Gordon v. Drape Creative, Inc.

• Decision Date: 20 November 2018
• Docket Number: No. 16-56715,16-56715
• Parties: Christopher GORDON, an Individual, Plaintiff-Appellant, v. DRAPE CREATIVE, INC., a Missouri Corporation; Papyrus-Recycled Greetings, Inc., an Illinois Corporation, Defendants-Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

909 F.3d 257

Christopher GORDON, an Individual, Plaintiff-Appellant,

v.DRAPE CREATIVE, INC., a Missouri Corporation; Papyrus-Recycled Greetings, Inc., an Illinois Corporation, Defendants-Appellees.

No. 16-56715

United States Court of Appeals, Ninth Circuit.

Argued and Submitted April 9, 2018 Pasadena, California

Filed November 20, 2018

Daniel L. Reback (argued) and Ralph C. Loeb, Krane & Smith, Encino, California, for Plaintiff-Appellant.

Douglas J. Collodel (argued) and James J.S. Holmes, Clyde & Co US LLP, Los Angeles, California, for Defendants-Appellees.

Mark A. Lemley, Professor, Stanford Law School, Stanford, California, for Amici Curiae 37 Intellectual Property Law Professors.

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

ORDER

Appellees’ petition for panel rehearing (Dkt. No. 39) is GRANTED . The opinion filed July 30, 2018, and published at 897 F.3d 1184, is withdrawn. The superseding opinion shall be filed concurrently with this order.

Further petitions for rehearing or petitions for rehearing en banc shall be allowed in the above-captioned matter. See Ninth Circuit General Order 5.3(a).

OPINION

BYBEE, Circuit Judge:

Plaintiff Christopher Gordon is the creator of a popular YouTube 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 Gordon’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 this use of Gordon’s mark is explicitly misleading as to the source or content of the cards. 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 of Zazzle’s best-selling honey-badger greeting cards stated on their front covers "Honey Badger Don’t Care About Your Birthday."

At the same time that Gordon was negotiating licensing agreements with Zazzle and Duck, defendants began developing their own line of unlicensed honey-badger greeting cards. Beginning in June 2012, defendants sold seven different greeting cards using the HBDC or HBDGS phrases with small variations:

• The fronts of 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," and the inside of the other said "Honey Badger and me just don’t care. Happy Birthday."

• The fronts of 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." The inside of both cards said "Honey Badger Don’t Give a S- - -."

• The fronts of two "Halloween Cards" showed a picture of a honey badger next to a jack-o-lantern and stated "Halloween is Here." The inside of the cards said either "Honey Badger don’t give a $#*%!" or "Honey Badger don’t give a s- - -."

• A "Critter Card" employed a Twitter-style format showing a series of messages from "Honey Badger@don’tgiveas- - -." The front stated "Just killed a cobra. Don’t give a s- - -"; "Just ate a scorpion. Don’t give a s- - -"; and "Rolling in fire ants. Don’t give a s- - -."³ The inside said "Your Birthday’s here ... I give a s- - -."

The back cover of each card displayed the mark for "Recycled Paper Greetings" and listed the websites www.DCIStudios.com and www.prgreetings.com. DCI’s President testified that he drafted all of the cards in question but could not recall what inspired the cards’ designs. He claimed to have never heard of a video involving a honey badger.

In June 2015, Gordon filed this suit against DCI and PRG, alleging trademark infringement under the Lanham Act, among other claims. The district court granted summary judgment for defendants, holding that defendants’ greeting cards were expressive works, and applying the Rogers test to bar all of Gordon’s claims. Gordon timely appealed.⁴

II

The Lanham Act, 15 U.S.C. § 1051 et seq. ,"creates a comprehensive framework for regulating the use of trademarks and protecting them against infringement, dilution, and unfair competition." Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Mgmt., Inc. , 618 F.3d 1025, 1030 (9th Cir. 2010). The Act’s two underlying purposes are to ensure that (1) "owners of trademarks can benefit from the goodwill associated with their marks" and (2) "consumers can distinguish among competing producers." Id. ; see also 1 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION § 2:2 (5th ed.) (" MCCARTHY ") (explaining the dual purposes of trademark law).

Under the Act, the owner of a trademark used in commerce may register the mark with the PTO. Registration is prima facie evidence of the mark’s validity and of the owner’s exclusive right to use the mark in connection...