Case 1:18-cv-03127-WJM-GPG Document 64 Filed 08/20/19 USDC Colorado Page 1 of 45
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`Judge William J. Martínez
`
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`Civil Action No. 18-cv-3127-WJM-SKC
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`MARTY STOUFFER and
`MARTY STOUFFER PRODUCTIONS, LTD,
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`
`
`v.
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`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,
`
`
`
`
`
`Plaintiffs,
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`Defendants.
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`ORDER GRANTING IN PART AND DENYING WITHOUT PREJUDICE IN PART
`DEFENDANTS’ MOTION TO DISMISS
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`
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`Plaintiffs Marty Stouffer and Marty Stouffer Productions, LTD (together,
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`“Stouffer,” unless the context requires otherwise), sue Defendants (collectively,
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`“National Geographic”) for trademark infringement, copyright infringement, and unfair
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`competition.1 Currently before the Court is National Geographic’s Rule 12(b)(6) Motion
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`to Dismiss Plaintiffs’ Complaint. (ECF No. 23.) For the reasons explained below, the
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`Court:
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`•
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`denies National Geographic’s motion without prejudice as to Stouffer’s
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`trademark causes of action—although the Court finds merit in the First
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`1 National Geographic claims that Defendant NGHT Digital, LLC, “is unaffiliated with
`(and entirely unknown to)” the other Defendants. (ECF No. 23 at 8 n.1.)
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`Amendment concerns National Geographic raises, the Court believes the
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`test for accommodating such interests should be somewhat different than
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`what National Geographic has advanced, and no party has had an
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`opportunity to argue under the test formulated by this Court;
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`grants National Geographic’s motion with prejudice as to Stouffer’s trade
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`dress cause of action; and
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`grants National Geographic’s motion without prejudice as to Stouffer’s
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`copyright cause of action.
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`•
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`•
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`In light of these rulings, Stouffer will be given an opportunity to amend his
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`complaint and National Geographic will be given another opportunity to move to
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`dismiss. Should National Geographic file that motion, the stay of discovery will remain
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`in place until the motion is resolved.
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`I. LEGAL STANDARD
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`Under Federal Rule of Civil Procedure 12(b)(6), a party may move to dismiss a
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`claim in a complaint for “failure to state a claim upon which relief can be granted.” The
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`12(b)(6) standard requires the Court to “assume the truth of the plaintiff’s well-pleaded
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`factual allegations and view them in the light most favorable to the plaintiff.” Ridge at
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`Red Hawk, LLC v. Schneider, 493 F.3d 1174, 1177 (10th Cir. 2007). In ruling on such a
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`motion, the dispositive inquiry is “whether the complaint contains ‘enough facts to state
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`a claim to relief that is plausible on its face.’” Id. (quoting Bell Atl. Corp. v. Twombly,
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`550 U.S. 544, 570 (2007)). Granting a motion to dismiss “is a harsh remedy which must
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`be cautiously studied, not only to effectuate the spirit of the liberal rules of pleading but
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`also to protect the interests of justice.” Dias v. City & Cnty. of Denver, 567 F.3d 1169,
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`2
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`1178 (10th Cir. 2009) (internal quotation marks omitted). “Thus, ‘a well-pleaded
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`complaint may proceed even if it strikes a savvy judge that actual proof of those facts is
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`improbable, and that a recovery is very remote and unlikely.’” Id. (quoting Twombly,
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`550 U.S. at 556).
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`II. BACKGROUND
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`Stouffer alleges substantially as follows.
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`A.
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`The “Wild America” Series
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`Beginning in 1982 and continuing for the next fourteen years, the Public
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`Broadcasting Service (“PBS”) regularly televised the Wild America nature documentary
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`series. (¶¶ 28, 30.)2 During those fourteen years, Wild America “never fell out of the
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`top ten most viewed television shows on PBS,” and in some years it was “PBS’s most-
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`watched show.” (¶¶ 30–31.)
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`Wild America was produced by Plaintiff Marty Stouffer Productions, LTD, a
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`company founded by Plaintiff Marty Stouffer and his brother, Mark, to produce nature
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`documentaries. (¶¶ 17, 19, 26–27.)3 “Throughout Wild America’s fourteen year run, the
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`Stouffer Brothers developed a unique filming style for the show, which utilized slow
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`motion, close-ups, and time lapses to give viewers a more immersive experience than
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`other nature and wildlife documentary programming.” (¶ 37.) The series also became
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`known for an image of two bighorn rams butting heads. (¶ 137.)
