"Punchbowl News" Doesn't Infringe Trademark for "Punchbowl" Online Greeting Card Service

From today's decision in Punchbowl, Inc. v. AJ Press, LLC, written by Judge Daniel Bress and joined by Judge John Owens and District Judge Sidney Fitzwater:

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 [the federal trademark statute -EV] as a matter of law.

Seems quite right to me, under the so-called Rogers test:

The Lanham Act "creates a comprehensive framework for regulating the use of trademarks and protecting them against infringement, dilution, and unfair competition." Traditionally, courts apply a likelihood-of-confusion test to claims brought under the Lanham Act.

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." 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. (9th Cir. 2002). A trademark owner "'does not have the right to control public discourse' by enforcing his mark." 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.

In Mattel, we adopted the approach set forth by the Second Circuit in Rogers v. Grimaldi (2d Cir. 1989). 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." 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." "Neither of these prongs is easy to meet." 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.

And the court made clear that this applies to expressive works generally, and not just artistic works:

We easily reject Punchbowl's argument that AJ Press's "various publications include 'opinions' and 'journalism' that … are a far cry from the types of artistic and creative works that often merit heightened protection." Any attempt to divide up the world between fact and fiction, news and art, fails under the First Amendment concerns that animate Rogers and its progeny. "The Free Speech Clause exists principally to protect discourse on public matters." News publications "communicat[e] ideas" and "express[] points of view" on matters of public concern. Punchbowl News is plainly an expressive work, and its use of "Punchbowl" is likewise expressive in nature. Punchbowl's suggestion that, under Rogers, news and opinion should be treated differently from "creative" works, finds no support in our cases.

My UCLA First Amendment Amicus Brief Clinic students Elizabeth Anastasi, Max Hyams, and Sofie Oldroyd and I filed an amicus brief in the case arguing in favor of this result, on behalf of Profs. Ann Bartow, Jim Gibson, James Grimmelmann, Mark Lemley, Phil Malone, Mark McKenna, Lisa Ramsey, Jeremy Sheff, Jessica Silbey, Christopher Sprigman, and Rebecca Tushnet. Congratulations to Ian C. Ballon, Rebekah S. Guyon, and Nina D. Boyajian (Greenberg Traurig LLP), who represented AJ Press.

Comments

[Dr. Ed 2]

I am reminded of a small homemade ice cream stand in Damriscotta, Maine that used to sell “Oreo” ice cream.

Someone in corporate Oreo (Nabisco?) happened to see this (Damriscotta is both a tourist town in its own right and the gateway to the entire Pemiquid Peninsula) and a letter from the lawyers inevitably arrived shortly thereafter. Memory is that several verbose alternatives were offered, such as “flavored with Oreo ™ brand vanilla-filled chocolate cookies” — none of which would fit on the signboard.

Instead the shop simply discontinued the flavor and posted the lawyers’ letter.

NB: "Small" by big city standards -- big by rural Maine standards and exceptionally busy in the summer because of the quality of their products, and the then-rural nature of the area.

[Bored Lawyer]

While the end-result is likely correct, I don't think the reasoning here holds water.
First of all, the fact that the content of the website is First Amendment expression does not mean the title is. The New York Times certainly contains lots of First Amendment content, but it's title is pretty banal and I don't think its name would be entitled to the higher-level Rogers protections.

Second, they hold that the name has minimal expressiveness:

In this case, we hold that AJ Press’s use of the Punchbowl Mark is sufficiently expressive to merit First Amendment protection, and thus application of the Rogers test. Though AJ Press is a commercial enterprise, it is selling core First Amendment-protected information. The content of its publication, and its use of “Punchbowl” in the name of its brand and publications, is expressive. AJ Press specifically chose the name “Punchbowl” to convey the D.C. insider perspective of its news material. The word “Punchbowl” connotes a gossipy setting (e.g., standing around the punchbowl), and, in the context of Washington, D.C. political reporting, talebearer “buzz” about political happenings. The name “Punchbowl” also reflects a more spirited, “punchy” tone consistent with the nature of the fastmoving and tumultuous political topics on which AJ Press is reporting. If a rubber dog toy is expressive under Rogers, see VIP Prods., 953 F.3d at 1175, we have little doubt that AJ Press’s use of the Punchbowl Mark is as well.

So basically any mark that is more than banal would receive the heightened Rogers protection? I am dubious.

That said, I doubt that there is likelihood of confusion here. The two markets are very different and have different target consumers. One would not normally think an online news/opinion publication is associated with a party planner. And each of their customers is pretty careful and sophisticated.

[Zarniwoop]

That said, I doubt that there is likelihood of confusion here. The two markets are very different and have different target consumers. One would not normally think an online news/opinion publication is associated with a party planner. And each of their customers is pretty careful and sophisticated.

I tend to agree, but I suspect the court went the route it did because it’s resolving the case on a motion for summary judgment. Whether or not a likelihood of confusion exists is typically a heavily fact-based inquiry. I’d assume Plaintiffs alleged that there was someone who was confused, and that could easily be enough to survive a MfSJ. Deciding it as a matter of law sidesteps all of that.

[Bored Lawyer]

Right, but this expands the law for later cases in a way that I am not sure is a good idea.