We truly live in an amazing time, where nearly any person with access to a computer can obtain a nearly infinite amount of knowledge, create and distribute ideas and works of art to the entire world. Also, there are lots of cat videos and angry rants.
YouTube is perhaps the most well-known and effective means of sharing content with the world. According to YouTube, there are more than 1 billion unique monthly users watching over 6 billion hours of video per month. Every minute, 100 hours are uploaded to YouTube.
In spite of the sheer size of competition, some videos just have that special something that causes them to go viral. Examples include David After Dentist, Charlie Bit My Finger!, and of course, the Honey Badger (slightly NSFW due to some occasional mild language):
In case you’ve never seen the video (and your employer blocks access to YouTube – smart for productivity, bad for morale…), the video consists of a clip from a nature documentary regarding the honey badger. The appeal of the video is the narrator, “Randall,” a character who is sarcastic, snarky, excitable – basically, the complete opposite of what you would expect from a nature documentary narrator: calm demeanor, scientific knowledge, and a British accent.
Although the honey badger don’t care about a lot of things, be they bee stings or cobra venom, the creator of the video (Christopher Gordon) does care about at least one thing: trademark infringement. Gordon saw the success of the video and wisely sought to monetize it. He created an online store and registered his HONEY BADGER DON’T CARE mark in connection with clothing, audio books and computer game software, mugs, ornaments and plush dolls, and has a pending application to register the mark in connection with stickers and book series publications.
As with most internet sensations, Gordon isn’t the only person attempting to cash in on the popularity of the video. It’s easy to print a catch phrase on a search and, as a result, a lot of internet companies have been selling “Honey Badger Don’t Care” shirts and products. Gordon has relied on his trademark registrations to send out cease and desist letters and, just recently, filed a lawsuit against online retailers LOL Shirts and Tanga. Although the shirts are still viewable, the sites appear to have taken down the option to sell them.
Although Gordon appears to have had some success in enforcing his rights based upon the goods identified in his registrations, he may also be discovering the limits of his own rights. Gordon sent a cease and desist letter to the company Accoutrements, who sells the Honey Badger breath mints shown below:
Accoutrements responded late last month by filing a declaratory judgment action. Regardless of how many times viewers watch his YouTube videos, trademark rights are still based upon use. Trademark law recognizes that third-parties can use even identical trademarks so long as the goods or services are sufficiently unrelated (think Delta airlines, faucets, and dental insurance). In fact, a handful of third-parties were able to obtain federal registrations for HONEY BADGER-based trademarks for other goods, including: HONEY BADGER for wine and other alcoholic beverages (except beer), HONEY BADGER RACING for decals, HONEYBADGER for signal jammers, and HONEY BADGER for barbecue sauces. Sadly though, the lawyer who applied to register HONEY BADGER AT LAW abandoned his application to register the mark in connection with legal services.
Gordon no doubt feels like he “owns” the Honey Badger Don’t Care catchphrase because these companies and individuals are exploiting the popularity his ‘honey badger’ video. It seems likely that the only reason these companies have chosen the name “honey badger” is because of the widespread success of Gordon’s video. The video vaulted the honey badger into our common consciousness. However, just because a use of a mark may cause consumers to remember another mark used on different goods does not create a likelihood of confusion for trademark infringement purposes. Consequently, Gordon may have success with his lawsuit against the clothing retailers, but he may have more difficulty in the declaratory judgment action with the mint company. To be completely honest , I’m not sure either company is making enough money off these mints and t-shirts to justify anything other than an out-of-court settlement of the claims.
Before selling any products, business owners should conduct a basic knockout clearance search – even if they do not plan to register the mark. This is especially true if they have picked a name or mark based upon a popular internet video or meme. The honey badger lawsuits show that there is a market for licensed goods based at least in-part on popular internet videos. And where there’s a way to make money, there’s a chance that someone already has registered or common law trademark rights. It’s better to conduct some clearance and know any potential concerns before you invest time and money into a product. The last thing you want coming after you is a honey badger, especially a honey badger at law.