`
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`22-1006
`Vans, Inc. v. MSCHF Product Studio, Inc.
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`Case 22-1006, Document 145-1, 12/05/2023, 3595688, Page1 of 37
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`
`
`In the
`United States Court of Appeals
`For the Second Circuit
`______________
`
`August Term, 2022
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`(Argued: September 28, 2022 Decided: December 5, 2023)
`
`Docket No. 22-1006
`______________
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`
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`VANS, INC., VF OUTDOOR, LLC.,
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`Plaintiffs-Appellees,
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`–v.–
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`MSCHF PRODUCT STUDIO, INC.,
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`Defendant-Appellant.
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`______________
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`JACOBS, CHIN, and ROBINSON, Circuit Judges.
`______________
`
`Before:
`
`
`Defendant-Appellant MSCHF Product Studio, Inc. (“MSCHF”), the creator
`of the Wavy Baby sneaker, appeals from the April 29, 2022 order of the United
`States District Court for the Eastern District of New York (Kuntz, J.) granting the
`request by Plaintiffs-Appellees Vans, Inc., and VF Outdoor, LLC (collectively
`“Vans”) for a temporary restraining order and preliminary injunction enjoining
`MSCHF’s use of Vans’ trademark and trade dress in the Wavy Baby sneakers.
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`Case 22-1006, Document 145-1, 12/05/2023, 3595688, Page2 of 37
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`On appeal, MSCHF argues that the district court erred by failing to apply
`enhanced First Amendment protections in its likelihood-of-confusion analysis
`under the Lanham Act and in assessing the likelihood of confusion; the
`preliminary injunction is an unconstitutional prior restraint on MSCHF’s free
`expression; the district court erred in requiring MSCHF to place its Wavy Baby
`revenues in escrow; and the district court erred by failing to make a bond
`determination.
`The main issues in this appeal are governed by the United States Supreme
`Court’s recent decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S.
`140 (2023). Applying Jack Daniel’s, we conclude that Vans is likely to prevail in
`arguing that MSCHF’s Wavy Baby shoes used Vans’ marks and trade dress as
`source identifiers, and thus no special First Amendment protections apply to
`protect MSCHF against Vans’ trademark infringement claim. As such, the district
`court did not err in concluding that Vans is likely to prevail on the merits of its
`trademark infringement claim in light of the likelihood of confusion as to the
`source of the Wavy Baby shoes. We further conclude that the district court did not
`err in requiring MSCHF to escrow its revenues from Wavy Baby sales, and that
`the district court was not required to make a bond determination because MSCHF
`never requested security. We therefore AFFIRM.
`
`
`______________
`
`
`(Megan K. Bannigan,
`DAVID H. BERNSTEIN
`Debevoise & Plimpton LLP, New York, NY;
`William D. Patterson, Swanson, Martin & Bell,
`LLP, Chicago IL, on the brief), for Defendant-
`Appellant.
`
`LUCY JEWETT WHEATLEY, McGuire Woods LLP,
`Richmond, VA (Philip A. Goldstein, McGuire
`Woods LLP, New York, NY; Tanya L. Greene,
`McGuire Woods LLP, Los Angeles, CA, on the
`brief), for Plaintiffs-Appellees.
`
`Vivek Jayaram, Jayaram Law Group, Chicago, IL,
`for Amicus Curiae Daniel Arsham in Support of
`Defendant-Appellant.
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`2
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`Case 22-1006, Document 145-1, 12/05/2023, 3595688, Page3 of 37
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`
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`Ronald D. Coleman, Dhillon Law Group Inc.,
`Newark, NJ, for Amici Curiae Emmanuel Perrotin,
`Jean-Paul Engelen in Support of Defendant-Appellant.
`
`
`Mark A. Lemley, Lex Lumina PLLC, New York,
`NY, for Amici Curiae Intellectual Property Professors
`in Support of Plaintiffs-Appellees.
`
`John P. O’Herron (Zachary D. Cohen, Rachel W.
`Adams, on the brief), ThompsonMcMullan, P.C.,
`Richmond, VA, for Amici Curiae American Apparel &
`Footwear Association, Footwear Distributors &
`Retailers of America, Council of Fashion Designers of
`America, Inc., and Accessories Council in Support of
`Plaintiffs-Appellees.
