Honey Badger Does Care About First Amendment Protections in Trademark Law.

• Author: Kramer, Dana

Gordon v. Drape Creative, Inc., 897 F.3d 1184 (9th Cir. 2018)

1. INTRODUCTION

   In his viral YouTube video, The Crazy Nastyass Honey Badger, comedian Christopher Gordon narrates a honey badger's actions as it hunts cobras and eats larvae from a beehive: "But look, the honey badger doesn't care. It's getting stung like a thousand times. It doesn't give a shit." (1) Shortly after Gordon's video went viral, Drape Creative, Inc. and Papyrus-Recycled Greetings, Inc. began producing greeting cards with catchphrases from Gordon's YouTube video even though the companies did not have a licensing agreement with Gordon. (2) Subsequently, in Gordon v. Drape Creative, Inc., Gordon sued those two companies for trademark infringement. (3)

   Trademarks assist the public in identifying the source of a good, service, or product. (4) However, trademarks often develop their own social meaning beyond their source-identifying function, like "Google" or "Band-Aid." (5) Trademarks are frequently used for non-source-identifying purposes in expressive works such as song titles, video games, or greeting cards. (6) In these instances, overly broad interpretations of trademark rights may endanger First Amendment free speech values. (7) Additionally, in trademark infringement suits, courts inconsistently apply various tests, including the Rogers test and the likelihood of confusion test, to determine whether use of a particular trademark is infringement, adding another barrier to the protection of free expression. (8)

   In Gordon v. Drape Creative, Inc., the United States Court of Appeals for the Ninth Circuit allowed Gordon to pursue his trademark claims against the greeting card companies. (9) But the court's holding restricts First Amendment freedom of expression and adds more confusion to an already murky area of law, causing internal tension in the Ninth Circuit. The Gordon decision also drives a deeper wedge into a circuit split on the issue of First Amendment protections within trademark law, making this issue ripe for the United States Supreme Court to review. This Note argues trademark laws should be interpreted to avoid collision with constitutional free speech doctrine, meaning confusion may need to be tolerated sometimes for the sake of preserving free speech. (10) Part II relays the facts and holding of Gordon. Part III provides legal background for the issues presented in Gordon. Part IV relates the Ninth Circuit's decision and reasoning in Gordon, and Part V comments on the implications of the Ninth Circuit's opinion.

2. FACTS AND HOLDING

   In 2015, Plaintiff Christopher Gordon filed a trademark infringement action under the Lanham Act (11) against Defendants Drape Creative, Inc. ("DCI") and Papyrus-Recycling Greetings, Inc. ("PRG") ("Defendants," collectively) for using catchphrases from Gordon's popular YouTube video. (12) PRG, a greeting card manufacturer, is a subsidiary of DCI, a Missouri greeting card design studio. (13) Gordon is a comedian most known for his YouTube video titled The Crazy Nastyass Honey Badger (14) In his video, Gordon narrates National Geographic footage of a honey badger, using catchphrases such as "Honey Badger Don't Give a Shit" ("HBDGS") and "Honey Badger Don't Care" ("HBDC") to describe the honey badger's behavior. (15) In February 2011, Gordon began producing and selling items with the HBDC and HBDGs marks, including books, calendars, t-shirts, and mugs. (16) Shortly thereafter, Gordon copyrighted his narration in the YouTube video and registered HBDC with the United States Patent and Trademark Office ("USPTO") for various classes of goods, which included greeting cards. (17) However, Gordon never registered HBDGS with USPTO. (18)

   In 2012, Gordon's licensing agent secured agreements with two companies, Zazzle, Inc. and The Duck Company, for honey badger themed products, including greeting cards. (19) That same year, Gordon's licensing agent met with PRG to discuss licensing honey badger themed greeting cards. (20) However, unlike Zazzle, Inc. and The Duck Company, PRG never signed a licensing agreement with Gordon. (21) Nonetheless, PRG began producing its own line of honey badger greeting cards in June 2012. (22)

