Recently, the U.S. District Court for the District of Colorado granted National Geographic Partners, LLC’s motion to dismiss a trademark infringement lawsuit filed by Marty Stouffer and Marty Stouffer Productions, LTD (Stouffer) (Stouffer et al. v. National Geographic Partners, LLC et. al.). Stouffer alleged infringement of its trademark WILD AMERICA. The Court dismissed the lawsuit with prejudice, thus precluding Stouffer from filing suit again for the same claims.
In a previous round of Rule 12(b)(6) motion practice, the Court evaluated the “Roger’s test”, enumerated in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir, 1989) and followed by four other circuits. The Court found the Rogers Test did not strike the correct balance between trademark rights and First Amendment rights. Accordingly, the Court proposed a 6 factor genuine artistic motive test. Because the parties could not anticipate the multi-factor test applied by the Court, the Court gave Stouffer an opportunity to replead its claim. The current decision is the result after filing the amended complaint by Stouffer and refiling of the Rule 12(b)(6) motion to dismiss by National Geographic.
In 1982, Stouffer produced nature documentary show broadcasted on Public Broadcasting Service (PBS) for 14 years. Stouffer obtained a trademark registration for WILD AMERICA for a continuing television series depicting animals and their habitat. The mark has continuously been in use since 1982 through DVDs, video streaming services and syndication on television.
National Geographic engaged in discussions to license or purchase the Wild America library but eventually decided against it. National Geographic contacted Stouffer in 2010 for permission to title an upcoming natural history miniseries “Wild Americas” or “Wildest Americas”. Stouffer declined as they believed the title would infringe on their Wild America trademark.
National Geographic aired the proposed series in 2012 in the U.S. under the title “Untamed Americas”. The series aired outside the U.S. under the title “Wild America”. National Geographic also aired a television series titled “America the Wild”. This series contained several production details that were similar to the series produced by Stouffer. Stouffer alleges trademark infringement for four National Geographic series: Untamed Americas, America the Wild, Surviving Wild America, and America’s Wild Frontier. These four series are collectively referred to as the “Accused Series”.
Rogers Test – First Amendment versus Trademark Infringement
The Court addressed only National Geographic’s First Amendment rights in view of the trademark infringement claim. The Court stated trademark claims are normally evaluated under a likelihood of confusion test. However, the First Amendment requires consideration when it comes to expressive works. The Rogers test asks two questions: (1) whether a title has some relevance to the underlying work, and (2) whether the title explicitly misleads as to the source or content of the work. If both prongs are met, the danger of restricting First Amendment artistic expression outweighs a potential likelihood of confusion. As the Tenth Circuit has not yet adopted this test, the Court declined to apply this test. The Court stated that the test is “needlessly rigid and fails to account for the realities of each situation”.
Genuine Artistic Motive Test
Accordingly, the Court developed its own test to weigh First Amendment artistic expression against trademark infringement – the Genuine Artistic Motive Test. The test is comprised of 6 questions:
- Do the senior and junior users use the mark to identify the same kind, or a similar kind, of goods or services?
- To what extent has the junior user added his or her own expressive content to the work beyond the mark itself?
- 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?
- In what way is the mark artistically related to the underlying work, service, or product?
- 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?
- Has the junior user made any statement in private, or engaged in any conduct in private, that suggests a non-artistic motive?
After applying the factors to the case, the Court found some evidence that National Geographic acted with an unartistic motive. For example, National Geographic titled one series “Wild America” outside of the U.S. However, the Court found National Geographic’s use of the titles describes the nature documentary content of the Accused Series. Accordingly, this fact offers a strong inference that their motive was genuinely artistic. The Court also noted that Stouffer’s complaint did not allege National Geographic was trying to capitalize on the popularity of Stouffer’s mark. Further, Stouffer’s complaint only contained generic allegations that the Accused Series was not National Geographic’s original expressive content. Accordingly, the Court ruled that First Amendment protection of National Geographic’s titles trumped a trademark infringement claim even if Stouffer could prove a likelihood of confusion.