FOR PUBLICATION
`
`UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`
`Plaintiff-Appellant,
`
`PUNCHBOWL, INC., a Delaware
`corporation,
`
`
`
`
`
` v.
`
`
`AJ PRESS, LLC, a Delaware limited
`liability company,
` Defendant-Appellee.
`
`
`
`
`
`
`
`No.21-55881
`
`D.C. No.
`2:21-cv-03010-
`SVW-MAR
`
`
`OPINION
`
`
`
`
`
`Appeal from the United States District Court
`for the Central District of California
`Stephen V. Wilson, District Judge, Presiding
`
`Argued and Submitted October 2, 2023
`Las Vegas, Nevada
`
`Filed January 12, 2024
`
`Before: John B. Owens and Daniel A. Bress, Circuit
`Judges, and Sidney A. Fitzwater,* District Judge.
`
`Opinion by Judge Bress
`
`
`* The Honorable Sidney A. Fitzwater, United States District Judge for
`the Northern District of Texas, sitting by designation.
`
`
`
`
`
`UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`
`Plaintiff-Appellant,
`
`PUNCHBOWL, INC., a Delaware
`corporation,
`
`
`
`
`
` v.
`
`
`AJ PRESS, LLC, a Delaware limited
`liability company,
` Defendant-Appellee.
`
`
`
`
`
`
`
`No.21-55881
`
`D.C. No.
`2:21-cv-03010-
`SVW-MAR
`
`
`OPINION
`
`
`
`
`
`Appeal from the United States District Court
`for the Central District of California
`Stephen V. Wilson, District Judge, Presiding
`
`Argued and Submitted October 2, 2023
`Las Vegas, Nevada
`
`Filed January 12, 2024
`
`Before: John B. Owens and Daniel A. Bress, Circuit
`Judges, and Sidney A. Fitzwater,* District Judge.
`
`Opinion by Judge Bress
`
`
`* The Honorable Sidney A. Fitzwater, United States District Judge for
`the Northern District of Texas, sitting by designation.
`
`
`
`
`
`2
`
`PUNCHBOWL, INC. V. AJ PRESS, LLC
`
`SUMMARY**
`
`Lanham Act
`
`
`
`
`
`the district court’s summary
`The panel reversed
`judgment in favor of the defendant in a trademark
`infringement suit involving two companies that used the
`word “Punchbowl” in their marks and remanded for further
`proceedings.
`
`Applying Jack Daniel’s Properties, Inc. v. VIP Products
`LLC, 599 U.S. 140 (2023), the panel held that the
`defendant’s use of the Punchbowl mark was not outside the
`scope of the Lanham Act under the “Rogers test.” Under this
`test, a trademark dispute concerning an expressive work
`protected by the First Amendment does not fall within the
`Lanham Act unless the defendant’s use of the mark was not
`artistically relevant to the work or explicitly misled
`consumers as to the source or the content of the work. Jack
`Daniel’s held that the Rogers test does not apply when the
`accused infringer has used a trademark to designate the
`source of its own goods. The panel concluded that, following
`Jack Daniel’s, the Ninth Circuit’s prior precedents were no
`longer good law insofar as they held that Rogers applied
`when an expressive mark was used as a mark, and that the
`only threshold for applying Rogers was an attempt to apply
`the Lanham Act to something expressive.
`
`The panel held that Rogers did not apply here because
`the defendant was using the Punchbowl mark to identify and
`distinguish its news products. The panel instructed that, on
`
`** This summa ry constitutes no pa rt of the opinion of the court. It ha s
`been prepa red by court sta ff for the convenience of the rea der.
`
`
`
`
`
`PUNCHBOWL, INC. V. AJ PRESS, LLC
`
`
`
`3
`
`remand, the district court should proceed to a likelihood -of-
`confusion analysis under the Lanham Act.
