Nat Geo wins nature doc TM fight on 1st Amendment grounds
A Colorado federal court has dismissed a trademark infringement suit brought by the host of the long-running nature documentary “Wild America” against National Geographic.
But the case is perhaps most notable for its revision of the law around First Amendment-based free speech defences in trademark infringement suits.
Marty Stouffer, host of the “Wild America” series which aired on Public Broadcasting Service (PBS) from 1982 to 2005, sued National Geographic over a series of nature programmes which he said traded off his show’s reputation.
A Nat Geo (the broadcaster’s nature-focused channel) executive contacted Stouffer in 2010 seeking his permission to title an upcoming series “Wildest America” or “Wild Americas”.
Stouffer rejected the request, considering it to be too close to the name of his TV series, for which he owned a federal trademark.
Nat Geo eventually opted for the name “Untamed America” in the US, and used the “Wild America” title internationally.
Stouffer accused the show, and a subsequent series called “America the Wild”, of copying the “minute details” of his own show, down to a physical resemblance between him and Nat Geo’s host.
The Rogers test
National Geographic argued that the titles were protected under the First Amendment of the US Constitution, which guarantees the right to free speech.
First Amendment defences in US trademark suits are normally evaluated under a test laid down by the US Court of Appeals for the Second Circuit in its 1989 decision in Rogers v Grimaldi.
The Rogers test holds that the title of expressive work is protected from trademark infringement claims under the First Amendment, where it does not explicitly mislead as to the source or content of a work.
That’s because, the Second Circuit ruled, “the danger of restricting artistic expression” in such cases outweighs the risk of confusion among consumers.
The Rogers test, while not a formal standard or law, has been adopted in practice by other Circuits, including the Second, Fifth, Sixth, Ninth, and Eleventh Circuits.
But Stouffer’s suit against National Geographic was heard by the US District Court for the District of Colorado, which falls under the jurisdiction of the Tenth Circuit, which has not adopted Rogers.
According to the Colorado court, Rogers is “needlessly rigid and fails to account for the realities of each situation”.
Nat Geo entitled to First Amendment protection
The court instead opted for an alternative test based on six factors, which include to what extent the user of a title has added their own “expressive content” beyond the mark itself.
According to the court, Stouffer had not detailed any similarity between the shows beyond elements common to many nature documentaries, like following animals and showing them in conflict.
It also found that “Marty Stouffer and Casey Anderson look hardly at all alike,” so Stouffer’s claims based on the resemblance between them were “rejected out of hand”.
“For all these reasons, the court finds that, even viewing Stouffer’s allegations in the light most favourable to him, the objective facts establish that National Geographic’s titles for the accused series deserve First Amendment protection, even if Stouffer could prove likelihood of confusion,” the decision stated.
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