`
`Stanley Panikowski, DLA Piper LLP (US), San
`Diego, CA (Tamar Y. Duvdevani, DLA Piper LLP
`(US), New York, NY, on the brief), for Amicus Curiae
`Nike, Inc., in Support of Plaintiffs-Appellees.
`
`Vijay K. Toke, Rimon P.C., San Francisco, CA
`(Martin Schwimmer, Leason Ellis LLP, White
`Plains, NY; David Donahue, Fross Zelnick
`Lehrman & Zissu, P.C., New York, NY, on the brief),
`for Amicus Curiae
`International Trademark
`Association in Support of neither party.
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`Rhett O. Millsaps II, Lex Lumina PLLC, New York,
`NY (Mark P. McKenna, Christopher J. Sprigman,
`Rebecca Tushnet, on the brief), for Amici Curiae
`Authors Alliance, Mason Rothschild, Alfred Steiner in
`Support of neither party.
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`______________
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`3
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`Case 22-1006, Document 145-1, 12/05/2023, 3595688, Page4 of 37
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`PER CURIAM:
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`In this case, defendant-appellant MSCHF Product Studio, Inc. (“MSCHF”),
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`created a sneaker, the Wavy Baby, that purported to parody the Old Skool shoe,
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`created and marketed by plaintiff-appellee Vans, Inc. (“Vans”), and thereby
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`comment on the consumerism inherent in sneakerhead culture. MSCHF altered
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`the features of an Old Skool sneaker by distorting Vans’ trademarks and trade
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`dress, resulting in a shoe that was “exceedingly wavy.” After MSCHF engaged in
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`an online marketing campaign, it sold 4,306 pairs of the Wavy Baby in one hour.
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`Vans, unsurprisingly, was not amused.
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`The central issue in this case is whether and when an alleged infringer who
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`uses another’s trademarks for parodic purposes is entitled to heightened First
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`Amendment protections, rather than the Lanham Act’s traditional likelihood of
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`confusion inquiry.
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`The Supreme Court recently addressed this issue in Jack Daniel’s Properties,
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`Inc. v. VIP Products LLC, 599 U.S. 140 (2023). There, the Court held that, even if an
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`alleged infringer used another’s trademarks for an expressive purpose, special
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`First Amendment protections did not apply if the trademarks were used for source
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`identification—that is, if the alleged infringer was “trading on the good will of the
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`trademark owner to market its own goods.” Id. at 156 (citation omitted). Applying
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`Jack Daniel’s, we conclude that no special First Amendment protections apply to
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`insulate MSCHF against Vans’ trademark infringement claim.1 As to those
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`trademark infringement claims, the district court did not err in concluding that
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`Vans is likely to prevail on the merits. We further conclude that the district court
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`did not err in requiring MSCHF to escrow its revenues from Wavy Baby sales, and
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`that the district court was not required to make a bond determination because
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`MSCHF never requested security. We therefore AFFIRM.
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`BACKGROUND2
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`I.
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`Facts
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`A.
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`Vans
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`Vans is a globally known footwear and apparel company that specializes in
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`skateboard-friendly shoes and sneakers. The company, founded in 1966,
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`originally catered to customers in Southern California. Vans became popular
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`among skateboarders, celebrities, and the public. One of Vans’ most recognizable
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`products is its “Old Skool” shoe, shown below:
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`
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`1 After we heard oral argument, we held the case pending a decision by the Supreme Court in
`Jack Daniel’s. After the Supreme Court ruled, the parties submitted supplemental briefing.
`2 This account is drawn from the record relied upon by the district court, comprising the parties’
`declarations and exhibits.
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`5
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`Case 22-1006, Document 145-1, 12/05/2023, 3595688, Page6 of 37
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`Vans Old Skool Shoe
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`Jt. App’x at 13, 15.
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`The Old Skool trade dress consists of a combination of elements, including:
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`(1) the Vans Side Stripe Mark on the upper shoe; (2) a rubberized sidewall of
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`uniform height around the shoe’s perimeter; (3) a three-tiered or grooved sidewall;
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`(4) a textured toe box; (5) visible stitching; and (6) the placement and proportion
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`of each of these elements in relation to one another. Jt. App’x at 256. It also
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`features a distinctive “waffle sole” design. Id. at 258. The Old Skool is one of Vans’
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`most popular shoes and sold for about $60 a pair. Most Old Skool shoes are black
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`and white, but Vans has expanded the shoes to come in a variety of colors or color
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`arrangements.
