District court makes up a new, worse test for TM claims against noncommercial speech

Stouffer v. Nat’l Geographic Partners, LLC, 2019 WL 3935180,
No. 18-cv-3127-WJM-SKC (D. Colo. Aug. 20, 2019)
Stouffer, who (with his coplaintiff production company and
his brother, who is not a plaintiff) produced the Wild America nature
documentary series, sued National Geographic for trademark infringement,
copyright infringement, and unfair competition for its “Wild” productions. The
court developed a new test for evaluating the trademark claims and thus
denied NG’s motion to dismiss without prejudice to a new argument under the
court’s test; granted NG’s motion to dismiss with prejudice as to Stouffer’s
trade dress claim; and granted NG’s motion without prejudice as to Stouffer’s
copyright cause of action. On trademark, the court brilliantly diagnoses the
current cracks in Rogers and then comes up with a much worse
alternative, because it loses sight of the reason to have a First
Amendment-protective test for noncommercial speech in the first place: to
prevent unwarranted suppression of speech in the absence of very clear reasons
to expect consumer deception.
For 14 years starting in 1982, PBS regularly broadcast the
Wild America series. It was very popular for a PBS show.  The Stouffer brothers allegedly “developed a
unique filming style for the show, which utilized slow motion, close-ups, and
time lapses to give viewers a more immersive experience than other nature and
wildlife documentary programming.” The series also allegedly became known for
an image of two bighorn rams butting heads. After Wild America’s run ended on
PBS, the brothers continued to produce direct-to-video nature documentaries
under the “Wild America” mark and produced a feature film titled “Wild
America,” which depicted their childhood and the origins of their passion for
nature and filmmaking. The original episodes are still available on DVD,
streaming, and syndication on TV.  The
production company has a registered trademark for “Wild America.”
National Geographic has TV channels, Nat Geo TV and Nat Geo
WILD (the latter launched in 2010) that feature nature-oriented documentary
programming. Stouffer and National Geographic allegedly “engaged in numerous
discussions regarding [National Geographic] potentially licensing or
purchasing” Stouffer’s Wild America film library. In 2010, a Nat Geo TV
executive e-mailed Stouffer, asking permission to title an upcoming natural
history miniseries “Wild Americas” or “Wildest Americas.” Stouffer declined,
and National Geographic ended up airing the series in 2012 under the title
“Untamed Americas” within the United States, and “Wild America” outside of the
United States. Although the series “can be purchased under the title Wild
America and shipped into the United States,” Stouffer didn’t allege that
National Geographic had any control over such sales.
 

Stouffer version and foreign National Geographic version

In 2013, National Geographic released a television series
titled “America the Wild.” Stouffer alleged that America the Wild “replicat[es]
the most minute details of Wild America in its production,” as shown by “virtually
indistinguishable” titles; “several episodes” of both series in which the host
interacts with a grizzly bear that he raised from a cub (in the following still
shots, Marty Stouffer/Wild America is on the left and Casey Anderson/America
the Wild is on the right) [“interacts” is a word unambiguously signalling that
there will be no substantial similarity in expression]; 

Two interactions with bears, including a high five

interacting with rams,
supposedly “invoking the imagery from Wild America’s introductory scene, in
which two rams butt heads dramatically” (though the court noted that ram with
which Casey Anderson butts heads is stuffed); 
“interacts with rams”
actual “copy[ing]” of “many
iconic images from Wild America, including, among others, the image of two big
horn sheep head-butting one another”; a similar “structure” in “many” episodes,
namely, “introducing an animal, following said animal, recording footage of the
animal in conflict, and providing information about the animal” [you can guess
how well this allegation is going to go]; “elements” such as “animal point of
view camera shots, slow-motion action shots, anthropomorphized story-telling
and presentation; [wide-angle nature] transition scenes between segments; and
close-up shots of animals in their native habitats” [hoo boy]; the hosts
“pos[ing] for a photo shoot” in the middle of an episode in a similar way [as a viewer, I can confidently state that shirtless v. not shirtless is not similar]; 
a shirtless man with camera equipment and a man in full gear with camera equipment
“an
uncanny similarity between each show’s host,” with Casey Anderson adopting an
“appearance and persona [that] closely resemble[s] the distinctive look and
style of Marty Stouffer” [oh my]; 
two white men with facial hair and backpacks
and “a similar mark and style for DVD
packaging” [I can’t decide whether this or the persona allegation is
the wildest, no pun intended, based on the images in the complaint].
