Christopher Gordon v. Drape Creative, Inc.

                     FOR PUBLICATION

    UNITED STATES COURT OF APPEALS
         FOR THE NINTH CIRCUIT

 CHRISTOPHER GORDON, an                            No. 16-56715
 individual,
               Plaintiff-Appellant,                   D.C. No.
                                                  2:15-cv-04905-
                      v.                             JFW-PLA

 DRAPE CREATIVE, INC., a Missouri
 corporation; PAPYRUS-RECYCLED                     ORDER AND
 GREETINGS, INC., an Illinois                       OPINION
 corporation,
               Defendants-Appellees.


        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 November 20, 2018

           Before: Danny J. Boggs,* Jay S. Bybee,
            and Paul J. Watford, Circuit Judges.

                            Order;
                    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 filed (1) an order granting appellees’ petition
for panel rehearing, withdrawing the panel’s opinion, and
ordering the filing of a superseding opinion; and (2) a
superseding opinion reversing the district court’s grant of
summary judgment in favor of defendants in a trademark
infringement suit under the Lanham Act.

    In the superseding opinion, the panel held that, 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 (1) has no artistic relevance to the underlying
work whatsoever, or (2) explicitly misleads consumers as to
the source or the content of the work.

   Defendants designed and produced greeting cards using
“Honey Badger” catchphrases from plaintiff Christopher
Gordon’s YouTube video.

    The panel resolved the first Rogers prong against Gordon
as a matter of law. The panel held that there was a triable
issue of fact as to Rogers’s second prong because defendants
did not use Gordon’s mark in the creation of a song,
photograph, video game, or television show, but largely just
pasted Gordon’s mark into their greeting cards. The panel

    **
       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

held that a jury could determine that this use of Gordon’s
mark was explicitly misleading as to the source or content of
the cards. The panel reversed the district court and remanded
for further proceedings.


                        COUNSEL

Daniel L. Reback (argued) and Ralph C. Loeb, Krane &
Smith, Encino, California, for Plaintiff-Appellant.

Douglas J. Collodel (argued) and James J.S. Holmes, Clyde
& Co US LLP, Los Angeles, California, for Defendants-
Appellees.

Mark A. Lemley, Professor, Stanford Law School, Stanford,
California, for Amici Curiae 37 Intellectual Property Law
Professors.


                          ORDER

    Appellees’ petition for panel rehearing (Dkt. No. 39) is
GRANTED. The opinion filed July 30, 2018, and published
at 897 F.3d 1184, is withdrawn. The superseding opinion
shall be filed concurrently with this order.

    Further petitions for rehearing or petitions for rehearing
en banc shall be allowed in the above-captioned matter. See
Ninth Circuit General Order 5.3(a).
4              GORDON V. DRAPE CREATIVE

                         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 “Honey Badger 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,
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 Gordon’s mark in the creation of a
                  GORDON V. DRAPE CREATIVE                             5

song, photograph, video game, or television show, but have
largely just pasted Gordon’s mark into their greeting cards.
A jury could determine that this use of Gordon’s mark is
explicitly misleading as to the source or content of the cards.
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.

                                   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.


    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).
6                 GORDON V. DRAPE CREATIVE

     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
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.


    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

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
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 Honey Badger, 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.”
8             GORDON V. DRAPE CREATIVE

    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.”

       •   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
                  GORDON V. DRAPE CREATIVE                             9

             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
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 this suit 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




    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.”
    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

                              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.) (“MCCARTHY”)
(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
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 owner’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
                  GORDON V. DRAPE CREATIVE                           11

description of fact, or false or misleading representation of
fact,” irrespective of registration).5

    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-of-
confusion 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).6 Ordinarily, this test “strikes a



    5
      The district court declined to distinguish between HBDC, which is
a registered trademark, and HBDGS, which is not. We assume for
purposes of this decision that HBDC and HBDGS are both protected
marks, even if HBDGS is not registered. See Matal v. Tam, 137 S. Ct.
1744, 1752 (2017) (explaining that “an unregistered trademark can be
enforced against would-be infringers” under 15 U.S.C. § 1125(a)); Brown
v. Elec. Arts, Inc., 724 F.3d 1235, 1241 (9th Cir. 2013) (noting that the
Rogers test applies “in [§ 1125(a)] cases involving expressive works”).
Gordon claimed infringement under § 1125(a) in his complaint, and
defendants challenged Gordon’s ownership of HBDGS as a protected
mark in their motion for summary judgment. The district court is free to
revisit this issue on remand.
    6
      We have identified eight factors—called the Sleekcraft factors—for
determining whether a defendant’s use of the mark is likely to cause
consumer confusion:

         (1) the strength of the mark; (2) the proximity of the
         goods; (3) the similarity of the marks; (4) evidence of
         actual confusion; (5) the marketing channels used;
         (6) the type of goods and the degree of care likely to be
         exercised by the purchaser; (7) the defendant’s intent in
12               GORDON V. DRAPE CREATIVE

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
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 (1) is 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 make
a threshold legal showing that its allegedly infringing use is
part of an expressive work protected by the First Amendment.


        selecting the mark; and (8) the likelihood of expansion
        of the product lines.

