Christopher Gordon v. Drape Creative, Inc.

FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

CHRISTOPHER GORDON, an No. 16-56715

individual,

Plaintiff-Appellant, D.C. No.

2:15-cv-04905-

v. JFW-PLA

DRAPE CREATIVE, INC., a Missouri

corporation; PAPYRUS-RECYCLED ORDER AND

GREETINGS, INC., an Illinois OPINION

corporation,

Defendants-Appellees.

Appeal from the United States District Court

for the Central District of California

John F. Walter, District Judge, Presiding

Argued and Submitted April 9, 2018

Pasadena, California

Filed November 20, 2018

Before: Danny J. Boggs,* Jay S. Bybee,

and Paul J. Watford, Circuit Judges.

Order;

Opinion by Judge Bybee

*

The Honorable Danny J. Boggs, United States Circuit Judge for the

U.S. Court of Appeals for the Sixth Circuit, sitting by designation.

2 GORDON V. DRAPE CREATIVE

SUMMARY**

Trademark

The panel filed (1) an order granting appellees’ petition

for panel rehearing, withdrawing the panel’s opinion, and

ordering the filing of a superseding opinion; and (2) a

superseding opinion reversing the district court’s grant of

summary judgment in favor of defendants in a trademark

infringement suit under the Lanham Act.

In the superseding opinion, the panel held that, under the

Rogers test, the Lanham Act applies to expressive works only

where the public interest in avoiding consumer confusion

outweighs 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 misleads consumers as to

the source or the content of the work.

Defendants designed and produced greeting cards using

“Honey Badger” catchphrases from plaintiff Christopher

Gordon’s YouTube video.

The panel resolved the first Rogers prong against Gordon

as a matter of law. The panel held that there was a triable

issue of fact as to Rogers’s second prong because defendants

did not use Gordon’s mark in the creation of a song,

photograph, video game, or television show, but largely just

pasted Gordon’s mark into their greeting cards. The panel

**

This summary constitutes no part of the opinion of the court. It has

been prepared by court staff for the convenience of the reader.

GORDON V. DRAPE CREATIVE 3

held that a jury could determine that this use of Gordon’s

mark was explicitly misleading as to the source or content of

the cards. The panel reversed the district court and remanded

for further proceedings.

COUNSEL

Daniel L. Reback (argued) and Ralph C. Loeb, Krane &

Smith, Encino, California, for Plaintiff-Appellant.

Douglas J. Collodel (argued) and James J.S. Holmes, Clyde

& Co US LLP, Los Angeles, California, for Defendants-

Appellees.

Mark A. Lemley, Professor, Stanford Law School, Stanford,

California, for Amici Curiae 37 Intellectual Property Law

Professors.

ORDER

Appellees’ petition for panel rehearing (Dkt. No. 39) is

GRANTED. The opinion filed July 30, 2018, and published

at 897 F.3d 1184, is withdrawn. The superseding opinion

shall be filed concurrently with this order.

Further petitions for rehearing or petitions for rehearing

en banc shall be allowed in the above-captioned matter. See

Ninth Circuit General Order 5.3(a).

4 GORDON V. DRAPE CREATIVE

OPINION

BYBEE, Circuit Judge:

Plaintiff Christopher Gordon is 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 this 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).

We use the Rogers test to balance the competing interests

at stake when a trademark owner claims that an expressive

work infringes on its trademark rights. The test construes the

Lanham Act to apply to expressive works “only where the

public interest in avoiding consumer confusion outweighs the

public interest in free expression.” Id. at 999. “[T]hat

balance will normally not support application of the Act,

unless the [use of the mark] has no artistic relevance to the

underlying work whatsoever, or . . . explicitly misleads

[consumers] as to the source or the content of the work.” Id.

The Rogers test is not an automatic safe harbor for any

minimally expressive work that copies someone else’s mark.

Although on every prior occasion in which we have applied

the test, we have found that it barred an infringement claim as

a matter of law, this case presents a triable issue of fact.

Defendants have not used Gordon’s mark in the creation of a

GORDON V. DRAPE CREATIVE 5

song, photograph, video game, or television show, but have

largely just pasted Gordon’s mark into their greeting cards.

A jury could determine that this use of Gordon’s mark is

explicitly misleading as to the source or content of the cards.

We therefore reverse the district court’s grant of summary

judgment and remand for further proceedings on Gordon’s

claims.

I

Plaintiff Christopher Gordon is a comedian, writer, and

actor, who commonly uses the name “Randall” as an alias on

social media.1 Defendant DCI is a greeting-card design

studio. DCI works exclusively with American Greetings

Corporation and its subsidiaries, which include the other

defendant in this case, PRG. PRG is a greeting-card

manufacturer and distributor.

