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"Wild America" Trademark Is No Protection Against TV Series' Names

The U.S. District Court for the District of Colorado dismissed Wild America documentaries producer Marty Stouffer and his production company's trademark lawsuit over National Geographic's TV series use of the names including Untamed Americas and Surviving Wild America. Stouffer v. National Geographic Partners LLC, 18-cv-3127 (D.Colo. 2020). Marty Stouffer Productions (MSP), formed by Marty Stouffer and his brother Mark, produced the highly successful TV series Wild America that first aired on PBS in 1982 and for the following 14 years, as well as in syndication today. MSP obtained federal registration of the trademark "Wild America" in 1982. In 2010 and 2011, National Geographic talked to Stouffer a number of times about licensing the Wild America library for its cable channels, but the negotiations fell through. National Geographic asked for Stouffer's consent to allow National Geographic to name a new non-Stouffer-produced mini-series Wild Americas or Wildest Americas, but Stouffer declined. However, between 2012 and 2018, National Geographic TV started airing the new National Geographic TV series Untamed Americas (with the name Wild America for international distribution), America the Wild, Surviving Wild America, and America's Wild Frontier. Stouffer and MSP sued National Geographic Partners and several affiliated companies, including National Geographic Digital Media. Stouffer's complaint alleged federal trademark infringement and dilution under the Lanham Act, and deceptive trade practices and unfair competition under Colorado law. Colorado federal District Judge William J. Martínez dismissed the complaint with prejudice. The defendants had raised a First Amendment defense. District Judge William A. Martínez decided the test to be applied was: "Did the junior user have a genuine artistic motive for using the senior user's mark or other Lanham Act-protected property right?" Applying the "genuine artistic motive test," District Judge Martínez concluded in part in dismissing the lawsuit with prejudice: "The fact that National Geographic is using its titles to describe the content of the Accused Series weighs heavily in National Geographic's favor. The choice of a title for one's expressive creation is an expressive choice unto itself, including the choice of a descriptive title. Each of the Accused Series substantially focuses on America's wildlands. While the English language is notably quite expansive, the range of words to describe such programming is limited. Yet Stouffer would not allow even a synonym for 'wild' (i.e., 'Untamed Americas'). If trademarked words themselves and their synonyms are off-limits, then the artistic choice regarding a title becomes significantly constricted."

The district judge added: "The case might be different if Stouffer's Wild America series had been about, say, American teens engaging in risky behavior, and National Geographic's America the Wild covered the same or a similar topic. Given the looser relation between the title and the subject matter, the inference would be stronger that National Geographic chose its title primarily in hopes of benefiting from the goodwill created by Stouffer's trademark as it relates to programming about risky teenage behavior, and only secondarily (if at all) for artistic reasons. Here, however, National Geographic selected titles that correspond closely to nature documentary programming. Thus, the objective inference is strong that its motive was genuinely artistic."

The district judge added: "The case might be different if Stouffer's Wild America series had been about, say, American teens engaging in risky behavior, and National Geographic's America the Wild covered the same or a similar topic. Given the looser relation between the title and the subject matter, the inference would be stronger that National Geographic chose its title primarily in hopes of benefiting from the goodwill created by Stouffer's trademark as it relates to programming about risky teenage behavior, and only secondarily (if at all) for artistic reasons. Here, however, National Geographic selected titles that correspond closely to nature documentary programming. Thus, the objective inference is strong that its motive was genuinely artistic."

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Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and Professor of Music & Entertainment Studies at the University of Colorado's Denver Campus. For more information: http://www.stansoocher.com.