The latest round of a legal battle over the trademark, “Punchbowl,” has brought the Supreme Court’s decision in Jack Daniel’s to the forefront, with the Ninth Circuit holding that in light of the outcome in the dog toy-centric case, a news publisher cannot sidestep the traditional trademark infringement test. In its January 12 opinion, the U.S. Court of Appeals for the Ninth Circuit affirmed the U.S. District Court for the Central District of California’s grant of summary judgment for AJ Press, LLC in an action brought by Punchbowl, Inc., which has accused Punchbowl News publisher AJ Press of trademark infringement and unfair competition. Despite previously holding that AJ Press’s use of the term “Punchbowl” is expressive in nature and not explicitly misleading as to its source and thus falls outside of the bounds of the Lanham Act, the appeals court has since changed its tune.
For some background: Party and event planning service Punchbowl, Inc. (“Punchbowl”) filed suit against AJ Press, which owns and operates subscription-based online political news publication Punchbowl News, alleging that AJ Press’s use of “Punchbowl News” infringes its “Punchbowl” trademark. Punchbowl has used the mark since at least 2006, and registered it with the United States Patent & Trademark Office in 2013 for use in connection with the “[t]ransmission of invitations, documents, electronic mail, announcements, photographs and greetings”; “[p]arty planning”; and “[p]reparation of electronic invitations, namely, providing . . . software that enables users to . . . customize electronic invitations.” In 2021, journalists Jake Sherman and Anna Palmer co-founded Punchbowl News.
The U.S. District Court for the Central District of California granted summary judgment to AJ Press back in June 2021, applying the Rogers test and concluding that the publisher’s use of the name “Punchbowl” constituted protected expression and was not explicitly misleading as to its source. Punchbowl appealed, arguing that AJ Press’s use of the Punchbowl mark “lies outside of Rogers’s domain.” The Ninth Circuit affirmed the lower court’s decision in November 2022. In siding with AJ Press, the court shot down Punchbowl’s argument that the opinions and journalism published by AJ Press are “a far cry from the types of artistic and creative works that often merit heightened protection from traditional trademark infringement concerns.”
Ninth Circuit’s Reversal
Fast forward to January 12 and the same Ninth Circuit panel overturned its prior decision and ruled in favor of Punchbowl, thereby, reviving the plaintiff’s case against AJ Press. “With the benefit of Jack Daniel’s, we now hold that Rogers does not apply because [AJ Press] is using the trademark to identify its products,” the panel held. “Although it does not follow that [Punchbowl] will ultimately prevail or even survive a future dispositive motion, it does mean that [AJ Press’s] use of its mark is not immune from the traditional likelihood-of-confusion inquiry.”
Setting the stage in its recent decision, the Ninth Circuit stated that “under the Rogers test, and prior to Jack Daniel’s, the defendant must first ‘make a threshold legal showing that its allegedly infringing use is part of an expressive work protected by the First Amendment.’ If the defendant meets this burden, the Lanham Act does not apply unless ‘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.’”Against that background, the panel asserted that “in that first iteration of this appeal, we held that Punchbowl’s trademark infringement claim against AJ Press failed as a matter of law because Rogers and its progeny insulated AJ Press from liability under the Lanham Act.”
In the wake of the Supreme Court’s decision in the Jack Daniel’s case, the Ninth Circuit held that its previous precedents, which “held that Rogers applies when an expressive mark is used as a mark—and that the only threshold for applying Rogers was an attempt to apply the Lanham Act to something expressive,” no longer apply. (In its June 2023, the Supreme Court held that “when an alleged infringer uses a trademark as a designation of source for the infringer’s own goods, the Rogers test does not apply” and thus, the traditional likelihood of confusion test does.)
Taking the facts of the case at hand into account in a post-Jack Daniel’s world, the Ninth Circuit found that Rogers does not apply. The reason is “straightforward,” according to the court. “AJ Press is using the “Punchbowl” mark to “designate the source of its own goods—in other words, has used a trademark as a trademark” to “identify and distinguish” its news products. This is indicated, in part, by the fact that AJ Press has filed trademark applications to register the marks “Punchbowl News” and “Punchbowl Press,” per the Ninth Circuit, which held that “under the clear holding of Jack Daniel’s, Rogers does not apply to the use of a mark as a mark (the addition of the more generic terms ‘News’ and ‘Press’ does not take away from AJ Press’s use of ‘Punchbowl’ in its mark, as a mark.”
While is true that the “Punchbowl” mark as used by AJ Press “has expressive qualities,” the court determined that “that was true in Jack Daniel’s, as well. It did not change matters there, and it cannot do so here.”
Finally, the Ninth Circuit addressed AJ Press’s argument that it should read the Jack Daniel’s decision “more narrowly” and apply Rogers on the basis that “it is not using the ‘Punchbowl’ mark to parody or refer to Punchbowl, Inc., the greeting card company.” The court noted that “in AJ Press’s view, when two companies in different markets use the same common English word to identify their brand, the Rogers test still applies.”
Unpersuaded by these claims, the court held that “Jack Daniel’s was not limited to direct references or parodies. Quite the opposite: the Supreme Court held that Rogers did not apply notwithstanding the parodic use of the mark, and notwithstanding that the Bad Spaniels toy explicitly disclaimed any affiliation with Jack Daniel’s the whiskey company.” Moreover, the fact that the “Punchbowl” mark “involves a common English word does not exempt AJ Press from the rule that ‘Rogers does not apply when the challenged use of the mark is as a mark,’” the court stated, ultimately remanding the case back to the district court for further proceedings.
THE BIGGER PICTURE: The outcome in the case here is not likely to be an isolated one. Reflecting on the Ninth Circuit’s decision, Frankfurt Kurnit Klein & Selz’s Kimberly Maynard noted that in the circuits that recognized the Rogers test (including the Second Circuit), “Brand owners can expect to see similar decisions in the future. Under Jack Daniel’s, if the defendant is using a trademark as a trademark—i.e., to indicate source—courts are required to conduct a likelihood of confusion analysis using that Circuit’s test.” This means that these courts “may not find that the defendant is immune from Lanham Act liability solely because they are using the mark with an expressive work and not to explicitly mislead.”
And as a practice tip, Maynard encourages parties that are planning on rely on a Rogers defense to “think carefully before filing a trademark application” in light of the Ninth Circuit’s specific attention to – and mention of – the applications for registration that AJ Press filed for variations of its “Punchbowl” mark as evidence of its use of the mark as a mark.
The case is Punchbowl, Inc. v. AJ Press LCC, No. 21-55881 (9th Cir. 2024).
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