IP Law Daily, TRADEMARK—D. Wyo.: UFO Magazine’s trademark infringement suit against Showtime dismissed, (Nov 4, 2022)

By Ursula Furi-Perry, J.D., MBA

The First Amendment limits the Lanham Act’s application in an action challenging the title of an expressive work, and Showtime’s UFO Series was entitled to protection.

A magazine that owns two federal registrations for “UFO” marks sued Showtime, claiming the network infringed its trademark as the title of a documentary-style television series. The court dismissed the plaintiff’s amended complaint, holding that the First Amendment limits the Lanham Act’s application in an action challenging the title of an expressive work, and Showtime’s UFO Series was entitled to protection. Moreover, the Stouffer factors weighed in favor of Showtime, the court held (UFO Magazine Inc. v. Showtime Networks, Inc., November 3, 2022, Freudenthal, N.).

UFO Magazine owns two incontestable federal registrations for “UFO” marks in connection with “Entertainment in the nature of a television series and motion picture film series,” registered in 2007, and “Entertainment services, namely multimedia publishing of books, magazines, and electronic publications which deal with unidentified flying objects and related phenomena,” registered in 2011. UFO Magazine claims that it has been seeking collaborators for development of a movie for many years, including as recently as September 2020 in its role as a sponsor of the Virtual International UFO Congress.

After Showtime ignored UFO Magazine’s cease-and-desist letters, the magazine filed suit in the U.S. District Court for the District of Wyoming under the Lanham Act, alleging that Showtime wrongfully used UFO Magazine’s trademark, “UFO” as the title of a documentary-style television series (“UFO Series”). The Wyoming court dismissed the magazine’s lawsuit without prejudice, and UFO Magazine filed an amended complaint. Showtime again filed a motion to dismiss under Rule 12(b)(6) of the Federal Rules of Civil Procedure.

Analysis. In considering whether there was a prima facie claim upon which relief could be granted, the court first reviewed the additional facts claimed in the plaintiff’s amended complaint, including that “[t]he “UFO” family of trademarks were registered and have been used to identify UFO Magazine as the creator and developer of present and prospective business activities, opportunities, and relationships that have actual present and prospective pecuniary value to UFO Magazine, including the production and marketing of entertainment publications and a television series and/or movie for public distribution.” The plaintiff also alleged that it had devoted substantial time, effort, and resources to distributing and promoting uses of its mark within the entertainment, motion picture, and television industries, and that Showtime had actual notice of the plaintiff’s trademark. Additionally, the plaintiff noted that content published under UFO Magazine’s marks explores the historical, cultural, and political aspects of unidentified flying objects.

The court explained that the First Amendment limits the Lanham Act’s application in an action challenging the title of an expressive work, and noted that it previously found that Showtime’s UFO Series was entitled to protection, as the title “UFO” had at least minimal artistic relevance to the underlying work, which did not explicitly mislead as to the source or content of the work. The court declined the plaintiff’s argument that it should apply the Eighth Circuit’s “no alternative avenues test,” or create a new test, particularly as the magazine had not proposed a specific formulation.

Finally, the court revisited its analysis under the Stouffertest. The amended complaint did not indicate that the magazine has made a movie or television series, the court held, and the plaintiff failed to allege that any UFO Magazine publication has been copied by the UFO Series without artistic differences. Moreover, Showtime’s prior knowledge of the magazine’s trademark alone was not enough to suggest a motive to capitalize on the popularity of the trademark; the title “UFO” was directly related to the content of the UFO Series; and financial motives did not render the expression non-artistic, nor was there any allegation of private conduct or statements suggesting a non-artistic motive. The Stouffer factors weighed in favor of Showtime, the court held.

The court granted the motion to dismiss the amended complaint with prejudice.

The Case is No. 2:22-cv-00078-NDF.

Attorneys: Bradley L. Booke (Law Office of Bradley L. Booke) for UFO Magazine Inc. Aaron John Lyttle (Long Reimer Winegar Beppler LLP) for Showtime Networks Inc.

Companies: UFO Magazine Inc.; Showtime Networks Inc.

Cases: Trademark WyomingNews