“Ew! What’s that in its mouth? Oh, it’s got a cobra? Oh, it runs backwards? Now watch this. Look, a snake’s up in the tree. Honey Badger don’t care. It just takes what it wants.”

You may remember this viral YouTube sensation “The Crazy Nastya** Honey Badger” that was posted and narrated by Christopher Gordon (who uses Randall as an online alias) in 2011. What many people don’t know is that Gordon was in a long-running trademark lawsuit with a greeting card company over the catchphrases taken from the videos; “Honey Badger Don’t Care” and “Honey Badger Don’t Give a Sh*t.”

In 2016, Gordon sued Drape Creative Inc. and Papyrus-Recycled Greetings Inc. (Defendants) for trademark infringement. Gordon owns trademark registration numbers 4,505,781, 4,419,079, 4,419,081, and 4,281,472 for HONEY BADGER DON’T CARE. In the lawsuit, Gordon claimed the Defendants sold greeting cards with the statement “Honey Badger Don’t Give a Sh*t” which he believed was a clear reference and improper use of his mark. U.S. District Judge John Walter of the Central District of California did not agree.

Walter’s summary judgment hinged on the two-prong Rogers test (Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989)) which is designed to “strike an appropriate balance between First Amendment interests in protecting artistic expression and the Lanham Act’s purposes to secure trademark rights.” Under the two-prong Rogers test, adopted by the Ninth Circuit, “an artistic work’s use of a trademark that would otherwise violate the Lanham Act is not actionable” unless (1) use of the mark has “no artistic relevance to the underlying work” or (2) “explicitly misleads as to the source or the content of the work.”

In regard to the first prong, the Court “conclude[d] that the use of the phrase ‘Honey Badger Don’t Give a Sh*t’ easily meets the artistic relevance requirement under Rogers.” In regard to Rogers’ second prong “[t]he Court conclude[d] that Plaintiff has failed to present any evidence that raises a genuine issue of material fact that Defendants explicitly mislead as to the source of their greeting cards.” Gordon, unhappy with this ruling, appealed.

The appeal was heard by the United States Court of Appeals for the Ninth Circuit. The opinion, given by Judge Jay Bybee, who was joined by Judge Paul Watford and Judge Danny Boggs, reversed the District Court’s decision and found in favor of Gordon finding there were enough triable facts for this case to be tried before a jury. One of the triable facts was whether the Defendants added “any value protected by the First Amendment” other than “merely appropriate[ing] the goodwill associated with Gordon’s mark.”

In the opinion, Bybee states that the “Rogers test is not an automatic safe harbor for any minimally expressive work that copies someone else’s mark…It cannot be that defendants can 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…That would turn trademark law on its head.”

The President of Drape Creative admitted to being the creator of the cards but claimed he does not remember where the inspiration for the cards came from and that he had no knowledge of the Honey Badger that gained popularity on the internet at that time.

Bybee stated that “[a]lthough defendants’ greeting cards are expressive works to which Rogers applies, there remains a genuine issue of material fact as to at least Rogers’s first prong—i.e., whether defendants’ use of Gordon’s mark in their greeting cards is artistically relevant.”

It will be interesting to see how the next Circuit rules on this as their ruling could provide more clear-cut evidence as to how the Rogers test is to be applied.

Suiter Swantz IP is a full-service intellectual property law firm, based in Omaha, NE, serving all of Nebraska, Iowa, and South Dakota. If you have any intellectual property questions or need assistance with any patenttrademark, or copyright matters and would like to speak with one of our patent attorneys, please contact us.