PUNCHBOWL, INC. V. AJ PRESS, LLC ( 2022 )

FILED
FOR PUBLICATION
NOV 14 2022
UNITED STATES COURT OF APPEALS MOLLY C. DWYER, CLERK
FOR THE NINTH CIRCUIT U.S. COURT OF APPEALS
PUNCHBOWL, INC., a Delaware No. 21-55881
corporation,
Plaintiff-Appellant, D.C. No.
2:21-cv-03010-
SVW-MAR
v. OPINION
AJ PRESS, LLC, a Delaware limited
liability company,
Defendant-Appellee.
Appeal from the United States District Court
for the Central District of California
Stephen V. Wilson, District Judge, Presiding
Argued and Submitted May 17, 2022
Pasadena, California
Before: John B. Owens and Daniel A. Bress, Circuit
Judges, and Sidney A. Fitzwater, * District Judge.
Opinion by Judge Bress
__________________
*
The Honorable Sidney A. Fitzwater, United States District Judge for
the Northern District of Texas, sitting by designation.
SUMMARY **
Lanham Act
The panel affirmed the district court’s summary
judgment in favor of AJ Press, LLC, in an action brought by
Punchbowl, Inc. (Punchbowl), alleging violations of the
Lanham Act for trademark infringement and unfair
competition and related state law claims.
Punchbowl is an online party and event planning
service. AJ Press owns and operates Punchbowl News, a
subscription-based online news publication that provides
articles, podcasts, and videos about American politics, from
a Washington, D.C. insider’s perspective. Punchbowl
claimed that Punchbowl News is misusing its “Punchbowl”
trademark (the Mark).
Traditionally, courts apply a likelihood-of-confusion test
to claims brought under the Lanham Act. When artistic
expression is at issue, however, the traditional test fails to
account for the full weight of the public’s interest in free
expression. If the product involved is an expressive work,
the court applies a gateway test, grounded in background
First Amendment concerns, to determine whether the
Lanham Act applies. Under the approach set forth in Rogers
v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), adopted by this
court in Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th
Cir. 2002), 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
**
This summary constitutes no part of the opinion of the court. It has
been prepared by court staff for the convenience of the reader.
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 content of the work.
Punchbowl asserted that the Rogers test is entirely
inapplicable because it does not extend to “the brand name
of [a] commercial enterprise.” The panel disagreed, holding
that AJ Press’s use of the Mark in Punchbowl News is
sufficiently expressive to merit First Amendment protection
and application of the Rogers test. Applying that test, the
panel noted that the first prong sets a very low threshold: the
level of artistic relevance merely must be above zero. As to
the second prong, the panel concluded that because AJ Press
uses the Mark in an entirely different market and as only one
component of the larger expressive work, Punchbowl News
is not explicitly misleading as to its source. The panel wrote
that no reasonable buyer would believe that a company that
operates a D.C. insider news publication is related to a
“technology company” with a “focus on celebrations,
holidays, events, and memory-making.” The panel wrote
that this resolves not only the Lanham Act claims, but the
state law claims as well. The panel explained that survey
evidence of consumer confusion is not relevant to the
question of whether AJ Press’s use of the Mark is explicitly
misleading, which is a legal test for assessing whether the
Lanham Act applies.
The panel held that the district court’s denial of
Punchbowl’s request for a continuance under Fed. R. Civ. P.
56(d) to permit further discovery was not an abuse of
discretion.
COUNSEL
Peter J. Willsey (argued) and Vincent Badolato, Brown
Rudnick LLP, Washington, D.C.; Rebecca MacDowell
Lecaroz and Melanie Dahl Burke, Brown Rudnick LLP,
Boston, Massachusetts; David Stein, Brown Rudnick LLP,
Irvine, California; for Plaintiff-Appellant.
Ian C. Ballon (argued), Rebekah S. Guyon (argued), and
Nina D. Boyajian, Greenberg Traurig LLP, Los Angeles,
California, for Defendant-Appellee.
Cara L. Gagliano and Corynne McSherry, Electronic
Frontier Foundation, San Francisco, California, for Amicus
Curiae Electronic Frontier Foundation.
