Under Last Year’s Opinion by U.S. Supreme Court in an Unrelated Case, the Ninth Circuit’s 2022 Decision Cannot Stand, Bress Writes; District Court, Which Applied a Test That Is No Longer Applicable to Case, Must Make Fresh Determination
By a MetNews Staff Writer
Above are Punchbowl Inc.’s registered mark and logo (a punch ladle).
Depicted is the logo for “Punchbowl News,” used online.
The Ninth U.S. Circuit Court of Appeals on Friday reversed a summary judgment in favor of AJ Press which publishes “Punchbowl News,” an online publication dealing with politics, in a trademark infringement action brought by Punchbowl, Inc., a technology company—a summary judgment it had affirmed on Nov. 14, 2022.
But then on June 8, 2023, the U.S. Supreme Court held in an unrelated case that the “Rogers test,” applied in the Ninth Circuit’s 2022 decision—which the high court described as a “threshold First Amendment filter”—cannot be used in determining whether one trademark indicating the source of goods infringes another.
The test is derived from the Second Circuit’s May 5, 1989 opinion in Rogers v. Grimaldi. Actress Ginger Rogers (now deceased) sued over the title of a move, “Fred and Ginger,” which had nothing to do with her and her dancing partner in movies, the late Fred Astaire, but traded on their fame.
Rogers maintained that the title violated her rights under the Lanham Act, a federal trademark statute. The Second Circuit held that there is no infringement “unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”
Bress’s 2022 Opinion
Ninth Circuit Judge Daniel Aaron Bress applied that test in the 2022 decision affirming a summary judgment granted by District Court Judge Stephen V. Wilson of the Central District of California in favor of AJ Press, finding that “Punchbowl News” has artistic relevance. Bress wrote:
“[W]e hold that AJ Press’s use of the Punchbowl Mark is sufficiently expressive to merit First Amendment protection, and thus application of the Rogers test. Though AJ Press is a commercial enterprise, it is selling core First Amendment-protected information. The content of its publication, and its use of ‘Punchbowl’ in the name of its brand and publications, is expressive.”
“AJ Press specifically chose the name ‘Punchbowl’ to convey the D.C. insider perspective of its news material. The word ‘Punchbowl’ connotes a gossipy setting (e.g., standing around the punchbowl), and, in the context of Washington, D.C. political reporting, talebearer ‘buzz’ about political happenings. The name ‘Punchbowl’ also reflects a more spirited, ‘punchy’ tone consistent with the nature of the fast-moving and tumultuous political topics on which AJ Press is reporting.”
Supreme Court Decision
The opinion was vacated after the U.S. Supreme Court handed down its 2023 decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC. Justice Elana Kagan said the court was not deciding if the Rogers test “is ever warranted,” declaring:
“We hold only that it is not appropriate when the accused infringer has used a trademark to designate the source of its own goods—in other words, has used a trademark as a trademark. That kind of use falls within the heartland of trademark law, and does not receive special First Amendment protection.”
The usual “likelihood-of-confusion” inquiry, under the Lanham Act, must be undertaken, she wrote.
That case involved an infringement action against the maker of “Bad Spaniels Silly Squeaker,” a rubber dog chew that looks like a bottle of Jack Daniel’s Tennessee whiskey. The opinion reverses a Ninth Circuit decision.
In Friday’s Ninth Circuit opinion, Bress said:
“With the benefit of Jack Daniel’s, we now hold that Rogers does not apply because the defendant is using the mark to identify its products. Although it does not follow that the plaintiff will ultimately prevail or even survive a future dispositive motion, it does mean that the defendant’s use of its mark is not immune from the traditional likelihood-of-confusion inquiry. “
He went on to say:
“To the point that our precedents previously 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—the Supreme Court has now made clear that this is incorrect. In that specific respect, our prior precedents are no longer good law….At the same time, however, because the Supreme Court’s decision in Jack Daniel’s was confined to a ‘narrow’ point of law…, that Rogers does not apply when a mark is used as a mark, preexisting Ninth Circuit precedent adopting and applying Rogers otherwise remains intact and binding on three-judge panels.”
The opinion directs that “the district court should proceed to a likelihood-of-confusion analysis.” The 2022 opinon provides guidance as to what the outcome should be, observing:
“[N]o reasonable buyer would believe that a company that operates a D.C. insider news publication is related to a ‘technology company’ with a ‘focus on celebrations, holidays, events and memory-making.’ We conclude that, under our precedents, AJ Press’s incorporation of the Punchbowl Mark in its news publication’s name is not explicitly misleading.”
The case is Punchbowl, Inc. v. AJ Press, LLC, 21-55881.
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