Last year, the U.S. District Court for the District of Colorado denied defendant National Geographic's motion to dismiss claims that the titles of National Geographic's nature docuseries infringed the title of the plaintiff's nature docuseries. Stouffer v. Nat'l Geographic Partners, 400 F. Supp. 3d 1161 (D. Colo. 2019). Rather than applying the Second Circuit's Rogers test to determine Lanham Act liability for a creative work, the court had announced a new, multifactor test (the "genuine artistic motive" test) and granted the parties leave to address its new test. National Geographic again moved to dismiss the plaintiff's Lanham Act claims. Applying the genuine artistic motive test for the first time, the court granted National Geographic's motion to dismiss, concluding that the First Amendment protected National Geographic's docuseries titles.

The parties' dispute involved several of National Geographic's recent nature documentary television programs. Plaintiff Marty Stouffer had created and produced a long-running nature documentary series, called "Wild America," which aired on PBS in the 1980s and 1990s. Stouffer also obtained a federal trademark for WILD AMERICA, registered for television series. In the early 2010s, National Geographic had approached Stouffer for permission to use the title "Wild Americas" or "Wildest Americas" for nature documentary programs. Stouffer refused, citing the similarity to his WILD AMERICA mark. National Geographic subsequently premiered a series in 2012 under the title "Untamed Americas" in the United States and "Wild America" outside of the United States. National Geographic premiered additional nature documentary programs: "America the Wild" in 2013, "Surviving Wild America" in 2014, and "America's Wild Frontier" in 2018. Stouffer filed suit against National Geographic, asserting trademark infringement of Stouffer's WILD AMERICA mark, among other claims.

In its 2019 order denying National Geographic's motion to dismiss, the court considered the extent to which the First Amendment should protect artistic works, like National Geographic's programs, from Lanham Act liability. Under the popular Rogers test, the use of a trademark in an artistic work is actionable only if the use of the mark: (1) has no artistic relevance to the underlying work, or (2) explicitly misleads as to the source or content of the work. Because the Tenth Circuit had not adopted the Rogers test, the court felt "free to decide" if and how the Rogers test should apply. The court expressed concern that interpretations of the Rogers test could permit anyone to use a trademark, "even to sell the same good or service for which the trademark was granted, if the good or service can be deemed 'art.'" (emphasis in original). Rather than analyze whether a junior user made explicit claims of association with the senior user, the court believed that the appropriate test should focus on whether the junior user had a "genuine artistic motive for using the senior user's mark or other Lanham Act-protected property right." Accordingly, the court articulated a six-factor test, which it called the "genuine artistic motive" test.

In its recent order, the court evaluated Stouffer's amended complaint against its new "genuine artistic motive" test, which considers the following non-exclusive factors:

  1. Do the senior and junior users use the mark to identify the same kind, or a similar kind, of goods or services?
  2. To what extent has the junior user added his or her own expressive content to the work beyond the mark itself?
  3. Does the timing of the junior user's use in any way suggest a motive to capitalize on popularity of the senior user's mark?
  4. In what way is the mark artistically related to the underlying work, service, or product?
  5. Has the junior user made any statement to the public, or engaged in any conduct known to the public, that suggests a non-artistic motive?
  6. Has the junior user made any statement in private, or engaged in any conduct in private, that suggests a non-artistic motive?

Regarding the first question, the court found that Stouffer and National Geographic both used the mark to identify the same or similar kind of goods and services, namely, nature documentary television programming. Stouffer addressed the second factor and acknowledged that National Geographic added its own expressive content to its television series beyond simply using the mark itself. For the third factor, which asks whether the timing of the junior user's mark suggests a motive to capitalize on the popularity of the senior user's mark, the court noted that Stouffer's Wild America series on PBS ended in 1996, while National Geographic's program premiered in 2012. Although Stouffer's series remained available for streaming, download, and purchase, the court noted that Stouffer did not plead statistics on his series' viewership, streaming, or downloading during the period when National Geographic's shows premiered.

The court easily answered the fourth question, because the parties used the marks in the same way: as the titles of their respective shows and to inform the viewers about the nature of the programs. The fifth factor asks whether the junior user has made any public statements or engaged in any conduct to the public that suggests a non-artistic motive for adopting the mark. Here, the court agreed with Stouffer that National Geographic's use of "Wild America" as the title for the international version of its show could suggest a desire to use Stouffer's mark for its trademark value. Finally, for the sixth factor, the court analyzed National Geographic's private conduct for indications that it adopted Stouffer's mark based on non-artistic motives. The court noted that National Geographic had asked Stouffer for permission to title its upcoming series "Wild Americas" or "Wildest Americas," which could suggest a desire to use Stouffer's mark or a similar mark for its trademark value. Alternatively, National Geographic may have merely wanted to avoid conflict with Stouffer.

The court also examined National Geographic's subjective motives in choosing program titles. National Geographic selected titles that closely corresponded to its nature programming about America's wildlands, which weighed heavily in National Geographic's favor. Specifically, the relationship between the subject matter and the titles created a strong objective inference that National Geographic's motive was genuinely artistic, rather than an arbitrary choice in an attempt to capitalize on Stouffer's goodwill in his WILD AMERICA mark. Moreover, the court noted that choosing a descriptive title for an artistic work "is an expressive choice unto itself," and artistic expression would be constricted if trademarked words and their synonyms (i.e., "Untamed Americas") were deemed infringing.

Finally, Stouffer's amended complaint did not include evidence that Wild America was popular in the 2010s, when National Geographic premiered its programs. Although Stouffer provided significant detail about the success of his show in the 1980s and 1990s, he did not include similar information about the show's popularity in subsequent decades. Instead, Stouffer alleged that his show continued to be available. The court therefore could not find support for Stouffer's allegation that National Geographic chose titles to capitalize on Wild America's goodwill. Considering the multifactor test and Stouffer's pleading, the court concluded that National Geographic had a genuine artistic motive for selecting the titles for its nature documentaries. Consequently, National Geographic's titles deserved First Amendment protection, even viewing the allegations in the light most favorable to Stouffer, and even if Stouffer could prove likelihood of confusion. The court therefore dismissed Stouffer's amended complaint with prejudice.

The case is Stouffer v. Nat'l Geographic Partners, LLC, No. 18-cv-3127-WJM-SKC, 2020 U.S. Dist. LEXIS 81383 (May 8, 2020).

Originally published y 20, 2020

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