Honey Badger Makes Headlines in Ninth Circuit

Advertising Law

The honey badger is having another round of fame, thanks to a new Lanham Act opinion from the U.S. Court of Appeals, Ninth Circuit.

In January 2011, Christopher 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. Gordon repeated variations on the phrases “Honey Badger Don’t Care” (HBDC) and “Honey Badger Don’t Give a S***” (HBDGS), as a honey badger hunted and ate its prey.

The video went viral and became the subject of many pop culture references on television and in social media. Gordon began producing and selling goods with the HBDC and HBDGS phrases, such as T-shirts, plush toys and wall calendars. Gordon also copyrighted his video narration and filed trademark applications for the HBDC phrase for various classes of goods, including greeting cards.

Via a licensing deal reached in 2012, honey badger greeting cards were sold using variations on the phrases. One of the best sellers stated: “Honey Badger Don’t Care About Your Birthday.”

Beginning in June 2012, however, Drape Creative, Inc. (DCI), developed its own line of unlicensed honey badger greeting cards that featured different takes on the HBDC and HBDGS phrases. For example, 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 read, “Honey Badger Don’t Give a S***.”

Gordon sued for trademark infringement. The district court granted summary judgment in favor of the defendants, holding that the plaintiff’s claims were barred by the test set forth in the 1989 Second Circuit decision of Rogers v. Grimaldi.

Used to balance the competing interests when a trademark owner claims that an expressive work infringes on its trademark rights, the two-part test requires the court to decide, first, whether the mark is not artistically relevant to the work and, second, whether the work explicitly misleads consumers as to the source or the content of the work.

On appeal, the Ninth Circuit reviewed its five prior cases applying the Rogers test. In each of those cases, the panel ruled that no reasonable jury could have found for the plaintiff on either prong of the Rogers test and concluded that the plaintiff’s Lanham Act claim failed as a matter of law.

“This case, however, demonstrates Rogers’s outer limits,” the court wrote. “Although defendants’ greeting cards are expressive works to which Rogers applies, there remains a genuine issue of material fact as to Rogers’s second prong—i.e., whether defendants’ use of Gordon’s mark in their greeting cards is explicitly misleading.”

The panel rejected the district court’s requirement that the defendant must make an “affirmative statement of the plaintiff’s sponsorship or endorsement” in order to show that the use of the mark is explicitly misleading.

“A more relevant consideration is the degree to which the junior user uses the mark in the same way as the senior user,” the court said. In the prior Ninth Circuit cases, the junior user employed the mark in a different context—“often in an entirely different market” than did the senior user, the court pointed out.

A second consideration relevant to the panel’s inquiry: the extent to which the junior user has added his or her own expressive content to the work beyond the mark itself. Using a mark as the centerpiece of an expressive work itself, unadorned with any artistic contribution by the junior user, “may reflect nothing more than an effort to ‘induce the sale of goods or services’ by confusion or ‘lessen[] the distinctiveness and thus the commercial value of’ a competitor’s mark,” the court wrote.

“In this case, we cannot decide as a matter of law that defendants’ use of Gordon’s mark was not explicitly misleading,” the Ninth Circuit concluded. “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.’”

The panel reversed summary judgment in favor of the defendant and remanded the case to the district court.

To read the opinion in Gordon v. Drape Creative, Inc., click here.

Why it matters: Advertising and marketing attorneys, take note: The decision marks the first time the Ninth Circuit has found that the Rogers test does not bar an infringement claim as a matter of law and presents a triable issue of fact. Or, as the panel wrote, “The Rogers test is not an automatic safe harbor for any minimally expressive work that copies someone else’s mark.”

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