Christopher Gordon v. Drape Creative, Inc. , 897 F.3d 1184 ( 2018 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
CHRISTOPHER GORDON, an No. 16-56715
individual,
Plaintiff-Appellant, D.C. No.
2:15-cv-04905-
v. JFW-PLA
DRAPE CREATIVE, INC., a Missouri
corporation; PAPYRUS-RECYCLED OPINION
GREETINGS, INC., an Illinois
corporation,
Defendants-Appellees.
Appeal from the United States District Court
for the Central District of California
John F. Walter, District Judge, Presiding
Argued and Submitted April 9, 2018
Pasadena, California
Filed July 30, 2018
Before: Danny J. Boggs,* Jay S. Bybee,
and Paul J. Watford, Circuit Judges.
Opinion by Judge Bybee
*
The Honorable Danny J. Boggs, United States Circuit Judge for the
U.S. Court of Appeals for the Sixth Circuit, sitting by designation.
2 GORDON V. DRAPE CREATIVE
SUMMARY**
Trademark
The panel reversed the district court’s grant of summary
judgment in favor of defendants in a trademark infringement
suit under the Lanham Act.
Defendants designed and produced greeting cards using
“Honey Badger” catchphrases from plaintiff Christopher
Gordon’s YouTube video.
Under the Rogers test, the Lanham Act applies to
expressive works only where the public interest in avoiding
consumer confusion outweighs the public interest in free
expression. This balance will normally not support
application of the Act unless the use of the mark has no
artistic relevance to the underlying work whatsoever or
explicitly misleads consumers as to the source or the content
of the work.
The panel held that there was a triable issue of fact
because a jury could determine that defendants did not add
any value protected by the First Amendment, but merely
appropriated the goodwill associated with Gordon’s mark.
The panel reversed the district court and remanded for further
proceedings on Gordon’s claims.
**
This summary constitutes no part of the opinion of the court. It has
been prepared by court staff for the convenience of the reader.
GORDON V. DRAPE CREATIVE 3
COUNSEL
Daniel L. Reback (argued) and Ralph C. Loeb, Krane &
Smith, Encino, California, for Plaintiff-Appellant.
Douglas J. Collodel (argued), Kanika D. Corley, and James
J.S. Holmes, Sedgwick LLP, Los Angeles, California, for
Defendants-Appellees.
OPINION
BYBEE, Circuit Judge:
Plaintiff Christopher Gordon is the creator of a popular
YouTube video known for its catchphrases “Honey Badger
Don’t Care” and “Honey Badger Don’t Give a S---.” Gordon
has trademarked the former phrase for various classes of
goods, including greeting cards. Defendants Drape Creative,
Inc. (“DCI”), and Papyrus-Recycled Greetings, Inc. (“PRG”),
designed and produced greeting cards using both phrases with
slight variations. Gordon brought this suit for trademark
infringement, and the district court granted summary
judgment for defendants, holding that Gordon’s claims were
barred by the test set forth in Rogers v. Grimaldi, 875 F.2d
994 (2d Cir. 1989).
We use the Rogers test to balance the competing interests
at stake when a trademark owner claims that an expressive
work infringes on its trademark rights. The test construes the
Lanham Act to apply to expressive works “only where the
public interest in avoiding consumer confusion outweighs the
public interest in free expression.” Id. at 999. “[T]hat
balance will normally not support application of the Act,
4 GORDON V. DRAPE CREATIVE
unless the [use of the mark] has no artistic relevance to the
underlying work whatsoever, or . . . explicitly misleads
[consumers] as to the source or the content of the work.” Id.
The Rogers test is not an automatic safe harbor for any
minimally expressive work that copies someone else’s mark.
Although on every prior occasion in which we have applied
the test, we have found that it barred an infringement claim as
a matter of law, this case presents a triable issue of fact.
Defendants have not used another’s mark in the creation of a
song, photograph, video game, or television show, but have
largely just pasted Gordon’s mark into their greeting cards.
A jury could determine that defendants did not add any value
protected by the First Amendment but merely appropriated
the goodwill associated with Gordon’s mark. We therefore
reverse the district court’s grant of summary judgment and
remand for further proceedings on Gordon’s claims.
I
Plaintiff Christopher Gordon is a comedian, writer, and
actor, who commonly uses the name “Randall” as an alias on
social media.1 Defendant DCI is a greeting-card design
studio. DCI works exclusively with American Greetings
Corporation and its subsidiaries, which include the other
defendant in this case, PRG. PRG is a greeting-card
manufacturer and distributor.
