Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

The Intellectual Property StrategistFeaturesIntellectual PropertyLitigationTrademarks

Can Consumer Products Be 'Expressive Works'?

By Eric Alan Stone and Catherine Nyarady
December 01, 2022

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.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
How Secure Is the AI System Your Law Firm Is Using? Image

In a profession where confidentiality is paramount, failing to address AI security concerns could have disastrous consequences. It is vital that law firms and those in related industries ask the right questions about AI security to protect their clients and their reputation.

COVID-19 and Lease Negotiations: Early Termination Provisions Image

During the COVID-19 pandemic, some tenants were able to negotiate termination agreements with their landlords. But even though a landlord may agree to terminate a lease to regain control of a defaulting tenant's space without costly and lengthy litigation, typically a defaulting tenant that otherwise has no contractual right to terminate its lease will be in a much weaker bargaining position with respect to the conditions for termination.

Pleading Importation: ITC Decisions Highlight Need for Adequate Evidentiary Support Image

The International Trade Commission is empowered to block the importation into the United States of products that infringe U.S. intellectual property rights, In the past, the ITC generally instituted investigations without questioning the importation allegations in the complaint, however in several recent cases, the ITC declined to institute an investigation as to certain proposed respondents due to inadequate pleading of importation.

The Power of Your Inner Circle: Turning Friends and Social Contacts Into Business Allies Image

Practical strategies to explore doing business with friends and social contacts in a way that respects relationships and maximizes opportunities.

Authentic Communications Today Increase Success for Value-Driven Clients Image

As the relationship between in-house and outside counsel continues to evolve, lawyers must continue to foster a client-first mindset, offer business-focused solutions, and embrace technology that helps deliver work faster and more efficiently.