Monday, August 26, 2019

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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