 

they’re both boxes?

In 2014, National Geographic premiered “Surviving Wild
America,” featuring “two Australian hosts exploring the Okefenokee Swamp,
located in the Southeastern region of the United States.” In 2018, National
Geographic premiered another nature documentary series, “America’s Wild
Frontier.” The four series are the accused series.
I’m going to do the trade dress/copyright issues first,
because they are far more straightforward.
Trade dress: Stouffer also alleged infringement of “[s]ome
of Wild America’s most iconic imagery and branding, including but not limited
to, the image of two big-horn rams butting head[s] and host Marty Stouffer’s
on-screen persona” and the packaging of the DVDs. As to the packaging, Stouffer
didn’t clearly identify the elements of the trade dress that were allegedly
protectable. “Moreover, although he claims ‘a similar mark and style for DVD
packaging,’ his side-by-side comparison plainly shows otherwise.” Comparisons
to outside-the-US packaging were also irrelevant, since there was no allegation
that National Geographic could be liable for its actions outside of the United
States. “Indeed, inclusion of these particular side-by-side comparisons in the
complaint seems intentionally designed to mislead.” The relevant side-by-side comparison—“presumably
one of the most salient examples he could provide”—showed that he couldn’t.
As for the intangible elements, “the image of two big-horn
rams butting head[s],” “host Marty Stouffer’s on-screen persona,” and “the
overall atmosphere of [the Wild America] programming,” that also failed.  Stouffer seemed to be referring to the
allegedly “uncanny similarity” between himself and Casey Anderson, and/or in
his interactions with a grizzly bear he raised from a cub, as Casey Anderson
allegedly also did. As for “overall atmosphere,” the court considered that a
reference to elements such as “animal point of view camera shots, slow-motion
action shots, anthropomorphized story-telling and presentation; [wide-angle
nature] transition scenes between segments; and close-up shots of animals in
their native habitats.”
First, this wasn’t a clear and definite list, as
required.  Second, Stouffer just couldn’t
plausibly allege that “his entire style of documentary-making” was protectable
trade dress. “Stouffer is claiming a set of aesthetic choices with no obvious
source-identifying role.”  Relatedly, the
elements alleged seemed super functional, and Stouffer neglected to respond to
National Geographic’s arguments on that point.
Copyright: Stouffer’s claim focused on an Untamed Americas
episode titled “Mountains” and a Wild America episode titled “Bighorn!” The
alleged copying:
a. [T]he introduction to the
episode, where two rams head-butt one another as the introductory music
crescendos;
b. Voice-over narration of the
episode by an iconic individual [Marty Stouffer and actor Josh Brolin,
respectively]. The narration in both episodes begins immediately following the
introductory credits;
c. Segments focused on specific
animals. Bighorn! includes a segment about a mouse taking care of its young;
Mountains includes a segment about [a] beaver taking care of its young. Both
Bighorn! and Mountains include a segment on bighorn sheep mating season;
d. Both episodes use the iconic
nature slow-motion action shot popularized by Wild America, particularly during
the segments on bighorn sheep. During those segments, both episodes feature a
slow motion shot of two bighorn sheep ramming one another.
National Geographic successfully argued that these elements
were “merely ideas, non-protectable tropes, and scènes à faire common in nature
programs.” Stouffer argued that the court should watch the episodes, but that
was no substitute for pleading actionable similarities.
Stouffer argued that he adequately pleaded infringement
because an original selection and arrangement of unprotected elements is
protectable.  Though courts have
sometimes allowed claims to proceed based on “a significant number of
unprotectable elements” in “a particular sequence,” Stouffer didn’t allege as
much here. He only alleged a little bit about sequence, and “barely a handful”
of relevant comparisons, which were, “with the possible exception of an
introductory head-butting-with-musical-crescendo sequence element, …
qualitatively very weak even as compared to other unprotectable ideas.”
Voiceover narration by an iconic individual that begins immediately following
the credits, “[s]egments focused on specific animals,” segments about animals
taking care of their young, and “slow-motion action shot[s]” “are so standard
as to essentially define the nature documentary genre.”
Wild America might’ve made these elements standard, but even
so, they’re still unprotectable ideas or procedures under §102(b). He didn’t
plausibly allege that National Geographic’s selection and arrangement amounted
to copyright infringement.
