F OR P UBLICATION



### UNIT E D ST AT E S CO URT O F APPE AL S FO R T H E NINT H CIRCUIT

C H R I S T O P H E R G O R

D O N , an individual, Plaintiff-Appellant

,

v

.

D R A P E C R E A T I V E , I

N C ., a Missouri corporation; P A P Y R

U S -R E C Y C L E D G R E E T I N G S , I N C ., an I llinois corporation, Defendants-Appellees. N o. 16-56715

D.C. No. 2:15-cv-04905- J F W -PL A

OPI NI ON

A ppeal from the United States District Court for the Central District of California J ohn F . W a lter, District J udg e, Presiding

Arg ued and Submitted April 9, 2018 Pasadena, California

F iled J uly 30, 2018

B efore: Danny

J . B o g g s, * J a

y S. B y bee, and Paul J . W atford, Circuit J udg es.

Opinion by

J udg e B y bee

* T h e Ho n o rab le Dan n y J

. B o g g s, Un ited States Circu it J u d g e f o r th e U.S. Co u rt o f

A p peals f o r th e Six th

Circu it, sittin g b y

d esig n atio n

.G O R D O N V

. D R

A P E C R E A T I V E 2

SUMMARY * *

Tradem ark

The pan e l reversed the district court’s g rant of summary judg ment in favor of defendants in a trademark infring ement suit under the L anham Act.

Defendants desig ned and p roduced g reeting cards using “Honey B adg er” catchphrases from p laintiff Christoph er Gordon’s YouTube video.

Under the Rogers test, the L anham Act a pplies to

ex p r e s s i ve works o nly where the public interest in avoiding

consumer confusion outweig hs the publ i c interest in free

ex p r e s s i on. This balance will normally not support application of the Act u nless the use of th e m a r k has no artistic relevance to the u nderly ing work w hatsoe v e r o r

ex p licitly misleads consumers as to the source or the c ontent of the work.

The panel held that there was a triable issu e of fact because a jury could determine that defen dants did not a dd
any value protected by the F irst Amendment

, b u t merely appropriate d the g o odwill associated with G ordon’s mark. The panel reversed the d istrict court and remanded for f urther proceeding s on Gordon’s claims.

** T h is su m m ary co n stitu

t es n o p art o f th e o p in io n o f th e co u rt. It h as b een p rep ared b y

co u rt staf

f f o r th e co n v en i en ce o f

th e read er.G O R D O N V

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A P E C R E A T I V E 3

COUNSEL

Daniel L

. Reback (arg

ued) and Ralph C. L oeb

, K r ane & Smith, Encino, California, for Plaintiff-Appellant.

Doug las J

. Collodel ( arg u e d )

, Kanika D. Corley

, and J ames J .S. Holmes, Sedg wick L L P, L os Ang ele s, California, for Defendants-Appellees.

OP INION

B YB EE, Circuit J udg e:

Plaintiff Christopher Gordon is the creator o f a popular YouTube v ideo k

n own for its catch p h r a s es “Honey B a dg er Don’t Care” and “Honey B adg er Don’t Give a S---.” Gordon has trademarked the f

o rmer p hrase for vario u s classes o f
g oods, including g reeting cards. Defendants Drape Creative, I nc. (“DCI ” ), and Papy

rus-Recycled Greeting s, I nc. (“PRG”), desig ned and produced g reeting c ards u sing both phrases with slig ht v ariations. Gordon broug ht this sui t f o r trademark infring ement, and the district court g ranted summary judg ment for defendants, holding that Gordon’s claims were barred by the test set f

orth in Rogers v. Grimaldi

, 875 F .2d 994 (2d Cir. 1989).

W e use the Rogers test to balance the competing interests

a t stake when a trademark owner claims that an ex pressi v e work infring e s on its trademark r ig hts. The test construes the L anham Act to apply to ex p ressive works “only where the public interest in avoiding consumer c o nfusion outweig hs the public interest in free e x pressi o n

. ” Id

. at 999. “ [ T] hat balance will normally not support application of the Act,G O R D O N V

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A P E C R E A T I V E 4

unless the [ use of the mark] has no artistic relevance to the underly ing work w hatsoever, or

. . . ex plici t l y misleads [ consumers] as to the source or the content of the work.” Id.

The Rogers test is not an a u t o matic safe harbor for any minimally ex pressive work that copies someone else’s mark. Althoug h on e very prior oc c as i o n in which we h ave a pplied the test, we have found that it barred an infring ement claim a s

a matter o f law, this c a se p resents a t r i a b l e issue of fact. Defendants have not used another’s mark in the c reation of a song , photog r aph, video g a me, or television sho w , b u t have larg e ly just pasted Go r d o n ’ s mark into their g reeting cards. A jury could determine that defendants d id not add any value protected by the F irst Am endment but merely appropriated the g oodwill associated w ith G ordo n ’s m ark. W e therefore

reverse the district court’s g rant of summ a r y judg ment a nd remand for further proceeding s on Gordon’s claims.

I

P laintiff Christopher Gordon is a comedian, writer, a n d actor, w ho commonly u ses the name “Randall” as an alias on social media. 1 Defendant DCI is a g reet i n g- c a rd desig n studio. DCI works ex clusive l y with American G reeting s Corporation and its subsidiaries, which incl ude the other defendant in this case, PRG. PRG is a g reeting -card manufacturer and distributor.

