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Can Consumer Products Be 'Expressive Works'?
The Lanham Act protects trademarks and trade dress by creating civil liability for unauthorized uses of valid marks and trade dress that are likely to cause consumer confusion. The Act's protections do not apply, however, to speech that is protected by the First Amendment. In a case that may have significant implications for the ability of mark holders to enforce their marks against many types of products, the U.S. Court of Appeals for the Second Circuit is now considering whether consumer products such as sneakers can be considered "expressive works" to which First Amendment protections can apply. Vans v. MSCHF Prod. Studio, No. 22-CV-2156 (WFK) (RML), 2022 WL 1446681 (E.D.N.Y. April 29, 2022), argued, No. 22-1006 (2d Cir. Sept. 28, 2022). We report here on that case.
The 'Rogers' Test
The Lanham Act provides that any person, who, without consent "use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive … shall be liable in a civil action …." 15 U.S.C. §1114(1)(a).
Where an "expressive work" is accused of trademark infringement, however, the Rogers test — so named for Rogers v. Grimaldi, which involved a claim under the Lanham Act by dancer Ginger Rogers against a fictional movie about two dancers, titled "Ginger and Fred" — shields that work from liability "unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work." 875 F.2d 994, 999 (2d Cir. 1989). As the Rogers court explained, "[b]ecause overextension of Lanham Act restrictions in the area of titles might intrude on First Amendment values, we must construe the Act narrowly to avoid such a conflict." Id. at 998.
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