The Ninth Circuit don’t care: successful Rogers defense reversed because plaintiff’s trademark is “artistic”

Gordon v. Drape
Creative, Inc., No. 16-56715 (9th Cir. Jul. 30, 2018)
The Ninth Circuit
routinely invents some new epicycle for trademark defenses; here it unfortunately
mushes together Rogers and
transformativeness (absent the word itself, replaced with “artistic”).  There are a number of good reasons why a
trademark right is not the same thing as copyright in an artistic work.  [See also: there’s no copyright in short
phrases, and an artistic work can’t be a trademark for itself.]  This opinion unfortunately does not appreciate
those distinctions, creating a sort of tradecopymarkright, the kind of thing Dastar cautioned against.
Gordon is the
creator of a popular YouTube video known for its catchphrases “Honey Badger Don’t
Care” and “Honey Badger Don’t Give a S—.” He registered the former phrase as
a trademark for various classes of goods, including greeting cards. Defendants made
greeting cards using both phrases. The district court granted summary judgment on
Gordon’s trademark claims for defendants, using Rogers v. Grimaldi, 875 F.2d 994
(2d Cir. 1989).  The court of appeals
reversed.
The court of appeals
found a triable issue of fact on artistic relevance: “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.”  What has happened here is that
the word “relevance” has been ignored, and “artistic” has been reinterpreted as
a thing that the defendant must add
to the original, rather than having a meaning-based relationship between the
original and the accused work.  I don’t
understand why “Barbie” wasn’t just “pasted” multiple times into Barbie Girl, etc.—the court has some definition
of “pasting” that includes “forming a joke around” but not “forming a song
around.” 
What’s really going
on here is a denigration of the greeting cards as works—protected by the First
Amendment, yes, but not real works like songs, photos, video games, etc.  This is not without irony given the ways
these classes of works have been denigrated in the past, but it also speaks to
the confidence courts have in making judgments about how much art is in a work, which they seem to think differs from judgments
about merit.  And therein lies a deeper
irony, which is that trademarks are one prominent example of how lots of
meaning can be concentrated in small semantic/symbolic units.  Hamlet
these cards ain’t, but they shouldn’t need to be, and it seems to me that, as
with cockfighting
in Bali
, one could perform a pretty serious reading of current American
culture using these greeting cards.  The
court of appeals basically doesn’t think that defendants did anything more than
tell the same joke that Gordon did.  Ok,
but it’s still a joke that has nontrademark meaning, and preserving the freedom
to engage in that kind of expression is the point of Rogers.
The court of appeals
found that the defendant had met its initial burden of showing that the
allegedly infringing work was part of an expressive work protected by the First
Amendment [pause for the usual sigh: the court means noncommercial speech,
since commercial speech is also usually expressive].  The burden shifted to the plaintiff to show
not only likelihood of confusion but also at least one of Rogers’ two prongs: explicit misleadingness or lack of artistic
relevance.
The greeting cards
were, of course, expressive works: “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.” 
The level of necessary artistic relevance must merely be “above
zero.”  If this weren’t the Ninth
Circuit, it would be startling for the next sentence to be in a case that finds
a triable issue of fact: “The honey-badger catchphrase is certainly relevant to
defendants’ cards; the phrase is the punchline on which the cards’ humor turns.”
Unlike every Rogers inquiry up until now (including Parks), the court continues: “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.” [Citation needed.] How do we define relevance?  “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.” [A key problem here is
that “to appropriate the goodwill” isn’t the opposite of “for artistic reasons”—what
the court is really doing is importing transformativeness from the right of
publicity defense to Rogers, which I
can’t see as a benefit, especially given the mess it further makes of the video
game cases, which I would’ve thought couldn’t get worse. Silly me.  Also, “to appropriate the goodwill” sounds
worryingly intent-based, though the court isn’t clear on this, and Rogers itself was supposed to draw a
line between “to invoke the cultural significance of” and “to infringe” which
is now apparently infinitely regressed into the test.  Suppose the defendants credibly testify that
the purpose of the use was to create a joke that felt contemporary and
casual.  Is that “artistic”?]
The court continues:
“[f]or 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.” 
[Apparently original artwork and minimal jokery does not qualify as
artistic expression as a matter of law; I would have thought it should.]  For example, “[n]o one seeing Warhol’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.” [And what
do they think defendants are selling? 
Trademarks?  Unsurprisingly, here
we also have evidence-free judicial factfinding about consumer perceptions of Warhol—a
hallmark, no pun intended, of transformativeness cases. Also, if you can
plausibly explain to me why Andy Warhol is not “simply”
copying the soup cans
but defendants here might be, in a way that doesn’t
rely on Andy Warhol’s own (partially soup-generated) fame, I will knit you a
sweater from very nice wool. Warhol
famously (like
honey badger itself) didn’t
care
, and much critical reaction at the time thought he was making nonsense;
the canvases
sold badly
.  Query what would happen
if Richard Prince invested in defendants today.]
Next, the court treats
the trademark owner as an “artist” even though it is beyond peradventure that
the trademark laws are not about creativity: “[I]t 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. That would turn trademark law on its head.” [This would
only be true if you assume that all trademarks are “artwork” and ignore
“source-indicating use” as a meaningful limitation on trademark protection—the
latter of which, in fairness, is the modern US trend, even if it shouldn’t be
because it creates problems like this one. 
