For the first time since it began balancing the competing interests of trademark plaintiffs and creators of expressive works, the U.S. Court of Appeals for the Ninth Circuit held this month in Gordon v. Drape Creative that the First Amendment may not trump the likelihood-of-confusion test in a trademark case. The court held that to qualify for First Amendment protection, a defendant’s use of a mark must be “relevant to the defendant’s own artistry.” By contrast, if a defendant merely appropriates the goodwill consumers associate with a mark without “adding any creativity of their own,” the First Amendment is no shield against a suit for trademark infringement.
Honey Badger Nerve Meets the Greeting Card
This case was born out of the 2011 YouTube video The Crazy Nastyass Honey Badger, in which plaintiff Christopher Gordon paired footage of mellivora capensis hunting and eating prey with his own humorous and whimsical narration. The video was a viral hit and Gordon’s catchphrases — “honey badger don’t care” and “honey badger don’t give a shit” — quickly became internet memes. Gordon received a trademark registration for the “honey badger don’t care” mark and began selling merchandise with both trademarks on the internet and in national retailers.
In 2012, Gordon discussed licensing the phrase with Drape Creative’s parent company, American Greetings, but the talks never came to fruition. Later that year — perhaps modeling the honey badger’s audacity — Drape and co-defendant Papyrus Recycled Greetings began selling greeting cards featuring the phrases juxtaposed with significant events. (For example: “Honey Badger Heard It’s Your Birthday” / “Honey Badger Don’t Give a Sh*t.”) Gordon then sued for trademark infringement. The defendants asserted that the Rogers test protected their First Amendment expression from Gordon’s trademark claims, and the district court granted them summary judgment.
Ginger and Fred, Barbie Girl, and Grand Theft Auto — The Rogers Test
The Rogers test was first developed by the U.S. Court of Appeals for the Second Circuit in a case involving the Federico Fellini film Ginger and Rogers about two fictional Italian cabaret performers who imitated the famed Hollywood duo of Ginger Rogers and Fred Astaire. The Rogers court held that trademark claims against an expressive work could survive First Amendment scrutiny only if the defendant’s use of the mark was either (1) not artistically relevant to the work or (2) explicitly misled consumers about the source or content of the work.
The Ninth Circuit adopted the Rogers test in Mattel v. MCA Records, in which the maker of the Barbie doll sued the producers and distributors of the late-90s pop song Barbie Girl. The court held that the song’s use of the BARBIE mark was relevant to the song’s ironic lyrics and not explicitly misleading. With later cases, the Ninth Circuit continued to apply and expand the Rogers test — to yet another Barbie satire, to the television show Empire and its advertisements, and to the Grand Theft Auto, Madden NFL, and Grand Turismo video-game series. In those cases, as in Mattel, the court determined that the public interest in avoiding consumer confusion was outweighed by the public interest in free expression.
“Artistic Relevance” Must Be Both Artistic and Relevant
Gordon stands in contrast. In each of the other cases, the use of the mark was connected to some independently expressive work — a film, a song, a video game, a television show. In Gordon, however, the court laid down a marker: “The Rogers test is not an automatic safe harbor for any minimally expressive work that copies someone else’s mark.” The court acknowledged that the greeting cards were expressive works protected by the First Amendment and that “the honey-badger catchphrase is certainly relevant to defendants’ cards.” But it doubted that “the mark is relevant to the defendant’s own artistry.”
“It cannot be,” the court reasoned, “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.”
The court’s reasoning sits uneasily with certain other lines of trademark and copyright law. Other courts have applied the Rogers test beyond the realm of artistic expression entirely — to political satire in Radiance Foundation v. NAACP (4th Cir. 2015), and to newsgathering in New Kids On The Block v. News America Publishing (C.D. Cal. 1990). Although Gordon’s nuanced reasoning should extend with equal force to those sorts of expression, the court’s emphasis on “the defendant’s own artistry ” may cut against applying the Rogers test outside the realm of art at all. And in the copyright context, courts have grappled with “appropriation art” — art whose artistry lies in the act of appropriation — and have begun to come down on the side of the artist. After Gordon, who is an artist and how such artists will fare when faced with trademark claims remains to be seen. Indeed, even the defendants’ fate in Gordon is uncertain. The court ultimately left it to a jury to decide whether they used the honey-badger catchphrases for artistic reasons — or merely to trade on the goodwill associated with Gordon’s brand.