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`Vans often collaborates with artists and celebrities to design and sell special
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`edition versions of its shoes, including the Old Skools. Beyond official
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`collaborations, many of the rich and famous have been photographed wearing the
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`Vans Old Skool. In short, the Old Skool is an iconic Vans sneaker, easily
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`6
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`Case 22-1006, Document 145-1, 12/05/2023, 3595688, Page7 of 37
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`recognizable by both “sneakerheads” and the uninitiated. Id. at 273 (explaining
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`that sneakerheads are people who collect shoes to display them, but “rarely” to
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`wear them).
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`B. MSCHF
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`MSCHF is a Brooklyn-based art collective “known as (and for) MSCHF.” Id.
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`at 271. MSCHF’s mission is to use artwork “to start a conversation about consumer
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`culture . . . by participating in consumer culture.” Id. at 486–87. MSCHF
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`recontextualizes everyday objects as a means of commenting on contemporary
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`society. MSCHF’s work has been displayed in museums, galleries, auction houses,
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`and art shows worldwide, including Phillips Auction House, Art Basel, the Design
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`Museum of London, and the Perrotin gallery.
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`MSCHF’s works are often sold with “manifestos” that explain the work’s
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`commentary and are sold in “drops,” or prescribed sales periods. Recent drops
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`have critiqued music, the political system, consumerism, digital media,
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`standardized testing, holidays, and the legal system. And often, MSCHF’s
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`“drops” will sell out in a day.
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`MSCHF has recently focused its artistic expression on “sneakerhead
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`culture.” Sneakers are utilitarian objects for most, but for sneakerheads, shoes are
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`expressive, “collect[ed], trade[d], and display[ed] as a hobby.” Id. at 497. MSCHF
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`critiques the consumerism present in sneakerhead culture, as well as sneaker
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`companies’ practice of collaborating with “anyone and everyone to make money.”
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`Id. at 352.
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`C.
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`The Wavy Baby
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`This case is about MSCHF’s sneaker drop of the “Wavy Baby” shoe,
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`depicted below:
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`MSCHF “Wavy Baby”
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`Jt. App’x at 14, 17.
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`MSCHF’s co-Chief Creative Officer explained MSCHF’s conception of the
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`connection between Vans’ Old Skool shoe and MSCHF’s Wavy Baby in the
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`following manner: “The Wavy Baby concept started with a Vans Old Skool
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`sneaker” because no other shoe embodies the dichotomies between “niche and
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`8
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`Case 22-1006, Document 145-1, 12/05/2023, 3595688, Page9 of 37
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`mass taste, functional and trendy, utilitarian and frivolous” as perfectly as the Old
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`Skool. Id. at 353. The Wavy Baby design process thus started with an image of a
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`classic Vans Old Skool skate shoe. Id. MSCHF used a digital filter tool to warp the
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`shoe into a new image, “transform[ing] the once iconic shoe into the modern,
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`wobbly, and unbalanced realities.” Id. at 353–54. One evident feature of the
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`parody is that the distortion destroys the original premise of the Old Skool’s
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`popularity—its utility as a skateboarding shoe due to its flat sole.
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`Wavy Baby incorporates and distorts the Old Skool black and white color
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`scheme, the side stripe, the perforated sole, the logo on the heel, the logo on the
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`footbed, and the packaging. Examples of the critical similarities, and distortions,
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`are reflected in the graphics below.
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`Vans’ Trademarks/Trade Dress
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`WAVY BABY Design
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`Vans’ Trademarks/Trade Dress
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`WAVY BABY Design
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`10
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`Case 22-1006, Document 145-1, 12/05/2023, 3595688, Page11 of 37
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`Vans’ Trademarks/Trade Dress
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`WAVY BABY Design
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`Jt. App’x at 171–72; 252–53.
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`Prior to the Wavy Baby’s release, MSCHF engaged in a marketing campaign
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`in collaboration with musical artist Michael Stevenson, also known as Tyga. Id. at
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`363. MSCHF advertised the Wavy Baby collaboration before releasing the
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`sneakers for sale—garnering hype and excitement through MSCHF’s website,
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`Instagram and YouTube accounts, and sneaker-focused platforms. Tyga also
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`released a music video in which he wore the Wavy Baby shoe. Id. at 377.