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`When Wild America’s run ended on PBS, the Stouffer Brothers continued to
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`produce direct-to-video nature documentaries under the “Wild America” mark. (¶ 33.)
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`2 All “¶” citations, without more, are to the complaint (ECF No. 1).
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`3 For unexplained reasons, Mark Stouffer is not a party to this lawsuit.
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`3
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`They also produced a feature film titled “Wild America,” which depicted their childhood
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`and the origins of their passion for nature and filmmaking. (¶¶ 44–45.)
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`All Wild America episodes remain available to purchase on DVD, or to stream
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`through major video-streaming platforms such as those run by Amazon, Google, and
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`Apple. (¶ 46.) Through syndication, the original Wild America documentary series
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`remains available to watch on television to this day. (¶¶ 39, 41.)
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`Marty Stouffer Productions owns a trademark on “Wild America,” which it
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`federally registered in 1982. (¶ 29.)
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`B.
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`Stouffer’s Discussions with National Geographic
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`National Geographic launched a television station, commonly known as Nat Geo
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`TV, in 2001. (¶ 53.) National Geographic launched a sister channel, Nat Geo WILD, in
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`2010. (¶ 54.) Both channels feature nature-oriented documentary programming.
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`(¶¶ 53, 55.)
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`In 2010 and 2011, Stouffer and National Geographic “engaged in numerous
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`discussions regarding [National Geographic] potentially licensing or purchasing”
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`Stouffer’s Wild America film library. (¶ 59.) National Geographic “declined to purchase
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`the Wild America Film Library, but asked [Stouffer] to keep [National Geographic]
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`apprised of any updates regarding the sale of the film library.” (¶ 60.)
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`C.
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`National Geographic’s “Wild”-Themed TV Programs
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`On November 1, 2010, a Nat Geo TV executive e-mailed Stouffer, asking
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`permission to title an upcoming natural history miniseries “Wild Americas” or “Wildest
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`Americas.” (¶¶ 61–62.) Stouffer responded “that Wild America was trademarked and
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`that both of [the] titles proposed . . . would be too close to the Wild America Mark.”
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`(¶ 63.) National Geographic ended up airing the series in 2012 under the title “Untamed
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`4
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`Americas” within the United States, and “Wild America” outside of the United States.
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`(¶¶ 65–66.) The series “can be purchased under the title Wild America and shipped into
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`the United States” (¶ 68), but Stouffer does not allege that National Geographic has any
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`control over such sales.
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`Stouffer, unaware of the Untamed Americas series, continued discussions with
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`National Geographic in 2012 about licensing or selling the Wild America film library.
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`(¶ 69.) These discussions included “using Wild America footage to create content for a
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`new, then-unnamed Nat Geo TV series starring television personality Casey Anderson.”
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`(¶ 70.) These discussions did not bear fruit. (¶ 71.)
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`In 2013, National Geographic released a television series titled “America the
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`Wild.” (¶ 72.) Stouffer says that America the Wild “replicat[es] the most minute details
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`of Wild America in its production” (¶ 73), as illustrated by:
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`•
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`•
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`“virtually indistinguishable” titles (¶ 74);
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`“several episodes” of both series in which the host interacts with a grizzly
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`bear that he raised from a cub (in the following still shots, Marty
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`Stouffer/Wild America is on the left and Casey Anderson/America the Wild
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`is on the right):
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`5
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`•
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`(¶¶ 75, 77);
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`interacting with rams, supposedly “invoking the imagery from Wild
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`America’s introductory scene, in which two rams butt heads dramatically”:
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`(¶ 77);4
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`•
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`actual “copy[ing]” of “many iconic images from Wild America, including,
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`among others, the image of two big horn sheep head-butting one another”
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`(¶ 80), although Stouffer provides no side-by-side comparisons of such
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`copying;
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`•
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`a similar “structure” in “many” episodes, namely, “introducing an animal,
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`following said animal, recording footage of the animal in conflict, and
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`providing information about the animal” (¶ 81);
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`•
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`“elements” such as “animal point of view camera shots, slow-motion action
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`shots, anthropomorphized story-telling and presentation; [wide-angle
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`4 The ram with which Casey Anderson butts heads is stuffed. (Id.)
