9th Circuit Applies Rogers Test to “Punchbowl” Case

Written by Chloe N. George

This week, the Ninth Circuit affirmed the Central District of California’s summary judgment in favor of AJ Press, LLC, owner of Punchbowl News, against Punchbowl, Inc. in a trademark infringement action under the Lanham Act.[1] The Ninth Circuit applied the Rogers test, established by Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) and adopted by the Ninth Circuit in Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002) and held that AJ Press’s use of the Punchbowl mark was sufficiently expressive to merit First Amendment protection, thus defeating the Lanham Act and related state-law claims.

Plaintiff Punchbowl is an online party and event planning service that creates custom invitations and greeting cards. Defendant AJ Press’s Punchbowl News is an online news publication about American politics. Punchbowl sued AJ Press for trademark infringement and unfair competition, as well as related state-law claims. The district court granted summary judgment to AJ Press, concluding that AJ Press’s use of the mark constituted protected expression that was not explicitly misleading as to its source. The district court also denied Punchbowl’s request for a continuance under FRCP 56(d) to conduct additional discovery.

On appeal, Punchbowl argued that Rogers did not apply in the first instance because that case does not extend to “the brand name of a commercial enterprise” and that this kind of branding is “insufficiently expressive” under Rogers. Punchbowl further argued that AJ Press’s use of the mark fell outside of Rogers because the defendant used the term Punchbowl not in the content of its news publications but rather as part of a commercial brand. Finally, Punchbowl claimed that there were other ways for AJ Press to express itself without using “Punchbowl” in the name of its publication.

The Ninth Circuit rejected this argument. The Court found that the Rogers threshold had been met: “Under the Rogers test, 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…This approach is justified, we have held, because of the First Amendment interests at stake and because consumers are less likely to believe that someone using a mark in an expressive work is seeking to attribute its work to the trademark holder.” The Court concluded that AJ Press’s work was expressive, citing various case law supporting a wide range of activity qualifying as expressive, including titles of works. The Court also reasoned that AJ Press’s use of the Punchbowl Mark was sufficiently expressive to merit First Amendment Protection, despite being a commercial enterprise, finding the content of its publication and use of the “Punchbowl” name of its brand and publications, were expressive in nature, especially given that its name derives from a code name for the Capitol.

The panel also concluded that the logic of Rogers is equally applicable to brands of news publications as it is to the titles of individual articles. That the AJ Press did not use the Punchbowl Mark as a bare source identifier did not justify any attempt to evade Rogers: “The Court stated: “AJ Press uses the name “Punchbowl” in conjunction with its slogan and logo, to broadcast a unifying theme that reflects its focus on insider politics in Washington. And it typically uses “Punchbowl in the title ‘Punchbowl News.’ The name Punchbowl News itself (in addition to the underlying publications) undoubtedly communicates a perspective on the subjects it covers.”

Finding AJ Press’s use of the mark sufficiently expressive under Rogers, the panel also concluded that Punchbowl News was not explicitly misleading as to its source, reasoning that no reasonable buyer would conflate a news source on D.C. politics with a tech company focusing on events and parties.

The Punchbowl opinion continues the trend of broadening the Rogers test in the Ninth Circuit.  See, e.g., VIP Prods. LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1174–75 (9th Cir. 2020).

[1] Punchbowl, Inc. v. AJ Press, LLC, D.C. No. 2:  21-cv-03010-SVW-MAR (Nov. 14, 2022)

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