The creator of the popular YouTube video called The Crazy Nastyass Honey Badger sued a greeting card manufacturer who sold several honey-badger themed greetings cards, as well as the company that designed those cards.
After the video went viral, Christopher Gordon began selling merchandise under the HONEY BADGER DON’T CARE and HONEY BADGER DON’T GIVE A SHIT marks.
He obtained federal trademark registrations covering the use of the HONEY BADGER DON’T CARE mark in connection with a number of products, including Christmas ornaments, mugs, plush toys and t-shirts. He also entered into licensing agreements allowing Zazzle and The Duck Company to use the marks.
Not long after the video went viral, Drake Creative, Inc. (“DCI”) designed, and Papyrus-Recycled Greetings, Inc. (“PRG”) began to sell, greeting cards featuring the phrases “honey badger don’t care” and “honey badger don’t give a shit,” although PRG’s parent company had met with Gordon’s representative regarding a license and rejected the proposed arrangement.
In June 2015, Gordon sued PRG and DCI for trademark infringement. The lower court granted the defendants’ motion for summary judgment on the theory that the cards were expressive works protected by the First Amendment.
Gordon appealed that ruling, and the Ninth Circuit reversed the earlier decision, allowing the lawsuit to go forward.
Noting that the defendants had “largely just pasted Gordon’s mark into their greeting cards,” the appellate court felt that a jury should be allowed to decide whether the greeting cards added any artistic value that would be protected by the First Amendment, or whether they merely appropriated the goodwill associated with Gordon’s trademarks.
The Ninth Circuit had previously adopted the “Rogers test” to balance First Amendment protections against trademark rights. While acknowledging that the cards themselves are expressive works, the court then found that there was “a genuine issue of material fact” regarding whether the defendants’ use of Gordon’s marks in their greeting cards was relevant to the rest of the work and to the defendants’ own artistry.
According to the court, the use of a mark is not artistically relevant if the defendant uses it either for no reason at all or merely to appropriate the mark’s goodwill. For artistic relevance to “be above zero,” the court said, the mark must relate to the greeting cards, and the designer must add his own artistic expression.
In this case, the court believed a jury could find that the defendants’ cards only made sense to those familiar with Gordon’s video and that the defendants were deliberately trading on the goodwill associated with his brand. In that case, Gordon’s trademark rights would outweigh the defendants’ First Amendment rights.
Please feel free to contact us if you have any questions about or need help with protecting your own trademarks or determining whether a mark you’re considering using is likely to be found to infringe another’s trademark rights.
