On Dec. 5, 2023, the U.S. Court of Appeals for the Second Circuit determined that no special First Amendment protections applied to a defendant's use of the Vans Inc. (Vans) Old Skool shoe trademark in selling its own shoes purportedly intended as a critique of sneaker culture. See Vans v. MSCHF Product Studio, 88 F.4th 125, 128 (2d Cir. 2023). The Second Circuit accordingly affirmed the district court's entry of a preliminary injunction against the defendant, finding that the plaintiff was likely to succeed on its trademark infringement claim under the Lanham Act.

In doing so, the Second Circuit issued its first opinion applying the U.S. Supreme Court's June 2023 decision in Jack Daniel's Properties v. VIP Products, 599 U.S. 140 (2023), in which the court held that the heightened First Amendment protection available to expressive works under Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), does not apply where the defendant in a Lanham Act trademark infringement action uses the mark to designate the source for the infringer's own goods. See 599 U.S. at 153.

The Lanham Act

The Lanham Act establishes a trademark registration system and creates a federal cause of action that enables trademark owners to enforce their rights against infringing uses. To prevail on a trademark infringement claim, the trademark owner must demonstrate that the alleged infringer's use is "likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. §§1051(a), 1114(1)(A), 1125(a)(1)(A).