Punchbowl, Inc. v. AJ Press LLC

549 F.Supp.3d 1061

PUNCHBOWL, INC.

v.AJ PRESS LLC

Case No. 2:21-cv-03010-SVW-MAR

United States District Court, C.D. California.

Filed July 16, 2021

David M. Stein, Franklin Scott Krbechek, Brown Rudnick LLP, Irvine, CA, Peter J. Willsey, Pro Hac Vice, Vincent J. Badolato, Pro Hac Vice, Brown Rudnick LLP, Washington, DC, for Punchbowl, Inc.

Ian C. Ballon, Nina D. Boyajian, Julianna M. Simon, Greenberg Traurig LLP, Los Angeles, CA, for AJ Press LLC.

Proceedings: ORDER GRANTING [23] MOTION FOR SUMMARY JUDGMENT.

STEPHEN V. WILSON, U.S. DISTRICT JUDGE

Before the Court is a motion for summary judgment filed by Defendant AJ Press LLC. See Dkt. 23.¹ The Court finds that the motion is suitable for disposition without oral argument. L.R. 7-15. For the below reasons, the motion is GRANTED.

I. Factual and Procedural Background.²

Plaintiff is a technology company that develops online communications solutions for consumers, including online event invitations and greetings cards, with a focus on celebrations, holidays, and events. Plaintiff's services are used by millions of consumers across the United States and around the world. Punchbowl works with companies such as The Walt Disney Company, Party City Holdings, Sesame Workshop, Chuck E. Cheese's, and Dave & Busters.

Plaintiff has allegedly used the mark PUNCHBOWL® since April 2006. On March 28, 2013, the United States Patent & Trademark Office issued U.S. Trademark Registration No. 4,341,102 to Plaintiff for the Punchbowl mark in connection with online communications services.

Defendant operates an online news publication that provides newsletters, podcasts, and videos in the fields of government, politics, public policy, and current events. The publication is called "Punchbowl News." The publication offers curated, non-partisan commentary, opinions, and critiques regarding politicians, lobbyists, and aides. Defendant uses the word "Punchbowl" because that is the Secret Service nickname for the U.S. Capitol and, accordingly, "Punchbowl" elicits the geographic location of the U.S. Capitol and Washington, D.C.

On April 7, 2021, Plaintiff filed a complaint against Defendant alleging trademark violations and related claims. Dkt. 1. Defendant filed a motion to dismiss on May 10, 2021. Dkt. 23. This Court converted Defendant's motion to dismiss to a motion for summary judgment on June 21, 2021. Dkt. 27.

II. Legal Standard.

Summary judgment should be granted where "the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The moving party "bears the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of ... [the factual record that] demonstrate the absence of a genuine issue of material fact." Celotex Corp. v. Catrett , 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Once the moving party satisfies its initial burden, the non-moving party must demonstrate with admissible evidence that genuine issues of material fact exist. Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) ("When the moving party has carried its burden under Rule 56 ... its opponent must do more than simply show that there is some metaphysical doubt as to the material facts.").

A material fact for purposes of summary judgment is one that "might affect the outcome of the suit" under applicable law. Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A genuine issue of material fact exists where "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id. Although a court must draw all inferences in the non-movant's favor, id. at 255, 106 S.Ct. 2505, when the non-moving party's version of the facts is "blatantly contradicted by the record, so that no reasonable jury could believe it, [the] court should not adopt that version of the facts for purposes of ruling on a motion for summary judgment," Scott v. Harris , 550 U.S. 372, 380, 127 S.Ct. 1769, 167 L.Ed.2d 686 (2007).

III. Analysis.

Under the Rogers test, a trademark owner does not have an actionable Lanham Act claim unless the defendant's use of the trademark either (1) is not artistically relevant to the underlying work, or (2) explicitly misleads consumers as to the source or content of the work. VIP Prods. LLC v. Jack Daniel's Props., Inc. , 953 F.3d 1170, 1174 (9th Cir. 2020). "Neither of these prongs is easy to meet." Dr. Seuss Enterprises, L.P. v. ComicMix LLC , 983 F.3d 443, 462 (9th Cir. 2020), cert. denied, No. 20-1616, ––– U.S. ––––, 141 S.Ct. 2803, 210 L.Ed.2d 933 (U.S. June 21, 2021).

Here, no reasonable juror could find that Defendant's use of Plaintiff's mark either (1) is not artistically relevant to the underlying work, or (2) explicitly misleads consumers as to the source or content of the work. Accordingly, summary judgment is warranted in favor of Defendant.

