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As digital technology and the online environment transform the distribution and use of intellectual property, our Copyright & Trademark group is on the front lines in protecting and enforcing our clients’ most important creative assets. Our trial-tested team represents a wide range of clients, from entrepreneurs to major corporations, from playwrights to media giants, and from individual songwriters to the country’s largest performing rights organizations.

Intellectual Property Litigation: The ‘Wavy Baby’ Case and Consideration of Expressive Works in the Second Circuit

January 10, 2024

Litigation partners Catherine Nyarady and Crystal Parker’s latest intellectual property litigation column, “The ‘Wavy Baby’ Case and Consideration of Expressive Works in the Second Circuit,” appeared in the January 10 issue of the New York Law Journal. The authors discuss a recent decision by the U.S. Court of Appeals for the Second Circuit determining 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 Wavy Baby shoes purportedly intended as a parodic cri­tique of sneaker culture. The Second Circuit 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. To prevail on a trademark infringement claim under the Lanham Act, the trademark owner must dem­onstrate that the alleged infringer’s use is “likely to cause confusion, or to cause mistake, or to deceive.” The Second Circuit found that the Wavy Baby shoe used the Vans Old Skool sneaker as a source identifier, “evoking” elements of the Old Skool trademarks and trade dress, and further that the parodic aspect failed and would likely lead to consumer confusion.

In making its determination, the Second Circuit applied the Supreme Court’s June 2023 decision in Jack Daniel’s Properties v. VIP Products, which found that heightened First Amendment protection is available to expressive works. The Second Circuit determined that Jack Daniel’s 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 good—as in Wavy Baby.

Litigation associate Scott Caravello assisted in the preparation of this column.

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