A

In January 2011, under the name Randall, Gordon posted

a video on YouTube titled The Crazy Nastyass Honey

Badger, featuring National Geographic footage of a honey

badger overlaid with Gordon’s narration. In the video,

Gordon repeats variations of the phrases “Honey Badger

Don’t Care” and “Honey Badger Don’t Give a S---,” as a

honey badger hunts and eats its prey. The parties refer to

these phrases as “HBDC” and “HBDGS,” and we adopt their

convention.

1

Because this case comes to us on appeal from a grant of summary

judgment for defendants, we recount the facts in the light most favorable

to Gordon. See VMG Salsoul, LLC v. Ciccone, 824 F.3d 871, 875 (9th

Cir. 2016).

6 GORDON V. DRAPE CREATIVE

Gordon’s video quickly generated millions of views on

YouTube and became the subject of numerous pop-culture

references in television shows, magazines, and social media.

As early as February 2011, Gordon 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. In June 2011,

Gordon 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. The Patent and Trademark Office

(“PTO”) eventually 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.).2 However, Gordon never registered

the HBDGS phrase for any class of goods.

At the peak of his popularity, Gordon promoted his brand

on television and radio shows and in interviews with national

publications such as Forbes, The Wall Street Journal, and

The Huffington Post. His brand was further boosted by

celebrities like Taylor Swift and Anderson Cooper quoting

his video and by LSU football players tagging their

teammate, Heisman Trophy finalist Tyrann Mathieu, with the

moniker “Honey Badger” for his aggressive defensive play.

2

Between January 2013 and April 2014, the PTO issued registrations

for HBDC in International Classes 9, 21, 25, and 28. The PTO did not

issue a registration for HBDC in International Class 16—which includes

greeting cards—until October 2016, well after Gordon filed this suit. The

timing of Gordon’s registrations, however, is immaterial to the Rogers

inquiry.

GORDON V. DRAPE CREATIVE 7

In November 2011, Advertising Age referred to Gordon’s

brand as one of “America’s Hottest Brands” in an article

titled “Hot Brand? Honey Badger Don’t Care.”

B

In January 2012, Gordon hired Paul Leonhardt to serve

as his licensing agent. Soon thereafter, Leonhardt contacted

Janice Ross at American Greetings—the parent company of

defendant PRG—to discuss licensing honey-badger themed

greeting cards. Leonhardt and Ross had multiple email

exchanges and conversations over several weeks. Ross at one

point expressed some interest in a licensing agreement,

stating: “I think it’s a really fun and irreverent property and

would love to see if there’s an opportunity on one of our

distribution platforms. But in order to do that, I need to get

some key colleagues of mine on board the Crazy Honey

Badger Bandwagon.” Nevertheless, neither American

Greetings nor defendants ever signed a licensing agreement

with Gordon.

Leonhardt did eventually secure several licensing deals

for Gordon. Between May and October 2012, Gordon’s

company—Randall’s Honey Badger, LLC (“RHB”)—entered

into licensing agreements with Zazzle, Inc., and The Duck

Company for various honey-badger themed products,

including greeting cards. RHB also entered into licensing

agreements with other companies for honey-badger costumes,

toys, t-shirts, sweatshirts, posters, and decals, among other

things. HBDC and HBDGS were the two most common

phrases used on these licensed products. For example, two of

Zazzle’s best-selling honey-badger greeting cards stated on

their front covers “Honey Badger Don’t Care About Your

Birthday.”

8 GORDON V. DRAPE CREATIVE

At the same time that Gordon was negotiating licensing

agreements with Zazzle and Duck, defendants began

developing their own line of unlicensed honey-badger

greeting cards. Beginning in June 2012, defendants sold

seven different greeting cards using the HBDC or HBDGS

phrases with small variations:

• The fronts of two “Election Cards”

showed a picture of a honey badger

wearing a patriotic hat and stated “The

Election’s Coming.” The inside of one

card said “Me and Honey Badger don’t

give a $#%@! Happy Birthday,” and the

inside of the other said “Honey Badger

and me just don’t care. Happy Birthday.”

• The fronts of two “Birthday Cards”

featured different pictures of a honey

badger and stated either “It’s Your

Birthday!” or “Honey Badger Heard It’s

Your Birthday.” The inside of both cards

said “Honey Badger Don’t Give a S---.”

• The fronts of two “Halloween Cards”

showed a picture of a honey badger

next to a jack-o-lantern and stated

“Halloween is Here.” The inside of the

cards said either “Honey Badger don’t

give a $#*%!” or “Honey Badger don’t

give a s---.”

• A “Critter Card” employed a Twitter-style

format showing a series of messages from

“Honey Badger@don’tgiveas---.” The

GORDON V. DRAPE CREATIVE 9

front stated “Just killed a cobra. Don’t

give a s---”; “Just ate a scorpion. Don’t

give a s---”; and “Rolling in fire ants.

Don’t give a s---.”3 The inside said “Your

Birthday’s here. . . I give a s---.”

