The Eye of the Trademark

Frank Sullivan, a founder of the band “Survivor” has sued David Bickler, another founding member for trademark infringement in a federal court in Illinois.  Survivor is best known for their one and only hit “Eye of the Tiger”  which was of course featured prominently in Rocky III.  That film also featured what many film historians consider the most awkward hug in the history of cinema.   But I digress.

The suit is relatively simple.  When Bickler left the band in 1984, he relinquished any interest in the tangible or intangible assets of Survivor.  This would include intellectual property, such as the trademark “Survivor.”  Apparently, Bickler tends to advertise his solo shows these days, by referencing the fact that he is a former member of “Survivor.”  This is no doubt to address the inevitable question “Who is David Bickler”?  But Sullivan’s lawsuit contends this is deceptive use of the trademark, and implies Bickler is still affiliated with the band.

The case actually raises an issue bigger than the fight among former big haired rockers.  And that issue is, how does the First Amendment, which protects free expression, co-exist with the trademark law that limits expression.  Bickler filed a motion to dismiss pressing that point – his former affiliation with Survivor is a historical fact.  The First Amendment protects his right to state that fact.

Bickler’s argument is not new.  Indeed, courts have developed a balancing test to adjudicate the issue.  Simply put, the question is whether the use of the mark is “artistically relevant” to the work and not “explicitly misleading.”  Bickler contends his biography is relevant to his artistic expression and is not misleading.

And he may eventually prevail.  But not quite yet.  The court ruled that he was not entitled to an order dismissing the case at such an early stage.  In the court’s view, there are factual questions yet to be determined – among them the extent to which Bickler makes it clear in his advertising and his social media activity that he is in fact, no longer affiliated with the band.  Sullivan’s complaint included examples where Bickler did not make his disengagement clear.

So, to mix a few metaphors here, Sullivan’s case is “a survivor,” at least in this preliminary round.  Who ultimately scores the knockout is yet to be determined.