Opening Appellate Brief - Trademark Roger's Test

Case: 16-56715, 04/25/2017, ID: 10410984, DktEntry: 9, Page 1 of 69
No. 16-56715
United States Court of Appeals

for the
Ninth Circuit

CHRISTOPHER GORDON, an individual,
Plaintiff-Appellant,
– v. –
PAPYRUS-RECYCLED GREETINGS, INC., an Illinois corporation;

DRAPE CREATIVE, INC., a Missouri corporation,
Defendants-Appellees.
___________________________
ON APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE CENTRAL DISTRICT OF CALIFORNIA (HON. JOHN F. WALTER)
DISTRICT COURT CASE NO. 2:15-cv-04905-JFW-PLA
OPENING BRIEF FOR PLAINTIFF-APPELLANT

CHRISTOPHER GORDON
DANIEL L. REBACK
KRANE & SMITH
16255 Ventura Boulevard, Suite 600
Encino, California 91436
(818) 382-4000
dreback@kranesmith.com
Attorneys for Plaintiff-Appellant

Christopher Gordon
TABLE OF CONTENTS
Page
INTRODUCTION ...................................................................................... 1
STATEMENT OF JURISDICTION........................................................... 5
STATEMENT OF THE ISSUES FOR REVIEW ...................................... 5

STATEMENT OF THE CASE AND FACTS ........................................... 6
A. Factual Background .......................................................................... 6
1. Gordon’s Video and Trademark Registrations .......................... 6
2. Gordon’s Sale of Goods in 2011 ............................................... 7

3. Gordon Pitches a Greeting Card Deal to American Greetings ..... 8
4. Gordon’s Licensees.................................................................... 10
a) Zazzle .................................................................................. 10
b) Duck .................................................................................... 10
c) JEM ..................................................................................... 11
5. Gordon’s Honey Badger Don’t Care Book ............................... 11
6. Honey Badger Don’t Give a Shit ............................................... 12

7. Defendants’ Seven Greeting Cards ............................................ 13
a) Critter Card ......................................................................... 15
b) Election Cards ..................................................................... 17
c) Birthday Cards .................................................................... 17

d) Halloween Cards ................................................................. 18
e) Mr. Drape’s Testimony ....................................................... 19

8. Consumer Confusion ................................................................. 20
i
B. Procedural History ............................................................................ 21
SUMMARY OF ARGUMENT .................................................................. 22
STANDARD OF REVIEW ........................................................................ 23
ARGUMENT
I. THE DISTRICT COURT ERRED BY APPLYING THE ROGERS

TEST TO DEFENDANTS’ SEVEN GREETING CARDS
BECAUSE THEY ARE NOT EXPRESSIVE WORKS .................. 24
A. The Rogers Test Only Applies To Expressive Works ............... 24
B. Defendants’ Seven Greeting Cards Are Not Expressive

Works ......................................................................................... 26
II. THE DISTRICT COURT ERRED BY APPLYING THE ROGERS

TEST BECAUSE THERE WAS NO EVIDENCE THAT
GORDON’S TRADEMARK HAS A MEANING BEYOND ITS
SOURCE-IDENTIFYING FUNCTION .......................................... 32
III. THE ROGERS TEST DOES NOT APPLY BECAUSE
DEFENDANTS DID NOT REFER TO GORDON WHEN USING
HIS TRADEMARK.......................................................................... 37
IV. EVEN IF THE ROGERS TEST APPLIES, ITS FIRST PRONG

WAS NOT SATISFIED BECAUSE DEFENDANTS’ USE OF
GORDON’S TRADEMARK WAS NOT ARTISTICALLY
RELEVANT TO THE SEVEN GREETING CARDS..................... 45
V. THE DISTRICT COURT ERRED IN APPLYING THE SECOND

PRONG OF THE ROGERS TEST BECAUSE DEFENDANTS’
USE OF GORDON’S TRADEMARK WAS EXPLICITLY
MISLEADING ................................................................................. 51
CONCLUSION ........................................................................................... 58
CERTIFICATE OF COMPLIANCE
STATEMENT OF RELATED CASES

CERTIFICATE OF SERVICE
ii
TABLE OF AUTHORITIES
Page(s)
Cases:
A.G. Paradise Valley Unified Sch. Dist. No. 69,
815 F.3d 1195 (9th Cir. 2016) ................................................................. 23
Adray v. Adry–Mart, Inc., 76 F.3d 984 (9th Cir.1995) ................................ 57
Am.'s Best Family Showplace Corp. v. City of N.Y., Dep't of Bldgs.,

536 F.Supp.170 (E.D.N.Y. 1982) ............................................................. 31
American Dairy Queen Corp. v. New Line Prods.,
35 F.Supp.2d 727 (D. Minn. 1998) .......................................................... 42
AMF Inc. v. Sleekcraft Boats,

599 F.2d 341 (9th Cir.1979) ..................................................................... 32
Brown v. Electronic Arts, Inc.,

724 F.3d 1235 (9th Cir. 2013) .................................................................. passim
Brown v. Entm't Merchants Ass'n,
564 U.S. 786 (2011) ................................................................................. 27
Cliffs Notes, Inc. v. Bantam Doubleday Dell Pub. Grp.,
886 F.2d 490 (2d Cir. 1989) ..................................................................... 45
Dillinger, LLC v. Elec. Arts Inc.,
2011 WL 2457678 (S.D. Ind. 2011) ......................................................... 51
Dita, Inc. v. Mendez,
2010 WL 5140855 (C.D. Cal. 2010) ........................................................ 33, 43
Dr. Seuss Ents., L.P. v. Penguin Books USA, Inc.,
109 F.3d 1394 (9th Cir. 1997) ............................................................ 38n.7, 57
E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc.,

547 F.3d 1095 (9th Cir. 2008) .................................................................. passim
ETW Corp. v. Jireh Publ’g, Inc.,

332 F.3d 915 (6th Cir. 2003) .................................................................... 45
iii
Fleischmann Distilling Corp. v. Maier Brewing Co.,

314 F.2d 149 (9th Cir. 1963) .................................................................... 56
Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt., Inc.,

618 F.3d 1025 (9th Cir. 2010) .................................................................. 58
Hartford House Ltd. v. Hallmark Cards Inc.,

647 F.Supp. 1533 (D. Colo. 1986) ........................................................... 57
Hilton v. Hallmark Cards,

599 F.3d 894 (9th Cir. 2010) .................................................................. 29, 30, 31
JL Beverage Co., LLC v. Jim Beam Brands Co.,

828 F.3d 1098 (9th Cir. 2016) .................................................................. 22-23
Masters Software, Inc. v. Discovery Commc'ns, Inc.,

725 F.Supp.2d 1294 (W.D. Wash. 2010) ................................................. 44
Mattel, Inc. v. MCA Records, Inc.,

296 F.3d 894 (9th Cir. 2002) .................................................................... passim
Mattel, Inc. v. Walking Mountain Prods.,
353 F.3d 792 (9th Cir. 2003) .................................................................... passim
McGinest v. GTE Serv. Corp.,

360 F.3d 1103 (9th Cir. 2004) .................................................................. 23
Mil-Spec Monkey, Inc. v. Activision Blizzard, Inc.,
74 F.Supp.3d 1134 (N.D. Cal. 2014)...................................................... 35, 36, 37
Parks v. LaFace Records,
329 F.3d 437 (6th Cir. 2003) ....................................................... 41, 46, 47, 48, 49
Rebelution, LLC v. Perez,
732 F.Supp.2d 883 (N.D. Cal. 2010).......................................... 33, 34, 36, 42, 43
Rogers v. Grimaldi,
875 F.2d 994 (2d Cir. 1989) ..................................................................... passim
Roth Greeting Cards v. United Card Co.,

429 F.2d 1106 (9th Cir. 1970) .................................................................. 31
iv
Sierra On-Line, Inc. v. Phoenix Software, Inc.,

739 F.2d 1415 (9th Cir. 1984) .................................................................. 56
Spence v. State of Wash.,

418 U.S. 405 (1974) ................................................................................. 27, 29
Stewart Surfboards, Inc v. Disney Book Grp., LLC,

2011 WL 12877019 (C.D. Cal. 2011) .................................................... 35, 36, 37
Toho Co. v. William Morrow & Co.,

33 F.Supp.2d 1206 (C.D. Cal. 1998) ........................................................ 58
Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC,

221 F.Supp.2d 410 (S.D.N.Y. 2002) ........................................................ 32, 44
Twin Peaks Prods., Inc. v. Publ’ns Int’l, Ltd.,

996 F.2d 1366 (2d. Cir. 1993) .................................................................. 45
United States v. O'Brien,

391 U.S. 367 (1968) ................................................................................. 27
VIP Prod., LLC v. Jack Daniel’s Properties, Inc.,
2016 WL 5408313 (D. Ariz. 2016) .......................................................... 32
Walter v. Mattel, Inc.,

210 F.3d 1108 (9th Cir. 2000) .................................................................. 54n.9
Warner Bros. Entertainment v. Global Asylum, Inc.,
2012 WL 6951315 (C.D. Cal. 2012), aff’d 544 Fed.Appx.683
(9th Cir. 2013) ........................................................................................ 35, 43, 47
Westchester Media v. PRL USA Holdings, Inc.,

214 F.3d 658 (5th Cir. 2000) .................................................................... 57
Winchester Mystery House, LLC v. Glob. Asylum, Inc.,

210 Cal.App.4th 579 (2012) ..................................................................... 42
Statutes:
28 U.S.C. §1291 ........................................................................................... 5
28 U.S.C. § 1331 .......................................................................................... 5

