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Parody shoe can’t outrun trademark infringement claim

June 1, 2024
June/July 2024 Cantor Colburn IP Newsletter

The U.S. Court of Appeals for the Second Circuit has won the race to be the first appellate court to apply the U.S. Supreme Court’s recent ruling in Jack Daniel’s Properties, Inc. v. VIP Products LLC regarding the use of trademarks in expressive works. The appellate court’s decision provides a helpful indication of how that ruling will play out.

Case footprint

The case involves a highly popular “skater” (skateboard enthusiast) shoe made by globally known footwear and apparel manufacturer Vans. The “Old Skool” shoe is one of its most recognizable products.

MSCHF is a Brooklyn-based art collective that uses artwork to comment on contemporary society by recontextualizing everyday objects. Its works often are sold with “manifestos” explaining the associated commentary. Works have critiqued music, the political system, digital media, consumerism and the legal system. They’re sold in “drops” (prescribed sales periods) and frequently sell out in a single day.

When MSCHF turned its attention to consumerism in “sneakerhead” (athletic shoe enthusiast) culture, it targeted the Old Skool with a parody called Wavy Baby. The parody incorporated and distorted the Old Skool color scheme, side stripe, perforated sole, logos on the heel and footbed, and packaging.

When Vans learned of the impending release of the Wavy Baby shoe, it sent MSCHF a cease-and-desist letter, notifying it of Vans’ claim that the shoes infringed their trademarks and trade dress. MSCHF continued to promote the drop, though, and launched the sale of shoes as planned, selling them on its proprietary app.

Vans filed a lawsuit and sought a temporary restraining order and preliminary injunction to block MSCHF’s use of Vans’ trademark in the Wavy Baby sneakers. The trial court granted both, and MSCHF appealed.

The sole of the matter

One of MSCHF’s arguments on appeal was that the trial court erred by failing to apply enhanced First Amendment protections in its likelihood-of-confusion analysis. Specifically, it contended that the Rogers test applied. Under Rogers, when a trademark is used in an expressive work, it’s not infringement unless the challenged use of the mark 1) has no artistic relevance to the underlying work, or 2) explicitly misleads as to the source of the content of the work.

But, in 2023, the Supreme Court in Jack Daniel’s held that the Rogers test applies only in nontrademark cases where the defendant hasn’t used the mark to identify the source of its goods. In other words, the test doesn’t apply where an alleged infringer uses another’s trademark as a source identifier for its own goods. In those circumstances, the traditional likelihood-of-confusion inquiry is sufficient to account for the First Amendment interest in free expression.

The Second Circuit found that the Supreme Court’s ruling rejected MSCHF’s argument that Wavy Baby’s parodic message warranted the higher First Amendment scrutiny of the Rogers test. While MSCHF may have intended the Wavy Baby to parody the Old Skool, the Vans mark was used at least in part as a source identifier.

MSCHF’s design evoked, with distortion, multiple elements of the Old Skool trademarks and trade dress. It also included MSCHF’s own branding on the label and heel — and even the design of its own logo evoked the Old Skool logo. Moreover, unlike the parody in the Jack Daniel’s case, Wavy Baby didn’t have a disclaimer disassociating it from the trademarked product or its maker.

The appeals court concluded that MSCHF used Vans’ trademarks, particularly its red and white logo, to brand its own products, seeking to benefit from Vans’ goodwill. In the court’s eyes, this constituted “quintessential trademark use” subject to the Lanham Act. The trial court, therefore, was correct in applying the traditional likelihood-of-confusion test, rather than the Rogers test.

Tying it all up

The appellate court also reviewed the trial court’s finding that Vans was likely to prevail in court on the issue of whether the Wavy Baby caused consumer confusion about its source. Thus, it left both the temporary restraining order and the preliminary injunction in place.

Sidebar:   When parodic intent affects likelihood of confusion

In finding a likelihood of confusion between the parody Wavy Baby and the trademarked Old Skool in the Vans case (see main article), the U.S. Court of Appeals for the Second Circuit acknowledged that the Wavy Baby was a parody — just not one entitled to the Rogers test. And a parodic expressive message can figure in the assessment of the likelihood of confusion.

Citing the U.S. Supreme Court, the appellate court explained that a “successful” parody must create contrasts with its target so the message of ridicule or pointed humor comes through. It must convey that it’s not the original but a parody. If it does so, a parody is unlikely to create confusion. If a parodic use of protected marks leaves confusion about the source of a product, though, it hasn’t succeeded for purposes of trademark law and the infringement is unlawful. That, the court concluded, was the case here.

© 2024

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