Allysia Britton

Ohio State University recently made Intellectual Property headlines by managing to procure a trademark registration for the word THE. The registration procured by Ohio State covers t-shirts, caps, and hats. Although the registration covers limited goods and services, that hasn’t stopped people from being outraged by the idea that a person or entity can obtain exclusive rights to use of the most commonly used word in the English language. But is it really that big of a deal? In my humble opinion, it is not.

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In May, skater shoe company, Vans, persuaded a district court judge in NY to halt the pre-sale of a pair of shoes called Wavy Baby, the result of a collaboration of rapper Tyga and MSCHF, a Brooklyn-based design studio that was previously sued by Nike over its Satan Shoe collaboration with NasX. The case is Vans, Inc. v. MSCHF Product Studio, Inc. In Vans’ motion for a TRO, the court determined that Vans would likely prevail on its claims that consumers would be confused between the Wavy Baby sneakers and Vans’ Old Skool sneakers because of their “striking visual similarities” and packaging.

In granting Vans’ request, the court found a likelihood of consumer confusion by analyzing the multifactor Polaroid test (similar to the Sleekcraft test in the 9th Circuit). The Polariod factors are: (1) the strength of the plaintiff’s mark; (2) the degree of similarity between the two marks; (3) the proximity of the products; (4) the likelihood that the owner will bridge the gap; (5) evidence of actual confusion; (6) defendant’s good faith in adopting the mark; (7) the quality of defendant’s product; and (8) the sophistication of the consumers.

In its opposition, MSCHF argued that its product is an expressive work, a parody, entitled to First Amendment protection. In assessing this argument, the court said that “whatever artistic merits of the Wavy Baby shoes, the shoes do not meet the requirements for a successful parody.” The court did not consider the Rogers test.

The Rogers test was adopted by the 2nd Circuit in Rogers v Grimaldi. The Rogers court held that where the defendant’s product is artistic or expressive, the Lanham Act must be interpreted “narrowly in order to avoid suppressing protected speech under the First Amendment.” The two parts of the Rogers test are artistic relevancy and whether the use of the mark is explicitly misleading. As for the first factor, the bar for artistic relevancy is extremely low. As for the second factor, whether the use is explicitly misleading, in most instances an “explicitly misleading use” requires an overt claim or an explicit reference to an association with the third-party mark.

So did the district court make a mistake in not considering the issue in light of Rogers? MSCHF thinks so, and has appealed to the 2nd Circuit. Parties that have filed various amicus briefs in favor of having the 2nd Circuit review the decision include a group of intellectual property law professors, the International Trademark Association and others, all asking the 2nd Circuit to take this opportunity to clarify what qualifies as a protected “expressive” work.

The law professors believe the district court judge erred in dismissing MSCHIF’s First Amendment argument. In their brief they argued that “Shoe designers mock, comment on, and pay homage to each other,” the academics argued. “Those modifications are expressive speech the law should protect.” The amicus brief lays out many examples of custom shoe designs that are treated akin to works of art and contends that sneakers are an important and fertile ground for art, expression, commentary, and parody.

In order for the Rogers test to apply, the work must be an “expressive work” The courts have seen the Rogers test applied to movies, plays, books, songs, video games, paintings, prints, calendars, music, pictures, drawings, engravings, sculptures, greeting cards and even dog toys, despite the fact that some of these items are sold in the commercial marketplace. According to the law professors, the medium of the work does not matter so much as long as the work in question “communicates ideas – and even social messages” – in a manner similar to other expressive media.

The INTA, however, would like the 2nd Circuit to confirm that the Rogers test applies only to traditionally expressive works, not ordinary consumer products like the sneakers at issue. INTA argues that if the allegedly infringing work is not a traditional work of authorship but a utilitarian product (like a dog toy or a sneaker), then the “explicitly misleading” factor under Rogers too strongly shields defendants except in the most blatant of infringements.

Regardless of where one comes out on whether or not the sneakers at issue are expressive works, at a minimum the district court should have engaged in this analysis. The question remains whether the 2nd Circuit will take this opportunity to establish some guidelines on what constitutes an expressive work.