In a trademark dispute stemming from a 2011 viral video and internet meme titled “The Crazy Nastyass Honey Badger,” the US Court of Appeals for the Ninth Circuit ruled in favor of the defendant greeting card companies, finding that there was a triable issue of fact as to whether the defendants’ greeting cards added any value protected by the First Amendment, or merely appropriated the goodwill associated with plaintiff’s HONEY BADGER DON’T CARE trademark. Christopher Gordon v. Drape Creative, Inc., et. al., Case No. 16-56715 (9th Cir. July 30, 2018) (Bybee, J). 

Christopher Gordon created the “Honey Badger” YouTube video, which features comedic commentary dubbed over pre-existing video footage of honey badgers in the wild. The video, which now has more than 88 million views, became a viral sensation known for the catchphrases “Honey Badger Don’t Care” and “Honey Badger Don’t Give a Sh*t.” Gordon thereafter obtained US federal trademark registrations for the former phrase in relation to a variety of goods, including mugs, clothing and greeting cards, which were sold online and through certain national retailers.  

In 2012, greeting card companies Drape Creative and Papyrus-Recycled Greetings (together, defendants) began selling greeting cards with variations of the “Honey Badger Don’t Care” and “Honey Badger Don’t Give a Sh*t” catchphrases. Gordon sued for trademark infringement, and the district court granted summary judgment for defendants, concluding that Gordon’s claims were barred by the test set forth by the US Court of Appeals for the Second Circuit in Rogers v. Grimaldi. Gordon appealed.

The Rogers test comes into play when a trademark owner claims that an expressive work infringes on its trademark rights, and the court must balance the First Amendment interests in protecting artistic expression with the Lanham Act’s purpose of protecting trademark rights and preventing consumer confusion. Rogers notes that the First Amendment will typically outweigh application of the Lanham Act unless the allegedly infringing use of the trademark at issue (1) has no artistic relevance to the underlying creative work “whatsoever” (with such relevance being more than zero), or (2) explicitly misleads consumers as to the source or the content of the work (usually requiring “overt claims or explicit references” that are misleading). 

Accordingly, in a trademark infringement dispute involving an expressive work, the plaintiff must not only satisfy the typical “likelihood of confusion” test, but also at least one of the two prongs of the Rogers test.

The Ninth Circuit found that defendants’ greeting cards qualified as expressive works subject to Rogers. As to the “artistic relevance” prong of the test, however, the Court explained that to be above “zero,” the mark must relate to a defendant’s artistic work and the defendant must add its own artistic expression beyond that already represented by the mark. Specifically, the Court noted that defendants cannot simply copy a trademark onto their greeting cards, without adding their own artistic expression or elements, and still claim First Amendment protection.

On this point, the Court found at least a triable issue of fact as to whether defendants actually added their own artistic expression as opposed to just copying Gordon’s artistic expression. Evidence leading to the Court’s conclusion included Gordon’s own sales of greeting cards bearing the HONEY BADGER DON’T CARE trademark and testimony from defendants’ president indicating that he drafted the cards but could not recall what inspired them.

Even though the Rogers test is not an automatic bar when applying the Lanham Act to any expressive work that copies another’s trademark, the Ninth Circuit made an interesting observation in noting that in every prior application of the test, trademark infringement claims were found to be barred as a matter of law. Nevertheless, when comparing this case to its Rogers precedents, the Court found triable issues of fact as to whether defendants’ greeting cards actually added any protected value or merely appropriated the goodwill associated with Gordon’s HONEY BADGER trademark in the same way the trademark claimant was already using it—to make humorous greeting cards.