Takeaway: The Ninth Circuit will apply the Lanham Act to expressive works if the public interest in avoiding consumer confusion outweighs the public interest in free expression. If there is widespread recognition over a phrase, it is advisable to avoid using that phrase for commercial gain unless you first seek permission.
The Ninth Circuit Court of Appeals recently heard a case brought by Christopher Gordon. Gordon made the famous videos that feature the phrases “Honey Badger Don’t Care” and “Honey Badger Don’t Give a S—.” Gordon owns trademarks in both of those phrases covering greeting cards. Defendants Drape Creative, Inc. and Papyrus-Recycled Greetings, Inc., made greeting cards using the phrases and Gordon filed this lawsuit alleging a cause of action under federal trademark infringement. The district court granted summary judgment for defendants and Gordan appealed.
The Ninth Circuit uses the “Rogers” test from Rogers v. Grimaldi to balance the interests when a trademark owner claims that an expressive work infringes on its trademark rights. The courts weigh the public interest in avoiding consumer confusion against the public interest in free expression to determine whether the Lanham Act should apply to expressive works.
The court stated that the Defendants did not use Gordon’s “mark in the creation of song, photograph, video game, or television show, but largely just pasted Gordon’s mark into their greeting cards,” showing that a jury could determine that the defendants did not add any value protected by the First Amendment but rather just used the recognition of Gordon’s mark. Therefore, they reversed the district court’s decision and remanded for further proceedings on Gordon’s claims.