FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

CHRISTOPHER GORDON, an

individual,

Plaintiff-Appellant,

v.

DRAPE CREATIVE, INC., a Missouri

corporation; PAPYRUS-RECYCLED

GREETINGS, INC., an Illinois

corporation,

Defendants-Appellees.

No. 16-56715

D.C. No.

2:15-cv-04905-

JFW-PLA

OPINION

Appeal from the United States District Court

for the Central District of California

John F. Walter, District Judge, Presiding

Argued and Submitted April 9, 2018

Pasadena, California

Filed July 30, 2018

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

and Paul J. Watford, Circuit Judges.

Opinion by Judge Bybee

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

U.S. Court of Appeals for the Sixth Circuit, sitting by designation.
2 GORDON V. DRAPE CREATIVE

SUMMARY**

Trademark

The panel reversed the district court’s grant of summary

judgment in favor of defendants in a trademark infringement

suit under the Lanham Act.

Defendants designed and produced greeting cards using

“Honey Badger” catchphrases from plaintiff Christopher

Gordon’s YouTube video.

Under the Rogers test, the Lanham Act applies to

expressive works only where the public interest in avoiding

consumer confusion outweighs the public interest in free

expression. This balance will normally not support

application of the Act unless the use of the mark has no

artistic relevance to the underlying work whatsoever or

explicitly misleads consumers as to the source or the content

of the work.

The panel held that there was a triable issue of fact

because a jury could determine that defendants did not add

any value protected by the First Amendment, but merely

appropriated the goodwill associated with Gordon’s mark. 

The panel reversed the district court and remanded for further

proceedings on Gordon’s claims.

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

been prepared by court staff for the convenience of the reader.
GORDON V. DRAPE CREATIVE 3

COUNSEL

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

Smith, Encino, California, for Plaintiff-Appellant.

Douglas J. Collodel (argued), Kanika D. Corley, and James

J.S. Holmes, Sedgwick LLP, Los Angeles, California, for

Defendants-Appellees.

OPINION

BYBEE, Circuit Judge:

Plaintiff Christopher Gordon is the creator of a popular

YouTube video known for its catchphrases “Honey Badger

Don’t Care” and “HoneyBadger Don’t Give a S---.” Gordon

has trademarked the former phrase for various classes of

goods, including greeting cards. Defendants Drape Creative,

Inc. (“DCI”), and Papyrus-Recycled Greetings, Inc. (“PRG”),

designed and produced greeting cards using both phrases with

slight variations. Gordon brought this suit for trademark

infringement, and the district court granted summary

judgment for defendants, holding that Gordon’s claims were

barred by the test set forth in Rogers v. Grimaldi, 875 F.2d

994 (2d Cir. 1989).

We use the Rogers test to balance the competing interests

at stake when a trademark owner claims that an expressive

work infringes on its trademark rights. The test construes the

Lanham Act to apply to expressive works “only where the

public interest in avoiding consumer confusion outweighs the

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

balance will normally not support application of the Act,
4 GORDON V. DRAPE CREATIVE

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

underlying work whatsoever, or . . . explicitly misleads

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

The Rogers test is not an automatic safe harbor for any

minimally expressive work that copies someone else’s mark. 

Although on every prior occasion in which we have applied

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

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

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

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

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

A jury could determine that defendants did not add any value

protected by the First Amendment but merely appropriated

the goodwill associated with Gordon’s mark. We therefore

reverse the district court’s grant of summary judgment and

remand for further proceedings on Gordon’s claims.

I

Plaintiff Christopher Gordon is a comedian, writer, and

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

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

studio. DCI works exclusively with American Greetings

Corporation and its subsidiaries, which include the other

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

manufacturer and distributor.

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

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

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

Cir. 2016).
GORDON V. DRAPE CREATIVE 5

A

In January 2011, under the name Randall, Gordon posted

a video on YouTube titled The Crazy Nastyass Honey

Badger, featuring National Geographic footage of a honey

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

Gordon repeats variations of the phrases “Honey Badger

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

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

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

convention.

Gordon’s video quickly generated millions of views on

YouTube and became the subject of numerous pop-culture

references in television shows, magazines, and social media. 

