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Stouffer v. National Geographic Partners, LLC

United States District Court, D. Colorado

August 20, 2019

MARTY STOUFFER and MARTY STOUFFER PRODUCTIONS, LTD, Plaintiffs,
v.
NATIONAL GEOGRAPHIC PARTNERS, LLC; NGSP, INC.; NGHT, LLC, d/b/a NATIONAL GEOGRAPHIC DIGITAL MEDIA; NGHT DIGITAL, LLC; NGC NETWORK US, LLC; and NGC NETWORK INTERNATIONAL, LLC, Defendants.

          ORDER GRANTING IN PART AND DENYING WITHOUT PREJUDICE IN PART DEFENDANTS' MOTION TO DISMISS

          William J. Martínez United States District Judge.

         Plaintiffs Marty Stouffer and Marty Stouffer Productions, LTD (together, “Stouffer, ” unless the context requires otherwise), sue Defendants (collectively, “National Geographic”) for trademark infringement, copyright infringement, and unfair competition.[1] Currently before the Court is National Geographic's Rule 12(b)(6) Motion to Dismiss Plaintiffs' Complaint. (ECF No. 23.) For the reasons explained below, the Court:

• denies National Geographic's motion without prejudice as to Stouffer's trademark causes of action-although the Court finds merit in the First Amendment concerns National Geographic raises, the Court believes the test for accommodating such interests should be somewhat different than what National Geographic has advanced, and no party has had an opportunity to argue under the test formulated by this Court;
• grants National Geographic's motion with prejudice as to Stouffer's trade dress cause of action; and
• grants National Geographic's motion without prejudice as to Stouffer's copyright cause of action.

         In light of these rulings, Stouffer will be given an opportunity to amend his complaint and National Geographic will be given another opportunity to move to dismiss. Should National Geographic file that motion, the stay of discovery will remain in place until the motion is resolved.

         I. LEGAL STANDARD

         Under Federal Rule of Civil Procedure 12(b)(6), a party may move to dismiss a claim in a complaint for “failure to state a claim upon which relief can be granted.” The 12(b)(6) standard requires the Court to “assume the truth of the plaintiff's well-pleaded factual allegations and view them in the light most favorable to the plaintiff.” Ridge at Red Hawk, LLC v. Schneider, 493 F.3d 1174, 1177 (10th Cir. 2007). In ruling on such a motion, the dispositive inquiry is “whether the complaint contains ‘enough facts to state a claim to relief that is plausible on its face.'” Id. (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). Granting a motion to dismiss “is a harsh remedy which must be cautiously studied, not only to effectuate the spirit of the liberal rules of pleading but also to protect the interests of justice.” Dias v. City & Cnty. of Denver, 567 F.3d 1169, 1178 (10th Cir. 2009) (internal quotation marks omitted). “Thus, ‘a well-pleaded complaint may proceed even if it strikes a savvy judge that actual proof of those facts is improbable, and that a recovery is very remote and unlikely.'” Id. (quoting Twombly, 550 U.S. at 556).

         II. BACKGROUND

         Stouffer alleges substantially as follows.

         A. The “Wild America” Series

         Beginning in 1982 and continuing for the next fourteen years, the Public Broadcasting Service (“PBS”) regularly televised the Wild America nature documentary series. (¶¶ 28, 30.)[2] During those fourteen years, Wild America “never fell out of the top ten most viewed television shows on PBS, ” and in some years it was “PBS's most-watched show.” (¶¶ 30-31.)

         Wild America was produced by Plaintiff Marty Stouffer Productions, LTD, a company founded by Plaintiff Marty Stouffer and his brother, Mark, to produce nature documentaries. (¶¶ 17, 19, 26-27.)[3] “Throughout Wild America's fourteen year run, the Stouffer Brothers 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.” (¶ 37.) The series also became known for an image of two bighorn rams butting heads. (¶ 137.)

         When Wild America's run ended on PBS, the Stouffer Brothers continued to produce direct-to-video nature documentaries under the “Wild America” mark. (¶ 33.) They also produced a feature film titled “Wild America, ” which depicted their childhood and the origins of their passion for nature and filmmaking. (¶¶ 44-45.)

         All Wild America episodes remain available to purchase on DVD, or to stream through major video-streaming platforms such as those run by Amazon, Google, and Apple. (¶ 46.) Through syndication, the original Wild America documentary series remains available to watch on television to this day. (¶¶ 39, 41.)

         Marty Stouffer Productions owns a trademark on “Wild America, ” which it federally registered in 1982. (¶ 29.)

         B. Stouffer's Discussions with National Geographic

         National Geographic launched a television station, commonly known as Nat Geo TV, in 2001. (¶ 53.) National Geographic launched a sister channel, Nat Geo WILD, in 2010. (¶ 54.) Both channels feature nature-oriented documentary programming. (¶¶ 53, 55.)

         In 2010 and 2011, Stouffer and National Geographic “engaged in numerous discussions regarding [National Geographic] potentially licensing or purchasing” Stouffer's Wild America film library. (¶ 59.) National Geographic “declined to purchase the Wild America Film Library, but asked [Stouffer] to keep [National Geographic] apprised of any updates regarding the sale of the film library.” (¶ 60.)