1
Because this case comes to us on appeal from a grant of summary
judgment for defendants, we recount the facts in the light most favorable
to Gordon. See VMG Salsoul, LLC v. Ciccone, 824 F.3d 871, 875 (9th
Cir. 2016).
GORDON V. DRAPE CREATIVE 5
A
In January 2011, under the name Randall, Gordon posted
a video on YouTube titled The Crazy Nastyass Honey
Badger, featuring National Geographic footage of a honey
badger overlaid with Gordon’s narration. In the video,
Gordon repeats variations of the phrases “Honey Badger
Don’t Care” and “Honey Badger Don’t Give a S---,” as a
honey badger hunts and eats its prey. The parties refer to
these phrases as “HBDC” and “HBDGS,” and we adopt their
convention.
Gordon’s video quickly generated millions of views on
YouTube and became the subject of numerous pop-culture
references in television shows, magazines, and social media.
As early as February 2011, Gordon began producing and
selling goods with the HBDC or HBDGS phrases, such as
books, wall calendars, t-shirts, costumes, plush toys, mouse
pads, mugs, and decals. Some of the items were sold online;
others were sold through national retailers such as Wal-Mart,
Target, Urban Outfitters, and Hot Topic. In June 2011,
Gordon copyrighted his video’s narration under the title
Honey Badger Don’t Care, and in October 2011, he began
filing trademark applications for the HBDC phrase for
various classes of goods. The Patent and Trademark Office
(“PTO”) eventually registered “Honey Badger Don’t Care”
for International Classes 9 (audio books, etc.), 16 (greeting
cards, etc.), 21 (mugs), 25 (clothing), and 28 (Christmas
6 GORDON V. DRAPE CREATIVE
decorations, dolls, etc.).2 However, Gordon never registered
the HBDGS phrase for any class of goods.
At the peak of his popularity, Gordon promoted his brand
on television and radio shows and in interviews with national
publications such as Forbes, The Wall Street Journal, and
The Huffington Post. His brand was further boosted by
celebrities like Taylor Swift and Anderson Cooper quoting
his video and by LSU football players tagging their
teammate, Heisman Trophy finalist Tyrann Mathieu, with the
moniker “Honey Badger” for his aggressive defensive play.
In November 2011, Advertising Age referred to Gordon’s
brand as one of “America’s Hottest Brands” in an article
titled “Hot Brand? Honey Badger Don’t Care.”
B
In January 2012, Gordon hired Paul Leonhardt to serve as
his licensing agent. Soon thereafter, Leonhardt contacted
Janice Ross at American Greetings—the parent company of
defendant PRG—to discuss licensing honey-badger themed
greeting cards. Leonhardt and Ross had multiple email
exchanges and conversations over several weeks. Ross at one
point expressed some interest in a licensing agreement,
stating: “I think it’s a really fun and irreverent property and
would love to see if there’s an opportunity on one of our
distribution platforms. But in order to do that, I need to get
2
Between January 2013 and April 2014, the PTO issued registrations
for HBDC in International Classes 9, 21, 25, and 28. The PTO did not
issue a registration for HBDC in International Class 16—which includes
greeting cards—until October 2016, well after Gordon filed this suit. The
timing of Gordon’s registrations, however, is immaterial to the Rogers
inquiry.
GORDON V. DRAPE CREATIVE 7
some key colleagues of mine on board the Crazy Honey
Badger Bandwagon.” Nevertheless, neither American
Greetings nor defendants ever signed a licensing agreement
with Gordon.
Leonhardt did eventually secure several licensing deals
for Gordon. Between May and October 2012, Gordon’s
company—Randall’s Honey Badger, LLC (“RHB”)—entered
into licensing agreements with Zazzle, Inc., and The Duck
Company for various honey-badger themed products,
including greeting cards. RHB also entered into licensing
agreements with other companies for honey-badger costumes,
toys, t-shirts, sweatshirts, posters, and decals, among other
things. HBDC and HBDGS were the two most common
phrases used on these licensed products. For example, two of
Zazzle’s best-selling honey-badger greeting cards stated on
their front covers “Honey Badger Don’t Care About Your
Birthday.”
At the same time that Gordon was negotiating licensing
agreements with Zazzle and Duck, defendants began
developing their own line of unlicensed honey-badger
greeting cards. Beginning in June 2012, defendants sold
seven different greeting cards using the HBDC or HBDGS
phrases with small variations:
• The fronts of two “Election Cards”
showed a picture of a honey badger
wearing a patriotic hat and stated “The
Election’s Coming.” The inside of one
card said “Me and Honey Badger don’t
give a $#%@! Happy Birthday,” and the
inside of the other said “Honey Badger
and me just don’t care. Happy Birthday.”