Eugene Volokh; Elizabeth Anastasi, Max Hyams, and Sofie
Oldroyd, Certified Law Students; UCLA School of Law
First Amendment Clinic, for Amici Curiae Professors Ann
Bartow, Jim Gibson, James Grimmelmann, Mark Lemley,
Phil Malone, Mark McKenna, Lisa Ramsey, Jeremy Sheff,
Jessica Silbey, Christopher Sprigman, and Rebecca Tushnet.
PUNCHBOWL, INC. V. AJ PRESS, LLC 1
OPINION
BRESS, Circuit Judge:
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 as a matter of law.
I
Punchbowl, Inc. (Punchbowl), is a self-described
“technology company that develops online communications
solutions for consumers,” with a “focus on celebrations,
holidays, events and memory-making.” Punchbowl
provides “online event and celebration invitations and
greetings cards” and “custom sponsorships and branded
invitations,” as part of a subscription-based service.
Punchbowl also works with companies such as The Walt
Disney Company, Chuck E. Cheese, and Dave & Busters to
help them promote their brands through online invitations.
Punchbowl has used the mark Punchbowl® (the Mark)
since at least 2006. It registered the Mark with the United
States Patent & Trademark Office in 2013. The Mark was
registered primarily in connection with the “[t]ransmission
of invitations, documents, electronic mail, announcements,
photographs and greetings”; “[p]arty planning”; and
“[p]reparation of electronic invitations, namely,
2 PUNCHBOWL, INC. V. AJ PRESS, LLC
providing . . . software that enables users to . . . customize
electronic invitations.”
Punchbowl promotes itself as “The Gold Standard in
Online Invitations & Greeting Cards,” as reflected in this
record excerpt from Punchbowl’s website:
A larger example of Punchbowl’s Mark and logo (a
punch ladle) is shown here:
PUNCHBOWL, INC. V. AJ PRESS, LLC 3
But this is not the only Punchbowl. Journalists Jake
Sherman and Anna Palmer are the co-founders of AJ Press,
LLC, a company that “provides curated, non-partisan
commentary, opinions, and critiques.” In 2021, Palmer and
Sherman co-founded Punchbowl News with reporter John
Bresnahan. Punchbowl News is a subscription-based online
news publication that covers topics in American government
and politics. AJ Press owns and operates Punchbowl News,
choosing which topics to cover and how to address them. AJ
Press concentrates its reporting on the “insiders” who make
decisions in Washington, D.C., (i.e., politicians, aides, and
lobbyists), and on events and news that affect American
political dynamics and elections.
Given the publication’s focus on Beltway politics, AJ
Press wanted a name that evoked its subject matter. It chose
“Punchbowl” because that is the nickname the Secret
Service uses to refer to the U.S. Capitol. The title
Punchbowl News was thus selected to “elicit the theme and
geographic location” of the publication. AJ Press has filed
trademark applications to register the marks “Punchbowl
News” and “Punchbowl Press.”
Punchbowl News often uses a slogan—“Power. People.
Politics.”—in connection with its name and logo. Like its
name, AJ Press chose its slogan to reflect the subject matter
and theme of the Punchbowl News publication. Similarly,
AJ Press selected a logo to allude to the publication’s focus
on insider news and political commentary. The logo depicts
an overturned U.S. Capitol filled with bright pink/purple
punch—an apparently playful homage to a blend of the
traditional red and blue associated with America’s leading
political parties that emphasizes the publication’s
nonpartisan stance. This is an example from the record of
Punchbowl News’s logo in conjunction with its slogan, as it
appears on its website:
4 PUNCHBOWL, INC. V. AJ PRESS, LLC
Punchbowl News frequently promotes its connection to
its founders. Its website depicts a large image of Sherman,
Palmer, and Bresnahan accompanied by text stating that
Punchbowl News was “founded by journalists and best-
selling authors Jake Sherman and Anna Palmer, and co-
founded by veteran Capitol Hill reporter John Bresnahan.”
Punchbowl News’s publications state at the top, near the
name “Punchbowl News,” that they are “by John Bresnahan,
Anna Palmer, and Jake Sherman.”
The parties’ coinciding uses of “Punchbowl” led to this
lawsuit. Punchbowl sued AJ Press alleging violations of the
Lanham Act for trademark infringement and unfair
competition. 15 U.S.C. §§ 1114, 1125(a). Punchbowl also
brought related state law claims.