1 B ecau se th is case co m es to u s o n ap p eal f ro m a g r a n t o f s u m

m ary j u d g m en t f

o r d ef en d an t s, w e reco u n t th e f

acts in th e lig h t m o st f

av orab le
to Go rd o n

. See VMG S

a lso u l, LLC v. Cicco ne , 8 2 4 F.3 d 8 7 1
, 87 5 (9 th Cir. 2 0 1 6 ).G O R D O N V

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A P E C R E A T I V E 5

A

I n J a nuary 2011, under the name Randall, Gordon p osted

a video on Y o u T u b e titled The Crazy Nastyass Honey Badger

, featuring National Geog raphic footag e of a ho n e y badg er overlaid with Gordon’s na r r a t ion. I n the v ideo, Gordon repeats variations o f the phrases “Honey B a dg er Don’t Care” and “Honey Ba d ge r Don’t Give a S---,” as a honey badg er h u n t s and eats its prey

. The parties refer to these phrases a s “HB DC” and “HB DGS,” and we adopt their convention.

G o r d o n’s v ideo quickly g enerated millions of views on YouTube and b ecame the subject of numerous pop-culture references in television shows, mag az ines, and social media. As early as F ebruary 2011, Go rdon beg an producing a nd selling g oods with the H B DC or HB DGS p hrases, such a s books, w all calendars, t-shirts, c ostumes, plush toy s, mouse pads, mug s, and d e c als. Some of the items w ere sold online; others w ere sold throug h national r etailers such as W al-Mart, Targ et, Urban Outfitters, and H ot T opic. I n J une 20 1 1
, Gordon copy

r ig hted his video’s narration under t h e title Honey B adger Don’t Ca re , and in October 2011, he b eg an filing trademark applications for the HB DC p hrase for various classes of g oods. The Patent and Trademark Office (“PTO”) eventually regi stered “Honey B adg er Don’t Care” for I nternational Classes 9 (audio books, etc.), 16 (g reeti n g cards, etc.), 2 1 (mug s), 25 (clothing ), and 28 (C h r i stmasG O R D O N V

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A P E C R E A T I V E 6

decorations, dolls, etc.). 2 However, Gordon never reg istered the HB DGS phrase for any class of g oods.

At the peak of his popularity

, Gordon promoted his brand

on television a

nd radio shows and in interviews w ith n ational publications such as Forb e s , T h e W all Street Journal

, a

nd The H uffington Po s t

. H i s brand was further boosted b y celebrities like Tay lor Swi f t a nd Anderson Cooper quoting his video and by L SU football play ers tag g ing t h ei r teammate, Heisman T rophy finalist Ty rann Mathieu, with the moniker “Honey B adg er” for his a g g r essive defensive play

. I n November 2011, Advertising Age referred to Gordon ’s brand as one of “Amer i c a ’ s Hottest B rands” in a n article titled “Hot B r and? Honey B adg er Don’t Care.”

B

I n J anuary 2012, G ordon hired Paul L eonhardt to serve a s his licensing a g ent. Soon thereafter, L eonhardt contacted J anice Ross at American Greeting s—the parent co m p a ny o f defenda n t PRG—to d iscuss licensing honey -badg er themed
g reeting cards

. L eonhardt a nd Ross had multiple email

ex c h a ng e s and conversations over several weeks. Ross a t o ne point ex pres s e d some interest in a licensing ag r eement, stating : “ I t hink it’s a really fun and irreverent property a nd would love to see if there’s an opportunity o n o n e of our distribution p latforms. B ut in order to d o that, I need to g et

2 B etw een J an u ary 2 0 1 3 an d A p ril 2 0 14
, th e P T O i ssu ed reg istratio n s f o r HB DC in In tern atio n al Classes 9, 21
, 2 5
, an d 2 8

. T h e PT O did n o t issu e a reg istratio n f

o r HB DC in

In tern atio n al Class 1 6 —w h i ch in clu des
g reetin g card s—u

n til Octo b er 2 0 1 6
, w ell af ter Go rd o n f

iled t h i s su it. T h e tim in g o f G o rd o n ’s reg istratio n s, h ow ev er, is i m m aterial to th e Ro g ers in q u iry

.G O R D O N V

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A P E C R E A T I V E 7

some key colleag u es o f mine o n board the Craz y Honey B adg er B andwag on.” N evertheless, neither American Greeting s nor defendants ever sig n ed a licensing ag reem e n t with Gordon.

L eonhardt did eventually secure s everal licensing deals for Gordon. B etween M a y a nd October 2 012, Gordon’s
company —Randall’s Honey B adg er, L L C ( “ R H B ” )

— e n t e r e d into licensing ag reements with Z az z le, I nc., a nd The Duck Company for various honey -badg er themed product s , including g reeting cards. RHB also entered into licensing
ag reements with other companies for honey -badg e r c o s t u m e s, toy s, t-shirts, sweatshirts, poster s , a n d decals, among other thing s. HB DC and HB DGS w ere the two most common phrases used on these licensed products. F or ex ample, two o f Z a z z le’s best-selling honey -badg e r g r eeting cards s t a t ed on their front covers “Honey B adg er D o n ’ t Care About Your B irthday .”

A t the same time that Gordon was neg otiating licensing
ag reements with Z az z le a nd Duck, defen d a n t s b eg an developing their o wn line of unlicensed hone y -badg er g reeting c ards. B eg inning in J une 2012, defendants s o ld

seven different g reeting car d s using the HB DC or HB DGS phrases with small variations:

• The fronts of two “Election Cards” showed a pic t ure of a honey badg er wearing a pa t r iotic h at a n d stated “The Election’s Coming

. ” The i n s ide of o ne card s a id “Me and Honey B adg er don’t
g ive a $#%@! Happy B irthd ay ,” and the inside of the other said “ H oney B a dg er and me just don’t care. Happy B irthday

. ”G O R D O N V

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A P E C R E A T I V E 8

• The fronts of two “B irthda y Cards”

featured different pictures of a h o ney badg er and stated either “I t’s Your B irthday !” o r “Honey B adg er Heard I t ’s Your B irthday .” The inside o f both cards said “Honey

B a dg e r Don’t Give a S---.”