The back cover of each card displayed the mark for

“Recycled Paper Greetings” and listed the websites

www.DCIStudios.com and www.prgreetings.com. DCI’s

President testified that he drafted all of the cards in question

but could not recall what inspired the cards’ designs. He

claimed to have never heard of a video involving a honey

badger.

In June 2015, Gordon filed this suit against DCI and PRG,

alleging trademark infringement under the Lanham Act,

among other claims. The district court granted summary

judgment for defendants, holding that defendants’ greeting

cards were expressive works, and applying the Rogers test to

bar all of Gordon’s claims. Gordon timely appealed.4

3

Gordon’s video refers to a honey badger getting stung by bees and

eating a cobra—e.g., “Now look, here’s a house full of bees. You think

the honey badger cares? It doesn’t give a s---. . . . But look the honey

badger doesn’t care, it’s getting stung like a thousand times. It doesn’t

give a s--- . . . . Look! Here comes a fierce battle between a king cobra

and a honey badger. . . . And of course, what does a honey badger have

to eat for the next few weeks? Cobra.”

4

We have jurisdiction under 28 U.S.C. § 1291, and we review the

district court’s grant of summary judgment de novo. See Mattel, Inc. v.

Walking Mountain Prods., 353 F.3d 792, 806 (9th Cir. 2003).

10 GORDON V. DRAPE CREATIVE

II

The Lanham Act, 15 U.S.C. § 1051 et seq., “creates a

comprehensive framework for regulating the use of

trademarks and protecting them against infringement,

dilution, and unfair competition.” Fortune Dynamic, Inc. v.

Victoria’s Secret Stores Brand Mgmt., Inc., 618 F.3d 1025,

1030 (9th Cir. 2010). The Act’s two underlying purposes are

to ensure that (1) “owners of trademarks can benefit from the

goodwill associated with their marks” and (2) “consumers can

distinguish among competing producers.” Id.; see also J.

THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS &

UNFAIR COMPETITION § 2:2 (5th ed.) (“MCCARTHY”)

(explaining the dual purposes of trademark law).

Under the Act, the owner of a trademark used in

commerce may register the mark with the PTO. Registration

is prima facie evidence of the mark’s validity and of the

owner’s exclusive right to use the mark in connection with

the goods and services specified in the registration. 15 U.S.C.

§ 1057(b). The owner has a cause of action against any

person who, without the owner’s consent, “use[s] in

commerce any reproduction, counterfeit, copy, or colorable

imitation of a registered mark in connection with the sale,

offering for sale, distribution, or advertising of any goods or

services on or in connection with which such use is likely to

cause confusion, or to cause mistake, or to deceive.” Id.

§ 1114(1)(a); see also id. § 1125(a) (providing a similar cause

of action for “false designation of origin, false or misleading

GORDON V. DRAPE CREATIVE 11

description of fact, or false or misleading representation of

fact,” irrespective of registration).5

In general, we apply a “likelihood-of-confusion test” to

claims brought under the Lanham Act. Twentieth Century

Fox Television v. Empire Distrib., Inc., 875 F.3d 1192, 1196

(9th Cir. 2017); Mattel, Inc. v. Walking Mountain Prods.,

353 F.3d 792, 806–07 (9th Cir. 2003). The likelihood-of-

confusion test requires the plaintiff to prove two elements:

(1) that “it has a valid, protectable trademark” and (2) that

“the defendant’s use of the mark is likely to cause confusion.”

S. Cal. Darts Ass’n v. Zaffina, 762 F.3d 921, 929 (9th Cir.

2014) (alteration omitted).6 Ordinarily, this test “strikes a

5

The district court declined to distinguish between HBDC, which is

a registered trademark, and HBDGS, which is not. We assume for

purposes of this decision that HBDC and HBDGS are both protected

marks, even if HBDGS is not registered. See Matal v. Tam, 137 S. Ct.

1744, 1752 (2017) (explaining that “an unregistered trademark can be

enforced against would-be infringers” under 15 U.S.C. § 1125(a)); Brown

v. Elec. Arts, Inc., 724 F.3d 1235, 1241 (9th Cir. 2013) (noting that the

Rogers test applies “in [§ 1125(a)] cases involving expressive works”).

Gordon claimed infringement under § 1125(a) in his complaint, and

defendants challenged Gordon’s ownership of HBDGS as a protected

mark in their motion for summary judgment. The district court is free to

revisit this issue on remand.

6

We have identified eight factors—called the Sleekcraft factors—for

determining whether a defendant’s use of the mark is likely to cause

consumer confusion:

(1) the strength of the mark; (2) the proximity of the

goods; (3) the similarity of the marks; (4) evidence of

actual confusion; (5) the marketing channels used;

(6) the type of goods and the degree of care likely to be

exercised by the purchaser; (7) the defendant’s intent in

12 GORDON V. DRAPE CREATIVE

comfortable balance” between the Lanham Act and the First

Amendment. Mattel, Inc. v. MCA Records, Inc., 296 F.3d

894, 900 (9th Cir. 2002).