National Geographic argued that the First Amendment
protected its titles against all trademark claims. The Tenth Circuit hasn’t
adopted Rogers, or rejected it, so the court went through an extensive
history of Rogers and its related offshoots.  “No party has cited a case in which a court
rejected the Rogers approach when presented with an artistic use of a
trademark. But see PAM Media, Inc. v. Am. Research Corp., 889 F. Supp. 1403,
1406 (D. Colo. 1995)” [rejecting Rogers in the context of a dispute over
the name of a radio talk show, because a talk show doesn’t have fixed content
(and thus is apparently not expressive in the same way as a movie)]. Cardtoons,
L.C. v. Major League Baseball Players Association, 95 F.3d 959 (10th Cir.
1996), didn’t reject Rogers, it just said that good parodies weren’t
confusing and cited Rogers “with approval (but without elaboration) for
the general notion that ‘the public’s interest in free expression’ needed
protection in the context presented.” Utah Lighthouse Ministry v. Foundation
for Apologetic Information & Research, 527 F.3d 1045 (10th Cir. 2008),
applied the traditional circuit LOC test to a parody website and found no
triable issue on confusion.  Stouffer
argued that the Tenth Circuit thus used the usual LOC test, rather than Rogers,
where artistic expression was at issue, but Utah Lighthouse was another
parody case, not an “artistic expression” case and had “nothing to say directly,
and barely anything to say indirectly, about the Rogers test.”
But what kind of Rogers test should the court
consider? It evaluated Parks v. LaFace (artistic relevance; hardly a
barrier here); Twentieth Century Fox Television v. Empire Distribution, Inc.,
875 F.3d 1192 (9th Cir. 2017) (Rogers applies to title v. title disputes
as to other artistic uses); Cliffs Notes, Inc. v. Bantam Doubleday Dell Pub.
Grp., Inc., 886 F.2d 490 (2d Cir. 1989) (Rogers doesn’t apply directly
to expressive work v. expressive work cases, but a First Amendment-sensitive
LOC test accommodating Rogers-type concerns should); and Gordon v. Drape
Creative, Inc., 909 F.3d 257 (9th Cir. 2018) (“explicitly misleading” doesn’t
mean “explicitly misleading”).  As the
court read Gordon, the Ninth Circuit no longer requires “an overt claim
or explicit reference.” Gordon announced that “[i]n some instances, the
use of a mark alone may explicitly mislead consumers about a product’s source
if consumers would ordinarily identify the source by the mark itself.” “This is
a significant innovation, given the Ninth Circuit’s previous statement that ‘the
mere use of a trademark alone cannot suffice to make such use explicitly
misleading.”” E.S.S. Entm’t 2000 v. Rock Star Videos, 547 F.3d 1095, 1100 (9th
Cir. 2008) (emphasis added). Gordon “narrowed that principle to its
factual context by saying that ‘it was clear [in E.S.S., which involved the use
of a mark on a building depicted in a videogame] that consumers would not view
the mark alone as identifying the source of the artistic work.’”
[Given the damage done by Gordon, which the court
here seems to understand, I am more convinced than when I started to think
about this that the §43(a)(1)(B) case law on literal versus implicit falsity
could do some good to explain what the hell is going on.  “Literal falsity by necessary implication” is
treated as explicit falsity where there is no ambiguity about the message being
conveyed—where every linguistically (etc.) competent consumer would understand
what claim is being made.  Gordon
can be made coherent, if not great, by reference to that idea, in contrast to
the idea of ambiguity.]
The court here also noted that Gordon said both that
“consumers ‘do not expect [titles] to identify’ the ‘origin’ of the work,” or
in other words, that titles are not among the uses of marks that can be
inherently “explicitly misleading” but also approvingly quoted Rogers
statement “that ‘misleading titles that are confusingly similar to other
titles’ can be explicitly misleading, regardless of artistic relevance.” Gordon
held that a “relevant consideration” in deciding whether the use of the
mark alone can be explicitly misleading “is the degree to which the junior user
uses the mark in the same way as the senior user.” Thus, a TV series “Law &
Order: Special Hip-Hop Unit” might be explicitly misleading. Another relevant
consideration is “the extent to which the junior user has added his or her own
expressive content to the work beyond the mark itself.” [That is,
transformativeness.] In Gordon, there was a triable issue of whether defendants
simply used Gordon’s mark with minimal artistic expression of their own, and
used it in the same way that Gordon was using it.