28 U.S.C. § 1338(a) ..................................................................................... 5
v
28 U.S.C. § 1338(b) ..................................................................................... 5
28 U.S.C. § 1367(a) ..................................................................................... 5
Fed. R. App. P. 4(a)(1)(A) ........................................................................... 5
Fed. R. App. P. 4(a)(4)(A)(iv) ..................................................................... 5
Fed. R. App. P. 4(a)(4)(A)(vi) ..................................................................... 5
vi
INTRODUCTION
“Honey Badger Don’t Give a Shit,” and its twin, “Honey Badger Don’t
Care,” are the catchphrases of Plaintiff and Appellant Christopher Gordon
(“Gordon”). He made those phrases famous source identifiers by using them in a
viral video about the honey badger, which has been viewed more than 82 million
times on YouTube, and by promoting tirelessly his persona, video, and goods
throughout the country. Gordon owns the federally registered trademark “Honey
Badger Don’t Care,” and has sold greeting cards bearing both of his catchphrases.
At the height of Gordon’s popularity, Defendants and Appellees Papyrus-
Recycled Greetings, Inc. and Drape Creative, Inc. (collectively, “Defendants”) sold
seven different greeting cards that prominently bore Gordon’s catchphrase, “Honey
Badger Don’t Give a Shit” (“HBDGS”). Incredibly, the content in one of
Defendants’ seven cards (their “Critter” card) copied directly from Gordon’s video
by containing a reference to a honey badger killing a cobra. Worse yet,
Defendants’ bad faith and willful infringement is shown easily because they were
pitched a license deal by Gordon’s agent in February 2012 to sell cards bearing his
mark; refused the offer; and began selling their infringing cards six months later.
The only reason Defendants used HBDGS in their seven greeting cards is
because Gordon made HBDGS famous as his catchphrase. Quite simply,
1
Defendants’ seven greeting cards are a rip off. Defendants used Gordon’s mark to
capitalize on its popularity for their own commercial benefit.
Tom Drape (“Drape”), President of Defendant Drape Creative, Inc. (“DCI”),
claims he came up with the HBDGS text in the seven cards (including the Critter
one) by himself without any inspiration. But at his deposition, Drape could not
recall anything about his “creative” process that resulted in HBDGS appearing in
the seven cards. In fact, when asked, “how did you come up with the idea for this
greeting card?” for each of the seven cards, Drape responded, “I don’t remember.”
Without any explanation, Drape effectively conceded the cards were a rip off.
In this trademark infringement action, Gordon submitted evidence that
Defendants’ use of HBDGS in their seven greeting cards was confusingly similar
to Gordon’s registered trademark, “Honey Badger Don’t Care,” and created
consumer confusion. However, despite clear evidence of willful infringement and
consumer confusion, as well as numerous genuine issues of material fact, the
district court granted summary judgment in Defendants’ favor on First Amendment
grounds, without a hearing. In granting summary judgment, the district court
erroneously applied the “Rogers test” (Rogers v. Grimaldi, 875 F.2d 994 (2d Cir.
1989)) and extended First Amendment protection well beyond Ninth Circuit law.
In Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), this
Court first adopted the Rogers test, ruling that the First Amendment protected the
2
use of the iconic doll name “Barbie” in a song title. This Court has only applied
the Rogers test four times, twice allowing artists to poke fun at the iconic Barbie
doll, and twice allowing the use of realistic images in a video game. Under this
Court’s precedent, the district court’s summary judgment ruling must be reversed
for the following reasons.
First, the Rogers test does not apply because Defendants’ seven greeting
cards are not expressive works that deserve First Amendment protection. Unlike
protected movies, books or video games, these seven cards do not communicate
messages through literary devices such as characters, dialogue and plot. Instead,
the seven cards simply state “It’s Your Birthday” or “Halloween is Here” on the
front and have Gordon’s HBDGS catchphrase on the inside by itself.
Second, the Rogers test does not apply because the public does not imbue
Gordon’s trademark with a meaning beyond its source-identifying function, which
is a threshold requirement of the Rogers test.
Third, the Rogers test also does not apply because Defendants did not refer
to Gordon when using his mark. A defendant’s unauthorized use of the plaintiff’s
trademark must target or refer to the plaintiff in order for the use to receive First
Amendment protection, but Defendants’ seven cards made no comment on Gordon
or his mark.
3
Fourth, even if the Rogers test applies, the district court erred in finding as a
matter of law that Defendants’ use of HBDGS was artistically relevant to each of
the seven greeting cards. Gordon’s HBDGS phrase is artistically irrelevant to
Defendants’ birthday, election and Halloween cards that make no reference to, or
comment upon, Gordon.
Fifth, even if the Rogers test applies, the district court erred in finding as a
matter of law that Defendants’ use of HBDGS was not explicitly misleading.
Unlike this Court’s precedent, the district court’s decision allows a registered
trademark’s use for the sale of commercial products in direct competition with the
trademark owner. Further, the bad faith nature of Defendants’ behavior, such as
refusing Gordon’s license offer but then selling the cards, having actual knowledge
of Gordon’s mark, referring to a honey badger killing a cobra in the Critter card,
and being unable to explain why they used HBDGS in seven cards, created
genuine issues of material fact whether Defendants’ use of HBDGS was explicitly
misleading.
If the district court’s ruling stands, an infringer has virtually free rein to use
another’s trademark under the guise of the First Amendment. For instance, any
greeting card company would be entitled to slap another’s trademark in the middle
of a card, without any reference to the trademark owner, and escape liability while
trading off the popularity of another’s mark. Such is not, and cannot be, the law.
4
Because Defendants’ infringement is not protected by the First Amendment, the
district court’s grant of summary judgment should be reversed.
STATEMENT OF JURISDICTION
The district court had subject matter jurisdiction under 28 U.S.C. §§ 1331,
1338(a), 1338(b) and 1367(a). This is an appeal of a final order filed on October
19, 2016 granting Defendants’ summary judgment motion. ER 1. This Court has
jurisdiction pursuant to 28 U.S.C. §1291. Gordon filed a timely notice of appeal
on November 16, 2016 in accordance with Fed. R. App. P. 4(a)(1)(A) and
4(a)(4)(A)(iv) and (vi). ER 12.
STATEMENT OF THE ISSUES FOR REVIEW
1. Did the district court err by holding Defendants’ seven greeting cards,
some of which simply state “It’s Your Birthday” and “Honey Badger
Don’t Give a Shit” without any other text, are expressive works entitled
to utmost First Amendment protection?
2. Did the district court err by applying the Rogers test without satisfying
the threshold requirement that Gordon’s trademark must have attained a
meaning beyond its source-identifying function?
3. Did the district court err by applying the Rogers test when the Defendants
did not refer to Gordon when using his mark?
5
4. Did the district court err by holding as a matter of law that Defendants’
use of HBDGS was artistically relevant to all seven greeting cards under
the first prong of the Rogers test?
5. Did the district court err in holding as a matter of law that Defendants’
use of HBDGS was not explicitly misleading under the second prong of
the Rogers test?
STATEMENT OF THE CASE AND FACTS
A. Factual Background
1. Gordon’s Video and Trademark Registrations
Gordon is a comedian, narrator, writer, and actor, and is commonly known
by his alias, “Randall.” ER 1318. On January 18, 2011, Gordon published a video
(“Video”) on YouTube that consisted of his original narration humorously
describing the traits of a honey badger. The Video, titled The Crazy Nastyass
Honey Badger (original narration by Randall), became an instant hit, went “viral”
and is one of the most popular videos ever uploaded onto YouTube, having
generated more than 82 million views. ER 649, 1318.1
In the Video, Gordon repeatedly uses the expressions and jokes that the
“Honey Badger Don’t Care” and the “Honey Badger Don’t Give a Shit.” ER 1318,
1362. Gordon copyrighted his narration under the title Honey Badger Don't Care.
1
See https://www.youtube.com/watch?v=4r7wHMg5Yjg
6
ER 1319, 1364. Gordon also trademarked “Honey Badger Don’t Care” (“HBDC”)
with the United States Patent and Trademark Office for various classes of goods,
including t-shirts, Christmas ornaments, talking dolls, mugs, audio books and
video games. Gordon has five separate trademark registrations, filing his first
trademark application on October 14, 2011, and receiving his first registration on
January 29, 2013. ER 1319, 1366-69. Gordon received his latest registration on
October 11, 2016 in Trademark Class 16, under which greeting cards are classified.
ER 205-06, 592-600.
2. Gordon’s Sale of Goods in 2011
In February 2011, Gordon first sold a HBDC t-shirt. ER 1320. That year,
Gordon also sold t-shirts, tank tops, coffee mugs and bumper stickers that bore his
signature phrase HBDGS. ER 1320-21, 1426-28, 1434-36. Gordon also sold two
versions of a talking honey badger stuffed animal; one said “honey badger don't
care,” and the adult version said “honey badger don't give a shit.” ER 1320-21,
1430-32. Gordon sold his products bearing HBDC and HBDGS in all 50 states,
and internationally. ER 723. In 2011 alone, Gordon’s sales approached $300,000,
even though his business was operated from a barn in Maine by his mother-in-law.
ER 717-18, 1322.
7
3. Gordon Pitches a Greeting Card Deal to American
Greetings
In December 2011, Gordon hired Paul Leonhardt ("Leonhardt"), a licensing
agent who has connections in the greeting card industry, to direct a licensing
program pursuant to which he would procure licensees who would develop and sell
products bearing Gordon's signature HBDC and HBDGS phrases. ER 1263-65,
1323.
On January 4, 2012, Leonhardt emailed Ms. Janice Ross ("Ross"), who is
the Head of Global Licensing for American Greetings' Properties and develops
licensing and merchandising strategies for all consumer product activities. ER
208, 950-53, 1265-66, 1273-86. Leonhardt provided Ross a direct link to Gordon's
Video; advised the Video had over 30 million views at the time; and stated he
would like to talk to her about "doing a greeting card license." ER 1265-66, 1273-
86. After further communications between Leonhardt and Ross, ER 1265-66,
1273-1302, Ross replied by email, stating the American Greetings team was
reviewing the opportunity and she “would love to see if there's an opportunity on
one of our distribution platforms”, but in order to do that she would “need to get
some key colleagues of mine on board the Crazy Honey Badger bandwagon.” ER
1266, 1280.
8
Subsequently, Leonhardt spoke with Ross, and she mentioned one of
American Greetings' distribution platforms being considered was Recycled Paper
Greetings - - a defendant in this action. ER 1266.
On February 10, 2012, Ross told Leonhardt that she liked the honey badger
brand and it would translate well; she would see how it could fit in with the
American Greetings family; and she would reach out to her colleagues at American
Greetings' distribution platforms that did more edgy products. ER 1267, 1283.
American Greetings refused the license opportunity.
However, approximately six months later, Defendant DCI, which works
exclusively with American Greetings, and Defendant Papyrus-Recycled Greetings
(“PRG”), which is a subsidiary of American Greetings and happens to be the same
distribution platform Ross said was being considered, started selling the seven
greeting cards bearing HBDGS. ER 208, 955-56, 2045, 2251.2
2
American Greetings is the parent corporation of PRG, and manufactures all PRG
cards. ER 836, 841, 895. In fact, American Greetings has entered into license
agreements with DCI on PRG’s behalf. ER 833, 1045-47. American Greetings
also paid for an advertisement for one of Defendants’ seven greeting cards at issue
in this case. ER 858-59, 1039-41. Further, Albertsons (a retailer which sold
Defendants' cards) obtained responsive information to a subpoena by contacting
American Greetings personnel, including Patty Motta, who is identified on PRG’s
Privilege Log. ER 205, 207, 529-31, 627-38.
9
4. Gordon’s Licensees
a) Zazzle
Commencing May 12, 2012, Zazzle was allowed to make and sell various
products, including greeting cards and t-shirts, under its license agreement with
Gordon. ER 238-292, 1326, 1466-73. That month - - May 2012 - - Zazzle first
sold a greeting card pursuant to its license agreement. ER 238-292, 1326. Zazzle
has sold in excess of 1,600 greeting cards pursuant to its license agreement with
Gordon for which he has received royalties. Id. Some of the Zazzle greeting cards
sold under its license agreement with Gordon bore his HBDGS phrase. Id. Indeed,
in November 2013, Zazzle was emailing Gordon, identifying four of Zazzle’s best
selling honey badger greeting cards (two of them said, "Honey Badger Don't Care
About Your Birthday"), and a popular mug that said "Honey Badger Don't Care []
Honey Badger Don't Give a Shit". ER 1326, 1475-80. From May 12, 2012 to May
12, 2015, Zazzle sold in excess of $400,000 in licensed products. ER 238-292.
b) Duck
Commencing October 1, 2012, The Duck Company (“Duck”) was allowed
to sell licensed products, including t-shirts, caps and accessories, which included
greeting cards, under its license agreement. ER 674-75, 680, 687, 689, 1327,
1490-1506. Duck sells authorized short-sleeved shirts, long-sleeved shirts, and
hoodies bearing the HBDGS phrase. ER 676. The phrases used on Duck’s
10
licensed goods are usually HBDC or HBDGS. ER 678. Duck sells a licensed
HBDC greeting card, which was made and is sold as a complimentary product to
its licensed shirts. ER 675, 681-82, 687, 1328-29, 1548-50. Duck has sold its
honey badger products to all 50 states and internationally as well, generating in
excess of $300,000 in revenue. ER 294-369, 676-77, 1327-28, 1508-39.
c) JEM
In February 2012, JEM Sportswear was allowed to manufacture and
distribute HBDC and HBDGS shirts. JEM sold officially licensed HBDGS shirts
to Target, and HBDC shirts to Wal-Mart, and the retailers sold them throughout the
country. ER 1224-26, 1229-45, 1330-31. In 2012 alone, JEM's sales of licensed
products exceeded $350,000, while the retailers’ sales were multiples. ER 1226-
27, 1247-61.3
5. Gordon’s Honey Badger Don’t Care Book
In 2011, Gordon secured a book deal and sold his first book, titled Honey
Badger Don't Care: Randall's Guide to Crazy Nastyass Animals, which was based
on his Video and parodied a children's nature book. ER 1143, 1152-62, 1335-36.
Gordon's book was distributed to mass market retails, including Target and Wal-
Mart, which are still selling the book. ER 1143-45, 1336-37. In the first paragraph
3
Another licensee of Gordon, Rasta Imposta, sold a “Honey Badger Don’t Care”
costume which was sold at mass retailers, including Wal-Mart, which is still
selling the costume. ER 1270, 1329.
11
in the first page of the book, the paragraph ends, "Honey badger don't give a shit."
ER 1143-44, 1172-74, 1336-37. In January-February 2012, Gordon had an
extensive promotional and marketing campaign for the book during which he made
radio and bookstore appearances across the country, and there were many articles
nationwide that referenced Gordon's book, marks and Video. ER 1144-45, 1176-
1222, 1337, 1714-26, 1743-48. Over 44,000 units of Gordon's book and related
wall calendar have been sold, generating sales revenue in excess of $300,000. ER
1145-46, 1337.
6. Honey Badger Don’t Give a Shit
“Honey Badger Don’t Care” and “Honey Badger Don’t Give a Shit” are the
two most popular phrases from Gordon’s Video and have been used most often on
his officially licensed products. ER 1270-71, 1318, 1338, 1340-41, 1358, 1743-48,
1942-43. Gordon has sold numerous goods including t-shirts, mugs, stickers,
postcards, and greeting cards bearing HBDGS. ER 238-92, 1326, 1335, 1684-
1708. Gordon has expended a significant amount of time and effort in making his
marks well-known to the public by, inter alia, appearing in prime time television
shows and commercials, and giving interviews for national publications including
Forbes and Wall Street Journal. ER 1338-44, 1740-56. Gordon’s HBDGS
catchphrase has been linked with his Video and alias Randall in these television
12
shows and articles, which were published nationally in 2011 and early 2012. ER
1339-51, 1758-1892.
7. Defendants’ Seven Greeting Cards
Beginning in June 2012, Defendants sold seven different greeting cards that
bore Gordon’s HBDGS catchphrase. ER 965-66, 971-72, 980-81, 986-87, 989-90,
996-97, 999-1000.4
DCI created the cards, and PRG manufactured and distributed them to major
retailers throughout the country, including Target and Wal-Mart, generating
millions of dollars in sales. ER 78-79, 95-99, 212, 857, 1043, 2045, 2251-52.
According to Aaron Siegel (“Siegel”), PRG’s Senior Director and its
designated Person Most Qualified, PRG only manufactures cards that have been
submitted from independent designers, such as DCI, in response to a PRG “art
target.” ER 2045. PRG transmitted a “Halloween art target” to DCI which had a
reference to the “Badass honey badger” and, under Samples & Inspiration, a copy
of an image bearing Gordon’s trademark, “Honey Badger Don’t Care.” ER 819,
1005-20, 2046. At his deposition, Siegel refused to answer on attorney-client
4
Curiously, in their motion for summary judgment, Defendants only identified six
greeting cards they sold, omitting the one card (ER 999-1000) which bore the
“Honey Badger don’t give a shit” phrase in full without any modification.
Contrast ER 2044-59 (Declaration of Aaron Siegel filed in support of Motion for
Summary Judgment, identifying six cards Defendants sold) to ER 2351-2373
(Declaration of Aaron Siegel filed in support of Motion to Dismiss First Amended
Complaint, identifying seven cards Defendants sold).
13
privilege grounds whether PRG performed a trademark search for “Honey Badger
Don’t Care” or obtained a legal opinion about using HBDC; but he confirmed at
least one of Defendants’ cards raised sufficient concern that it was brought to
PRG’s in-house legal to review for “proper usage rights.” ER 848-56.
All by himself, Mr. Drape, DCI’s President, created the text in the seven
greeting cards. ER 803, 805-08, 813-14, 828, 2251-52. At his deposition, Drape
testified he had no idea what the purpose of an art target was, and he did not recall
seeing part of the art target that contained Gordon’s trademarked phrase, “Honey
Badger Don’t Care.” ER 820-23, 1020. When asked whether the honey badger
image on the art target that bore Gordon’s mark was an inspiration for him to
create the greeting cards, Drape responded, “I don’t know.” ER 824, 1020. Drape
contends he does not know if he has ever been inspired by something he found on
the internet to create a greeting card, and he has never watched Gordon’s Video.
ER 810, 815, 2252. Yet, Drape somehow created seven cards bearing Gordon’s
popular HBDGS phrase: the Critter Card; Election Cards; Birthday Cards; and
Halloween Cards.5
5
Siegel and Drape both characterize the seven cards as “Halloween cards,”
“birthday cards,” and “election cards” that are “Halloween-themed,” “birthday-
themed,” and “election-themed.” ER 2045-46, 2251-52. Siegel and Drape also
claim the cards convey “a sentiment about the greeting card recipient’s occasion”
of a birthday, Halloween, and an election. ER 2046, 2252.
14
a) Critter Card
The text of the Critter Card states, among other things, on the front page:
"Honey Badger @ don't give a sh*t Today
Just Killed a cobra.
Don't give a sh*t" [ER 965-66.]
The transcript of the copyrighted narration of Gordon's Video states in part:
"[The honey badger] really doesn't give a shit. If it's hungry, it's hungr-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 a tree. Honey Badger don't care. Honey badger don't give a shit."
ER 1318, 1362. In Gordon's Video, he makes repeated references to the honey
badger eating and not fearing a cobra. ER 1354, 1362. Gordon also sold a Honey
Badger Don't Care "Cobra t-shirt" through Duck. ER 1354, 1916-18. And
numerous articles have made references to cobras when talking about Gordon or
his Video. ER 1342, 1346, 1348-49, 1351, 1354.
The Critter Card also states, among other things, on the front page:
"Honey Badger @ don't give a sh*t Today
Rolling in fire ants.
Don't give a sh*t." [ER 965-66.]
The transcript of the narration of Gordon's Video states in part: "Now look,
here's a house full of bees. You think honey badger cares? It doesn't give a shit. It
15
goes right in to the house full of bees. You think the honey badger cares? It doesn't
give a shit." ER 1318, 1362.
Despite such similarities, Drape contends that his idea for the Critter Card
was not based on Gordon’s Video. ER 805-08, 810, 965, 2252. At his deposition,
however, Drape did not remember how he came with the idea for the Critter Card
or his creative process at all. ER 805, 807. Drape did not recall anything that
inspired him to write the text that appears on the Critter Card. Id.
Drape contends that he discussed the text of the Critter Card with his senior
staff persons, Tim McCabe (“McCabe”), DCI artist, and Scott Oppenheimer
(“Oppenheimer”), DCI editor and writer, at a staff meeting held each morning. ER
809. Drape testified at his deposition, “I have a meeting each morning with two of
my senior staff people [McCabe and Oppenheimer], and that’s when I present
ideas and we discuss them.” Id.; see also ER 828 (“I was the one who came up
with the ideas and did the cards. They [McCabe and Oppenheimer] were in the
meeting.”).
However, McCabe and Oppenheimer testified they do not recall ever having
daily meetings at DCI. ER 917, 936. While McCabe states he created the artwork
and lettering for the design of the Critter Card, he does not recall ever discussing
anything related to the Critter Card with Drape. ER 917, 923-24. Similarly,
16
Oppenheimer does not recall either seeing the design for the Critter Card, or ever
discussing any of the card’s text with Drape. ER 947-48.
b) Election Cards
DCI designed an Election Card, which states on the front, “The Election’s
Coming,” and on the inside, “Me and Honey Badger don’t give a $#%@!” ER
971-72. Drape testified he does not remember what inspired him to come up with
the idea to use the HBDGS phrase. ER 811-15. And neither McCabe nor
Oppenheimer had any clue why DCI used that phrase, and they did not recall any
discussion with Drape about why the phrase was used. ER 923, 942, 946-47.
DCI designed yet another version of the Election Card, which states on the
front, “The Election’s Coming,” and on the inside, “Honey Badger and me just
don’t care.” ER 974-75. This card, which nearly copies Gordon’s HBDC mark
verbatim, was not one of the seven greeting cards Defendants sold. McCabe
testified that Drape provided information to create this card, but McCabe did not
recall any discussion with Drape about the card including why the phrase “Honey
Badger and me just don’t care” was used. ER 922-23.
c) Birthday Cards
DCI designed two slightly different Birthday Cards, each of which states on
the front, “It’s Your Birthday,” and on the inside, “Honey Badger Don’t Give a
Sh*t.” ER 980-81, 986-87. Drape came up with the idea to use HBDGS in the
17
cards, but does not remember why he decided to use the phrase. ER 811-15.
McCabe created the artwork and lettering for the design of the cards, but did not
recall ever discussing them with Drape or anyone else. ER 920-21. Oppenheimer
testified he did not know anything about the cards and had not seen them before his
deposition. ER 942-44.
DCI created another Birthday Card which states on the front, “Honey
Badger Heard It’s Your Birthday,” and the inside states, “Honey Badger Don’t
Give a Sh*t.” ER 989-90. Again, Drape testified he wrote the text for this card,
but he did not discuss it with anyone and did not know what inspired him to create
the card. ER 817-18. McCabe testified he created the artwork and lettering for the
card, but did not recall having a discussion with anyone about the card, including
why HBDGS was used. ER 922, 992-94. Oppenheimer never discussed the card
with anyone, and had not seen it before his deposition. ER 942-45.
d) Halloween Cards
DCI created two Halloween Cards, one stating “Halloween is Here” on the
front and “Honey Badger don’t give a $#*%!” on the inside, and the other stating
“Halloween is Here” on the front and “Honey Badger don’t give a shit” on the
inside. ER 996-1000. Drape decided to use HBDGS, but did not recall what
inspired him to come up with the idea for the cards. ER 812-15. McCabe created
the artwork and lettering for the cards, but did not know how Drape came up with
18
the text and did not recall if Drape ever told him why HBDGS was used. ER 919-
20. And Oppenheimer testified he never discussed the cards with anyone and had
not seen them before his deposition. ER 942-45.
e) Mr. Drape’s Testimony
At his deposition, Drape could not recall anything about his “creative”
process that resulted in HBDGS appearing on the seven cards. ER 807, 818.
Regarding the Critter Card, when Drape was asked how he came up with the idea
for the card, he responded, “I don’t remember.” ER 805. Regarding the other
cards, Drape remarkably answered the same:
Q. Okay. Referring you now just to Exhibit 6 -- okay? -- the greeting