That said, where artistic expression is at issue, we have

expressed concern that “the traditional test fails to account for

the full weight of the public’s interest in free expression.” Id.

The owner of a trademark “does not have the right to control

public discourse” by enforcing his mark. Id. We have

adopted the Second Circuit’s Rogers test to strike an

appropriate balance between First Amendment interests in

protecting artistic expression and the Lanham Act’s purposes

to secure trademarks rights. Under Rogers, we read the Act

“to apply to artistic works only where the public interest in

avoiding consumer confusion outweighs the public interest in

free expression.” Id. at 901 (quoting Rogers, 875 F.2d at

999). More concretely, we apply the Act to an expressive

work only if the defendant’s use of the mark (1) is not

artistically relevant to the work or (2) explicitly misleads

consumers as to the source or the content of the work. See id.

at 902. Effectively, Rogers employs the First Amendment as

a rule of construction to avoid conflict between the

Constitution and the Lanham Act.

We pause here to clarify the burden of proof under the

Rogers test. 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.

selecting the mark; and (8) the likelihood of expansion

of the product lines.

Zaffina, 762 F.3d at 930 (citing AMF Inc. v. Sleekcraft Boats, 599 F.2d

341, 348–49 (9th Cir. 1979)).

GORDON V. DRAPE CREATIVE 13

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. Cf. Makaeff v. Trump Univ., LLC, 715 F.3d 254,

261 (9th Cir. 2013) (if a defendant meets its “initial burden”

of showing a First Amendment interest, then a public-figure

plaintiff claiming defamation must meet a “heightened

standard of proof” requiring a showing of “actual malice”).

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.7

“Summary judgment may properly be entered only

against a party who has failed to make a showing sufficient

to establish a genuine dispute as to the existence of an

7

We have been careful not to “conflate[] the [‘explicitly misleading’]

prong of the Rogers test with the general Sleekcraft likelihood-of-

confusion test,” Twentieth Century Fox, 875 F.3d at 1199, but it bears

noting that Twentieth Century Fox made this distinction to ensure that the

likelihood-of-confusion test did not dilute Rogers’s explicitly misleading

prong. Other circuits have noted that Rogers’s second prong is essentially

a more exacting version of the likelihood-of-confusion test. See

Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 665

(5th Cir. 2000); Twin Peaks Prods., Inc. v. Publ’ns Int’l, Ltd., 996 F.2d

1366, 1379 (2d Cir. 1993). A plaintiff who satisfies the “explicitly

misleading” portion of Rogers should therefore have little difficulty

showing a likelihood of confusion.

14 GORDON V. DRAPE CREATIVE

element essential to his case and upon which the party will

bear the burden of proof at trial.” Easley v. City of Riverside,

890 F.3d 851, 859 (9th Cir. 2018). When, as here, the

defendant moves for summary judgment and has

demonstrated that its use of the plaintiff’s mark is part of an

expressive work, the burden shifts to the plaintiff to raise a

genuine dispute as to at least one of Rogers’s two prongs. In

other words, to evade summary judgment, the plaintiff must

show a triable issue of fact as to whether the mark is

artistically relevant to the underlying work or explicitly

misleads consumers as to the source or content of the work.

III

Before applying the Rogers test to the instant case, we

briefly review the test’s origin in the Second Circuit and

development in our court.8 We have applied the Rogers test

on five separate occasions, and each time we have concluded

that it barred the trademark-infringement claim as a matter of

law. Three of those cases, like Rogers, involved the use of a

trademark in the title of an expressive work. Two cases

involved trademarks in video games and extended the Rogers

test to the use of a trademark in the body of an expressive

work.

A

The Rogers case concerned the movie Ginger and Fred,

a story of two fictional Italian cabaret performers who

8

The Rogers test has been adopted in other circuits as well. See Univ.

of Ala. Bd. of Trs. v. New Life Art, Inc., 683 F.3d 1266, 1278 (11th Cir.

2012); Parks v. LaFace Records, 329 F.3d 437, 452 (6th Cir. 2003);

Westchester Media, 214 F.3d at 665.

GORDON V. DRAPE CREATIVE 15

imitated the famed Hollywood duo of Ginger Rogers and

Fred Astaire. 875 F.2d at 996–97. Rogers sued the film’s

producers under the Lanham Act, alleging that the film’s title

gave the false impression that the film—created and directed

by well-known filmmaker Federico Fellini—was about her or

sponsored by her. Id. at 997. The district court, however,

granted summary judgment for the defendant film producers.

Id.

On appeal, the Second Circuit recognized that, “[t]hough

First Amendment concerns do not insulate titles of artistic

works from all Lanham Act claims, such concerns must

nonetheless inform our consideration of the scope of the Act

as applied to claims involving such titles.” Id. at 998. The

court said it would construe the Lanham Act “to apply to

artistic works only where the public interest in avoiding

consumer confusion outweighs the public interest in free

expression.” Id. at 999. Refining its inquiry, the court further

held that, “[i]n the context of allegedly misleading titles using

a celebrity’s name, 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.” Id.

