Ninth Circuit's Withdrawal of Rogers Test in Light of Jack Daniels Decision

As Scott Hervey previously wrote on the IP Law Blog, the holding in the Supreme Court case Jack Daniels Properties v. VIP Products limits the applicability of the Rogers test. Scott and Jamie Lincenberg talk about this case on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.

Cases Discussed:

• Jack Daniels Properties v. VIP Products
• Rogers v. Grimaldi
• Punch Bowl v. AJ Press
• 20th Century Fox Television v. Empire Distribution, Inc.

Show Notes:

Scott:
The holding in Jack Daniels properties versus VIP products. The case of the infringing bad spaniel’s dog toy limits the applicability of the Rogers test. A recent case in the 9th Circuit Punch bowl versus AJ press addressed the interplay between the Jack Daniels opinion and the Rogers test, and this case goes directly to the heart of Rogers versus Grimaldi. We are going to talk about this case and the future of the Rogers Test on this installment of the briefing by Weintraub Tobin. Thank you for joining us. I’m Scott Hervey from Weintraub Tobin, and I’m joined by my colleague Jamie Lincenberg. Jamie, welcome back to The Briefing.

Jamie:
Thanks, Scott. It’s good to be back after a little bit of a hiatus.

Scott:
Yeah, good to have you back. So, before we get into the case itself, I think we should set the stage and talk a little bit about both the Rogers test from Rogers versus Grimaldi and the Jack Daniels case.

Jamie:
That sounds good. So, the Rogers test comes from the 1989 2nd Circuit case, Rogers versus Grimaldi. The case involved a lawsuit brought by Ginger Rogers concerning the film entitled Fred and Ginger, which was about two Italian cabaret performers whose act emulated the dance routines of Fred Astaire and Ginger Rogers. The question of that case was whether the creator of an expressive work, a work that enjoys First Amendment protection, could be liable under the Lanham Act, as well as state right of publicity laws for using a celebrity’s name in the title of the work.

Scott:
The district court and the Second Circuit on appeal both said no and from that case, the Rogers test was created under the Rogers test. The use of a third-party mark in an expressive work does not violate the Lanham Act unless the title has no artistic relevance to the underlying work whatsoever or if it has some artistic relevance. It can’t be expressly misleading as to the source or content of the work. Under the Rogers test, the first inquiry is whether the use of the third-party mark has some artistic irrelevance. The threshold for this test is extremely low. Basically, if the level of artistic relevance is more than nothing, this is satisfied. If there is a greater-than-nothing artistic relevance in the use of the third-party mark, then the next analysis is whether the use of the third-party mark explicitly misleads as to the source of content or the work. And the Rogers test has been widely adopted by other circuits, including California’s 9th Circuit.

Jamie:
On June 8, 2023, the United States Supreme Court decided Jack Daniels Properties, Inc. Versus VIP products. This dispute involves a claim by Jack Daniels that the dog toy Bad Spaniels infringed a number of its trademarks at the district court and on appeal at the 9th Circuit, the issue was framed as whether this dog toy was an expressive work since trademark claims involving expressive works are analyzed under the Rogers test.

Scott:
On appeal, the Supreme Court said that the issue really was not whether the dog toy was an expressive work but rather the nature of the use of Jack Daniel’s mark by VIP products. The Supreme Court found that VIP’s use of the marks, while humorous for sure, was for the purpose of serving as a source identifier, trademark use. In other words, the Supreme Court held that the Rogers test does not apply to instances where the mark is used as a source identifier, regardless of whether it’s also used to perform some expressive function.

Jamie:
So why don’t we talk about Punch Bowl versus AJ Press?

Scott:
Sure. So, Punch Bowl is an online technology company whose product is online invitations and online greeting cards. Punch Bowl has been using the Mark Punch Bowl since 2006, and it has a couple of federal registrations covering the mark. Now, AJ Press was founded by two journalists who used to work for Politico, and AJ Press operates Punch Bowl News, which is a subscription-based online news publication that covers topics in American government and politics. Given the publication’s focus on politics, AJ Press chose Punchbowl because, well, that’s the nickname the Secret Service uses to refer to the US Capitol. I never knew that before reading this case, but there you go. So, the title Punch Bowl News was selected, at least according to AJ Press was selected to elicit the theme and geographic location of the publication, Washington, DC Punchbowl. The tech company sued for trademark infringement and the district court granted AJ Press’s motion to dismiss on the grounds that AJ press’ use of Punchbowl did not give rise to liability under the Rogers test because it constituted protected expression. The use, the newsletter constituted protected expression and it was not explicitly misleading as to the source.

Jamie:
The 9th Circuit affirmed the district court’s holding in November 2022, and in the week following the 9th Circuit’s opinion in this case, the Supreme Court granted cert for Jack Daniels. The 9th Circuit stayed its original decision to await the Supreme Court’s decision. Subsequent to the Supreme Court’s holding in Jack Daniels, the 9th Circuit vacated its original ruling and then held that the Rogers test does not apply to this case because AJ Press uses punch bowl to identify its news products.

Jamie:
So previously, the 9th Circuit would apply Rogers anytime there was an attempt to apply the Lanham Act to First Amendment protection or First Amendment-covered uses. One of the previous cases the court mentions was 20th Century Fox Television versus Empire Distribution, Inc., Which involved a trademark lawsuit by Empire Distribution, a record label that recorded and released albums in the urban music genre that includes hip hop and r and d. And the lawsuit, Empire distribution lawsuit was based on Fox’s use of Empire as the name of a television series about a fictional New York record label. There, the 9th Circuit held that the use of the Empire Mark as a brand, as a trademark by Fox, did not take the case outside of Rogers. Now, based on Jack Daniels, that’s not going to be the case.

The 9th Circuit said, to the extent that any previous cases held, that Rogers applies when an expressive mark is used as a mark and that the only threshold for applying Rogers was an attempt to apply the Lanham Act to an expressive work, those cases are incorrect and are now no longer good law.

Scott:
So, under Jack Daniels, because AJ press uses punch bowl as a trademark, regardless of the fact that there is an expressive purpose for the use of punch bowl and that its use is not expressly misleading, the Rogers test cannot be applied here. Now, the court did note that the expressive nature of AJ Press’s use of the punch bowl mark and the fact that Punch bowl is a common word will certainly be relevant in the likelihood of confusion analysis that will be the focus of the case going forward.

Jamie:
Scott, I know that you regularly look to the Rogers test for guidance with your creative clients who may include third-party brands in their programs or when you determine whether a production company can use a specific title for its program. So, how do you think this case impacts them?

Scott:
Yeah, that’s a good question, Jamie. So as a threshold matter in determining whether Rogers applies, we will ask, is this use trademark use? Are we using it as a source identifier? So, for example, where a production company films a character getting into or out of a Ferrari. A Ferrari, and where that’s done to establish some characteristic about that character. For example, they’re rich, stylish, a risk taker, et cetera, Italian. That’s not going to be used as a source identifier. So, as such, we would just apply the Rogers test. However, where we are looking at the potential title of a television series or even a single motion picture, where there is the remote possibility of merch or a sequel, we will no longer just apply the Rogers test, and instead, we’re going to have to analyze that use under the multi-part trademark infringement test.

Jamie:
Thanks for bringing this to our attention, Scott. It’s really interesting and know impacts conversations that we’ll be having with our clients and that our clients should be having themselves.

Scott:
Yeah, I agree with you. Thank you for joining me today. Jamie, thank you for listening to this episode of The Briefing. We hope you enjoyed this episode. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.