By: Brian Medich  [8/22/22]

Anyone who owned a pair of Vans back in their school days more than likely remembers drawing on said shoes with an assortment of colored markers. Whether we were playing tic tac toe on a pair of checkered Vans, drawing stick figures on the soles and white swooshes, or “practicing” our penmanship with some “choice” words, we changed the way our Vans looked(much to the chagrin of our parents who just wanted us to have a clean pair of sneakers). Now, some odd years later, this is the basic fact pattern of a pending lawsuit in which Vans Inc., the footwear company, sued MSCHF Product Studio Inc., not a footwear company, on a variety of trademark infringement, trademark dilution, and unfair competition claims for modifying the Vans Old Skool shoe. One main difference between our childhood modifications (artistic ability aside) and MSCHF’s (pronounced “mischief” and self-described art collective) current modifications is that we did not then mass-produce our modified shoes for sale (I was lucky if they survived the washing machine).

In a nutshell, MSCHF intended to release a shoe for sale that it considered “a mass-produced object modified to create expressive art,” but Vans didn’t like that because it owned and designed the mass-produced object MSCHF aimed to modify. See Vans, Inc. et. al., v. MSCHF Product Studios, Inc., Case No. 1:22-cv-02156-WFK-RML (E.D.N.Y) (referred to here as “Vans v. MSCHF”) at docket entries 1 and 55. Here, “modify” is the operative word, with Vans arguing that MSCHF’s “modified” shoe infringed and diluted Vans’ trademark and irreparably harmed Vans (among other things) and MSCHF arguing that its “modified” shoe is both parody and expression protected by the First Amendment (among other things). For context, see side-by-side photos below (taken from Vans v. MSCHF at docket entry 1 page 3).

​In the end, the district court agreed with Vans, determining that MSCHF’s shoe and packaging – on its own and without additional explanation – failed to convey parodic expression. Said differently, absent MSCHF’s explanation of its shoe’s intended message, the district court did not believe MSCHF’s message was conveyed, and its shoe amounted to not much more than a wavy Vans’ sneaker. With that in mind, the Court ordered a preliminary injunction prohibiting MSCHF from selling and/or undertaking related actions (advertising, marketing, distributing, etc.) during the pendency of the lawsuit. Vans v. MSCHF at docket entry 40. MSCHF appealed the district court’s decision to the Second Circuit, and while briefing has not yet concluded and thus a decision has not yet been reached, the appeal is garnering attention and multiple amicus curiae briefs have been filed.

One such brief was filed by the International Trademark Association (INTA), a global association of brand owners and professionals dedicated to supporting trademarks and complementary intellectual property, and asked the Second Circuit to confirm that the test established in Rogers v. Grimaldi “applies only to traditionally expressive works – not ordinary consumer products – and to provide a gatekeeping definition of ‘expressive works’ that will provide courts and litigants more certainty when considering” whether the First Amendment applies or trademark laws apply. See INTA Amicus Brief at page 3-4 (Case 22-1006, docket entry 49). Under the Rogers test, initially established to evaluate the artistic value of the title of a film, the use of a trademark in an artistic work violates trademark law only if use of the mark (1) has no artistic relevance to the underlying work, or (2) explicitly misleads as to the source or the content of the work. Since its inception, the Rogers test has been more and more broadly applied, and through its amicus brief, INTA seeks to return it to its humbler (narrow) origins. If the Second Circuit reaches this issue, there may be lasting impacts on what is considered an expressive work of art in the consumer products industry.

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Posted in: Intellectual Property - Trademarks, Trademark

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