With respect to artistic relevance, the Second Circuit

found that the names “Ginger” and “Fred” were “not

arbitrarily chosen just to exploit the publicity value of their

real life counterparts” but had “genuine relevance to the

film’s story.” Id. at 1001. The film’s title was “truthful as to

its content” and conveyed “an ironic meaning that [was]

relevant to the film’s content.” Id. On the second prong of

its inquiry, the court held that the title was not explicitly

misleading because it “contain[ed] no explicit indication that

16 GORDON V. DRAPE CREATIVE

Rogers endorsed the film or had a role in producing it.” Id.

Any risk that the title would mislead consumers was

“outweighed by the danger that suppressing an artistically

relevant though ambiguous title will unduly restrict

expression.” Id. The Second Circuit therefore affirmed

summary judgment for the defendant film producers. Id. at

1005.

B

We first employed the Rogers test in MCA Records,

296 F.3d 894, which concerned the song “Barbie Girl” by the

Danish band Aqua. The song—which lampooned the values

and lifestyle that the songwriter associated with Barbie

dolls—involved one band member impersonating Barbie and

singing in a high-pitched, doll-like voice. Id. at 899. Mattel,

the manufacturer of Barbie dolls, sued the producers and

distributors of “Barbie Girl” for infringement under the

Lanham Act, and the district court granted summary

judgment for the defendants. Id. Applying the Rogers test,

we affirmed. Id. at 902. We held that the use of the Barbie

mark in the song’s title was artistically relevant to the

underlying work because the song was “about Barbie and the

values Aqua claims she represents.” Id. In addition, the song

“d[id] not, explicitly or otherwise, suggest that it was

produced by Mattel.” Id. “The only indication that Mattel

might be associated with the song [was] the use of Barbie in

the title,” and if the use of the mark alone were enough to

satisfy Rogers’s second prong, “it would render Rogers a

nullity.” Id. Because the Barbie mark was artistically

relevant to the song and not explicitly misleading, we

concluded that the band could not be held liable for

infringement.

GORDON V. DRAPE CREATIVE 17

We applied the Rogers test to another suit involving

Barbie in Walking Mountain, 353 F.3d 792. There,

photographer Thomas Forsythe developed a series of

photographs titled “Food Chain Barbie” depicting Barbie

dolls or parts of Barbie dolls in absurd positions, often

involving kitchen appliances. Id. at 796. Forsythe described

the photographs as critiquing “the objectification of women

associated with [Barbie].” Id. Mattel claimed that the photos

infringed its trademark and trade dress, but we affirmed

summary judgment for Forsythe because “[a]pplication of the

Rogers test here leads to the same result as it did in MCA.”

Id. at 807. Forsythe’s use of the Barbie mark was artistically

relevant to his work because his photographs depicted Barbie

and targeted the doll with a parodic message. Id. Moreover,

apart from Forsythe’s use of the mark, there was no

indication that Mattel in any way created or sponsored the

photographs. Id.

Most recently, we applied the Rogers test in Twentieth

Century Fox, 875 F.3d 1192. Twentieth Century Fox

produced the television show Empire, which revolved around

a fictional hip-hop record label named “Empire Enterprises.”

Id. at 1195. Empire Distribution, an actual hip-hop record

label, sent Twentieth Century Fox a cease-and-desist letter,

and Twentieth Century Fox sued for a declaratory judgment

that its show did not violate Empire’s trademark rights. Id.

In affirming summary judgment for Twentieth Century Fox,

we rejected Empire’s argument that “the Rogers test includes

a threshold requirement that a mark have attained a meaning

beyond its source-identifying function.”9 Id. at 1197.

9

We explained in MCA Records that trademarks sometimes

“transcend their identifying purpose” and “become an integral part of our

18 GORDON V. DRAPE CREATIVE

Whether a mark conveys a meaning beyond identifying a

product’s source is not a threshold requirement but only a

relevant consideration: “trademarks that transcend their

identifying purpose are more likely to be used in artistically

relevant ways,” but such transcendence is not necessary to

trigger First Amendment protection. Id. at 1198 (quotation

marks and citation omitted).

We concluded that Empire could not satisfy Rogers’s first

prong because Twentieth Century Fox “used the common

English word ‘Empire’ for artistically relevant reasons,”

namely, that the show’s setting was New York (the Empire

State) and its subject matter was an entertainment

conglomerate (a figurative empire). Id. Finally, we resisted

Empire’s efforts to conflate the likelihood-of-confusion test

with Rogers’s second prong. To satisfy that prong, it is not

enough to show that “the defendant’s use of the mark would

confuse consumers as to the source, sponsorship or content

of the work”; rather, the plaintiff must show that the

defendant’s use “explicitly misl[ed] consumers.” Id. at 1199.