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`Upon learning of the impending drop of the Wavy Baby shoe, Vans sent a
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`cease and desist letter to Tyga on April 5, 2022, and to MSCHF the following day,
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`putting them on notice of their claim that the Wavy Baby shoes infringed their
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`trademarks and trade dress. MSCHF, however, continued to promote the planned
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`drop and on April 18, 2022, after this suit commenced, launched the pre-planned
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`11
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`Case 22-1006, Document 145-1, 12/05/2023, 3595688, Page12 of 37
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`one-hour drop of 4,306 Wavy Baby shoes. Customers purchased the shoes only
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`on MSCHF’s proprietary app for $220.
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`II. District Court Proceedings
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`Vans filed a complaint in United States District Court for the Eastern District
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`of New York on April 14, 2022, alleging six claims under state and federal law,
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`including a federal claim for trademark infringement under the Lanham Act. 15
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`U.S.C. § 1114.
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`On April 15, 2022, Vans filed a motion for a temporary restraining order and
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`preliminary injunction asking the district court to enjoin MSCHF from: (1)
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`fulfilling orders for or otherwise releasing for sale to the public any of the “Wavy
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`Baby” shoes, or colorful imitations or reconstructions thereof (the “Prohibited
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`Shoes”); (2) using Vans’ Old Skool trade dress or marks or confusingly similar
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`marks (collectively, the “Prohibited Marks”); (3) referring to or using any
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`Prohibited Marks in any advertising, marketing, or promotion; and (4) aiding any
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`other person or entity in taking the prohibited actions. Jt. App’x at 65, 147. Vans
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`attached to its motion several supporting declarations with exhibits. MSCHF
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`opposed the motion with numerous declarations and exhibits.
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`After oral argument on April 27, 2022, the district court granted the
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`temporary restraining order and preliminary injunction, concluding primarily
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`12
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`that because Vans had shown a significant danger of consumer confusion, Vans
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`would likely prevail on its trademark infringement claims; it had shown that it
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`would suffer irreparable harm without injunctive relief; and the balance of
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`hardships and public interest supported preliminary relief. Vans, Inc. v. MSCHF
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`Product Studio, Inc., 602 F. Supp. 3d 358, 368, 371–73 (E.D.N.Y. 2022).
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`In concluding that Vans would likely prevail on the consumer confusion
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`issue, the court considered the factors set forth in Polaroid Corp. v. Polarad
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`Electronics Corp., 287 F.2d 492 (2d Cir. 1961). See Vans, 602 F. Supp. 3d at 367–70.
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`In particular, the Court concluded that MSCHF’s distortion of the Old Skool marks
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`and trade dress on the Wavy Baby shoes was not sufficient to dispel the consumer
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`confusion arising from the similarity of the marks. Id. at 368. It relied on evidence
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`that various consumers “misunderstood the source of the Wavy Baby shoes as a
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`collaboration between [Vans] and [MSCHF],” id., and admissions by MSCHF’s
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`own representatives that the “base” of the Wavy Baby shoe before MSCHF’s
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`transformation was the Vans Old Skool. Id.
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`The court further concluded that the “sophistication of the buyers” factor
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`weighed in Vans’ favor because MSCHF advertised the Wavy Baby broadly in
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`conjunction with Tyga, sold the shoes directly to the general public, and shoes are
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`generally a common consumer item. Id. at 368–69.
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`13
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`Moreover, the court concluded that the market proximity of the Wavy Baby
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`shoes and Vans’ Old Skool shoes enhanced the likelihood of consumer confusion.
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`Id. at 369. The court rejected MSCHF’s suggestion that the Wavy Baby shoes were
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`not, like Old Skool shoes, intended to be worn but were instead “collectible
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`work[s] of art,” that were “likely to be kept in glass cases or on shelves.” Id. In
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`rejecting MSCHF’s claim, it pointed to statements of MSCHF’s own representative,
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`the quantity of shoes produced (4,306 pairs), and the fact that MSCHF held back
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`some shoes in case the shoes shipped were the wrong size, thereby suggesting the
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`Wavy Baby is to be worn. Id.
