Ninth Circuit’s “Honey Badger” Ruling Could Impact the Internet

The Ninth Circuit Court of Appeals recently held that the creator of a YouTube video had the right to pursue a trademark infringement claim against two companies…

On July 30, 2018, the U.S. Ninth Circuit Court of Appeals in San Francisco held the creator of a popular YouTube video could pursue a trademark infringement claim against two companies that used phrases from the video to produce a series of greeting cards without the creator’s permission.

Christopher Gordon, who creates YouTube videos under the name “Randall,” posted the video in question back in 2011. It utilized footage from National Geographic of a honey badger pursuing and eating other animals. Gordon recorded his own narration over the footage, in which he coined a number of catchphrases, including “Honey Badger Don’t Care” (HBDC) and “Honey Badger Don’t Give a S—” (HBDGS).

Gordon’s video quickly gained popularity among YouTube viewers and led him to pursue a number of marketing opportunities using his catchphrases. In October 2011, Gordon applied for a federal trademark to use the “Honey Badger Don’t Care” phrase on a variety of merchandise, including greeting cards. In 2012, Gordon signed licensing deals to feature HBDC on a line of greeting cards with two companies.

Meanwhile, Missouri-based Drape Creative, Inc., and Illinois-based Papyrus-Recycled Greetings, Inc., developed their own greeting cards using variations of the HBDC and HBDGS phrases.

Gordon subsequently sued Drape and Papyrus-Recycled in federal court alleging violations of the Lanham Act, which prohibits trademark infringement. Among other provisions, the Lanham Act permits trademark owners to sue companies whose goods are “likely to cause confusion” among consumers between trademarked and non-trademarked products. At the same time, the Lanham Act does not prohibit “artistic expression” related to trademarks, which are protected under the First Amendment.

In the present litigation, U.S. District Judge John F. Walter granted summary judgment to Drape and Papyrus-Recycled, holding their greeting cards were protected artistic expression. On appeal, the Ninth Circuit disagreed, explaining that the two companies “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.” Given this, a jury could find the companies violated the Lanham Act, making summary judgment inappropriate.

The Ninth Circuit went on to say that at trial, the burden of proof is on Gordon to prove that Drape and Papyrus-Recycled’s use of his trademarked phrases are “not artistically relevant to their greeting cards” or “explicitly misleading as to the source and content of the cards.”

San Francisco business law and intellectual property attorney Milla L. Lvovich said the Ninth Circuit’s decision serves as an important reminder that trademark law continues to apply even in the digital age. “We’re so used to viewing content for ‘free’ on services like YouTube, we forget that online creators have the same intellectual property rights as traditional publishers. And while the Constitution protects everyone’s right to artistic expression, it is important to remember that online does not mean ‘public domain.’ If you appropriate someone else’s content for your own commercial use, you must get permission first.”

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