Ninth Circuit: Commercial Brand Names Can Be Expressive Speech
In Punchbowl, Inc. v. AJ Press, LLC, the Ninth Circuit affirmed a trademark win for upstart news outfit Punchbowl News. In doing so, the court held that First Amendment protection extends to the names of commercial enterprises. This ground-breaking decision heralds the expansion of traditional fair use defenses to any trademark infringement claims where a defendant’s conduct relates, in any way, to the broad category of activity considered “expressive” under the First Amendment.
Just when this blog was about to be posted on November 21, 2022, however, the Supreme Court granted certiorari in Jack Daniel’s Properties, Inc. v. VIP Products LLC. That news splashed a bit of cold water on Punchbowl’s apparent expansion of fair use defenses heralded above. That is because the Court’s review in Jack Daniel’s will almost certainly entail an examination (and perhaps even modification) of the Rogers test discussed below. Thus, Punchbowl’s true impact on trademark law will likely be delayed until resolution of Jack Daniel’s. Nevertheless, in the meantime, Punchbowl remains the law in the Ninth Circuit, which has one of the highest number of trademark infringement filings, as documented by the US Judiciary. Moreover, the Supreme Court’s examination of the Rogers test should not change the core holding of Punchbowl that the name of a commercial enterprise can itself be expressive speech.
Punchbowl, Inc. is an events company, boasting clientele that includes The Walt Disney Company, Chuck E. Cheese, and Dave & Busters. It owns the trademark PUNCHBOWL for its event services as well as for related services (such as sending electronic invitations). It uses the following in connection with its services:
AJ Press owns and operates Punchbowl News – “a subscription-based online news publication that provides articles, podcasts, and videos about American politics, from a Washington, D.C. insider’s perspective.” Politico veterans Jake Sherman and Anna Palmer, along with newsman John Bresnahan, founded the publication in 2021. All three reporters are well known for covering the Capitol Hill beat. As noted in the court’s decision, Punchbowl News looked to capitalize on its founders’ reputations by “concentrate[ing] 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 Capitol Hill and its insiders, the founders sought a name to evoke that subject matter. They “chose ‘Punchbowl’ because that is the nickname the Secret Service uses to refer to the U.S. Capitol.” AJ Press also developed a logo to use in connection with its name. “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.”
The Central District of California granted summary judgment to AJ Press on the ground that “Punchbowl News” is not within the scope of the Lanham Act. In particular, the district court held that the mark is expressive and not explicitly misleading as to its source. The district court also denied Punchbowl’s request for a Rule 56(d) continuance to allow for additional discovery.
The Ninth Circuit affirmed. It began by noting that while trademark cases ordinarily focus on the likelihood of confusion among consumers, the First Amendment requires undertaking a different analysis “[w]hen ‘artistic expression is at issue.’”
When expressive conduct is at issue, the Ninth Circuit applies the test from the Second Circuit’s 1989 decision in Rogers v. Grimaldi. Under that test, defendant must first make a showing that the conduct at issue is part of expressive work protected by the First Amendment, i.e., that the conduct communicates an idea or expresses a point of view. If that “very low” threshold is met, the plaintiff can overcome First Amendment protections only by showing “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.” “Neither of these prongs is easy [for a plaintiff] to meet.”
Punchbowl argued, as a threshold matter, that the Rogers analysis had no application because First Amendment protections do “not extend to ‘the brand name of [a] commercial enterprise.’” The Ninth Circuit disagreed, explaining that “the only threshold requirement for the Rogers test is an attempt to apply the Lanham Act to First Amendment expression.” “To determine whether a work is expressive, we ask whether the work is communicating ideas or expressing points of view.” Notably, the expression need not be “high art” (like “Anna Karenina or Citizen Kane”). And it may still be “expressive” even if sold commercially.
With this backdrop, the Ninth Circuit held that AJ Press’s use of “Punchbowl” is expressive and thus subject to the Rogers test. In support of this conclusion the Ninth Circuit cited the fact that AJ Press sells “First Amendment-protected content” in connection with the mark, its use of “punchbowl” is expressive, the name was chosen to convey a particular perspective of the news material, and the name connotes the tone of both the subject matter of the news coverage (Capitol Hill insiders and gossip) and the news content (the “punchiness” of the writing).
Having found that the Rogers test applied, the Court turned to the application of the remaining two prongs. Because the first prong requires only that AJ Press’s use has an artistic relevance above zero, Punchbowl focused on the second prong.
Under that prong, “the ‘relevant question . . . is whether [Punchbowl News] would confuse its [customers] into thinking that [Punchbowl] is somehow behind [Punchbowl News] or that it sponsors [AJ Press’s] product[s].’” While ordinary trademark infringement abhors consumer confusion, under the Rogers paradigm, “given the First Amendment interests at stake, ‘[t]he Rogers test dr[aws] a balance in favor of artistic expression and tolerates ‘the slight risk that the use of the trademark might implicitly suggest endorsement or sponsorship to some people.’” That is, the Rogers test is solely focused on whether the defendant’s use is misleading, not whether consumers are misled.
Accordingly, under the Rogers test, Punchbowl needed to show that it could (with further discovery as requested) adduce evidence that AJ Press’s use of PUNCHBOWL was affirmatively misleading. Against that high standard, the Court easily concluded that “AJ Press’s incorporation of the PUNCHBOWL Mark in its news publication’s name is not explicitly misleading” and affirmed the district court’s decision on the merits and its decision denying further discovery.
Following Punchbowl, a trademark owner whose business engages in expressive conduct – a very broad category of activities – may have a strong First Amendment defense to any trademark infringement claim. Punchbowl’s finding that “punchbowl” is itself expressive was inextricably tied to the use of the mark in connection with the expressive content sold by AJ Press and/or the expressive nature of the use of the mark as a brand. Even if a mark is used only to advertise protected speech, the Court reasoned that Rogers is possibly more relevant because “the [mark] is being used to promote articles and other materials that are clearly expressive in nature and core First Amendment material.” Thus, for any business that engages in or promotes expressive acts, the expressive fair use defense should be more readily applied in the right circumstances.
Trademark owners would be well-served to ensure that they properly document, register, and account for as many First Amendment-protected categories of activity in connection with a company’s trademark portfolio as reasonable. Doing so in a proactive manner should provide a stronger Rogers defense in the event of a trademark infringement claim, and also secure a more robust trademark portfolio for the company.
Nothing about Jack Daniel’s should change this perspective from a trademark owner’s perspective. While the Supreme Court could modify the Rogers test, it will likely not disturb Punchbowl’s key holding, namely that trade names of commercial enterprises can also be expressive speech entitled to First Amendment protection.
The case is Punchbowl Inc. v. AJ Press LLC, Case No. 21-55881, in the U.S. Court of Appeals for the Ninth Circuit.