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`The district court rejected MSCHF’s contention that Wavy Baby, as a parodic
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`work of artistic expression, was subject to special First Amendment protections
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`rather than the traditional likelihood of confusion test. Id. at 370–71. The court
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`acknowledged that courts have “accorded considerable leeway to parodists whose
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`expressive works aim their parodic commentary at a trademark or a trademarked
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`product,” but emphasized that they “have not hesitated to prevent a manufacturer
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`from using an alleged parody of a competitor’s mark to sell a competing product.”
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`Id. at 370 (quoting Harley Davidson, Inc. v. Grottanelli, 164 F.3d 806, 812 (2d Cir.
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`1999)). Moreover, the court observed that even while purporting to represent “the
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`original,” a successful parody must simultaneously convey “that it is not the
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`14
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`Case 22-1006, Document 145-1, 12/05/2023, 3595688, Page15 of 37
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`original and is instead a parody.” Id. (emphasis added) (quoting Cliffs Notes, Inc.
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`v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490, 494 (2d Cir. 1989)). The
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`court concluded that the Wavy Baby shoes on their face did not clearly indicate to
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`the ordinary observer that MSCHF is “not connected in any way with the owner
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`of the target trademark.” Id. at 370–71 (quoting Louis Vuitton Malletier, S.A. v. My
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`Other Bag, Inc., 156 F. Supp. 3d 425, 435 (S.D.N.Y. 2016), aff’d, 674 F. App’x 16 (2d
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`Cir. 2016)).
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`For these reasons, the district court granted Vans’ motion for a temporary
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`restraining order and preliminary
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`injunction, prohibiting MSCHF from
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`advertising or fulfilling orders for the Wavy Baby shoes, and ordering MSCHF to
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`cancel any orders that had been placed for the shoes at the time of the court’s order,
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`and to escrow the funds received from orders that could not be reversed. MSCHF
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`appealed.
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`DISCUSSION
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`On appeal, MSCHF argues that the district court erred in concluding that
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`Vans was likely to succeed on the merits of its trademark infringement claim
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`because Vans’ claims are precluded by the First Amendment. For the same reason,
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`MSCHF argues that the district court’s injunction prohibiting Vans from
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`advertising the Wavy Baby shoes amounts to an unconstitutional prior restraint of
`15
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`speech. Finally, MSCHF argues that the district court erred in requiring it to
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`escrow all revenues from Wavy Baby sales, and in failing to require Vans to give
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`security.
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`After considering the applicable standard of review, we consider each
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`argument in turn.
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`I.
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`Standard of Review
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`We review a district court’s grant of a temporary restraining order (“TRO”)
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`or preliminary injunction for abuse of discretion. See Sunward Electronics, Inc. v.
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`McDonald, 362 F.3d 17, 24 (2d Cir. 2004). “An abuse of discretion may be found
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`when the district court relies on clearly erroneous findings of fact or on an error of
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`law in issuing the injunction.” Cliffs Notes, 886 F.2d at 493 (citation omitted).
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`Although we review a district court’s grant of a preliminary injunction for
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`abuse of discretion, Citigroup Glob. Mkts., Inc. v. VCG Special Opportunities Master
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`Fund Ltd., 598 F.3d 30, 34 (2d Cir. 2010), any “allegations of error in a preliminary
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`injunction [that] involve questions of law” are reviewed without deference. Briggs
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`v. Bremby, 792 F.3d 239, 241 (2d Cir. 2015) (citing Am. Express Fin. Advisors Inc. v.
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`Thorley, 147 F.3d 229, 231 (2d Cir. 1998)).
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`16
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`II.
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`Trademark Infringement, the First Amendment, and Wavy Baby
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`To evaluate whether the district court abused its discretion in concluding
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`that Vans was likely to succeed on its infringement claims, we must first
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`determine whether Wavy Baby is subject to trademark law’s traditional
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`likelihood of confusion analysis or whether it is an expressive work entitled to
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`heightened First Amendment scrutiny under Rogers v. Grimaldi, 875 F.2d 994 (2d
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`Cir. 1989). We begin with an overview of the two frameworks before addressing
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`the Supreme Court’s recent guidance in Jack Daniel’s, applying the lessons of that
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`decision to this case, and evaluating the district court’s application of the Polaroid
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`factors.