card that’s marked as Exhibit 6, what inspired you to come up with
the idea for the design of that greeting card?
A. I don’t remember.
Q. Okay. Same question for Exhibit 7. What inspired you to come up
with the idea for that greeting card?
Q. Okay. Same question for Exhibit 9. What inspired you to come up
with the idea for that greeting card?
Q. Same question for Exhibit 10. What inspired you to come up with the
idea for that greeting card?
Q. Exhibit 11. What inspired you to come up with the idea for the design
for that greeting card?
A. As I’ve explained earlier, I do thousands of cards. I - - I don’t
remember. [ER 815.]
Although Drape is unsure of everything related to how he decided to use
HBDGS in the seven cards, he is very sure that he has “never seen Christopher
19
Gordon’s YouTube video” and “did not refer to anything Christopher Gordon
created” when using HBDGS in the seven greeting cards. ER 810, 2252.
Likewise, McCabe testified at his deposition, “I don’t know,” “I don’t
remember,” or “I don’t recall” whenever he was asked why HBDGS was used in
any of the seven cards. ER 919-24. And Oppenheimer also could not recall
anything surrounding DCI’s idea to use HBDGS in the seven cards. ER 937-42.6
8. Consumer Confusion
Defendants’ greeting cards bearing HBDGS created consumer confusion. A
consumer who bought two of Defendants' cards in 2014 at a Target store believed
Gordon actually produced the cards. ER 437-42. Further, twenty-eight (28)
individuals declared under penalty of perjury that they: are greeting card
consumers; reviewed Defendants' cards; have viewed Gordon's Video and are
aware he created it; first learned of the phrases "Honey Badger Don't Care" and
"Honey Badger Don't Give a Shit" from the Video; and believe Gordon (Randall)
either produced Defendants' cards, was affiliated with the cards, sponsored or
6
Defendants not only failed to explain how they came up with the idea behind the
seven greeting cards, but also continued selling the greeting cards after receiving
Gordon’s cease-and-desist letter and after Gordon filed his Complaint in this case.
ER 78-79, 95-99, 211-12, 627-38, 877-81, 1021-37, 1042-43, 1128-37, 2047.
Also, upon receiving Gordon’s cease-and-desist letter, Drape falsely claimed in an
email dated July 23, 2014 that DCI had “not done a card using the words ‘Honey
Badger Don’t Give a Shit.’” ER 1137. And while Drape has disavowed any
knowledge of either Gordon or his Video, Drape curiously referred to a “major
published interview” of Gordon in Drape’s email dated July 25, 2014 after
receiving the cease-and-desist letter. ER 1136.
20
approved them. ER 444-527. Also, Gordon received unsolicited messages from
multiple fans via social media who believed he was affiliated with Defendants’
cards. ER 1353-54, 1907-14.
B. Procedural History
On June 30, 2015, Gordon filed a Complaint for federal trademark
infringement, among other claims. He subsequently filed his operative First
Amended Complaint, ER 2374, and Defendants filed an answer and counterclaims
for declaratory relief and cancellation of Gordon’s trademark. ER 2335, 2328.
Gordon filed an answer to the counterclaims. ER 2321.
In particular poor taste, Defendants strategically filed their motion for
summary judgment (ER 2272) the very same day Gordon’s counsel was in Kansas
City, Missouri taking McCabe’s deposition. ER 200-01, 232-36. One week later,
Gordon filed his opposition. ER 1944. The district court vacated the summary
judgment hearing date, and took the matter under submission. ER 38.
On October 19, 2016, the district court issued an order granting Defendants’
summary judgment motion on First Amendment grounds. ER 1. Because the
court found that Defendants’ use of HBDGS was protected by the First
Amendment, the court did not reach the issue of consumer confusion. ER 7.
Thereafter, Defendants dismissed their remaining counterclaim for trademark
21
cancellation, and the court ordered the case closed. ER 31-32. On November 16,
2016, Gordon filed his notice of appeal. ER 12.
SUMMARY OF ARGUMENT
The district court committed numerous legal errors in granting Defendants’
summary judgment motion solely on First Amendment grounds.
First, the district court erroneously concluded that Defendants’ seven
greeting cards were expressive works entitled to maximum First Amendment
protection. Defendants’ seven greeting cards at issue in this case, the majority of
which simply state “Happy Birthday” or “Halloween is Here” on the cover with
Gordon’s HBDGS phrase by itself on the inside, do not contain expressive speech
on par with books, plays, movies or video games.
Second, the district court failed to satisfy the threshold requirement that
Gordon’s trademark must have attained a meaning beyond its source-identifying
function. While district courts are split on whether to apply a more restrictive
requirement that a trademark must have attained cultural significance in the
public’s vernacular for the Rogers test to apply, the minimal requirement is that
Gordon’s mark must have attained a meaning beyond its source-identifying
function. Defendants never satisfied this requirement.
Third, the district court applied the Rogers test even though Defendants did
not refer to Gordon when using his mark. In every Ninth Circuit case that has ever
22
applied the Rogers test, the junior use of the mark was a reference to the senior
user. This referential requirement is the foundation of the Rogers test, which is to
protect the right to create expressive parody, satire, or commentary referencing
another’s mark.
Fourth, even if the Rogers test applies, the district court erred in finding
Defendants’ use of HBDGS was artistically relevant to the seven greeting cards.
There was no artistic relevance because Gordon’s HBDGS phrase is irrelevant to
wishing someone a happy birthday or Halloween, and the cards made no reference
to Gordon. Defendants used Gordon’s mark to exploit its marketing power, not for
any artistic reason.
Finally, even if the Rogers test applies and the Court moves past the first
prong, the district court misapplied the second prong in holding, as a matter of law,
that Defendants’ use of Gordon’s trademark was not explicitly misleading. There
were genuine issues of material fact whether Defendants’ use was explicitly
misleading, including how the parties were in direct competition. The district
court overlooked extensive evidence demonstrating the nature of Defendants’
behavior was aimed at misleading consumers.
STANDARD OF REVIEW
This Court reviews an order granting summary judgment de novo, and
considers the evidence in the light most favorable to the nonmoving party. JL
23
Beverage Co., LLC v. Jim Beam Brands Co., 828 F.3d 1098, 1104 (9th Cir. 2016).
An order granting summary judgment will be reversed if any rational trier of fact
could resolve a material factual issue in the nonmoving party’s favor. A.G.
Paradise Valley Unified Sch. Dist. No. 69, 815 F.3d 1195, 1202 (9th Cir. 2016).
All “disputes about material facts and credibility determinations must be resolved
at trial, not on summary judgment.” McGinest v. GTE Serv. Corp., 360 F.3d 1103,
1115 (9th Cir. 2004).
ARGUMENT
I. THE DISTRICT COURT ERRED BY APPLYING THE ROGERS
TEST TO DEFENDANTS’ SEVEN GREETING CARDS BECAUSE
THEY ARE NOT EXPRESSIVE WORKS
A. The Rogers Test Only Applies To Expressive Works
In a classic trademark infringement action, courts apply a “likelihood of
confusion” test which asks “whether use of the plaintiff’s trademark by the
defendant is likely to cause confusion or to cause a mistake, or to deceive as to the
affiliation, connection, or association of the two products.” Mattel, Inc. v. Walking
Mountain Prods., 353 F.3d 792, 806-07 (9th Cir. 2003) (quotation and citation
omitted). In Rogers, however, the Second Circuit formulated a different test under
First Amendment principles for the use of trademarks in titles of artistic works.
24
In Rogers, the Second Circuit decided whether the plaintiff could prevent
the use of the title Ginger and Fred for a movie that told the story of two fictional
Italian cabaret performers, who imitated the famous dancing duo Ginger Rogers
and Fred Astaire. Rogers, 875 F.2d at 996. The court observed that while
“[m]ovies, plays, books, and songs are all indisputably works of artistic expression
and deserve protection” they are also sold in the commercial marketplace, making
the danger of consumer confusion a “legitimate concern that warrants some
government regulation.” Id. at 997. “The purchaser of a book, like the purchaser
of a can of peas, has a right not to be misled as to the source of the product.” Id.
The court reasoned that the Lanham Act “should be construed to apply to artistic
works only where the public interest in avoiding consumer confusion outweighs
the public interest in free expression.” Id. at 999. The court held that, in the
context of an allegedly misleading movie title using a celebrity’s name, the
Lanham Act would not apply unless the title has “[1] 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.
This Court adopted the Rogers test (MCA Records, 296 F.3d at 902), but
only applies it in limited circumstances where a party used another’s trademark in
an “expressive work.” Brown v. Electronic Arts, Inc., 724 F.3d 1235, 1241 (9th
Cir. 2013) (“The Rogers test is reserved for expressive works.”). Thus, this Court
25
will not apply the Rogers test whenever First Amendment rights are implicated, but
rather, only “when First Amendment rights are at their height—when expressive
works are involved….” Id. at 1245 (emphasis added).
B. Defendants’ Seven Greeting Cards Are Not Expressive
Works
The district court below erroneously concluded that Defendants’ seven
greeting cards were expressive works entitled to First Amendment protection at its
height, holding in sweeping fashion that all greeting cards are expressive works
that trigger the Rogers test. ER 6-7.
Neither the Ninth Circuit nor any court has ever applied the Rogers test to
greeting cards. This Court has applied the Rogers test just four times, involving
the use of a trademark in a song, photograph, and video game. See MCA Records,
296 F.3d at 901 (involving use of Barbie mark in song title); Walking Mountain,
353 F.3d at 796 (involving use of Barbie mark in photograph title); E.S.S. Entm't
2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1097 (9th Cir. 2008)
(involving use of strip club in animated video game); Brown, 724 F.3d at1240-41
(involving use of retired pro football player’s likeness in video game). And Rogers
dealt with the use of a trademark in a movie title. Rogers, 875 F.2d at 996.
While the First Amendment includes pure speech, not everything that
expresses an idea counts as speech under the First Amendment. The United States
26
Supreme Court has rejected “the view that an apparently limitless variety of
conduct can be labeled ‘speech’ whenever the person engaging in the conduct
intends thereby to express an idea.” United States v. O'Brien, 391 U.S. 367, 376
(1968). Conduct intending to express an idea is protected only if it is “sufficiently
imbued with elements of communication to fall within the scope of the First and
Fourteenth Amendments” which means that “[a]n intent to convey a particularized
message is present, and the likelihood is great that the message will be understood
by those who view it.” Spence v. State of Wash., 418 U.S. 405, 409-11 (1974).
In Brown v. Entm't Merchants Ass'n, 564 U.S. 786 (2011), the Supreme
Court held a video game was protected by the First Amendment, reasoning “[l]ike
the protected books, plays, and movies that preceded them, video games
communicate ideas—and even social messages—through many familiar literary
devices (such as characters, dialogue, plot, and music) and through features
distinctive to the medium (such as the player's interaction with the virtual world).”
Id. at 790.
Likewise, in Brown v. Electronic Arts, this Court found that another video
game, Madden NFL, was an expressive work. Importantly, the Court observed that
“there may be some work referred to as a ‘video game’ (or referred to as a ‘book,’
‘play,’ or ‘movie’ for that matter) that does not contain enough of the elements
contemplated by the Supreme Court to warrant First Amendment protection as an
27
expressive work….” Brown, 724 F.3d at 1241. This Court held, however, that
Madden NFL warranted First Amendment protection because “[e]very version of
the game features characters (players), dialogue (between announcers), plot (both
within a particular simulated game and more broadly), and music.” Id.
Fundamentally, the district court erred in its blanket ruling that “a greeting
card is an expressive work entitled to full First Amendment protection….” ER 7.
Even assuming arguendo some greeting cards are expressive works, “there may be
some work referred to as a [greeting card] that does not contain enough of the
elements contemplated by the Supreme Court to warrant First Amendment
protection as an expressive work….” Brown, 724 F.3d at 1241.
Defendants’ seven greeting cards at issue in this case do not contain enough
of the elements contemplated by the Supreme Court to warrant First Amendment
protection as expressive works. Defendants’ cards do not communicate ideas or
social messages through familiar literary devices such as characters, dialogue, plot,
and music. Those elements are completely lacking in Defendants’ cards. Instead,
Defendants’ cards simply state “It’s Your Birthday” or “Halloween is Here” and
then slap Gordon’s catchphrase on the inside of the card by itself. The cards are
completely devoid of any characters, dialogue, or plot.
Further, there was absolutely no evidence that Defendants intended to
convey any political or social message - - or intended to convey anything at all - -
28
in creating the seven cards. Drape wrote the text for the seven cards, but at his
deposition he could not remember anything about his creation of the cards.
Given the rudimentary nature of the cards, coupled with Drape’s deposition
testimony that he has no clue why he used Gordon’s mark, the only logical
conclusion is that Defendants’ seven cards are not “sufficiently imbued with
