Gordon v. Drape Creative, Inc., No. 16-56715 (9th Cir. 2018)Annotate this Case
The Ninth Circuit reversed the district court's grant of summary judgment for defendants in a trademark infringement action over the "Honey Badger" catchphrases under the Lanham Act. The panel applied the test in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), to balance the competing interests at stake when a trademark owner claims that an expressive work infringes on its trademark rights. The panel held that the Rogers test was not an automatic safe harbor for any minimally expressive work that copies someone else's mark. In this case, a jury could determine that defendants did not add any value protected by the First Amendment but merely appropriated the goodwill associated with plaintiff's mark. Defendants have not used another’s mark in the creation of a song, photograph, video game, or television show, but have largely just pasted plaintiff's mark into their greeting cards. Therefore, the panel remanded for further proceedings.
Court Description: 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. GORDON V. DRAPE CREATIVE 3
The court issued a subsequent related opinion or order on November 20, 2018.