As early as February 2011, Gordon began producing and

selling goods with the HBDC or HBDGS phrases, such as

books, wall calendars, t-shirts, costumes, plush toys, mouse

pads, mugs, and decals. Some of the items were sold online;

others were sold through national retailers such as Wal-Mart,

Target, Urban Outfitters, and Hot Topic. In June 2011,

Gordon copyrighted his video’s narration under the title

Honey Badger Don’t Care, and in October 2011, he began

filing trademark applications for the HBDC phrase for

various classes of goods. The Patent and Trademark Office

(“PTO”) eventually registered “Honey Badger Don’t Care”

for International Classes 9 (audio books, etc.), 16 (greeting

cards, etc.), 21 (mugs), 25 (clothing), and 28 (Christmas
6 GORDON V. DRAPE CREATIVE

decorations, dolls, etc.).2 However, Gordon never registered

the HBDGS phrase for any class of goods.

At the peak of his popularity, Gordon promoted his brand

on television and radio shows and in interviews with national

publications such as Forbes, The Wall Street Journal, and

The Huffington Post. His brand was further boosted by

celebrities like Taylor Swift and Anderson Cooper quoting

his video and by LSU football players tagging their

teammate, Heisman Trophy finalist Tyrann Mathieu, with the

moniker “Honey Badger” for his aggressive defensive play. 

In November 2011, Advertising Age referred to Gordon’s

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

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

B

In January 2012, Gordon hired Paul Leonhardt to serve as

his licensing agent. Soon thereafter, Leonhardt contacted

Janice Ross at American Greetings—the parent company of

defendant PRG—to discuss licensing honey-badger themed

greeting cards. Leonhardt and Ross had multiple email

exchanges and conversations over several weeks. Ross at one

point expressed some interest in a licensing agreement,

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

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

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

2 Between January 2013 and April 2014, the PTO issued registrations

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

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

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

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

inquiry.
GORDON V. DRAPE CREATIVE 7

some key colleagues of mine on board the Crazy Honey

Badger Bandwagon.” Nevertheless, neither American

Greetings nor defendants ever signed a licensing agreement

with Gordon.

Leonhardt did eventually secure several licensing deals

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

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

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

Company for various honey-badger themed products,

including greeting cards. RHB also entered into licensing

agreements with other companies for honey-badger costumes,

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

things. HBDC and HBDGS were the two most common

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

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

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

Birthday.”

At the same time that Gordon was negotiating licensing

agreements with Zazzle and Duck, defendants began

developing their own line of unlicensed honey-badger

greeting cards. Beginning in June 2012, defendants sold

seven different greeting cards using the HBDC or HBDGS

phrases with small variations:

• The fronts of two “Election Cards”

showed a picture of a honey badger

wearing a patriotic hat and stated “The

Election’s Coming.” The inside of one

card said “Me and Honey Badger don’t

give a $#%@! Happy Birthday,” and the

inside of the other said “Honey Badger

and me just don’t care. Happy Birthday.”
8 GORDON V. DRAPE CREATIVE

• The fronts of two “Birthday Cards”

featured different pictures of a honey

badger and stated either “It’s Your

Birthday!” or “Honey Badger Heard It’s

Your Birthday.” The inside of both cards

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

• The fronts of two “Halloween Cards”

showed a picture of a honey badger

next to a jack-o-lantern and stated

“Halloween is Here.” The inside of the

cards said either “Honey Badger don’t

give a $#*%!” or “Honey Badger don’t

give a s---.”

• A “Critter Card” employed a Twitter-style

format showing a series of messages from

“Honey Badger@don’tgiveas---.” The

front stated “Just killed a cobra. Don’t

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

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

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

Birthday’s here. . . I give a s---.”

The back cover of each card displayed the mark for

“Recycled Paper Greetings” and listed the websites

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

3

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

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

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

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

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

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

to eat for the next few weeks? Cobra.”
GORDON V. DRAPE CREATIVE 9

President testified that he drafted all of the cards in question

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

claimed to have never heard of a video involving a honey

badger.

In June 2015, Gordon filed the instant action against DCI

and PRG, alleging trademark infringement under the Lanham

Act, among other claims. The district court granted summary

judgment for defendants, holding that defendants’ greeting

cards were expressive works, and applying the Rogers test to

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

II

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

comprehensive framework for regulating the use of

trademarks and protecting them against infringement,

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

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

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

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

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

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

THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS &

UNFAIR COMPETITION § 2:2 (5th ed.) (explaining the dual

purposes of trademark law).

