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Gordon v. Drape Creative, Inc.

United States Court of Appeals, Ninth Circuit

July 30, 2018

Christopher Gordon, an individual, Plaintiff-Appellant,
v.
Drape Creative, Inc., a Missouri corporation; Papyrus-Recycled Greetings, Inc., an Illinois corporation, Defendants-Appellees.

          Argued and Submitted April 9, 2018 Pasadena, California

          Appeal 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

          Daniel 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 Defendants-Appellees.

          Before: Danny J. Boggs, [*] Jay S. Bybee, and Paul J. Watford, Circuit Judges.

         SUMMARY [**]

         Trademark

         The panel reversed the district court's grant of summary judgment in favor of defendants in a trademark infringement suit under the Lanham Act.

         Defendants designed and produced greeting cards using "Honey Badger" catchphrases from plaintiff Christopher Gordon's YouTube video.

         Under 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.

         The 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.

          OPINION

          BYBEE, CIRCUIT JUDGE:

         Plaintiff 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).

         We use 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.

         The 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.

         I

         Plaintiff Christopher Gordon is a comedian, writer, and actor, who commonly uses the name "Randall" as an alias on social media.[1] 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.

         A

         In 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.

         Gordon's 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.).[2] However, Gordon never registered the HBDGS phrase for any class of goods.

         At the 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."

         B

         In 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 with Gordon.

         Leonhardt 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 ...


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