8 GORDON V. DRAPE CREATIVE
• The fronts of two “Birthday Cards”
featured different pictures of a honey
badger and stated either “It’s Your
Birthday!” or “Honey Badger Heard It’s
Your Birthday.” The inside of both cards
said “Honey Badger Don’t Give a S---.”
• The fronts of two “Halloween Cards”
showed a picture of a honey badger
next to a jack-o-lantern and stated
“Halloween is Here.” The inside of the
cards said either “Honey Badger don’t
give a $#*%!” or “Honey Badger don’t
give a s---.”
• A “Critter Card” employed a Twitter-style
format showing a series of messages from
“Honey Badger@don’tgiveas---.” The
front stated “Just killed a cobra. Don’t
give a s---”; “Just ate a scorpion. Don’t
give a s---”; and “Rolling in fire ants.
Don’t give a s---.”3 The inside said “Your
Birthday’s here. . . I give a s---.”
The back cover of each card displayed the mark for
“Recycled Paper Greetings” and listed the websites
www.DCIStudios.com and www.prgreetings.com. DCI’s
3
Gordon’s video refers to a honey badger getting stung by bees and
eating a cobra—e.g., “Now look, here’s a house full of bees. You think
the honey badger cares? It doesn’t give a s---. . . . But look the honey
badger doesn’t care, it’s getting stung like a thousand times. It doesn’t
give a s--- . . . . Look! Here comes a fierce battle between a king cobra
and a honey badger. . . . And of course, what does a honey badger have
to eat for the next few weeks? Cobra.”
GORDON V. DRAPE CREATIVE 9
President testified that he drafted all of the cards in question
but could not recall what inspired the cards’ designs. He
claimed to have never heard of a video involving a honey
badger.
In June 2015, Gordon filed the instant action against DCI
and PRG, alleging trademark infringement under the Lanham
Act, among other claims. The district court granted summary
judgment for defendants, holding that defendants’ greeting
cards were expressive works, and applying the Rogers test to
bar all of Gordon’s claims. Gordon timely appealed.4
II
The Lanham Act, 15 U.S.C. § 1051 et seq., “creates a
comprehensive framework for regulating the use of
trademarks and protecting them against infringement,
dilution, and unfair competition.” Fortune Dynamic, Inc. v.
Victoria’s Secret Stores Brand Mgmt., Inc., 618 F.3d 1025,
1030 (9th Cir. 2010). The Act’s two underlying purposes are
to ensure that (1) “owners of trademarks can benefit from the
goodwill associated with their marks” and (2) “consumers can
distinguish among competing producers.” Id.; see also J.
THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS &
UNFAIR COMPETITION § 2:2 (5th ed.) (explaining the dual
purposes of trademark law).
Under the Act, the owner of a trademark used in
commerce may register the mark with the PTO. Registration
is prima facie evidence of the mark’s validity and of the
4
We have jurisdiction under 28 U.S.C. § 1291, and we review the
district court’s grant of summary judgment de novo. See Mattel, Inc. v.
Walking Mountain Prods., 353 F.3d 792, 806 (9th Cir. 2003).
10 GORDON V. DRAPE CREATIVE
owner’s exclusive right to use the mark in connection with
the goods and services specified in the registration. 15 U.S.C.
§ 1057(b). The owner has a cause of action against any
person who, without the owners’s consent, “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.” Id.
§ 1114(1)(a); see also id. § 1125(a) (providing a similar cause
of action for “false designation of origin, false or misleading
description of fact, or false or misleading representation of
fact,” irrespective of registration).
In general, we apply a “likelihood-of-confusion test” to
claims brought under the Lanham Act. Twentieth Century
Fox Television v. Empire Distrib., Inc., 875 F.3d 1192, 1196
(9th Cir. 2017); Mattel, Inc. v. Walking Mountain Prods.,
353 F.3d 792, 806–07 (9th Cir. 2003). The likelihood-of-
confusion test requires the plaintiff to prove two elements:
(1) that “it has a valid, protectable trademark” and (2) that
“the defendant’s use of the mark is likely to cause confusion.”
S. Cal. Darts Ass’n v. Zaffina, 762 F.3d 921, 929 (9th Cir.
2014) (alteration omitted). Ordinarily, this test “strikes a
comfortable balance” between the Lanham Act and the First
Amendment. Mattel, Inc. v. MCA Records, Inc., 296 F.3d
894, 900 (9th Cir. 2002).
That said, where artistic expression is at issue, we have
expressed concern that “the traditional test fails to account for
the full weight of the public’s interest in free expression.” Id.