Zaffina, 762 F.3d at 930 (citing AMF Inc. v. Sleekcraft Boats, 599 F.2d
341, 348–49 (9th Cir. 1979)).
                   GORDON V. DRAPE CREATIVE                             13

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 (1) that it has a valid, protectable
trademark, and (2) that the mark is either not artistically
relevant to the underlying work or explicitly misleading as to
the source or content of the work. If the plaintiff satisfies
both elements, it still must prove that its trademark has been
infringed by showing that the defendant’s use of the mark is
likely to cause confusion.7

    “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


    7
       We have been careful not to “conflate[] the [‘explicitly misleading’]
prong of the Rogers test with the general Sleekcraft likelihood-of-
confusion test,” Twentieth Century Fox, 875 F.3d at 1199, but it bears
noting that Twentieth Century Fox made this distinction to ensure that the
likelihood-of-confusion test did not dilute Rogers’s explicitly misleading
prong. Other circuits have noted that Rogers’s second prong is essentially
a more exacting version of the likelihood-of-confusion test. See
Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 665
(5th Cir. 2000); Twin Peaks Prods., Inc. v. Publ’ns Int’l, Ltd., 996 F.2d
1366, 1379 (2d Cir. 1993). A plaintiff who satisfies the “explicitly
misleading” portion of Rogers should therefore have little difficulty
showing a likelihood of confusion.
14                GORDON V. DRAPE CREATIVE

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.8 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
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


     8
      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, 214 F.3d at 665.
                GORDON V. DRAPE CREATIVE                      15

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
by well-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 allegedly misleading 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
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
16             GORDON V. DRAPE CREATIVE

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 impersonating Barbie 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
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.
                  GORDON V. DRAPE CREATIVE                           17

    We applied the Rogers test to another suit involving
Barbie in Walking Mountain, 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 created or sponsored the
photographs. Id.

     Most recently, we applied the Rogers test in Twentieth
Century Fox, 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 hip-hop record
label, sent Twentieth Century Fox a cease-and-desist 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 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.”9 Id. at 1197.



     9
       We explained in MCA Records that trademarks sometimes
“transcend their identifying purpose” and “become an integral part of our
18               GORDON V. DRAPE CREATIVE

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 satisfy Rogers’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’s use “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.

                                 C

   We first extended the Rogers test beyond a title in E.S.S.
Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d


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                     19

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 merely must 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
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.
20             GORDON V. DRAPE CREATIVE

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
outer limits. Although defendants’ greeting cards are
expressive works to which Rogers applies, there remains a
genuine issue of material fact as to Rogers’s second
prong—i.e., whether defendants’ use of Gordon’s mark in
their greeting cards is explicitly misleading.
                GORDON V. DRAPE CREATIVE                     21

                              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.

                               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
22             GORDON V. DRAPE CREATIVE

work merely must be above zero.” Id. at 1243 (internal
alterations omitted) (quoting E.S.S., 547 F.3d at 1100).
Indeed, “even the slightest artistic relevance” will suffice;
courts and juries should not have to engage in extensive
“artistic analysis.” Id. at 1243, 1245; see Bleistein v.
Donaldson Lithographing Co., 188 U.S. 239, 251 (1903) (“It
would be a dangerous undertaking for persons trained only to
the law to constitute themselves final judges of the worth of
pictorial illustrations, outside of the narrowest and most
obvious limits.”).

    Gordon’s mark is certainly relevant to defendants’
greeting 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. We thus conclude that
Gordon has not raised a triable issue of fact with respect to
Rogers’s “artistic relevance” prong.

                              C

    Even if the use of the mark is artistically relevant to the
work, the creator of the work can be liable under the Lanham
Act if the creator’s use of the mark is “explicitly misleading
as to source or content.” Rogers, 875 F.2d at 999. “This
second prong of the Rogers test ‘points directly at the purpose
of trademark law, namely to avoid confusion in the
marketplace by allowing a trademark owner to prevent others
from duping consumers into buying a product they
                GORDON V. DRAPE CREATIVE                     23

mistakenly believe is sponsored [or created] by the trademark
owner.’” Brown, 724 F.3d at 1245 (quoting E.S.S., 547 F.3d
at 1100). The “key here [is] that the creator must explicitly
mislead consumers,” and we accordingly focus on “the nature
of the [junior user’s] behavior” rather than on “the impact of
the use.” Id. at 1245–46.