Under the Act, the owner of a trademark used in

commerce may register the mark with the PTO. Registration

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

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

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

Walking Mountain Prods., 353 F.3d 792, 806 (9th Cir. 2003).
10 GORDON V. DRAPE CREATIVE

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

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

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

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

commerce any reproduction, counterfeit, copy, or colorable

imitation of a registered mark in connection with the sale,

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

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

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

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

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

description of fact, or false or misleading representation of

fact,” irrespective of registration).

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

claims brought under the Lanham Act. Twentieth Century

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

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

353 F.3d 792, 806–07 (9th Cir. 2003). The likelihood-ofconfusion test requires the plaintiff to prove two elements:

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

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

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

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

comfortable balance” between the Lanham Act and the First

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

894, 900 (9th Cir. 2002).

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

expressed concern that “the traditional test fails to account for

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

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

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

adopted the Second Circuit’s Rogers test to strike an
GORDON V. DRAPE CREATIVE 11

appropriate balance between First Amendment interests in

protecting artistic expression and the Lanham Act’s purposes

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

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

avoiding consumer confusion outweighs the public interest in

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

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

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

artistically relevant to the work or (2) explicitly misleads

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

at 902. Effectively, Rogers employs the First Amendment as

a rule of construction to avoid conflict between the

Constitution and the Lanham Act.

We pause here to clarify the burden of proof under the

Rogers test. The Rogers test requires the defendant to come

forward and make a threshold legal showing that its allegedly

infringing use is part of an expressive work protected by the

First Amendment. If the defendant successfully makes that

threshold showing, then the plaintiff claiming trademark

infringement bears a heightened burden—the plaintiff must

satisfy not only the likelihood-of-confusion test but also at

least one of Rogers’s two prongs. Cf. Makaeff v. Trump

Univ., LLC, 715 F.3d 254, 261 (9th Cir. 2013) (if a defendant

meets its “initial burden” of showing a First Amendment

interest, then a public-figure plaintiff claiming defamation

must meet a “heightened standard of proof” requiring a

showing of “actual malice”). That is, when the defendant

demonstrates that First Amendment interests are at stake, the

plaintiff claiming infringement must show not only (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 either not artistically relevant to the
12 GORDON V. DRAPE CREATIVE

underlying work or explicitly misleads consumers as to the

source or content of the work.

“Summary judgment may properly be entered only

against a party who has failed to make a showing sufficient

to establish a genuine dispute as to the existence of an

element essential to his case and upon which the party will

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

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

defendant moves for summary judgment and has

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

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

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

other words, to evade summary judgment, the plaintiff must

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

artistically relevant to the underlying work or explicitly

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

III

Before applying the Rogers test to the instant case, we

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

development in our court.5 We have applied the Rogers test

on five separate occasions, and each time we have concluded

that it barred the trademark infringement claim as a matter of

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

trademark in the title of an expressive work. Two cases

involved trademarks in video games and extended the Rogers

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

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

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

Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 665 (5th

Cir. 2000).
GORDON V. DRAPE CREATIVE 13

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

work.

A

The Rogers case concerned the movie Ginger and Fred,

a story of two fictional Italian cabaret performers who

imitated the famed Hollywood duo of Ginger Rogers and

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

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

gave the false impression that the film—created and directed

bywell-known filmmaker Federico Fellini—was about her or

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

granted summary judgment for the defendant film producers. 

Id.

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

First Amendment concerns do not insulate titles of artistic

works from all Lanham Act claims, such concerns must

nonetheless inform our consideration of the scope of the Act

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

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

artistic works only where the public interest in avoiding

consumer confusion outweighs the public interest in free

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

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

a celebrity’s name, that balance will normally not support

application of the Act unless [1] the title has no artistic

relevance to the underlying work whatsoever, or, [2] if it has

some artistic relevance, unless the title explicitly misleads as

to the source or the content of the work.” Id.

With respect to artistic relevance, the Second Circuit

found that the names “Ginger” and “Fred” were “not
14 GORDON V. DRAPE CREATIVE

arbitrarily chosen just to exploit the publicity value of their

real life counterparts” but had “genuine relevance to the

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

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

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

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

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

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

Any risk that the title would mislead consumers was

“outweighed by the danger that suppressing an artistically

relevant though ambiguous title will unduly restrict

expression.” Id. The Second Circuit therefore affirmed

summary judgment for the defendant film producers. Id. at

1005.

