Vans parody loses out on heightened First Amendment protection in Second Circuit ruling

The US Court of Appeals for the Second Circuit has upheld a temporary restraining order and preliminary injunction enjoining use of a trademark and trade dress. The defendant, whose product was associated with the iconic Vans trainer design, was denied First Amendment protection rights after arguing the artistic expression defence (Vans Inc v MSCHF Product Studio Inc, case 22/1006, 5 December 2023).

This is the first time that a federal appeals court has applied the Supreme Court’s decision in Jack Daniel’s v VIP Products, which clarified when heightened First Amendment protections should apply to expressive uses of another’s trademark and trade dress.

Case background

MSCHF Product Studio is a Brooklyn-based art collective known for provocative works that critique consumer culture. It sells its works in limited releases during prescribed sales periods called drops. MSCHF promoted and sold a shoe called the Wavy Baby, which is a distorted, corrugated version of the iconic black-and-white Vans Old Skool trainer. It claimed that the product was a commentary on consumerism in ‘sneakerhead’ culture – the Wavy Baby shoes were not meant to be worn but were instead “collectible work[s] of art”.

Vans sent MSCHF a cease-and-desist letter and a week later filed a six-count complaint in federal court, including a claim for trademark infringement under the Lanham Act. The following day, Vans filed a motion for a temporary restraining order, seeking to have the court enjoin the sale of the Wavy Baby shoes. Nevertheless, MSCHF proceeded with its pre-planned drop of the Wavy Baby trainers, selling 4,306 pairs in one hour.

Court decisions

About a week later, after oral argument on the temporary restraining order motion, the district court granted the plaintiff’s motion. It concluded that Vans would likely prevail in showing a likelihood of consumer confusion and rejected MSCHF’s contention that its shoe was entitled to special First Amendment protections because it was an artistic parody. MSCHF appealed.

The Second Circuit held the appeal in abeyance pending the Supreme Court’s Jack Daniels decision. In that case, Jack Daniel’s had sued the maker of a squeaky dog toy that resembled the iconic whiskey bottle and used puns involving dog excrement in place of the actual language of the Jack Daniel’s label (see “Brand owners breathe a “sigh of relief” as Supreme Court sides with Jack Daniel’s”). In a unanimous decision, the Supreme Court clarified that special First Amendment protections (as used in the Rogers test for expressive works that incorporate another’s trademark) do not apply when a trademark is used as a source indicator - that is, as a mark.

The Second Circuit concluded that the Jack Daniel’s case “forecloses MSCHF’s argument that Wavy Baby’s parodic message merits higher First Amendment scrutiny”. Even though the product is a parody, the Rogers test does not apply if the mark is also used as a source identifier, which is true in this case. The Second Circuit drew a direct parallel between Wavy Baby and the dog toy in the Jack Daniel’s case, noting that the infringing product evoked the protected trademark and trade dress of the target to benefit from the “good will” developed by the source brand in both cases. Thus, the court held that the district court did not err in applying the traditional likelihood of confusion analysis rather than the speech-protective Rogers test.

Key findings

An alleged infringer of a trademark may claim that its product is artistic expression to trigger the heightened First Amendment protections offered by filters such as the Rogers test. However, after the Jack Daniel’s case, courts are more likely to regard such defences with scepticism unless the allegedly infringing work falls into a more canonical category of artistic expression such as a film, television show, song or video game.