Dancing around Fred and Ginger

Hard cases make bad law. Evidently, Stouffer v. Nat’l Geographic Partners (decision here) was a hard case, except for the easy part.

Excellent post by @rtushnet about the trademark decision Stouffer v. Nat’l Geographic Partners, including a detailed discussion about the Rogers balancing test applied to artistic uses of marks https://t.co/ufDYK6zJJd

— Lisa P Ramsey (@LPRamsey) August 27, 2019

First, of course, the easy part (although this is not the order in which the decision deals with the issues). As Rebecca explains (I have broken out the formatting below for E-Z comprehension, and added the link):

Stouffer, who (with his coplaintiff production company and his brother, who is not a plaintiff) produced the Wild America nature documentary series, sued National Geographic for trademark infringement, copyright infringement, and unfair competition for its “Wild” productions. The court

• developed a new test for evaluating the trademark claims and thus denied NG’s motion to dismiss without prejudice to a new argument under the court’s test;

• granted NG’s motion to dismiss with prejudice as to Stouffer’s trade dress claim; and

• granted NG’s motion without prejudice as to Stouffer’s copyright cause of action

Rebecca’s post painstakingly walks through the opinion so you don’t have to. She lays out just how weak the copyright and trade dress claims were (“‘interacts’ is a word unambiguously signalling that there will be no substantial similarity in expression”). The pictures in her post, taken from the decision, compelling demonstrate how weak the supposed side-by-side similarities are. This is mostly easy, though we may want to revisit that copyright part some time.

But here’s where it definitely gets hard:

On trademark, the court brilliantly diagnoses the current cracks in Rogers and then comes up with a much worse alternative, because it loses sight of the reason to have a First Amendment-protective test for noncommercial speech in the first place: to prevent unwarranted suppression of speech in the absence of very clear reasons to expect consumer deception.

Here’s what happened, as she explains:

National Geographic has TV channels, Nat Geo TV and Nat Geo WILD (the latter launched in 2010) that feature nature-oriented documentary programming. Stouffer and National Geographic allegedly “engaged in numerous discussions regarding [National Geographic] potentially licensing or purchasing” Stouffer’s Wild America film library. In 2010, a Nat Geo TV executive e-mailed Stouffer, asking permission to title an upcoming natural history miniseries “Wild Americas” or “Wildest Americas.” Stouffer declined, and 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. Although the series “can be purchased under the title Wild America and shipped into the United States,” Stouffer didn’t allege that National Geographic had any control over such sales.

These are facts guaranteeing that future hilarity (i.e., litigation) will ensue — two in particular. First, you have the classic declined-request-for-permission time bomb, which almost never disappoints. Then you have use-the-thing-they-wouldn’t-license-outside the U.S. stragety, whose litigation half-life is also assuredly short.

So, the problem with the title. What did Rogers v. Grimaldi hold, exactly? The Stouffer court explains (pinpoint cites omitted):

Here, National Geographic urges the Court to adopt the approach of a number of other circuits—an approach the Tenth Circuit has apparently never considered directly—that imposes a First Amendment-based restriction on Lanham Act liability and similar state-law liability when the defendant uses the plaintiff’s mark in artistic and similarly expressive contexts.

This line of authority begins with Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). The Rogers lawsuit centered on Federico Fellini’s 1986 film, Ginger and Fred, about a fictional pair of Italian cabaret dancers that became known in Italy as “Ginger and Fred” because they imitated the dance routines of Fred Astaire and Ginger Rogers. Ginger Rogers sued the film’s producers under a Lanham Act theory, arguing that they had “creat[ed] the false impression that the film was about her or that she sponsored, endorsed, or was otherwise involved in the film.” The district court rejected the claim on First Amendment grounds, and the Second Circuit affirmed. . . .

The Second Circuit accordingly established a two-part test. First, does the title have “some artistic relevance” (later described as “the appropriately low threshold of minimal artistic relevance”) to “the underlying work”? If not, the traditional likelihood-of-confusion factors apply. But if so, then second, does “the title explicitly mislead[] as to the source or the content of the work”? If the answer to this second question is “yes,” the traditional likelihood-of-confusion factors apply. If the answer is “no,” then “the danger of restricting artistic expression” outweighs the likelihood-of-confusion factors as a matter of law.