The district court granted summary judgment to AJ
Press, concluding that its use of the name “Punchbowl” did
not give rise to liability because it constituted protected
expression and was not explicitly misleading as to its source.
The district court also denied Punchbowl’s request for a
continuance under Federal Rule of Civil Procedure 56(d) to
conduct additional discovery.
Punchbowl timely appeals. We review the district
court’s grant of summary judgment de novo. Miranda v.
City of Casa Grande, 15 F.4th 1219, 1224 (9th Cir. 2021).
PUNCHBOWL, INC. V. AJ PRESS, LLC 5
II
The Lanham Act, 15 U.S.C. § 1051 et seq., “creates a
comprehensive framework for regulating the use of
trademarks and protecting them against infringement,
dilution, and unfair competition.” Gordon v. Drape
Creative, Inc., 909 F.3d 257, 263 (9th Cir. 2018) (quoting
Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand
Mgmt., Inc., 618 F.3d 1025, 1030 (9th Cir. 2010)).
Traditionally, courts apply a likelihood-of-confusion test to
claims brought under the Lanham Act. See id. at 264.
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.” Id.
(quotations omitted). 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., 296 F.3d
894, 900 (9th Cir. 2002). A trademark owner “‘does not
have the right to control public discourse’ by enforcing his
mark.” Gordon, 909 F.3d at 264 (quoting Mattel, 296 F.3d
at 900). 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. Brown v. Elec. Arts, Inc., 724 F.3d
1235, 1239 (9th Cir. 2013); see also Gordon, 909 F.3d at 264
(explaining that when expressive activity is at issue, we
“employ[] the First Amendment as a rule of construction to
avoid conflict between the Constitution and the Lanham
Act”).
In Mattel, we adopted the approach set forth by the
Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir.
1989), to frame the inquiry into whether the Lanham Act
applies. See Mattel, 296 F.3d at 902. Under the Rogers test,
6 PUNCHBOWL, INC. V. AJ PRESS, LLC
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, 909 F.3d at
264. 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.
(citing Mattel, 296 F.3d at 902). “Neither of these prongs is
easy to meet.” Dr. Seuss Enters., L.P. v. ComicMix LLC,
983 F.3d 443, 462 (9th Cir. 2020). 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. See Twentieth
Century Fox Television v. Empire Distrib. Inc., 875 F.3d
1192, 1196 (9th Cir. 2017).
A
Before we apply the Rogers test, however, we must
address Punchbowl’s objection that this case lies outside of
Rogers’s domain. Specifically, Punchbowl asserts that the
Rogers test is entirely inapplicable because it does not
extend to “the brand name of [a] commercial enterprise.” In
Punchbowl’s view, that kind of branding is insufficiently
expressive to merit Rogers’s heightened protections. We
disagree.
“[T]he only threshold requirement for the Rogers test is
an attempt to apply the Lanham Act to First Amendment
expression.” Twentieth Century Fox, 875 F.3d at 1198. To
determine whether a work is expressive, we ask “whether the
work ‘is communicating ideas or expressing points of
view.’” VIP Prods. LLC v. Jack Daniel’s Props., Inc., 953
F.3d 1170, 1174–75 (9th Cir. 2020) (quoting Mattel, 296
F.3d at 900). “A work need not be the expressive equal of
PUNCHBOWL, INC. V. AJ PRESS, LLC 7
Anna Karenina or Citizen Kane to satisfy this requirement,
and is not rendered non-expressive simply because it is sold
commercially.” Id. at 1175 (citations and quotations
omitted).
Our case law demonstrates that a wide range of activity
qualifies as expressive under Rogers (and thus the First
Amendment). For example, in VIP Products, we concluded
that a rubber dog toy resembling a bottle of Jack Daniel’s
whiskey was expressive because it conveyed a humorous
message. 953 F.3d at 1175. In Gordon, we similarly
concluded, with “little difficulty,” that greeting cards
containing the trademarked lines “Honey Badger Don’t
Care” and “Honey Badger Don’t Give a S - - -” were
expressive in nature because they juxtaposed “an event of
some significance,” like a birthday, with the “assertion of
apathy” commonly associated with the trademarked phrase.
909 F.3d at 268–69. The expressive aims at issue in these
cases were not necessarily lofty, but they were expressive,
nonetheless.
