Relying on the Supreme Court’s decision in Jack Daniel’s, the Ninth Circuit reversed itself last week and revived a trademark infringement case it previously dismissed on the grounds that, under the Rogers test, the First Amendment immunized the defendant from liability for trademark infringement.

In 2021, Punchbowl, Inc., a greeting card and event planning company, sued AJ Press, owner of the news publication Punchbowl News, for infringement of its trademark rights in PUNCHBOWL. AJ Press moved for dismissal under the Rogers test (from the Second Circuit’s decision in Rogers v. Grimaldi), arguing that because it used the trademark artistically relevant to its expressive works (its news and journalism services) and in a manner not explicitly misleading, the First Amendment precluded any suit under the Lanham Act. The District Court converted the motion to dismiss into a motion for summary judgment, agreed with AJ Press, and dismissed the case. Punchbowl, Inc. appealed to the Ninth Circuit.

The Ninth Circuit affirmed the District Court, holding that, under its precedents, AJ Press’s “use of the term ‘Punchbowl’ is expressive in nature and not explicitly misleading as to its source” and “thus falls outside the Lanham Act as a matter of law.” Notably, the Ninth Circuit seemed to issue the decision with the help of a crystal ball and—because the Supreme Court granted cert in Jack Daniel’s a week earlier—the Ninth Circuit stayed the Punchbowl decision until Jack Daniel’s was decided.

In Jack Daniel’s Properties Inc. v. VIP Products LLC, the Supreme Court held that the Rogers test did not apply to VIP Products’ use of Jack Daniel’s trademarks on a scatologically-themed dog toy because VIP Products was using the allegedly infringing marks as its own trademarks (i.e., as source identifiers). 

And with the Jack Daniel's decision, the writing was on the wall for AJ Press. The Ninth Circuit withdrew its Punchbowl opinion, ordered additional briefing and reargument, and then reversed itself. Noting that “it is clear…that Jack Daniel’s altered the law, ” the Ninth Circuit found that, in light of Jack Daniel’s and because AJ Press was using PUNCHBOWL as a source indicator, Rogers did not apply. Instead, AJ Press was not entitled to First Amendment-immunity for trademark infringement and the case was remanded to the District Court for an analysis of likelihood of confusion under the Lanham Act. 

Interestingly, in support of its decision the Ninth Circuit—like the Supreme Court—cited AJ Press’s trademark application for PUNCHBOWL as clear evidence it was using PUNCHBOWL as a trademark. (Practice Tip:  if you are planning on relying on a Rogers defense, think carefully before filing a trademark application). The Ninth Circuit also easily disposed of AJ Press’s arguments that it should be exempt from the Lanham Act because it is a media company, because it did not adopt PUNCHBOWL as reference to Punchbowl, Inc., and because PUNCHBOWL as applied to its journalism services has expressive qualities. While these arguments could be relevant to a standard likelihood of confusion analysis, the Ninth Circuit said they had no impact on whether AJ Press should be exempt from that analysis under Rogers and Jack Daniel's.

The Ninth Circuit also clarified its position going forward: "[t]o 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.”

In those 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. They 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. 

Punchbowl, Inc. v. AJ Press LCC, No. 21-55881 (9th Cir. 2024)