On December 5, 2023, the U.S. Court of Appeals for the Second Circuit issued the first appellate opinion to cite to the U.S. Supreme Court’s 2023 decision in Jack Daniel’s Props. v. VIP Prods. LLC, 599 U.S. 140 (2023) (“Jack Daniel’s”). The Second Circuit case was Vans, Inc. v. MSCHF Prod. Studio, Inc., No. 22-1006, 2023 U.S. App. LEXIS 32063 (2d Cir. Dec. 5, 2023) (“Vans”).

In April 2022, Vans filed suit against art collective MSCHF seeking a preliminary injunction and restraining order after MSCHF sold over 4,000 pairs of “Wavy Baby” shoes, shoes that were purported to parody Vans’ “Old Skool” shoes. A three-judge panel said the Supreme Court’s ruling in Jack Daniel’s had addressed the same issue – whether and when an alleged infringer who uses another’s trademark for parodic purposes is entitled to First Amendment protections, rather than subjected to the Lanham Act’s likelihood-of-confusion test. The panel concluded that, as VIP Product’s “Bad Spaniels” dog toy used Jack Daniel’s distinct bottle size and shape, “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.” Id. at *8. While VIP Products had included a disclaimer that it had no affiliation with the company it was spoofing, MSCHF admitted to “starting” with Vans’ marks because “no other shoe embodies the dichotomies – niche and masse taste, function and trendy, utilitarian and frivolous – as perfectly as the Old Skool.” Id. at *21. Because MSCHF used Vans’ marks as source identifiers, the Second Circuit held that the district court correctly applied the likelihood-of-confusion test and looked to evidence of consumers believing the Wavy Baby shoes were a collaboration between Vans and MSCHF when assessing the restraining order. After considering the factors set forth in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961), the panel affirmed the district court’s grant of a preliminary injunction and restraining order.