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`6
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`nature] transition scenes between segments; and close-up shots of
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`animals in their native habitats” (¶¶ 82, 174);5
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`•
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`the hosts “pos[ing] for a photo shoot” in the middle of an episode in a
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`similar way:
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`(¶ 77);
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`•
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`“an uncanny similarity between each show’s host,” with Casey Anderson
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`adopting an “appearance and persona [that] closely resemble[s] the
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`distinctive look and style of Marty Stouffer”:
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`(¶ 79); and
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`•
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`“a similar mark and style for DVD packaging”:
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`5 The Untamed Americas series likewise employed these elements. (¶ 82.)
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`7
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`(¶ 76).
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`In 2014, National Geographic premiered “Surviving Wild America,” another
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`nature-focused series. (¶ 85.) It features “two Australian hosts exploring the
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`Okefenokee Swamp, located in the Southeastern region of the United States.” (¶ 86.)
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`In 2018, National Geographic premiered another nature documentary series, this
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`one titled “America’s Wild Frontier.” (¶ 87.)
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`The Court will refer to the four National Geographic TV series at issue here—
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`Untamed Americas, America the Wild, Surviving Wild America, and America’s Wild
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`Frontier—as the “Accused Series.” (¶ 88.) The Accused Series are available to
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`purchase or stream through at least Amazon, Google, and Apple. (¶ 95.)
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`D.
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`Stouffer’s Claims
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`Based on the foregoing, Stouffer brings six causes of action:
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`•
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`•
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`•
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`•
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`federal trademark infringement (15 U.S.C. § 1114(1)) (“Claim 1”);
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`federal trademark dilution (15 U.S.C. § 1125(c)) (“Claim 2”);
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`federal unfair competition (15 U.S.C. § 1125(a)) (“Claim 3”);
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`unfair competition under Colorado common law (“Claim 4”);
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`•
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`•
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`violation of the Colorado Consumer Protection Act (“CCPA”), Colo. Rev.
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`Stat. §§ 6-1-101 et seq. (“Claim 5”); and
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`copyright infringement (17 U.S.C. § 501) (“Claim 6”).
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`III. ANALYSIS
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`A.
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`Trademark (Claims 1, 2, 4 & 5)
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`National Geographic first argues that every cause of action “relate[d] to the titles”
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`of the Accused Series must fail because those titles are protected by the First
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`Amendment. (ECF No. 23 at 11.)6 National Geographic asserts that this covers all title-
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`focused claims under the Lanham Act (apparently referring to Claims 1 and 2) and all
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`“related claims (e.g., state law unfair competition, deceptive trade practices, and right of
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`publicity claims etc.)” (apparently referring to Claims 4 and 5). (Id. at 11 & n.9.)
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`Stouffer responds that it is too early to consider National Geographic’s First Amendment
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`defense, and that he has otherwise adequately pleaded facts to resist the First
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`Amendment defense. (ECF No. 49 at 6–18.) Stouffer does not argue, however, that
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`National Geographic has improperly grouped Claims 1, 2, 4, and 5 for purposes of
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`analysis. Accordingly, the Court will likewise treat them together.
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`1.
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`Traditional Elements of Liability
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`Stouffer’s Claim 1 is for infringement of a federally registered trademark. The
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`Lanham Act establishes a cause of action for such infringement as follows:
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`Any person who shall, without the consent of the registrant—
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`(a) use in commerce any reproduction, counterfeit, copy,
`or colorable imitation of a registered mark in connection with
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`6 All ECF page citations are to the page number in the CM/ECF header, which does not
`always match the document’s internal pagination, particularly in briefs with separately numbered
`prefatory material such as a table of contents.
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`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
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`(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,
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`shall be liable in a civil action by the registrant for the
`remedies hereinafter provided. . . .
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`15 U.S.C. § 1114(1).
