District Court of Colorado Departs From the Rogers Test in Documentary Trademark Suit

Written by Eleanor M. Lackman and Lillian Lee

On May 8, 2020, the U.S. District Court for the District of Colorado granted National Geographic’s motion to dismiss an amended complaint for trademark infringement, unfair competition, and deceptive trade practices.  Stouffer v. National Geographic Partners, LLC, No. 18-cv-3127 (May 8, 2020). In doing so, the court addressed “the question of what protections the First Amendment provides to those accused of trademark infringement.”

Plaintiffs Marty Stouffer and his production company were producers of the long-running “Wild America” nature documentary series.  Plaintiffs alleged that National Geographic’s nature TV series (marketed under the names “Untamed Americas,” “America the Wild,” “Surviving Wild America,” and “America’s Wild Frontier”) replicated the “Wild America” series style and mark.  Stouffer brought claims for federal trademark infringement, federal trademark dilution, unfair competition under Colorado common law, and deceptive trade practices under Colorado’s Consumer Protection Act.  National Geographic argued that all claims were fundamentally trademark-based and should be dismissed in favor of First Amendment interests. 

In a decision from the prior year, the court had evaluated the two-part test articulated in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (asking whether the use has “artistic relevance” and was “explicitly misleading”), and concluded that even though a few other courts have applied it, the test “did not strike the appropriate balance between trademark rights and First Amendment rights.”  In that previous ruling, the Colorado district court had found the Rogers test to be “needlessly rigid” and potentially so overbroad in the context of expressive works that “trademarks registered for arguably artistic products and services are not worth the paper that the trademark registration is printed upon.”  The court instead introduced six non-exclusive factors to be applied.  Those factors, when combined, would answer the question that the court found to be the proper inquiry, namely whether the junior user had “a genuine artistic motive for using the senior user’s mark or other Lanham Act-protected property right.”  The six factors included:

  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? This would include “explicitly misleading” statements but is not confined to that definition.
  6. Has the junior user made any statement in private, or engaged in any conduct in private, that suggests a non-artistic motive?

With this new “Genuine Artistic Motive” test, the court allowed Stouffer to replead its claims and National Geographic to bring another motion to dismiss.  National Geographic, along with a group of professors that had submitted an amicus brief in the case, argued that the court’s rejection of Rogers was improper, but the court rejected their criticisms.  The court noted that other decisions—such as Gordon v. Drape Creative, Inc., 909 F.3d 267 (9th Cir. 2018)—“demonstrate[d] that the Rogers test, as it had been interpreted up to that point, opens the door to free use of trademarks for ‘artistic’ goods and services, even on precisely the same goods and services for which the trademark was granted.” The court sought to soften the impact of Rogers in the context of expressive use.  In the court’s view, “the First Amendment places the thumb on the scale of expressive use…National Geographic and amici believe the First Amendment places a fist on the scale.”

Nonetheless, despite its rejection of the Rogers test, the court concluded that “the objective facts establish that National Geographic’s titles for the Accused Series deserve First Amendment protection, even if Stouffer could prove likelihood of confusion.”  The court briefly ran through the factors, noting, for example, that while the parties both made documentary television programming, the alleged common hallmarks of Stouffer’s series were so generic (such as the introduction of the animal and providing information about it), the commonalities carried little weight.  Likewise, while there were some facts that might suggest an “un-artistic motive,” the court in its summary concluded that because National Geographic used its titles to describe the content of the series, the objective inference was that the choice of titles was genuinely artistic.  The Court, moreover, found that there was nothing to suggest that National Geographic was attempting to “ride Stouffer’s wave.”

Because the majority of Circuits have adopted the Rogers test, this may be an interesting case to watch if it is appealed.   

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