A recent Ninth Circuit decision, Gordon v. Drape Creative, Inc. (2018), involving two well-known “Honey Badger” trademarks, shows the limits of the First Amendment defense in trademark cases.
Parties that seek to use trademarks in creative ways would be well advised to consider its facts when determining whether to proceed or risk legal exposure.
Federal courts have adopted a special set of rules for trademark infringement cases involving expressive content, which, for First Amendment reasons, makes it harder for a trademark owner to enforce its rights when the accused use involves expressive content, such as the title or content of movies, video games, etc. The test originates in Rogers v. Grimaldi (2d Cir. 1989), but has most often been applied by the Ninth Circuit in a long line of cases.
The Honey Badger case, however, involved very minimal creativity – the mark was used on greeting cards with virtually no embellishment, and it appears that there was a deliberate intent to exploit the mark. The Ninth Circuit reversed a grant of summary judgment for the defendant, finding that there was an issue for trial as to whether the mark was used in a way that was “explicitly misleading as to [the] source or content” of the product.
The Gordon opinion is helpful in understanding the limits of the First Amendment defense in these types of cases.
Christopher Gordon created a popular YouTube video known for its catchphrases “Honey Badger Don’t Care” and “Honey Badger Don’t Give A S—T.” The video become wildly popular, and in 2011, Gordon began producing and selling various goods with these phrases on them as logos. He also registered one of these phrases as a trademark with the PTO. Gordon then hired a licensing agent, who licensed the phrases for, among other products, greeting cards.
In 2012, the defendants, greeting card companies, designed and created cards that prominently featured the catchphrases and a few other phrases, such as Happy Birthday. The back of the cards listed the defendants’ respective websites.
In 2015 Gordon filed suit. The district court applied the Rogers test and granted summary judgment. Gordon appealed to the Ninth Circuit.
The Rogers test has been applied repeatedly by the Ninth Circuit. It noted that the Rogers test seeks to strike a balance between the public’s interest in free expression and the trademark owner’s and public’s interest to be free of consumer confusion. While that is generally balanced by the likelihood of confusion test, the Rogers test goes beyond that to protect artistic uses of a trademark. But, as the Gordon case shows, it is not an automatic protection for artistic uses.
Under Rogers, first the defendant must show that its product is an expressive work. That was easily met, as greeting cards generally are understood to convey a message.
The burden then shifts to the trademark owner to show either that (1) the use of the mark has no artistic relevance to the work or (2) that the use of the mark is “explicitly misleading as to source or content.” The first prong is almost impossible to meet – any slight relevance, “above zero,” suffices. That was the case in Gordon, as the mark was used as a punchline on the cards.
The second prong, however, was problematic for the greeting card defendants. “Explicitly misleading” is a harder test than “likelihood of confusion” – it looks to some blatant act that would easily mislead consumers.
This does not, however, require an explicit statement by the defendant. The Ninth Circuit rejected the district court’s “rigid requirement” that the defendant had engaged in some “affirmative statement of the plaintiff’s sponsorship or endorsement.” While that could be evidence of “explicitly misleading,” it is not required. Rather, in some cases, “the use of a mark alone may explicitly mislead consumers about a product’s source if consumers would ordinarily identify the source by the mark itself.”
Two factors in Gordon set it apart from prior cases and created an issue for trial on the “explicitly misleading” factor. One was that the mark was used in the same way – as a tag line on greeting cards – by both the plaintiff and defendant. This would tend to lead consumers to assume an association between the two. In contrast, in prior Ninth Circuit cases, the uses were different. For example, in one well-known case, the trademark Barbie was used in a song (Barbie Girl), a very different use than as a trademark for dolls and doll accessories.
The second factor is the extent of the use of the trademark. When the mark is used as only one component in the overall expression, there is less of an issue of being explicitly misleading. But when there is little added beyond the mark, then there is a danger that it is only being used to induce sales.
In the Gordon case, the greeting cards at issue contained only minimal additional expression, and it was at least a jury issue as to whether they were explicitly misleading. This did not mean, the Ninth Circuit added, that Gordon automatically won – there was enough that the issue could be decided either way. But not on summary judgment.
Gordon shows the “outer limits” of the First Amendment protections for uses of trademark infringement. Where the use is the same way as the trademark owner and involves minimal additional artistic expression, then there may be a danger of exposure to liability for trademark infringement.