`
`
`COUNSEL
`
`Peter J. Willsey (argued) and Vincent Badolato, Brown
`Rudnick LLP, Washington, D.C.; Rececca M. Lecaroz and
`Melanie D. Burke, Brown Rudnick LLP, Boston,
`Massachusetts; David Stein, Brown Rudnick LLP, Irvine,
`California; for Plaintiff-Appellant.
`
`Ian C. Ballon (argued) Nina D. Boyajian, and Rebekah S.
`Guyon, Greenberg Traurig LLP, Los Angeles, California,
`for Defendant-Appellee.
`
`Cara L. Gagliano and Corynne McSherry, Electronic
`Frontier Foundation, San Francisco, California, Amici
`Curiae Electronic Frontier Foundation.
`
`Eugene Volokh, UCLA First Amendment Clinic, UCLA
`School of Law, Los Angeles, California, Amici Curiae Law
`Professors.
`
`
`OPINION
`
`BRESS, Circuit Judge:
`
`This case requires us to apply the Supreme Court’s
`recent decision in Jack Daniel’s Properties, Inc. v. VIP
`Products LLC, 599 U.S. 140 (2023), to a trademark
`infringement dispute involving two companies that use the
`word “Punchbowl” in their marks. Prior to Jack Daniel’s,
`and bound by Ninth Circuit precedent, we held that under the
`
`
`
`
`
`4
`
`PUNCHBOWL, INC. V. AJ PRESS, LLC
`
`“Rogers test,” see Rogers v. Grimaldi, 875 F.2d 994 (2d Cir.
`1989), the defendant’s use of the term “Punchbowl” was
`expressive in nature and not explicitly misleading as to its
`source, which meant it fell outside the Lanham Act as a
`matter of law. See Punchbowl, Inc. v. AJ Press, LLC
`(Punchbowl I), 52 F.4th 1091 (9th Cir. 2022), opinion
`withdrawn, 78 F.4th 1158 (9th Cir. 2023). 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.
`
`We reverse and remand for further proceedings.
`
`I
`
`A
`
`The following facts come verbatim from our initial
`opinion in this case. See Punchbowl I, 52 F.4th at 1094–96.
`
`is a self-described
`Punchbowl, Inc. (Punchbowl),
`“technology company that develops online communications
`solutions for consumers,” with a “focus on celebrations,
`holidays, events and memory-making.”
` Punchbowl
`provides “online event and celebration invitations and
`greetings cards” and “custom sponsorships and branded
`invitations,” as part of a subscription-based service.
`Punchbowl also works with companies such as The Walt
`Disney Company, Chuck E. Cheese, and Dave & Busters to
`help them promote their brands through online invitations.
`
`Punchbowl has used the mark Punchbowl® (the Mark)
`since at least 2006. It registered the Mark with the United
`
`
`
`
`
`PUNCHBOWL, INC. V. AJ PRESS, LLC
`
`
`
`5
`
`States Patent & Trademark Office in 2013. The Mark was
`registered primarily 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.”
`
`Punchbowl promotes itself as “The Gold Standard in
`Online Invitations & Greeting Cards,” as reflected in this
`record excerpt from Punchbowl’s website:
`
`A larger example of Punchbowl’s Mark and logo (a punch
`ladle) is shown here:
`
`
`
`
`
`
`
`
`
`6
`
`PUNCHBOWL, INC. V. AJ PRESS, LLC
`
`But this is not the only Punchbowl. Journalists Jake
`Sherman and Anna Palmer are the co-founders of AJ Press,
`LLC, a company that “provides curated, non-partisan
`commentary, opinions, and critiques.” In 2021, Palmer and
`Sherman co-founded Punchbowl News with reporter John
`Bresnahan. Punchbowl News is a subscription-based online
`news publication that covers topics in American government
`and politics. AJ Press owns and operates Punchbowl News,
`choosing which topics to cover and how to address them. AJ
`Press concentrates its reporting on the “insiders” who make
`decisions in Washington, D.C., (i.e., politicians, aides, and
`lobbyists), and on events and news that affect American
`political dynamics and elections.
