By Brian Craig, J.D.
National Geographic’s television series are protected by the First Amendment even if a likelihood of confusion with prior series exists.
The federal district court in Denver, Colorado, has dismissed a suit brought by the producer of the "Wild America" documentaries appearing on PBS alleging trademark infringement by four television series produced National Geographic Partners, LLC. In applying its genuine artistic motive test, the court held that four National Geographic TV series—Untamed Americas, America the Wild, Surviving Wild America, and America’s Wild Frontier—were entitled to protection under the First Amendment even if a likelihood of confusion exists (Stouffer v. National Geographic Partners, LLC, May 8, 2020, Martínez, W.).
Marty Stouffer Productions owns the trademark for "Wild America," which it federally registered in 1982. Marty Stouffer Productions produced nature documentaries entitled "Wild America" that aired on the Public Broadcasting Service ("PBS") beginning in 1982 that ran for the next 14 years. All Wild America episodes remain available to purchase on DVD, or to stream through major video-streaming platforms, and are also available on television through syndication. National Geographic launched a television station, commonly known as Nat Geo TV, in 2001. National Geographic launched a sister channel, Nat Geo WILD, in 2010. Both channels feature nature-oriented documentary programming. In 2010 and 2011, Stouffer and National Geographic engaged in discussions regarding National Geographic potentially licensing or purchasing Stouffer’s Wild America film library. National Geographic declined to purchase the Wild America Film Library. National Geographic subsequently produced four television shows entitled "Untamed Americas," "America the Wild," "Surviving Wild America," and "America’s Wild Frontier" (the "Accused Series").
Stouffer filed an original complaint asserting a copyright claim, which the court dismissed without prejudice. Stouffer filed an amended the complaint asserting claims for trademark infringement, unfair competition, and deceptive trade practices. In the amended complaint, the producer decided not to re-plead the copyright claim. National Geographic filed a motion to dismiss arguing that the First Amendment provides protected to the accused marks.
In an earlier ruling, the court evaluated the "Rogers test," an approach pioneered by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). In the previous ruing, the court concluded that the Rogers test, without more, did not strike the appropriate balance between trademark rights and First Amendment rights. The court instead proposed factors to weigh. Because the parties could not anticipate the court’s multi-factor test, the court gave Stouffer an opportunity to re-plead his claim, and National Geographic an opportunity to again move to dismiss.
Modified Rogers test. The court first gave its reasons for rejecting the Rogers test, and essentially concluded that the Rogers test is needlessly rigid and fails to account for the realities of each situation. In the Rogers test, the Second Circuit held that the First Amendment requires some tolerance even for likelihood of confusion when it comes to titles of expressive works. The Second, Fifth, Sixth, Ninth, and Eleventh Circuits have explicitly adopted the Rogers test, but even they do not always apply Rogers in the same way, the court noted. The U.S. Supreme Court and the Tenth Circuit have not explicitly adopted the Rogers test. The court adopted a modified version of the Rogers test, or the genuine artistic motive test, to determine whether the First Amendment protects the works at issue.
Genuine artistic motive test. The court considered six factors in its genuine artistic motive test. These six factors include:(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?; and (6) Has the junior user made any statement in private, or engaged in any conduct in private, that suggests a non-artistic motive?
In applying its genuine artistic motive test, the court held that National Geographic is entitled to receive protection under the First Amendment even if a likelihood of confusion exists. The court first concluded the fact that National Geographic had used titles to describe the content of the Accused Series weighed heavily in National Geographic’s favor. The choice of a title for one’s expressive creation is an expressive choice unto itself, including the choice of a descriptive title. Thus, the objective inference is strong that its motive was genuinely artistic. Second, the amended complaint offered nothing suggesting that National Geographic was attempting to ride Stouffer’s wave. The amended complaint contained a notable contrast between providing significant detail about Wild America’s success in the 1980s and 1990s. Rather than allegations about continuing interest in Wild America since the mid-1990s, Stouffer provided allegations about Wild America’s continuing availability. Finally, the amended complaint provided only the most generic of accusations that the Accused Series should not be deemed National Geographic’s original expressive content.
Accordingly, the court granted National Geographic’s motion to dismiss with prejudice. The amended complaint was barely different from the original complaint, convincing the court that further opportunity to amend would be futile.
This case is No. 1:18-cv-03127-WJM-GPG.
Attorneys: Alan B. Felts (Tuggle Duggins P.A.) for Marty Stouffer and Marty Stouffer Productions, Ltd. Jason D. Rosenberg (Alston & Bird LLP) for National Geographic Partners, LLC, Nght, LLC d/b/a National Geographic Digital Media, NGC Network US, LLC, and NGC Network International, LLC
Companies: Marty Stouffer Productions, Ltd.; National Geographic Partners, LLC; Nght, LLC d/b/a National Geographic Digital Media; NGC Network US, LLC; NGC Network International, LLC
MainStory: TopStory Trademark GCNNews ColoradoNews
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