Titles, too, can be expressive in nature. Indeed, Rogers
itself concerned the title of a movie. See Rogers, 875 F.2d
at 1000. There, the Second Circuit explained that its test
“insulates from restriction titles with at least minimal artistic
relevance that are ambiguous or only implicitly misleading.”
Id. We have applied Rogers to the title of a song (“Barbie
Girl”), see Mattel, 296 F.3d at 902, and the title of
photographic works, see Mattel, Inc. v. Walking Mountain
Prods., 353 F.3d 792, 807 (9th Cir. 2003). In Twentieth
Century Fox, we held that Fox’s use of the mark “Empire”
as a title for a television show was expressive because “the
show’s setting is New York, the Empire State, and its subject
matter is a music and entertainment conglomerate, ‘Empire
Enterprises,’ which is itself a figurative empire.” 875 F.3d
at 1198. In all these cases, the use of the mark was not
8 PUNCHBOWL, INC. V. AJ PRESS, LLC
merely an “arbitrary” source-identifier. Id. at 1198. In fact,
so initially focused was the Rogers doctrine on titles that it
was only later that we “extended [Rogers] from titles to
allegedly infringing uses within the body of an expressive
work.” Id. at 1196 (citing E.S.S. Ent. 2000, Inc. v. Rock Star
Videos, Inc., 547 F.3d 1095, 1099 (9th Cir. 2008)).
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 fast-
moving 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.
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.” Brown
v. Ent. Merchs. Ass’n, 564 U.S. 786, 790 (2011); cf. Zacchini
v. Scripps-Howard Broad. Co., 433 U.S. 562, 578 (1977)
PUNCHBOWL, INC. V. AJ PRESS, LLC 9
(“There is no doubt that entertainment, as well as news,
enjoys First Amendment protection.”). News publications
“communicat[e] ideas” and “express[] points of view” on
matters of public concern. VIP Prods., 953 F.3d at 1174
(quoting Mattel, 296 F.3d at 900). 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.
We also reject Punchbowl’s argument that AJ Press’s use
of “Punchbowl” falls outside Rogers because the Mark “is
not typically used in the content of [AJ Press’s] news
publications” but rather as part of a “commercial brand.” In
Twentieth Century Fox, we expressly held that whether “a
mark ha[s] attained a meaning beyond its source-identifying
function” is not a threshold requirement for applying Rogers.
875 F.3d at 1197. Rather, this “is merely a consideration
under the first prong of the Rogers test.” Id.Regardless, in this case, attempting to distinguish
between a brand and the body and titles of individual articles
fails to appreciate the expressive connection between the
publication’s title and brand and the reporting that appears
under that heading. The title of the publication here
amplifies the content of the communications and gives
context to them. Punchbowl concedes that the use of the
word “Punchbowl” in an article or the title of an individual
article would be expressive. That AJ Press used
“Punchbowl” as the title of a proverbial series does not make
it any less expressive.
The logic of Rogers is equally applicable to the titles or
brands of news publications as it is to the titles or content of
individual articles. Our decision in Twentieth Century Fox
is critical in this respect. There, the record company Empire
10 PUNCHBOWL, INC. V. AJ PRESS, LLC
Distribution challenged Fox’s use of its “Empire” mark as
the title of a TV series about a fictional music label named
“Empire Enterprises.” 875 F.3d at 1195. Empire
Distribution argued that Rogers was not implicated because
“Fox’s use of the mark ‘Empire’ extend[ed] well beyond the
titles and bodies of the[] expressive works.” Id. at 1196.
Specifically, Fox used the Empire mark as an “umbrella
brand to promote and sell music and other commercial
products,” including in connection with “online advertising”
and “the sale or licensing of consumer goods.” Id.We held that use of the “Empire” mark as an umbrella
brand did not take the case outside of Rogers. Id. at 1196–
97. We noted that Rogers itself “concerned both a movie
with an allegedly infringing title and its advertising and
promotion.” Id. at 1197. Although Fox’s “promotional
efforts technically f[e]ll outside the title or body of an
expressive work,” Rogers still applied. Id. at 1996–97. In
so holding, we reasoned that the First Amendment interests
underlying Rogers “could be destabilized if the titles of
expressive works were protected but could not be used to
promote those works.” Id. at 1997.
The logic of Twentieth Century Fox governs here.