The owner of a trademark “does not have the right to control
public discourse” by enforcing his mark. Id. We have
adopted the Second Circuit’s Rogers test to strike an
GORDON V. DRAPE CREATIVE 11
appropriate balance between First Amendment interests in
protecting artistic expression and the Lanham Act’s purposes
to secure trademarks rights. Under Rogers, we read the Act
“to apply to artistic works only where the public interest in
avoiding consumer confusion outweighs the public interest in
free expression.” Id. at 901 (quoting Rogers, 875 F.2d at
999). More concretely, we apply the Act to an expressive
work only if the defendant’s use of the mark is (1) not
artistically relevant to the work or (2) explicitly misleads
consumers as to the source or the content of the work. See id.
at 902. Effectively, Rogers employs the First Amendment as
a rule of construction to avoid conflict between the
Constitution and the Lanham Act.
We pause here to clarify the burden of proof under the
Rogers test. The Rogers test requires the defendant to come
forward and make a threshold legal showing that its allegedly
infringing use is part of an expressive work protected by the
First Amendment. If the defendant successfully makes that
threshold showing, then the plaintiff claiming trademark
infringement bears a heightened burden—the plaintiff must
satisfy not only the likelihood-of-confusion test but also at
least one of Rogers’s two prongs. Cf. Makaeff v. Trump
Univ., LLC, 715 F.3d 254, 261 (9th Cir. 2013) (if a defendant
meets its “initial burden” of showing a First Amendment
interest, then a public-figure plaintiff claiming defamation
must meet a “heightened standard of proof” requiring a
showing of “actual malice”). That is, when the defendant
demonstrates that First Amendment interests are at stake, the
plaintiff claiming infringement must show not only (1) that it
has a valid, protectable trademark, and (2) that the
defendant’s use of the mark is likely to cause confusion, but
also (3) that the mark is either not artistically relevant to the
12 GORDON V. DRAPE CREATIVE
underlying work or explicitly misleads consumers as to the
source or content of the work.
“Summary judgment may properly be entered only
against a party who has failed to make a showing sufficient
to establish a genuine dispute as to the existence of an
element essential to his case and upon which the party will
bear the burden of proof at trial.” Easley v. City of Riverside,
890 F.3d 851, 859 (9th Cir. 2018). When, as here, the
defendant moves for summary judgment and has
demonstrated that its use of the plaintiff’s mark is part of an
expressive work, the burden shifts to the plaintiff to raise a
genuine dispute as to at least one of Rogers’s two prongs. In
other words, to evade summary judgment, the plaintiff must
show a triable issue of fact as to whether the mark is
artistically relevant to the underlying work or explicitly
misleads consumers as to the source or content of the work.
III
Before applying the Rogers test to the instant case, we
briefly review the test’s origin in the Second Circuit and
development in our court.5 We have applied the Rogers test
on five separate occasions, and each time we have concluded
that it barred the trademark infringement claim as a matter of
law. Three of those cases, like Rogers, involved the use of a
trademark in the title of an expressive work. Two cases
involved trademarks in video games and extended the Rogers
5
The Rogers test has been adopted in other circuits as well. See Univ.
of Ala. Bd. of Trs. v. New Life Art, Inc., 683 F.3d 1266, 1278 (11th Cir.
2012); Parks v. LaFace Records, 329 F.3d 437, 452 (6th Cir. 2003);
Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 665 (5th
Cir. 2000).
GORDON V. DRAPE CREATIVE 13
test to the use of a trademark in the body of an expressive
work.
A
The Rogers case concerned the movie Ginger and Fred,
a story of two fictional Italian cabaret performers who
imitated the famed Hollywood duo of Ginger Rogers and
Fred Astaire. 875 F.2d at 996–97. Rogers sued the film’s
producers under the Lanham Act, alleging that the film’s title
gave the false impression that the film—created and directed
by well-known filmmaker Federico Fellini—was about her or
sponsored by her. Id. at 997. The district court, however,
granted summary judgment for the defendant film producers.
Id.
On appeal, the Second Circuit recognized that, “[t]hough
First Amendment concerns do not insulate titles of artistic
works from all Lanham Act claims, such concerns must
nonetheless inform our consideration of the scope of the Act
as applied to claims involving such titles.” Id. at 998. The
court said it would construe the Lanham Act “to apply to
artistic works only where the public interest in avoiding
consumer confusion outweighs the public interest in free
expression.” Id. at 999. Refining its inquiry, the court further
held that, “[i]n the context of allegedly misleading titles using
a celebrity’s name, that balance will normally not support
application of the Act unless [1] the title has no artistic
relevance to the underlying work whatsoever, or, [2] if it has
some artistic relevance, unless the title explicitly misleads as
to the source or the content of the work.” Id.