• The f ronts of two “Halloween Cards” sho w ed a picture of a honey badg er

nex t to a jack-o-lantern and stated “Hallowee n is Here.” The inside of the cards sai d either “Honey B adg er don’t
g ive a $#*%!” or “Honey Ba dg er don’t
g ive a s---.”

• A “Critter Card” employ e d a Twitter-sty le format showing a series o f messag es f rom “Honey B a dg er@don’tg iveas---.” The front s t a t e d “J ust killed a cobra. Don’t
g ive a s---”; “ J ust ate a scor p i o n

. Don’t
g ive a s

- - - ” ; and “Rolling in fire ants. Don’t g ive a s---.” 3 The inside said “Your B irthday ’s here. . . I

g ive a s---.”

T he back cover of each card display ed the mark for “Recy cled Paper Greeting s” and listed the w e b s ites www.DCI S t udios.com and www.prg reeting s.com. DCI ’s

3 Go rd o n ’ s v id eo ref

ers to a h o n ey

b ad g er g ettin g stu

n g b y b ees an d eatin g a co b ra—e.g ., “

N o w lo o k

, h ere’ s a h o u se f u ll o f b ees. Y o u th in k th e h o n ey b ad g er cares? It d o esn ’ t g iv e a s---.

. . . B u t lo o k th e h o n ey b ad g er d o esn ’ t care, it’ s g ettin g s tu n g lik e a th o u san d tim e s

. It d o esn ’ t g iv e a s

- - - . . . . L o o k ! Here co m es a f ierce b attle b etw een a k in g co bra

an d a h o n ey b ad g er.

. . . A n d o f co u rse, w

h at d o es a h o n ey b ad g er h av e to eat f o r th e n ex t

f ew w eek s? Co b ra.”G O R D O N V

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A P E C R E A T I V E 9

President testified that he drafted all of the cards in question but could not recall what inspired the cards’ desig ns. He claimed to have never heard of a video involvin g a h o n e y badg er.

I n J u ne 2015, Gordon f

iled the instant action ag ainst DCI and PRG, alleg ing trademark infring ement under the L anham Act, among o ther claims. The d istrict court g ranted summary judg ment for defendants, holding that defendants’ g reeting cards were ex pressive w orks, and a pply ing the Rogers test to bar all of Gordon’s claims. Gordon timely appealed. 4

I I

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

co m p r ehensive framework for reg ulating the use o f trademarks and protecting them ag ainst in f ring ement, dilution, and unfair competition.” Fortune D ynamic, I nc. v

. Victoria’s Secret Stores Brand Mgmt., I n c

. , 618 F .3d 1025, 1030 (9th Cir. 2010). The Act’s two underly ing purposes a

re to ensure that ( 1) “owners of trademarks can benefit from the
g oodwill associated with their m a r ks” and (2) “consumers can disting uish among competing producers.” Id. ; see a lso J

. T H O M A S M C C A R

T H Y , M C C A R

T H Y O N T R

A D E M A R K S & U N F A I R C O M P E T I T I O N § 2:2 (5th ed.) (ex plaining the d ual purposes of trademark law).

U n d e r the A ct, the owner of a trademark used i n

commerce may reg ister the mark with the PTO. Reg istration i s prima facie evidence of the mark’s validity an d o f t h e

4 W e h av e j u risd ictio n u n d er 2 8 U .S.C. § 12 9 1
, an d w e rev iew th e d istrict co u rt’ s g r a n t o f su m m ary j u d g m en t d e n o v o

. S ee Ma t t el, In c. v. W a lkin g Mo u n ta in Pro d

s. , 3 5 3 F.3 d 7 9 2 , 8 0 6 (9 th Cir. 2 0 0 3 ).G O R D O N V

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A P E C R E A T I V E 10

o wner’s ex c lusive rig ht to u se the mark in connection wit h the g o ods and services specified in the reg istration. 1 5 U .S.C. § 1057(b). The o w n e r has a cause of action ag ainst any pe rson who, without the owners’s c onsent, “use[ s] in

commerce any reproduction, counterfeit, copy , or c olo r able imitation of a reg iste r ed mark in connection with the sale, offering f or sale, distribution, or advertising of any g oods or services on or in connection with which such use is likely to

cause confusion, or to cause mistake, or to deceive.” Id. § 1114(1)(a); see also id. § 1125(a) (providing a similar cause of action f

or “false desig nation of orig in, false or misleading description o f fact, or false or misleadin g representation o f fact,” irrespective of reg

istration).

I n g eneral, we apply a “lik e lihood-of-confusion test” to claims broug ht under the L a n h a m Act. Twentieth Century Fox Television v. Empire Distrib., Inc.
, 875 F .3d 1 192, 1196 (9th Cir. 2017); Mattel, Inc. v

. W alk i n g Mountain Prods.

, 353 F .3d 792, 806–07 (9th Cir. 2003). T h e l ikelihood-ofconfusion test requires the plaintiff to prove two e lements: (1) that “ it has a valid, protectable tr ademark” and (2) that “the defendant’s use of the mark is likely to cause confusion.” S. Cal. Darts Ass’n v. Zaffina

, 7 62 F

. 3d 921, 929 ( 9th Cir. 2014) (alteration o m itted). Ordinarily

, this test “strikes a comfortable balance” between the L anham Act and the F irst Amendment. Mattel, In c

. v

. MCA Records, Inc.
, 296 F .3d 894, 900 (9th Cir. 2002).

