Vans, Inc. v. MSCHF Product Studio, Inc.
(2023)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
When an alleged infringer uses a trademark as a source identifier for its own goods, the heightened First Amendment protections under the Rogers test do not apply, even if the use is for a parodic or expressive purpose. Instead, the claim is subject to the Lanham Act's traditional likelihood-of-confusion analysis.
Facts:
- Vans, Inc. is a well-known footwear company famous for its 'Old Skool' shoe, which has a distinctive and protected trade dress including its 'Side Stripe' mark.
- MSCHF Product Studio, Inc. is a Brooklyn-based art collective that creates products commenting on consumer culture.
- MSCHF designed and created a sneaker called the 'Wavy Baby,' which was an intentionally distorted version of the Vans Old Skool shoe.
- MSCHF stated that its design process began with the Vans Old Skool because of its iconic status, intending to comment on sneaker culture.
- In collaboration with musical artist Tyga, MSCHF promoted the Wavy Baby shoe through social media and a music video.
- MSCHF planned to sell 4,306 pairs of the Wavy Baby shoes for $220 each in a limited-time 'drop.'
- Upon learning of the planned sale, Vans sent MSCHF a cease and desist letter, asserting that the Wavy Baby shoe infringed on its trademarks.
- Despite the letter, MSCHF proceeded with the scheduled one-hour sale of the Wavy Baby shoes.
Procedural Posture:
- Vans, Inc. and VF Outdoor, LLC sued MSCHF Product Studio, Inc. in the U.S. District Court for the Eastern District of New York for trademark infringement.
- Vans filed a motion for a temporary restraining order (TRO) and a preliminary injunction to prevent MSCHF from advertising or selling the Wavy Baby shoes.
- The district court granted Vans' motion, issuing a TRO and preliminary injunction against MSCHF.
- The district court also ordered MSCHF to cancel outstanding orders and place all revenues from completed sales into an escrow account.
- MSCHF (Defendant-Appellant) appealed the district court's order granting the preliminary injunction to the U.S. Court of Appeals for the Second Circuit.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does the First Amendment protect an allegedly infringing product that uses a trademark as a source identifier from a trademark infringement claim, even if the product is an expressive parody?
Opinions:
Majority - Per Curiam
No. The First Amendment does not protect an allegedly infringing product from a trademark infringement claim when the trademark is used as a source identifier. Applying the Supreme Court's recent decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, the court held that because MSCHF used Vans’ marks and trade dress to identify the source of its own product, the Wavy Baby shoe, the special First Amendment protections of the Rogers test are inapplicable. The court then applied the traditional eight-factor Polaroid likelihood-of-confusion test and concluded that Vans was likely to succeed on its infringement claim. Factors such as the strength of Vans' mark, the similarity between the products, their competitive proximity, and evidence of actual consumer confusion all weighed in Vans' favor.
Analysis:
This decision solidifies the impact of the Supreme Court's Jack Daniel's ruling, significantly narrowing the applicability of the Rogers test for expressive works in trademark law. It clarifies that using another's trademark as a source identifier, even in a parodic or artistic context, removes the special First Amendment protection and subjects the work to a standard infringement analysis. This ruling makes it more challenging for creators of parodic products to defend against trademark claims, as the focus shifts from artistic relevance to the more brand-owner-friendly likelihood-of-confusion framework. The case reinforces that if a parody creates consumer confusion about the source or affiliation of a product, it will likely be deemed infringing.