With respect to artistic relevance, the Second Circuit
found that the names “Ginger” and “Fred” were “not
14 GORDON V. DRAPE CREATIVE
arbitrarily chosen just to exploit the publicity value of their
real life counterparts” but had “genuine relevance to the
film’s story.” Id. at 1001. The film’s title was “truthful as to
its content” and conveyed “an ironic meaning that [was]
relevant to the film’s content.” Id. On the second prong of
its inquiry, the court held that the title was not explicitly
misleading because it “contain[ed] no explicit indication that
Rogers endorsed the film or had a role in producing it.” Id.
Any risk that the title would mislead consumers was
“outweighed by the danger that suppressing an artistically
relevant though ambiguous title will unduly restrict
expression.” Id. The Second Circuit therefore affirmed
summary judgment for the defendant film producers. Id. at
1005.
B
We first employed the Rogers test in MCA Records,
296 F.3d 894, which concerned the song “Barbie Girl” by the
Danish band Aqua. The song—which lampooned the values
and lifestyle that the songwriter associated with Barbie
dolls—involved one band-member impersonating Barbie and
singing in a high-pitched, doll-like voice. Id. at 899. Mattel,
the manufacturer of Barbie dolls, sued the producers and
distributors of “Barbie Girl” for infringement under the
Lanham Act, and the district court granted summary
judgment for the defendants. Id. Applying the Rogers test,
we affirmed. Id. at 902. We held that the use of the Barbie
mark in the song’s title was artistically relevant to the
underlying work because the song was “about Barbie and the
values Aqua claims she represents.” Id. In addition, the song
“d[id] not, explicitly or otherwise, suggest that it was
produced by Mattel.” Id. “The only indication that Mattel
might be associated with the song [was] the use of Barbie in
GORDON V. DRAPE CREATIVE 15
the title,” and if the use of the mark alone were enough to
satisfy Rogers’s second prong, “it would render Rogers a
nullity.” Id. Because the Barbie mark was artistically
relevant to the song and not explicitly misleading, we
concluded that the band could not be held liable for
infringement.
We applied the Rogers test to another suit involving
Barbie in Walking Mountain Prods., 353 F.3d 792. There,
photographer Thomas Forsythe developed a series of
photographs titled “Food Chain Barbie” depicting Barbie
dolls or parts of Barbie dolls in absurd positions, often
involving kitchen appliances. Id. at 796. Forsythe described
the photographs as critiquing “the objectification of women
associated with [Barbie].” Id. Mattel claimed that the photos
infringed its trademark and trade dress, but we affirmed
summary judgment for Forsythe because “[a]pplication of the
Rogers test here leads to the same result as it did in MCA.”
Id. at 807. Forsythe’s use of the Barbie mark was artistically
relevant to his work because his photographs depicted Barbie
and targeted the doll with a parodic message. Id. Moreover,
apart from Forsythe’s use of the mark, there was no
indication that Mattel in any way sponsored the photographs.
Id.
Most recently, we applied the Rogers test in Twentieth
Century Fox Television, 875 F.3d 1192. Twentieth Century
Fox produced the television show Empire, which revolved
around a fictional hip-hop record label named “Empire
Enterprises.” Id. at 1195. Empire Distribution, an actual hip-
hop record label, sent Twentieth Century Fox a cease-and-
desist letter, and Twentieth Century Fox sued for a
declaratory judgment that its show did not violate Empire’s
trademark rights. Id. In affirming summary judgment for
16 GORDON V. DRAPE CREATIVE
Twentieth Century Fox, we rejected Empire’s argument that
“the Rogers test includes a threshold requirement that a mark
have attained a meaning beyond its source-identifying
function.”6 Id. at 1197. Whether a mark conveys a meaning
beyond identifying a product’s source is not a threshold
requirement but only a relevant consideration: “trademarks
that transcend their identifying purpose are more likely to be
used in artistically relevant ways,” but such transcendence is
not necessary to trigger First Amendment protection. Id. at
1198 (quotation marks and citation omitted).
We concluded that Empire could not satisfy Rogers’s first
prong because Twentieth Century Fox “used the common
English word ‘Empire’ for artistically relevant reasons,”
namely, that the show’s setting was New York (the Empire
State) and its subject matter was an entertainment
conglomerate (a figurative empire). Id. Finally, we resisted
Empire’s efforts to conflate the likelihood-of-confusion test
with Rogers’s second prong. To satisfy that prong, it is not
enough to show that “the defendant’s use of the mark would
confuse consumers as to the source, sponsorship or content of
the work;” rather, the plaintiff must show that the defendant
“explicitly misl[ed] consumers.” Id. at 1199. Because
Twentieth Century Fox’s Empire show contained “no overt
claims or explicit references to Empire Distribution,” we
found that Empire could not satisfy Rogers’s second prong.