That said, where artistic ex pression is at issue, we have

ex p ressed concern that “the traditional test fails to account for the full weig ht of the p ublic’s interest in free ex pression.” Id. The owner of a trademark “does not have the r ig ht to control public discourse” by enforcing his ma r k

. I d

. We have adopted the Second Circuit’s R o g er s test to strike anG O R D O N V

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A P E C R E A T I V E 11

appropriate balance between F irst A mendment interests in protecting artistic e x pression and the L anham Act’s purposes to secure trademarks rig hts. U n d e r Rogers
, we read the A ct “to apply to artistic works only w her e the p u blic interest in avoiding c onsumer confusion o utweig h s the public interest in free ex pression.” Id. at 901 ( quoting R ogers , 875 F.2d at 999). More concretely

, we a p ply the Act to an ex pressive work only if the d efendant’s use of the ma rk is (1) not artistically relevant to the work or ( 2) ex plicitly misleads

consumers a s to the source or the content of the work. S ee id.
at 9 0 2. Effectively

, Rogers employ s the F irst Amendment a s

a rule o f construction to avoid c o n fli ct b etween the Constitution and the L a

n h am Act.

W e pause here to cl arify the burden of proof under the Rogers test. The Rogers test requires the defendant to come forward and make a threshold leg al showing that its alleg edly infring ing use is part of an ex pressive work protected by the F irst Amendment. I f the defendant succ e s s f ully makes that threshold showing

, then the plaintiff clai m ing trademark infring ement bears a heig h tened burden—t h e plaintiff must satisfy n ot only the likelihood-o f -c onfusion test but also at least o n e o f Rogers ’ s two p rong s. Cf. Makaeff v. Trump Univ., LLC
, 715 F .3d 254, 261 (9th Cir. 2 013) ( if a defendant
meets its “initia l burden” of showing a F irst A mendment interest, th e n a public-fig ure plaintiff claiming defamation
must meet a “heig htened standard of proof” requir i n g a showing o f “actual malice”). That is, when the d e f e n d ant demonstrates that F irst Amendment interests are at stake, the plaintiff claiming infring ement must show not o nly (1) that it has a valid, protectable trademark, and (2) that the defendant’s use of the mark is likely to cause confusion, but also (3) that the mark is e ither not artistically relevant to theG O R D O N V

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A P E C R E A T I V E 12

underly ing work or ex p licitly misleads consumers as to th e source or content of the work.

“ S u mmary judg ment may p r operly be e ntered on l y ag ainst a party who has f a i l e d to make a showing sufficient
t o establish a g enuine dispute as to the ex istence of an element essential t o h i s case a nd upon which the party will bear the burden of proof at trial.” Easley v. City of Riverside

, 890 F

. 3d 851, 859 (9th Cir. 201 8 ). W hen, as here, the defendan t m o v e s for summary judg ment and has demonstrated that its use of the p laintiff’s mark is part of an

ex p ressive work, the burden shifts to the plaintiff to raise a g enuine d ispute as to at least one of Rogers ’s two prong s. I n other words, to evade summary judg ment, the plaintiff must show a triable issu e o f f a c t a s to whether the mark is artistically relevant to the underly ing wo r k or ex plicitly misleads consumers as to the source or content of the work.

I I I

Be fore apply ing the Rogers test to the instant case, w e briefly review the test’s orig in in the Second Circuit a nd development in our court. 5 W e have applied the Rogers test

on five separate occasions, and each time we have concluded that it barred the trademark infring ement claim as a matter o f law. Three o f those cases, like Rogers
, involved the use of a tradema r k i n t he title of an ex pressive work. T w o cases involved trademarks in video g ames and ex tended the Rogers

5 T h e Ro g ers test h as b een ad o p ted i n o th er circu its as w ell. S ee Un iv.

o f Ala

. Bd

. o

f Trs. v. New Life Art, In c. , 6 8 3 F.3 d 1 2 6 6
, 1 2 7 8 (1 1 th Cir. 2 0 1 2 ); P a rk

s v

. La Fa ce Reco rd

s , 32 9 F.3 d 4 3 7
, 4 5 2 (6 th Cir. 20 0 3 ); W estch ester Med ia v. PRL U S A H o l d in g s, In c. , 2 1 4 F.3 d 6 5 8
, 66 5 (5 th Cir. 2 0 0 0 ).G O R D O N V

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A P E C R E A T I V E 13

test to the use of a trademark in the b o d y of an ex pressive work.

A

The Rogers c ase concerned the movie Ginger and F red

, a story of two fictional I talian c aba r e t performers w ho imitated t h e f

amed Holly

wood duo of Ging er Rog ers a nd F red Astaire. 875 F

. 2d at 996–97. Rog ers sued the film’s producers u nder the L anham Act, alleg ing that the film’s title
g ave the false impression that the f ilm—created and directed by well-known filmmaker F ederico F ellini—was about her o r sponsored by her. I

d

. a t 9 97. The district court, however,
g ranted summary judg ment for the defendant film producers. Id.

On appeal, the Second Circuit recog niz ed that, “[ t] houg h F irst Amendment concerns do n ot insulate titles of artistic works from a l l L a nham Act claims, such c oncerns must nonetheless inform our c onsideration o f the scope of the A ct

as applied to claims involving such titles.” I d

. a t 998. The
court said it would construe the L a nham Act “to apply to artistic works only where the public inter e s t in avoiding

consumer confusion outweig hs the public interest in fr e e

ex p ression.” Id. a t 999. Refining its inquiry

, the c ourt f urther held that, “[ i] n the c ontex t o f alleg edly misleading titles using

a celebrity ’s name, that balanc e w i ll n o rmally not support application o f t h e A ct unless [ 1] the title h as no artistic relevance to the underly ing w ork whatsoever, or, [ 2] if it has

some artistic relevance, unless the title ex plicitly misleads a s to the source or the content of the work.” Id.