With that summary, the court began its analysis by agreeing
that the Lanham Act needs a limiting construction to protect First Amendment
interests. In addition, to avoid chilling effects, this test must be readily
applicable before trial and, ideally, before a full LOC multifactor analysis:
The First Amendment requires that
likelihood of confusion be tolerated in some circumstances, but if the test is
too simple and mechanical, it creates the risk that senior users of a mark end
up with essentially no protection every time the junior user claims an artistic
use. On the other hand, the traditional likelihood-of-confusion test often
creates a fact question that cannot be resolved without a trial. If a junior
user must wait that long to find out if the First Amendment protects his or her
use of the mark, it might unduly chill expression. It might also provide an
incentive for a senior user to bring a so-called “SLAPP,” or strategic lawsuit
against public participation, in the guise of a trademark dispute. Thus, the
First Amendment-based limiting construction on the Lanham Act should provide a
test that can be applied as early as possible in the lawsuit, to the extent
consistent with both parties’ interests.
Parks and Gordon, however, convinced the court
to avoid adopting Rogers in its exact formulation.  Parks, uniquely, treated artistic
relevance as a question of fact, rather than an objective question of law.  The court here pointed out that the holding
that “Rosa Parks” might not have artistic relevance to a song with the lyric
“move to the back of the bus” was dumb (except the court used much nicer
words).  Instead, the Sixth Circuit was
motivated by the suspicion that Outkast chose its title to grab attention
rather than from an “artistic motive” [which is not incompatible with attention
seeking in the slightest!]. But Rogers forced the Sixth Circuit to cram
that concern into artistic relevance. The court here agreed with “the Sixth
Circuit’s broader implicit point, namely, that there must be some way of
addressing instances where there appears to be a demonstrable lack of artistic
motive.”  [So far, this analysis has been
really careful, although I definitely don’t agree with all of it.  But the court here utterly fails to explain
why an artist can’t seek to gain attention through the use of an artistically
relevant symbol that is also a mark, whether or not the use is a reference to
the trademark owner (yes in Parks, no in Empire, not really in Gordon).  The First Amendment has long respected the
right of noncommercial speakers to choose their topics, even if they seek to
profit by their choices.]
Gordon was likewise “analytically messy and divorces ‘explicitly
misleading’ from its plain meaning— converting it into a mere label applied to
uses of a mark that satisfy the first Rogers inquiry but not the second.
But Gordon, like Parks, was constrained by precedent while trying
to prevent what it suspected to be an abuse of Rogers. Gordon
therefore makes its point through an awkward attempt to avoid looking like it
is overruling what it does not have the power to overrule.”  [Or, Gordon contradicts precedent
without going en banc to do so.]  But the
court here also agreed with Gordon’s motivation: “it seems intuitively
incorrect that the junior user may always lawfully use the senior user’s mark
where there is minimal artistic relevance, objectively speaking, and a lack of
any overtly misleading claim about source, sponsorship, etc. Gordon is also
correct at least to suspect non-artistic motives where the junior user uses the
mark in the same channels, and in basically the same way, as the senior user.” 
[This analysis highlights the problem with trying to use
scope to constrain rights granted to “trademarks” that are fundamentally just
ornamental/communicative.  Gordon
is a bad case at bottom because the defendant was using “honey badger don’t
care” as a punchline, which is a communicative use. The Gordon court
didn’t notice that the fact that the plaintiff was using it the same way was a
reason the plaintiff didn’t have a real mark/at best owned a mark whose scope
didn’t extend to the punchline of a greeting card, not a reason that the
defendant was a bad guy.  The facts of
the instant case likewise show the problem with suspecting “non-artistic
motives” on the defendant’s side when the parties’ uses are both
artistic/communicative uses: there’s self-evidently an artistic reason to call
nature documentaries about American animals some variant of “wild
America.”  The issue is that the term is
highly descriptive. And we might nonetheless want to provide Stouffer with
narrow rights—but it’s not because National Geographic lacks “artistic motives”
for its choice.  If anything, Gordon plus
this case suggest that the Second Circuit might’ve had the better idea in
carving out title-v-title disputes from Rogers coverage because of the
analytical difficulties presented.]
So the court here formulates its own test:
Did the junior user have a genuine
artistic motive for using the senior user’s mark or other Lanham Act-protected
property right? Among the relevant questions a court may ask when discerning
the junior user’s motives include the following:
• 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”
[Citing Gordon and then Hart v. Elec. Arts, Inc., 717 F.3d 141 (3d Cir.
2013), making clear that the court here understood that Gordon wanted to
add transformative use to Rogers despite not using the term]?