`
`Given the publication’s focus on Beltway politics, AJ
`Press wanted a name that evoked its subject matter. It chose
`“Punchbowl” because that is the nickname the Secret
`Service uses to refer to the U.S. Capitol. The title
`Punchbowl News was thus selected to “elicit the theme and
`geographic location” of the publication. AJ Press has filed
`trademark applications to register the marks “Punchbowl
`News” and “Punchbowl Press.”
`
`Punchbowl News often uses a slogan—“Power. People.
`Politics.”—in connection with its name and logo. Like its
`name, AJ Press chose its slogan to reflect the subject matter
`and theme of the Punchbowl News publication. Similarly,
`AJ Press selected a logo to allude to the publication’s focus
`on insider news and political commentary. The logo depicts
`an overturned U.S. Capitol filled with bright pink/purple
`punch—an apparently playful homage to a blend of the
`traditional red and blue associated with America’s leading
`political parties
`that
`emphasizes
`the publication’s
`nonpartisan stance. This is an example from the record of
`
`
`
`
`
`PUNCHBOWL, INC. V. AJ PRESS, LLC
`
`
`
`7
`
`Punchbowl News’s logo in conjunction with its slogan, as it
`appears on its website:
`
`
`
`Punchbowl News frequently promotes its connection to
`its founders. Its website depicts a large image of Sherman,
`Palmer, and Bresnahan accompanied by text stating that
`Punchbowl News was “founded by journalists and best-
`selling authors Jake Sherman and Anna Palmer, and co-
`founded by veteran Capitol Hill reporter John Bresnahan.”
`Punchbowl News’s publications state at the top, near the
`name “Punchbowl News,” that they are “by John Bresnahan,
`Anna Palmer, and Jake Sherman.”
`
`B
`
`The parties’ coinciding uses of “Punchbowl” led to this
`lawsuit. Punchbowl sued AJ Press, alleging violations of the
`Lanham Act for
`trademark
`infringement and unfair
`competition. 15 U.S.C. §§ 1114, 1125(a). Punchbowl also
`brought related state law claims.
`
`The district court converted AJ Press’s motion to dismiss
`into a motion for summary judgment. The court then granted
`summary judgment to AJ Press, concluding that its use of the
`name “Punchbowl” did not give rise to liability under the
`Rogers test because it constituted protected expression and
`was not explicitly misleading as to its source. The district
`court also denied Punchbowl’s request for a continuance
`
`
`
`
`
`8
`
`PUNCHBOWL, INC. V. AJ PRESS, LLC
`
`under Federal Rule of Civil Procedure 56(d) to conduct
`additional discovery.
`
`In November 2022, we affirmed. See Punchbowl I, 52
`F.4th at 1094. Applying circuit precedent, including this
`court’s decision in VIP Products LLC v. Jack Daniel’s
`Properties, Inc., 953 F.3d 1170 (9th Cir. 2020), vacated, 599
`U.S. 140 (2023), we held that AJ Press’s use of the Mark was
`expressive in nature and outside the scope of the Lanham Act
`under the Rogers test. See Punchbowl I, 52 F.4th at 1097–
`1104. That was so even though AJ Press used the Mark to
`identify its commercial brand. Id. at 1099–1100.
`
`The week after we issued our opinion in Punchbowl I,
`the Supreme Court granted certiorari in Jack Daniel’s, a case
`in which our court applied Rogers to hold that a dog chew
`toy resembling a bottle of Jack Daniel’s whiskey was
`protected First Amendment expression,
`to which
`the
`Lanham Act did not apply. Because our opinion in
`Punchbowl I relied on both our court’s decision in Jack
`Daniel’s and a body of Ninth Circuit precedent applying
`Rogers, we promptly stayed the mandate in Punchbowl I to
`await the Supreme Court’s decision in Jack Daniel’s. In
`June 2023, the Supreme Court issued its opinion in Jack
`Daniel’s, reversing this court.