W ith respect to artistic relevance, t h e Second Circuit found that t he names “Ging e r” and “F red” were “ notG O R D O N V

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A P E C R E A T I V E 14

arbitrarily chosen j u s t t o ex p loit the publicity value o f their real life counterpart s” but had “g enuine relevance to the film’s story .” Id. at 1001. The film’s title was “truthful as to its c ontent” and c o nve y e d “an ironic meaning that [was] relevant to the film’s content

. ” Id

. On the second prong o f its inquiry

, the court h e l d t h at the title was not ex plicitly misleading because it “contain[ ed] no ex plicit indication that Rog ers en d o r sed the film or had a role in producing it.” Id. A ny risk that the title would mislead consumer s w a s “outweig hed by the dang er that suppressing an a r t istically relevant thoug h ambig uous t i tle will unduly restrict

ex p ression.” Id

. T h e Second Circuit therefore affirmed
summary judg ment f

or the defendant film produ c e r s

. Id. at 1005.

B

W e first employ ed the Rogers test in M C A Records

, 296 F .3d 894, which concerned the song “B arbie Girl” by the Danish band Aqua. The song —which lampooned the values and lifesty le that the song writer associated with B arbie dolls—involved one band-member impersonating B a rbie a nd sing ing in a hig h-pitched, doll-like voice. Id. at 899. Mattel, the manufacturer of B arbie dolls, sued the producers and d i s tributors of “ B arbie Girl” f or infring ement under the L anham A ct, a

nd the district court g ranted summary judg men t fo r the defendants. Id. Apply ing the Rogers test,

w e affirmed. I

d. at 902. W e held that the use of t h e Ba rb i e mark in the song ’s title was artistically releva n t t o the underly ing work because the song was “ about B arbie and the values Aqua claims she represents.” Id. I n addition, the song “d[ id] not, ex plicitly o r otherwise, sug g est that it was p roduced by Mattel.” Id. “The only indication that Mattel mig ht be associated with the song [ w as] the u se of B arbie inG O R D O N V

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A P E C R E A T I V E 15

the title,” a

nd if the use of the mar k a l o n e were enoug h to satisfy R ogers ’s second prong , “it would ren d er Rogers a nullity .” Id. B ecause the B arbie mark was art i s t i c a l ly relevant to the song and not ex plicitly misleading

, we concluded tha t the band could not be held liable for infring ement.

W e applied the Rogers test to another suit involving B arbie in W

a l k i ng Mountain P rods.

, 353 F .3d 7 9 2. T h ere, ph o t o grapher Thomas F orsy the developed a series o f ph o t o g raphs titled “F ood Chain B a r bie” depicting B arbie dolls or parts of B arbie d olls i n ab s u rd positions, often involving kitchen a

p pliances. Id. at 7 96. F orsy the described
t h e photog raphs as critiquing “the o b jectification of wom e n associated with [ B arbie]

. ” Id. Mattel claimed that the photos infring ed its trademark and trade dress, but we affirmed
summary judg ment for F orsy the b ecause “[ a] pplication of the Rogers test here leads to the same result as it did i n MCA

. ” Id. at 807. F orsy

the’s use o f the B arbie mark was artistically relevant to his work because his photog raphs depicted B arbie and targ eted the doll with a p arodic messag e. Id. Moreover, apart from F orsy

the’s use o f the mark, there was no indication that Mattel in a n y way sponsored the photog raphs. Id.

Most recently

, we applied the Rogers test i n Twentieth Century Fox Television

, 875 F .3d 1192. Twentieth Century F ox produced the television show Empire
, which revolved around a fictional hip-hop record labe l n a med “Empire Enterprises.” Id. at 1195. E mpire D istribution, an actual hiphop record label, sent Twentieth Century F ox a cea s e -anddesist letter, and Twentieth Century F o x s u e d for a d e c laratory judg ment that its show d id not violate Empire’s trademark rig hts. Id. I n affirming summary judg ment forG O R D O N V

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A P E C R E A T I V E 16

Twentieth Century

F o x , we rejected Empire’s arg ument that “the Rogers test includes a threshold requirement that a mark have attained a m e a n ing bey ond its source-identify ing function.” 6 Id. at 1197. W hether a mark convey s a meaning b e y ond identify ing a product’s source is not a thresh o l d requirement but only a r e levant consideration: “trad e m a r ks that transcend their identify ing purpose a re more likely to be used in artistically relevant way s,” but such transcendence is
not necessary to trig g er F irst A mendm e n t p r otection. Id. at 1198 (quotation marks and citation omitted).

W e concluded that Empire c o uld not satisfy Rogers ’s first
prong because Twentieth Century F o x “used the com mon Eng lish word ‘Empire’ for artistically relevant reasons,” namely

, that the show’s set t i n g was New York (the E mpire State) and its subject matter was an enter t a i nment cong lomerate (a fig

urative empire). Id. F inally

, we resisted E m pire’s e fforts to conflate the likelihood-of-confusion test

w i th Rogers ’s second prong

. To satisfy that prong , it i s n o t enoug h to show that “the defendant’s u se of the mark would confuse consumers as to the source, sponsorship o r content o f the work;” rather, the plaintiff must show that the defendant

“ explic i t l y m isl[ ed] consumers.” Id. at 1199. B ecause Twentieth Ce n t ury F o x ’s Empire show contained “no overt claims o r ex plicit references to E mpire Dist r i b u tion,” we found that Empire could not sati s fy Rogers ’s second p rong

. Id. E mpire’s inability to satisfy either of R ogers ’s two p rong s meant that it could not prevail on its infring ement claim.

