By George Basharis, J.D.
The U.S. Court of Appeals for the Ninth Circuit reversed summary judgment granted in favor of the creator and distributor of greeting cards in a trademark infringement suit that involved the use of popular Internet catchphrases because use of the trademarked phrases may not have been artistically relevant to the greeting cards. Although the greeting cards were expressive works protected under the First Amendment, the appellate court determined that there was a triable issue of fact as to whether the greeting card makers added their own artistic expression to the cards beyond that represented by the trademarked catchphrases (Gordon v. Drape Creative, Inc., July 30, 2018, Bybee, J.).
Background. Christopher Gordon, the trademark owner, created the catchphrases "Honey Badger Don’t Care" and "Honey Badger Don’t Give a S---" (the "Honey-Badger phrases") in a video Gordon posted on YouTube 2011, which quickly generated millions of views. As a result of Gordon’s video, the Honey-Badger phrases became widely used in pop-culture references in television shows, magazines, and social media. Typically, the phrases conveyed a humorous message through the juxtaposition of an event of some significance with a honey badger’s aggressive assertion of apathy. Gordon began using and licensing the Honey-Badger phrases in connection with various types of honey-badger themed products, including greeting cards. Gordon also obtained a federal registration for the HONEY BADGER DON’T CARE mark in connection with several classes of goods.
Dispute. Drape Creative, Inc. ("DCI") and Papyrus-Recycled Greetings, Inc. ("PRG") designed and produced their own greeting cards using the Honey-Badger catchphrases without obtaining a license from Gordon. Gordon sued DCI and PRG for trademark infringement but the district court granted summary judgment in favor of DCI and PRG, holding that the trademark infringement claims were barred by the test set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Under the Rogers test, the Lanham Act applies to artistic expressions only if the "use of a licensed mark is not artistically relevant to the work or explicitly misleads consumers as to the source or content of the work."
Artistic relevance. In all cases to date that centered on the use of a trademark involving an artistic expression, the Ninth Circuit has held that as a matter of law the licensed marks were artistically relevant to the underlying works. The threshold of artistic relevance is low, the appellate court noted, it "need only exceed zero." But the present case demonstrated the "outer limits" of Rogers.
The Honey-Badger catchphrases were clearly relevant to DCI’s and PRG’s greeting cards: the phrases were the punchlines on which the cards’ humor turned. However, the "artistic relevance" inquiry, the court noted, required a showing that DCI and PRG used the licensed phrases for their own artistic reasons. The use of the licensed phrases was not artistically relevant, the court continued, if DCI and PRG used the phrases simply to appropriate the goodwill "inhering in" the phrases. Specifically, there was a triable question of fact as to whether DCI’s and PRG’s use of the Honey-Badger phrases was distinguishable from Gordon’s use of the phrases and whether DCI and PRG "imbued" their greeting cards with "expressive value" apart from that contained in the trademarked phrases. A jury could find, the court concluded, that DCI’s and PRG’s greeting cards only made sense to those familiar with Gordon’s works.
This case is No. 16-56715.
Attorneys: Ralph Charles Loeb (Krane & Smith APC) for Christopher Gordon. Douglas J. Collodel (Clyde & Co US LLP) for Drape Creative, Inc. and Papyrus-Recycled Greetings, Inc.
Companies: Drape Creative, Inc.; Papyrus-Recycled Greetings, Inc.
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