Id. Empire’s inability to satisfy either of Rogers’s two prongs
meant that it could not prevail on its infringement claim.
6
We explained in MCA Records that trademarks sometimes
“transcend their identifying purpose” and “become an integral part of our
vocabulary.” 296 F.3d at 900. Examples include “Rolls Royce” as proof
of quality or “Band-Aid” for any quick fix.
GORDON V. DRAPE CREATIVE 17
C
We first extended the Rogers test beyond a title in E.S.S.
Ent’mt 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095,
1099 (9th Cir. 2008). In that case, defendant Rockstar Games
manufactured and distributed the video game Grand Theft
Auto: San Andreas, which took place in a fictionalized
version of Los Angeles. Id. at 1096–97. One of the game’s
neighborhoods—East Los Santos—“lampooned the seedy
underbelly” of East Los Angeles by mimicking its businesses
and architecture. Id. at 1097. The fictional East Los Santos
included a virtual strip club called the “Pig Pen.” Id. ESS
Entertainment 2000, which operates the Play Pen
Gentlemen’s Club in the real East Los Angeles, claimed that
Rockstar’s depiction of the Pig Pen infringed its trademark
and trade dress. Id.
We recognized that the Rogers test was developed in a
case involving a title, and adopted by our court in a similar
case, but we could find “no principled reason why it ought
not also apply to the use of a trademark in the body of the
work.” Id. at 1099. With respect to Rogers’s first prong, we
explained that “[t]he level of relevance merely must be above
zero” and the Pig Pen met this threshold by being relevant to
Rockstar’s artistic goal of creating “a cartoon-style parody of
East Los Angeles.” Id. at 1100. On the second prong, we
concluded that the game did not explicitly mislead as to the
source of the mark and would not “confuse its players into
thinking that the Play Pen is somehow behind the Pig Pen or
that it sponsors Rockstar’s product. . . . A reasonable
consumer would not think a company that owns one strip club
in East Los Angeles . . . also produces a technologically
sophisticated video game.” Id. at 1100–01. Because ESS
18 GORDON V. DRAPE CREATIVE
Entertainment 2000 could not demonstrate either of Rogers’s
two prongs, we affirmed summary judgment for Rockstar.
Another video-game case dealt with the Madden NFL
series produced by Electronic Arts, Inc. (“EA”). Brown v.
Elec. Arts, Inc., 724 F.3d 1235 (9th Cir. 2013). Legendary
football player Jim Brown alleged that EA violated § 43(a) of
the Lanham Act by using his likeness in its games. Id. at
1238–39. The district court granted EA’s motion to dismiss,
and we affirmed. Id. at 1239. We reiterated E.S.S.’s holding
that the level of artistic relevance under Rogers’s first prong
need only exceed zero and found it was “obvious that
Brown’s likeness ha[d] at least some artistic relevance to
EA’s work.” Id. at 1243. We also found that Brown had not
alleged facts that would satisfy Rogers’s second prong: “EA
did not produce a game called Jim Brown Presents Pinball
with no relation to Jim Brown or football beyond the title; it
produced a football game featuring likenesses of thousands of
current and former NFL players, including Brown.” Id. at
1244. We asked “whether the use of Brown’s likeness would
confuse Madden NFL players into thinking that Brown is
somehow behind the games or that he sponsors EA’s
product,” and held that it would not. Id. at 1245–47
(alterations omitted). As in E.S.S., the plaintiff could not
satisfy either of Rogers’s two prongs, and judgment for the
defendant was proper.
IV
In each of the cases coming before our court, the evidence
was such that no reasonable jury could have found for the
plaintiff on either prong of the Rogers test, and we therefore
concluded that the plaintiff’s Lanham Act claim failed as a
matter of law. This case, however, demonstrates Rogers’s
GORDON V. DRAPE CREATIVE 19
outer limits. Although defendants’ greeting cards are
expressive works to which Rogers applies, there remains a
genuine issue of material fact as to at least Rogers’s first
prong—i.e., whether defendants’ use of Gordon’s mark in
their greeting cards is artistically relevant.
A
As a threshold matter, we have little difficulty
determining that defendants have met their initial burden of
demonstrating that their greeting cards are expressive works
protected under the First Amendment. As we have previously
observed, “[a greeting] card certainly evinces ‘[a]n intent to
convey a particularized message . . . , and in the surrounding
circumstances the likelihood was great that the message
would be understood by those who viewed it.’” Hilton v.
