MSCHF Asks The Supreme Court To Say Its Parody Of Vans Shoes Is Free Speech

The last time we wrote about an interaction between the Supreme Court and the famed art collective/pranksters/social commentators/cultural marketing jammers MSCHF, it was covering their interesting choice of amicus briefs. They sought to comment on the Bad Spaniels" case by making the Justices and their clerks complete connect the dot" artwork as an attempt to highlight the value of parody.

That was mostly ignored.

However, now MSCHF is asking the Supreme Court to take up a case where it's a party. MSCHF, somewhat famously (or infamously), often pokes fun at both intellectual property law and the companies that obsess over it. Just as one example, one of its most recent projects, Global Supply Chain Telephone, involved having factories around the world make knockoff bags of famous bags, mashing it up with what was produced by other factories making knockoffs of other famous bags.

Anyway, a few years back, one of MSCHF's projects was the Wavy Baby" shoes, which were designed to be a play on the classic Vans' Old Skool skater shoes.

Vans didn't much like it and sued for trademark infringement. There's no one disputing that MSCHF's version is based on the Vans shoe. I mean, even if you thought the shoe was noticeably different (and it isn't really), the logo kinda gives it away:

And, yeah, the shoe is clearly a wavy" version of the Vans shoe. On purpose. As a kind of commentary.

The district court and the appeals court both sided with Vans in saying that the company is likely to succeed in its trademark case. Notably, the 2nd Circuit appeals court relied heavily on the Bad Spaniels (Jack Daniels v. VIP Products) ruling, which was the case MSCHF filed that connect-the-dots amicus brief in. You don't have to connect very many dots to realize that MSCHF's brief was highlighting how a bad ruling in that case might impact its own ability to comment on modern commerce as it regularly does.

Now, MSCHF is asking the Supreme Court to step in to hear the case. The filing might not be as funny as the connect-the-dots case, but it's much more interesting. When the Supreme Court ruled in the Bad Spaniels/Jack Daniels case, I saw a lot of lawyers claim the ruling was narrow and not that bad. But as I noted, from my read, it seemed to go way too far in suggesting that you could ignore the First Amendment so long as you said trademark."

MSCHF is now making the same argument with this filing and hoping that the Supreme Court will clean up the mess it made in that last case:

Is an expressive work whose primary purpose is to convey a message" nothing more than a trademark? The Second Circuit says yes. App. 1a-32a. As a result, it held that this Court's decision in Jack Daniel's Properties, Inc. v. VIP Prods. LLC, 599 U.S. 140 (2023) (VIP"), required it to ignore both the First Amendment and its own speech-protective test established in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Remarkably, it did so even though there was no evidence that the buyers of MSCHF's Wavy Baby were confused about whether they were buying sneakers from Vans.

That's the crux of the issue. Trademark is only supposed to come into play when there's a likelihood of confusion, and the First Amendment should always be considered more important overall. But the Jack Daniels ruling, and now other courts, have flipped the script.

Here, MSCHF is pointing out that while there might have been evidence of some level of confusion in the Bad Spaniels case, that's not the situation here. Indeed, MSCHF's efforts are much more obviously designed to be commentary on the Vans Old Skool shoes than the Bad Spaniels" chew toy was meant as commentary.

But source confusion was not shown in this case. Nor was there any possibility of such confusion: Wavy Baby is obviously distorted and not seriously able to be worn as a functional shoe, its name is nothing like the Old Skool, the box Wavy Baby came in is obviously different from the Vans box, and Wavy Baby came with a printed manifesto" explaining the commentary the artist intended. App. 4a-9a, 26a. No reasonable purchaser could possibly have thought Wavy Baby came from Vans, as the Second Circuit acknowledged.

As the filing makes clear, the rulings against MSCHF now show that courts are not interpreting it the way the Supreme Court (and many commentators) wanted to believe the Bad Spaniels ruling was narrow.

The Second Circuit's approach turns what this Court characterized as a narrow" decision in VIP, 599 U.S. at 163, into a flat-out rejection of any speech-protective rule in trademark cases, including those in which the defendant's commentary is obvious. It also ignores this Court's warning that the standard test for likelihood of confusion might not be appropriate in cases involving parody or other commentary. Id. at 153, 161. The Second Circuit's approach allows trademark owners to ban criticism by alleging dubious, non-standard forms of confusion.

And thus, MSCHF asks the Supreme Court to hear this case, in part to clarify the limits of last year's ruling. But the request goes further. The Second Circuit's decision mentioned that even if initial purchasers of the shoe wouldn't be confused, future ones might be. But that kind of prospective harm is troubling and raises serious First Amendment issues.

Second, this Court should grant certiorari to make clear that, even when no First Amendment threshold filter is available, the standard likelihood-of-confusion test is not sufficient to evaluate an expressive work like MSCHF's Wavy Baby. Unmodified application of the likelihood-of-confusion factors is especially problematic where, as here, the plaintiff's theory of infringement is not confusion as to source-the issue at the heart of trademark law-but confusion among non-purchasers about whether the trademark owner licensed commentary targeting its own products. See VIP, 599 U.S. 163-64 (Sotomayor, J., concurring) (describing the particular risk" that surveys will reflect the mistaken belief that all parodies require permission); App. 26a. This Court should clarify that theories of confusion that are far from the core of trademark law cannot apply where the defendant's use parodies or otherwise comments on the plaintiff's mark.

Given the Bad Spaniels ruling was so recent, I'm not sure if the Supreme Court will be so quick to realize that the problems of that decision are already worming their way into courts across the country, such that they're willing to hear this case. But that would be a shame.

The Justices were not clear enough last year and it's already causing issues. Here's a chance for the Court to fix things.