Jack Daniels’ Limitation of the Rogers Shield Prompts the Ninth Circuit to Reverse Itself

In the wake of the Supreme Court’s decision in Jack Daniels Properties Inc. v. VIP Products LLC, 599 U.S. 140 (2023), the Ninth Circuit reversed its earlier decision affirming that a publication called Punchbowl News did not infringe a trademark of Punchbowl Inc. (“Punchbowl”), a greeting card and event invitation company. The Ninth Circuit reasoned that after Jack Daniels the Lanham Act no longer shields Defendants from liability for using a trademark as a source identifier solely because a trademark has expressive value and does not explicitly mislead consumers.

In 2021, Punchbowl sued AJ Press, owner of Punchbowl News, under the Lanham Act for trademark infringement of its word mark “Punchbowl.” AJ Press moved to dismiss under the Rogers test and argued the First Amendment precluded Punchbowl’s suit because even though the trademark was used in part to identify its commercial brand, it was done so in an expressive manner and not misleading. Punchbowl News chose the term because it is a Secret Service nickname for the U.S. Capitol and “Punchbowl News” reflects the nature of the political news publication. Punchbowl News also used a logo to tie the theme together—an overturned U.S. Capitol filled with bright pink/purple punch—an homage to a blend of the traditional red and blue associated with America’s leading political parties.

After converting the motion to a motion for summary judgment, the United States District Court for the Central District of California agreed with AJ Press, and Punchbowl appealed to the Ninth Circuit. After finding that the Rogers test applied, the Ninth Circuit affirmed, holding that the expressive and not misleading nature of AJ Press’s use of the mark “Punchbowl” fell outside of the Lanham Act as a matter of law. Yet the Ninth Circuit stayed its opinion because, only a week later, the Supreme Court granted certiorari to Jack Daniels. In Jack Daniels, the defendant had created a poop-themed dog toy that mimicked a Jack Daniel’s bottle. The Supreme Court held that the Rogers test could not apply because the defendant was using the whiskey brand’s trademark as a source identifier. (For additional information about the Jack Daniels decision, see here.)

After Jack Daniels, the Ninth Circuit swiftly withdrew its original Punchbowl opinion, ordered additional briefing and re-argument, and then reversed itself. The Ninth Circuit held that Rogers was inapplicable and did not bar Punchbowl’s claim under the Lanham Act because AJ Press used the mark to identify its products. As such, AJ Press was not entitled to First Amendment immunity for trademark infringement, and the case was remanded to the District Court to analyze likelihood of confusion under the Lanham Act. The Ninth Circuit also clarified the state of the Rogers test: “To the point that our precedents previously held that Rogers applies when an expressive mark is used as a mark—and that the only threshold for applying Rogers was an attempt to apply the Lanham Act to something expressive—the Supreme Court has now made clear that this is incorrect. In that specific respect, our prior precedents are no longer good law.” It remains to be seen whether other Circuits that apply the Rogers test will reach a similar conclusion.