is no chance that American Idol owners would lose on a likelihood of confusion theory, just that dilution is probably the stronger theory here. Argument is made in the complaint that consumers might think that the owners of the American Idol trademark are OK with or perhaps even endorsing the use of their mark. This seems like a stretch factually, but does represent a valid legal theory. So there can be a likelihood of confusion under the law even when no confusion is possible really in any intellectual honest way. In other words, consumers might know for sure that this is not related to American Idol, but if they suspect it is being done with explicit permission or approval that would be where the legally recognizable confusion would like. The confusion would be associated with the existence permission to use such a similar trademark.
I personally don’t think it was wise to bring the lawsuit because now that media outlets are covering the issue the exact unsavory association that American Idol does not want is being made over and over again. So the morale of the story is that you need to be careful when you listen to legal correspondents who are not knowledgeable about intellectual property law, and if you are a trademark owner you might not want to bring more attention to actionable dilution because it may cause more damage to your mark than just ignoring it.
About the Author
|Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc.
US Patent Attorney (Reg. No. 44,294)
B.S. in Electrical Engineering, Rutgers University
Gene is a US Patent Attorney, Law Professor and the founder of IPWatchdog.com. He teaches patent bar review courses and is a member of the Board of Directors of the United Inventors Association. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money and various other newspapers and magazines worldwide
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7 comments so far.
PAWEL KOLASANovember 29, 2011 02:46 pm
I am registered owner of internetidol.me. Just as millions of other people, we demand that our rights will be enforced!
1. No ONE owns or can “copyright” a COMMON word, such as: Idol, God, Teacher, Leader.
2. When patent office makes such mistake, it is Judges RESPONSIBILITY to nullify it!
3. While it’s not nullified yet, only “Idol” standing alone, can be treated as trademarked. This has nothing to do with other “idols” like “stripper idol” “gay idol” “use your brain idol” and “Internet Idol”, which is about connecting singers and composers by using online rating system.
4. While you gentlemen are bickering about technicalities, the principles are being trampled. And it’s the Constitution and principles that OVERRIDE decisions of “patent office” or whatever is the thoughtless institution named.
That’s why we have courts.
Anyone up for suing Google for refusing to advertise my website? There are thousands more that, would like to join a class action law suit against Google. Because as you know… it makes sense to sue those who can afford to pay the penalty for their crime.
Gene QuinnJanuary 16, 2009 11:17 am
I agree 100%. Trademark owners are notorious for over stepping their authority, and those who are not knowledgeable cave in even when they don’t have to.
Whenever I represent clients in trademark disputes I would prefer to work it out if possible without having to sue. I think done properly you can get all the deterent effect of a lawsuit with a confidential settlement. Of course, there are not as many attorneys fees, so many attorneys never even bring up alternative strategies for consideration by the client, which is unfortunate.
Thanks for reading IPWatchdog.com.
mberger1969January 16, 2009 09:00 am
I agree with you that many Trademark and Patent owners overstep their rights. They like to apply their IP rights at the limits of their protection and attempt to keep everyone from using anything related whether correct or not.
In this case AMERICAN IDOL would like to keep all IDOL wannabes from using anything IDOL related. I don’t think any court should give the word IDOL alone or in conjunction with other generic terms protection. That doesn’t mean they won’t. AMERICAN IDOL likely picked this case because of the unsavory offender and the overall appearance of the logo. This will strengthen their case. The point is, this is stretching the broadest interpretation they should/may get. If they get a victory here, they will then be able to intimidate other smaller users of the IDOL mark, right or wrong. Unfortunately, those without IP saavy will be intimidated and be less likely to use IDOL for local events, charity, and the like.
We’ll have to see how this pans out in court, but they couldn’t have asked for a better set of circumstances if they want the court to ‘approve’ a broader interpretation of the ____ IDOL mark than they deserve.
Gene QuinnJanuary 15, 2009 04:23 pm
I understand what you are saying, but I am not 100% I agree. Yes it is good to protect your marks and trademark owners need to enforce their rights or they will see them evaporate. Having said this, I wonder how strong the mark actually is. They cannot have protection for the word “American” and they cannot have protection for the word “Idol,” so the protection has to be related to the two words together. That being the case “Stripper Idol” is not a slam dunk winner on the law, but in cases like this typically the unsavory user will lose over the trademark owner.