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`A.
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`The Lanham Act
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`The Lanham Act defines a trademark as “any word, name, symbol, or
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`device, or any combination thereof” that a manufacturer uses to distinguish the
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`manufacturer’s goods from those manufactured or sold by others and to “indicate
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`the source of the goods.” 15 U.S.C. § 1127. As the Jack Daniel’s Court observed, a
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`trademark “enables customers to select ‘the goods and services that they wish to
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`purchase, as well as those they want to avoid.’” Jack Daniel’s, 599 U.S. at 146
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`(quoting Matal v. Tam, 582 U.S. 218, 224 (2017)). A trademark holder “derive[s]
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`significant value from its marks” because such marks “ensure that the producer
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`17
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`itself—and not some ‘imitating competitor’—will reap the financial rewards
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`associated with the product’s good reputation.” Id. (citing Qualitex Co. v. Jacobson
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`Prods. Co., 514 U.S. 159, 164 (1995)).
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`To prevail on a trademark infringement claim under the Lanham Act, the
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`plaintiff must show that: (1) plaintiff owns a valid protectable mark; and (2)
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`defendant’s use of a similar mark is likely to cause consumer confusion as to the
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`origin or association of the goods or services. See Christian Louboutin S.A. v. Yves
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`Saint Laurent Am. Holdings, 696 F.3d 206, 216–17 (2d Cir. 2012). MSCHF does not
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`challenge the district court’s conclusion that Vans owns valid and protectable
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`marks in its Old Skool shoes; in any case, Vans’ marks are registered, which is
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`prima facie evidence that they are valid and protectable. See Matal v. Tam, 582 U.S.
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`218, 226–27 (2017). Accordingly, the focus of our inquiry on appeal is the second
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`prong: likelihood of consumer confusion.
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`This Court applies the eight-factor test identified in Polaroid, 287 F.2d at 495,
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`to assess the likelihood that an allegedly infringing product will create consumer
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`18
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`Case 22-1006, Document 145-1, 12/05/2023, 3595688, Page19 of 37
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`confusion.3 The eight factors are: (1) strength of the trademark; (2) similarity
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`between the two marks; (3) proximity of the products and their competitiveness
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`with one another; (4) likelihood the prior owner may “bridge the gap” in the
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`markets for their products; (5) evidence of actual consumer confusion; (6) the
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`defendant’s good faith in adopting its imitative mark; (7) quality of the defendant’s
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`product compared with the plaintiff’s product; and (8) sophistication of the
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`buyers. Id. Collectively, these factors establish whether the allegedly infringing
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`product creates consumer confusion.
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`B.
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`The Rogers Test
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`The traditional infringement inquiry may be applied more narrowly if the
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`allegedly infringing good or service is a work of “artistic expression.” See Rogers,
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`875 F.2d at 1000. In Rogers, this Court held that the Lanham Act should not apply
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`to “artistic works” as long as the defendant’s use of the mark is (1) artistically
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`relevant to the work, and (2) not “explicitly misleading” as to the source or content
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`of the work. Id. at 999; see also Twin Peaks Prods., Inc. v. Publ’ns Int’l, Ltd, 996 F.2d
`
`
`3 Other circuits apply balancing tests that are substantially the same. See, e.g., Louis Vuitton
`Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 259–63 (4th Cir. 2007) (applying the
`Pizzeria Uno factors as articulated in Pizzeria Uno Corp. v Temple, 747 F.2d 1522, 1527 (4th Cir.
`1984)); Brookfield Commc’ns, Inc. v. West Coast Ent. Corp., 174 F.3d 1036, 1054 (9th Cir. 1999)
`(applying the Sleekcraft factors as articulated in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49
`(9th Cir. 1979)).
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`
`19
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`
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`Case 22-1006, Document 145-1, 12/05/2023, 3595688, Page20 of 37
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`1366, 1379 (2d Cir. 1993) (requiring the likelihood of confusion to be “particularly
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`compelling” to outweigh the First Amendment concerns).