Because Twentieth Century Fox’s Empire show contained

“no overt claims or explicit references to Empire

Distribution,” we found that Empire could not satisfy

Rogers’s second prong. Id. Empire’s inability to satisfy

either of Rogers’s two prongs meant that it could not prevail

on its infringement claim.

C

We first extended the Rogers test beyond a title in E.S.S.

Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d

vocabulary.” 296 F.3d at 900. Examples include “Rolls Royce” as proof

of quality or “Band-Aid” for any quick fix.

GORDON V. DRAPE CREATIVE 19

1095, 1099 (9th Cir. 2008). In that case, defendant Rockstar

Games manufactured and distributed the video game Grand

Theft Auto: San Andreas, which took place in a fictionalized

version of Los Angeles. Id. at 1096–97. One of the game’s

neighborhoods—East Los Santos—“lampooned the seedy

underbelly” of East Los Angeles by mimicking its businesses

and architecture. Id. at 1097. The fictional East Los Santos

included a virtual strip club called the “Pig Pen.” Id. ESS

Entertainment 2000, which operates the Play Pen

Gentlemen’s Club in the real East Los Angeles, claimed that

Rockstar’s depiction of the Pig Pen infringed its trademark

and trade dress. Id.

We recognized that the Rogers test was developed in a

case involving a title, and adopted by our court in a similar

case, but we could find “no principled reason why it ought

not also apply to the use of a trademark in the body of the

work.” Id. at 1099. With respect to Rogers’s first prong, we

explained that “[t]he level of relevance merely must be above

zero” and the Pig Pen met this threshold by being relevant to

Rockstar’s artistic goal of creating “a cartoon-style parody of

East Los Angeles.” Id. at 1100. On the second prong, we

concluded that the game did not explicitly mislead as to the

source of the mark and would not “confuse its players into

thinking that the Play Pen is somehow behind the Pig Pen or

that it sponsors Rockstar’s product. . . . A reasonable

consumer would not think a company that owns one strip club

in East Los Angeles . . . also produces a technologically

sophisticated video game.” Id. at 1100–01. Because ESS

Entertainment 2000 could not demonstrate either of Rogers’s

two prongs, we affirmed summary judgment for Rockstar.

Another video-game case dealt with the Madden NFL

series produced by Electronic Arts, Inc. (“EA”). Brown v.

20 GORDON V. DRAPE CREATIVE

Elec. Arts, Inc., 724 F.3d 1235 (9th Cir. 2013). Legendary

football player Jim Brown alleged that EA violated § 43(a) of

the Lanham Act by using his likeness in its games. Id. at

1238–39. The district court granted EA’s motion to dismiss,

and we affirmed. Id. at 1239. We reiterated E.S.S.’s holding

that the level of artistic relevance under Rogers’s first prong

need only exceed zero and found it was “obvious that

Brown’s likeness ha[d] at least some artistic relevance to

EA’s work.” Id. at 1243. We also found that Brown had not

alleged facts that would satisfy Rogers’s second prong: “EA

did not produce a game called Jim Brown Presents Pinball

with no relation to Jim Brown or football beyond the title; it

produced a football game featuring likenesses of thousands of

current and former NFL players, including Brown.” Id. at

1244. We asked “whether the use of Brown’s likeness would

confuse Madden NFL players into thinking that Brown is

somehow behind the games or that he sponsors EA’s

product,” and held that it would not. Id. at 1245–47

(alterations omitted). As in E.S.S., the plaintiff could not

satisfy either of Rogers’s two prongs, and judgment for the

defendant was proper.

IV

In each of the cases coming before our court, the evidence

was such that no reasonable jury could have found for the

plaintiff on either prong of the Rogers test, and we therefore

concluded that the plaintiff’s Lanham Act claim failed as a

matter of law. This case, however, demonstrates Rogers’s

outer limits. Although defendants’ greeting cards are

expressive works to which Rogers applies, there remains a

genuine issue of material fact as to Rogers’s second

prong—i.e., whether defendants’ use of Gordon’s mark in

their greeting cards is explicitly misleading.

GORDON V. DRAPE CREATIVE 21

A

As a threshold matter, we have little difficulty

determining that defendants have met their initial burden of

demonstrating that their greeting cards are expressive works

protected under the First Amendment. As we have previously

observed, “[a greeting] card certainly evinces ‘[a]n intent to

convey a particularized message . . . , and in the surrounding

circumstances the likelihood was great that the message

would be understood by those who viewed it.’” Hilton v.

Hallmark Cards, 599 F.3d 894, 904 (9th Cir. 2010) (quoting

Spence v. Washington, 418 U.S. 405, 410–11 (1974) (per

curiam)); see also Roth Greeting Cards v. United Card Co.,

429 F.2d 1106, 1110 (9th Cir. 1970) (plaintiff’s greeting

cards, considered as a whole, “represent[ed] a tangible

expression of an idea” and hence were copyrightable). Each

of defendants’ cards relies on graphics and text to convey a

humorous message through the juxtaposition of an event of

some significance—a birthday, Halloween, an election—with

the honey badger’s aggressive assertion of apathy. Although

the cards may not share the creative artistry of Charles Schulz

or Sandra Boynton, the First Amendment protects expressive

works “[e]ven if [they are] not the expressive equal of Anna

Karenina or Citizen Kane.” Brown, 724 F.3d at 1241.

