Ninth Circuit finds triable issue of fact as to whether defendants’ use of plaintiff’s social media-inspired “Honey Badger” trademark in greeting cards added artistic expression to cards beyond the expression represented by mark itself, reversing district court’s grant of summary judgment dismissing plaintiff’s Lanham Act claims.

Christopher Gordon created the popular YouTube video “The Crazy Nastyass Honey Badger,” in which he narrates National Geographic footage of a honey badger hunting and eating its prey. The video is known for its catchphrases, including “Honey Badger Don’t Give a S---” and “Honey Badger Don’t Care.” Gordon trademarked the latter phrase for various classes of goods, including greeting cards, but never registered the phrase “Honey Badger Don’t Give a S---.” Gordon brought trademark infringement claims against Drape Creative, Inc., a greeting-card design studio, and Papyrus-Recycled Greetings Inc., a greeting card manufacturer and distributor, for selling greeting cards using variations of both catchphrases without Gordon’s permission. The district court granted summary judgment for defendants, holding that the greeting cards were expressive works and that plaintiff’s claims were barred by Rogers v. Grimaldi, which precludes trademark claims unless the mark has no artistic relevance to defendant’s expressive work or defendant’s use is expressly misleading as to the source or content of the work. Gordon appealed and the Ninth Circuit reversed, finding a triable issue of material fact as to whether defendants’ use of the mark added any value protected by the First Amendment or it instead merely “appropriated the goodwill associated with Gordon’s mark.”

Under the Lanham Act, an owner of a mark has a cause of action against any person who “use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.” In order to prevail on a claim under the Lanham Act, an owner must prove that it has a valid, protectable trademark and that the use of the mark is likely to cause confusion. Under the Rogers test, a plaintiff may not maintain a Lanham Act claim where defendant uses the mark in connection with an expressive work, the use is artistically relevant to the work, and it does not explicitly mislead consumers as to the source or the content of the work. The use of a mark is “not artistically relevant if the defendant uses it merely to appropriate the goodwill inhering in the mark or for no reason at all.”

While the court found that defendants’ greeting cards are expressive works protected by the First Amendment, it held that a jury could conclude that defendants’ uses of Gordon’s marks were not artistically relevant to their greeting cards as a matter of law. Construing the facts in the light most favorable to Gordon, the court held that defendants “may have merely appropriated the goodwill inherent in plaintiff’s mark without adding any creativity of their own.” A jury could conclude that the defendants used the phrases in the same way as plaintiff — “to make humorous greeting cards in which the bottom line is ‘Honey Badger don’t care’” — and not in any way that added expressive value apart from that already contained in Gordon’s trademarked phrases. Defendants could not “simply copy a trademark into their greeting cards without adding their own artistic expression or elements and claim the same First Amendment protection as the original artist.”