A. No Reasonable Juror Could Find that Defendant's Use of Plaintiff's Mark is Not Artistically Relevant to Defendant's Underlying Work.

As to the first prong, any artistic relevance "above zero" is sufficient. Id. ; see also Brown v. Elec. Arts, Inc. , 724 F.3d 1235, 1245 (9th Cir. 2013) ("even the slightest artistic relevance" is enough).

In Twentieth-Century Fox v. Empire Distribution, Inc. , the plaintiff, Empire Distribution, Inc.,³ was a "well-known and respected record label that records and releases albums in the urban music genre." 875 F.3d 1192, 1195 (9th Cir. 2017). The defendant was Twentieth Century Fox ("Fox"), the television broadcasting company. Id. Fox released a television show called Empire , which portrayed a fictional hip hop music label based in New York. Id. The television show featured music in every episode and, pursuant to an agreement with Fox, Columbia Records would release music for the public after each episode aired. Id. The plaintiff sued Fox, alleging trademark infringement under the Lanham Act. Id. The district court granted summary judgment in favor of Fox on the basis that the plaintiff could not satisfy either prong of the Rogers test. Id.

The Ninth Circuit affirmed. In doing so, the court explained that no reasonable juror could find that Fox's use of the plaintiff's mark was not artistically relevant. This was because Fox's use of the mark "support[ed] the themes and geographic setting of the work." Id. at 1199. More specifically, "the show's setting is New York, the Empire State, and its subject matter is a music and entertainment conglomerate, ‘Empire Enterprises,’ which is itself a figurative empire." Id. at 1198.

The instant case is analogous to Twentieth-Century Fox. Defendant is in the business of publishing "curated, non-partisan commentary, opinions, and critiques" regarding "politicians, lobbyists, and aides" in Washington, D.C. Sherman Decl. ¶ 6. Defendant wanted the name of its publication to be "evocative of the U.S. Capitol" because its publication "heavily focuses on people and events in Washington D.C. and the Capitol." Id. ¶ 7. Defendant "selected the name Punchbowl News to elicit the theme and geographic location of [its] news publication—people and events in and near the U.S. Capitol." The reason that "Punchbowl" elicits the theme and geographic setting of Defendant's publication is that " ‘Punchbowl’ " is the Secret Service nickname for the U.S. Capitol."⁴ Id. ¶ 8.

In designing its logo, Defendant worked with a third-party marketing agency and sought to tie its imaging to the Capitol. Id. ¶ 10. Accordingly, the proposed designs largely invoked the Capitol building or its features. Id. ; see also id. Ex. 1. Defendant's final logo also invokes the Capitol building:

Under these circumstances, no reasonable juror could conclude that Defendant's use of Plaintiff's mark is not artistically relevant to Defendant's underlying work. As in Twentieth-Century Fox , Defendant uses Plaintiff's mark to "support[ ] the themes and geographic setting of the work." 875 F.3d at 1199. More specifically, Defendant's underlying work focuses on people and events in Washington D.C., including politicians, lobbyists, and aides—i.e. , individuals whose lives are largely centered around the Capitol building. The term "Punchbowl" is evocative of the Capitol building because it is the Secret Service's nickname for that building. And Defendant's logo makes that clear by including an image of the Capitol dome, upside down.

Accordingly, no reasonable juror could find in favor of Plaintiff on the first prong of the Rogers test.

B. No Reasonable Juror Could Find that Defendant's Use of Plaintiff's Mark Explicitly Misleads Consumers as to the Source or Content of Defendant's Work.

The second prong of the Rogers test is a "high bar that requires the use to be an explicit indication, overt claim, or explicit misstatement about the source of the work." Dr. Seuss , 983 F.3d at 462 (quotations and citations omitted). A plaintiff does not necessarily satisfy this prong merely by showing that the defendant expressly uses the trademark. See id. ("[A]lthough titling a book ‘Nimmer on Copyright,’ ‘Jane Fonda's Workout Book,’ or ‘an authorized biography’ can explicitly misstate who authored or endorsed the book, a title that ‘include[s] a well-known name’ is not explicitly misleading if it only ‘implicitly suggest[s] endorsement or sponsorship.’ ").

Indeed, the Ninth Circuit has found that a defendant selling a children's book did not explicitly mislead when using a title strikingly similar to that of a well-known children's book. See id. (finding title "Oh, the Places You'll Boldly Go!" not explicitly misleading to plaintiff's use of "Oh, the Places You'll Go!"); see also id. ("Boldly is not explicitly misleading as to its source, though it uses the Seussian font in the cover, the Seussian style of illustrations, and even a title that adds just one word—Boldly—to the famous title—Oh, the...