‘Honey Badger Don’t Care’ But the Ninth Circuit Does, Finds Triable Issue of Fact in Gordon v. Drape Creative

On Tuesday, November 20th, the Court of Appeals for the Ninth Circuit issued a decision in Gordon v. Drape Creative, which reversed a district court’s grant of summary judgment in a trademark case brought against a greeting card company by the creator of the widely viewed YouTube video The Crazy Nastyass Honey Badger. Applying the Rogers test, the Ninth Circuit panel found that there was a triable issue of fact regarding whether Drape Creative’s use of the Honey Badger marks constituted a violation of the Lanham Act.

Christopher Gordon, under the pseudonym “Randall,” released the Honey Badger movie in 2011 and the 3:20-long video has been viewed more than 89 million times. Gordon filed trademark applications to cover the use of the video’s well-known phrase Honey Badger Don’t Care in various classes including audio books, greeting cards, mugs and clothing. In 2012, Gordon hired a licensing agent who contacted American Greetings, the parent company of co-defendant Papyrus-Recycled Greetings, to discuss a potential licensing deal but those parties never agreed to a deal. Beginning in une 2012, the defendants released a series of seven greeting cards, including birthday, Halloween and election cards, which made use of the trademarked phrase Honey Badger Don’t Care and another well-known phrase from the video, Honey Badger Don’t Give A S—.

Gordon brought suit for trademark infringement against the defendants in June 2015 in the Central District of California. The district court applied the Rogers test and found that the defendants’ greeting cards were expressive works, barring Gordon’s trademark claims on summary judgment as a matter of law.

On appeal, the Ninth Circuit panel revisited the application of the Rogers test, which comes from the Second Circuit’s 1989 decision in Rogers v. Grimaldi. This test balances the rights of trademark owners under the Lanham Act with the freedom of artistic expression guaranteed under the First Amendment. In Rogers v. Grimaldi, movie star Ginger Rogers sued the producers and distributors of Federico Fellini’s 1989 film Ginger and Fred and while the Second Circuit noted that Rogers had a right to protect the trademark in her name, the title was only an oblique reference to Rogers and Fred Astaire and upholding Rogers’ trademark claim would unduly restrict expression. The Ninth Circuit had previously applied the Rogers test on five occasions, finding each time that the test barred the plaintiff’s trademark claims. These cases include 2002’s Mattel v. MCA Records, where Mattel sued the producers of the Aqua song Barbie Girl, and 2008’s E.S.S. Entertainment 2000 v. Rock Star Videos, in which the owner of a gentleman’s club in East Los Angeles sued the makers of Grand Theft Auto: San Andreas over the depiction of a very similar establishment within the game.

To trigger the Rogers test, a defendant in a trademark case must first establish that the allegedly infringing use of the mark is part of an expressive work which has protections under the First Amendment. The Ninth Circuit panel had “little difficulty” determining that this initial burden was met by the defendants. “Although 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,’” the Ninth Circuit’s opinion reads.

As this burden was established by defendants, the Ninth Circuit’s analysis then went on to determine whether the second of Rogers’ two prongs were satisfied: namely, whether the mark is relevant to the underlying work or is explicitly misleading to the source or content of the work. In the first part of this analysis, the Ninth Circuit determined that Gordon’s mark was “certainly relevant” to the greeting cards as the mark serves as the punchline for the humor attempted by the cards, thus there was no triable issue of fact as to the artistic relevance of the mark.

In the second part of this analysis, however, the Ninth Circuit threw out the district court’s rigid requirement that the defendants had to have made an affirmative statement of the plaintiff’s sponsorship in order to be explicitly misleading. In other cases involving the Rogers test and decided by the Ninth Circuit, the junior user had used the asserted mark in a different context or in an entirely different market than the mark’s owner. In this case, however, “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.’”

Although Gordon’s evidence wasn’t “bulletproof,” the Ninth Circuit found that the use of the mark could be explicitly misleading as to the source of the greeting cards and remanded the case back to the district court for further proceedings.