Surfvivor of A small Waipahu business that started out selling T-shirts in the "booze cruise" days of the 1980s is tackling media giant CBS Inc. and its hugely popular "Survivor" television show in federal court, seeking to stop them from using the "Survivor" name in merchandising clothing and sunscreen products.
the fittest?
A Waipahu merchant sues
CBS over "Survivor" marketing
that he claims is hurting his salesBy Russ Lynch
rlynch@starbulletin.comThe name is too much like its own "Surfvivor" brand and the confusion is enough that CBS shouldn't be allowed to come in and push it aside and overwhelm the market with its own goods, Peter S. Deptula, founder of Surfvivor Media Inc., said in a lawsuit filed in Honolulu yesterday.
CBS disagrees and sent Deptula's lawyers a letter July 10 saying "it is highly unlikely, if not impossible" that consumers would be confused between the two brands.
Deptula's lawsuit, filed by Honolulu attorneys Paul Maki and Elise Owens Thorn, says Surfvivor was there first and the huge publicity gained by "Survivor," which started showing on millions of television screens last summer, is overwhelming the Surfvivor brand.
Particularly irritating, the filing says, is the "Survivor" producers' use of that name on a line of sunscreen that has shown up on store shelves in Hawaii and elsewhere alongside a similar Surfvivor product.
Although they were concerned about the show's name being so similar to theirs, Deptula says he and his partners "believed that the use of the name in connection with a television show would not hurt their business."
However they "underestimated the extent to which CBS would expand its use of the Survivor mark and in May of this year, the Surfvivor people's "worst fears were realized" when they discovered that Survivor Productions was making a sunscreen product using the Survivor name, the lawsuit says.
As an example of the confusion they say resulted, the filing tells a tale about Deptula and his marketing director calling at the Longs Drug Stores outlet in Manoa to check on their Surfvivor sunscreen. "When they did not see the Surfvivor sunscreen on the shelf, they asked the cosmetics manager for an explanation. She said that she had some old product in the back.
"Another sales associate, who apparently overheard the request, said that she had just brought the product out to stock. The sunscreen she showed them was Survivor sunscreen, not Surfvivor Media's Surfvivor sunscreen," the lawsuit says.
"Worried that their market share would be destroyed along with their reputation, plaintiffs sought the assistance of legal counsel," it says. Deptula said he visited other stores locally and found similar confusion.
"In this case, a small Hawaii business (Deptula and Surfvivor Media) has been using the federally registered trademark Surfvivor for 15 years. Along comes an entertainment Goliath with unlimited resources which floods the market with publicity creating consumer recognition of the Survivor mark, a mark which is confusingly similar to plaintiffs Surfvivor mark," the filing says.
"I have spent time and money and a substantial amount of sweat equity to make this business a reality," Deptula said in a declaration attached to the filing. "In my 15th year of business, things are going well and my sunscreen products are doing well," he said.
"Many of the dreams and plans I had for the expansion of my business outside of Hawaii and to the mainland may not be possible due to the adoption and use of the Survivor trademark by CBS. Many merchants and customers already believe that my business is a copycat of Survivor," the statement said.
In the July 10 response to a complaint from Surfvivor, CBS parent Viacom Inc. said its use of "Survivor: The Australian Outback" as a logo on the sunscreen is different in many ways from Surfvivor. It is clearly a tie-in with the Australian Survivor series that "has received tremendous media attention and popular acclaim," Rebecca Borden, Viacom vice president and counsel for intellectual property, said in a letter.
The Surfvivor logo is clearly related to surf and it is "promoted with ties to the Hawaiian beach," entirely different from the Australian wilderness, she said.
Deptula started his business in 1986, selling souvenir items on the Aikane Catamarans, and he and his partners say they have been using the Surfvivor trademark since 1987. In 1993, now operating as Surfvivor Media, Deptula decided he would market a sunscreen product and filed an application to use the Surfvivor name on those products.
The first use of the trademark was in 1997.