The Rogers Test Gets a Remake in Colorado
By Scott Hervey on April 22, 2021
In the 9th Circuit (as well as the 2nd, 5th, 6th, and 11th Circuits), the test for determining whether the use of a third-party trademark in an expressive work (i.e., use of a brand within a movie, TV series, video game, etc., including as part of the title of an expressive work) is the 2nd Circuit's test from the 1989 case of Rogers v. Grimaldi. The Rogers test was adopted by the 9th Circuit in Mattel, Inc. v. MCA Records (better known as the "Barbie Girl" case). Under the Rogers test, the use of a third-party mark in an expressive work does not violate the Lanham Act "unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work." As is evident, this is very different from the multifactor test adopted in AMF Inc. v. Sleekcraft Boats – (1) strength of the protected mark; (2) proximity and relatedness of the goods; (3) type of goods and the degree of consumer care; (4) similarity of the protected mark and the allegedly infringing mark; (5) marketing channel convergence; (6) evidence of actual consumer confusion; (7) defendant's intent in selecting the allegedly infringing mark; and (8) likelihood of product expansion." The reason for the differing treatment of expressive works is twofold: (1) they implicate the First Amendment right of free speech, which must be balanced against the public interest in avoiding consumer confusion; and (2) consumers are less likely to mistake the use of someone else's mark in an expressive work for a sign of association, authorship, or endorsement.
Under the Rogers test, the first inquiry is whether the use of the third-party mark has "some artistic relevance". The threshold for this test is extremely low; basically, if the level of artistic relevance is more than zero, this is satisfactory. If there is greater than zero artistic relevance in the use of the third-party mark, the next analysis is whether the use of the third-party mark explicitly misleads as to the source or content of the work. Although in most instances an "explicitly misleading use" requires an overt claim or an explicit reference to an association with the third-party mark. However, in Gordon v. Drape Creative, Inc., the 9th Circuit said that "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."
Last year a federal district court in Colorado (which is in the 10th Circuit) addressed a Rogers type claim which was a question of first instance for that court and the 10th Circuit. The case involved titles of nature documentary series; one producer claimed that the title of a National Geographic nature documentary series infringed the trademark rights in the title of the producer's prior series. The court declined to follow Rogers and adopted a new test.
In the 80s and 90s Marty Stouffer Productions produced a nature documentary series entitled Wild America that was televised on PBS. Today, episodes of Stouffer's Wild America are broadcast on television, can be purchased on DVD and are accessible through a variety of streaming services. National Geographic is a producer of documentary programming on its Nat Geo TV and Nat Geo WILD stations. National Geographic had explored with Stouffer the possibility of licensing or purchasing Stouffer's Wild America film library, but no deal was reached. In 2010, Stouffer declined Nat Geo's request to use the titles Wild Americas or Wildest Americas for a natural history miniseries, advising that those titles were too close to Stouffer's registered "Wild America" trademark. In 2012, National Geographic aired a series with the title Untamed Americas in the U.S. and the title Wild America outside of the US. National Geographic subsequently released nature-themed programs in the U.S. under the titles America the Wild, Surviving Wild America and America's Wild Frontier. Stouffer then sued Nat Geo for trademark infringement and other claims.
This being a case of first impression for this particular circuit court and the 10th Circuit, the court, in ruling on NatGeo's motion to dismiss, considered the purpose of the Rogers test – a means of limiting the application of the Lanham Act to protect First Amendment interests. While agreeing with the principal of the Rogers test, the court found faults with it and elected instead to create its own new test.
Displeased with the Rogers test, the Colorado district court adopted its own six non-exclusive factors to consider. Those factors are: (i) Do the senior and junior users use the mark to identify the same kind, or a similar kind, of goods or services; (ii) to what extent has the junior user "added his or her own expressive content to the work beyond the mark itself"; (iii) 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; (iv) in what way is the mark artistically related to the underlying work, service, or product; (v) 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; and (vi) has the junior user made any statement in private, or engaged in any conduct in private, that suggests a non-artistic motive?
And while the district court ultimately found for Nat Geo (as it would have under a strict application of the Rogers test), the interesting inquiry is why this court felt Rogers was insufficient. It seems that a significant factor in the court's reasoning was the 9th Circuit's holding in Gordon v. Drape Creative.
Gordon involved a trademark dispute between the owner of famous YouTube videos featuring a honey badger who coined the phrase "Honey Badger Don't Care" and subsequently registered trademarks for various goods including greeting cards, and Drape Creative who produced a greeting card using variations of Honey Badger Don't Care. The 9th Circuit, applying Rogers, found that the artistic relevance of Drape's use of Honey Badger Don't Care met the threshold of being more than zero, but ended up sending the case back to the district court in order to determine whether Drape's use was "explicitly misleading."
With the threshold of artistic relevance being so low and the requirement of an explicit or overt claim to meet the requirement of "explicitly misleading use", the court concluded that "trademarks registered for arguably artistic products and services are not worth the paper that the trademark registration is printed upon." Anyone can use a trademark, the court continued, "even to sell the same goods or service for which the trademark was granted, if the goods or service can be deemed 'art'." The court said that the Rogers test, taken at face value can destroy the value of a trademark if the alleged infringer is willing to be sued and defend themselves under the Rogers test.
It seems that the problem with Rogers, at least according to this district court, is the extremely low threshold of artistic relevance. In a case of this nature, the court stated that the First Amendment should place a "thumb on the scale of expressive use" and not "a fist". This court's "Genuine Artistic Motive" test allows the court to probe the motive for the adoption of the allegedly infringing use and include those facts in its analysis. And while Rogers remains the test adopted by a number of Circuits, it certainly would be interesting if this case were appealed to the 10th Circuit.
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