`
`In light of the Supreme Court’s decision, we withdrew
`our opinion in Punchbowl I. See 78 F.4th 1158. We then
`ordered the parties to file supplemental briefs and heard re-
`argument. Our review here is de novo. Miranda v. City of
`Casa Grande, 15 F.4th 1219, 1224 (9th Cir. 2021).
`
`II
`
`The Lanham Act, 15 U.S.C. § 1051 et seq., “creates a
`comprehensive
`framework
`for regulating
`the use of
`
`
`
`
`
`PUNCHBOWL, INC. V. AJ PRESS, LLC
`
`
`
`9
`
`infringement,
`them against
`trademarks and protecting
` Gordon v. Drape
`dilution, and unfair competition.”
`Creative, Inc., 909 F.3d 257, 263 (9th Cir. 2018) (quoting
`Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand
`Mgmt., Inc., 618 F.3d 1025, 1030 (9th Cir. 2010)).
`Traditionally, courts apply a likelihood-of-confusion test to
`claims brought under the Lanham Act. See id. at 264. Under
`this test, we ask “whether a ‘reasonably prudent consumer’
`in the marketplace is likely to be confused as to the origin of
`the good or service bearing one of the marks.” Dreamwerks
`Prod. Grp. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir.
`1998) (citation omitted); see also Lodestar Anstalt v.
`Bacardi & Co., 31 F.4th 1228, 1252 (9th Cir. 2022). That
`analysis requires consideration of the eight “Sleekcraft”
`factors: “(1) strength of the mark; (2) proximity of the goods;
`(3) similarity of the marks; (4) evidence of actual confusion;
`(5) marketing channels used; (6) type of goods and the
`degree of care likely to be exercised by the purchaser; (7)
`defendant’s intent in selecting the mark; and (8) likelihood
`of expansion of the product lines.” AMF Inc. v. Sleekcraft
`Boats, 599 F.2d 341 (9th Cir. 1979), abrogated on other
`grounds by Mattel, Inc. v. Walking Mountain Prods., 353
`F.3d 792, 810 n.19 (9th Cir. 2003). Under Rogers, however,
`we have held that background First Amendment concerns
`sometimes require a heightened showing for a trademark
`infringement claim to proceed.
`
`The question in this case is whether Punchbowl’s claims
`against AJ Press fall under Rogers. In Punchbowl I, we said
`“yes.” But that was before Jack Daniel’s. We now hold that
`Rogers does not apply to this case. To explain why Jack
`Daniel’s dictates a different
`result
`than we reached
`previously, we first provide an overview of our circuit’s pre-
`Jack Daniel’s case law applying Rogers, as well as our prior
`
`
`
`
`
`10
`
`PUNCHBOWL, INC. V. AJ PRESS, LLC
`
`decision in Punchbowl I. We then examine the Supreme
`Court’s decision in Jack Daniel’s. Finally, we explain why
`Jack Daniel’s limitation of the Rogers test governs this case.
`The upshot is that Punchbowl’s claims against AJ Press are
`not excluded from the Lanham Act under Rogers, even as
`additional questions remain as to whether this lawsuit can
`proceed further or ultimately succeed.
`
`A
`
`We begin with Rogers. Our precedents applying Rogers
`were borne of the idea that some trademarks have expressive
`value and that in those situations, trademark law’s traditional
`likelihood-of-confusion test “fails to account for the full
`weight of the public’s interest in free expression.” Mattel,
`Inc. v. MCA Records, Inc., 296 F.3d 894, 900 (9th Cir. 2002).
`To “avoid conflict” between the First Amendment and the
`Lanham Act, Gordon, 909 F.3d at 264, we adopted the
`approach of the Second Circuit in Rogers v. Grimaldi to
`frame the inquiry into when the Lanham Act applies to a
`trademark dispute. See Mattel, 296 F.3d at 902.
`
`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.” Gordon, 909 F.3d at
`264. 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.” Id.