elements of communication” and therefore are not expressive works protected by
the First Amendment at its height. See Spence, 418 U.S. at 409-11.
This Court in Hilton v. Hallmark Cards, 599 F.3d 894 (9th Cir. 2010) did
not espouse a blanket rule that all greeting cards are expressive works. There, in
an episode of the reality television program “The Simple Life,” Paris Hilton was
employed as a waitress at a fast food restaurant, and used her catchphrase, “that’s
hot.” Hallmark created a birthday card, the front of which read, “Paris’s First Day
as a Waitress”, with a picture depicting a cartoon waitress serving a plate of food
to a restaurant patron, just as Ms. Hilton did on “The Simple Life,” and an
oversized photograph of her head was super-imposed on the cartoon waitress’s
body. Id. at 899. On the card, Ms. Hilton says to the patron, “‘Don’t touch that,
it’s hot.’ The customer asks, ‘what’s hot?’ Hilton replies, ‘That’s hot.’ The inside
of the card reads, ‘Have a smokin’ hot birthday.’” Id. This Court mentioned, in
one paragraph, that Hallmark’s card constituted “speech” under the First
29
Amendment because the card evinced an intent to convey a particularized message.
Id. at 904.
Hilton is inapposite. While the Court held a specific greeting card
constituted speech under the First Amendment, the Court did not hold the card was
an expressive work to justify application of the Rogers test. The difference is
significant. The Rogers test does not apply to all types of speech protected by the
First Amendment, but rather, is reserved for expressive works “when First
Amendment rights are at their height….” Brown, 724 F.3d at 1245. The Rogers
test was not at issue in Hilton.
Moreover, Defendants’ seven greeting cards are not providing social
commentary about a public figure as in Hilton. The card in Hilton conveyed a
particularized message about Ms. Hilton, a public figure, and was a parody of her
television show and persona. Here by contrast, Defendants argue their cards did
not refer to Gordon in any way; indeed Drape purportedly has never seen Gordon’s
Video. Defendants’ cards are entirely unlike the parody one in Hilton.
Additionally, in Hilton, this Court noted that greeting cards may in fact be
one step removed from actual expressive conduct. Hilton, 599 F.3d at 904 n.6.
That is, Defendants themselves “do[] not intend to convey a message; rather, [they]
sell a stylized, ready-made message to someone else, who conveys it to the
recipient of the card.” Id. Thus, “when you open a birthday card, [Defendants
30
have] not wished you a happy birthday” but instead have “simply provided the
medium for [their] customer to do so.” Id. Indeed, Defendants admit their cards
convey a sentiment about “the greeting card recipient’s occasion” of a birthday,
Halloween, and an election, and are “designed to meet consumers’ needs to
connect, express and celebrate”, not Defendants’ own need to convey any message.
ER 208, 955-56, 2046, 2252. Even the district court below, when discussing the
artistic relevance prong, stated Defendants’ use of HBDGS “allows those
[consumers] purchasing the greeting cards to convey to the recipient” a message.
ER 9. Accordingly, Defendants cannot assert a First Amendment defense because
their communicative rights are not at issue.
Under the district court’s ruling, all greeting card companies now have free
rein to use a competitor’s trademark under the guise of the First Amendment. If
this Court affirms, the Lanham Act is essentially rendered meaningless for the
entire greeting card industry.
While some greeting cards may be copyrighted (Roth Greeting Cards v.
United Card Co., 429 F.2d 1106, 1110 (9th Cir. 1970)), Defendants’ seven
greeting cards here “contain so little in the way of particularized form of
expression that [the seven cards] cannot be fairly characterized as a form of speech
protected by the First Amendment.” Am.'s Best Family Showplace Corp. v. City of
N.Y., Dep't of Bldgs., 536 F.Supp.170, 174 (E.D.N.Y. 1982). Even if Defendants’
31
cards constituted speech, they are not expressive works justifying application of
the Rogers test. See Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221
F.Supp.2d 410, 415 (S.D.N.Y. 2002) (holding Rogers test inapplicable where
trademark was “being used at least in part to promote a somewhat non-expressive,
commercial product”); VIP Prod., LLC v. Jack Daniel’s Properties, Inc., 2016 WL
5408313, at *5 (D. Ariz. 2016) (same).
Because Defendants’ seven greeting cards are not expressive works, the
Rogers test does not apply. The district court’s application of the Rogers test for
all seven greeting cards, and its failure to apply the appropriate likelihood of
confusion test (AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.1979)), is
reversible error.
II. THE DISTRICT COURT ERRED BY APPLYING THE ROGERS
TEST BECAUSE THERE WAS NO EVIDENCE THAT
GORDON’S TRADEMARK HAS A MEANING BEYOND ITS
SOURCE-IDENTIFYING FUNCTION
A threshold requirement of the Rogers test is that the public must imbue the
subject trademark with a “meaning beyond its source-identifying function.” MCA
Records, 296 F.3d at 900. Many courts in this Circuit, but not all, have gone one
step further, interpreting this threshold question to require the mark to have
reached “such cultural significance” that it has “become an integral part of our
32
vocabulary.” Walking Mountain Prods., 353 F.3d at 807; Rebelution,, LLC v.
Perez, 732 F.Supp.2d 883, 887 (N.D. Cal. 2010); Dita, Inc. v. Mendez, 2010 WL
5140855, *3 (C.D. Cal. 2010) (“Although the Ninth Circuit has adopted the Rogers
test, its application has been limited to circumstances where the plaintiff's mark is
of such cultural significance that it has become an integral part of the public's
vocabulary.”) (citation omitted).
Here, the district court rejected the “cultural significance” requirement,
relying on “cases that have disapproved of the need for a cultural significance
inquiry in applying the Rogers test.” ER 6. However, regardless of the conflict
among district court decisions about the cultural significance inquiry, the threshold
requirement in all Rogers cases is that a trademark must have achieved a meaning
beyond its source-identifying function.
In MCA Records, a case involving alleged infringement of the iconic Barbie
mark, this Court observed that limited to its core purpose of avoiding confusion in
the marketplace, “a trademark owner’s property rights play well with the First
Amendment.” MCA Records, 296 F.3d at 900. However, “[t]he problem arises
when trademarks transcend their identifying purpose.” Id. (emphasis added).
“Once imbued with such expressive value, the trademark becomes a word in our
language and assumes a role outside the bounds of trademark law.” Id. In other
words, “when a trademark owner asserts a right to control how we express
33
ourselves—when we'd find it difficult to describe the product any other way (as in
the case of aspirin), or when the mark (like Rolls Royce) has taken on an
expressive meaning apart from its source-identifying function—applying the
traditional test fails to account for the full weight of the public's interest in free
expression.” Id. As such, this Court ruled that a “trademark owner does not have
the right to control public discourse whenever the public imbues his mark with a
meaning beyond its source-identifying function.” Id. (emphasis added); see also
Walking Mountain, 353 F.3d at 807 (observing First Amendment protections come
into play when public imbues mark with meaning beyond its source-identifying
function, holding Barbie mark has taken on such role); Brown, 724 F.3d at 1239-40
(defendant used likeness of Jim Brown, a cultural icon who is “widely regarded as
one of the best professional Football players of all time”).
Numerous district courts have followed this Court’s precedent and held the
Rogers test only applies if the public imbues a trademark with a meaning beyond
its source-identifying function.
In Rebelution, the court held the Rogers test was inapplicable since there
was no evidence that the rebelution mark had “entered the public discourse or
become an integral part of our vocabulary” or that the mark had “been imbued by
the public with an alternate meaning.” Rebelution, 732 F.Supp.2d at 888. The
court ruled “no First Amendment rights are implicated” since the rebelution mark
34
had not “taken on an expressive meaning apart from its source-identifying
function….” Id. (quoting MCA Records).
In Warner Bros. Entertainment v. Global Asylum, Inc., 2012 WL 6951315
(C.D. Cal. 2012), aff’d 544 Fed.Appx.683 (9th Cir. 2013), the court similarly
observed “[t]he Ninth Circuit has adopted the Rogers test and applies it to
circumstances in which the mark at issue is imbued with a meaning beyond its
source-identifying function.” Id. at *15. Accordingly, “pursuant to the Ninth
Circuit’s formulation of the Rogers test, the Court considers (1) whether the mark
has acquired meaning beyond its source-identifying function; (2) whether the use
of the mark in the title has at least minimal artistic relevance to the underlying
work; and (3) whether the title explicitly misleads consumers as to source or
function.” Id.
Here, the district court below concluded there is no “cultural significance
inquiry in applying the Rogers test,” citing E.S.S., Mil-Spec Monkey, Inc. v.
Activision Blizzard, Inc., 74 F.Supp.3d 1134 (N.D. Cal. 2014), and Stewart
Surfboards, Inc v. Disney Book Grp., LLC, 2011 WL 12877019 (C.D. Cal. 2011).
ER 6. However, even if the district court elected not to follow the “cultural
significance” line of cases, each of the cases the district court cited do not quarrel
with the threshold requirement that the subject trademark must attain a meaning
beyond its source-identifying function.
35
E.S.S. did not address the threshold requirement that a mark must attain a
meaning beyond its source-identifying function because the plaintiff conceded the
Rogers test applied. E.S.S., 547 F.3d at 1099-1100; see also Rebelution, 732
F.Supp.2d at 888 (finding E.S.S. “inapposite because the parties there did not
dispute whether the Rogers test was applicable”). While E.S.S. noted the
plaintiff’s mark had little cultural significance, such is irrelevant to and does not
contradict the accepted requirement that the Rogers test only applies where the
mark has acquired a meaning beyond its source-identifying function.
In Mil-Spec Monkey, while the court rejected the “cultural significance”
inquiry, the court nevertheless confirmed the MCA Records rule that the public
must imbue the subject mark with a meaning beyond its source-identifying
function. Mil-Spec Monkey, 74 F.Supp.3d at 1141 (MCA Records “stands for the
proposition that a trademark owner may not control public discourse whenever the
public imbues his mark with a meaning beyond its source-identifying function - a
far more inclusive standard than the cultural icon one MSM advocates”).
In Stewart Surfboards, while the court rejected the cultural significance
inquiry, the court never addressed the issue whether the mark must have acquired a
meaning beyond its source-identifying function. Stewart Surfboards, 2011 WL
12877019, at *3.
36
Thus, the cases cited by the district court - - E.S.S., Mil-Spec Monkey, and
Stewart Surfboards - - did not reject the threshold requirement that the Rogers test
only applies where a mark has attained a meaning beyond its source-identifying
function. Indeed, if such a requirement did not exist, the courts in MCA Records
and Walking Mountain would not have stressed, at length, whether the Barbie mark
had attained a meaning beyond its source-identifying function.
Here, there is no record evidence, and Defendants never argued, that
Gordon’s mark either has acquired a cultural significance in the public’s everyday
vernacular or has a meaning beyond its source-identifying function. Consequently,
the district court’s summary judgment should be reversed.
III. THE ROGERS TEST DOES NOT APPLY BECAUSE
DEFENDANTS DID NOT REFER TO GORDON WHEN USING
HIS TRADEMARK
In the four Ninth Circuit cases that have applied the Rogers test, the
defendant’s use of a mark was in reference to the senior user. This is no
coincidence. While the First Amendment protects the right to create expressive
satire, parody, or other social commentary referencing another’s mark, the First
Amendment does not protect an expressive work that “makes no comment” on
another’s mark. MCA Records, 296 F.3d at 901.
37
Here, Defendants disavowed any intent to refer to Gordon when they used
his mark. Drape, who created the seven cards, declares he has “never seen
Christopher Gordon’s YouTube video” and “did not refer to anything Christopher
Gordon created” when designing the cards. ER 2252.
While Gordon argued in his opposition that the Rogers test did not apply and
could not be satisfied because Defendants did not use HBDGS to comment upon
Gordon in any way, ER 1963-1964, the district court’s order granting summary
judgment failed to address Gordon’s arguments. ER 5-9. The district court erred.
The Rogers test only applies and can only be satisfied where the junior user targets
or refers to the senior user.
In MCA Records, this Court noted that “Barbie Girl is the title of a song
about Barbie and Ken, a reference that — at least today — can only be to Mattel’s
famous couple.” MCA Records, 296 F.3d at 901. It was critical that the song
poked fun at Barbie and the values she represents. The Court stressed, the “song
does not rely on the Barbie mark to poke fun at another subject but targets Barbie
herself.” Id. The Court held that the use of Barbie in the song title was clearly
relevant to the underlying work because “the song is about Barbie and the
values…she represents.” Id. at 902.7
7
On this referential ground, i.e., the Barbie song referred to and targeted Barbie
and the values she represents, the Court distinguished Dr. Seuss Ents., L.P. v.
Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997). In Dr. Seuss, this Court
38
Similarly, in Walking Mountain, this Court held that defendant Forsythe’s
use of the Barbie mark in a photographic parody triggered the Rogers test.