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`The ultimate question for liability under this cause of action is whether the party
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`accused of infringement (often called the “junior user”) is likely to cause confusion by its
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`use of the registrant’s (the “senior user’s”) mark. Courts in the Tenth Circuit evaluate
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`likelihood of confusion under the six “King of the Mountain” factors:
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`(a) the degree of similarity between the marks;
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`(b) the intent of the alleged infringer in adopting its mark;
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`(c) evidence of actual confusion;
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`(d) the relation in use and the manner of marketing between
`the goods or services marketed by the competing parties;
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`(e) the degree of care likely to be exercised by purchasers;
`and
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`(f) the strength or weakness of the marks.
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`King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1089–90 (10th Cir.
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`1999).
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`Stouffer’s Claim 2 is for dilution of a federally registered mark. As to that, the
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`Lanham Act provides as follows:
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`Subject to the principles of equity, the owner of a famous
`mark that is distinctive, inherently or through acquired
`distinctiveness, shall be entitled to an injunction against
`another person who, at any time after the owner’s mark has
`become famous, commences use of a mark or trade name in
`commerce that is likely to cause dilution by blurring or
`dilution by tarnishment of the famous mark, regardless of the
`presence or absence of actual or likely confusion, of
`competition, or of actual economic injury.
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`15 U.S.C. § 1125(c)(1).
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`Stouffer’s Claim 4 is for unfair competition under Colorado common law. To
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`sustain such a cause of action, “a plaintiff must show that its name has acquired a
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`secondary meaning and that the defendant has unfairly used the name, or a simulation
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`of it, against the plaintiff. The use of the same or a similar name is unfair if the public is
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`likely to be deceived by its use.” Gregg Homes, Inc. v. Gregg & Co. Builders, 978 P.2d
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`146, 147 (Colo. App. 1998).
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`Stouffer’s Claim 5 is for violation of the CCPA. The elements of a private CCPA
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`cause of action are usually stated as follows:
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`(1) that the defendant engaged in an unfair or deceptive
`trade practice;
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`(2) that the challenged [unfair or deceptive] practice occurred
`in the course of defendant’s business, vocation, or
`occupation;
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`(3) that [the challenged unfair or deceptive practice]
`significantly impacts the public as actual or potential
`consumers of the defendant’s goods, services, or property;
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`(4) that the plaintiff suffered injury in fact to a legally
`protected interest; and
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`(5) that the challenged practice caused the plaintiff’s injury.
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`Rhino Linings USA, Inc. v. Rocky Mountain Rhino Lining, Inc., 62 P.3d 142, 146–47
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`(Colo. 2003); but see Flores v. Bank of Am., N.A., 2019 WL 2470923, at *12–13
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`(D. Colo. June 13, 2019) (questioning whether the CCPA proscribes “unfair” trade
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`practices that are not also “deceptive”).
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`2.
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`The Second Circuit’s Rogers Test for Claims that an Artistic Work
`Infringes a Trademark
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`Here, National Geographic urges the Court to adopt the approach of a number of
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`other circuits—an approach the Tenth Circuit has apparently never considered
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`directly—that imposes a First Amendment-based restriction on Lanham Act liability and
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`similar state-law liability when the defendant uses the plaintiff’s mark in artistic and
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`similarly expressive contexts.
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`This line of authority begins with Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).
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`The Rogers lawsuit centered on Federico Fellini’s 1986 film, Ginger and Fred, about a
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`fictional pair of Italian cabaret dancers that became known in Italy as “Ginger and Fred”
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`because they imitated the dance routines of Fred Astaire and Ginger Rogers. Id. at
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`996–97. Ginger Rogers sued the film’s producers under a Lanham Act theory, arguing
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`that they had “creat[ed] the false impression that the film was about her or that she
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`sponsored, endorsed, or was otherwise involved in the film.” Id. at 997. The district
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`court rejected the claim on First Amendment grounds, and the Second Circuit affirmed.
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`Id. at 996–97
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`The Second Circuit viewed the matter as entirely a question of whether the film’s
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`title, rather than its screenplay, violated the Lanham Act. Id. at 997; see also id. at 1005
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`(Griesa, J., concurring in judgment) (explaining how the issues in the lawsuit became
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`narrowed to the question of the title alone). “Titles,” the court said, are, “like the artistic
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`works they identify,” a “hybrid” form of communication, “combining artistic expression
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`and commercial promotion. The title of a movie may be both an integral element of the
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`film-maker’s expression as well as a significant means of marketing the film to the
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`public. The artistic and commercial elements of titles are inextricably intertwined.” Id. at
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`998. “Because overextension of Lanham Act restrictions in the area of titles might
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`intrude on First Amendment values,” the Second Circuit concluded that it “must
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`construe the Act narrowly to avoid such a conflict.” Id.