Punchbowl News is within Rogers’s bounds even though it
consists of underlying expressive works and serves as an
“umbrella brand” for them. Id. at 1196. Indeed, here, unlike
in Twentieth Century Fox, the Punchbowl Mark is being
used to promote articles and other materials that are clearly
expressive in nature and core First Amendment material,
which arguably makes the Rogers test even more relevant.
Just because a mark is used as a brand for a media
publication does not mean the use of the name is beyond
Rogers’s coverage.
PUNCHBOWL, INC. V. AJ PRESS, LLC 11
Punchbowl also maintains that there are other ways AJ
Press could have expressed itself without using
“Punchbowl” in the name of its publication or branding. But
that argument, which poses major First Amendment
problems, does not make AJ Press’s use of “Punchbowl”
non-expressive. See Rogers, 875 F.2d. at 998 (rejecting the
argument that “First Amendment concerns are implicated
only where a title is so intimately related to the subject matter
of a work that the author has no alternative means of
expressing what the work is about”).
Punchbowl’s attempt to evade Rogers is also undercut by
the fact that AJ Press does not use the Punchbowl Mark as a
bare source-identifier. As will be discussed in more detail
below, AJ Press uses the name “Punchbowl,” often in
conjunction with its slogan and logo, to broadcast a unifying
theme that reflects its focus on insider politics in
Washington. And it typically uses “Punchbowl” in the title
“Punchbowl News,” or through an otherwise obvious
connection to its news reporting. The name Punchbowl
News itself (in addition to the underlying publications)
undoubtedly communicates a perspective on the subjects it
covers. See VIP Prods., 953 F.3d at 1174.
In short, Punchbowl has not provided legal support for
its assertion that the name of a brand or publication of a news
enterprise can never be expressive, or that it is not expressive
here. Accordingly, we evaluate the use of the Mark in
Punchbowl News under the Rogers framework.
B
As we have explained, Rogers “requires the plaintiff to
show that the defendant’s use of the mark is either (1) not
artistically relevant to the underlying work or (2) explicitly
misleads consumers as to the source or content of the work.”
12 PUNCHBOWL, INC. V. AJ PRESS, LLC
VIP Prods., 953 F.3d at 1174 (quotations omitted). The first
part of this test sets a very low threshold: “the level of
[artistic] relevance merely must be above zero.” E.S.S. Ent.,
547 F.3d at 1100. Punchbowl therefore understandably
focuses its argument on Rogers’s second prong. That prong
of Rogers “points directly at the purpose of trademark law,
namely to ‘avoid confusion in the marketplace by allowing
a trademark owner to prevent others from duping consumers
into buying a product they mistakenly believe is sponsored
by the trademark owner.’” Id. (quoting Walking Mt. Prods.,
353 F.3d at 806).
Accordingly, under our cases the “relevant question . . .
is whether [Punchbowl News] would confuse its [customers]
into thinking that [Punchbowl] is somehow behind
[Punchbowl News] or that it sponsors [AJ Press’s]
product[s].” Id. But it is not enough that AJ Press uses
“Punchbowl” in the name of its publication. We have been
careful to note that “the mere use of a trademark alone cannot
suffice to make such use explicitly misleading.” Id. (citing
Mattel, 296 F.3d at 902). Otherwise, “the First Amendment
would provide no defense at all,” “render[ing] Rogers a
nullity.” Id. at 1099 (quotations omitted). Instead, the
“explicitly misleading” component of Rogers sets “a high
bar that requires the use to be ‘an explicit indication, overt
claim, or explicit misstatement’ about the source of the
work.” Dr. Seuss, 983 F.3d at 462 (quoting Brown, 724 F.3d
at 1245).
Because the use of a trademark alone is not dispositive,
we weigh two primary considerations in evaluating whether
the junior use is explicitly misleading: “(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.’” Id. (quoting Gordon, 909 F.3d at 270–71).
PUNCHBOWL, INC. V. AJ PRESS, LLC 13
However, “[t]his is not a mechanical test,” and “all of the
relevant facts and circumstances must be considered.”
Gordon, 909 F.3d at 269 (quotations omitted).
