MSCHF Testing the Limits of Free Speech

The owner of a trademark has the exclusive right to use it in commerce. The scope of the right is geographically limited, but if it is registered with the USPTO, then the owner’s exclusive right extends throughout the entire United States. The United States Constitution, however, also protects rights of speech and press freedom. What happens when these rights collide?

The U.S. Court of Appeals for the Second Circuit is now considering a case squarely raising that question, Vans v. MSCHF Prod. Studios, No. 22-cv-2156 (WFK)(RML), 20223 WL 1446681 (E.D.N.Y. April 29, 2022), argued, No. 22-1006 (2nd Cir. Sept. 28, 2022).

MSCHF is a New York art collective that creates and sells irreverent art products such as “Jesus shoes” and “Satan shoes.” It also allegedly created and sold about 4,000 pairs of what it calls “Wavy Baby” shoes, described as a parody of Van’s “Old Skool” skate shoes and the “digital shoes” that Van’s sells in computer games. MSCHF designed the shoe by applying a “liquify” filter to an image of an Old Skool shoe. The shoes are distributed with a warning that the consumer assumes the risk that the wavy sole may cause injury or death.

Vans sued MSCHF for trademark infringement. (Trade dress, including product design, can function as a trademark.) MSCHF asserted a First Amendment defense, arguing that Wavy Baby Shoes are protected parodic or artistic expression. The district court rejected the defense. An appeal to the Second Circuit Court of Appeals followed.

Nominative Fair Use

It is a longstanding principle of trademark law that merely mentioning or referring to another person’s trademark is not trademark infringement. This kind of use of a trademark, called nominative use, helps protect values central to the First Amendment. If people were not allowed to even mention another person’s trademark, then criticism and commentary about a company or its products and services would be severely hamstrung. Likewise, a photographer’s or artist’s ability to sell cityscape paintings and pictures would be severely hampered if including even a single company name or logo in it could open the artist to liability for trademark infringement.

Nominative use is a relatively easy concept to apply. If a trademark is used in a way that is not likely to confuse a consumer about the source of a product or service, then the use is not infringing. In most cases, nominative uses of trademarks are not likely to mislead any reasonable consumer about the source of a product.

Parody

Parody is another area where the First Amendment may trump trademark rights. It is an explicit statutory defense to a trademark dilution claim. Courts have used the First Amendment to extend the defense to infringement claims, too, provided certain conditions are met.

To qualify for protection, a parody product must convey two contradictory messages: (1) That it is the original; and (2) that it is not the original. That is to say, it must be sufficiently similar to the original that consumers understand the reference, but at the same time, it must also be sufficiently distinguishable that consumers are not likely to think it comes from the same source as the original. To work as parody, the second message must communicate some articulable element of ridicule, mockery, or irreverent commentary. This is consistent with the traditional trademark infringement “likelihood of confusion” requirement. A seller of a trademarked product is not likely to also sell products that mock, ridicule or make fun of the product and/or its seller.

In this case, the district court found that the Wavy Baby shoes satisfied the first element of a parody: They conveyed enough similarity to the Old Skool trademark to enable consumers to understand the reference. The court, however, found that the second message had not been communicated clearly enough, that the shoes and their packaging had failed to clearly communicate a satirical message.

In reaching its decision, the court found it significant that the Wavy Baby shoe is a “competing product” that does not “incorporate[] clear puns and parodic references.”

The Appeal

The main point MSCHF is raising on appeal is that the district court should have applied the rule announced in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). In that case, Ginger Rogers sued Grimaldi and MGM for producing and distributing a movie called Ginger and Fred. The movie was about a different pair of dancers who had been compared to Fred Astaire and Ginger Rogers. The Second Circuit Court of Appeals held that the use of the phrase was artistically expressive and therefore not actionable as trademark infringement. MSCF contends that Wavy Baby Shoes, too, are artistically expressive, and that Rogers, therefore, should apply.

Vans argues that Rogers is distinguishable because that case did not involve infringing trade dress used to sell goods that compete with the trademark owner’s goods. “Since Rogers was decided, the courts in the Second Circuit have uniformly limited its application to expressive works such as books, movies, and video games.” Vans Br. at 31, Dkt. 75 (July 22, 2022). Vans maintains that “[t]here is no basis under Rogers or later authority to expand this holding to a commercial product that incorporates a competitor’s trademarks and trade dress,” id. at 33.

Conclusion

Assuming the Court does not disturb the district court’s anti-parody findings, the Court will need to decide whether the Rogers v. Grimaldi test should be extended to products, on one hand, or limited to traditional expressive works (e.g., books and movies), on the other. In any event, it is hoped that the Court will take the opportunity to clarify the relationship between parody goods doctrine and the Rogers test.

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