Gordon v. Drape Creative, Inc. - 909 F.3d 257 (9th Cir. 2018)

Rule:

The Rogers test requires the defendant to make a threshold legal showing that its allegedly infringing use is part of an expressive work protected by the First Amendment. If the defendant successfully makes that threshold showing, then the plaintiff claiming trademark infringement bears a heightened burden, the plaintiff must satisfy not only the likelihood-of-confusion test but also at least one of Rogers's two prongs. That is, when the defendant demonstrates that First Amendment interests are at stake, the plaintiff claiming infringement must show (1) that it has a valid, protectable trademark, and (2) that the mark is either not artistically relevant to the underlying work or explicitly misleading as to the source or content of the work. If the plaintiff satisfies both elements, it still must prove that its trademark has been infringed by showing that the defendant's use of the mark is likely to cause confusion.

Facts:

Plaintiff Christopher Gordon was the creator of a popular YouTube video known for its catchphrases "Honey Badger Don't Care" and "Honey Badger Don't Give a S---." Gordon has trademarked the former phrase for various classes of goods, including greeting cards. Defendants Drape Creative, Inc. ("DCI"), and Papyrus-Recycled Greetings, Inc. ("PRG"), designed and produced greeting cards using both phrases with slight variations. Gordon brought the present suit for trademark infringement, and the district court granted summary judgment for defendants, holding that Gordon's claims were barred by the test set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Plaintiff challenged the decision.

Issue:

Under the circumstances, did the district court err in granting summary judgment in favor of the defendants? 

Answer:

Yes.

Conclusion:

The Court noted that under the Rogers test, the Lanham Act applied to expressive works only where the public interest in avoiding consumer confusion outweighed the public interest in free expression. This balance will normally not support application of the Act unless the use of the mark (1) has no artistic relevance to the underlying work whatsoever, or (2) explicitly misled consumers as to the source or the content of the work. The Court held that the district court erred in granting summary judgment to defendant greeting card designers in plaintiff's trademark infringement action under the Lanham Act, 15 U.S.C.S. § § 1114(1)(a), because there was a triable issue of fact as to Rogers's second prong because defendants did not use plaintiff's mark in the creation of a song, photograph, video game, or television show, but largely just pasted the mark into their greeting cards, and a jury could determine that such use of plaintiff's mark was explicitly misleading as to the source or content of the cards.