Because defendants have met their initial burden, the burden

shifts to Gordon to raise a triable issue of fact as to at least

one of Rogers’s two prongs.

B

Rogers’s first prong requires proof that defendants’ use of

Gordon’s mark was not “artistically relevant” to defendants’

greeting cards. We have said that “the level of artistic

relevance of the trademark or other identifying material to the

22 GORDON V. DRAPE CREATIVE

work merely must be above zero.” Id. at 1243 (internal

alterations omitted) (quoting E.S.S., 547 F.3d at 1100).

Indeed, “even the slightest artistic relevance” will suffice;

courts and juries should not have to engage in extensive

“artistic analysis.” Id. at 1243, 1245; see Bleistein v.

Donaldson Lithographing Co., 188 U.S. 239, 251 (1903) (“It

would be a dangerous undertaking for persons trained only to

the law to constitute themselves final judges of the worth of

pictorial illustrations, outside of the narrowest and most

obvious limits.”).

Gordon’s mark is certainly relevant to defendants’

greeting cards; the phrase is the punchline on which the

cards’ humor turns. In six of the seven cards, the front cover

sets up an expectation that an event will be treated as

important, and the inside of the card dispels that expectation

with either the HBDC or HBDGS phrase. The last card, the

“Critter Card,” operates in reverse: the front cover uses

variations of the HBDGS phrase to establish an apathetic

tone, while the inside conveys that the card’s sender actually

cares about the recipient’s birthday. We thus conclude that

Gordon has not raised a triable issue of fact with respect to

Rogers’s “artistic relevance” prong.

C

Even if the use of the mark is artistically relevant to the

work, the creator of the work can be liable under the Lanham

Act if the creator’s use of the mark is “explicitly misleading

as to source or content.” Rogers, 875 F.2d at 999. “This

second prong of the Rogers test ‘points directly at the purpose

of trademark law, namely to avoid confusion in the

marketplace by allowing a trademark owner to prevent others

from duping consumers into buying a product they

GORDON V. DRAPE CREATIVE 23

mistakenly believe is sponsored [or created] by the trademark

owner.’” Brown, 724 F.3d at 1245 (quoting E.S.S., 547 F.3d

at 1100). The “key here [is] that the creator must explicitly

mislead consumers,” and we accordingly focus on “the nature

of the [junior user’s] behavior” rather than on “the impact of

the use.” Id. at 1245–46.

In applying this prong, however, we must remain mindful

of the purpose of the Rogers test, which is to balance “the

public interest in avoiding consumer confusion” against “the

public interest in free expression.” Rogers, 875 F.2d at 999.

This is not a mechanical test—“all of the relevant facts and

circumstances” must be considered. Id. at 1000 n.6. We

therefore reject the district court’s rigid requirement that, to

be explicitly misleading, the defendant must make an

“affirmative statement of the plaintiff’s sponsorship or

endorsement.” Such a statement may be sufficient to show

that the use of a mark is explicitly misleading, but it is not a

prerequisite. See MCCARTHY § 10:17.10 (noting that

Rogers’s second prong does not hinge on the junior user

“falsely assert[ing] that there is an affiliation”). In some

instances, the use of a mark alone may explicitly mislead

consumers about a product’s source if consumers would

ordinarily identify the source by the mark itself. If an artist

pastes Disney’s trademark at the bottom corner of a painting

that depicts Mickey Mouse, the use of Disney’s mark, while

arguably relevant to the subject of the painting, could

explicitly mislead consumers that Disney created or

authorized the painting, even if those words do not appear

alongside the mark itself.

To be sure, we have repeatedly observed that “the mere

use of a trademark alone cannot suffice to make such use

explicitly misleading.” E.S.S., 547 F.3d at 1100 (citing MCA

24 GORDON V. DRAPE CREATIVE

Records, 296 F.3d at 902). But each time we have made this

observation, it was clear that consumers would not view the

mark alone as identifying the source of the artistic work. No

one would think that a song or a photograph titled “Barbie”

was created by Mattel, because consumers “do not expect

[titles] to identify” the “origin” of the work. MCA Records,

296 F.3d at 902. Nor would anyone “think a company that

owns one strip club in East Los Angeles . . . also produces a

technologically sophisticated video game.” E.S.S., 547 F.3d

at 1100–01. But this reasoning does not extend to instances

in which consumers would expect the use of a mark alone to

identify the source.

A more relevant consideration is the degree to which the

junior user uses the mark in the same way as the senior user.