         C. National Geographic's “Wild”-Themed TV Programs

         On November 1, 2010, a Nat Geo TV executive e-mailed Stouffer, asking permission to title an upcoming natural history miniseries “Wild Americas” or “Wildest Americas.” (¶¶ 61-62.) Stouffer responded “that Wild America was trademarked and that both of [the] titles proposed . . . would be too close to the Wild America Mark.” (¶ 63.) 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. (¶¶ 65-66.) The series “can be purchased under the title Wild America and shipped into the United States” (¶ 68), but Stouffer does not allege that National Geographic has any control over such sales.

         Stouffer, unaware of the Untamed Americas series, continued discussions with National Geographic in 2012 about licensing or selling the Wild America film library. (¶ 69.) These discussions included “using Wild America footage to create content for a new, then-unnamed Nat Geo TV series starring television personality Casey Anderson.” (¶ 70.) These discussions did not bear fruit. (¶ 71.)

         In 2013, National Geographic released a television series titled “America the Wild.” (¶ 72.) Stouffer says that America the Wild “replicat[es] the most minute details of Wild America in its production” (¶ 73), as illustrated by:

• “virtually indistinguishable” titles (¶ 74);
• “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):
(Image Omitted.)
(¶¶ 75, 77);
• interacting with rams, supposedly "invoking the imagery from Wild America's introductory scene, in which two rams butt heads dramatically":
(Image Omitted.)
(¶77);[4]
• actual "copy[ing]" of "many iconic images from Wild America, including, among others, the image of two big horn sheep head-butting one another" (¶ 80), although Stouffer provides no side-by-side comparisons of such copying;
• 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" (¶ 81);
• "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" (¶¶ 82, 174);[5]
• the hosts "pos[ing] for a photo shoot" in the middle of an episode in a similar way:
(Image Omitted.)
(¶ 77);
• "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":
(Image Omitted.)
(¶ 79); and
• "a similar mark and style for DVD packaging":
(Image Omitted.)
(¶ 76).

         In 2014, National Geographic premiered “Surviving Wild America, ” another nature-focused series. (¶ 85.) It features “two Australian hosts exploring the Okefenokee Swamp, located in the Southeastern region of the United States.” (¶ 86.)

         In 2018, National Geographic premiered another nature documentary series, this one titled “America's Wild Frontier.” (¶ 87.)

         The Court will refer to the four National Geographic TV series at issue here- Untamed Americas, America the Wild, Surviving Wild America, and America's Wild Frontier-as the “Accused Series.” (¶ 88.) The Accused Series are available to purchase or stream through at least Amazon, Google, and Apple. (¶ 95.)

         D. Stouffer's Claims

         Based on the foregoing, Stouffer brings six causes of action:

• federal trademark infringement (15 U.S.C. § 1114(1)) (“Claim 1”);
• federal trademark dilution (15 U.S.C. § 1125(c)) (“Claim 2”);
• federal unfair competition (15 U.S.C. § 1125(a)) (“Claim 3”);
• unfair competition under Colorado common law (“Claim 4”);
• violation of the Colorado Consumer Protection Act (“CCPA”), Colo. Rev. Stat. §§ 6-1-101 et seq. (“Claim 5”); and
• copyright infringement (17 U.S.C. § 501) (“Claim 6”).

         III. ANALYSIS

         A. Trademark (Claims 1, 2, 4 & 5)

         National Geographic first argues that every cause of action “relate[d] to the titles” of the Accused Series must fail because those titles are protected by the First Amendment. (ECF No. 23 at 11.)[6] National Geographic asserts that this covers all title-focused claims under the Lanham Act (apparently referring to Claims 1 and 2) and all “related claims (e.g., state law unfair competition, deceptive trade practices, and right of publicity claims etc.)” (apparently referring to Claims 4 and 5). (Id. at 11 & n.9.) Stouffer responds that it is too early to consider National Geographic's First Amendment defense, and that he has otherwise adequately pleaded facts to resist the First Amendment defense. (ECF No. 49 at 6-18.) Stouffer does not argue, however, that National Geographic has improperly grouped Claims 1, 2, 4, and 5 for purposes of analysis. Accordingly, the Court will likewise treat them together.

         1. Traditional Elements of Liability

         Stouffer's Claim 1 is for infringement of a federally registered trademark. The Lanham Act establishes a cause of action for such infringement as follows:

Any person who shall, without the consent of the registrant-
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action by the registrant for the remedies hereinafter provided. . . .

15 U.S.C. § 1114(1).

         The ultimate question for liability under this cause of action is whether the party accused of infringement (often called the “junior user”) is likely to cause confusion by its use of the registrant's (the “senior user's”) mark. Courts in the Tenth Circuit evaluate likelihood of confusion under the six “King of the Mountain” factors:

(a) the degree of similarity between the marks;
(b) the intent of the alleged infringer in adopting its mark;
(c) evidence of actual confusion;
(d) the relation in use and the manner of marketing between the goods or services marketed by ...

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