A Trademark within a Copyright: 9th Circuit Clarifies Trademark Rights in Expressive Works

By: John Montgomery and James Carlson


Courts typically use a test set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (“Rogers”), to determine whether artistic expression under the First Amendment of the U.S. Constitution overrides application of traditional trademark rights. If use of the trademark in the work does not add expressive value to the work that is protectable by the First amendment, trademark infringement might be found. In particular, the Rogers test applies the Lanham Act to an original 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.  If either prong of the Rogers test is satisfied, use of the mark is further analyzed under the various tests for trademark infringement.  However, most trademark holders failed in their previous attempts at satisfying the Rogers test. Courts found book titles, song titles, television show titles, video games, and parodying photographs to include artistic expression that overrode the Lanham Act’s trademark protections.

Recently though, the U.S. Court of Appeals for the Ninth Circuit in Gordon v. Drape Creative Inc., No. 16-56715 (9th Cir. July 30, 2018) (“Gordon”) found a sufficient issue of fact that might satisfy the Rogers test.  In Gordon, the trademark holder originated various honey badger catchphrases made popular on the Internet through YouTube videos.  Accordingly, the trademark holder registered the catchphrase “Honey Badger Don’t Care” for an assortment of goods that included audio books, greeting cards, mugs, and clothing.  The defendant in Gordon marketed a line of greeting cards that used the trademark holder’s catchphrase with minor variations.

Following suit and dismissal by the district court, the appellate court for the Ninth Circuit found that the greeting cards are expressive works that fall under the Rogers test.  In contrast to previous court rulings, however, the Ninth Circuit found that there was an issue of fact whether usage of the trademarked catchphrases in the greeting cards is artistically relevant under the first prong of the Rogers test.  Specifically, the Gordon opinion notes that the “artistic relevance” inquiry asks “whether the mark is relevant to the defendant’s own artistry” in contrast to usage where the defendant merely appropriates the goodwill inhering in the trademark or uses the trademark for no reason at all.

In conclusion, intellectual property holders must be aware that there are limits to using trademarks within creative and expressive works.  For example, authors of copyrighted works with minimal amounts of artistic expression should be careful that commercialization of the copyrighted work does not incorporate trademarks of others covering the goods and/or services in which the copyrighted work is embodied. Examples of these copyrighted works with minimal amounts of artistic expression may include basic photography or certain software applications.  Likewise, extra caution should be used when dealing with famous marks as possible dilution or tarnishment of the famous mark could occur even where the nature and market for the copyrighted work is different from the goods and services of the famous mark.

For original works with a significant amount of artistic expression, a trademark being used in the work still needs to be relevant to the artistic expression, such as by parodying the trademark.  Otherwise, the copyright holder may run the risk of trademark infringement when commercializing the copyrighted work.