In trademark action over National Geographic nature documentaries’ allegedly infringing titles, district court rejects Second Circuit’s Rogers test and formulates new motive-based inquiry to resolve First Amendment defense to trademark claims asserted against expressive works.

Plaintiff Marty Stouffer Productions, a documentary production company founded by plaintiff Marty Stouffer and his brother, Mark, commenced an action against National Geographic Partners, a subsidiary of Twenty-First Century Fox Inc., and affiliated entities for federal trademark infringement, dilution and unfair competition under the Lanham Act; copyright infringement under the Copyright Act; common law unfair competition under Colorado state law; and violations of the Colorado Consumer Protection Act.

From the early 1980s through the mid-1990s, Stouffer produced a nature documentary series titled Wild America, which was regularly televised by PBS. Stouffer claims to have developed “a unique filming style for the show, which utilized slow motion, close-ups, and time lapses to give viewers a more immersive experience.” Episodes of Stouffer’s Wild America are still aired on television, can be purchased on DVD and are accessible through major streaming services.

National Geographic offers nature-oriented documentary programming on its Nat Geo TV and Nat Geo WILD stations. National Geographic had explored with Stouffer the possibility of licensing or purchasing Stouffer’s Wild America film library, but no deal was reached. In 2010, Stouffer declined Nat Geo TV’s request to use the titles Wild Americas or Wildest Americas for a natural history miniseries, advising that those titles were too close to Stouffer’s registered “Wild America” trademark. In 2012, National Geographic aired the series with the title Untamed Americas in the U.S. and the title Wild America abroad. National Geographic subsequently released nature-themed programs in the U.S. under the titles America the Wild, Surviving Wild America and America’s Wild Frontier.

Stouffer’s trademark infringement, dilution and state law claims were based on National Geographic’s use of the titles Untamed Americas, America the Wild, Surviving Wild America, and America’s Wild Frontier. National Geographic moved to dismiss the complaint for failure to state a claim, arguing that the titles at issue are protected by the First Amendment under the Second Circuit’s Rogers v. Grimaldi analysis.

Under the Rogers two-part test, trademark claims cannot be maintained where the use of plaintiff’s mark (1) has some “artistic relevance” to defendant’s expressive work and (2) does not “explicitly mislead” as to the source or content of the work. If both factors are satisfied, the Rogers First Amendment analysis deems “the danger of restricting artistic expression” to outweigh consumers’ potential likelihood of confusion.

As the Tenth Circuit has neither adopted nor rejected the Rogers test, the court stated that it was free to make its own determination as to the applicability of Rogers in this case. After a detailed analysis of the application of the Rogers test in various circuits over the 30 years since its inception, the court concluded that “Rogers should not be adopted as-is.” The court found that treating the first prong — minimal artistic relevance — as a pure question of law did not take into account the junior user’s artistic motive (or, conversely, bad motive) in using the mark. Likewise, the court explained, requiring an overt claim or explicit reference under Rogers’ second prong does not adequately protect against situations where the junior user uses a senior user’s mark in the same manner and for the same purpose as the senior user.

In crafting a new First Amendment test, the court explained that the test should, like Rogers, be applicable before trial rather than after an adjudication of the traditional likelihood of confusion factors. The court concluded that the appropriate test ultimately asks: “Did the junior user have a genuine artistic motive for using the senior user’s mark or other Lanham Act-protected property right?” To discern the junior user’s motives, the court proposed a series of relevant inquiries, including the relatedness of the parties’ respective goods or services; the extent to which the junior user has “added his or her own expressive content to the work beyond the mark itself”; whether the timing of the junior use suggests “a motive to capitalize on popularity of the senior user’s mark”; the artistic relation of the mark to the underlying work; and whether the junior user has made statements or engaged in any conduct, either publicly or privately, “that suggests a non-artistic motive.” The court noted that under this new test, artistic relevance is merely one consideration, and that the absence of a First Amendment-protected “artistic motive” is not limited to situations where defendant’s use of the mark is explicitly misleading. In applying the newly formulated test, the court explained that “to adequately protect First Amendment interests, the objective facts may sometimes excuse further inquiry into the junior user’s subjective motives.”

As the parties could not have anticipated that the court would formulate a new test to determine whether a First Amendment-based restriction on Lanham Act liability is applicable to National Geographic’s titles at issue, the court denied National Geographic’s motion to dismiss without prejudice, and permitted plaintiff to amend its complaint and National Geographic to move to dismiss under the newly formulated test.

The court granted National Geographic’s motion to dismiss Stouffer’s federal unfair competition claim with prejudice, based on allegations of trade dress infringement over the documentaries’ product packaging and intangible elements. As to product packaging, Stouffer failed to clearly identify the elements of its packaging claimed to be protectable trade dress, and the side-by-side comparison in the complaint showed “a clear distinction, not similarity.” The court further rejected Stouffer’s attempt to cast “his entire style of documentary-making [as] protectable trade dress,” which, as the court explained, amounted to a “set of aesthetic choices with no obvious source-identifying role.”

The court also dismissed Stouffer’s copyright infringement claim, without prejudice. Stouffer claimed that a single episode of National Geographic’s Untamed America series, entitled “Mountains,” copied elements of a Wild America episode titled “Bighorn!” such as voice-over narration “by an iconic individual,” narration “immediately following the introductory credits,” segments focused on specific animals and “slow-motion action shot[s].” The court held that Stouffer failed to allege that National Geographic copied any protectable elements of “Bighorn!” but granted leave to amend because the court was not convinced that Stouffer could never state a plausible copyright infringement claim.