and Submitted April 9, 2018 Pasadena, California
from the United States District Court for the Central
District of California, No. 2:15-cv-04905-JFW-PLA John F.
Walter, District Judge, Presiding
L. Reback (argued) and Ralph C. Loeb, Krane & Smith,
Encino, California, for Plaintiff-Appellant.
Douglas J. Collodel (argued), Kanika D. Corley, and James
J.S. Holmes, Sedgwick LLP, Los Angeles, California, for
Before: Danny J. Boggs, [*] Jay S. Bybee, and Paul J. Watford,
panel reversed the district court's grant of summary
judgment in favor of defendants in a trademark infringement
suit under the Lanham Act.
designed and produced greeting cards using "Honey
Badger" catchphrases from plaintiff Christopher
Gordon's YouTube video.
the Rogers test, the Lanham Act applies to
expressive works only where the public interest in avoiding
consumer confusion outweighs the public interest in free
expression. This balance will normally not support
application of the Act unless the use of the mark has no
artistic relevance to the underlying work whatsoever or
explicitly misleads consumers as to the source or the content
of the work.
panel held that there was a triable issue of fact because a
jury could determine that defendants did not add any value
protected by the First Amendment, but merely appropriated the
goodwill associated with Gordon's mark. The panel
reversed the district court and remanded for further
proceedings on Gordon's claims.
Christopher Gordon is the creator of a popular You Tube video
known for its catchphrases "Honey Badger Don't
Care" and "Honey Badger Don't Give a
S---." Gordon has trademarked the former phrase for
various classes of goods, including greeting cards.
Defendants Drape Creative, Inc. ("DCI"), and
Papyrus-Recycled Greetings, Inc. ("PRG"), designed
and produced greeting cards using both phrases with slight
variations. Gordon brought this suit for trademark
infringement, and the district court granted summary judgment
for defendants, holding that Gordon's claims were barred
by the test set forth in Rogers v. Grimaldi, 875
F.2d 994 (2d Cir. 1989).
the Rogers test to balance the competing interests
at stake when a trademark owner claims that an expressive
work infringes on its trademark rights. The test construes
the Lanham Act to apply to expressive works "only where
the public interest in avoiding consumer confusion outweighs
the public interest in free expression." Id. at
999. "[T]hat balance will normally not support
application of the Act, unless the [use of the mark] has no
artistic relevance to the underlying work whatsoever, or . .
. explicitly misleads [consumers] as to the source or the
content of the work." Id.
Rogers test is not an automatic safe harbor for any
minimally expressive work that copies someone else's
mark. Although on every prior occasion in which we have
applied the test, we have found that it barred an
infringement claim as a matter of law, this case presents a
triable issue of fact. Defendants have not used another's
mark in the creation of a song, photograph, video game, or
television show, but have largely just pasted Gordon's
mark into their greeting cards. A jury could determine that
defendants did not add any value protected by the First
Amendment but merely appropriated the goodwill associated
with Gordon's mark. We therefore reverse the district
court's grant of summary judgment and remand for further
proceedings on Gordon's claims.
Christopher Gordon is a comedian, writer, and actor, who
commonly uses the name "Randall" as an alias on
social media. Defendant DCI is a greeting-card design
studio. DCI works exclusively with American Greetings
Corporation and its subsidiaries, which include the other
defendant in this case, PRG. PRG is a greeting-card
manufacturer and distributor.
January 2011, under the name Randall, Gordon posted a video
on YouTube titled The Crazy Nastyass Honey Badger,
featuring National Geographic footage of a honey badger
overlaid with Gordon's narration. In the video, Gordon
repeats variations of the phrases "Honey Badger
Don't Care" and "Honey Badger Don't Give a
S---," as a honey badger hunts and eats its prey. The
parties refer to these phrases as "HBDC" and
"HBDGS," and we adopt their convention.
video quickly generated millions of views on YouTube and
became the subject of numerous pop-culture references in
television shows, magazines, and social media. As early as
February 2011, Gordon began producing and selling goods with
the HBDC or HBDGS phrases, such as books, wall calendars,
t-shirts, costumes, plush toys, mouse pads, mugs, and decals.
Some of the items were sold online; others were sold through
national retailers such as Wal-Mart, Target, Urban
Outfitters, and Hot Topic. In June 2011, Gordon copyrighted
his video's narration under the title Honey Badger
Don't Care, and in October 2011, he began filing
trademark applications for the HBDC phrase for various
classes of goods. The Patent and Trademark Office
("PTO") eventually registered "Honey Badger
Don't Care" for International Classes 9 (audio
books, etc.), 16 (greeting cards, etc.), 21 (mugs), 25
(clothing), and 28 (Christmas decorations, dolls,
etc.). However, Gordon never registered the HBDGS
phrase for any class of goods.
peak of his popularity, Gordon promoted his brand on
television and radio shows and in interviews with national
publications such as Forbes, The Wall Street
Journal, and The Huffington Post. His brand was
further boosted by celebrities like Taylor Swift and Anderson
Cooper quoting his video and by LSU football players tagging
their teammate, Heisman Trophy finalist Tyrann Mathieu, with
the moniker "Honey Badger" for his aggressive
defensive play. In November 2011, Advertising Age
referred to Gordon's brand as one of "America's
Hottest Brands" in an article titled "Hot Brand?
Honey Badger Don't Care."
January 2012, Gordon hired Paul Leonhardt to serve as his
licensing agent. Soon thereafter, Leonhardt contacted Janice
Ross at American Greetings-the parent company of defendant
PRG-to discuss licensing honey-badger themed greeting cards.
Leonhardt and Ross had multiple email exchanges and
conversations over several weeks. Ross at one point expressed
some interest in a licensing agreement, stating: "I
think it's a really fun and irreverent property and would
love to see if there's an opportunity on one of our
distribution platforms. But in order to do that, I need to
get some key colleagues of mine on board the Crazy Honey
Badger Bandwagon." Nevertheless, neither American
Greetings nor defendants ever signed a licensing agreement
did eventually secure several licensing deals for Gordon.
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. RHB also entered
into licensing agreements with other companies for
honey-badger costumes, toys, t-shirts, sweatshirts, posters,
and decals, among other things. HBDC and HBDGS were the two
most common phrases used on these licensed products. For
example, two ...