The case that is the best for the American Idol folks relates to the logo, which incorporates the words. The strip club not only uses the words “stripper idol,” but also uses them within a logo that is exactly identical to the logo, using the same color and font as American Idol.
Perhaps a deal could not be worked out, but what I would have tried to talk the client into was trying to get the strip club to stop using the logo. This and negotiate some kind of alteration in the title of the contest. Then announce publicly the confidential settlement of a dispute prior to trial. Then no one knows, you get the deterrent effect because you went after them to some extent, and the strip club gets the publicity they are looking for because press releases would include the new name of the contest. Everyone wins, no chance at an unfavorable court decision that could create more uses.
mberger1969January 15, 2009 12:37 pm
Although AMERICAN IDOL may bring more publicity to STRIPPER IDOL in this instance. A successful suit will prevent a plethora of “Stripper Idol,” “My cutest baby idol,” “SmalltownUSA Idol,” and the like. It will give more weight to their cease and desist letters (which I’m sure they send hundreds a week out). By preventing STRIPPER IDOL from using the AMERICAN IDOL”mark, they will have a highly publicized victory. They can use that victory as a sledgehammer, whether legitimate or not, to prevent others from using the AMERICAN IDOL mark. This should be an easier victory than the SMALLTOWNUSA IDOL use which will be seen as cute and non-offensive.
Thus, they have chosen a very good and very public venue to demonstrate the strength of the AMERICAN IDOL mark. A very wise move.
Gene QuinnJanuary 15, 2009 11:45 am
I agree with you that likelihood of confusion is always the better claim to assert, but dilution is a valid theory here. While a trademark does need to be famous in order to qualify for federal dilution protection, and while it is not easy to prove fame, the American Idol trademark is clearly famous and would have no problem proving it is a famous mark under federal trademark law.
Dilution is really the theory that most neatly fits with the harm that the American Idol folks seek to stop because they are arguing that the unauthorized use of what is a famous mark will diminish the mark’s selling power and value because the mark is no longer associated with a single source.
Admittedly, over the last few years the trademarks given dilution protection are what most would call famous, don’t forget the host of trademarks that have been given dilution protection over the years that are hardly famous, including: INTERMATIC, GAZETTE, NAILTIQUES, TELETECH, WAWA, and various variations on PAPAL VISIT 1999. When you learn that these hardly famous marks were given dilution protection it would seem clear that a well known mark and name like American Idol ought to be considered famous, and is clearly more famous than any of these marks.
The reason I wrote this article was because FOX simply got it wrong when they told their viewers that this case is all about likelihood of confusion and there would be no confusion. That statement is not just misleading, but flat out wrong on the law. Dilution is not about confusion, and the theory alleged under 1125(a) is not about confusion really, but rather about the belief that American Idol might be OK with or have authorized this use.
While I may have counseled American Idol not to sue, trademark owners do need to aggressively protect their marks otherwise others will think they can get away with it and then you have increasing unauthorized uses. If that happens then the underlying trademark could lose all value.
jrtjrtJanuary 15, 2009 10:38 am
I respecfully disagree. Putting aside whether it is good public relations I would argue that this matter is more properly resolved under tradtional likelihood of confusion analysis.
The plaintiffs describe the services rendered under the AMERICAN IDOL mark broadly as “entertainment services directed to talent competiton” This could just as easily describe the services being rendered under the STRIPPERS IDOL mark. While a casual oberserver might say ” there is no way that the public would be confused” courts have routinely found such confusion for decades, especially when the defendant’s intent was clear and the defendant’s activities were perhaps less than wholesome. That is the virture of the mulit factorial method for finding likelihood of confusion.
For all the glitter of the dilution doctrine, it has never been welcomed by judges. And a claim under federal dilution law would require the plaintiffs to prove that the mark AMERICAN IDOL is famous for trademark dilution purposes.
Again, a casual oberserver might say ” well of course it is” but proving that fame is another matter.
Unless the fields of use are as far removed as they were when Barnum and Bailey’s GREATEST SHOW ON EARTH for the cirucus came up against THE GREATEST SNOW ON EARTH for Utah’s ski slopes, I believe that likelihood of confusion is always the better claim to assert. Is the literal language of the statute that restrictive? No. But I believe that the law in action often imposes that restriction on a dilution plaintiff.