Christopher Gordon v. Drape Creative, Inc.
897 F.3d 1184
9th Cir.2018Background
- Christopher Gordon (aka "Randall") created a viral YouTube video with catchphrases “Honey Badger Don’t Care” (HBDC) and “Honey Badger Don’t Give a S---” (HBDGS); he registered HBDC for various goods including greeting cards.
- Gordon licensed honey-badger products to third parties and negotiated (but did not conclude) a licensing deal with American Greetings; defendants Drape Creative, Inc. (DCI) and Papyrus-Recycled Greetings, Inc. (PRG) later produced greeting cards using HBDC/HBDGS without a license.
- Defendants sold seven card designs that incorporated the phrases (front/back graphics and interior copy); cards bore defendants’ marks and websites.
- Gordon sued for trademark infringement under the Lanham Act; the district court granted summary judgment to defendants applying the Rogers v. Grimaldi test.
- The Ninth Circuit reversed and remanded, holding Rogers applies but finding a triable issue whether defendants’ use was merely appropriative (lacked artistic relevance) rather than an original expressive use protected by the First Amendment.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Rogers v. Grimaldi bars Lanham Act claims for use of a trademark in an expressive work | Gordon: Rogers should not bar claim because defendants merely copied his mark to exploit its goodwill and did not add artistic expression | DCI/PRG: Greeting cards are expressive works; use of the phrases is artistically relevant and not explicitly misleading, so Rogers protects them | Rogers applies, but triable factual issue exists whether defendants’ use was artistically relevant (cannot decide as matter of law) |
| Burden allocation under Rogers at summary judgment | Gordon: Once defendants claim First Amendment protection, he still can show infringement | Defendants: Once they show the work is expressive, plaintiff must raise triable issue on Rogers prongs | Court: Defendants bear initial burden to show expressive work; then plaintiff must raise a genuine dispute on at least one Rogers prong to avoid summary judgment |
| Definition/application of the "artistic relevance" prong | Gordon: Defendants’ use is not artistically relevant—it's a straightforward appropriation of his catchphrase | Defendants: The phrase functions as the punchline of cards and thus has artistic relevance above zero | Court: Artistic relevance requires not just relevance but that defendants added their own artistic expression; facts create a triable issue whether defendants merely appropriated goodwill |
| Whether explicit misleading (Rogers second prong) was shown | Gordon: Cards could mislead consumers into thinking Gordon sponsored/endorsed them | Defendants: Cards contain no explicit claims of sponsorship; branding on back shows independent source | Court: Did not decide second prong on appeal; remanded for trial—plaintiff must prove explicit misleading at trial if he pursues that theory |
Key Cases Cited
- Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (establishes test limiting Lanham Act application to expressive works unless mark has no artistic relevance or explicitly misleads)
- Mattel, Inc. v. MCA Records, 296 F.3d 894 (9th Cir.) (use of mark in expressive work protected where mark is artistically relevant and not explicitly misleading)
- Walking Mountain Prods. v. Mattel, 353 F.3d 792 (9th Cir. 2003) (photographic artworks using a trademark held artistically relevant under Rogers)
- E.S.S. Ent’mt 2000, Inc. v. Rockstar Videos, 547 F.3d 1095 (9th Cir. 2008) (Rogers extends beyond titles to uses within body of expressive works)
- Twentieth Century Fox Television v. Empire Distrib., 875 F.3d 1192 (9th Cir. 2017) (clarifies Rogers prongs; plaintiff must show explicit misleading, and artistic relevance threshold is low but not dispositive)