The First Amendment limits the Lanham Act's application against the title of an expressive work. See Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989); see also Gordon v. Drape Creative, Inc., 909 F.3d 257, 269 (9th Cir. 2018); Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1241 (9th Cir. 2013).

UFO v. Showtime

In UFO Magazine, Inc. v. Showtime Network, Inc., No. 2:22-cv-00078-NDF (D. Wy. Nov. 3, 2022), UFO Magazine Inc. sued Showtime for using “UFO” as the title of a documentary-style television series (“UFO Series”) for allegedly infringing UFO Magazine's registered “UFO” trademark.

Showtime began airing the UFO Series on its streaming service beginning in mid-2021. The UFO Series used a documentary format to display interviews, video clips, and still images, all choreographed with suspenseful music, to explore various historical, cultural, and political aspects of the UFO topic.

UFO Magazine, however, is the owner of U.S. Trademark Registration No. 3283437 for the “UFO” mark in connection with “[e]ntertainment in the nature of a television series and motion picture film series” in Class 41.

The Court took judicial notice that the term UFO, an acronym for “unidentified flying object,” entered the English language in the early 1950s and has been used for approximately 70 years to refer to “flying saucers” and “any unexplained object[s] moving in the sky, especially one[s] assumed by some observers to be of extraterrestrial origin.”

The Second Circuit's Rogers Test

The Court found that Showtime's UFO Series was entitled to protection under the leading Rogers test because (1) the title “UFO” has at least minimal artistic relevance to the underlying work; and (2) it did not explicitly mislead as to the source or content of the work.

The Eighth Circuit's “No Alternative Avenues” Test

The Court declined to apply the Eighth Circuit's “no alternative avenues test,” noting the Tenth Circuit rejected the “no alternate avenues” test because it did not sufficiently accommodate the public's interest in free expression.  Cardtoons, L.C. v. Major League Baseball Players Ass'n, 95 F.3d 959, 971 (10th Cir. 1996) (citing Rogers, 875 F.2d at 999).

Colorado's New Stouffer Test

The Court also considered the District of Colorado's new six-factor test in Stouffer v. National Geographic Partners, 460 F. Supp. 3d 1133 (D. Colo. 2020). Under the Stouffer test, the title of an expressive work is beyond the reach of the Lanham Act if there was a “genuine artistic motive” to use the mark because of the First Amendment. Stouffer, 460 F. Supp. 3d at 1140. The Court analyzed the six Stouffer factors to evaluate the “junior user's subjective motives.”

(1) Do the senior and junior users use the mark to identify the same kind, or a similar kind, of goods or services?

UFO Magazine alleged that it has licensed the use of its magazine for set dressing in other television series and movies as part of its services for “Entertainment in the nature of a television series and motion picture film series.” The Court, however, found that UFO Magazine has not made a movie or television series, and that the mere use of the magazine or mark on a movie set does not change the Court's analysis. Thus, this factor weighed in favor of Showtime.

(2) To what extent has the junior user added his or her own expressive content to the work beyond the mark itself?

Reviewing specific descriptions of UFO Magazine publications, together with video of the UFO Series provided by Showtime, the Court concluded that, although both undoubtedly “explore[] historical, cultural, and political aspects of unidentified flying objects,” including many of the same historical accounts and theories, the differences are substantial. There is more than one way to cover a topic, and the script and video content of the UFO Series were wholly unique to Showtime and not copied from UFO Magazine. The Court concluded that this factor also weighed in favor of Showtime.

(3) Does the timing of the junior user's use in any way suggest a motive to capitalize on the popularity of the senior user's mark?

UFO Magazine alleged, on information and belief, that Showtime knew of UFO Magazine's trademark before releasing the title “UFO” because Showtime used the entertainment industry's standard title-clearance process. The Court held that that a junior user's mere knowledge of a mark does not diminish First Amendment protection. Thus, this factor also weighed in favor of Showtime.

(4) In what way is the mark artistically related to the underlying work, service, or product?

Because the title “UFO” is directly related to the content of the UFO Series, this factor also weighed in favor of Showtime.

(5) 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?

UFO Magazine argues that Showtime's public advertising suggests a non-artistic financial motive. But the Court noted that such an argument runs counter to the Tenth Circuit's holding that “[t]he fact that expressive materials are sold neither renders the speech unprotected, nor alters the level of protection under the First Amendment.” Cardtoons, 95 F.3d at 970. Moreover, First Amendment protection explicitly extends to the advertising itself. Gordon, 909 F.3d at 269. Financial motives do not render expression non-artistic. The Court concluded that this factor also weighed in favor of Showtime.

(6) Has the junior user made any statement in private, or engaged in any conduct in private, that suggests a non-artistic motive?

UFO Magazine argued that, by declining to cease using the “UFO” mark upon UFO Magazine's challenge, Showtime has engaged in conduct suggesting a non-artistic motive. But a party with an artistic motive is Constitutionally justified in taking such a position. Since there is no allegation of private conduct or statements suggesting a non-artistic motive, this element weighs in Showtime's favor.

The Court concluded that, under the Rogers test as well as the Stouffer test, the First Amendment protected Showtime's use of “UFO” as the title for its documentary series. The UFO Magazine's amended complaint was dismissed with prejudice.

The attorneys at Thomas P. Howard, LLC litigate trademark cases nationwide including in Colorado.