In the cases in which we have applied the Rogers test, the

junior user has employed the mark in a different

context—often in an entirely different market—than the

senior user. In MCA Records and Walking Mountain, for

example, Mattel’s Barbie mark was used in a song and a

series of photos. In E.S.S., the mark of a strip club was used

in a video game. And in Twentieth Century Fox, the mark of

a record label was used in a television show. In each of these

cases, the senior user and junior user used the mark in

different ways. This disparate use of the mark was at most

“only suggestive” of the product’s source and therefore did

not outweigh the junior user’s First Amendment interests.

Rogers, 875 F.2d at 1000.

But had the junior user in these cases used the mark in the

same way as the senior user—had Twentieth Century Fox

titled its new show Law & Order: Special Hip-Hop

GORDON V. DRAPE CREATIVE 25

Unit10—such identical usage could reflect the type of

“explicitly misleading description” of source that Rogers

condemns. 875 F.2d at 999–1000. Rogers itself makes this

point by noting that “misleading titles that are confusingly

similar to other titles” can be explicitly misleading, regardless

of artistic relevance. Id. at 999 n.5 (emphasis added).

Indeed, the potential for explicitly misleading usage is

especially strong when the senior user and the junior user

both use the mark in similar artistic expressions. Were we to

reflexively apply Rogers’s second prong in this circumstance,

an artist who uses a trademark to identify the source of his or

her product would be at a significant disadvantage in warding

off infringement by another artist, merely because the product

being created by the other artist is also “art.” That would turn

trademark law on its head.

A second consideration relevant to the “explicitly

misleading” inquiry is the extent to which the junior user has

added his or her own expressive content to the work beyond

the mark itself. As Rogers explains, the concern that

consumers will not be “misled as to the source of [a] product”

is generally allayed when the mark is used as only one

component of a junior user’s larger expressive creation, such

that the use of the mark at most “implicitly suggest[s]” that

the product is associated with the mark’s owner. Id. at

998–99; see MCCARTHY § 31:144.50 (“[T]he deception or

confusion must be relatively obvious and express, not subtle

and implied.”). But using a mark as the centerpiece of an

expressive work itself, unadorned with any artistic

contribution by the junior user, may reflect nothing more than

an effort to “induce the sale of goods or services” by

confusion or “lessen[] the distinctiveness and thus the

10

Cf. Law & Order: Special Victims Unit (NBC Universal).

26 GORDON V. DRAPE CREATIVE

commercial value of” a competitor’s mark. S.F. Arts &

Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 539

(1987).

Our cases support this approach. In cases involving the

use of a mark in the title of an expressive work—such as the

title of a movie (Rogers), a song (MCA Records), a

photograph (Walking Mountain), or a television show

(Twentieth Century Fox)—the mark obviously served as only

one “element of the [work] and the [junior user’s] artistic

expressions.” Rogers, 875 F.2d at 1001. Likewise, in the

cases extending Rogers to instances in which a mark was

incorporated into the body of an expressive work, we made

clear that the mark served as only one component of the

larger expressive work. In E.S.S., the use of the Pig Pen strip

club was “quite incidental to the overall story” of the video

game, such that it was not the game’s “main selling point.”

547 F.3d at 1100–01. And in Brown, Jim Brown was one of

“thousands of current and former NFL players” appearing in

the game, and nothing on the face of the game explicitly

engendered consumer misunderstanding. 724 F.3d at

1244–46. Indeed, EA altered Brown’s likeness in certain

versions of the game, an artistic spin that “made consumers

less likely to believe that Brown was involved.” Id. at

1246–47.

In this case, we cannot decide as a matter of law that

defendants’ use of Gordon’s mark was not explicitly

misleading. There is at least a triable issue of fact as to

whether defendants simply used Gordon’s mark with minimal

artistic expression of their own, and used it in the same way

that Gordon was using it—to identify the source of humorous

greeting cards in which the bottom line is “Honey Badger

don’t care.” Gordon has introduced evidence that he sold

GORDON V. DRAPE CREATIVE 27

greeting cards and other merchandise with his mark; that in

at least some of defendants’ cards, Gordon’s mark was used

without any other text; and that defendants used the mark

knowing that consumers rely on marks on the inside of cards

to identify their source. Gordon’s evidence is not bulletproof;

for example, defendants’ cards generally use a slight variation

of the HBDGS phrase, and they list defendants’ website on

the back cover. But a jury could conclude that defendants’

use of Gordon’s mark on one or more of their cards is

“explicitly misleading as to [their] source.” Rogers, 875 F.2d

at 999.

Because we resolve the first Rogers prong against Gordon

as a matter of law, a jury may find for Gordon only if he

proves by a preponderance of the evidence that defendants’

use of his mark is explicitly misleading as to the source or

content of the cards.11

V

For the foregoing reasons, we REVERSE and REMAND

to the district court for further proceedings consistent with

this opinion.

11

We note that the district court has not yet addressed defendants’

abandonment defense. We express no opinion on that issue and leave it

for the district court to address in the first instance.