`(citing Mattel, 296 F.3d at 902). “Neither of these prongs is
`easy to meet.” Dr. Seuss Enters., L.P. v. ComicMix LLC,
`983 F.3d 443, 462 (9th Cir. 2020). “Artistic relevance” in
`Rogers’s first prong means artistic relevance “merely . . .
`above zero,” such that a trademark infringement plaintiff can
`
`
`
`
`
`PUNCHBOWL, INC. V. AJ PRESS, LLC
`
`
`
`11
`
`avoid Rogers only if the use of the mark has “no artistic
`relevance to the underlying work whatsoever.” E.S.S. Ent.
`2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1099–
`1100 (9th Cir. 2008) (quoting Mattel, 296 F.3d at 902). And
`to be “explicitly misleading” under Rogers’s second prong,
`there must be “‘an explicit indication, overt claim, or explicit
`misstatement’ about the source of the work.” Dr. Seuss
`Enters., L.P., 983 F.3d at 462 (quoting Brown v. Elec. Arts,
`Inc., 724 F.3d 1235, 1245 (9th Cir. 2013)). When the Rogers
`test applies,
`it often precludes claims of
`trademark
`infringement. See Gordon, 909 F.3d at 261.
`
`Our precedents have applied Rogers to a range of
`expressive works. For example, the Rogers test applied to a
`suit by Mattel, the manufacturer of Barbie dolls, against a
`European band that produced the song “Barbie Girl.”
`Mattel, 296 F.3d at 901. We held that the song, which
`featured lyrics such as “I’m a blond bimbo girl, in a fantasy
`world,” used the Barbie mark in a way that was artistically
`relevant to the work’s satirical commentary on the “Barbie”
`lifestyle. Id. at 902. The work was also not “explicitly
`misleading” under Rogers’s second prong because it only
`used the name “Barbie” in the song and title and “d[id] not,
`explicitly or otherwise, suggest that it was produced by
`Mattel.” Id. In addition to Mattel, we have applied Rogers
`to various other expressive works. See, e.g., Dr. Seuss
`Enters., L.P., 983 F.3d at 461 (applying Rogers to the use of
`“Seussian font” and “Seussian style of illustration” in a
`comic book); E.S.S. Ent. 2000, 547 F.3d at 1100 (applying
`Rogers where the defendant distributed a video game that
`parodied the plaintiff’s strip club); Walking Mountain
`Prods., 353 F.3d at 807 (applying Rogers to the use of the
`Barbie mark in titles of photographs).
`
`
`
`
`
`12
`
`PUNCHBOWL, INC. V. AJ PRESS, LLC
`
`But our precedents also rejected the theory that “the
`Rogers test includes a threshold requirement that a mark
`have attained a meaning beyond its source-identifying
`function.” Twentieth Century Fox Television v. Empire
`Distrib., Inc., 875 F.3d 1192, 1197 (9th Cir. 2017). Instead,
`this was “merely a consideration under the first prong of the
`Rogers test.” Id. The result was that “the only threshold
`requirement for the Rogers test [wa]s an attempt to apply the
`Lanham Act to First Amendment expression.” Id. at 1198.
`We thus held in Twentieth Century Fox that the use of the
`“Empire” mark as an umbrella brand did not take the case
`outside of Rogers. Id. at 1196–97.
`
`Our decision in Jack Daniel’s emerged from this line of
`cases. There, VIP Products sold a “Bad Spaniels Silly
`Squeaker” rubber dog chew toy that, with humorous dog-
`themed alterations, resembled the distinctive bottle of Jack
`Daniel’s Old No. 7 Black Label Tennessee Whiskey. 953
`F.3d at 1172. We held that the Rogers test barred Lanham
`Act liability for the Bad Spaniels Silly Squeaker. Id. Rogers
`applied because “the Bad Spaniels dog toy, although surely
`not the equivalent of the Mona Lisa, is an expressive work.”
`Id. at 1175.