    In applying this prong, however, we must remain mindful
of the purpose of the Rogers test, which is to balance “the
public interest in avoiding consumer confusion” against “the
public interest in free expression.” Rogers, 875 F.2d at 999.
This is not a mechanical test—“all of the relevant facts and
circumstances” must be considered. Id. at 1000 n.6. We
therefore reject 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.” Such a statement may be sufficient to show
that the use of a mark is explicitly misleading, but it is not a
prerequisite. See MCCARTHY § 10:17.10 (noting that
Rogers’s second prong does not hinge on the junior user
“falsely assert[ing] that there is an affiliation”). 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.

   To be sure, we have repeatedly observed that “the mere
use of a trademark alone cannot suffice to make such use
explicitly misleading.” E.S.S., 547 F.3d at 1100 (citing MCA
24              GORDON V. DRAPE CREATIVE

Records, 296 F.3d at 902). 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. MCA Records,
296 F.3d at 902. Nor would anyone “think a company that
owns one strip club in East Los Angeles . . . also produces a
technologically sophisticated video game.” E.S.S., 547 F.3d
at 1100–01. But this reasoning does not extend to instances
in which consumers would expect the use of a mark alone to
identify the source.

    A more relevant consideration is the degree to which the
junior user uses the mark in the same way as the senior user.
In the cases in which we have applied the Rogers test, the
junior user has employed the mark in a different
context—often in an entirely different market—than the
senior user. In MCA Records and Walking Mountain, for
example, Mattel’s Barbie mark was used in a song and a
series of photos. In E.S.S., the mark of a strip club was used
in a video game. And in Twentieth Century Fox, the mark of
a record label was used in a television show. In each of these
cases, the senior user and junior user used the mark in
different ways. This disparate use of the mark was at most
“only suggestive” of the product’s source and therefore did
not outweigh the junior user’s First Amendment interests.
Rogers, 875 F.2d at 1000.

     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
                   GORDON V. DRAPE CREATIVE                       25

Unit10—such identical usage could reflect the type of
“explicitly misleading description” of source that Rogers
condemns. 875 F.2d at 999–1000. Rogers itself makes this
point by noting that “misleading titles that are confusingly
similar to other titles” can be explicitly misleading, regardless
of artistic relevance. Id. at 999 n.5 (emphasis added).
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. Were we to
reflexively apply Rogers’s second prong in this circumstance,
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.” That would turn
trademark law on its head.

    A second consideration relevant to the “explicitly
misleading” inquiry is the extent to which the junior user has
added his or her own expressive content to the work beyond
the mark itself. As Rogers explains, the concern that
consumers will not be “misled as to the source of [a] product”
is generally allayed 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. Id. at
998–99; see MCCARTHY § 31:144.50 (“[T]he deception or
confusion must be relatively obvious and express, not subtle
and implied.”). 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

    10
         Cf. Law & Order: Special Victims Unit (NBC Universal).
26             GORDON V. DRAPE CREATIVE

commercial value of” a competitor’s mark. S.F. Arts &
Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 539
(1987).

     Our cases support this approach. In cases involving the
use of a mark in the title of an expressive work—such as the
title of a movie (Rogers), a song (MCA Records), a
photograph (Walking Mountain), or a television show
(Twentieth Century Fox)—the mark obviously served as only
one “element of the [work] and the [junior user’s] artistic
expressions.” Rogers, 875 F.2d at 1001. Likewise, in the
cases extending Rogers to instances in which a mark was
incorporated into the body of an expressive work, we made
clear that the mark served as only one component of the
larger expressive work. In E.S.S., the use of the Pig Pen strip
club was “quite incidental to the overall story” of the video
game, such that it was not the game’s “main selling point.”
547 F.3d at 1100–01. And in Brown, Jim Brown was one of
“thousands of current and former NFL players” appearing in
the game, and nothing on the face of the game explicitly
engendered consumer misunderstanding. 724 F.3d at
1244–46. Indeed, EA altered Brown’s likeness in certain
versions of the game, an artistic spin that “made consumers
less likely to believe that Brown was involved.” Id. at
1246–47.

    In this case, we cannot decide as a matter of law that
defendants’ use of Gordon’s mark was not explicitly
misleading. There is at least 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.” Gordon has introduced evidence that he sold
                  GORDON V. DRAPE CREATIVE                           27

greeting cards and other merchandise with his mark; 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. Gordon’s evidence is not bulletproof;
for example, defendants’ cards generally use a slight variation
of the HBDGS phrase, and they list defendants’ website on
the back cover. But a jury could conclude that defendants’
use of Gordon’s mark on one or more of their cards is
“explicitly misleading as to [their] source.” Rogers, 875 F.2d
at 999.

    Because we resolve the first Rogers prong against Gordon
as a matter of law, a jury may find for Gordon only if he
proves by a preponderance of the evidence that defendants’
use of his mark is explicitly misleading as to the source or
content of the cards.11

                                  V

    For the foregoing reasons, we REVERSE and REMAND
to the district court for further proceedings consistent with
this opinion.




    11
       We note that the district court has not yet addressed defendants’
abandonment defense. We express no opinion on that issue and leave it
for the district court to address in the first instance.