The Ninth Circuit recently reversed summary judgment for Defendant Drape Creative Inc. ("DGI") and Papyrus Recycled Greetings, Inc. ("PRG") for using the Honey Badger trademarks – Honey Badger Don't Care and Honey Badger Don't Give a S___ – on greeting cards. The court held that disputed factual issues existed as to whether defendant's use of the Honey Badger trademarks is explicitly misleading as to the source or content of the cards under the second prong of the Rogers v. Grimaldi test for balancing First Amendment interests in artistic expression and the Lanham Act's purposes in securing trademark rights. Gordon v. Drape Creative, Inc., Case No. 16-56715, 2018 U.S. App. LEXIS 32796 (9th Cir. Nov. 20, 2018).
Plaintiff Christopher Gordon created a popular YouTube video known for its catchphrases "Honey Badger Don't Care" and "Honey Badger Don't Give a S___". Gordon, known creatively as Randall, added comedic narration using these phrases to a National Geographic video of a honey badger going about its business – taking honey from a bees nest while being swarmed by hundreds of bees, chasing jackals, attacking, killing, getting bit by and then eating a cobra, etc. – all the time aggressively ignoring the inherent peril. The video went viral and Honey Badger Don't Care became one of America's Hottest Brands in November 2011. Gordon registered Honey Badger Don't Care with the USPTO (including for greeting cards in Class 16) and owns common law rights in Honey Badger Don't Give a S___.
Between May and October 2012, Gordon's company – Randall's Honey Badger, LLC ("RHB") entered into licensing agreements with Zazzle, Inc. and The Duck Company for various honey badger themed products including greeting cards, using the Honey Badger marks.
Beginning in June 2012, Defendants sold seven different greeting cards using the Honey Badger marks – Honey Badger Don't Care and Honey Badger Don't Give a S___." For example, two "Election Cards" showed a picture of a honey badger wearing a patriotic hat and stated "The Election's Coming." The inside of one card said "Me and Honey Badger Don't Give a $#%@! Happy Birthday." The inside of the other card said "Honey Badger and me just don't care." Happy Birthday." Two "Birthday Cards" featured different pictures of a honey badger and stated either "It's Your Birthday!" or "Honey Badger Heard It's Your Birthday!" Inside both cards said "Honey Badger Don't Give a S---." The backs of the cards included the mark "Recycled Paper Greetings" and the web site URLs www.dcistudios.com and www.prgreetings.com. DCI's president testified that he drafted all of the cards, could not recall what inspired the designs, but claimed he never heard of a video involving a honey badger.
Gordon sued for trademark infringement under the Lanham Act among other claims. The district court granted summary judgment for defendants ruling that defendants' greeting cards were expressive works, and holding that Gordon's claims were barred by the test set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).
On appeal, the Ninth Circuit observed that it has adopted the Second Circuit's Rogers test to strike an appropriate balance between First Amendment interests in protecting artistic expression and the Lanham Act's purposes in securing trademark rights.
Under Rogers, we read the Act "to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression." Slip op. at *11-12 (quoting Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900 (9th Cir. 2002) (quoting Rogers, 875 F.2d at 999)). More concretely, we apply the Act to an expressive work only if the defendant's use of the mark (1) is not artistically relevant to the work or (2) explicitly misleads consumers as to the source or content of the work." Slip op. at *12 (quoting Mattel, 296 F.3d at 901). Effectively, Rogers employs the First Amendment as a rule of construction to avoid conflict between the Constitution and the Lanham Act." Id.
The Ninth Circuit clarified the burden of proof under the Rogers test:
The Rogers test requires the defendant to make a threshold legal showing that its allegedly infringing use is part of an expressive work protected by the First Amendment. If the defendant successfully makes that threshold showing, then the plaintiff claiming trademark infringement bears a heightened burden – the plaintiff must satisfy not only the likelihood-of-confusion test but also at least one of Roger's two prongs. . . . . That is, when the defendant demonstrates that First Amendment interests are at stake, the plaintiff claiming infringement must show (1) that it has a valid, protectable trademark, and (2) that the mark is either not artistically relevant to the underlying work or explicitly misleading as to the source or content of the work. If the plaintiff satisfies both elements, it still must prove that its trademark has been infringed by showing that the defendant's use of the mark is likely to cause confusion."
