The Wavy Baby Waves Goodbye: Second Circuit Upholds Injunction in Vans Case, Leaning on Jack Daniel's Precedent
The recent Second Circuit Court ruling in the case of Vans, Inc. v. MSCHF Product Studio, Inc. has made some interesting waves (pun intended) in the legal world, particularly in the realm of trademark and intellectual property. And the Wavy Baby waves goodbye.
The Wavy Baby Case: A Counterfeit Wave Threatens Vans' Shore
MSCHF, known for its provocative and often satirical products, released the "Wavy Baby" shoe in April 2022. This sneaker bore a striking resemblance to Vans' iconic Old Skool design, featuring a wavy distortion of the familiar Vans design and the red Vans logo incorporated into its tongue. Vans promptly sued MSCHF for trademark infringement and trade dress dilution.
Jack Daniel's Precedent Sets the Stage
The crucial legal battleground in this case lay in determining whether MSCHF's use of Vans' trademarks was expressive and thus protected by the First Amendment, or purely commercial and infringing. Earlier this month, we wrote about a similar situation (read more here), which was the Supreme Court's landmark ruling in Jack Daniels Properties, Inc. v. VIP Products LLC, where the Court held that the First Amendment does not shield a use of a trademark if its primary purpose is source identification (i.e., to mislead consumers into believing the infringing product is associated with the trademark owner).
Second Circuit Surfs the Jack Daniel's Wave
Applying the Jack Daniel's precedent, the Second Circuit rejected MSCHF's arguments of expressiveness. The court noted that the Wavy Baby's use of Vans' trademarks, particularly the prominent Vans logo, served mainly to identify the shoe as a Vans product, albeit a distorted one. Moreover, the court pointed out that MSCHF's marketing and pricing aimed squarely at the sneakerhead market, further bolstering the commercial purpose argument.
ThornCrest Weighs In: Protecting Brands from Imitation in the Digital Age
At ThornCrest, we recognize the significance of this ruling for brands operating in the online marketplace. This decision reaffirms the crucial principle that using familiar trademarks, even in an altered form, for purely commercial purposes is not protected by the First Amendment. This is particularly relevant in the digital age, where consumers encounter brands primarily through online interactions and product representations.
Impact and Takeaways: Riding the Trademark Protection Wave
The Second Circuit's ruling in the Vans case serves as a valuable precedent for trademark owners looking to protect their brands from unauthorized use. It clarifies that a mere claim of artistic expression cannot shield commercially motivated trademark infringement.
By staying vigilant and informed, brands can navigate the increasingly complex landscape of online commerce and protect their valuable intellectual property from dilution and infringement. Just like Vans’ successful effort towards their legal protection, other brands can leverage the Jack Daniel's and Vans precedents to ensure their own logos and designs remain symbols of authenticity and quality in the digital marketplace.
ThornCrest stands ready to help you navigate the legal currents and ensure your intellectual property reaches its full potential. Contact us today.
Read more about the Vans, Inc. vs. MSCHF case here.
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