B

We first employed the Rogers test in MCA Records,

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

Danish band Aqua. The song—which lampooned the values

and lifestyle that the songwriter associated with Barbie

dolls—involved one band-member impersonatingBarbie and

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

the manufacturer of Barbie dolls, sued the producers and

distributors of “Barbie Girl” for infringement under the

Lanham Act, and the district court granted summary

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

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

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

underlying work because the song was “about Barbie and the

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

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

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

might be associated with the song [was] the use of Barbie in
GORDON V. DRAPE CREATIVE 15

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

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

nullity.” Id. Because the Barbie mark was artistically

relevant to the song and not explicitly misleading, we

concluded that the band could not be held liable for

infringement.

We applied the Rogers test to another suit involving

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

photographer Thomas Forsythe developed a series of

photographs titled “Food Chain Barbie” depicting Barbie

dolls or parts of Barbie dolls in absurd positions, often

involving kitchen appliances. Id. at 796. Forsythe described

the photographs as critiquing “the objectification of women

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

infringed its trademark and trade dress, but we affirmed

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

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

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

relevant to his work because his photographs depicted Barbie

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

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

indication that Mattel in any way sponsored the photographs. 

Id.

Most recently, we applied the Rogers test in Twentieth

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

Fox produced the television show Empire, which revolved

around a fictional hip-hop record label named “Empire

Enterprises.” Id. at 1195. Empire Distribution, an actual hiphop record label, sent Twentieth Century Fox a cease-anddesist letter, and Twentieth Century Fox sued for a

declaratory judgment that its show did not violate Empire’s

trademark rights. Id. In affirming summary judgment for
16 GORDON V. DRAPE CREATIVE

Twentieth Century Fox, we rejected Empire’s argument that

“the Rogers test includes a threshold requirement that a mark

have attained a meaning beyond its source-identifying

function.”6Id. at 1197. Whether a mark conveys a meaning

beyond identifying a product’s source is not a threshold

requirement but only a relevant consideration: “trademarks

that transcend their identifying purpose are more likely to be

used in artistically relevant ways,” but such transcendence is

not necessary to trigger First Amendment protection. Id. at

1198 (quotation marks and citation omitted).

We concluded that Empire could not satisfyRogers’s first

prong because Twentieth Century Fox “used the common

English word ‘Empire’ for artistically relevant reasons,”

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

State) and its subject matter was an entertainment

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

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

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

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

confuse consumers as to the source, sponsorship or content of

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

“explicitly misl[ed] consumers.” Id. at 1199. Because

Twentieth Century Fox’s Empire show contained “no overt

claims or explicit references to Empire Distribution,” we

found that Empire could not satisfy Rogers’s second prong. 

Id. Empire’s inability to satisfy either of Rogers’s two prongs

meant that it could not prevail on its infringement claim.

6 We explained in MCA Records that trademarks sometimes

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

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

of quality or “Band-Aid” for any quick fix.
GORDON V. DRAPE CREATIVE 17

C

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

Ent’mt 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095,

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

manufactured and distributed the video game Grand Theft

Auto: San Andreas, which took place in a fictionalized

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

neighborhoods—East Los Santos—“lampooned the seedy

underbelly” of East Los Angeles by mimicking its businesses

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

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

Entertainment 2000, which operates the Play Pen

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

Rockstar’s depiction of the Pig Pen infringed its trademark

and trade dress. Id.

We recognized that the Rogers test was developed in a

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

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

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

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

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

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

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

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

concluded that the game did not explicitly mislead as to the

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

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

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

consumer would not think a company that owns one strip club

in East Los Angeles . . . also produces a technologically

sophisticated video game.” Id. at 1100–01. Because ESS
18 GORDON V. DRAPE CREATIVE

Entertainment 2000 could not demonstrate either of Rogers’s

two prongs, we affirmed summary judgment for Rockstar.

Another video-game case dealt with the Madden NFL

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

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

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

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

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

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

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

need only exceed zero and found it was “obvious that

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

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

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

did not produce a game called Jim Brown Presents Pinball

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

produced a football game featuring likenesses of thousands of

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

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

confuse Madden NFL players into thinking that Brown is

somehow behind the games or that he sponsors EA’s

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

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

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

defendant was proper.

IV

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

was such that no reasonable jury could have found for the

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

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

matter of law. This case, however, demonstrates Rogers’s
GORDON V. DRAPE CREATIVE 19

outer limits. Although defendants’ greeting cards are

expressive works to which Rogers applies, there remains a

genuine issue of material fact as to at least Rogers’s first

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

their greeting cards is artistically relevant.

