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 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.
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