Jack Daniel’s case prompts Ninth Circuit Punchbowl reversal

In response to the Supreme Court’s ruling in Jack Daniel’s, the US Court of Appeals for the Ninth Circuit has reconsidered its 2022 decision in Punchbowl v AJ Press. It determined that the outcome of Jack Daniel’s had reset prior Ninth Circuit precedents concerning the interaction of First Amendment rights and the Lanham Act. As a result, the court reversed its original decision and remanded the case to the district court to conduct a likelihood-of-confusion analysis under the Lanham Act (Punchbowl Inc v AJ Press LLC, case 21/55881, 12 January 2024, Owens, Bress, Fitzwater, JJ).

Case background

AJ Press operates Punchbowl News, an online publication that reports on US politics. Punchbowl – an online communications and events planning service – alleged that AJ Press was misusing its mark PUNCHBOWL. The Ninth Circuit had previously held that, despite use of the mark by AJ Press, the company was not subject to liability under the Lanham Act.

The Ninth Circuit’s original decision was based on the Rogers test, which protected creative use of trademarks if the defendant could “make a threshold legal showing that its allegedly infringing use is part of an expressive work protected by the First Amendment”. This test can be easily met if the artistic relevance of a trademark’s use is “above zero”. Shortly after the Ninth Circuit issued its initial decision, the Supreme Court granted certiorari in Jack Daniel’s v VIP Products, a case that addressed the same basic underlying precedent (see “Brand owners breathe a “sigh of relief” as Supreme Court sides with Jack Daniel’s”).

Setting the precedent

In Jack Daniel’s, the Supreme Court held that the Rogers test exception to the Lanham Act did not apply when the expressive mark was used as a trademark. Therefore, the Supreme Court drew a line between VIP’s use of “Bad Spaniels” – a direct play on “Jack Daniel’s” that was an expressive use of an existing trademark – and the use of a mark that was expressive but not used as a trademark. This ruling prompted the Ninth Circuit to reconsider its original decision in Punchbowl.

The outcome

In its new judgment, the court held that the Rogers test did not apply and that AJ Press’s use of PUNCHBOWL was not excepted from the Lanham Act as a protected First Amendment expression. Rather, AJ Press’s use of PUNCHBOWL was as a mark identifying its news service.

However, the Ninth Circuit stressed that this was not an automatic victory for Punchbowl. It instructed the district court on remand to proceed with a likelihood-of-confusion analysis test under the Lanham Act – an analysis that would consider many of the factors, such as the expressive nature of the trademark’s use, that had been relevant to the application of the Rogers test.