Sullivan v. Bickler

360 F. Supp. 3d 778
CourtDistrict Court, E.D. Illinois
DecidedJanuary 25, 2019
Docket18 C 3770
StatusPublished
Cited by7 cases

This text of 360 F. Supp. 3d 778 (Sullivan v. Bickler) is published on Counsel Stack Legal Research, covering District Court, E.D. Illinois primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Sullivan v. Bickler, 360 F. Supp. 3d 778 (illinoised 2019).

Opinion

John Z. Lee, United States District Judge

Plaintiffs Frank Sullivan and Survivor Music, Inc. ("Survivor Music") filed this lawsuit against David Bickler ("Bickler"), the former lead singer of the rock band Survivor, alleging that he has been improperly using the name "Survivor" to promote his solo performances since he left the band in 1984. Plaintiffs raise claims of trademark infringement, 15 U.S.C. § 1114(1), unfair competition, 15 U.S.C. § 1125(a), and breach of contract. Bickler moves to dismiss for lack of personal jurisdiction pursuant to Federal Rule of Civil Procedure ("Rule") 12(b)(2), or for failure to state a claim pursuant to Rule 12(b)(6). For the reasons provided, the Court denies Bickler's motion to dismiss [16].

Factual Background 1

Sullivan, who lives in Illinois, is a founding member of the band Survivor and *782owns the trademark "Survivor," which he has used since 1977. Compl. ¶¶ 4, 10, ECF No. 1. Survivor Music is an Illinois corporation and is the exclusive licensee of the SURVIVOR mark. Id. ¶ 5. Sullivan is Survivor Music's sole shareholder and director. Id. Bickler, another founding member of Survivor, resides in Chappaqua, New York. Id. ¶¶ 6-7.

When Bickler left Survivor in 1984, he signed an agreement that governed his departure from the band (the "Withdrawal Agreement"). Id. ¶¶ 7-8. In relevant part, the Withdrawal Agreement provided that Bickler was to continue receiving royalties from certain of Survivor's recordings. Compl., Ex. A, Withdrawal Agreement ¶ 5a. Survivor Corp. (the predecessor to Survivor Music, see Compl. ¶ 9) and the remaining members of the band were to "use their best efforts" to ensure that Bickler received these royalties, including paying the royalties if the recording label failed to do so. Compl., Ex. A, Withdrawal Agreement ¶ 5a. With the exception of these royalties, however, Bickler acknowledged that he had "no further right or interest of any kind in any of the stock or assets of any kind whatsoever (tangible or intangible)" of Survivor Corp., the band Survivor, or any of the remaining members of the band. Id. ¶ 5d; see Compl. ¶ 8.

Despite Bickler's agreement to relinquish Survivor's assets, Plaintiffs claim that he has "used the SURVIVOR mark in connection with and to promote his post-departure activities in Illinois and in interstate commerce, without authorization from Sullivan or from Survivor Music." Compl. ¶ 11. In particular, Bickler "extensively uses the Survivor logo and covers from the band's albums on his website and in promoting his appearances." Id. For example, "Survivor" is "featured prominently" on the "About Dave" page of Bickler's website. Id. ; see Compl., Ex. B. Further, in promotional material for a concert in Georgia, Bickler was described as the "former lead singer for the rock group Survivor." Compl., Ex. D. Bickler also maintains an Instagram account under the username "thesurvivordave." Compl. ¶ 11; see Compl., Ex. C. His Instagram page describes him as "An American vocalist, best known as original lead singer for the rock band Survivor." Compl., Ex. C.

Sullivan and Survivor Music allege that Bickler's "continued unauthorized use of the mark SURVIVOR in connection with his musical performances creates the misleading impression that Bickler remains a member of or is otherwise affiliated with" the band Survivor. Compl. ¶ 13. Plaintiffs raise claims for breach of contract (Count I), trademark infringement in violation of 15 U.S.C. § 1114 (Count II), and unfair competition in violation of 15 U.S.C. § 1125 (Count III). Bickler has moved to dismiss the complaint for lack of personal jurisdiction or for failure to state a claim.

Legal Standards

I. Rule 12(b)(2)

A court that lacks personal jurisdiction over a defendant must dismiss the case as to that party. See Fed. R. Civ. P. 12(b)(2). If a defendant moves to dismiss pursuant to Rule 12(b)(2), it places the burden on the plaintiff to demonstrate that the court has personal jurisdiction over the defendant. Purdue Research Found. v. Sanofi-Synthelabo, S.A. , 338 F.3d 773, 782 (7th Cir. 2003). In making this determination, the court will "read the complaint liberally, in its entirety, and with every inference drawn in favor of" the plaintiff. Cent. States, Se. & Sw. Areas Pension Fund v. Phencorp Reinsurance Co. , 440 F.3d 870, 878 (7th Cir. 2006) (quoting Textor v. Bd. of Regents of N. Ill. Univ. , 711 F.2d 1387, 1393 (7th Cir. 1983) ). "The precise nature of the plaintiff's burden depends upon whether an evidentiary hearing has been held."

*783Purdue

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Bluebook (online)
360 F. Supp. 3d 778, Counsel Stack Legal Research, https://law.counselstack.com/opinion/sullivan-v-bickler-illinoised-2019.