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.”

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