INTA Asks Second Circuit to Limit Rogers’ Definition of ‘Expressive Work’ to Prevent Application of Test on Ordinary Consumer Products

“The misapplication of the heightened Rogers test to ordinary products ignores the original premise of Rogers — i.e., that consumers perceive trademarks used in connection with expressive works differently than those used on ordinary products” – INTA


Image source: INTA

On June 24, the International Trademark Association (INTA) filed an amicus brief in Vans, Inc. v. MSCHF Product Studio, Inc., a case currently on appeal from the Eastern District of New York to the U.S. Court of Appeals for the Second Circuit. In the brief, INTA urges the Second Circuit to clarify the kinds of “expressive works” to which the Rogers test may be applied, and in such a way that the use of Vans trade dress on sneakers sold by MSCHF Product Studio would be actionable for infringement and not protected by the First Amendment simply because MSCHF claims the sneakers are works of art.

MSCHF’s Invocation of Rogers Test Makes Appeal a Good Vehicle for Defining ‘Expressive Work’

Since the Second Circuit first developed the balancing test between speech protected under the First Amendment and trademark rights under the Lanham Act in Rogers v. Grimaldi (1989), INTA notes that litigants have more recently been claiming that the Rogers test should apply to ordinary consumer items. In Rogers, the Second Circuit determined that the First Amendment protected the title, “Ginger and Fred,” a Federico Fellini movie about two Italian cabaret dancers whose dances mimicked those done by American film stars Ginger Rogers and Fred Astaire, against Rogers’ claims of trademark rights to her own name. Traditionally, courts have applied the Rogers test to expressive works like movie titles, song titles and video games.

In Vans v. MSCHF Product Studio, the Eastern District of New York court granted injunctive relief to Vans, finding that sneakers bearing Vans trade dress and marks and sold by MSCHF, which describes itself as an artists’ collective, fell into the ordinary consumer product class of sneakers. As such, the court reasoned that MSCHF’s claims that the sneakers were works of art and the use of Vans’ “Wavy Baby” trade dress was not First Amendment-protected speech under Rogers as MSCHF argued. The district court also nixed MSCHF’s parody defense, finding that the use of Vans’ trade dress and marks did not sufficiently articulate an element of satire or ridicule clearly indicating to the ordinary observer that MSCHF is not connected in any way with Vans.

While the district court did not reference the Rogers test in the ruling that was appealed by MSCHF Product Studio, INTA argues that MSCHF’s repeated invocations of Rogers and the district court’s determination that the sneakers were not “expressive work[s]” makes this case a great vehicle for clarifying the definition of “expressive work” under Rogers. Such a definition would provide greater certainty among litigants on the proper application of trademark law consistent with the original intent of Rogers to protect artistic expression under the First Amendment.

District Courts Typically Apply Rogers to Traditional Artistic and Expressive Works

Applications of Rogers in the Second Circuit and in almost every other circuit court of appeals have been limited to traditionally artistic or expressive works like book titles, book covers and even the contents of a play. But while the test has expanded such that Rogers can apply to artistic content and not just titles, only the U.S. Court of Appeals for the Ninth Circuit has expanded the Rogers test to consumer products.

“The misapplication of the heightened Rogers test to ordinary products ignores the original premise of Rogers — i.e., that consumers perceive trademarks used in connection with expressive works differently than those used on ordinary products… Furthermore, the misapplication of Rogers provides a roadmap to the sham invocation of ‘artistic’ or expressive purpose by defendants. In INTA’s view, this incorrect expansion of Rogers stems from the lack of an accepted definition of ‘expressive work’ as distinguished from an ‘ordinary commercial product.’”

The vast majority of district courts assessing trademark infringement claims against ordinary consumer goods, even when those goods involve parody, apply the traditional likelihood of confusion test and not the Rogers test, according to INTA. While district courts tend to note that free speech policies are involved when defendants claim that products are parodies, INTA cited McCarthy on Trademarks and Unfair Competition for the premise that parody is not a separate defense that triggers application of the Rogers test but is rather a way that courts have phrased “the traditional response that consumers are not likely to be confused.”

Courts assessing parody defenses in trademark infringement actions involving ordinary consumer goods tend not to find confusion when the parody is successful enough that consumers “get the joke.” INTA cited a series of cases decided within the Second Circuit, as well as a case from the Eastern District of Missouri in which the court entered a preliminary injunction against the sellers of a “Buttwiper” dog toy styled to look like a bottle of Budweiser beer. In addressing the defendant’s claim that the dog toy was a parody of Budweiser, the court applied the likelihood of confusion test and not the Rogers test, opining that ““the cry of ‘parody!’ does not magically fend off otherwise legitimate claims of trademark infringement or dilution. There are confusing parodies and non-confusing parodies.”

Key Concern is Gatekeeping Question of When Rogers Test Should Apply

Parodies and other forms of free expression receive significant protections under trademark law, according to INTA, but an expansion of Rogers as argued by MSCHF Product Studio would make it incredibly difficult if not impossible for trademark owners to enforce the rights to their own marks. This was a concern recognized by the District of Arizona after the Ninth Circuit in 2020 remanded VIP Products LLC v. Jack Daniel’s Properties, Inc. for an application of the Rogers test to dog toys styled to look like a bottle of Jack Daniel’s whiskey. On remand, the Arizona district court noted that it “appears nearly impossible for any trademark holder to prevail under the Rogers test” if the plaintiff is unable to prove that the defendant is “slapping another’s trademark on [its] own work and calling it [its] own.”

While the Arizona district court took exception with the vague nature of the “artistic relevance” and “explicitly misleading” prongs of Rogers, INTA’s brief argued that the main concern regarding the Rogers test is not the test itself but determining when that test should be applied.

“[W]hile the artistic relevance prong makes sense in the context of a movie, the application of that prong is inappropriate when the expression on a defendant’s product is conceptually separable from the underlying product itself. The expression in a book or movie—or even, potentially, a greeting card—cannot be separated from the type of work at issue. No blank novels or movies exist, and a completely blank greeting card is just note paper. The same cannot be said for coffee mugs, tote bags, dog toys, or sneakers. Those products retain their functionality even if all expression has been stripped from them.”

‘Expressive Work’ Should Be Found When Expression is Inextricable from Product

Although MSCHF Product Studios, an artists’ collective, is an unusual defendant for a trademark case, INTA notes that the district court’s determination that its sneakers were not works of art but ordinary consumer products were based upon the high sales volume (4,306 pairs made available) and MSCHF’s intent to correct shipments of sneakers that were the wrong size. The current appeal is a great opportunity for the Second Circuit to decide the key gatekeeping question as to when Rogers should apply, according to INTA, and invites the Second Circuit to issue a ruling clarifying that an “expressive work” is not merely a product that contains expressive elements. Otherwise, the standard which is being argued by MSCHF could be exploited by other non-artistic entities could “open[] virtually every category of product to the heightened Rogers standard.”

The proper definition of an “expressive work” is one where the expression is inextricable from the product, INTA argued.

“Put another way, if the entirety of the creator’s expression is removed from a book or movie, no product remains that is recognizable as being in the same genus as the original product—blank movies and blank songs do not exist. If all expression is removed from a greeting card, only paper remains, which is not the original product.”

By contrast, removing the trade dress infringing on Vans’ marks from MSCHF’s sneakers does not make the sneakers unrecognizable as the ordinary good to consumers. INTA points to the Rogers decision itself, which recognized that the movie “Ginger and Fred” would have been stripped of all expression by Ginger Rogers’ trademark claims such that the movie would have been completely nullified as an artistic work.


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