Gordon v. Drape Creative, Inc.

909 F.3d 257 (9th Cir. 2018)

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Nature of the Case

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Facts

P is a comedian, writer, and actor, who commonly uses the name 'Randall' as an alias. D is a greeting-card design studio. P posted a video on YouTube titled The Crazy Nastyass Honey Badger, featuring National Geographic footage of a honey badger overlaid with P's narration. P repeats variations of the phrases 'Honey Badger Don't Care' and 'Honey Badger Don't Give a Shit,' as a honey badger hunts and eats its prey. The parties refer to these phrases as 'HBDC' and 'HBDGS.' P's work went viral with millions of views on YouTube. P began producing and selling goods with the HBDC or HBDGS phrases, such as books, wall calendars, t-shirts, costumes, plush toys, mouse pads, mugs, and decals. Some of the items were sold online; others were sold through national retailers such as Wal-Mart, Target, Urban Outfitters, and Hot Topic. P copyrighted his video's narration under the title Honey Badger Don't Care, and in October 2011, he began filing trademark applications for the HBDC phrase for various classes of goods. PTO registered 'Honey Badger Don't Care' for International Classes 9 (audio books, etc.), 16 (greeting cards, etc.), 21 (mugs), 25 (clothing), and 28 (Christmas decorations, dolls, etc.). P never registered the HBDGS phrase for any class of goods. Advertising Age referred to P's brand as one of 'America's Hottest Brands' in an article titled 'Hot Brand? Honey Badger Don't Care.' P discussed licensing with D. D never signed a licensing agreement. Ds began developing their own line of unlicensed honey-badger greeting cards. Ds sold seven different greeting cards using the HBDC or HBDGS phrases with small variations. In June 2015, P filed this suit against Ds, alleging trademark infringement under the Lanham Act. The district court granted summary judgment for Ds, holding that Ds' greeting cards were expressive works, and applying the Rogers test to bar all of P's claims. P appealed.