Punchbowl, Inc. v. AJ Press, LLC, 21-55881

52 F.4th 1091

PUNCHBOWL, INC., a Delaware corporation, Plaintiff-Appellant,

v.AJ PRESS, LLC, a Delaware limited liability company, Defendant-Appellee.

No. 21-55881

United States Court of Appeals, Ninth Circuit.

Argued and Submitted May 17, 2022 Pasadena, California

FILED NOVEMBER 14, 2022

Peter J. Willsey (argued) and Vincent Badolato, Brown Rudnick LLP, Washington, D.C.; Rebecca MacDowell Lecaroz and Melanie Dahl Burke, Brown Rudnick LLP, Boston, Massachusetts; David Stein, Brown Rudnick LLP, Irvine, California; for Plaintiff-Appellant.

Ian C. Ballon (argued), Rebekah S. Guyon (argued), and Nina D. Boyajian, Greenberg Traurig LLP, Los Angeles, California, for Defendant-Appellee.

Cara L. Gagliano and Corynne McSherry, Electronic Frontier Foundation, San Francisco, California, for Amicus Curiae Electronic Frontier Foundation.

Eugene Volokh ; Elizabeth Anastasi, Max Hyams, and Sofie Oldroyd, Certified Law Students; UCLA School of Law First Amendment Clinic, for Amici Curiae Professors Ann Bartow, Jim Gibson, James Grimmelmann, Mark Lemley, Phil Malone, Mark McKenna, Lisa Ramsey, Jeremy Sheff, Jessica Silbey, Christopher Sprigman, and Rebecca Tushnet.

Before: John B. Owens and Daniel A. Bress, Circuit Judges, and Sidney A. Fitzwater,^* District Judge.

BRESS, Circuit Judge:

Punchbowl, Inc., is an online party and event planning service. Punchbowl News is a subscription-based online news publication that provides articles, podcasts, and videos about American politics, from a Washington, D.C. insider's perspective. Punchbowl claims that Punchbowl News is misusing its "Punchbowl" trademark. Applying our precedents, we hold that Punchbowl News 's use of the term "Punchbowl" is expressive in nature and not explicitly misleading as to its source. It thus falls outside the Lanham Act as a matter of law.

I

Punchbowl, Inc. (Punchbowl), is a self-described "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 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:

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 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."

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 granted summary judgment to AJ Press, concluding that its use of the name "Punchbowl" did not give rise to liability 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 under Federal Rule of Civil Procedure 56(d) to conduct additional discovery.

Punchbowl timely appeals. We review the district court's grant of summary judgment 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 trademarks and protecting them against infringement, dilution, and unfair competition." Gordon v. Drape 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.

When "artistic expression is at issue," however, we have held that "the traditional test fails to account for the full weight of the public's interest in free expression." Id. (quotations omitted). If we were to disregard "the expressive value that some marks assume, trademark rights would grow to encroach upon the zone protected by the First Amendment." Mattel, Inc. v. MCA Records, Inc. , 296 F.3d 894, 900 (9th Cir. 2002). A trademark owner " ‘does not have the right to control public discourse’ by enforcing his mark." Gordon , 909 F.3d at 264 (quoting Mattel , 296 F.3d at 900 ). Thus, "if the product involved is an expressive work," we apply a gateway test, grounded in background First Amendment concerns, to determine whether the Lanham Act applies. Brown v. Elec. Arts, Inc. , 724 F.3d 1235, 1239 (9th Cir. 2013) ; see also Gordon , 909 F.3d at 264 (explaining that when expressive activity is at issue, we "employ[ ] the First Amendment as a rule of construction to avoid conflict between the Constitution and the Lanham Act").

In Mattel , we adopted the approach set forth by the Second Circuit in Rogers v. Grimaldi , 875 F.2d 994 (2d Cir. 1989), to frame the inquiry into whether the Lanham Act applies. See Mattel , 296 F.3d at 902. 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." 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). 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. See Twentieth Century Fox Television v. Empire Distrib. Inc. , 875 F.3d 1192, 1196 (9th Cir. 2017).

A

Before we apply the Rogers test, however, we must address Punchbowl's objection that this case lies outside of Rogers 's domain. Specifically, Punchbowl asserts that the Rogers test is entirely inapplicable because it does not extend to "the brand name of [a] commercial enterprise." In Punchbowl's view, that kind of branding is insufficiently expressive to merit Rogers 's heightened protections. We disagree.

"[T]he only threshold requirement for the Rogers test is an attempt to apply the Lanham Act to First Amendment expression." Twentieth Century Fox , 875 F.3d at 1198. To determine whether a work is expressive, we ask "whether the work ‘is communicating ideas or expressing points of view.’ " VIP Prods. LLC v. Jack Daniel's Props., Inc. , 953 F.3d 1170, 1174–75 (9th Cir. 2020) (quoting Mattel , 296 F.3d at 900 ). "A work need not be the expressive equal of Anna Karenina or Citizen Kane to satisfy this requirement, and is not rendered non-expressive simply because it is sold commercially." Id. at 1175 (citations and quotations omitted).

Our case law demonstrates that a wide range of activity qualifies as expressive...