Metropolitan News-Enterprise


Thursday, May 5, 2005


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Ninth Circuit: ‘Survivor’ Show’s Promotional Products Did Not Infringe Beachwear Maker’s Trademark


By DAVID WATSON, Staff Writer


Promotional products tied to the “Survivor” reality television series did not infringe the trademark rights of a company already marketing beachwear and related products using the name “Surfvivor,” the Ninth U.S. Circuit Court of Appeals ruled yesterday.

Judge Johnnie B. Rawlinson said a magistrate judge in Hawaii properly granted summary judgment in favor of Survivor Productions, CBS Broadcasting Inc., and other entities associated with the popular show in the litigation brought by Surfvivor Media, Inc. and  Peter S. Deptula.

The “Survivor” producers acknowledged they were aware of Deptula’s trademark and the logos he used to promote his company’s sunscreen, t-shirts, surfboards and other items when they created logos to promote the television series. The “Survivor” logos appeared on such items as t-shirts, shorts, and hats.

Both sets of logos typically featured graphical depictions of exotic locales, along with the term “Surfvivor” or “Survivor” in prominent type.

Rawlinson said Deptula’s mark was entitled to protection under the Lanham Act as a “suggestive” mark — one which suggests, though it does not describe, the features of the associated product. It also weighed in his favor, she said, that the television program’s “junior” mark had achieved a level of recognition far beyond Deptula’s “senior” trademark.

But, applying the factors enumerated in the Ninth Circuit’s 1979 opinion in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, the judge concluded that Deptula could not establish infringement.

For one thing, she pointed out, the products being promoted were not closely enough related that consumers were likely to believe they came from the same source.

“In this case, although both parties portray an outdoor theme, there is no material evidence in the record that customers are likely to associate the two products or conclude that the products come from the same source....Resolution of this Sleekcraft factor favors Survivor.”

Nor, she said, was there much evidence of actual customer confusion.

“A single retailer and a single customer mistook one Survivor product as Deptula’s,” she wrote. “A survey commissioned by Survivor showed an absence of significant confusion.”

Aside from the strength of the marks, only one of the seven other factors listed in Sleekcraft favored Deptula, Rawlinson said — the fact that there was a “minor overlap within local Hawaiian distribution channels” for Surfvivor’s products and the items created to promote the television program.

“For example,” she noted, “both Survivor and Surfvivor merchandise are sold at Hawaiian J.C. Penny stores.”

She concluded:

“The distribution of the Sleekcraft factors does not raise a material issue of fact regarding likelihood of confusion.”

Rawlinson went on to say that the magistrate judge appropriately limited discovery to “information regarding t-shirts, sunscreen and lip balm,” rejecting Deptula’s bid for discovery relating to other “Survivor” promotional items “on the ground that any other discovery would be irrelevant.”

She explained:

“The magistrate judge, who was intimately familiar with the details of this case, considered the letter briefs that were filed by the parties on this issue and the discovery that had been conducted by the parties. In response to Interrogatories, Deptula explicitly identified t-shirts, sunscreen and lip balm as the infringing products.”

The case is Surfvivor Media, Inc. v. Survivor Productions, 02-17064.


Copyright 2005, Metropolitan News Company