The court’s counterfactual reminds me of Justice Breyer’s example in the
Wal-Mart oral argument of a hairbrush
shaped like a grape: although I can imagine a card that just said “Coca-Cola”
on the front and nothing on the inside, I can’t really imagine who would bother
to make it or who would buy it, so I don’t know why assuming that such a card
would infringe helps us answer the question of whether a greeting card that
does more than that could infringe.  Would
that even be a greeting card?]
For purposes of
summary judgment, “defendants may have merely appropriated the goodwill
inhering in Gordon’s mark without adding any creativity of their own.”  [Query: if there is testimony that the
greeting cards as a whole are copyrightable despite using a stock phrase,
should that satisfy the inquiry?  If not,
why not?  What other standard for
“creativity” do we have?]  It was true
that the uses weren’t non sequiturs and made sense in context [presumably contra Parks], but there was a triable issue of fact “whether defendants added
their own artistic expression, as opposed to just copying Gordon’s artistic
expression.”
And then the court
notes that Gordon presented evidence that he sold products bearing the mark,
including greeting cards (and that defendants declined a licensing deal with
him and defendants’ president testified [unconvincingly] that he couldn’t
recall what inspired the cards).  With
the placement of this discussion, the court seems to be grasping towards some
sort of creativity-substitution standard—did they fill the same market niche,
satisfying the same demand for expression?—but this isn’t a copyright
infringement case.  A short phrase like
HBDC isn’t copyrightable.  In fact, as
framed, the court has just put copyright preclusion squarely on the table: if
the question is whether there was copying of expression, that sure sounds like
a right equivalent to copyright protection.
Anyway, “a jury
could possibly conclude that defendants used the phrases for artistic reasons on
one or more cards but not on others.” 
This wasn’t like other prior cases, the court said.  In Rogers,
“[t]he 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.’” [Which is to say it appropriated more
of her image than just her name, which is apparently ok.] The film’s title was
“not a disguised advertisement for the sale of goods or services or a
collateral commercial product.” [Also true of these cards, which are themselves
the expressive product being sold.]
The junior users in the
Barbie cases “also viewed Barbie as a cultural icon, even if they did not treat
her with the same adulation that Fellini did Rogers.” [And honey badger isn’t a
mini cultural icon?] In the Empire
case, “Empire” has a bunch of common, relevant meanings. And in the video game cases,
“the borrowed mark was part of a much larger context,” [which notably didn’t
translate into a finding of transformativeness in the portrayal of the players
themselves as applied to the right of publicity claim,] which was also true of
the GTA/Pig Pen case.  Thus, the court contrasted “the junior user’s
own artistic expression” with “use 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.’”  [Which again conflates the expressive content of a work with a trademark for a work—assuming Gordon
had a valid mark, it was valid as an identifier of the source of goods or services,
not as the content of a work. “Honey Badger don’t care” might be capable of
being used as a trademark for some things, though it’s a pretty long one.  Gordon has no trademark rights over the “bottom
line” of an expressive work—that’s what copyright is for, except copyright
doesn’t cover short phrases.]
“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.”  [Here we have another way of making the
fundamental mistake: the “brand” if any, and the catchphrase are fully
distinguishable, just as the Statue of Liberty is famous but not famous as a mark even though there are entities
using it as a trademark such as Liberty Mutual. 
I would be stunned if there were noticeable secondary meaning here in
the sense of consumers being familiar with the honey badger phrases as an indicator of source for stuff in
the way that Hallmark is an indicator of source for greeting cards.  The defendants might thus easily have been relying
on the cultural meaning of the phrase without free riding on Gordon’s “goodwill”
in any trademarks.  This can be true even
when there is substantial secondary meaning, as when I say “this is a Mickey
Mouse operation”—unintelligible to those who don’t know the icon, but also
protected by the First Amendment when it’s, say, in a restaurant review.
Another way to get
at this issue: I doubt anyone would contend that Barbie Girl is “intelligible” to listeners unfamiliar with Mattel’s
Barbie, or Fred and Ginger to viewers
unfamiliar with Astaire and Rogers; at the very least, just as with the
greeting cards, those works would lose a lot of their resonance without their
cultural contexts.  Rogers, until now, allowed speakers to invoke a well-known, or not well-known, entity without equating
that invocation to use of goodwill in a trademark sense. Indeed, the court’s
blithe equation here of familiarity with trademark meaning is exactly what Rogers rejected.]
Anyhow, a jury must
decide whether defendants used the phrases “in any way that distinguishes their
use from Gordon’s and thus … ‘imbued’ their product with any ‘expressive value’
apart from that contained in Gordon’s trademarked phrase.”  [Note that this formulation is not the same
as what the court apparently thinks is the real test, the repeated question of whether
defendants added “their own artistic expression or elements.”  Suppose the jury finds that artistry is in
the beautiful portrayal of the honey badger. Does that count?  This is basically the same question as I
asked above about copyrightability.  (1) If
artistry in honey badger rendition is insufficient because the question is instead
whether the parties’ ideas were the same (they were using both using the
phrases for greeting card punchlines), then we have Dastar problems times a million. 
(Imagine what happens in a few years when somebody makes a Steamboat
Willie cartoon—not a parody, just another standard Steamboat Willie cartoon—how
will we determine what “distinguishes” that from an authorized Disney Steamboat
Willie cartoon for purposes of this new, improved Rogers test?)  (2) If instead
the question is whether the parties’ expression was the same, then we only have
copyright redux (and summary judgment for defendants should be warranted,
unless there’s something the court isn’t saying). (3) More likely the court is
just thinking “there’s not enough” without giving any useful guidance on what “enough”
might be, or why more than “more than zero” ought to be required.]
But hey, the
defendants might win on artistic relevance, or on likely confusion or on
abandonment.

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