Ninth Circuit Pulls Back Rogers Test in Light of Jack Daniels Decision
Published: February 1, 2024
The holding in the Supreme Court case, Jack Daniels Properties v VIP Products, the case of the infringing Bad Spaniels dog toy, limits the applicability of the Rogers test. A recent case in the Ninth Circuit, Punchbowl Inc v. AJ Press, addressed the interplay between the decision in Jack Daniels and the Rogers test.
The Rogers test comes from the 1989 Second Circuit case Rogers v. Grimaldi. The case involved a lawsuit brought by Ginger Rogers over a film entitled “Fred and Ginger,” which was about two Italian cabaret performers who, in their act, emulated the dance routines of Fred Astaire and Ginger Rogers. The question in that case was whether the creator of an expressive work, a work that enjoys First Amendment protection, could be liable under the Lanham Act and state right of publicity laws for using a celebrity’s name in the title of that expressive work.
The district court and the Second Circuit on appeal both said no, and 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 use has no artistic relevance and explicitly misleads as to the source or the content of the work. The Rogers test has been widely adopted by other circuits, including California’s Ninth Circuit.
On June 8, 2023, the United States Supreme Court decided on Jack Daniel’s Properties, Inc. V. Vip Products. The dispute involved a claim by Jack Daniel’s that a dog toy infringed a number of its trademarks. At the district court and on appeal at the Ninth Circuit, the issue was framed as whether a dog toy is an expressive work since trademark claims involving expressive works are analyzed under the Rogers test. On appeal, the Supreme Court said that the issue was not whether a dog toy is an expressive work but rather the nature of the use of Jack Daniel’s marks. The Supreme Court found that VIP’s use of the marks, while humorous, 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 is also used to perform some expressive function.
In Punchbowl Inc. v AJ Press, the plaintiff, Punchbowl Inc., is a technology company that provides online invitations and greeting cards. It has been using the PUNCHBOWL mark since 2006 and has federal trademark registrations covering the mark. AJ Press was founded by two journalists who used to write for Politico. AJ Press operates Punchbowl News, 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 it is the nickname the Secret Service uses to refer to the U.S. Capitol. Punchbowl Inc. sued for trademark infringement, and the district court granted AJ Press’ motion to dismiss on the grounds that its use of PUNCHBOWL did not give rise to liability under the Rogers test because its publication is a protected expression and its use was not explicitly misleading as to its source. The Ninth Circuit affirmed the district court’s holding in November 2022.
In the week following the Ninth Circuit’s decision, the Supreme Court agreed to hear Jack Daniels. The Ninth Circuit stayed its original decision to await the Supreme Court’s decision. Subsequent to the Supreme Court’s holding in Jack Daniels, the Ninth Circuit vacated its original ruling and then, after additional briefing, held that the Rogers test does not apply to this case because AJ Press uses PUNCHBOWL to identify its news product.
Prior to Jack Daniels, the Ninth Circuit applied the Rogers test when there was a trademark claim that involved an expressive work. One such case is 20th Century Fox Television v. Empire Distribution, Inc. This case involved a trademark lawsuit by Empire Distribution, a hip-hop and rap record label, based on Fox’s use of EMPIRE as the name of a television series about a fictional New York hip-hop/rap record label. In that case, the Ninth Circuit held that the use of “Empire” by Fox as a trademark for its television series was not an infringement under the Rogers test. If the Empire case were heard now, the result would be the exact opposite.
The Ninth Circuit discussed Empire in Punchbowl and went on to say that any previous case, including Empire, which held that the Rogers test applied where a mark is used in an expressive work in a trademark manner, regardless of whether it’s also used in an artistically relevant manner, is incorrect and no longer good law.