A

As a threshold matter, we have little difficulty

determining that defendants have met their initial burden of

demonstrating that their greeting cards are expressive works

protected under the First Amendment. As we have previously

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

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

circumstances the likelihood was great that the message

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

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

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

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

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

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

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

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

humorous message through the juxtaposition of an event of

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

the honey badger’s aggressive assertion of apathy. Although

the cards may not share the creative artistry of Charles Schulz

or Sandra Boynton, the First Amendment protects expressive

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

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

Because defendants have met their initial burden, the burden

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

one of Rogers’s two prongs.
20 GORDON V. DRAPE CREATIVE

B

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

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

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

relevance of the trademark or other identifying material to the

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

marks and alterations omitted). The honey-badger

catchphrase is certainly relevant to defendants’ cards; the

phrase is the punchline on which the cards’ humor turns. In

six of the seven cards, the front cover sets up an expectation

that an event will be treated as important, and the inside of

the card dispels that expectation with either the HBDC or

HBDGS phrase. The last card, the “Critter Card,” operates in

reverse: the front cover uses variations of the HBDGS phrase

to establish an apathetic tone, while the inside conveys that

the card’s sender actually cares about the recipient’s

birthday.

7

But the “artistic relevance” inquiry does not ask only

whether a mark is relevant to the rest of the work; it also asks

whether the mark is relevant to the defendant’s own artistry. 

The use of a mark is artistically relevant if the defendant uses

it for artistic reasons. Conversely, the use of a mark is not

artistically relevant if the defendant uses it merely to

appropriate the goodwill inhering in the mark or for no reason

at all. See Parks v. LaFace Records, 329 F.3d 437, 453 (6th

7 Defendants’ greeting cards generally use a variation of the HBDGS

phrase—a phrase that Gordon has not registered with the PTO. Although

the distinction between the HBDC and HBDGS phrases may be material

to what Gordon must prove under the likelihood-of-confusion test, we do

not consider it relevant for determining whether he has raised a triable

issue of fact as to either of Rogers’s two prongs.
GORDON V. DRAPE CREATIVE 21

Cir. 2003) (finding genuine issue of material fact on artisticrelevance prong, where “it would not be unreasonable to

conclude that the title Rosa Parks is not relevant to the

content of the song in question”). For artistic relevance to

“be above zero,” the mark must both relate to the defendant’s

work and the defendant must add his own artistic expression

beyond that represented by the mark. For instance, Andy

Warhol reproduced Campbell’s soup cans in a literal, but

artistic, form; Warhol took Campbell’s mark and added his

own artistic expression. No one seeingWarhol’s work would

think he was merely trying to appropriate the goodwill

inhering in Campbell’s mark; no one thought Warhol was

selling soup, just art.

Rogers protects our First Amendment interests in artistic

works, and defendants’ greeting cards are among the artistic

works the Amendment protects. But it cannot be that

defendants can simply copy a trademark into their greeting

cards without adding their own artistic expression or elements

and claim the same First Amendment protection as the

original artist. Cf. Parks, 329 F.3d at 447 (“[T]he First

Amendment cannot permit anyone who cries ‘artist’ to have

carte blanche when it comes to naming and advertising his or

her works, art though it may be.”). That would turn

trademark law on its head.

Construing the facts in the light most favorable to

Gordon, defendants may have merely appropriated the

goodwill inhering in Gordon’s mark without adding any

creativity of their own. To be sure, defendants’ use of the

HBDC or HBDGS phrases is not a non sequitur; the phrases

make sense in the context of defendants’ greeting cards. But

there is at least a triable issue of fact as to whether defendants

added their own artistic expression, as opposed to just
22 GORDON V. DRAPE CREATIVE

copying Gordon’s artistic expression. Gordon has presented

evidence that he sold various products bearing his mark,

including greeting cards; that his agent met with a

representative of defendants’ parent corporation to discuss a

possible licensing deal; that shortly thereafter, defendants

started developing their own line of greeting cards even

though their parent corporation had rejected the proposed

licensing deal; and that defendants’ president, who drafted the

cards, could not recall what inspired them. Moreover, the

cards themselves use Gordon’s catchphrases in different

ways, and a jury could possibly conclude that defendants used

the phrases for artistic reasons on one or more cards but not

on others.

These facts distinguish this case from others in which the

Rogers test barred an infringement claim as a matter of law. 

