There has been much hubbub over the past year regarding Jack Daniel's trademark infringement lawsuit against VIP Products, LLC over its whiskey-bottle shaped dog toy that riffs on the iconic Jack Daniel's whiskey bottle.

Initially, VIP Products successfully argued that under the seminal 2nd Circuit case, Rogers v. Grimaldi, use of a trademark as part of an expressive work is immune from a claim of infringement 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. The dispute eventually made its way to the Supreme Court, which held that reliance on the Rogers test “is not appropriate when the accused infringer has used a trademark to designate the source of its own goods - in other words, has used a trademark as a trademark. That kind of use falls within the heartland of trademark law and does not receive special First Amendment protection.”  Jack Daniel's Properties, Inc. v. VIP Products, LLC, 599 U.S. 140, 145 (2023). 

Shortly before the Supreme Court issued its ruling in Jack Daniel's, the 9th Circuit had affirmed the dismissal of Puchbowl, Inc.'s trademark infringement claims against AJ Press, LLC's based on its use of the name Punchbowl News. Punchbowl, Inc. owns the mark Punchbowl®, which it uses in connection with its business of providing an online subscription-based service for creating invitations and greeting cards. Punchbowl, Inc. claimed that AJ Press' use of the name Punchbowl News for its online news publication was infringing Punchbowl, Inc's trademark. Prior to the Jack Daniel's opinion, both the trial court and the 9th Circuit applied the Rogers test and concluded that AJ Press's use of the name Punchbowl News was not actionable infringement because it constituted protected expression. Specifically, AJ Press argued that use of the name Punchbowl News was expressive because its publication focused its reporting on the “insiders” who make decisions in Washington D.C. (i.e. politicians, aides, and lobbyists) and the term “Punchbowl” is a well-known reference to the U.S. Capital.  

However, after the Supreme Court issued its ruling in Jack Daniel's, the 9th Circuit agreed to revisit its prior ruling and recently issued a decision reversing its own prior ruling. Given that AJ Press was using Puchbowl News as the name of its publication (i.e. as a source identifier), the 9th Circuit concluded it had no choice but to reverse its prior decision in light of the Supreme Court's ruling in Jack Daniel's.  The 9th Circuit explained the Supreme Court was clear on its position that the Rogers test does not apply “when an alleged infringer uses a trademark in the way the Lanham Act cares about:  as a designation of source for the infringer's own goods.” 

Of course, the 9th Circuit's reversal does not mean AJ Press is necessarily liable for its use of Punchbowl News. Rather, the Court merely held that the use is not protected expression immune from liability. Punchbowl, Inc. will still have the burden of establishing that AJ Press's use constitutes infringement under the likelihood-of-confusion test and AJ Press will still be allowed to pursue other affirmative defenses, such as fair use. And the 9th Circuit made sure to point out that “[w]hen companies operating in different spaces use the same common words as trademarks with different expressive connotations, it reduces the likelihood of confusion.”  

Nonetheless, the 9th Circuit's reversal makes clear the Supreme Court's ruling in Jack Daniel's will continue to have a significant impact on when the right to free expression under the 1st Amendment trumps trademark rights. The important take away is that whenever you are using a mark as a source identifier for your own goods or services, you want to make sure that use is not going to leave you exposed to claims of infringing use - regardless of the expressive or artistic nature of that use.