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