Honey Badger don’t care for different reasons: court fixes artistic relevance but still doubles down on transformativeness

Gordon v. Drape Creative, Inc., No. 16-56715 (9th Cir. Nov.
20, 2018)
Previous opinion discussed
here
; amicus
brief that may have influenced the court to withdraw that opinion and put out a
superseding one here
. The court found a triable issue of fact on
whether defendants’ “Honey Badger Don’t Care” greeting cards were explicitly
misleading; it transferred much (though not all) of the nonsense it previously
said about artistic relevance to its explication of what counts as explicitly
misleading.  I have a few questions and a couple of suggestions.
“Defendants have not used Gordon’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.” This passed the low threshold for
being an expressive work, meaning that Gordon had to show a triable issue of
fact on artistic relevance or explicit misleadingness in order to avoid summary
judgment.  Use of the phrase as a
punchline had relevance to the jokes of the cards, so there was no triable
issue on the former.  What about the
latter?  Explicit misleadingess is not
the same as the general likely confusion test, which shouldn’t be used to
“dilute” Rogers, but other circuits
have treated it as “essentially a more exacting version of the
likelihood-of-confusion test. A plaintiff who satisfies the ‘explicitly misleading’
portion of Rogers should therefore
have little difficulty showing a likelihood of confusion.”
The court of appeals rejected the district court’s “rigid”
requirement that, to be explicitly misleading, the defendant must make an “affirmative
statement of the plaintiff’s sponsorship or endorsement”:
In some instances, the use of a
mark alone may explicitly mislead consumers about a product’s source if
consumers would ordinarily identify the source by the mark itself. If an artist
pastes Disney’s trademark at the bottom
corner
of a painting that depicts Mickey Mouse, the use of Disney’s mark,
while arguably relevant to the subject of the painting, could explicitly
mislead consumers that Disney created or authorized the painting, even if those
words do not appear alongside the mark itself.
Emphasis added, because this analogy is how the court makes
the magic happen, and yet this analogy is inapposite.  The court’s concern is for situations where
the defendant puts the symbol at issue in the place on a work where a trademark
goes as a matter of convention.  That’s
not the punchline of a joke.  If
defendants put “Honey Badger Don’t Care” in the back center of the greeting
card, where Hallmark puts its mark, sure, find a triable issue of fact.  But this analogy cannot support
saying that there’s a triable issue when the use is part of the overall expressive
work.
The court of appeals reiterated that “the mere use of a
trademark alone cannot suffice to make such use explicitly misleading.”
But each time we have made this observation,
it was clear that consumers would not view the mark alone as identifying the
source of the artistic work. No one would think that a song or a photograph
titled “Barbie” was created by Mattel, because consumers “do not expect [titles]
to identify” the “origin” of the work. But this reasoning does not extend to
instances in which consumers would expect the use of a mark alone to identify
the source.
The above would be understandable, if a bit dangerous.  The next language encourages plaintiffs to
claim the content of their works—like, say, Mickey Mouse—as their marks, and
then sue for use of the content in another expressive work.  As we said in the amicus, that’s copyright’s
job, not trademark’s.  Here we go: “A
more relevant consideration is the degree to which the junior user uses the
mark in the same way as the senior user.” Prior Rogers cases, the court said, involved different contexts or
markets—Barbie in a song or photos [Barbie wasn’t in art before?], a strip club
in a video game, a record label v. a TV show. [*Cough*Rogers was a case about a dancing movie star suing a movie about
dancers*cough*.]  Such “disparate use of
the mark” was at most “only suggestive” of the product’s source and therefore didn’t
outweigh the junior user’s First Amendment interests.
“But had the junior user in these cases used the mark in the
same way as the senior user—had Twentieth Century Fox titled its new show Law
& Order: Special Hip-Hop Unit—such identical usage could reflect the type
of ‘explicitly misleading description’ of source that Rogers condemns.” [… Didn’t
the opinion just say that consumers don’t use titles that way? I guess they
don’t, unless they do.]  Rogers implements this insight with its
rule that “misleading titles that are confusingly similar to other titles” can
be actionable.  [The American failure to
theorize “use as a mark,” it seems to me, has gotten us to this place.  I accept that titles can be confusingly
similar.  I do not accept that punchlines
should be treated as serving as marks (and thus capable of being “confusingly
similar”) when they are serving as punchlines; the fact that one trademark
owner might use its mark as a punchline shouldn’t prevent anyone else from
using it as a punchline.  Dastar and Rogers are, as Mark McKenna says, inherently linked.]