`
`This was the state of the law when we decided
`Punchbowl I. 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. We first rejected Punchbowl’s argument that this case
`“lies outside of Rogers’s domain” because Rogers “does not
`extend to the brand name of a commercial enterprise.”
`Punchbowl I, 52 F.4th at 1097 (brackets and quotation marks
`omitted). We disagreed with that proposition because under
`circuit precedent, “[t]he only threshold requirement for the
`
`
`
`
`
`PUNCHBOWL, INC. V. AJ PRESS, LLC
`
`
`
`13
`
`Rogers test is an attempt to apply the Lanham Act to First
`Amendment expression,” meaning that “whether ‘a mark has
`attained a meaning beyond its source-identifying function’
`is not a threshold requirement for applying Rogers.” Id. at
`1097, 1099 (brackets omitted) (quoting Twentieth Century
`Fox, 875 F.3d at 1198).
` AJ Press used the word
`“Punchbowl” to convey a “D.C. insider perspective” and a
`“gossipy” political theme. Id. at 1098. Relying on our
`court’s decision in Jack Daniel’s, we observed that “[i]f a
`rubber dog toy is expressive under Rogers, we have little
`doubt that AJ Press’s use of the Punchbowl Mark is as well.”
`Id. (citation omitted).
`
`Turning to the two prongs of the Rogers test, we held that
`AJ Press’s use of the mark was artistically relevant to its
`publications and that AJ Press did not explicitly mislead
`consumers as to the source or content of its work. Id. at
`1100–03. Although AJ Press used the same core word in its
`mark (“Punchbowl”), under our case law “the mere use of a
`trademark alone cannot suffice to make such use explicitly
`misleading.” Id. at 1100 (quoting E.S.S. Ent., 547 F.3d at
`1100). Because AJ Press was using the mark in a different
`context than Punchbowl (the former for political news and
`the latter for online greeting cards), and because AJ Press
`had added its own expressive content, such as a slogan and
`logo, AJ Press’s use of the Mark was not explicitly
`misleading. Id. at 1101–03. Thus, Rogers applied, and AJ
`Press was not subject to trademark liability for its use of the
`Mark.
`
`B
`
`Enter the Supreme Court in Jack Daniel’s. The Court in
`Jack Daniel’s was careful to note that it was not opining on
`the broader validity of the Rogers test. See 599 U.S. at 145
`
`
`
`
`
`14
`
`PUNCHBOWL, INC. V. AJ PRESS, LLC
`
`(“[W]e do not decide whether the threshold inquiry applied
`in the Court of Appeals is ever warranted.”); id. at 163 (“We
`do not decide whether the Rogers test is ever appropriate . .
`. .”). At the same time, Jack Daniel’s held that the Rogers
`threshold inquiry “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.” Id. at 145.
`
`Jack Daniel’s was clear on this point. Said the Court:
`“Without deciding whether Rogers has merit in other
`contexts, we hold that it does not when an alleged infringer
`uses a trademark in the way the Lanham Act most cares
`about: as a designation of source for the infringer’s own
`goods.” Id. at 153; see also, e.g., id. at 156 (the Rogers test
`does not “insulate[] from ordinary trademark scrutiny the use
`of trademarks as trademarks, ‘to identify or brand a
`defendant’s goods or services.’” (alterations omitted)); id. at
`163 (“Rogers does not apply when the challenged use of a
`mark is as a mark.”). This rule applies, the Court went on,
`even if “the use of a mark has other expressive content—i.e.,
`because it conveys some message on top of source.” Id. at
`157. In the Supreme Court’s view, because “trademarks are
`often expressive,” applying Rogers whenever a trademark
`has expressive connotations would allow Rogers to “take
`over much of the world.” Id. at 158.
`
`The Court located its “use of a mark as a mark” carveout
`from Rogers in both the Lanham Act itself and the body of
`lower court precedent applying Rogers.
