From Whiskey Bottles to Wavy Sneakers: Exploring the Intersection of Trademark Law and the First Amendment
In the intricate landscape of trademark law, where the boundaries of intellectual property rights intersect with artistic expression and freedom of speech, courts often find themselves at a crossroads. This article touches on the complex interplay between trademark law and the First Amendment, framed within the context of recent pivotal court decisions, Jack Daniel’s Props., Inc. v. VIP Prods. LLC and Vans v. MSCHF.
Tracing the Source: “Bad Spaniels” or “Jack Daniel’s?”
At the heart of Jack Daniel’s is the Supreme Court’s decision to not apply the Rogers test, focusing instead on the Lanham Act’s “likelihood of confusion” analysis.[1]. The rationale for this decision stems from the fact that VIP Products (“VIP”) used Jack Daniel’s marks to identify the source of its own product (VIP).[2]
VIP, known for its “Silly Squeakers” line of chewable dog toys, humorously replicates well‑known beverage labels.[3] VIP’s line includes Dos Perros (Dos Equis), Smella Arpaw (Stella Artois), and Doggie Walker (Johnnie Walker).[4] Among these, the “Bad Spaniels” dog toy, cleverly designed to parody the iconic Jack Daniel’s Old No. 7 Tennessee Sour Mash Tennessee whiskey bottle, was at issue here.[5]
Fig. 1: Comparison of Jack Daniel’s Tennessee Whiskey (left) and VIP’s “Bad Spaniels” dog toy (right).[6]
The Jack Daniel’s bottle features several registered trademarks: the “Jack Daniel’s” name, “Old No. 7,” the arched logo, the stylized white label with filigree (twirling white lines), and its unique square shape.[7] In Jack Daniel’s, the Court discussed two primary issues: the allegations of trademark infringement and the assertion of dilution by tarnishment. This article, however, shifts the focus from those issues to touch on how Jack Daniel’s decision serves the Lanham Act’s objectives of safeguarding consumers and preserving the uniqueness of trademarks, placing a special emphasis on the infringement aspect. In pending cases, like Vans, where the expressive nature of a product plays a central role, the court will likely focus on assessing the likelihood of consumer confusion about the product’s source.
Vans v. MSCHF: Trademark Protection and Artistic Freedom
Vans sued MSCHF over their “Wavy Baby” sneakers, alleging they infringe on the “Old Skool” design by imitating distinctive features like the side stripe and waffle sole, and using a similar box design.[8]
MSCHF defends the sneakers as art, meant to critique consumer culture,[9] claiming First Amendment protection. [10] A federal judge ordered MSCHF to halt distribution, citing similarities between “Wavy Baby” and Vans’ “Old Skool” sneakers. [11]
Fig. 2: Vans’ “Old Skool” shoes (on left) and MSCHF’s “Wavy Baby” shoes (on right). [12]
Fig. 3: Vans’ trademarks (word) and trade dress (on left) next to MSCHF’s advertising and packaging (on right).[13]
The case, now in the Second Circuit, tests whether MSCHF’s use of Vans’ trademarks for artistic expression could confuse consumers. Despite MSCHF’s arguments of artistic relevance, [14] the court may find against them, considering the potential for consumer confusion and viewing the sneakers more as a broad commentary than a direct parody.[15]
Fashioning the Future: Next Steps
In Vans, the Second Circuit faces the challenge of reconciling the progressive nature of companies like MSCHF with the need to uphold traditional trademark protections in a dynamic environment.[16]
I propose two approaches that could address these challenges in trademark law. First, a sliding scale approach would help adjust trademark protection based on how expressive a work is, giving more freedom to works that focus on delivering a message. By granting them greater First Amendment protection, a sliding scale could protect artistic uses of trademarks, like a fashion line with a social message. Conversely, less expressive, commercially driven uses could be seen as infringement. MSCHF could enhance this distinction by using unique labels and marketing to emphasize their products’ artistic intent. Second, creating an advisory panel to guide interpretations of “expressive works,” balancing protection with fostering creativity. This would help the Second Circuit navigate trademark law in a way that supports artistic innovation. Implementing these policy initiatives will enable the Second Circuit to develop a legal framework that protects against trademark infringement claims while encouraging artistic innovation.
Footnotes