Disney, by the way, will love this sentence: “Indeed, the
potential for explicitly misleading usage is especially strong when the senior
user and the junior user both use the mark in similar artistic expressions.”  If we applied Rogers, “an artist who uses a trademark to identify the source of his or her product would be at a
significant disadvantage in warding off infringement by another artist, merely
because the product being created by the other artist is also ‘art.’”  [Emphasis added to show how the court is still
conflating the claimant’s expressive use as a punchline with use as a mark.]
And now the part McKenna understandably hates most: the
reintroduction of transformativeness. 
The court says that another consideration relevant to explicit misleadingness
is “the extent to which the junior user has added his or her own expressive
content to the work beyond the mark itself.” Misleadingness is less likely “when
the mark is used as only one component of a junior user’s larger expressive
creation, such that the use of the mark at most ‘implicitly suggest[s]’ that the
product is associated with the mark’s owner…. But using a mark as the
centerpiece of an expressive work itself, unadorned with any artistic contribution
by the junior user, may reflect nothing more than an effort to ‘induce the sale
of goods or services’ by confusion or ‘lessen[] the distinctiveness and thus
the commercial value of’ a competitor’s mark.” Here, there was “a triable issue
of fact as to whether defendants simply used Gordon’s mark with minimal artistic
expression of their own, and used it in the same way that Gordon was using
it—to identify the source of humorous greeting cards in which the bottom line
is ‘Honey Badger don’t care.’” 
What evidence is relevant to whether the use as a punchline
served a source-identifying function for defendant’s
greeting cards?  What instructions to the
jury will assist them?  These aren’t in
any way rhetorical questions—we now know that explicit misleadingness doesn’t
have to mean explicit
misleadingness.  So what are we looking
for?  Transformativeness assesses what
else has been added, but I don’t see how it helps figure out what serves as a
mark in the work.
The court describes Gordon’s evidence as including evidence
that “in at least some of defendants’ cards, Gordon’s mark was used without any
other text; and that defendants used the mark knowing that consumers rely on
marks on the inside of cards to identify their source.”  But that formulation presupposes what is
supposed to be established: that the punchline was serving as a mark for
defendant’s cards.  It seems that the
question of use as a mark, in the end, is what the jury should focus on, in
which case Rogers has done very
little to protect smaller expressive works like greeting cards.  Indeed, the court then points out the obvious
counter: defendants’ cards list defendants’ website on the back cover, where
one would expect a trademark on a greeting card.  [I have to wonder how specific Gordon’s
evidence is about consumers relying on marks on the inside of cards, especially when there is a mark on the outside
back.]  A jury could find explicit
misleadingness.
I may regret saying this, but there is one easy source of
law to look at for further guidance on what constitutes “explicit”
misleadingness: Lanham Act false advertising doctrine. I’ve been critical of
the rigid explicit/implicit division because in general commercial speech it
overstates the distinction between those modes of communication in terms of the
impact on consumers. However, as a way of ameliorating the risks of suppressing
noncommercial speech it makes a ton more sense. 
If a court wanted to get better guidance on what “explicit” means, now
that we’ve been told it doesn’t require an affirmative statement of origin
other than use of the mark but also that not all uses of the mark will qualify,
it would be reasonable to look at false advertising cases, given the nearly
identical statutory language. There, the general rule is that a claim is
explicit when it is unambiguous; ambiguity moves into implicit territory, which
for false advertising requires a survey to show deceptiveness and for Rogers would mean no liability for the
defendant.  The doctrine of falsity by
necessary implication adds that a claim is explicit when the only reasonable
interpretation is that the claim is being made even if not every step is spelled
out.  This doctrine could help implement
the Honey Badger panel’s concern for protecting uses of a mark in the place on an
expressive work where marks usually go (as distinct from the content of the
work itself, which will vary across works as the real trademark won’t).

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