We first consider the degree to which AJ Press uses the
Mark in the same way as Punchbowl. Id. at 270. Here we
ask whether “the junior user has employed the mark in a
different context—[such as] in an entirely different
market—than the senior user.” Id. For example, we have
approved the use of Mattel’s Barbie mark in a pop song, see
Mattel, 296 F.3d at 902; the mark of a strip club in a video
game, E.S.S. Ent., 547 F.3d at 1100; and the mark of a record
label in a television series. Twentieth Century Fox, 875 F.3d
at 1196. In those circumstances, the “disparate use of the
mark was at most ‘only suggestive’ of the product’s source
and therefore did not outweigh the junior user’s First
Amendment interests.” Gordon, 909 F.3d at 270 (quoting
Rogers, 875 F.3d at 1000).
Punchbowl argues that AJ Press employs the Mark in the
same way Punchbowl does because both parties use the
Mark “as a brand” for “online communications services”
provided to “consumers of online services.” But “besides
this general similarity, they have nothing in common.”
E.S.S. Ent., 547 F.3d at 1100. The population consisting of
“consumers of online communication services” describes
virtually all consumers. If we were to apply Rogers’s second
prong at that high level of generality, as Punchbowl
advocates, we would dilute Rogers entirely. Nor do our
precedents indicate that is the right approach. Instead, in
past cases we have looked far more granularly at the
similarity of use. Gordon provides a good example. There,
we explained that both users employed the mark in the same
way because both used it “to identify the source of humorous
greeting cards in which the bottom line is ‘Honey Badger
don’t care.’” 909 F.3d at 271.
14 PUNCHBOWL, INC. V. AJ PRESS, LLC
Here, the parties’ uses of the name “Punchbowl” are
quite different. Punchbowl is a self-described “technology
company” with a “focus on celebrations, holidays, events
and memory-making.” In contrast, Punchbowl News is a
publication that provides newsletters, podcasts, and videos
in the fields of government and politics, with content geared
toward Washington insiders. This is not a case where AJ
Press is parodying Punchbowl (and even in the case of
parodies, we have held that Rogers forecloses liability, see
e.g., Mattel, 296 F.3d at 901). Instead, the parties have used
a “common English word,” Twentieth Century Fox, 875 F.3d
at 1198, to describe two different enterprises that do very
different things.
AJ Press also does not just use the word “Punchbowl,”
but Punchbowl News, and it repeatedly connects its use of
“Punchbowl” to its founders. We reject Punchbowl’s
assertion that AJ Press’s use of the mark with the word
“News” “does nothing to distinguish” Punchbowl News
from Punchbowl’s use of the mark. The companies’
ventures operate in different spaces, and Punchbowl News is
“at most ‘only suggestive’” of Punchbowl the greeting card
company. Gordon, 909 F.3d at 270 (quotations omitted).
Indeed, it is questionable whether Punchbowl News is
even suggestive of Punchbowl’s online greeting card
business at all. Even if a simple web browser search might
initially lead a consumer to the wrong company, there is no
indication that AJ Press has sought to tie Punchbowl News
to Punchbowl’s event planning products. AJ Press has thus
not “dup[ed] consumers into buying a product they
mistakenly believe is sponsored by the trademark owner.”
E.S.S. Ent., 547 F.3d at 1100 (quotations omitted).
In addition to the degree to which the junior and senior
users employ a mark in the same way, under Rogers’s
PUNCHBOWL, INC. V. AJ PRESS, LLC 15
second prong we look to “the extent to which the junior user
has added his or her own expressive content to the work
beyond the mark itself.” Gordon, 909 F.3d at 270.
Punchbowl contends that AJ Press’s use of (1) descriptive
terms such as “press” or “news,” (2) a slogan (“Power.
People. Politics.”), and (3) the founders’ names in
association with the Mark, “do not communicate ideas or
express points of view; nor do they add any distinctive
character to [AJ Press’s] use of the mark.” We do not find
this persuasive. These features, both individually and
collectively, plainly augment the expressive nature of the use
of the word “Punchbowl.” Indeed, as we explained above,
AJ Press selected Punchbowl News’s name, slogan, and logo
to reflect the subject matter and theme of the publication.
See id. at 269 (explaining that the inquiry focuses “on the
nature of the junior user’s behavior rather than on the impact
of the use” (quotations and alterations omitted)).
Moreover, and as we have explained, the concern that
consumers will “be ‘misled as to the source of [a] product’
is generally allayed when the mark is used as only one
component of a junior user’s larger expressive creation.”
