Rogers Gets a Rewrite: District Court Modifies First Amendment Analysis for Lanham Act Claims

Since the 1989 case of Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), courts have applied the Rogers test when an artistic work is alleged to have infringed a Lanham Act-protected right.  With litigants locking horns over the titles and other creative elements of their nature documentaries, the U.S. District Court for the District of Colorado proposed a revision to the two-pronged Rogers test in the case of Stouffer v. Nat’l Geographic Partners, LLC, No. 18-cv-3127-WJM-SKC, 2019 U.S. Dist. LEXIS 140947 (D. Colo. Aug. 20, 2019).

Plaintiffs Marty Stouffer and his eponymous production company produced and hosted a popular nature documentary series called Wild America, which aired for decades on PBS.  Stouffer and National Geographic had discussed the possibility of National Geographic licensing or purchasing some of his series, but National Geographic ultimately declined.  Stouffer then declined to give National Geographic his permission to title an upcoming natural history miniseries Wild Americas or Wildest Americas on the basis that the proposed titles were too similar to his federal trademark, WILD AMERICA, registered for television series.

In 2013, National Geographic premiered a nature documentary television series called America the Wild.  According to Stouffer, the National Geographic show was rife with similarities to his Wild America show, including the “virtually indistinguishable” titles, the opening sequence featured two rams head-butting each other as the music crescendoed, and the host, who bore an “uncanny similarity” to Stouffer himself.  Stouffer sued National Geographic for federal trademark infringement and dilution, copyright infringement, and unfair competition, among other claims.  To assess the allegations of trademark infringement in an expressive work, the U.S. District Court for the District of Colorado turned to the Rogers test.

Named after the Second Circuit’s opinion in Rogers v. Grimaldi, the Rogers test restricts Lanham Act liability in order to protect First Amendment interests.  Under the Rogers test, the use of a trademark in an artistic work is actionable only if the use of the mark: (1) has no artistic relevance to the underlying work, or (2) explicitly misleads as to the source or content of the work.  Although most courts require that an “explicitly misleading use” consist of an explicit indication or an overt claim, the Ninth Circuit has held that “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.”  Gordon v. Drape Creative, Inc., 909 F.3d 257, 270 (9th Cir. 2018).  When sending the Gordon case back to the district court for trial, the Ninth Circuit stated that the defendant’s use would be “explicitly misleading” if the jury found that the defendant “simply used Gordon’s mark with minimal artistic expression of their own, and used it in the same way that Gordon was using it.”  Id. at 271.

Having determined that the Tenth Circuit had never formally adopted the Rogers test, the District Court felt “free to decide” whether and how the test should apply.  Stouffer, 2019 U.S. Dist. LEXIS 140947, at *18.  The court agreed that the Lanham Act needed a limiting construction to protect First Amendment interests.  However, it also described the Gordon opinion as “correct to at least 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.”  Id.  (emphasis in original).  The court then declared that the appropriate question to ask was whether the junior user had a “genuine artistic motive for using the senior user’s mark or other Lanham Act-protected property right?”  To answer this question, the court identified several questions to discern the junior user’s motives, namely:

• “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? 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?”

Id. at *34-36 (emphasis in original) (internal citations omitted).

Notably, although artistic relevance is a factor in the court’s test, it is not a “threshold inquiry.”  For the court, artistic relevance as a threshold inquiry failed to account for artistic choices like irrelevance or abstraction.  The court also acknowledged that assessing the junior user’s artistic motive is subjective but reasoned that a subjective inquiry might be permitted “to adequately protect First Amendment interests.”  

Having declared an alternative to the Rogers test for its litigants, the district court denied National Geographic’s motion to dismiss Stouffer’s Lanham Act claims and granted Stouffer leave to amend his complaint and National Geographic leave to move to dismiss.

Turing to the other claims at issue, the court granted National Geographic’s motion to dismiss the trade dress claims with prejudice.  Although Stouffer claimed that National Geographic infringed the images of bighorn rams butting heads, as well as Stouffer’s own on-screen persona, the court determined that Stouffer failed to meet his burden of pleading that these intangible elements of unregistered trade dress were nonfunctional.  The court also granted National Geographic’s motion to dismiss the copyright claims without prejudice.  The court concluded that Stouffer had not plausibly alleged copyright infringement based on National Geographic’s selection and arrangement of the otherwise unprotectable ideas and procedures of the head-butting rams during the introductory music crescendo and the narration that immediately followed the opening credits.   

The case is Stouffer v. Nat’l Geographic Partners, LLC, No. 18-cv-3127-WJM-SKC, 2019 U.S. Dist. LEXIS 140947 (D. Colo. Aug. 20, 2019).