This client alert provides an update on case law following the Supreme Court's decision in Jack Daniel's Properties, Inc. v. VIP Products LLC. For the prior client alert on the Jack Daniel's decision, click here.
On December 5, the Second Circuit issued a decision in Vans, Inc. v. MSCHF Product Studio, Inc., a trademark case involving a sneaker product purporting to parody the Vans Old Skool shoe.1 This published, per curiam decision marks the first federal Court of Appeals decision to substantively apply the Supreme Court's decision in Jack Daniel's Properties, Inc. v. VIP Products LLC,2 to assess when the speech-protective "Rogers test" applies to trademark claims.
Background
The plaintiffs, Vans, Inc., and VF Outdoor, LLC (collectively, "Vans"), claimed rights in a set of trademarks and trade dress associated with Vans's "Old Skool" shoes, depicted below.3
The defendant, Brooklyn-based art collective MSCHF Product Studio, Inc. ("MSCHF"), created and marketed the "Wavy Baby" shoe, a warped version of the Old Skool sneaker, in collaboration with musical artist Tyga.4 The Wavy Baby shoe (depicted below) had a limited release of 4,306 shoes and sold out in one hour.5
Vans sought a temporary restraining order and preliminary injunction from the Eastern District of New York.6 Among other arguments, MSCHF invoked a First Amendment defense grounded in the Second Circuit's seminal 1989 decision in Rogers v. Grimaldi.7 Rogers held that in light of the First Amendment concerns associated with applying the Lanham Act to artistic works, the Lanham Act "should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression."8 Courts applying the "Rogers test" look to whether the defendant's alleged use of a mark has no artistic relevance to the underlying work, or, if it has "some artistic relevance," whether the alleged use "explicitly misleads as to the source or the content of the work."9 If the alleged use is artistically relevant and not explicitly misleading, the First Amendment disfavors trademark liability; if either requirement is not met, the traditional multi-factor likelihood-of-confusion analysis applies instead.
The district court rejected MSCHF's First Amendment defense on the grounds that the Wavy Baby product lacked an "element of satire, ridicule, joking or amusement" that would clearly indicate that it was not connected with the owner of the trademark being parodied.10 The district court ultimately found that Vans had shown a likelihood of success on its trademark claim, based in part on the directly competitive nature of the products, the "striking visual similarities" between the products, and evidence that consumers had misunderstood the Wavy Baby product as a collaboration between MSCHF and Vans.11 The court granted Vans an injunction prohibiting MSCHF from...