Gordon, 909 F.3d at 270–71 (quoting Rogers, 875 F.2d at998–99). Here, this is doubly true. The Punchbowl Mark is
only a part of Punchbowl News’s overall branding, which, as
noted, includes a slogan and a logo. In addition, Punchbowl
News’s “larger expressive creation” consists of its series of
newsletters, podcasts, and videos. Id. at 271. In that context,
the Mark “obviously serve[s] as only ‘one element of the
work and the junior user’s artistic expressions.’” Id.
(quoting Rogers, 875 F.2d at 1001) (alterations omitted).
Punchbowl News’s public association with its founders
further demonstrates that the use of the Mark is not explicitly
misleading. An expressive work is less likely to be
misleading when it clearly discloses its origin. See Dr.
16 PUNCHBOWL, INC. V. AJ PRESS, LLC
Seuss, 983 F.3d at 463 (finding a title not explicitly
misleading because, in part, “the cover conspicuously lists
[the actual creators], not Dr. Seuss, as authors”). Here,
Punchbowl News promotes its connection to its founders on
its website. For instance, the “About Us” page displays a
large image of the co-founders and states that “Punchbowl
News is a membership-based news community founded by
journalists and best-selling authors Jake Sherman and Anna
Palmer, and co-founded by veteran Capitol Hill reporter
John Bresnahan.” And Punchbowl News’s publications state
“by John Bresnahan, Anna Palmer, and Jake Sherman” at the
top of the page near Punchbowl News’s name.
Punchbowl responds that AJ Press does not always use
the founders’ names in conjunction with the Mark. In
particular, AJ Press does not mention the founders on
Punchbowl News’s homepage. This does not change our
analysis. AJ Press frequently publicizes Punchbowl News’s
association with its founders and attributes its content to
them. See Gordon, 909 F.3d at 269 (explaining that Rogers
“is not a mechanical test” and “all the relevant facts and
circumstances must be considered”). Any reasonable reader
of the Punchbowl News website would see the connection
between the publication and the founders; indeed, the
connection to three veteran political reporters is part of
Punchbowl News’s selling point. Nothing required AJ Press
to identify its founders at every possible turn to avoid
association with Punchbowl.
Contrary to Punchbowl’s argument, this case is very
different from Gordon, which “demonstrate[d] Rogers’s
outer limits.” Id. at 268. There, defendants used the
plaintiff’s trademarked catchphrase “Honey Badger don’t
care” as the core content of its greeting cards. Id. at 261. In
concluding there was “at least a triable issue of fact,” we
relied on the fact that the defendants “simply used
PUNCHBOWL, INC. V. AJ PRESS, LLC 17
[plaintiff’s] mark with minimal artistic expression of their
own, and used it in the same way that [plaintiff] was using
it—to identify the source of humorous greeting cards in
which the bottom line is ‘Honey Badger don’t care.’” Id. at
271. In at least some greeting cards, the plaintiff’s mark
“was used without any other text.” Id.
No similar facts are at play in this case. AJ Press uses
the Punchbowl Mark in conjunction with its own slogan, the
names of its founders, and its logo to develop its brand in a
distinct media market. See Dr. Seuss, 983 F.3d at 462–63
(distinguishing Gordon on similar grounds, even when the
defendant “used the marks in an illustrated book just as
Seuss did”). AJ Press’s disparate use of the Punchbowl
Mark sharply differentiates this case from Gordon. See
Gordon, 909 F.3d at 261 (noting that “on every prior
occasion in which we have applied the [Rogers] test, we
have found that it barred an infringement claim as a matter
of law”). This is not a case in which “the defendant’s
expressive work consisted of the mark and not much else.”
Dr. Seuss, 983 F.3d at 462 (describing Gordon).
In short, no reasonable buyer would believe that a
company that operates a D.C. insider news publication is
related to a “technology company” with a “focus on
celebrations, holidays, events and memory-making.” We
conclude that, under our precedents, AJ Press’s
incorporation of the Punchbowl Mark in its news
publication’s name is not explicitly misleading. This
resolves not only the Lanham Act claims, but the state law
claims as well. E.S.S. Ent., 547 F.3d at 1101.
C
Conceding that “evidence of actual confusion may not
be a primary consideration” under Rogers, Punchbowl
18 PUNCHBOWL, INC. V. AJ PRESS, LLC
nonetheless argues that this kind of evidence is germane “to
whether the parties are using the marks in similar ways.”