` From
`the
`perspective of the Lanham Act, “whether the use of a mark
`is serving a source-designation function” is “crucial” for the
`Act’s objective of “ensur[ing] that consumers can tell where
`
`
`
`
`
`PUNCHBOWL, INC. V. AJ PRESS, LLC
`
`
`
`15
`
`goods come from.” Id. at 163. And, Jack Daniel’s
`explained, lower courts applying Rogers had similarly
`“confined it” to cases “in which a trademark is used not to
`designate a work’s source, but solely to perform some other
`expressive function.” Id. at 154. The Court cited as an
`example our decision in the Mattel case, which, as discussed
`above, held that Rogers applied to the song “Barbie Girl.”
`Id. In Mattel, “the band’s use of the Barbie name was ‘not
`as a source identifier’” because “[t]he use did not ‘speak to
`the song’s origin.’” Id. (brackets omitted) (quoting Mattel,
`296 F.3d at 900, 902).
`
`Jack Daniel’s explained that when a mark is not used as
`a mark, lower courts had found that the risk of consumer
`confusion about the source of a work was “slight” and
`“unlikely,” providing greater justification for Rogers’s
`threshold test. Id. at 153, 155 (citations and quotation marks
`omitted). This “cabined” understanding of Rogers more
`properly aligned with the Lanham Act, the purpose of which
`is to ensure that consumers are not confused about source.
`Id. at 155, 157. That confusion “is most likely to arise when
`someone uses another’s trademark as a trademark—meaning
`again, as a source identifier—rather than for some other
`expressive function.” Id. at 157. In the Supreme Court’s
`view, when “a mark is used as a mark,” the traditional
`likelihood-of-confusion test “does enough work to account
`for the interest in free expression.” Id. at 159.
`
`From these principles, the Supreme Court had little
`difficulty concluding that Rogers should not apply to the Bad
`Spaniels dog toy. VIP Products had conceded that it used
`the Bad Spaniels trademark as a source identifier. Id. at 160.
`And that was how VIP Products used the mark in operation.
`Id. Thus, there could be “no threshold test working to kick
`out” the claims of Jack Daniel’s, and “the only question in
`
`
`
`
`
`16
`
`PUNCHBOWL, INC. V. AJ PRESS, LLC
`
`this suit going forward is whether the Bad Spaniels marks
`are likely to cause confusion.” Id. at 161. The Supreme
`Court remanded the case for further development on this
`point.
`
`Of note, however, the Supreme Court recognized that the
`Bad Spaniels expressive message could still be relevant to
`the likelihood-of-confusion analysis. The Court specifically
`flagged
`that “a
`trademark’s expressive message—
`particularly a parodic one, as VIP asserts—may properly
`figure in assessing the likelihood of confusion.” Id. Indeed,
`the Court reasoned, “although VIP’s effort to ridicule Jack
`Daniel’s does not justify use of the Rogers test, it may make
`a difference in the standard trademark analysis.” Id. These
`observations were consistent with the Supreme Court’s
`acknowledgment that in some instances, a plaintiff may fail
`to plausibly allege likelihood of confusion at the Rule
`12(b)(6) stage. Id. at 157 n.2.
`
`It is clear from the foregoing discussion that Jack
`Daniel’s altered the law that governed us when we decided
`Punchbowl I. 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. See Miller v. Gammie, 335 F.3d 889,
`893 (9th Cir. 2003) (en banc), overruled on other grounds
`by Sanchez v. Mayorkas, 141 S.Ct. 1809 (2021) (holding that
`a three-judge panel does not follow circuit precedent when
`“the reasoning or theory of our prior circuit authority is
`clearly irreconcilable with the reasoning or theory of
`intervening higher authority”). At the same time, however,
`because the Supreme Court’s decision in Jack Daniel’s was
`
`
`
`
`
`PUNCHBOWL, INC. V. AJ PRESS, LLC
`
`
`
`17
`
`confined to a “narrow” point of law, 599 U.S. at 163, 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. Cf. id. at 165 (Gorsuch, J., concurring) (“[W]e
`necessarily leave much about Rogers unaddressed.”).
