The 9th Circuit was bound by its trademark precedent holding an exception to the Lanham Act for expressive works, which was why in Punchbowl, Inc. v. AJ Press, LLC, No. 21-55881 (9th Cir. Jan. 12, 2024) it affirmed a summary judgment against plaintiff greeting-card maker in favor of a news website—both going by the name “Punchbowl.”
At first, that is. A week after the 9th Circuit affirmed, the Supreme Court held in Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023) that the exception for expressive activity did not apply when the mark was being used as a mark. And since both parties here were claiming a mark over the word “punchbowl,” that was exactly the nature of the challenge.
As the mandate had not yet issued, the 9th Circuit withdrew its opinion and ordered supplemental briefing and reargument, and this time reversed. Writing for the majority, Judge Bress reasoned that circuit precedent holds that an exception applies when the mark being challenged was expressive in nature. (In Jack Daniel’s, involving a doggie toy shaped like a Jack Daniel’s bottle bearing the name "Bad Spaniels,” the court noted that “although surely not the equivalent of the Mona Lisa, [it] is an expressive work.”)
And while three-judge panels are bound to follow circuit precedent, they are not when that precedent becomes irreconcilable with Supreme Court precedent. Miller v. Gammie, 335 F.3d 889, 893 (9th Cir. 2003) (en banc), overruled on other grounds by Sanchez v. Mayorkas, 141 S.Ct. 1809 (2021) (holding that a three-judge panel does not follow circuit precedent when "the reasoning or theory of our prior circuit authority is clearly irreconcilable with the reasoning or theory of intervening higher authority").
Here, the district court relied on the precedent that has now become irreconcilable with Jack Daniel’s, namely, that Lanham Act liability does not apply when the challenged mark is expressive in nature.
But all is not lost for defendant Punchbowl News. A greeting-card company and a media company are different industries, so a likelihood-of-confusion defense may still apply. But that issue must be taken up separately from the now-defunct “expressive nature” defense.