Hallmark Cards, 599 F.3d 894, 904 (9th Cir. 2010) (quoting
Spence v. Washington, 418 U.S. 405, 410–11 (1974) (per
curiam)); see also Roth Greeting Cards v. United Card Co.,
429 F.2d 1106, 1110 (9th Cir. 1970) (plaintiff’s greeting
cards, considered as a whole, “represent[ed] a tangible
expression of an idea” and hence were copyrightable). Each
of defendants’ cards relies on graphics and text to convey a
humorous message through the juxtaposition of an event of
some significance—a birthday, Halloween, an election—with
the honey badger’s aggressive assertion of apathy. Although
the cards may not share the creative artistry of Charles Schulz
or Sandra Boynton, the First Amendment protects expressive
works “[e]ven if [they are] not the expressive equal of Anna
Karenina or Citizen Kane.” Brown, 724 F.3d at 1241.
Because defendants have met their initial burden, the burden
shifts to Gordon to raise a triable issue of fact as to at least
one of Rogers’s two prongs.
20 GORDON V. DRAPE CREATIVE
B
Rogers’s first prong requires proof that defendants’ use of
Gordon’s mark was not “artistically relevant” to defendants’
greeting cards. We have said that “the level of artistic
relevance of the trademark or other identifying material to the
work merely must be above zero.” Id. at 1243 (quotation
marks and alterations omitted). The honey-badger
catchphrase is certainly relevant to defendants’ cards; the
phrase is the punchline on which the cards’ humor turns. In
six of the seven cards, the front cover sets up an expectation
that an event will be treated as important, and the inside of
the card dispels that expectation with either the HBDC or
HBDGS phrase. The last card, the “Critter Card,” operates in
reverse: the front cover uses variations of the HBDGS phrase
to establish an apathetic tone, while the inside conveys that
the card’s sender actually cares about the recipient’s
birthday.7
But the “artistic relevance” inquiry does not ask only
whether a mark is relevant to the rest of the work; it also asks
whether the mark is relevant to the defendant’s own artistry.
The use of a mark is artistically relevant if the defendant uses
it for artistic reasons. Conversely, 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. See Parks v. LaFace Records, 329 F.3d 437, 453 (6th
7
Defendants’ greeting cards generally use a variation of the HBDGS
phrase—a phrase that Gordon has not registered with the PTO. Although
the distinction between the HBDC and HBDGS phrases may be material
to what Gordon must prove under the likelihood-of-confusion test, we do
not consider it relevant for determining whether he has raised a triable
issue of fact as to either of Rogers’s two prongs.
GORDON V. DRAPE CREATIVE 21
Cir. 2003) (finding genuine issue of material fact on artistic-
relevance prong, where “it would not be unreasonable to
conclude that the title Rosa Parks is not relevant to the
content of the song in question”). For artistic relevance to
“be above zero,” the mark must both relate to the defendant’s
work and the defendant must add his own artistic expression
beyond that represented by the mark. For instance, Andy
Warhol reproduced Campbell’s soup cans in a literal, but
artistic, form; Warhol took Campbell’s mark and added his
own artistic expression. No one seeing Warhol’s work would
think he was merely trying to appropriate the goodwill
inhering in Campbell’s mark; no one thought Warhol was
selling soup, just art.
Rogers protects our First Amendment interests in artistic
works, and defendants’ greeting cards are among the artistic
works the Amendment protects. But it cannot be that
defendants can 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. Cf. Parks, 329 F.3d at 447 (“[T]he First
Amendment cannot permit anyone who cries ‘artist’ to have
carte blanche when it comes to naming and advertising his or
her works, art though it may be.”). That would turn
trademark law on its head.
Construing the facts in the light most favorable to
Gordon, defendants may have merely appropriated the
goodwill inhering in Gordon’s mark without adding any
creativity of their own. To be sure, defendants’ use of the
HBDC or HBDGS phrases is not a non sequitur; the phrases
make sense in the context of defendants’ greeting cards. But
there is at least a triable issue of fact as to whether defendants
added their own artistic expression, as opposed to just
22 GORDON V. DRAPE CREATIVE
copying Gordon’s artistic expression. Gordon has presented
evidence that he sold various products bearing his mark,
including greeting cards; that his agent met with a
representative of defendants’ parent corporation to discuss a
possible licensing deal; that shortly thereafter, defendants
started developing their own line of greeting cards even
though their parent corporation had rejected the proposed
licensing deal; and that defendants’ president, who drafted the
cards, could not recall what inspired them. Moreover, the
cards themselves use Gordon’s catchphrases in different
ways, and a jury could possibly conclude that defendants used
the phrases for artistic reasons on one or more cards but not
on others.