`
`C
`
`We now re-examine this case under Jack Daniel’s and
`that Rogers does not apply.
`hold
` The reason
`is
`straightforward: AJ Press is using the Mark to “designate the
`source of its own goods—in other words, has used a
`trademark as a trademark.” Jack Daniel’s, 599 U.S. at 145.
`The Mark is used to “identify and distinguish” AJ Press’s
`news products. Id. at 160 (citations and quotation marks
`omitted). Indeed, AJ Press has filed trademark applications
`to register the marks “Punchbowl News” and “Punchbowl
`Press.” 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). It is true that as used by AJ Press, the Punchbowl
`Mark has expressive qualities. But that was true in Jack
`Daniel’s as well. It did not change matters there, and it
`cannot do so here. See id. at 157 (“Nor does th[e] result
`change because the use of a mark has other expressive
`content—i.e., because it conveys some message on top of its
`source.”).
`
`AJ Press nonetheless contends that we should read Jack
`Daniel’s more narrowly, so that Rogers should still apply
`here. AJ Press notes that, in Jack Daniel’s, it was undisputed
`that the defendant’s Bad Spaniels mark was a deliberate
`variation of the Jack Daniel’s mark. Here, AJ Press
`
`
`
`
`
`18
`
`PUNCHBOWL, INC. V. AJ PRESS, LLC
`
`emphasizes, it is not using the Punchbowl Mark to parody or
`refer to Punchbowl, Inc., the greeting card company. 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.
`
`We cannot accept this argument given the Supreme
`Court’s reasoning in Jack Daniel’s. The Court was
`unequivocal in holding that “Rogers does not apply when the
`challenged use of the mark is as a mark.” 599 U.S. at 163.
`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. Id. at 150, 161. 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.” Id. at
`163. We have no basis to carve out exceptions for the use of
`common words in trademarks when the Supreme Court
`created no exception for parodies. Nor, as a general matter,
`do we apply a different analysis simply because AJ Press is
`a media company. As in Jack Daniel’s, AJ Press must thus
`“meet [the] infringement claim on the usual battleground of
`‘likelihood of confusion.’” Id. at 156 (citation omitted).
`
`To be clear, however, the expressive nature of AJ Press’s
`use of the Punchbowl Mark and the fact that “punchbowl” is
`a common word will certainly be relevant in the likelihood -
`of-confusion analysis. As we noted above, the Supreme
`Court made the same point in Jack Daniel’s in the context of
`parodies. See id. at 161. A similar point holds true here.
`When companies operating in different spaces use the same
`common words as trademarks with different expressive
`
`
`
`
`
`PUNCHBOWL, INC. V. AJ PRESS, LLC
`
`
`
`19
`
`connotations, it reduces the likelihood of confusion. Cf. id.
`(“[A] parody is not often likely to create confusion.”). And
`although AJ Press emphasizes that it uses “Punchbowl” in
`connection with “Punchbowl News” and “Punchbowl
`Press,” this likewise does not show that Rogers applies, even
`though it will be a relevant consideration in assessing the
`likelihood of confusion.1
`
`On remand, the district court should proceed to a
`likelihood-of-confusion analysis. The court may, in its
`sound discretion, consider whether this analysis can be
`conducted on the present record. See Jack Daniel’s, 599
`U.S. at 157 n.2 (noting that not “every infringement case
`involving a source-identifying use requires
`full-scale
`litigation” and that some cases can be resolved at the Rule
`12(b)(6) stage).
`
`The parties shall bear their own costs on appeal.
`
`REVERSED AND REMANDED.
`
`
`1 In Jack Daniel’s, the Supreme Court allowed that there might
`“potentially” be “rare situations” in which, although a mark is used as a
`mark, the likelihood-of-confusion test does not sufficiently protect First
`Amendment interests. 599 U.S. at 159. AJ Press does not argu e that it
`meets any such “rare” exception.
`
`
`
`
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