UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT PUNCHBOWL, INC., a Delaware No.21-55881 corporation, Plaintiff-Appellant, D.C. No. 2:21-cv-03010- v. SVW-MAR AJ PRESS, LLC, a Delaware limited liability company, OPINION Defendant-Appellee.

Appeal from the United States District Court for the Central District of California Stephen V. Wilson, District Judge, Presiding

Argued and Submitted October 2, 2023 Las Vegas, Nevada

Filed January 12, 2024

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. 2 PUNCHBOWL , INC. V. AJ PRESS, LLC

SUMMARY**

Lanham Act

The panel reversed the district court’s summary judgment in favor of the defendant in a trademark infringement suit involving two companies that used the word “Punchbowl” in their marks and remanded for further proceedings. Applying Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023), the panel held that the defendant’s use of the Punchbowl mark was not outside the scope of the Lanham Act under the “Rogers test.” Under this test, a trademark dispute concerning an expressive work protected by the First Amendment does not fall within the Lanham Act unless the defendant’s use of the mark was not artistically relevant to the work or explicitly misled consumers as to the source or the content of the work. Jack Daniel’s held that the Rogers test does not apply when the accused infringer has used a trademark to designate the source of its own goods. The panel concluded that, following Jack Daniel’s, the Ninth Circuit’s prior precedents were no longer good law insofar as they held that Rogers applied when an expressive mark was used as a mark, and that the only threshold for applying Rogers was an attempt to apply the Lanham Act to something expressive. The panel held that Rogers did not apply here because the defendant was using the Punchbowl mark to identify and distinguish its news products. The panel instructed that, on ** This summary constitutes no part of the opinion of the court. It has been prepared by court staff for the convenience of the reader. PUNCHBOWL , INC. V. AJ PRESS, LLC 3

remand, the district court should proceed to a likelihood -of- confusion analysis under the Lanham Act.

COUNSEL Peter J. Willsey (argued) and Vincent Badolato, Brown Rudnick LLP, Washington, D.C.; Rececca M. Lecaroz and Melanie D. Burke, Brown Rudnick LLP, Boston, Massachusetts; David Stein, Brown Rudnick LLP, Irvine, California; for Plaintiff-Appellant. Ian C. Ballon (argued) Nina D. Boyajian, and Rebekah S. Guyon, Greenberg Traurig LLP, Los Angeles, California, for Defendant-Appellee. Cara L. Gagliano and Corynne McSherry, Electronic Frontier Foundation, San Francisco, California, Amici Curiae Electronic Frontier Foundation. Eugene Volokh, UCLA First Amendment Clinic, UCLA School of Law, Los Angeles, California, Amici Curiae Law Professors.

OPINION BRESS, Circuit Judge:

This case requires us to apply the Supreme Court’s recent decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023), to a trademark infringement dispute involving two companies that use the word “Punchbowl” in their marks. Prior to Jack Daniel’s, and bound by Ninth Circuit precedent, we held that under the 4 PUNCHBOWL , INC. V. AJ PRESS, LLC

“Rogers test,” see Rogers v. Grimaldi,