   PRG sold a total of seven different greeting cards with Gordon's catch-phrases. (23) Of the seven, two were election cards showing a honey badger wearing a patriotic hat and stating "The Election's Coming." (24) On the inside, one card read "Me and Honey Badger don't give a $#%@!" and the other said "Honey Badger and me just don't care." (25) Two birthday cards pictured a honey badger saying either "It's Your Birthday!" or "Honey Badger Heard It's Your Birthday." (26) Inside, both cards read "Honey Badger Don't Give a Shit." (27) Two Halloween cards portrayed a honey badger standing next to a pumpkin and stated "Halloween is Here." (28) Inside, the cards read either "Honey Badger don't give a $#*%" or "Honey Badger don't give a s---." (29) Finally, one card resembled a Twitter page and depicted a series of messages from Honey-Badger@don'tgiveas---. (30) 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---." (31) Inside, the card read "Your Birthday's here... I give a s---." (32) The back of each card displayed PRG's mark and listed websites for both DCI and PRG. (33)

   In June 2015, Gordon filed an action under the Lanham Act against Defendants alleging trademark infringement. (34) The United States District Court for the Central District of California granted summary judgment for Defendants. (35) The district court found Defendants' greeting cards were expressive works, (36) triggering use of the Rogers test to bar all of Gordon's claims. (37) The Rogers test is a two-pronged inquiry that generally provides that the Lanham Act shall not apply unless the underlying work has no artistic relevance whatsoever, or, if the work has some artistic relevance, the Lanham Act does not apply unless the work explicitly misleads consumers as to the source or content of the work. (38) The Rogers test balances two competing interests: the public interest in avoiding confusion about the source of a product and the public interest in freedom of expression. (39) In granting summary judgment, the district court found that Defendants' use of Gordon's mark was not explicitly misleading because Defendants did not make "an affirmative statement of the plaintiff's sponsorship or endorsement." (40)

   On appeal to the United States Court of Appeals for the Ninth Circuit, Gordon argued that Defendants' greeting cards were not expressive works entitled to First Amendment protection and that Defendants' use of Gordon's catchphrases were not "artistically relevant" to the greeting cards. (41) Gordon also urged that even if the Rogers test did apply, Defendants' use of his trademark was "explicitly misleading." (42) In response, Defendants argued that their greeting cards were expressive works that did not identify Gordon as the source. (43) Therefore, Defendants urged that they were entitled to the application of the Rogers test and protection under the First Amendment. (44)

   The Ninth Circuit reversed the district court's decision and remanded the case for further fact-finding on "whether defendants' use of Gordon's mark is artistically relevant to their cards." (45) In doing so, the Ninth Circuit held that use of a mark is "artistically relevant" when the mark relates to Defendants' work and Defendants add their own artistic expression beyond that of the mark. (46)

   Shortly after the Ninth Circuit published its opinion, Defendants filed a petition for panel rehearing and for rehearing en banc. (47) The petition urged that the Ninth Circuit's decision "create[d] considerable confusion" in applying the Rogers test to evaluate artistic relevance. (48) Additionally, thirty-seven law professors filed an amicus brief, arguing that trademark law, unlike copyright law, (49) does not protect creators and their creations but rather protects the source-identifying function of trademarks. (50) The amicus curiae argued that Gordon's requirement of an artistry inquiry "threatens Rogers' protection across a broad range of works and creates a conflict with copyright law and with prior decisions of [the Ninth] and other circuits." (51) The amicus curiae concluded by calling for a decision consistent with Rogers and its progeny. (52)

   The Ninth Circuit granted rehearing and issued a superseding opinion. (53) The Ninth Circuit again reversed and remanded the district court's grant of summary judgment and also created new requirements for the second prong of the Rogers test. (54) In its revised opinion, the Ninth Circuit resolved the first prong of the Rogers test against Gordon, finding that Defendants' use of the honey badger phrases was artistically relevant. (55) When considering Rogers' second prong, however, the Ninth Circuit rejected the district court's standard of "an affirmative statement of the plaintiff's sponsorship or endorsement" and added two subfactors to be considered when analyzing whether use of a mark is explicitly misleading. (56) The first is "the degree to which the junior user uses the mark in the same ways as the senior user." (57) The second is "the extent to which the junior user has added his or her own expressive content to the work beyond the mark itself." (58) The Ninth Circuit also expanded the Rogers test to include a "likelihood of confusion" analysis if both prongs of the Rogers test are met. (59) Holding that Defendants' use was artistically relevant as a matter of law, the Ninth Circuit remanded the case for further fact-finding of whether Defendants' use was explicitly misleading. (60)

3. LEGAL BACKGROUND

   Trademark law serves a dual purpose in protecting consumers against deception and confusion while protecting the producer's infringed trademark as property. (61) Generally, these two goals complement...