Specifically, Punchbowl contends that the district court erred
in determining that survey evidence supposedly
demonstrating actual consumer confusion is not relevant.
Punchbowl is mistaken.
In Brown, we explained that “[t]o be relevant, evidence
must relate to the nature of the behavior of the [junior] user,
not the impact of the use.” 724 F.3d at 1246. Consumer
confusion is a potential result—i.e., impact—of an explicitly
misleading mark. It does not prove the answer to the legal
question whether the use is explicitly misleading under
Rogers. See id. Accordingly, given the First Amendment
interests at stake, “[t]he Rogers test dr[aws] a balance in
favor of artistic expression and tolerates ‘the slight risk that
the use of the trademark might implicitly suggest
endorsement or sponsorship to some people.’” Dr. Seuss,
983 F.3d at 462 (quoting Rogers, 875 F.2d at 1000)
(alteration omitted). Our case law is thus clear that we may
not “conflate[] the second prong of the Rogers test with the
general . . . likelihood-of-confusion test, which applies
outside the Rogers context of expressive works.” Twentieth
Century Fox, 875 F.3d at 1199 (citing Mattel, 296 F.3d at
900).
Further, our decision in Brown directly rejected the
relevance of the type of survey data that Punchbowl seeks to
advance. In Brown, we explained that “a survey
demonstrating that consumers of the Madden NFL series
believed that [Jim] Brown endorsed the game . . . would not
support the claim that the use was explicitly misleading to
consumers.” 724 F.3d at 1246. Dr. Seuss provides another
example. See 983 F.3d at 462. There, we held that the title
of an allegedly infringing work was not explicitly misleading
while noting that “evidence of consumer confusion in [an]
PUNCHBOWL, INC. V. AJ PRESS, LLC 19
expert survey does not change the result.” Id. Punchbowl
argues that Dr. Seuss is distinguishable because the cover of
the junior users’ book in Dr. Seuss conspicuously listed the
junior users as the authors. But this limitation was not
dispositive in Dr. Seuss, and AJ Press here has
conspicuously associated its publication with its three
founders, as we discussed above.
Survey evidence of consumer confusion is thus not
relevant to the question of whether AJ Press’s use of the
Mark is explicitly misleading, which is a legal test for
assessing whether the Lanham Act applies. See Brown, 724
F.3d at 1246. Because AJ Press uses the Mark “in an entirely
different market” and as “only one component of the larger
expressive work,” Punchbowl News is not explicitly
misleading as to its source. Gordon, 909 F.3d at 270–71.
III
Finally, we address Punchbowl’s contention that the
district court erred in denying its request for a Rule 56(d)
continuance to allow for additional discovery. Punchbowl
sought discovery relating to: (1) whether AJ Press was aware
of Punchbowl’s use of the Mark; (2) the extent to which AJ
Press may have caused actual confusion in the market; and
(3) the degree to which AJ Press has used the Mark to
identify itself as the source for a broad range of products and
services. The district court’s denial of Punchbowl’s motion
was not an abuse of discretion.
Twentieth Century Fox forecloses any requested
continuance for discovery into AJ Press’s awareness of
Punchbowl’s use of the Mark. See 875 F.3d at 1199–1200
(explaining that “Fox’s reason for selecting the ‘Empire’
name” and “Fox’s prior knowledge of Empire’s trademarks”
are not “relevant to either prong of the Rogers test”). As
20 PUNCHBOWL, INC. V. AJ PRESS, LLC
discussed above, survey evidence of consumer confusion is
also not relevant to the Rogers analysis. See id. at 1199; Dr.
Seuss, 983 F.3d at 462; Brown, 724 F.3d at 1246.
Further discovery into the degree to which AJ Press uses
Punchbowl News as a source identifier was also not
necessary in these circumstances. As explained above,
Punchbowl’s source-identifier argument operates at the
wrong level of generality for the inquiry into whether the
parties’ uses are the same. Thus, the information sought was
not germane. Additionally, the record is already replete with
evidence as to how both companies used the name
“Punchbowl” in their operations. Accordingly, the district
court’s denial of a continuance to permit further discovery
was not an abuse of discretion.
* * *
For the foregoing reasons, the judgment of the district
court is
AFFIRMED.