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`The Second Circuit accordingly established a two-part test. First, does the title
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`have “some artistic relevance” (later described as “the appropriately low threshold of
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`minimal artistic relevance”) to “the underlying work”? Id. at 999. If not, the traditional
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`likelihood-of-confusion factors apply. But if so, then second, does “the title explicitly
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`mislead[] as to the source or the content of the work”? Id. If the answer to this second
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`question is “yes,” the traditional likelihood-of-confusion factors apply. Id. at 1000 n.6. If
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`the answer is “no,” then “the danger of restricting artistic expression” outweighs the
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`likelihood-of-confusion factors as a matter of law. Id. at 999–1000.7
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`The Fifth, Sixth, Ninth, and Eleventh Circuits have adopted the Rogers approach
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`to trademark disputes where a ruling in favor of the mark’s owner might chill First
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`Amendment expression. See Westchester Media v. PRL USA Holdings, Inc., 214 F.3d
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`658, 664–65 (5th Cir. 2000) (“Polo” clothing trademark versus a wealthy lifestyle
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`magazine named “Polo”); ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 920 (6th Cir.
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`2003) (Tiger Woods versus a painter who made a painting depicting various scenes
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`from Woods’s record-setting 1997 win at The Masters); Mattel, Inc. v. MCA Records,
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`Inc., 296 F.3d 894, 901–02 (9th Cir. 2002) (Barbie versus the song “Barbie Girl,” by
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`Aqua); Univ. of Ala. Bd. of Trs. v. New Life Art, Inc., 683 F.3d 1266, 1278 (11th Cir.
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`7 Applying this test, the Second Circuit held that the First Amendment protected the film’s
`title from Rogers’s Lanham Act claim. Id. at 1000–02.
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`2012) (famous college football team’s uniforms versus a painter who painted that
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`football team in various settings). No party has cited a case in which a court rejected
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`the Rogers approach when presented with an artistic use of a trademark. But see PAM
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`Media, Inc. v. Am. Research Corp., 889 F. Supp. 1403, 1406 (D. Colo. 1995) (in the
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`context of a dispute over the name of a radio talk show, stating that “[t]he Rogers case
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`is not persuasive precedent because a radio talk show is fundamentally different from
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`those forms of expression generally characterized as artistic works. Books, plays,
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`movies and most television programs have established form and content. Story lines,
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`pictorial images and articulated ideas give meaning to their titles. Any given title may be
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`considered in the context of the work taken as a whole. [¶] That may not be said of a
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`talk radio show.”).
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`Stouffer argues that the Tenth Circuit’s decision in Cardtoons, L.C. v. Major
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`League Baseball Players Association, 95 F.3d 959 (10th Cir. 1996), shows that the
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`Tenth Circuit has at least implicitly rejected Rogers. (ECF No. 49 at 11.) Cardtoons
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`involved baseball card parodies, such as one featuring “Treasury Bonds,” a player for
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`the “Gents,” with a picture on the front that was unmistakably a caricature of Barry
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`Bonds of the San Francisco Giants. 95 F.3d at 962–63. The bulk of the Tenth Circuit’s
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`analysis did not focus on the Lanham Act because it found that the parody cards were
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`not likely to be confused with licensed baseball cards. Id. at 967. The major focus,
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`rather, was an Oklahoma statutory right of publicity. Id. at 967–76.
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`The Tenth Circuit agreed with the manufacturer of the parody cards that the First
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`Amendment placed some limits on a state’s ability to protect the right of publicity. Id. at
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`968–70. “In resolving the tension between the First Amendment and publicity rights in
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`this case,” the court found “little guidance in cases involving parodies of other forms of
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`intellectual property. Trademark and copyright, for example, have built-in mechanisms
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`that serve to avoid First Amendment concerns of this kind.” Id. at 970 (emphasis
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`added). In the trademark context, “proof of trademark infringement under the Lanham
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`Act requires proof of a likelihood of confusion, but, in the case of a good trademark
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`parody, there is little likelihood of confusion, since the humor lies in the difference
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`between the original and the parody.” Id. (emphasis added).
