Punchbowl, Inc. v. AJ Press, LLC

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 v. Drape Creative, Inc., 909 F.3d 257, 264 (9th Cir. 2018). 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.

Punchbowl, an online party and event planning service, sued AJ Press, which owns and operates Punchbowl News, alleging misuse of its “Punchbowl” trademark. 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 v. Drape Creative, Inc., 909 F.3d 257, 264 (9th Cir. 2018). 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. The Court applied the Rogers test because the name Punchbowl News was expressive and therefore protected under the First Amendment. Punchbowl’s argument that news and opinion warranted different treatment than “creative” works was unsupported. Because there was no indication of an effort to connect Punchbowl News to event planning products, and because AJ press repeatedly connected Punchbowl News to its founders, their use of the word was unlikely to confuse consumers. Reasonable readers could likely to connect Punchbowl News to AJ Press; therefore, the incorporation of the Punchbowl Mark was not misleading. Affirmed.