6 W e ex p l ai n e d i n M

CA Reco rd

s th at trad em ark s so m etim es

“ t ran scen d t

h eir id en tif

y in g p u rp o s e” an d “ b eco m e an in teg ral part o f ou r

v o cab u lary .” 2 9 6 F.3 d at 9 0 0

. Ex am p l es in clu d e “ Ro lls Ro y ce” as p ro of

o f q u ality o r “ B an d

- A id ” f

o r an y q u ick f ix

.G O R D O N V

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A P E C R E A T I V E 17

C

W e first ex tended the Rogers test bey ond a title in E.S.S. Ent’mt 2000, Inc. v. Rock St a r V i d eos, Inc.
, 547 F .3d 1095, 1099 (9th Cir. 2008). I n that c ase, defendant Rockstar Games manufactured and distributed the video g ame Grand Theft Auto: San A ndreas

, which took place in a fictionaliz ed version o f L o s Ang eles. Id. at 1096–97. One of the g ame’s neig hborhoods—East L os Santos—“lampoo n e d the seedy underbelly ” o f East L os Ang e les by mimicking its businesses and architecture. Id. at 1097. The fictional East L os Santos included a v irtual strip club called the “P i g Pen.” Id. ESS Entertainmen t 2 000, which operates the Play Pen Gentlemen’s Club in the real East L os Ang eles, claimed that Rockstar’s depiction of the Pig Pen infring ed its trad emark and trade dress. Id.

W e recog niz ed that the R ogers test was develo p e d in a

case involving a title, and adopted by our court in a s i m i l a r case, but we could find “ no principled r e a s on why it oug ht
not also apply to the use of a trade m ar k i n t he body o f the work.” I d. at 1099. W ith respect to Rogers ’s first prong , we

ex p lained that “[ t] he level of relevance merely must be above

z ero” and the Pig Pen met this threshold by being relevant to Rockstar’s a

rtistic g oal of creating “a cartoon-sty le parody o f East L o s Ang eles.” Id. a t 1100. On the seco n d prong , we conclud e d t h a t the g a me did not ex plicitly mislead as to the

source o f the mark and w ould n o t “ c o n fuse its play ers into thinking that the Play Pen is somehow behind the Pig Pen o r that it sponsors R o ckstar’s product.

. . . A reasonable

consumer would not think a company that owns one strip c lub in East L os Ang eles

. . . also produces a technologi c ally sophisticated video g ame. ” I d

. at 1 100–01. B ecause ESSG O R D O N V

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A P E C R E A T I V E 18

Entertainment 2000 could not demonstrate either of Rogers ’s two prong s, we affirmed summary judg ment for Rockstar.

Another v ideo-g ame case dealt with the Madd e n NFL series produced by Electronic Arts, I nc. (“EA”). Bro w n v

. Elec. Arts, I

nc. , 724 F. 3 d 1 235 (9th Cir. 2013). L eg endary football play er J im B r own alleg ed that EA violated § 4 3(a) o f the L a nham A ct by u sing his likeness in its g a mes. I d

. at 1238–39. The district court g ranted EA’s motion to dismiss, and we a ffirmed. Id. at 1 2 39. We reiterated E.S.S. ’s holding that the level of artistic relevance under Rogers ’s first prong need only ex ceed zero and found it was “ obvious that B rown’s likeness ha[ d] at least some a rtistic r e l e vance to EA’s work.” I

d. at 1243. W e a lso found that B rown h ad not alleg ed facts that would satisfy Rogers ’s second prong : “EA did not produce a g a me called J i m Brown Presents P inball with no relation to J im B rown or football bey ond the title; it produced a f

ootball g ame featuring likenesses of thousands o f
current and former NF L play ers, includ i n g B rown.” Id. at 1244. We asked “whether the use of B rown’s likeness would confuse M

a d den NFL play ers into thinking that B rown is someho w b e h i nd the g ames o r that he sponsors EA’s product,” and held that it would not. I d. at 1245–47 (alterations omitte d). As in E.S.S.
, the plaintiff could not satisfy either o f Rogers ’ s two prong s, and judg ment for the defendant was proper.

I V

I n each of the cases coming before our court, the evidence

was such that no reasonable jury could have found f o r t h e plaintiff on either prong of the Rogers test, and we therefore concluded that the plaintiff’s L a nham Act claim failed a s a

m atter of law. T his case, however, demonstrates R o ge r s ’sG O R D O N V

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A P E C R E A T I V E 19

outer limits. Althoug h defen d ants’ g reeting cards a re

ex p ressive w orks to wh i c h Rogers applies, there remains a g enuine i s sue of material fact as to at least Rogers ’s first
prong —i.e., w hether defendants’ use of Gordon’s mark in their g r eeting cards is artistically relevant.

A

As a threshold matter, we h a v e little d ifficulty determining that defendants have m e t their initial b urden o f demonstrating that their g r eeting cards are ex pressive works protected under the F irst Amendment. As we have previously observed, “[ a g reeting ] card certainly evinces ‘[ a] n in tent to convey a particulariz ed messag e

. . . , and in the surrounding circumstances the like l ihood was g reat that the messag e would be understood b y those who viewed it.’” Hilton v

. Hallmark Cards

, 599 F .3d 894, 904 (9th Cir. 2010) (quoting Spence v. W

ashington

, 4 18 U.S. 405, 410– 1 1 ( 1 9 7 4) (per curiam)); see also Roth G reeting Cards v. United Card Co.