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` Although Rogers involved a dispute over a film title, lower courts adopting
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`Rogers have applied its test to other kinds of works but have “confined it to similar
`
`cases, in which a trademark is used not to designate a work’s source, but solely to
`
`perform some other expressive function.” Jack Daniel’s, 599 U.S. at 154. Courts in
`
`this Circuit have been careful to apply Rogers to a limited category of expressive
`
`works, including the title and cover of books and magazines, see, e.g., Rogers, 875
`
`F.2d at 1001–02 (film title); Twin Peaks, 996 F.2d at 1379–80 (book title); Cliffs Notes,
`
`886 F.2d at 495 (book title), and the use of trademarked products in feature films
`
`and video games, see, e.g., Louis Vuitton Malletier S.A. v. Warner Bros. Ent. Inc., 868
`
`F. Supp. 2d 172, 178 (S.D.N.Y. 2012) (film); AM Gen. LLC v. Activision Blizzard, Inc.,
`
`450 F. Supp. 3d 467, 479–80 (S.D.N.Y. 2020) (video game).
`
`C.
`
`Jack Daniel’s
`
`The Supreme Court’s recent decision in Jack Daniel’s clarified when the
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`Rogers test, and its heightened First Amendment protections, does 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.” 599 U.S. at 153.
`
`
`
`20
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`
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`Case 22-1006, Document 145-1, 12/05/2023, 3595688, Page21 of 37
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`Jack Daniel’s is a case “about dog toys and whiskey.” Id. at 144. Respondent
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`VIP Products created a dog toy called “Bad Spaniels” that was designed to look
`
`like a bottle of Jack Daniel’s whiskey, with some playful changes. See id. For
`
`example, VIP Products changed “Jack Daniel’s” to “Bad Spaniels,” “Old No. 7
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`Brand Tennessee Sour Mash Whiskey” to “The Old No. 2 On Your Tennessee
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`Carpet,” and “40% alc. by vol. (80 proof)” to “43% poo by vol.” and “100% smelly.”
`
`Id. at 149–50. Jack Daniel’s did not appreciate the joke.
`
`The central question before the Supreme Court was whether the Rogers test
`
`should have applied to Jack Daniel’s trademark infringement claims against VIP
`
`Products, where VIP Products’ Bad Spaniels dog toy (the allegedly infringing
`
`product) was an expressive or parodic work.4 Though the Court acknowledged
`
`that parodies are inherently expressive, it concluded that Rogers does not apply
`
`when the alleged infringer uses trademarks to designate source. Id. at 153 (“[W]e
`
`hold that [Rogers] does not [apply] when an alleged infringer uses a trademark in
`
`the way the Lanham Act most cares about: as a designation of source for the
`
`infringer’s own goods.”).
`
`
`4 Some sister circuits have adopted the Rogers test. See, e.g., Mattel, Inc. v. MCA Records, Inc., 296
`F.3d 896, 902 (9th Cir. 2002) (adopting Rogers test); Westchester Media v. PLR USA Holdings, Inc.,
`214 F.3d 658, 665 (5th Cir. 2000) (noting that Fifth Circuit has adopted the approach in Rogers).
`The Supreme Court expressly used the Rogers test as a proxy for any threshold First
`Amendment filter in the Lanham Act context. Jack Daniel’s, 599 U.S. at 153 n.1.
`
`
`
`21
`
`
`
`Case 22-1006, Document 145-1, 12/05/2023, 3595688, Page22 of 37
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`The Court explained that, historically, Rogers has been confined to cases
`
`where the trademark is not used to designate a work’s source, and instead is used
`
`“solely to perform some other expressive function.” Id. at 154 (emphasis added).
`
`In contrast, the use of another’s trademark that “convey[s] information (or
`
`misinformation) about who is responsible for a product . . . ‘implicates the core
`
`concerns of trademark law’ and creates ‘the paradigmatic infringement case.’” Id.
`
`at 157 (alterations adopted) (citation omitted).
`
`Moreover, the Court declined to adopt the Ninth Circuit’s holding that
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`Rogers applied to all “expressive work[s].” Id. at 151–52. It reasoned that such an
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`expansive read of Rogers would “conflict with courts’ longstanding view of
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`trademark law,” as “few cases would even get to the likelihood-of-confusion
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`inquiry if all expressive content triggered the Rogers filter.” Id. at 158–59. Because
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`the Court concluded that VIP Products used its Bad Spaniels “trademark and trade
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`dress as source identifiers of its dog toy,” it held that Rogers did not apply to Jack
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`Daniel’s claims of infringement. Id. at 159–61 (internal citation omitted).
