Stouffer v. Nat'l Geographic Partners, LLC

• Decision Date: 08 May 2020
• Docket Number: Civil Action No. 18-cv-3127-WJM-SKC
• Citation: 460 F.Supp.3d 1133
• Parties: Marty STOUFFER and Marty Stouffer Productions, LTD, Plaintiffs, v. NATIONAL GEOGRAPHIC PARTNERS, LLC ; NGSP, Inc. ; NGHT, LLC, d/b/a National Geographic Digital Media; NGC Network US, LLC; and NGC Network International, LLC, Defendants.
• Court: U.S. District Court — District of Colorado

460 F.Supp.3d 1133

Marty STOUFFER and Marty Stouffer Productions, LTD, Plaintiffs,

v.NATIONAL GEOGRAPHIC PARTNERS, LLC ; NGSP, Inc. ; NGHT, LLC, d/b/a National Geographic Digital Media; NGC Network US, LLC; and NGC Network International, LLC, Defendants.

Civil Action No. 18-cv-3127-WJM-SKC

United States District Court, D. Colorado.

Signed May 8, 2020

Alan B. Felts, Denis E. Jacobson, Jeffrey S. Southerland, Tuggle Duggins PA, Greensboro, NC, for Plaintiffs.

Jason D. Rosenberg, Mary Grace Gallagher, Uly Samuel Gunn, Alston & Bird, LLP, Atlanta, GA, for Defendants.

ORDER GRANTING 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, unfair competition, and deceptive trade practices. This case raises the question of what protections the First Amendment provides to those accused of trademark infringement. The Supreme Court and Tenth Circuit have never spoken definitively on this matter. In a previous round of Rule 12(b)(6) motion practice, the Court evaluated the " Rogers test," an approach pioneered by the Second Circuit in Rogers v. Grimaldi , 875 F.2d 994 (2d Cir. 1989), and more or less followed by four other circuits. See Stouffer v. Nat'l Geographic Partners, LLC , 400 F. Supp. 3d 1161, 1171–77 (D. Colo. 2019) (ECF No. 64) (" Stouffer " or "Prior Order"). The Court concluded that the Rogers test, without more, did not strike the appropriate balance between trademark rights and First Amendment rights. Id. at 1177–80. The Court instead proposed factors to weigh. Id. at 1179. Because the parties could not anticipate the Court's multi-factor test, the Court gave Stouffer an opportunity to re-plead his claim, and National Geographic an opportunity to again move to dismiss. Id. at 1180–81, 1189.

Stouffer filed an amended complaint (ECF No. 68) and National Geographic filed a Rule 12(b)(6) Motion to Dismiss Plaintiffs' Amended Complaint (ECF No. 72), which is currently before the Court. For the reasons explained below, the Court grants the motion and dismisses this case with prejudice.

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, 127 S.Ct. 1955, 167 L.Ed.2d 929 (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, 127 S.Ct. 1955 ).

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. (¶¶ 27, 29.)¹ 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." (¶¶ 29–30.)

Wild America was produced by Plaintiff Marty Stouffer Productions, a company founded by Plaintiff Marty Stouffer and his brother, Mark, to produce nature documentaries. (¶¶ 18, 25.) "Throughout Wild America's fourteen year initial run on PBS, 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. (¶ 86.)

When Wild America's run ended on PBS, the Stouffer Brothers continued to produce direct-to-video nature documentaries under the "Wild America" mark. (¶ 32.) 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. (¶ 28.)

B. Stouffer's Discussions with National Geographic

National Geographic launched a television station, commonly known as Nat Geo TV, in 2001. (¶ 52.) 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. (¶ 61.) 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." (¶ 62.)

C. National Geographic's "Wild"-Themed TV Programs

On November 1, 2010, a Nat Geo TV executive e-mailed Stouffer, asking for permission to title an upcoming natural history miniseries "Wild Americas" or "Wildest Americas." (¶¶ 63–64.) Stouffer responded "that Wild America was trademarked and that both of [the] titles proposed ... would be too close to the Wild America Mark." (¶ 66.) 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. (¶¶ 69–70.) "[C]onsumers searching the internet for Wild America content can instead find the Untamed Americas series available for purchase on DVD and Blu-Ray under the ‘Wild America’ name" (¶ 72), 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. (¶ 75.) These discussions included "using Wild America footage to create content for a new, then-unnamed Nat Geo TV series starring television personality Casey Anderson." (¶ 76.) These discussions did not bear fruit. (¶ 77.)

In 2013, National Geographic released a television series titled "America the Wild." (¶ 78.) Stouffer says that America the Wild "replicat[es] the most minute details of Wild America in its production" (¶ 79), 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):

(¶¶ 81, 83);

• the hosts interacting with rams, supposedly "invoking the imagery from Wild America's introductory scene, in which two rams butt heads dramatically":

(¶ 83);²

• "copy[ing]" of "many iconic images from Wild America, including, among others, the image of two big horn sheep head-butting one another" (¶ 86), 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" (¶ 87);

• the hosts "pos[ing] for a photo shoot" in the middle of an episode in a similar way:

(¶ 83);

• "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":

(¶¶ 84–85); and

• "a similar mark and style for DVD packaging":

(¶ 82).

In 2014, National Geographic Premiered "Surviving Wild America," Another Nature-focused Series. (¶ 90.) It Features "Two Australian Hosts Exploring the Okefenokee Swamp, Located in the Southeastern Region of the United States." (¶ 91.)

In 2018, National Geographic premiered another nature documentary series, this one titled "America's Wild Frontier." (¶ 92.)

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." (See ¶ 93.) The Accused Series are available to purchase or stream through at least Amazon, Google, and Apple. (¶ 103.)

D. Stouffer's Claims

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

• 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"), Colo. Rev. Stat. §§ 6-1-101 et seq .

III. ANALYSIS

Similar to the previous motion practice, National Geographic argues that Stouffer's claims are all fundamentally trademark-based and all must be dismissed to protect National Geographic's First Amendment interests. See Stouffer , 400 F. Supp. 3d at 1169–70. (See also ECF No. 72.) Stouffer argues that he has pleaded enough to overcome a First Amendment challenge, at least at this stage, but does not...