Genuine Artistic Motive Wins Over Trademark Infringement Allegation

The right to Freedom of speech in general enables us to express ourselves freely in different forms. Trademark law, on the other hand, protects the rights of such creative disposition of ideas by the creator as a ‘source signifier’ However, the interaction between the former and the latter right can lead to several ambiguities, for instance, the first Amendment firmly states that “Congress shall make no law…abridging the freedom of speech”[1]Meaning thereby that the freedom of speech in a commercial or non-commercial setup may affect the way a trademark proprietor can preserve his/her exclusive rights over the trademark as well as the audience.

However, whether such freedom of speech acts as a defense against trademark infringement or whether it is compatible with the Lahman Act is often a debated question before the U.S. Courts.

One such judgement recently pronounced [Stouffer v. National Geographic Partners LLC (May 8, 2020)][here] [here] is relevant because back in the year 2019 in the same case the U.S. District Court of Colorado[2][here], set out a new test for deciding infringement of registered trademarks, overturning a previously prominent two-pronged approach developed in Roger v Grimaldi[3].

Marty Stouffer and Marty Stouffer Productions Ltd. (hereinafter referred to as ‘plaintiffs’) alleged that their company produced nature documentaries and ‘Wild America’ was one of their famous nature documentary series. They also federally registered the mark ‘Wild America’ in the year 1982 itself.  “Wild America”, was broadcasted by the Public Broadcasting Service during the 1980’s, during which it was one of the top ten viewed shows on the network. The plaintiffs claimed that they developed “a unique filming style for the show, which utilized slow motion, close-ups, and time lapses to give viewers a more immersive experience.”  This series was regularly aired, could be purchased as DVD sets, and could also be viewed on online streaming platforms such as those run by Google, Amazon and Apple.

The Defendants, National geographic, and other affiliated partners launched their television channel in the year 2001 which also ran and broadcasted nature documentaries.

However, later in 2010 Nat Geo approached the plaintiffs to take their approval for using the word “Wild Americas” or “Wildest Americas” for their own nature series, which was objected to by the plaintiffs because the titles “Wild Americas” or “Wildest Americas” sounded nearly identical to their own trademark.

Later in the year 2012 Nat Geo aired its own series with the name “Untamed Americas” within U.S. and Wild America outside, and further released programs with the names “America the Wild”, “Surviving Wild America” and “America’s Wild Frontier” The plaintiffs sued the defendants for federal trademark infringement (15 U.S.C. § 1114(1)), federal trademark dilution (15 U.S.C. § 1125(c)), unfair competition under Colorado common law; and violation of the Colorado Consumer Protection Act (“CCPA”), and highlighted that Nat Geo has replicated every minute details of their episodes such as 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”

The National Geographic moved a motion to dismiss the plea in light of the decision in Rogers v Grimaldi[4] . The Court in Rogers v. Grimaldi had propounded a test which protected the titles of the defendants in form of the First Amendment rights against the Lanham Act. This popularly came to be known as the “Rogers Test”.

The U.S Lanham Act, establishes what could amount as trademark infringement. According to the provisions of the Act, using an existing trademark or its similar reproduction without the consent of the original owner in any commercial, imitation, or identical copy for wrongful gain, to confuse or deceive the public or advertise their own sale makes one liable for trademark infringement.

The Second circuit court came up the ‘Roger’s Test’, which is a two-pronged test under which such infringement claim under the Lanham cannot be maintained in light of the First Amendment which protects the individual’s right to Freedom of artistic expression and creativity.  The test seeks to check the following:

  1. Does the title have “some artistic relevance” to the work in question, (later described as “the appropriately low threshold of minimal artistic relevance”) to the underlying work? [If no, then the traditional likelihood of confusion test applies] [If yes, then a second question is to be answered]
  2. Does the title “explicitly mislead as to the source or the content of the work”. If yes, the traditional likelihood confusion factors apply. If no, then “the danger of restricting artistic expression” outweighs the likelihood-of-confusion factors as a matter of law.”

However, since the Tenth circuit court had neither approved nor disapproved the test, the district Court was free to decide whether  to or not to adopt Rogers test. The court asked itself three questions and in answering these questions firstly found that the Lanham Act needed a limiting construction to protect the First Amendment.  Further, the Court found the Rogers test was lacking for application, and hence decided to come up with another test for determination of infringement for filing the dearth of detail in the earlier judgement.

The court firstly stated as follows: “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.”

The Court then evaluated six questions relevant for coming to a decision in such circumstances:

  1. The use of the impugned trademark and it’s similarity to the product of the plaintiff;
  2. The extent of which the trademark in question has “added their own expression beyond the existing mark”;
  3. The timing of the junior use and if it suggests any attempt to capitalize on the existing fame of the senior user’s mark;
  4. The artistic co-relation to the underlying service or product of the mark by the user in dispute;
  5. Any use or display of public misleading statement to create a sense of non-artistic motive behind the use of such mark by the junior user; and
  6. Any use or display of public misleading statement to create a sense of non-artistic motive behind the use of such mark by the junior user;

By formulating and applying this new test, the court explained that they could protect the artistic integrity under First amendment while being objective about any other factors that could have driven a non-artistic motive or to mislead the consumer. In light of the same brief analysis, the court announced that, “in deciding the reach of the Lanham Act in any case where an expressive work is alleged to infringe a trademark, it is appropriate to weigh the public’s right of free expression against the public interest of avoiding consumer confusion”.

Therefore on May 8, 2020, U.S. District Court for the District of Colorado granted the Defendant’s motion to dismiss the claims of the plaintiffs due to lack of claims and inability to identify the elements to be protected by this law and found that the selection of the title by the National Geographic to be purely set of aesthetic choices with no obvious source-identifying role meaning thereby that the use of titles, is an obvious association to the content of the series in question, and led to an objective inference to an artistic motive. The plaintiffs’ copyright claim was dismissed as it lacked protectable genuine elements, styles of narration, or sequence of display and the same did not showcase any individual unique creation of the producers. Since the complaint totally lacked any genuine parallels between the shows, the case was decided in favor of the Defendants.

[1] US Const. amend. I.

[2] Stouffer v. Nat’l Geographic Partners, LLC, No. 18-cv-3127-WJM-SKC, 2019, (D. Colo. Aug. 20, 2019),

[3] 875 F.2d 994 (1989),

[4] 875 F.2d 994 (1989),

About Tanya Choudhary 5 Articles
Tanya Choudhary is a 4th Year Law Student pursuing B.A., LL.B. [Hons] specialization in Criminal Law/Constitutional Law from UPES School of Law, Dehradun. She is an avid reader, a curious student, and head over heels in love with questions starting with 'Why'. Her interests lie in subjects of Intellectual Property Law, Jurisprudence and Human Rights.

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