Ninth U.S. Circuit Panel Revives Honey Badger Trademark Suit

Wednesday, November 21, 2018

Page 1

Ninth U.S. Circuit Panel Revives Honey Badger Trademark Suit

By SHANE PATRICK ETCHISON, Staff Writer

The Ninth U.S. Circuit Court of Appeals said yesterday that the creator of a popular 2011 YouTube video about a stalwart honey badger has presented a triable issue of fact as to the misleading nature of a pair of greeting card companies’ use of the video’s catchphrases.

The video, entitled “The Crazy Nastyass Honey Badger,” has garnered 89 million views in the nearly eight years since its posting. In it, comedian Christopher Gordon (under the alias Randall) provides his own irreverent narration over documentary footage of the weasel-like carnivore eating and running around.

Above is a frame from the video, “The Crazy Nastyass Honey Badger.” The Ninth U.S. Circuit Court of Appeals decided yesterday that, as a matter of law, the proprietor of the video cannot prevail in a trademark infringement action against greet-card makers on the basis of their use of catchphrases from the video being artistically irrelevant to their works. However, it reversed summary judgment in favor of the defendants, saying that the proprietor might be able to persuade a jury that there was infringement on an alternative basis: that consumers would be misled as to the source or content of the cards.

Gordon sued Drape Creative, Inc. and Papyrus-Recycled Greetings, Inc., both of which have produced greeting cards bearing variations of lines from the video, including “honey badger don’t care.” Gordon has a registered trademark for the phrase.

District Judge John F. Walter of the Central District of California granted summary judgment to the defendants, holding that the test put forth in the 1989 U.S. Supreme Court opinion in Rogers v. Grimaldi barred the comedian’s claim under the federal Lanham Act, which governs trademarks.

Rogers Test

Circuit Judge Jay S. Bybee delivered the panel’s opinion. on rehearing. reversing the judgment. He noted that while the first prong of the Rogers test cuts against Gordon’s claim, the second prong is a question for a jury to decide.

Courts apply the test when weighing the two interests involved in a trademark infringement case. Under the test, such cases only survive when the public’s interest in avoiding consumer confusion outweighs the public’s interest in free expression.

The two-prong test allows Lanham Act lawsuits only where “the defendant’s use of the mark (1) is not artistically relevant to the work or (2) explicitly misleads consumers as to the source or the content of the work,” Bybee explained.

“Gordon’s mark is certainly relevant to defendants’ greeting cards; the phrase is the punchline on which the cards’ humor turns,” he added.

More Than Use

The jurist noted that the use of a trademark was not in itself enough to be misleading as to the source. He wrote:

“A more relevant consideration is the degree to which the junior user uses the mark in the same way as the senior user. In the cases in which we have applied the Rogers test, the junior user has employed the mark in a different context—often in an entirely different market—than the senior user.”

He also found relevant “the extent to which the junior user has added his or her own expressive content to the work beyond the mark itself.”

Triable Issue

Bybee declared:

“In this case, we cannot decide as a matter of law that defendants’ use of Gordon’s mark was not explicitly misleading. There is at least a triable issue of fact as to whether defendants simply used Gordon’s mark with minimal artistic expression of their own, and used it in the same way that Gordon was using it—to identify the source of humorous greeting cards in which the bottom line is ‘Honey Badger don’t care.’ ”

He added:

“Gordon has introduced evidence that he sold greeting cards and other merchandise with his mark; that in at least some of defendants’ cards, Gordon’s mark was used without any other text; and that defendants used the mark knowing that consumers rely on marks on the inside of cards to identify their source. Gordon’s evidence is not bulletproof; for example, defendants’ cards generally use a slight variation of the…phrase, and they list defendants’ website on the back cover. But a jury could conclude that defendants’ use of Gordon’s mark on one or more of their cards is ‘explicitly misleading as to [their]source.’ ”

The case is Gordon v. Drape Creative, Inc., No. 16-56715.

In its July 30 opinion, the panel had reversed the judgment on the grounds that a jury could find the defendants had not added any First Amendment-protected value to Gordon’s trademark, but had merely appropriated its goodwill.

Daniel L. Reback of Krane & Smith in Encino argued on appeal for Gordon. Douglas J. Collodel of Clyde & Co US LLP’s Los Angeles office appeared for the defendants.