No More Trademark MSCHF: Second Circuit Rules on Applicable Infringement Standard for Expressive WorksDecember 11, 2023

The Second Circuit Court of Appeals this week upheld a temporary restraining order and preliminary injunction against Brooklyn-based art collective MSCHF regarding its “Wavy Baby” shoe.

Central to this case was the question of whether the Wavy Baby shoe—which is a “transformed” version of the iconic Vans Old Skool shoe—was a “work of artistic expression” entitled to heightened First Amendment protection rather than the traditional likelihood of confusion inquiry for trademark infringement under the Lanham Act.

In deciding this question, the Second Circuit turned to the U.S. Supreme Court’s recent decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC. There, the Court held that even if an alleged infringer uses a trademark for an expressive purpose, enhanced First Amendment protections do not apply “when the allegedly infringing mark is used as a source identifier—that is, as a designation of source for the alleged infringer’s own goods.”

Accordingly, instead of looking to the expressive nature of MSCHF’s use, the court focused on whether MSCHF used Vans’ trademarks and trade dress for source identification. Defining source identification as “use to identify or brand a defendant’s goods or services or to indicate the source or origin of a product,” the court ruled in favor of Vans, finding that MSCHF used Vans’ marks “to brand its own products, which constitutes quintessential trademark use subject to the Lanham Act.” The court explained that MSCHF’s design “evoked myriad elements of the Old Skool trademarks and trade dress. Among other things, MSCHF incorporates, with  distortions, the Old Skool black and white color scheme, the side stripe, the perforated sole, the logo on the heel, the logo on the footbed, and the packaging.” The Second Circuit thus ruled that “no special First Amendment protections apply to insulate MSCHF against Vans’ trademark infringement claim.”

Because MSCHF’s use was of a source-identifying nature, the Second Circuit ruled that the district court did not err in applying the traditional likelihood of confusion test and concluding that Vans was likely to prevail on the merits of its trademark infringement claim.

The full Complaint is available here.

Nicholas J. Krob is Senior Counsel, practicing in the Trademark, Licensing, and Litigation Practice Groups at McKee, Voorhees & Sease. For additional information, please visit www.ipmvs.com or contact Nicholas directly via email at nicholas.krob@ipmvs.com.