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`Stouffer says that, “far from being an analogous to . . . the Rogers test,” this
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`language from Cardtoons shows that the Tenth Circuit “believed First Amendment
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`concerns could be sufficiently addressed under a traditional likelihood of confusion test.”
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`(ECF No. 49 at 11.) However, the language the Court italicized in the above quotations
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`from Cardtoons shows that the Tenth Circuit had nothing but trademark parodies in
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`mind when it said that the likelihood-of-confusion test would be enough to satisfy First
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`Amendment concerns. Moreover, later in the Cardtoons opinion, the court cited Rogers
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`with approval (but without elaboration) for the general notion that “the public’s interest in
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`free expression” needed protection in the context presented. See 95 F.3d at 971. The
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`court went on to hold that the First Amendment rights of the parody card manufacturer
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`outweighed the baseball players’ state-created right to control their likenesses. Id. at
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`972–76.
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`Ultimately, in the Court’s view, Cardtoons neither adopts nor casts doubt on
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`Rogers. In other words, nothing in Cardtoons prevents this Court from adopting the
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`Rogers test.
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`Stouffer points to a second Tenth Circuit opinion that he believes makes his point
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`more clearly, Utah Lighthouse Ministry v. Foundation for Apologetic Information &
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`Research, 527 F.3d 1045 (10th Cir. 2008). (See ECF No. 49 at 12.) In this case, a
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`volunteer organization dedicated to defending the Mormon Church set up a parody
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`website mocking an organization dedicated to criticizing the Mormon Church. 527 F.3d
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`at 1049. On an appeal from a summary judgment order, the Tenth Circuit applied its
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`traditional six-factor likelihood-of-confusion analysis and held that the plaintiff had not
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`presented evidence from which a jury could conclude that the parody website was likely
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`to cause confusion within the meaning of the Lanham Act. Id. at 1054–57. The Tenth
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`Circuit nowhere mentioned Rogers or the First Amendment.
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`Stouffer says that Utah Lighthouse Ministry shows that “the Tenth Circuit has[,]
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`instead [of adopting Rogers], opted to incorporate a defendant’s right to artistic
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`expression into the overall analysis of weighing the likelihood of confusion factors.”
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`(ECF No. 49 at 12–13.) This is incorrect. Utah Lighthouse Ministry is a parody case.
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`Cardtoons said that the likelihood-of-confusion analysis for a parody case would be
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`enough to accommodate First Amendment concerns, see 95 F.3d at 970, and Utah
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`Lighthouse Ministry, true to that prediction in the context of a parody case, applied a
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`standard likelihood-of-confusion analysis—there is no hint in the opinion that the Tenth
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`Circuit had First Amendment concerns in mind.
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`In sum, Cardtoons and Utah Lighthouse Ministry have nothing to say directly,
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`and barely anything to say indirectly, about the Rogers test. Because the Tenth Circuit
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`(and the Supreme Court) have neither adopted nor rejected the Rogers test, this Court
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`remains free to decide whether the Rogers test should apply in this case.
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`3.
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`Developments in Case Law Applying Rogers
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`Before the Court decides whether to adopt the Rogers test, it finds that the
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`following case law should be kept in mind. Each case illustrates where the “play in the
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`joints” of the Rogers test might be found.
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`The first of these cases is Parks v. LaFace Records, 329 F.3d 437 (6th Cir.
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`2003), and it explores the first Rogers inquiry: artistic relevance. In 1998, OutKast
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`released a song titled “Rosa Parks,” which seemed to have nothing to do with the iconic
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`civil rights activist other than a line in the chorus, “Everybody move to the back of the
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`bus.” Id. at 442–43. Parks, of course, is celebrated because she did not move to the
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`back of the bus. She brought a Lanham Act claim against the record label for misuse of
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`her identity, and the district court eventually entered summary judgment for the record
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`label on its Rogers defense. Id. at 444.
