Rogers test protects name of online news publication

Punchbowl, Inc. v. AJ Press LLC, --- F.Supp.3d ----, 2021 WL 3356848, No. 21-cv-03010-SVW-MAR (C.D. Cal. Jul. 16, 2021)

This Rogers case about the name of an online publication involves a motion to dismiss that was converted to a motion for summary judgment.

Plaintiff Punchbowl “is a technology company that develops online communications solutions for consumers, including online event invitations and greetings cards, with a focus on celebrations, holidays, and events.” It allegedly used its Punchbowl mark since April 2006, and it has a 2013 registration for “Punchbowl” in connection with online communications services.

AJ operates “Punchbowl News,” “an online news publication that provides newsletters, podcasts, and videos in the fields of government, politics, public policy, and current events.” It uses “Punchbowl” because that is the Secret Service nickname for the U.S. Capitol (a fact that Punchbowl didn’t contest), and its logo also invokes the Capitol building. Punchbowl sued it for trademark infringement and related claims.

The court concluded: “[N]o reasonable juror could find that Defendant’s use of Plaintiff’s mark either (1) is not artistically relevant to the underlying work, or (2) explicitly misleads consumers as to the source or content of the work.” Part (1) was simple; the geographic/political reference to the Capitol was analogous to the geographic reference to the “Empire State” in Empire.

(2) is a “high bar that requires the use to be an explicit indication, overt claim, or explicit misstatement about the source of the work.” Use of a mark, even a well-known mark, isn’t explicitly misleading if it only implicitly suggests endorsement or sponsorship. The recent Dr. Seuss case found that Rogers applied even when the defendant’s work was not a copyright fair use, and the work used Seussian font, Seussian illustration style, and a similar title. Under Ninth Circuit precedent, explicit misleadingness is assessed contextually [a contradiction, but here we are], considering also “(1) the degree to which the junior user uses the mark in the same way as the senior user; and (2) the extent to which the junior user has added his or her own expressive content to the work beyond the mark itself.”

No reasonable juror could find that either consideration weighed in favor of Punchbowl. More broadly, no reasonable juror could find an explicit misrepresentation.

For (1): The parties’ services, though both online, were entirely distinct: events/parties versus journalism, targeting respectively “families and, specifically, mothers with young children” versus “individuals who follow politics closely.”

But, Punchbowl argued, they both used the mark in the same way: as a source identifier. First, that argument “is effectively an argument that mere use of the mark itself is sufficient for a finding that a defendant uses the mark in an explicitly misleading manner.” But we know that’s not the Rogers test. Second, Punchbowl was really arguing that the parties both operate commercially and sell services to consumers, so the name was explicitly misleading; Empire foreclosed such an argument since that’s also what happened there (and was arguably more confusing since the parties were both related to hip-hop music production). [This discussion really highlights that getting rid of the title v. title exception to Rogers actually ended up complicating the doctrine much more. You don’t need the extra contextual considerations of Gordon if you just treat titles of works versus titles of other works separately, and that would have been a much better path. Under plain old Rogers, this is an easier case.] Finally, the facts refuted Punchbowl’s argument, since AJ consistently used “Punchbowl News” and not “Punchbowl.” And it added its own expressive content with every use.

This case was unlike Gordon, where the parties sold, “at least in part,” the same product: greeting cards. That overlap was the primary reason the court found a triable issue on explicit misleadingness, and it wasn’t present here.

Finally, alleged evidence of actual confusion didn’t show explicit misleadingness. Under Rogers, “[the] focus [is] on the nature of the junior user’s behavior rather than on the impact of the use.” Thus, evidence of actual confusion wasn’t “particularly relevant.” The recent Dr. Seuss case, for example, rejected the relevance of a survey purporting to show 24% confusion.

No reasonable juror could find that the parties use Punchbowl in the same way, and even if they could, that wouldn’t be enough, as in Dr. Seuss where both parties used marks for graduation-themed books but the defendant added expressive content to the work beyond the mark itself. No reasonable juror could find that defendant failed to add its own expressive content to the work beyond the mark itself. Punchbowl was not used “as the centerpiece of an expressive work itself, unadorned with any artistic contribution.” Even in the mark, “Punchbowl News” appears, “almost always, next to the image of the Capitol dome, upside down and filled with punch.” And the publication was consistently explicitly connected to its founders, highly credentialed journalists; this was similar to the Dr. Seuss case, which empashized that the use there wasn’t explicitly misleading in part because the cover “conspicuously lists” the authors of the book and not the plaintiff.

Finally, Punchbowl argued that there was no interference with AJ’s First Amendment rights because it could select any non-infringing mark and still report and comment on the news. But Rogers applies to all “expressive works.” Accepting Punchbowl’s argument would eviscerate Rogers because one could always create a different work or different title. As Rogers itself says, “[i]n the context of titles, this ‘no alternative’ standard provides insufficient leeway for literary expression.”