, 429 F .2d 1106, 1110 (9th Cir. 1 970) (pl a intiff’s g reeting cards, c onsidered as a whole, “represent[ ed] a tang i b le

ex p ression of an idea” and hence were copy rig htable). Each of defendants’ cards relies o n gr aphics and tex t to convey a humorous messag e throug h the jux taposition o f a n event o f

some sig nificance—a birthday

, Halloween, an e l e c t i o n

— w i th the honey b adg er’s ag g ressive assertion of apathy

. Althoug h the cards may not share the creative artistry of Charles Schulz

or Sandra B oy

n ton, the F irst A mendment protects ex pressive works “ [ e] ven if [ they are] not the e x pressive equal of Anna Karenina or Citizen Kane .” Br o w n , 724 F .3d at 1241. B ecause defendants h ave met their initial burden, the burden shifts to Gordon to raise a triable issue of f a c t as t o a t least one of Rogers ’s two prong s.G O R D O N V

. D R

A P E C R E A T I V E 20

B

Rogers ’s f

irst prong requires proof that defendants’ use o f Gordon’s mark was not “ artistically relevant” to defendants’
g reeting c ards. W e have s a i d that “the level of artistic relevance of the trademark or other identify ing material to the

wor k merely must be above z ero.” I d. at 1243 ( quotation marks a nd a lt e r a t ions omitted). The honey -badg er catchphrase i s c e r tainly relevant to defendants’ cards; the phrase is the punchline on which th e cards’ humor turns. I n six of the seven cards, the front cover sets up an ex pectation that an e vent will be treated as important

, a nd the inside o f the card dispels that e x pectatio n wi t h e ither the HB DC o r HB DGS phrase. The last card, the “ Critter Card,” operates in

reverse: the f

ront cover uses variations of the HB DGS phrase
to establish a n apathetic tone, while the inside convey s that the card’s sender actually cares a b out the r ecipient’s birthday

. 7

But the “artistic relevance” inquiry does not ask only whether a mark is r elevant to the rest of the work; it also a sks whether the mark is r e levant to the defendant’s own artistry

. The use of a mark is artistically relevant if the defendant u ses it for artistic re asons. Conversely

, the use of a mark is not artistically r elevant if the defendant uses it merely to appropriate the g oodwill inhering in the mark or for no reason at all. See Parks v. LaFace Records

, 329 F .3d 437, 453 (6th

7 Def en d an ts’ g reetin g card s g en erally u se a v ariatio n o f th e HB DGS
p h rase—a p h rase th at Go rd on h as n o t reg istered w ith th e P T O. A lth o u g h th e d istin ctio n b etw een th e HB DC an d HB DGS p h rases m ay be m aterial
to w h at Go rd o n m

u st p ro v e u n d er t

h e lik elih o o d- o f

- co n f u sio n test, w e d o

n o t co n sid er i t rel e v a n t f or d eterm in in g w

h eth er h e h as raised a triab le issu e o f f act as to eith er o f Ro gers ’ s tw o p ro n g s.G O R D O N V

. D R

A P E C R E A T I V E 21

Cir. 2003) (finding g e nuine issue of material fact on artisticrelevance pr o n g, where “it would not be u nreasonable to conclude that the titl e Rosa Parks is not relevant to the
content o f the song in question”). Fo r a rtistic relevance to “be above z ero,” the mark must b oth relate to the defendant’s work and the defendant must add his own artistic ex pression bey ond that r epresented by the mark. F or instance, A ndy W a r hol r e p roduced Campbell’s soup c ans in a literal, but artistic, f orm; W arhol took C am p b ell’s mark a nd added his

own artistic ex pression. No one seeing W arhol’s work would think he was merely try ing to appropriate the goodwill i n hering in Campbell’s mark; no one thoug h t W arhol w a s selling soup, just art.

Rogers protects our F irst Amendment interests in artistic works, and defendants’ g reeting cards are among the artistic works the Amendment protects. B ut it can n o t b e that defendants can simply copy a trademark i nto their g reeting cards without adding their own artistic ex pression or elements and claim the same F ir s t A mendment protection a s the orig inal artist. Cf. Parks

, 329 F .3d at 447 (“[ T] h e F irst Amendment cannot permit any one who cries ‘artist’ to have
carte blanche when it comes to n a ming a nd advertising h is o r her works, art thoug h it may b e.”). That would turn trademark law on its head.

Construing the facts in the lig ht most favorable to Gordon, defendants may have merely app r o priated the
g oodwill inhering in Gordon’s mark wit h o u t adding any creativity o f their own. To be sure, defendants’ us e of the HB DC or HB DGS phrases is not a n on sequitur; the phrases make sense in the c o ntex t of defendants’ g reeting cards. B ut there is a t least a triable issue of f a c t a s to whether defendants added t h eir own artistic ex pression, as opposed to justG O R D O N V

. D R

A P E C R E A T I V E 22

copy ing Gordon’s artistic ex pression. Gordon has presented evidence that he sold various products bearing his mark, including g reeting c a r d s ; that his ag ent met with a representative of defendants’ parent corporation to discuss a possible licensing deal; that shortly thereafter, defenda n t s

s t a rted developing their own line of g reeting cards even thoug h their parent corpor at i on had rejected the proposed licensing deal; and that d efendants’ president, who drafted the cards, could not recall what inspired them. More o v e r , the cards themselves use G ordon’s catchphrases in different
way s, and a jury could p ossibly conclude that defendants used the phrases for artistic reasons on one or m o r e c ards but not on others.