These facts distinguish this case from others in which the
Rogers test barred an infringement claim as a matter of law.
In Rogers, the use of Ginger Rogers’s name was integral to
Fellini’s film. His characters were trying to be like their
American idols, Ginger and Fred. The film did not
appropriate Ginger’s mark; it came in praise of her craft,
celebrating Rogers and Astaire’s “elegance and class” and
contrasting it with the “gaudiness and banality of
contemporary television.” Rogers, 875 F.2d at 1001. The
film’s title was “not a disguised advertisement for the sale of
goods or services or a collateral commercial product.” Id. at
1004–05.
The junior users in our Barbie cases also viewed Barbie
as a cultural icon, even if they did not treat her with the same
adulation that Fellini did Rogers. Walking Mountain,
353 F.3d at 802 (“To sell its product, Mattel uses associations
of beauty, wealth, and glamour. Forsythe turns this image on
its head . . . [to] transform Barbie’s meaning.”); MCA
Records, 296 F.3d at 901 (“The song pokes fun at Barbie and
GORDON V. DRAPE CREATIVE 23
the values that Aqua contends she represents.”). In Twentieth
Century Fox, the use of the word “Empire” as the title for the
television series conveyed a raft of meanings: “Empire” was
a “common English word” relevant to the show’s setting
(New York) and its subject matter (a music and entertainment
conglomerate). 875 F.3d at 1198. And in our video game
cases, the borrowed mark was part of a much larger context.
In Brown, Jim Brown was one of “thousands of current and
former NFL players” appearing in the game, 724 F.3d at
1244, while in E.S.S., the Pig Pen was just one of many
fictional buildings and landmarks in a “cartoon-style parody”
of a neighborhood in Los Angeles, 547 F.3d at 1100.
In short, in all of our prior cases it was clear that the mark
at issue was relevant to the junior user’s work and that the
junior user employed the mark in the junior user’s own
artistic expression. Here, however, there is evidence that
defendants simply used Gordon’s mark in the same way that
Gordon was using it—to make humorous greeting cards in
which the bottom line is “Honey Badger don’t care.” A jury
could find that defendants’ cards are only intelligible to
readers familiar with Gordon’s video and deliberately trade
on the goodwill associated with his brand. Defendants have
arguably not used the HBDC or HBDGS phrases in any way
that distinguishes their use from Gordon’s and thus have not
“imbued” their product with any “expressive value” apart
from that contained in Gordon’s trademarked phrase. MCA
Records, 296 F.3d at 900. We cannot resolve whether
defendants’ use of Gordon’s mark is artistically relevant to
24 GORDON V. DRAPE CREATIVE
their cards as a matter of law. This presents a question of fact
that a jury must decide.8
At trial, the district court should instruct the jury on the
likelihood-of-confusion test, as in any infringement case. In
addition, the court should instruct the jury that defendants
have shown that their greeting cards are protected under the
First Amendment and that Gordon must therefore prove an
additional element to succeed on his claim. The jury may
only find for Gordon if he proves by a preponderance of the
evidence that defendants’ use of his mark is (1) not
artistically relevant to their greeting cards or (2) explicitly
misleading as to the source or content of the cards.
Defendants’ use of the mark is artistically relevant if the mark
relates to defendants’ work and defendants’ added their own
artistic expression beyond that represented by the mark.
Defendants’ use of the mark is not artistically relevant if
defendants merely appropriated whatever goodwill
consumers associate with the mark without adding their own
artistic expression or elements. Defendants’ use of the mark
is explicitly misleading only if it explicitly misleads
consumers into believing that Gordon sponsored or is
somehow associated with defendants’ cards. Simply using
the mark is not enough. There must be something else about
8
In light of our holding, we need not reach Rogers’s second
prong—i.e., whether defendants’ use of the mark is explicitly misleading.
As discussed above, Gordon need only raise a triable issue of fact as to
one of Rogers’s prongs to evade summary judgment. To succeed on his
Lanham Act claim at trial, he will need to prove both a likelihood of
confusion and at least one of Rogers’s prongs. That is, he will need to
prove either a likelihood of confusion and the absence of any artistic
relevance or a likelihood of confusion and that defendants’ use of the
mark is explicitly misleading.
GORDON V. DRAPE CREATIVE 25
the cards that explicitly misleads consumers into believing
that Gordon sponsored or is associated with the cards.9
V
For the foregoing reasons, we REVERSE and REMAND
to the district court for further proceedings consistent with
this opinion.
9
We note that the district court has not yet addressed the likelihood-
of-confusion test or defendants’ abandonment defense. We express no
opinion on those issues and leave them for the district court to address in
the first instance.