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24 February 2023TrademarksMuireann Bolger

'Satan shoes' creator wades into Jack Daniel’s toy quarrel

Art collective has history of legal battles with powerful brands | Prominent Harvard law academic also opposes Jack Daniels’ position | International Trademark Association | Nike | Vans.

New York art collective MSCHF has swung its weight behind VIP Products in its showdown with Jack Daniel’s over a dog toy, filing an amicus brief ahead of the much-anticipated hearings at the US Supreme Court in March.

The case between the whiskey maker and the toy company focuses on the tensions between the freedom of expression guaranteed by the First Amendment under the US Constitution and the protection of IP rights.

Parody protected by Constitution

In its brief, filed yesterday, February 23, MSCHF insisted that “parody, satire and jokes, no matter how outrageous, are protected by the First Amendment. VIP’s Silly Squeakers are a series of dog puns, each one heightened by placement on a dog toy. The speech is the dog toy.”

The art collective is no stranger to such arguments after gaining notoriety in IP circles in 2021 when it released its so-called ‘Satan Shoes’—a pair of customised Nike trainers that featured prominent satanic imagery.

The trainers were made in collaboration with rapper Lil Nas X alongside the release of his music video MONTERO (Call Me By Your Name).

Based on the Nike Air Max 97s and customised to feature red ink and human blood in the midsole, the ‘Satan Shoes’ carried red embroidered satanic themed detailing and a bronze pentagram feature to the laces.

After MSCHF was sued by the sports multinational, the case attracted heated debate over the extent to which the collective could claim that it had the artistic licence to create such works.

But in April 2021, the arts body settled with Nike, launching a voluntary recall of the shoes—as well as their previous customised Nike ‘Jesus Shoes’.

MSCHF also drew controversy last year when it developed its ‘Wavy Baby’ shoes alongside American rapper Tyga, prompting a lawsuit from sneaker brand Vans.

In that case, a New York federal court ruled that Vans successfully demonstrated actual consumer confusion, noting that multiple sources had commented on the similarity between the two shoes and “misunderstood” the ‘Wavy Baby’ shoes as a collaboration between the two companies.

In its brief filed yesterday, the art collective drew attention to these legal battles, insisting that “the free exchange of ideas is the crux of the First Amendment”.

Trademark owners’ ‘lack of humour’

Rebecca Tushnet, professor of Law at Harvard University, also filed a brief yesterday, February 23, that similarly defended VIP’s right to freedom of expression when it comes to the creation of parody-based works.

Tushnet argued that: “creators, parodists or otherwise, routinely make non-defamatory portrayals of people, objects, beloved (or disliked) institutions, and other things they see in the world or find in its history.

“Thus, the First Amendment protects not just speakers’ choices of topics, but also their choices of how to speak about those topics.”

Trademark owners, she added, regularly use trademark law to suppress speech, noting that: “Powerful entities rarely have a sense of humour about themselves, and regularly threaten speakers who don’t take them as seriously as they take themselves.”

“A strong First Amendment rule is therefore required to protect speech from overreaching trademark claims,” she wrote.

Calls for a new legal test

However, trademark membership organisations have rallied against the views posited by MCHSF and Tushnet: most notably the International Trademark Association ( INTA).

In an amicus brief filed in January, INTA proposed that the US Supreme Court adopt a more rigorous test for balancing the rights of freedom of expression with trademark rights, and argued that VIP Products’ dog toy should not qualify for heightened First Amendment protection.

INTA concluded that if the court favours VIP, then this could have severe long-term implications for trademark owners.

“The overapplication of heightened First Amendment protection to ordinary commercial products will, over time, lead to innumerable purported commercial parodies that will confuse consumers and erode the capacity of trademarks to effectively signal source and quality,” it wrote.

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