Christopher Gordon v. Drape Creative, Inc.
909 F.3d 257
9th Cir.2018Background
- Christopher Gordon (aka “Randall”) created a viral YouTube narration featuring the phrases “Honey Badger Don’t Care” (HBDC) and “Honey Badger Don’t Give a S---” (HBDGS); he later sold merchandise and sought trademark protection for HBDC (including for greeting cards).
- Defendants Drape Creative, Inc. (DCI) and Papyrus-Recycled Greetings, Inc. (PRG) produced greeting cards (sold via American Greetings channels) that used HBDC/HBDGS or close variations as the punchline.
- Gordon filed suit alleging Lanham Act trademark infringement; defendants moved for summary judgment arguing Rogers v. Grimaldi protects their expressive use.
- The district court granted summary judgment for defendants under the Rogers test; Gordon appealed.
- The Ninth Circuit held the cards are expressive works (Rogers applies) but found a triable issue of fact on whether defendants’ use was “explicitly misleading” (Rogers’ second prong), and therefore reversed and remanded for further proceedings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does Rogers v. Grimaldi apply to greeting cards using a mark? | Rogers should not shield purely commercial copy of a mark on cards. | Cards are expressive works; Rogers applies. | Rogers applies; greeting cards are expressive and defendant met the initial showing. |
| Is the mark "artistically relevant" to the cards (Rogers prong 1)? | Some cards merely reproduce the mark; relevance is minimal. | The phrases serve as the cards' punchline and have at least minimal artistic relevance. | Court: artistic relevance threshold met (no triable issue as to prong 1). |
| Is the use "explicitly misleading" as to source or content (Rogers prong 2)? | Use of the mark in the same commercial way, on greeting cards, can explicitly mislead consumers to think Gordon produced/sponsored them. | Use was part of an expressive work and included variations and defendants’ branding on the back; not explicitly misleading. | Court: genuine factual dispute exists whether defendants’ use is explicitly misleading; not decidable as matter of law. |
| Was summary judgment for defendants proper? | SJ should be denied because triable issue on explicit misleadingness. | SJ proper because Rogers bars the claim as a matter of law. | Court: reversed district court’s SJ and remanded for trial on infringement (and left abandonment defense for district court to consider). |
Key Cases Cited
- Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (establishes test balancing Lanham Act and First Amendment for expressive works)
- MCA Records, 296 F.3d 894 (9th Cir. 2002) (applies Rogers to song title and rejects infringement where mark is artistically relevant and not explicitly misleading)
- Walking Mountain Prods. v. Mattel, 353 F.3d 792 (9th Cir. 2003) (applies Rogers to photography using a trademark for artistic critique)
- E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) (extends Rogers to marks used within the body of a video game)
- Brown v. Electronic Arts, Inc., 724 F.3d 1235 (9th Cir. 2013) (applies Rogers to use of a person’s likeness in a video game; requires explicit misleading showing)
- Twentieth Century Fox Television v. Empire Distribution, Inc., 875 F.3d 1192 (9th Cir. 2017) (reemphasizes Rogers prongs and distinguishes ordinary likelihood-of-confusion analysis)
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (sets out the multi-factor likelihood-of-confusion test referenced in infringement analysis)