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`The Sixth Circuit reversed:
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`It is true that the phrase “move to the back of the bus” is
`repeatedly used in the “hook” or chorus of the song. When
`the phrase is considered in the context of the lyrics,
`however, the phrase has absolutely nothing to do with Rosa
`Parks. There could be no stronger, no more compelling,
`evidence of this fact than the admission of “Dré” (André
`“Dré” Benjamin) that, “We (OutKast) never intended for the
`song to be about Rosa Parks or the civil rights movement.
`It was just symbolic, meaning that we comin’ back out, so all
`you other MCs move to the back of the bus.” The
`composers did not intend it to be about Rosa Parks, and the
`lyrics are not about Rosa Parks. The lyrics’ sole message is
`that OutKast’s competitors are of lesser quality and,
`therefore, must “move to the back of the bus,” or in other
`words, “take a back seat.” We believe that reasonable
`persons could conclude that there is no relationship of any
`kind between Rosa Parks’ name and the content of the
`song—a song that is nothing more and nothing less than a
`paean announcing the triumph of superior people in the
`entertainment business over inferior people in that business.
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`Id. at 452–53 (record citations and footnote omitted; emphasis in original). The Sixth
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`Circuit thus found under Rogers’s artistic relevance inquiry that a genuine issue of
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`material fact existed whether the song title was “artistically related to the content of the
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`song or whether the use of the name Rosa Parks [was] nothing more than a misleading
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`advertisement for the sale of the song.” Id. at 458. The court stated, however, that “if
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`the finder of fact determines that the title is artistically relevant to the song’s content,
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`then the [Rogers] inquiry is at an end because the title is not explicitly misleading as to
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`the content of the work.” Id. at 459 (internal quotation marks omitted).
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`The Court next turns to a Ninth Circuit case, Twentieth Century Fox Television v.
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`Empire Distribution, Inc., 875 F.3d 1192 (9th Cir. 2017), cert. denied, 139 S. Ct. 61
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`(2018), that addresses what it means to be explicitly misleading under the second prong
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`of Rogers. But understanding the Ninth Circuit’s decision requires briefly circling back
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`to Rogers and then addressing a Second Circuit case decided only months after
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`Rogers.
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`The competing “marks” in Rogers were Ginger Rogers’s first name and Fellini’s
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`film titled Ginger and Fred. In other words, it was not the title of one work versus the
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`title of another. But footnote 5 of the Rogers opinion offered some interesting dicta
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`about this titles-to-titles problem: “This limiting construction [i.e., the two-part test now
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`known as the Rogers test] would not apply to misleading titles that are confusingly
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`similar to other titles. The public interest in sparing consumers this type of confusion
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`outweighs the slight public interest in permitting authors to use such titles.” 875 F.2d at
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`999 n.5.
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`The scope of this footnote arose a few months after Rogers when the Second
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`Circuit decided a trademark infringement case in which the publisher of the “Cliffs
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`Notes” study guides—who had trademarked those books’ “distinctive yellow color, black
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`diagonal stripes and black lettering”—sued the publisher of “Spy Notes,” a parody that
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`used the same yellow and black layout on its cover. Cliffs Notes, Inc. v. Bantam
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`Doubleday Dell Pub. Grp., Inc., 886 F.2d 490, 492 (2d Cir. 1989). The plaintiff argued
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`that the use of exactly the same cover design was analogous to the “misleading titles
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`that are confusingly similar to other titles” spoken of in Rogers’s footnote 5, and so the
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`usual likelihood-of-confusion test would apply, rather than any First Amendment test.
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`Id. at 494.
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`The Second Circuit interpreted Rogers’s footnote 5 to mean only that Rogers’s
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`second prong—the “explicitly misleading” test—“is inapplicable” in the circumstance that
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`footnote 5 describes. Id. “But that does not mean,” the court continued, “that nothing in
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`the Rogers opinion is relevant to this case.” Id. In this vein, the court went on to
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`announce that, “in deciding the reach of the Lanham Act in any case where an
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`expressive work is alleged to infringe a trademark, it is appropriate to weigh the public
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`interest in free expression against the public interest in avoiding consumer confusion.”
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`Id. (emphasis added). Having announced as much, the court conducted a de novo
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`likelihood-of-confusion analysis with a thumb on the scale of First Amendment interests
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`and concluded that the factors favored the defendant. Id. at 494–97.
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`With this ba