Walking Mountain, 353 F.3d at 807. There, Forsythe declared that his photographs
using the Barbie mark were an attempt to “critique the objectification of women
associated with Barbie, and to lambast the conventional beauty myth and the
societal acceptance of women as objects because this is what Barbie embodies.”
Id. at 796. Forsythe chose to parody Barbie because he believed that “Barbie is the
most enduring of those products that feed on the insecurities of our beauty and
perfection-obsessed consumer culture.” Id. This Court applied the Rogers test and
found it was satisfied because Forsythe’s use of Barbie in his photographs “depict
Barbie and target the doll with Forsythe’s parodic message.” Id. at 807.
In E.S.S., the video game’s alleged infringing use was in reference to the
plaintiff’s mark, a strip club called the “Play Pen.” E.S.S., 547 F.3d at 1096-98.
The video game allowed a player to experience a version of West Coast “gangster”
culture, and took place in virtual cities including “Los Santos,” based on Los
Angeles. Id. at 1097. Los Santos mimicked the look and feel of actual Los
Angeles neighborhoods, and the game’s artists were creating a fictional city that
held the book The Cat NOT in the Hat! borrowed Dr. Seuss’s trademarks to get
attention rather than to mock The Cat in the Hat! MCA Records, 296 F.3d at 901.
MCA Records observed that “Dr. Seuss recognized that, where an artistic work
targets the original and does not merely borrow another’s property to get attention,
First Amendment interests weigh more heavily in the balance.” Id.
39
“lampooned the seedy underbelly of Los Angeles and the people, business and
places that comprise it.” Id. One neighborhood in the fictional city was “East Los
Santos,” the game’s version of East Los Angeles, which contained variations on
the businesses and architecture of Los Angeles, including a virtual, cartoon-style
strip club known as the “Pig Pen.” Id. The plaintiff filed suit, claiming its Play
Pen mark was infringed by defendant’s depiction of the Pig Pen. Id. While this
Court remarked that the underlying work need not be “about” the trademark - - the
video game there was not “about” the Play Pen club the same way that “Barbie
Girl” was “about” the Barbie doll - - nonetheless, and most critical, the video game
was in reference to the Play Pen. Id. at 1100. The Court observed that possibly
the only way to develop a cartoon-style parody of East Los Angeles was “to
recreate a critical mass of the businesses and buildings that constitute it.” Id.
In Brown, defendant EA’s video game simulating professional football
(Madden NFL) featured and referred to NFL players, including Jim Brown. The
football players were recognizable due to the accuracy of their team affiliations,
playing positions, ages, heights, weights, ability levels, and other attributes.
Brown, 724 F.3d at 1240. The Court concluded that “the content of the Madden
NFL games—the simulation of NFL football—is clearly related to Jim Brown, one
of the NFL’s all-time greatest players.” Id. at 1243-44. The Court stressed the
defendant did not produce a game “with no relation to Jim Brown or football
40
beyond the title; it produced a football game featuring likenesses of thousands of
current and former NFL players, including Brown.” Id. at 1244. In fact, the Court
found the reference to the senior user (Jim Brown) was the main distinguishing
factor between the Sixth Circuit’s decision in Parks v. LaFace Records, 329 F.3d
437 (6th Cir. 2003).
In Parks, civil rights heroine Rosa Parks sued the musical duo Outkast after
it released a song called Rosa Parks. The district court granted summary judgment
to Outkast, finding the First Amendment was a defense to Parks’ Lanham Act
claim, but the Sixth Circuit reversed. The Sixth Circuit concluded there was a
factual dispute about artistic relevance under the Rogers test because the song was
not in reference to Rosa Parks. Like Defendants here, Outkast claimed it never
intended for its song to be about Rosa Parks. Id. at 452. The court found it was
significant that Outkast “did not intend [the song] to be about Rosa Parks, and the
lyrics are not about Rosa Parks.” Id. (emphasis in original). As such, the court
held “reasonable persons could conclude that there is no relationship of any kind
between Rosa Parks' name and the content of the song….” Id. at 453.
This Court in Brown distinguished Parks precisely because Outkast “did not
intend [the song] to be about Rosa Parks, and the lyrics are not about Rosa Parks”
while EA’s Madden NFL was “clearly related” to Jim Brown. Brown, 724 F.3d at
1243.
41
Thus, the four Ninth Circuit cases applying the Rogers test make clear it is
reserved for circumstances where the defendant refers to or comments upon the
plaintiff in some way. Courts across the country agree.
In Winchester Mystery House, LLC v. Glob. Asylum, Inc., 210 Cal.App.4th
579, 590 (2012), the court also distinguished Parks on the ground that the title of
defendant’s film (Haunting of Winchester House) was specifically “meant to
reference” plaintiff’s mark (Winchester Mystery House) and the Winchester house.
In American Dairy Queen Corp. v. New Line Prods., 35 F.Supp.2d 727, 728-
29, 734 (D. Minn. 1998), the First Amendment did not protect defendant’s use of
“Dairy Queens” in the title of its film because defendant did not refer to the
plaintiff's restaurants or frozen dairy treats, but rather, denied any reference to the
plaintiff's restaurants or products. Winchester Mystery House also distinguished
Dairy Queen based on the referential requirement. Winchester Mystery House, 210
Cal.App.4th at 592 (“In contrast to Dairy Queen, here the title and the image of the
Victorian-style mansion refer to Sarah Winchester's house, which is currently
owned by plaintiff.”).
In Rebelution, the court held that the defendant could not satisfy the first
prong of the Rogers test because it “requires the artistic relevance of defendant’s
use to be with reference to the meaning associated with plaintiff’s mark.”
Rebelution, 732 F.Supp.2d at 889 (emphasis added). The court observed that in
42
“every federal court of appeals case addressing the artistic adoption of plaintiff’s
non-generic mark, the artistic relevance of defendant’s use of the mark related to
the meaning associated with plaintiffs mark.” Id.
In Dita, the court found its case differed “materially from those in which
courts have held that the First Amendment barred liability under the Lanham Act”
since “[i]n such cases, the First Amendment was implicated because the defendant
used a trademarked term to describe or comment upon the plaintiff’s mark or
product —not merely to promote its own product.” Dita, 2010 WL 5140855, at *2
(emphasis in original).
In Warner Bros. Entm't, 2012 WL 6951315, at *16, the court observed that
“courts within the Ninth Circuit have also required that the artistic work targets the
original and does not merely borrow another's property to get attention, as in such
cases First Amendment interests weigh more heavily in the balance.” (emphasis
added; quoting MCA Records). The court could not find “a single case in which a
court in this circuit—or any other circuit, for that matter—has permitted a
defendant to use the Rogers defense when the term did not in some way relate to
the original.” Id. Accordingly, the court held “the use of the mark in the
allegedly-infringing title must be in some way related to the meaning associated
with the mark itself, as it is only in these cases where limiting the use of the term
would excessively restrict speech.” Id.
43
In Masters Software, Inc. v. Discovery Commc'ns, Inc., 725 F.Supp.2d 1294
(W.D. Wash. 2010), the court held plaintiff’s claim against defendant Discovery
“does not implicate the First Amendment” because “Discovery did not choose the
name of Cake Boss as an allusion to [plaintiff’s mark] CakeBoss.” Id. at 1306.
The court observed that the “common thread in Rogers, [MCA Records], and
similar cases is a well-known senior user seeking to prevent harm associated with
the use of its trademark in the title of an expressive work authored by a junior user
who intends an association with the senior user.” Id. (emphasis added). “Were it
otherwise, the use of a trademark in the title of an expressive work would never
violate the Lanham Act so long as it had some connection to the work's content.”
Id.
In Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F.Supp.2d 410
(S.D.N.Y. 2002), the court observed that “[c]ases finding that First Amendment
interests prevail involve nontrademark uses of mark—that is, where the trademark
is not being used to indicate the source or origin of consumer products, but rather
is being used only to comment upon and, in the case of parody, to ridicule, the
trademark owner.” Id. at 414 (emphasis added). In these cases, “the parodist is
not trading on the good will of the trademark owner to market its own goods;
rather, the parodist's sole purpose for using the mark is the parody itself, and
precisely for that reason, the risk of consumer confusion is at its lowest.” Id.
44
Besides the above authorities, other courts have applied the Rogers test only
where use of the mark was in reference to its owner. See, e.g., Rogers, 875 F.2d at
996-97 (movie title referring to plaintiff Ginger Rogers); Cliffs Notes, Inc. v.
Bantam Doubleday Dell Pub. Grp., 886 F.2d 490, 491 (2d Cir. 1989) (publication
parodying plaintiff’s work, Cliff Notes); Twin Peaks Prods., Inc. v. Publ’ns Int’l,
Ltd., 996 F.2d 1366, 1370 (2d. Cir. 1993) (book title referring to plaintiff’s
television series, Twin Peaks); ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d 915, 918-
19 (6th Cir. 2003) (painting referring to plaintiff Tiger Woods).
In contravention of these authorities, the district court applied the Rogers
test even though Defendants did not refer to Gordon when using his trademark. In
fact, the district court did not even consider Gordon’s referential argument at all.
The Rogers test is not implicated because Defendants did not use HBDGS to refer
to Gordon or his products, and accordingly, summary judgment was improper.
IV. EVEN IF THE ROGERS TEST APPLIES, ITS FIRST PRONG
WAS NOT SATISFIED BECAUSE DEFENDANTS’ USE OF
GORDON’S TRADEMARK WAS NOT ARTISTICALLY
RELEVANT TO THE SEVEN GREETING CARDS
The artistic relevance prong ensures the defendant intended an artistic
association with the plaintiff's mark, instead of simply using the mark to exploit its
goodwill. Here, however, Defendants’ use of HBDGS was a crass marketing tool
45
to sell a lot of cards by trading off the popularity of Gordon’s catchphrases.
Defendants’ use of HBDGS had no artistic relevance to their seven greeting cards.
Initially, the artistic relevance prong is not satisfied because, as mentioned
above, Defendants did not use HBDGS to refer to, describe, or comment upon
Gordon in any way. See Rogers, 875 F.2d at 1001 (film title Ginger and Fred was
artistically relevant to film’s content because it was a satire of cabaret dancers who
imitated dancing legends Ginger Rogers and Fred Astaire). Similarly, the four
cases in this Circuit applying the Rogers test found artistic relevance where the
defendant’s use of a mark intentionally referred to the trademark owner. See MCA
Records, 296 F.3d at 902 (use of Barbie in song title was artistically relevant
because “the song is about Barbie and the values... she represents”); Walking
Mountain, 353 F.3d at 807 (uses of Barbie in photographs were artistically relevant
because they “depict Barbie and target the doll with Forsythe’s parodic message”);
E.S.S., 547 F.3d at 1100 (use of East Los Angeles strip club in video game was
artistically relevant because game depicted cartoon-style parody of East Los
Angeles and recreated critical mass of buildings in city); Brown, 724 F.3d at 1248
(defendant’s use of Jim Brown’s likeness was artistically relevant “to a video game
that aims to recreate NFL games”).
Conversely, in Parks, the Sixth Circuit reversed summary judgment,
concluding artistic relevance was not shown as a matter of law where Outkast’s
46
Rosa Parks song was not intended to refer to Ms. Parks in any way. Parks, 329
F.3d at 452-53. Because Defendants used Gordon’s mark without any reference to
him, their use of his mark has no artistic relevance to the cards. See, e.g., Warner
Bros. Entm't, 2012 WL 6951315, at *17 (finding artistic relevance prong not
satisfied where defendant asserted its use “in no way relates to plaintiff’s mark”);
see also cases cited in Section III, supra.
Moreover, Defendants’ use of HBDGS is not artistically relevant to the
content of their seven greeting cards, six of which are “Halloween cards,”
“birthday cards,” and “election cards,” that are “Halloween-themed,” “birthday-
themed,” and “election-themed” according to Drape and Siegel. ER 2045-46,
2251-52. Those six cards simply state on the front, “Halloween is Here” (ER 996-
1000), “It’s Your Birthday!” or “Honey Badger Heard It’s Your Birthday” (ER
980-81, 986-90), and “The Election’s Coming” (ER 971-72), with Gordon’s
HBDGS phrase on the inside.
Gordon’s HBDGS phrase, however, is artistically irrelevant to Defendants’
greeting cards that merely announce the presence of Halloween, a birthday, or an
election. Halloween, a birthday, and an election have nothing at all to do with
Gordon’s HBDGS phrase. The only relevance would be to use Gordon’s phrase as
a crass marketing tool to sell cards about Halloween, a birthday, and an election.
Such is not “artistic” relevance.
47
Further, Defendants’ Critter Card has no theme at all. The Critter Card just
uses repeatedly Gordon’s HBDGS phrase and others from his Video, including
how the honey badger kills a cobra. ER 965-66. Defendants never argued, nor
could they, that Gordon’s HBDGS phrase was somehow artistically relevant to the
Critter Card, which has no theme.
In Parks, artistic relevance was not proven as a matter of law where a
reasonable fact finder could have concluded the content of the Rosa Parks song
was not relevant to use of her name. The court reasoned:
If the requirement of ‘relevance’ is to have any meaning at all,