Slip op. at *12-13 (citations omitted).
The Ninth Circuit determined that defendants met their initial burden of demonstrating that the greeting cards are expressive works protected under the First Amendment. "Each of defendants' cards relies on graphics and text to convey a humorous message through the juxtaposition of an event of some significance – a birthday, Halloween, an election – with the honey badger's aggressive assertion of apathy." Slip op. at *23. The court observed that "[a]lthough the cards may not share the creative artistry of Charles Schulz or Sandra Boynton, the First Amendment protects expressive works '[e]ven if [they are] not the expressive equal of Anna Karenina or Citizen Kane.'" Id. (quoting Brown v. Electronic Arts, Inc., 724 F.3d 1235, 1241 (9 Cir. 2013)).
Because defendants met their initial burden, the burden shifted to Gordon to raise a triable issue of fact as to at least one of the Rogers two prongs – that the mark is not artistically relevant to the underlying work or is explicitly misleading as to the source or content of the work. Slip op. at *23.
The court found that use of the Honey Badger marks was "artistically relevant" to the defendants' greeting cards because "'the level of artistic relevance of the trademark or other identifying material to the work merely must be above zero.'" Id. (quoting Brown, 724 F.3d at 1243). "'[E]ven the slightest artistic relevance' will suffice." Id. (quoting Brown, 724 F.3d at 1243). The marks were relevant to defendants' greeting cards as the phrases were the punchline on which the cards' humor turns. Slip op. at *24. The court concluded that Gordon had not raised a triable issue of fact with respect to Rogers' "artistic relevance" prong.
Under the second prong of Rogers, the creator of the challenged work can be liable under the Lanham Act if the creator's use of the mark is "explicitly misleading as to source or content." Slip op. at *24 (quoting Rogers, 875 F.2d at 999).
"This second prong of the Rogers test 'points directly at the purpose of trademark law, namely to avoid confusion in the marketplace by allowing a trademark owner to prevent others from duping consumers into buying a product they mistakenly believe is sponsored [or created] by the trademark owner." Brown, 724 F.3d at 1245 (other quotations omitted). The "key here [is] that the creator must explicitly mislead consumers," and we accordingly focus on "the nature of the [junior user's] behavior" rather than on the "impact of the use." Id. at 1245-46.
Slip op. at *24-25 (emphasis in original).
The Ninth Circuit rejected the district court's "rigid requirement that, to be explicitly misleading, the defendant must make 'an affirmative statement of the plaintiff's sponsorship or endorsement.' Such a statement may be sufficient to show that the use of a mark is explicitly misleading, but is not a prerequisite." Id., Slip op. at *25. "In some instances, the use of a mark alone may explicitly mislead consumers about a product's source if consumers would ordinarily identify the source by the mark itself. Id., Slip op. at *25-26. "A more relevant consideration is the degree to which the junior user uses the mark in the same way as the senior user." Id., Slip op. at *26. It reasoned that "the potential for explicitly misleading usage is especially strong when the senior user and the junior user both use the mark in similar artistic expressions." Id., Slip op. at *27-28. "[U]sing a mark as the centerpiece of an expressive work itself, unadorned with any artistic contribution from the junior user, may reflect nothing more than an effort to 'induce the sale of goods or services' by confusion or 'lessen the distinctiveness and thus the commercial value of' a competitor's mark." Id., Slip op. at *28-29.
The court ruled that it could not decide as a matter of law that defendants' use of the Honey Badger marks was not explicitly misleading. "There is at least a triable issue of fact as to whether defendants simply used Gordon's mark with minimal artistic expression of their own, and used it in the same way that Gordon was using it – to identify the source of humorous greeting cards in which the bottom line is "Honey Badger don't care." The court held that a jury must decide whether defendants' use of the Honey Badger marks on one or more of the greeting cards is explicitly misleading as to the source or content of the cards. Id., Slip op. at *30, 31. It reversed and remanded for further proceedings.
Okay. Here's a link to Randall's video: The Crazy Nasty--- Honey Badger
Rating: PG-13 (Mild profanity; Animal on animal violence)
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