In Rogers, the use of Ginger Rogers’s name was integral to

Fellini’s film. His characters were trying to be like their

American idols, Ginger and Fred. The film did not

appropriate Ginger’s mark; it came in praise of her craft,

celebrating Rogers and Astaire’s “elegance and class” and

contrasting it with the “gaudiness and banality of

contemporary television.” Rogers, 875 F.2d at 1001. The

film’s title was “not a disguised advertisement for the sale of

goods or services or a collateral commercial product.” Id. at

1004–05.

The junior users in our Barbie cases also viewed Barbie

as a cultural icon, even if they did not treat her with the same

adulation that Fellini did Rogers. Walking Mountain,

353 F.3d at 802 (“To sell its product, Mattel uses associations

of beauty, wealth, and glamour. Forsythe turns this image on

its head . . . [to] transform Barbie’s meaning.”); MCA

Records, 296 F.3d at 901 (“The song pokes fun at Barbie and
GORDON V. DRAPE CREATIVE 23

the values that Aqua contends she represents.”). In Twentieth

Century Fox, the use of the word “Empire” as the title for the

television series conveyed a raft of meanings: “Empire” was

a “common English word” relevant to the show’s setting

(New York) and its subject matter (a music and entertainment

conglomerate). 875 F.3d at 1198. And in our video game

cases, the borrowed mark was part of a much larger context. 

In Brown, Jim Brown was one of “thousands of current and

former NFL players” appearing in the game, 724 F.3d at

1244, while in E.S.S., the Pig Pen was just one of many

fictional buildings and landmarks in a “cartoon-style parody”

of a neighborhood in Los Angeles, 547 F.3d at 1100.

In short, in all of our prior cases it was clear that the mark

at issue was relevant to the junior user’s work and that the

junior user employed the mark in the junior user’s own

artistic expression. Here, however, there is evidence that

defendants simply used Gordon’s mark in the same way that

Gordon was using it—to make humorous greeting cards in

which the bottom line is “Honey Badger don’t care.” A jury

could find that defendants’ cards are only intelligible to

readers familiar with Gordon’s video and deliberately trade

on the goodwill associated with his brand. Defendants have

arguably not used the HBDC or HBDGS phrases in any way

that distinguishes their use from Gordon’s and thus have not

“imbued” their product with any “expressive value” apart

from that contained in Gordon’s trademarked phrase. MCA

Records, 296 F.3d at 900. We cannot resolve whether

defendants’ use of Gordon’s mark is artistically relevant to
24 GORDON V. DRAPE CREATIVE

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

that a jury must decide.8

At trial, the district court should instruct the jury on the

likelihood-of-confusion test, as in any infringement case. In

addition, the court should instruct the jury that defendants

have shown that their greeting cards are protected under the

First Amendment and that Gordon must therefore prove an

additional element to succeed on his claim. The jury may

only find for Gordon if he proves by a preponderance of the

evidence that defendants’ use of his mark is (1) not

artistically relevant to their greeting cards or (2) explicitly

misleading as to the source or content of the cards. 

Defendants’ use of the mark is artistically relevant if the mark

relates to defendants’ work and defendants’ added their own

artistic expression beyond that represented by the mark. 

Defendants’ use of the mark is not artistically relevant if

defendants merely appropriated whatever goodwill

consumers associate with the mark without adding their own

artistic expression or elements. Defendants’ use of the mark

is explicitly misleading only if it explicitly misleads

consumers into believing that Gordon sponsored or is

somehow associated with defendants’ cards. Simply using

the mark is not enough. There must be something else about

8

In light of our holding, we need not reach Rogers’s second

prong—i.e., whether defendants’ use of the mark is explicitly misleading. 

As discussed above, Gordon need only raise a triable issue of fact as to

one of Rogers’s prongs to evade summary judgment. To succeed on his

Lanham Act claim at trial, he will need to prove both a likelihood of

confusion and at least one of Rogers’s prongs. That is, he will need to

prove either a likelihood of confusion and the absence of any artistic

relevance or a likelihood of confusion and that defendants’ use of the

mark is explicitly misleading.
GORDON V. DRAPE CREATIVE 25

the cards that explicitly misleads consumers into believing

that Gordon sponsored or is associated with the cards.9

V

For the foregoing reasons, we REVERSE and REMAND

to the district court for further proceedings consistent with

this opinion.

9 We note that the district court has not yet addressed the likelihoodof-confusion test or defendants’ abandonment defense. We express no

opinion on those issues and leave them for the district court to address in

the first instance.