Sullivan v. Bickler
360 F. Supp. 3d 778
E.D. Ill.2019Background
- Frank Sullivan (Illinois) owns the registered SURVIVOR mark; Survivor Music, an Illinois corporation, is its exclusive licensee.
- David Bickler (New York) was Survivor's original lead singer and signed a 1984 Withdrawal Agreement relinquishing rights to band assets but preserving certain royalty payments.
- Plaintiffs allege Bickler promotes solo performances using the SURVIVOR name/logo (website, Instagram handle "thesurvivordave", promotional materials) without authorization, creating confusion about his affiliation with the band.
- Claims: breach of contract (Withdrawal Agreement), trademark infringement under the Lanham Act (15 U.S.C. § 1114), and unfair competition (15 U.S.C. § 1125(a)).
- Bickler moved to dismiss for lack of personal jurisdiction (Fed. R. Civ. P. 12(b)(2)) and for failure to state a claim (Fed. R. Civ. P. 12(b)(6)). The court denied both grounds for dismissal.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Personal jurisdiction (general) | Bickler has continuous contacts with Illinois (royalties, communications, performances) | Bickler is domiciled in NY; contacts are insufficient for general jurisdiction | Denied general jurisdiction — domicile is NY, contacts do not support general jurisdiction |
| Personal jurisdiction (specific) | Withdrawal Agreement negotiated/signed in Illinois and performance (royalty payments, communications) occurred with Illinois parties | Alleged trademark tortious acts in Illinois are insufficiently connected | Specific jurisdiction exists based on contract negotiation, signing, and performance tied to Illinois |
| Lanham Act — likelihood of confusion | Use of exact SURVIVOR mark on website, social media handle, and promotions likely to confuse consumers | Use is artistic expression or truthful historical/factual reference (fair use); unlikely to mislead because he is a "former" member | Trademark claim survives pleading stage; factual issues (confusion, descriptive/non-trademark use, First Amendment defense) are for discovery/trial |
| Supplemental claims (breach of contract, unfair competition) | These arise from same nucleus as Lanham Act claim | If Lanham Act claim dismissed, no federal jurisdiction over remaining claims | Breach and unfair competition claims remain because Lanham Act claim survives |
Key Cases Cited
- Purdue Research Found. v. Sanofi-Synthelabo, S.A., 338 F.3d 773 (7th Cir.) (plaintiff bears burden to establish personal jurisdiction; prima facie showing standard)
- Cent. States, Se. & Sw. Areas Pension Fund v. Phencorp Reinsurance Co., 440 F.3d 870 (7th Cir.) (pleading inferences favor plaintiff on jurisdictional facts)
- Daimler AG v. Bauman, 571 U.S. 117 (Sup. Ct.) (individual's domicile is paradigm forum for general jurisdiction)
- Walden v. Fiore, 571 U.S. 277 (Sup. Ct.) (jurisdiction requires defendant's own forum-related conduct; connections must be defendant-created)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (Sup. Ct.) (plausibility standard for Rule 12(b)(6))
- Ashcroft v. Iqbal, 556 U.S. 662 (Sup. Ct.) (legal conclusions insufficient; factual plausibility required)
- CAE, Inc. v. Clean Air Eng'g, Inc., 267 F.3d 660 (7th Cir.) (seven-factor likelihood-of-confusion test)
- Packman v. Chicago Tribune Co., 267 F.3d 628 (7th Cir.) (registered mark entitled to presumption of distinctiveness)