Christopher Gordon v. Drape Creative, Inc.

Court of Appeals for the Ninth Circuit
909 F.3d 257 (2018)

ELI5:

Rule of Law:

Under the Rogers test, a trademark infringement claim concerning an expressive work is not barred if there is a triable issue of fact as to whether the defendant's use of the mark is explicitly misleading, which can occur when a defendant uses the mark on the same type of product as the plaintiff with minimal additional artistic expression.

Facts:

In January 2011, Christopher Gordon posted a viral YouTube video titled 'The Crazy Nastyass Honey Badger,' popularizing the phrases 'Honey Badger Don’t Care' (HBDC) and 'Honey Badger Don’t Give a S---' (HBDGS).
Beginning in February 2011, Gordon began producing and selling merchandise featuring the phrases, including t-shirts, mugs, and books, through major national retailers.
In October 2011, Gordon started filing trademark applications for the HBDC phrase for various classes of goods, including greeting cards.
In early 2012, Gordon's licensing agent contacted American Greetings, the parent company of defendant Papyrus-Recycled Greetings, Inc. (PRG), to discuss a licensing deal for honey-badger themed greeting cards, but no agreement was reached.
Between May and October 2012, Gordon's company entered into licensing agreements with other companies for various products, including greeting cards that used the HBDC and HBDGS phrases.
Starting in June 2012, defendants Drape Creative, Inc. (DCI) and PRG began designing, producing, and selling seven different unlicensed greeting cards that featured variations of the HBDC and HBDGS phrases as their central punchline.

Procedural Posture:

Christopher Gordon sued Drape Creative, Inc. and Papyrus-Recycled Greetings, Inc. in the U.S. District Court for the Central District of California, alleging trademark infringement under the Lanham Act.
The defendants moved for summary judgment, arguing Gordon's claims were barred by the First Amendment under the Rogers test.
The district court granted summary judgment in favor of the defendants, holding that their greeting cards were expressive works protected by the Rogers test.
Gordon, as plaintiff-appellant, appealed the grant of summary judgment to the U.S. Court of Appeals for the Ninth Circuit.

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Issue:

Does the Rogers test, which balances First Amendment rights with trademark law, bar a trademark infringement claim when defendants use a plaintiff's trademarked phrase on greeting cards, the same type of expressive product the plaintiff also sells?

Opinions:

Majority - Bybee, Circuit Judge

No. The Rogers test does not bar the trademark infringement claim because a genuine issue of material fact exists as to whether the defendants' use of the mark is explicitly misleading. While greeting cards are expressive works and the use of the mark is artistically relevant (satisfying prong one of Rogers), a jury could find the use is explicitly misleading as to the source (prong two). Unlike prior cases where marks were used in different contexts (e.g., a doll's trademark in a song), here the defendants used Gordon's mark on the same type of product—greeting cards—that Gordon himself sold. The court rejected a rigid requirement of an 'affirmative statement of sponsorship,' reasoning that using a mark as the centerpiece of a work with little added artistic contribution, especially in direct competition with the senior user's product, can be explicitly misleading. Because a reasonable jury could conclude that defendants' simple incorporation of the mark onto their cards misled consumers as to their source, summary judgment was improper.

Analysis:

This decision significantly clarifies the 'explicitly misleading' prong of the Rogers test, establishing that it is not an insurmountable barrier for plaintiffs. It sets a crucial precedent that the test's protection for expressive works is limited, particularly when an alleged infringer uses a trademark on the same type of product as the trademark holder. By focusing on the degree of similarity in product type and the lack of transformative use, the court prevents the Rogers test from becoming an 'automatic safe harbor' for artists who simply co-opt a mark to compete with the original creator. This case empowers trademark holders against infringers in the same market, even if the infringing product is an expressive work like a greeting card.

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