it would not be unreasonable to conclude that the title Rosa
Parks is not relevant to the content of the song in question. The
use of this woman's name unquestionably was a good marketing
tool—Rosa Parks was likely to sell far more recordings than
Back of the Bus—but its use could be found by a reasonable
finder of fact to be a flagrant deception on the public regarding
the actual content of this song and the creation of an impression
that Rosa Parks, who had approved the use of her name in
connection with the Tribute album, had also approved or
sponsored the use of her name on Defendants' composition.
(Parks, 329 F.3d at 453-54 [emphasis in original].)
Parks concluded that “reasonable people could find that the name [Rosa
Parks] was appropriated solely because of the vastly increased marketing power of
a product bearing” her name. Id. at 454. The court found, “in the present case,
some people looking at the title Rosa Parks might think the song is about Rosa
48
Parks and for those gaining that impression (as twenty-one consumer affidavits
filed in this case indicate happened), the title is misleading.” Id. at 455.
In Brown, this Court observed an animating concern in Parks was that a
celebrity’s name could be appropriated solely because of the vastly increased
marketing power of a product bearing the celebrity’s name. Brown, 724 F.3d at
1244. This Court found such was a “legitimate concern, but the facts in Parks—
specifically, the court's determination that the lyrics of Outkast's song may very
well have nothing to do with Rosa Parks or the civil rights movement—made that
concern much more realistic in that case than in this one.” Id.
Here, the concern is realistic. The content of Defendants’ seven cards (three
birthday cards, two Halloween cards, an election card, and the Critter Card) has
nothing to do with Gordon or his mark. Instead, the use of Gordon’s mark was
simply a good marketing tool. A jury could find Defendants’ use of HBDGS
deceived the public into believing that Gordon - - who had approved the use of his
mark in connection with other greeting cards, and sold goods bearing his mark in
the same stores (Target and Wal-Mart) where Defendants sold their cards - - had
also approved the use of his mark in Defendants’ cards. For those gaining that
wrong impression, as twenty-nine (29) consumer declarations filed in this case
indicate happened, ER 437-527, Defendants’ use of HBDGS was misleading.
Defendants’ cards could have stated, “Honey badger wishes you a happy birthday,”
49
but then the cards would not have had the marketing power of Gordon’s mark and
would not have sold well.
In one sentence of reasoning, however, the district court found that
Defendants’ use of HBDGS was artistically relevant to all seven cards since the
phrase related to the picture of a honey badger on the cover of Defendants’ cards.
ER 9. According to the court, Defendants’ use of HBDGS “allows those
purchasing the greeting cards to convey to the recipient a sarcastic, apathetic tone
about the subject of the card - such as the recipient’s birthday, Halloween, or the
election - by contrasting a milestone that is generally celebrated (for example,
wishing the recipient a happy birthday) and a drawing or picture of a small, furry
animal with a phrase that is dismissive of the occasion and the recipient.” Id.
Such a tortured conclusion cannot withstand analysis.
A cursory review of the seven cards shows Defendants’ use of HBDGS is
not meant to convey such an intellectually stimulating message about being
dismissive of an occasion through a sarcastic, apathetic tone. The cards essentially
say, “Happy Birthday” on the cover and use Gordon’s mark by itself on the inside.
Critically, Drape fails to explain how HBDGS has any artistic relevance to
the cards. At his deposition, Drape could not “recall” anything about the creation
of the seven greeting cards including why he used HBDGS.
50
Given all the above, Defendants’ use of Gordon’s mark lacks artistic
relevance to the seven cards. At minimum, summary judgment was improper
because a factual issue on the artistic relevance prong exists.
V. THE DISTRICT COURT ERRED IN APPLYING THE SECOND
PRONG OF THE ROGERS TEST BECAUSE DEFENDANTS’ USE
OF GORDON’S TRADEMARK WAS EXPLICITLY
MISLEADING
Even assuming arguendo the Rogers test applied and its first prong was
satisfied, Defendants’ use of Gordon’s mark is not protected because it “explicitly
misleads as to the source or the content of the work.” MCA Records, 296 F.3d at
902. 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 mistakenly believe is sponsored by the trademark owner.” E.S.S., 547 F.3d at
1100 (citation omitted). “To be relevant, evidence must relate to the nature of the
behavior of the identifying material’s user, not the impact of the use.” Brown, 724
F.3d at 1246 (emphasis added).
Initially, the district court below applied the wrong legal standard on the
second prong. The district court, quoting an unpublished case from Indiana
(Dillinger, LLC v. Elec. Arts Inc., 2011 WL 2457678, at *6 (S.D. Ind. 2011)), ruled
51
that to be explicitly misleading, a defendant’s work must “make some affirmative
statement of the plaintiff’s sponsorship or endorsement” and “[w]ithout such an
affirmative statement, the second prong of the Rogers test is not satisfied….” ER
9. That is not the law of this Circuit. Rather, the relevant question is whether
Defendants’ cards would confuse consumers into thinking that Gordon is somehow
behind them, and in answering that question the district court should consider all
evidence relating to the nature of the defendant’s behavior. See Brown, 724 F.3d at
1246; E.S.S., 547 F.3d at 1100. Under the district court’s narrow legal standard,
the second prong could virtually never be satisfied. Any trademark infringer with
half a brain trying to profit off the cachet of another’s mark would never
affirmatively state that the mark owner sponsored the infringer’s product. Because
the district court applied an overly restrictive legal standard, summary judgment
must be reversed.
The district court found the second prong was not satisfied because there
was nothing “on the greeting cards” that could be considered explicitly misleading.
ER 9. In reaching this conclusion, however, the court failed to consider extensive
evidence of the nature of Defendants’ behavior to mislead consumers.
First, Defendants directly competed with Gordon. Defendants and Gordon
each sold greeting cards bearing Gordon’s mark. ER 238-292, 675, 681-82, 687,
965-66, 971-72, 980-81, 986-87, 989-90, 996-97, 999-1000, 1326, 1328-29, 1548-
52
50. Further, Defendants and Gordon each sold goods bearing Gordon’s mark
(greeting cards and t-shirts, respectively) in the same retail stores, including Target
and Wal-Mart. ER 78-79, 95-99, 212, 857, 1143-45, 1224-26, 1229-45, 1330-31,
1336-37. In fact, at the same time Gordon was selling t-shirts bearing HBDGS in
Target, Defendants were selling their seven greeting cards bearing HBDGS in
Target. ER 78-79, 95-99, 212, 1042-43, 1224-26, 1229-45, 1330-31.8 Defendants’
direct competition with Gordon separates this case from the four Ninth Circuit
cases applying Rogers. See, e.g., E.S.S., 547 F.3d at 1100-01 (defendant’s video
game and plaintiff’s strip club had “nothing in common” and were “not
complementary” products, thus a “reasonable consumer would not think a
company that owns one strip club in East Los Angeles…also produces a
technologically sophisticated video game”); MCA Records, 296 F.3d at 900 (First
Amendment offers little protection for competitor who uses confusingly similar
mark on commercial goods). Defendants’ direct competition provides
circumstantial evidence of “duping consumers into buying a product they
mistakenly believe is sponsored by the trademark owner.” Id.
8
There was substantial evidence that the parties’ goods, t-shirts and greeting cards,
are complementary. ER 674-75, 680-81, 687, 689, 1326-29, 1474-83, 1547-50.
Additionally, there was evidence that the parties used similar marketing channels
(the internet, and specifically Twitter and Facebook) to promote their goods. ER
208-09, 641-45, 651, 668-72, 683-86, 694, 724, 954-63, 1327-28, 1540-46. Also,
Gordon received another trademark registration, in Class 16, which applies to
greeting cards. ER 205-06, 592-600.
53
Second, there was evidence that Defendants sold their cards illegally to
evade paying Gordon a license fee. In January 2012, Gordon’s agent, Leonhardt,
repeatedly pitched a license deal to American Greetings and was told its
subsidiary, PRG, was considering the license. ER 1265-66, 1273-1302. American
Greetings “passed,” but six months later PRG and DCI, American Greetings’
exclusive vendor, coincidentally started selling the seven cards.
Third, there was evidence that Defendants had actual knowledge of
Gordon’s trademark before selling their seven cards. As part of the art target,
there was a reference to the “Badass honey badger” and, under Samples &
Inspiration, a copy of an image bearing Gordon’s trademark. ER 819, 1005-20,
2046. While Siegel refused to answer on attorney-client privilege grounds whether
PRG performed a trademark search, he confirmed at least one of Defendants’ cards
raised sufficient concern that it was brought to PRG’s in-house legal to review for
“proper usage rights.” ER 848-56. Also, that Defendants created but did not sell
an Election Card which nearly copied Gordon’s registered mark verbatim (the
“Honey Badger and me just don’t care” card, ER 974-75), further evidences
knowledge of Gordon’s mark.9
9
Additionally, by January 29, 2013, which is more than three years before
Defendants stopped selling their cards, Defendants had constructive knowledge of
Gordon’s trademark registration. ER 1369. To show innocent intent, a party must
conduct a reasonable investigation into a trademark’s availability. See Walter v.
Mattel, Inc., 210 F.3d 1108, 1111 (9th Cir. 2000) (finding that a “reasonable
54
Fourth, at his deposition, Drape could not recall anything about why he used
Gordon’s mark in any of the seven cards. ER 805, 807, 813, 815, 817-18, 824.
Drape’s evasiveness and inability to explain why he used Gordon’s mark raised a
factual issue whether Defendants tried to mislead consumers.
Fifth, Defendants’ Critter Card not only uses Gordon’s mark repeatedly, but
also contains a reference to a honey badger killing a cobra, which is a plain rip off
from Gordon’s Video. ER 965-66, 1318, 1342, 1346, 1348-49, 1351, 1354, 1362,
1916-18.
Sixth, Defendants began selling the greeting cards in June 2012 at the peak
of Gordon’s popularity when his goods were generating substantial sales and he
was making appearances throughout the country. ER 1226, 1247, 1340-50, 2047.
The timing of Defendants’ sales demonstrates intent to capitalize on the
widespread attention Gordon and his Video were receiving up to the release of
Defendants’ cards.
Seventh, Defendants sold seven different cards all with derivations of
Gordon’s mark. The volume of infringement weighs heavily in finding bad faith.10
investigation into existing uses of the name” of a product is evidence of innocent

