Ninth Circuit reverses judgment in favor of YouTube creator in trademark infringement suit

By Elizabeth Alt | Aug 3, 2018

SAN FRANCISCO – The U.S. Court of Appeals for the 9th Circuit reversed the district court ruling in a trademark infringement suit against Papyrus-Recycled Greetings and Drape Creative filed by a narrator of a popular YouTube video.

Judge Jay S. Bybee wrote the 9th Circuit opinion on July 30 with Judges Danny J. Boggs and Paul J. Watford. Bybee stated that the defendants “have largely just pasted Gordon’s mark into their greeting cards,” reversing the district court ruling in the defendants’ favor. 

In 2011, Christopher Gordon, an actor, comedian and writer, became known for a YouTube video showing a honey badger he narrated. Following the video’s popularity, Gordon trademarked the honey badger phrases for merchandise, including greeting cards, using the catchphrase “Honey Badger Don’t Care.” 

Gordon acquired an agent, who spoke to American Greetings Corp., who works with Drape Creative Inc., and is the parent company for Papyrus-Recycled Greetings Inc. American Greetings did not make an agreement with Gordon, the ruling states.

Gordon sued Drape Creative Inc. and Papyrus-Recycled Greetings Inc. in 2015 after several of the companies’ greeting cards pictured a honey badger with similar phrasing.

Bybee explained that the Lanham Act applies to expressive works “'only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.'” Under the Rogers test, “'that balance will normally not support application of the Act unless [1] the title has no artistic relevance to the underlying work whatsoever, or, [2] if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.'”

Bybee noted that in the other cases where Rogers has been applied, the defendant has prevailed, referencing the rulings in the suit against Electronic Arts Inc. brought by Jim Brown, who claimed their Madden NFL series used his likeness. Mattel’s suit claiming Danish band Aqua infringed upon the Barbie trademark in its song “Barbie Girl” was similarly dismissed. 

Bybee stated that previous courts have found that trademarks sometimes “transcend their identifying purpose” and “become an integral part of our vocabulary.”

The opinion stated that although the defendants have proved that their greeting cards are expressive works covered under the First Amendment, the defendants can’t “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 use of a mark is not artistically relevant if the defendant uses it merely to appropriate the goodwill inhering in the mark or for no reason at all…there is evidence that defendants simply used Gordon’s mark in the same way that Gordon was using it—to make humorous greeting cards in which the bottom line is 'honey badger don’t care.'”

The case was remanded back to district court, noting the issue whether the defendants’ “use of Gordon’s mark is artistically relevant to their cards as a matter of law” is for a jury to decide. 

The 9th Circuit stated that the jury needs to decide if the defendants’ cards explicitly mislead customers into believing that Gordon is somehow associated with their defendants’ cards.

U.S. Court of Appeals for the 9th Circuit case number 16-56715

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