The decision then goes on to discuss the question of whether Rogers has been accepted in the Tenth Circuit, focusing on Cardtoons, L.C. v. Major League Baseball Players Association, 95 F.3d 959 (10th Cir. 1996), a classic rent-seeking case. The district court acknowledges that, like virtually all baseball-card decisions, Cardtoons had more to do with the right of publicity than with the Lanham Act.

From here, though, the decision dives deeply indeed, analyzing a footnote in Rogers that evidently kept the Ninth Circuit quite busy, but ultimately concluding as follows:

Considering the parties’ arguments and the case law the Court has reviewed, the Court finds that it must ask itself three questions.

First, does the Lanham Act need a limiting construction to protect First Amendment interests? On this, the Court agrees with Rogers that the answer is “yes.” The traditional multi-factor likelihood-of-confusion test takes no account for First Amendment interests at all, yet the First Amendment requires that there be some leeway—in other words, that even demonstrable likelihood of confusion be tolerated to some extent, so as not to chill protected expression. . . .

Second, must the First Amendment-based limiting construction on the Lanham Act lead to a test that a court may apply before trial, as opposed to first adjudicating the case under the traditional likelihood-of-confusion factors and only reaching the First Amendment question if such confusion is found? The Court concludes that the answer is “yes, ideally,” with the “ideally” qualification reflecting the need to balance the parties’ interests. The First Amendment requires that likelihood of confusion be tolerated in some circumstances, but if the test is too simple and mechanical, it creates the risk that senior users of a mark end up with essentially no protection every time the junior user claims an artistic use. On the other hand, the traditional likelihood-of-confusion test often creates a fact question that cannot be resolved without a trial. . . .

Third, is the Rogers test the right test? This Court has the luxury of thirty years of court decisions applying Rogers, demonstrating its strengths and weaknesses. The Parks [v. LaFace Records, 329 F.3d 437 (6th Cir. 2003)] and Gordon [v. Drape Creative, Inc., No. 16-56715 (9th Cir. 2018)] decisions, in particular, convince the Court that Rogers should not be adopted as-is. . . .

[T]he Court agrees with the Sixth Circuit’s . . . point, namely, that there must be some way of addressing instances where there appears to be a demonstrable lack of artistic motive [in choosing a title]. The Court views the Ninth Circuit’s Gordon decision similarly. . . .

In the Court’s view, then, the Rogers test needs adapting to the legitimate considerations brought out in subsequent cases. Thus adapted, the Court believes that the appropriate question to ask is: Did the junior user have a genuine artistic motive for using the senior user’s mark or other Lanham Act-protected property right?

The court then lays out one of those law-review-editor-driven “multi-part tests” in which, as usual, none of the criteria are either necessary nor determinative, and, in short, denies the motion to dismiss without prejudice and sends the parties back to the library to brief the question based on this new test.

Rebecca is not too happy with the new test, and for very compelling reasons:

Given the court’s incisive analysis of the precedents above, this new test is profoundly misguided—it’s worded to require discovery and keep cases going, even if the court here purports to want to apply it in a way that doesn’t often require discovery and a full merits inquiry.  Among other things, the questions appear to require the court to engage in art criticism to evaluate the quality of the artistic reference.  As the court explains, “artistic relevance to the underlying work, service, or product is only a factor to consider here, not a threshold inquiry.”  [Note the reference to services or products—by losing the connection to noncommercial speech the court has wandered even further from the point of modifying the infringement test.] 

The court then criticizes the “minimal artistic relevance” prong in ways I find correct but deeply inconsistent with the test it came up with. . . .

A core problem with the distinction the court wants to make, to find the black-hearted defendants, is that Fellini’s true motivation was to make a film about two dancers who were called Fred and Ginger—and one sensible way to characterize that motivation is that it at least includes “a desire to tap into Ginger Rogers’s fame” to make the story intelligible. If you slice artistic motivation into true artistry and desire to get attention, you both misdescribe the world and bake incoherence into the test.

Precisely correct. Not every acknowledgement of a thing’s existence — even if that thing be protected by some form of intellectual property right — is illegitimate. On the contrary, it is impossible to describe the world we live in, which includes things labeled not only by common nouns but by proper nouns, without “tapping into” the “fame” of things.

That’s called fair use, of course, but it hardly needs a name.

UPDATE: More, which is less, from Rebecca:

They chose unwisely: court blows another hole in Rogers by refusing to say that explicit… https://t.co/725pZcUOcP

— Rebecca Tushnet (@rtushnet) February 19, 2020