intent).
10
Disturbingly, it appears Defendants sold much more than seven different cards,
but Defendants only produced seven cards in discovery. ER 211-12, 875-76, 882-
83, 1021-23.
55
Eighth, in five of the seven greeting cards, Defendants placed Gordon’s
mark on the inside of the greeting cards where every consumer looks, all by itself
without any other text, in a large noticeable font. ER 980-81, 986-90, 996-1000.
The main selling point of Defendants’ greeting cards was their prominent use of
Gordon’s mark, emphasizing intent to mislead consumers.
Ninth, Defendants’ decision to continue selling the infringing cards even
after receiving both Gordon’s cease-and-desist demand and the complaint in this
case (ER 78-79, 95-99, 211-12, 627-38, 877-81, 886, 1021-37, 1042-43, 1128-37,
2047) provides evidence of Defendants’ intent to mislead the public. See
Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 162 n.8 (9th
Cir. 1963) (defendant’s continued sales after receiving notice to stop is
“tantamount to fraud”).
Tenth, Defendants’ intent to mislead consumers may be inferred because
their use of HBDGS was a verbatim copy of Gordon’s phrase used both in his
Video and on numerous products, and a near replica of his HBDC mark. While
Defendants’ use alone cannot prove the explicitly misleading prong, such use
should be considered in conjunction with all other evidence of Defendants’
behavior. Indeed, Defendants’ decision to use HBDGS “when other phrases were
available could indicate an intent to trade on [Gordon’s] good will.” Sierra On-
Line, Inc. v. Phoenix Software, Inc., 739 F.2d 1415, 1423 (9th Cir. 1984); see also
56
Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 666 (5th Cir. 2000)
(finding defendant’s use of the “Polo” mark evidenced an intent to trade on
plaintiff’s reputation). Defendants’ “likely intent” in selecting Gordon’s mark was
to “draw consumer attention to what would otherwise be just one more” birthday
greeting card. Dr. Seuss, 109 F.3d at 1405.11
Further, Defendants did not prominently display their marks on the seven
cards. Somehow, the district court concluded Defendants “made every effort” to
negate consumer confusion by putting their name on the back of the cards. ER 9.
But the opposite conclusion is apparent from reviewing the cards. Defendants used
HBDGS as the focal point of the cards, on the inside where every consumer looks,
in a large font, all by itself on most cards. Defendants did not put their own mark
next to HBDGS, and as such, their purported disclaimer is generally considered
ineffective. See Adray v. Adry–Mart, Inc., 76 F.3d 984, 991 n. 7 (9th Cir.1995).
Instead, Defendants hid their names on the back of the cards near the bar code
where no consumer looks. See Hartford House Ltd. v. Hallmark Cards Inc., 647
F.Supp. 1533, 1544 (D. Colo. 1986) (observing greeting cards are inexpensive
11
Defendants succeeded in their intent to mislead consumers. Gordon submitted
evidence of (i) actual consumer confusion through the declaration of Jacqueline
Harpole, who purchased two of Defendants’ cards in belief that Gordon made
them, ER 437-42, and (ii) the likelihood of consumer confusion through, inter alia,
the declarations of twenty-eight (28) people, who were potential purchasers of
Defendants’ cards and stated under oath they believed Gordon made or approved
them, ER 444-527, and the social media messages Gordon received from his fans
who believed Gordon made Defendants’ cards. ER 1353-54, 1907-14.
57
items purchased on impulse, and evidence that “consumers rarely, if ever, flip a
card over to read the name of its manufacturer printed on the back”). That
Defendants’ name “is conveyed on the back cover does not suffice.” Toho Co. v.
William Morrow & Co., 33 F.Supp.2d 1206, 1213 (C.D. Cal. 1998). At minimum,
whether Defendants tried to dispel consumer confusion by putting their name on
the back of the cards presented a jury question. See Fortune Dynamic, Inc. v.
Victoria's Secret Stores Brand Mgmt., Inc., 618 F.3d 1025, 1042 (9th Cir. 2010)
(jury question whether Victoria’s Secret should have been more careful about
indicating it as source where it used plaintiff’s mark “all by itself” without
Victoria’s Secret name next to it).
Given all the above evidence, Defendants’ seven cards were explicitly
misleading as to their source. At minimum, the nature of Defendants’ behavior
created genuine issues of material fact on the second prong of the Rogers test.
CONCLUSION
Defendants used Gordon’s mark in seven unexpressive greeting cards, which
were artistically irrelevant to his mark. Defendants traded off Gordon’s popularity
and goodwill, reaping substantial profits from his hard work and creativity. The
First Amendment does not protect Defendants’ conduct. The district court’s order
granting summary judgment should be reversed.
58
Dated: April 25, 2017 Respectfully submitted,
By /s/ Daniel L. Reback