These facts disting uish this case from others in w hich the Rogers test barred a

n infring ement c laim as a matter of law. I n Rogers
, the use of Ging er Rog ers’s name w as integ ral to F ellini’s f

ilm. His characters were try ing to be like their American idols, Ging e r and F r ed. The f i l m did not appropriate Ging er’s mark; it came in p r a i s e of her craft, celebrating Rog ers and A staire’s “eleg an c e and class” a nd contrasting it with the “g audine s s and banality o f contemporary television.” Rogers
, 875 F .2 d a t 1001. The film’s title was “not a d isg uised a dvertisement for the sale o f
g oods or services or a collateral c o mmercial product.” Id. at 1004–05.

The junior users in our B arbie c a s e s a l so viewed B arbie

as a cultural icon, even if they d id n ot treat her with the same adulation that F ellini d id Rog ers. W alking Mou n t ain
, 353 F

. 3d a t 802 (“To sell its product, Mattel uses associations of beauty

, wealth, and g lamour. F o rsy the turns this imag e on its head

. . . [ to] transform B arbie’ s meaning .”); MCA Records

, 2 96 F .3d at 901 (“The song pokes fun at B arbie a ndG O R D O N V

. D R

A P E C R E A T I V E 23

the values that Aqua contends she r epresents.”). I n Twentieth Century Fox
, the use of the word “Empire” as the title for the television series convey ed a raft of meaning s: “Empire” was

a “common E ng lish word” relevant to the show’s set t ing (New York) a

nd its subject matter (a music and entertainment
cong lomerate). 875 F

. 3d a t 1198. And in our video g ame cases, the borrowed mark was part of a much larg e r contex t. I n Bro w n , J im B rown w as one of “thousands of current a nd former NF L play ers” appearing i n the g ame, 724 F .3d at 1244, while in E.S.S.
, the Pig Pen was just one o f m any fictional building s and landmarks in a “ cartoon-sty le parody ” of a neig hborhood in L os Ang e les, 547 F .3d at 1100.

I n short, in all of our prior c ases it was clear that the mark
at issu e w as relevant to the junior user’s work and that the junior user employ ed the m a r k in the junior u ser’s o wn artistic ex pression. Here, however, there is ev i d e n c e that defendants simply used G ordon’s mark in the same way that Gordon was using it—to make humorous g reeting c a r d s in which the bottom line is “Honey B adg er don’t care.” A jury could f ind that defendants’ cards are only intellig ible to readers familiar with Gordon’s vi d e o a nd deliberately trade on the g oodwill associated with his brand. Defendants have
arg uably not u sed the HB DC or H B D GS phrases in any way that disting uishes their use from Gordon’s and thus have not “imbued” their product with any “ex pressive value” apart from th a t c ontained in Gordon’s trademarked phrase. MCA Record s , 2 9 6 F .3d at 900. W e cannot resolve whether d efendants’ use of Gordon’s mark is artistically relevant t oG O R D O N V

. D R

A P E C R E A T I V E 24

their cards as a matter of law. This presents a question of fact that a jury

must decide. 8

At trial, the district c ourt should instruct the jury on the likelihood-of-confusion test, as in any infring ement case. I n addition, the court should instruct the jury that de f e n dants have shown that their g reeting cards are protec t e d u n d er the F irst Amendment and that Gordon must there fore prove an additional element to succee d o n his claim. The jury may only find f

o r Gordon if h e proves by a p reponderance of the evidence that defendants’ u s e o f his mark is ( 1) not artistically r elevant to t h eir g reeting cards or (2) ex plicitly

m i s l e a ding as to the source or c ontent of the car d s

. Defendants’ use of the mark is artistically relevant if the mark relates to defendants’ work a nd defendants’ added their o wn artistic ex pression bey ond tha t represented by the mark. Defendants’ use of the mark is not artistically r e l e vant if d e f e n d a n t s m e r e l y a p p r o p r i a t e d wh a t e v e r go o d w i l l

consumers associate with the mark w ithout a dding their o wn artistic ex pression or elements. D efendants’ use of the mark i s e x plicitly misleading only if it ex plicitly misle a d s

consumers into believing that Gordon sponsor ed or is somehow associated with defendants’ c ards. Simply u sing the mark is not enoug h. There must be something else about

8 In lig h t of o u r h o ld in g , w e n eed n ot reach Ro g ers ’ s seco n d
p ro n g —i.e., w

h eth er d ef

en d an ts’ u se o f th e m ark is ex p licitly m islead in g

. A s d iscu ssed ab o v e, Go rd o n n eed o n ly raise a t r iab le issu e o f f act as to

o n e of Ro gers ’ s p ro n g s to ev ad e su m m ary j u d g m en t. T o su cceed o n h is L an h am A c t claim at t

rial, h e w ill n eed to p ro v e b o th a lik elih o o d of

co n f u s io n an d at least on e of Ro gers ’ s p ro n g s

. T h at is, h e w ill n eed to p ro v e eith er a lik elih o od o f co n f u sio n an d th e ab sen ce o f an y a r tistic relev an ce o r a l i ke l i h o o d o f co n f u sio n an d t

h at d ef en dan ts’ u se o f th e

m ark is ex p licitly

m islead in g

.G O R D O N V

. D R

A P E C R E A T I V E 25

the cards that ex plicitly misleads consumers into believing that Gordon sponsored or is associated with the cards. 9

V

F or the foreg oin g r e a s o n s, we REVERSE and REMAND
to the district c o u r t for f urther proceeding s consistent with this opinion.

9 W e n o te th at t

h e d istrict co u rt h as n ot y et ad d ressed th e lik elih o od

o f

- co n f u sio n test o r d ef

en d an t s’ ab an d o n

m en t d ef en s e. W e ex pres s n o

o p in io n o n th o s e issu es an d leav e th em f or th e d istrict co u rt to ad d ress in th e f irst in stan ce.