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`Far from disregarding the parodic nature of the Bad Spaniel’s toy, however,
`
`the Supreme Court noted that “a trademark’s expressive message—particularly a
`
`parodic one . . . — may properly figure in assessing the likelihood of confusion.”
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`Id. at 161; see also id. at 159 (noting that “the likelihood-of-confusion inquiry does
`
`
`
`22
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`
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`Case 22-1006, Document 145-1, 12/05/2023, 3595688, Page23 of 37
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`enough work to account for the interest in free expression”). This is because,
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`where a message of “ridicule or pointed humor” is clear, “a parody is not often
`
`likely to create confusion” for “consumers are not so likely to think that the maker
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`of a mocked product is itself doing the mocking.” Id. at 161, 153; see id. at 161
`
`(“[A]lthough VIP’s effort to ridicule Jack Daniel’s does not justify use of the Rogers
`
`test, it may make a difference in the standard trademark analysis.”).
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`D. MSCHF’s Use of Vans’ Marks as Source Identifiers
`
`The Supreme Court’s decision in Jack Daniel’s forecloses MSCHF’s argument
`
`that Wavy Baby’s parodic message merits higher First Amendment scrutiny under
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`Rogers. As the Court held, even if a defendant uses a mark to parody the
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`trademark holder’s product, Rogers does not apply if the mark is used “‘at least in
`
`part’ for ‘source identification.’” Id. at 156 (quoting Tommy Hilfiger Licensing, Inc.,
`
`v. Nature Labs, LLC, 221 F. Supp. 2d 410, 414–15 (S.D.N.Y. 2002)).
`
`Here, MSCHF used Vans’ marks in much the same way that VIP Products
`
`used Jack Daniel’s marks—as source identifiers. As discussed above and
`
`illustrated below, VIP Products used the Jack Daniel’s bottle size, distinctive
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`squared-off shape, and black and white stylized text to invoke an image of Jack
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`Daniel’s famous whiskey bottle.
`
`
`
`23
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`
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`Case 22-1006, Document 145-1, 12/05/2023, 3595688, Page24 of 37
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`
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`Jack Daniel’s, 599 U.S. 148–49.
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`Likewise, MSCHF’s design evoked myriad elements of the Old Skool
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`trademarks and trade dress. Among other things, MSCHF incorporates, with
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`distortions, the Old Skool black and white color scheme, the side stripe, the
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`perforated sole, the logo on the heel, the logo on the footbed, and the packaging.
`
`See Part I, above. MSCHF included its own branding on the label and heel of the
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`Wavy Baby sneaker, just as VIP Products placed its logo on the toy’s hangtag. But
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`even the design of the MSCHF logo evokes the Old Skool logo. And unlike VIP
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`Products, MSCHF did not include a disclaimer disassociating it from Vans or Old
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`Skool shoes. See Jack Daniel’s, 599 U.S. at 150 (noting the dog toy included a
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`disclaimer that read: “This product is not affiliated with Jack Daniel Distillery”).
`
`
`
`A trademark is used as a “source identifier” when it is used “to identify or
`
`brand a defendant’s goods or services” or to indicate the “‘source or origin’ of a
`
`
`
`24
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`
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`Case 22-1006, Document 145-1, 12/05/2023, 3595688, Page25 of 37
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`product.” Id. at 156 (alterations adopted). MSCHF used Vans’ trademarks—
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`particularly its red and white logo—to brand its own products, which constitutes
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`“quintessential ‘trademark use’” subject to the Lanham Act. Id. at 155 (citation
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`omitted); see also Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806, 812–13
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`(mechanic’s use of Harley-Davidson’s bar and shield motif in his logo, despite
`
`the “humorous[]” message, was traditional trademark use subject to the
`
`likelihood of confusion analysis).
`
`
`
`Moreover, although MSCHF did not purport to sell the Wavy Baby under
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`the Vans brand, it admitted to “start[ing]” with Vans’ marks because “[n]o other
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`shoe embodies the dichotomies—niche and mass taste, functional and trendy,
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`utilitarian and frivolous—as perfectly as the Old Skool.” Jt. App’x at 353. In
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`other words, MSCHF sought to benefi
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