Daniel L. Reback
KRANE & SMITH, APC

Attorneys for Plaintiff-Appellant,
CHRISTOPHER GORDON
59
CERTIFICATE OF COMPLIANCE
I certify that this brief complies with Circuit Rule 32-1(a) because it contains
13,603 words, excluding the parts of the brief exempted by Fed. R. App. P.
32(a)(7)(B)(iii). This brief’s typeface and type style comply with Fed. R. App. P.
32(a)(5) and (6) because it has been prepared in a proportionally spaced typeface
using Microsoft Word in fourteen-point Times New Roman type style.
Dated: April 25, 2017

Daniel L. Reback
KRANE & SMITH, APC

CHRISTOPHER GORDON
STATEMENT OF RELATED CASES
Gordon’s counsel is not aware of any related case pending in this Court.

Daniel L. Reback
KRANE & SMITH, APC

CHRISTOPHER GORDON
CERTIFICATE OF SERVICE
I hereby certify that on April 25, 2017, I electronically filed the foregoing
Opening Brief for Plaintiff-Appellant Christopher Gordon with the Clerk of the
Court for the United States Court of Appeals for the Ninth Circuit by using the
appellate CM/ECF system. I certify that all interested parties in the case are
registered CM/ECF users and that service will be accomplished by the appellate
CM/ECF system.

Daniel L. Reback
KRANE & SMITH, APC

CHRISTOPHER GORDON

Opening Appellate Brief - Trademark Roger&#39;s Test

Uploaded by

Document Information

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Opening Appellate Brief - Trademark Roger&#39;s Test

Uploaded by

Copyright:

Available Formats

Case: 16-56715, 04/25/2017, ID: 10410984, DktEntry: 9, Page 1 of 69

United States Court of Appeals

CHRISTOPHER GORDON, an individual,

PAPYRUS-RECYCLED GREETINGS, INC., an Illinois corporation;

OPENING BRIEF FOR PLAINTIFF-APPELLANT

Attorneys for Plaintiff-Appellant

STATEMENT OF THE ISSUES FOR REVIEW ...................................... 5

A. Factual Background .......................................................................... 6

1. Gordon’s Video and Trademark Registrations .......................... 6

2. Gordon’s Sale of Goods in 2011 ............................................... 7

6. Honey Badger Don’t Give a Shit ............................................... 12

a) Critter Card ......................................................................... 15

b) Election Cards ..................................................................... 17

c) Birthday Cards .................................................................... 17

e) Mr. Drape’s Testimony ....................................................... 19

B. Procedural History ............................................................................ 21

SUMMARY OF ARGUMENT .................................................................. 22

STANDARD OF REVIEW ........................................................................ 23

I. THE DISTRICT COURT ERRED BY APPLYING THE ROGERS

B. Defendants’ Seven Greeting Cards Are Not Expressive

II. THE DISTRICT COURT ERRED BY APPLYING THE ROGERS

IV. EVEN IF THE ROGERS TEST APPLIES, ITS FIRST PRONG

V. THE DISTRICT COURT ERRED IN APPLYING THE SECOND

STATEMENT OF RELATED CASES

Am.'s Best Family Showplace Corp. v. City of N.Y., Dep't of Bldgs.,

AMF Inc. v. Sleekcraft Boats,

Brown v. Electronic Arts, Inc.,

E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc.,

ETW Corp. v. Jireh Publ’g, Inc.,

Fleischmann Distilling Corp. v. Maier Brewing Co.,

Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt., Inc.,

Hartford House Ltd. v. Hallmark Cards Inc.,

Hilton v. Hallmark Cards,

JL Beverage Co., LLC v. Jim Beam Brands Co.,

Masters Software, Inc. v. Discovery Commc'ns, Inc.,

Mattel, Inc. v. MCA Records, Inc.,

McGinest v. GTE Serv. Corp.,

Roth Greeting Cards v. United Card Co.,

Sierra On-Line, Inc. v. Phoenix Software, Inc.,

Spence v. State of Wash.,

Stewart Surfboards, Inc v. Disney Book Grp., LLC,

Toho Co. v. William Morrow & Co.,

Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC,

Twin Peaks Prods., Inc. v. Publ’ns Int’l, Ltd.,

United States v. O'Brien,

Walter v. Mattel, Inc.,

Westchester Media v. PRL USA Holdings, Inc.,

Winchester Mystery House, LLC v. Glob. Asylum, Inc.,

28 U.S.C. § 1331 .......................................................................................... 5

28 U.S.C. § 1338(b) ..................................................................................... 5

28 U.S.C. § 1367(a) ..................................................................................... 5

Fed. R. App. P. 4(a)(1)(A) ........................................................................... 5

Fed. R. App. P. 4(a)(4)(A)(iv) ..................................................................... 5

Fed. R. App. P. 4(a)(4)(A)(vi) ..................................................................... 5

Care,” are the catchphrases of Plaintiff and Appellant Christopher Gordon

(“Gordon”). He made those phrases famous source identifiers by using them in a

At the height of Gordon’s popularity, Defendants and Appellees Papyrus-

Badger Don’t Give a Shit” (“HBDGS”). Incredibly, the content in one of

by containing a reference to a honey badger killing a cobra. Worse yet,

because Gordon made HBDGS famous as his catchphrase. Quite simply,

capitalize on its popularity for their own commercial benefit.

Tom Drape (“Drape”), President of Defendant Drape Creative, Inc. (“DCI”),

In this trademark infringement action, Gordon submitted evidence that

to Gordon’s registered trademark, “Honey Badger Don’t Care,” and created

Opening Appellate Brief - Trademark Roger's Test

Opening Appellate Brief - Trademark Roger's Test