• 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? This would include “explicitly misleading”
statements, as defined before Gordon, but is not confined to that
definition.
• Has the junior user made any
statement in private, or engaged in any conduct in private, that suggests a
non-artistic motive?
Given the court’s incisive analysis of the precedents above,
this new test is profoundly misguided—it’s worded to require discovery and keep
cases going, even if the court here purports to want to apply it in a way that
doesn’t often require discovery and a full merits inquiry.  Among other things, the questions appear to require
the court to engage in art criticism to evaluate the quality of the artistic
reference.  As the court explains, “artistic
relevance to the underlying work, service, or product is only a factor to
consider here, not a threshold inquiry.” 
[Note the reference to services or products—by losing the connection to
noncommercial speech the court has wandered even further from the point of modifying
the infringement test.] 
The court then criticizes the “minimal artistic relevance” prong
in ways I find correct but deeply inconsistent with the test it came up with.  First, artistic relevance can disfavor
abstract works:
If a jazz trio writes a wordless
piece titled ‘Rosa Parks,’ how does one judge the artistic relevance of that
title? Is the title obviously irrelevant (because there are no words in which
to ground a finding of relevance) or is it at least arguably relevant (because
there are no words through which to confirm a finding of irrelevance)? If it is
arguably relevant, what do the arguments turn on? Is one style of jazz more
reminiscent of Rosa Parks than another? As these rhetorical questions
illustrate, “artistic relevance” sometimes raises more problems than it
resolves.
Second, incongruity, irrelevance,
and randomness can themselves be artistic choices. Imagine that the jazz trio
names a suite of new pieces after toothpaste brands that a member of the trio
encountered one day at the grocery store. It is difficult to say that the
trio’s choice to associate itself with the randomly mundane can never have
artistic or expressive value. Thus, “artistic relevance” is one factor to
consider when evaluating whether the junior user acted on a genuine artistic
motive or, in contrast, on a desire to profit from the senior user’s goodwill.
You might have noticed the sudden swerve into bad
intent!  The court did too, and it didn’t
really want to go there, at least where defendants were likely to have pure
hearts.  “[T]o adequately protect First
Amendment interests, the objective facts may sometimes excuse further inquiry
into the junior user’s subjective motives.” 
In Rogers, the obvious artistic relevance to the story of the
film, “which is almost entirely Fellini’s original expressive content,” combined
with lack of evidence of misleading marketing of the film, would be enough to
satisfy the court’s test.  Rogers
also didn’t involve a competing product or service with which the film might
conflict, “nor evidence that Fellini was attempting to ride any wave of
popularity.”  [I will note that Ginger
Rogers’s films were in fact competing products, but the court apparently didn’t
think of them as directly competing in the proper way.  So if you are persistently well-known like
Ginger Rogers, then there’s more scope for expressive uses about you than if
you’re a sudden success?  Seems weird and
fact-intensive in a way that is not likely to work out well for avoiding a full
merits inquiry.]  “[E]ven if it had been
proven that Fellini’s true motivation all along was a desire to tap into Ginger
Rogers’s fame, the title is protected by the First Amendment.” But then a
plaintiff should get discovery into the motives of the jazz trio because the
artistic relevance is less obvious?  That
seems bizarre and not helpful to abstract art in the way the court hopes.  Perhaps the court likewise assumes that the
lack of competition will make a difference in the toothpaste-jazz example, but
that just shows how multifactor balancing makes cases unpredictable in ways
counter to the First Amendment/anti-speech-chilling motivations for Rogers-like
tests.
A core problem with the distinction the court wants to make,
to find the black-hearted defendants, is that Fellini’s true motivation was to
make a film about two dancers who were called Fred and Ginger—and one sensible
way to characterize that motivation is that it at least includes “a
desire to tap into Ginger Rogers’s fame” to make the story intelligible.  If you slice artistic motivation into true
artistry and desire to get attention, you both misdescribe the world and bake
incoherence into the test.
Anyway, if the defendant passes this test, no liability; if
it fails, then we go on to the LOC test, with no additional weight to the
expressive use and no requirement that the likelihood of confusion be
“particuarly compelling” as in Twin Peaks, because that approach would
be “ultimately unworkable in practice.”
Because the parties couldn’t anticipate this new test, they
get another chance—Stouffer to amend the complaint and National Geographic to
move to dismiss under the new test. 
National Geographic might also win on descriptive fair use and similar
concepts (specifically the narrowness of Stouffer’s highly descriptive mark).

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