Annie Seminara
If you’ve had your finger on the sneakerhead culture pulse, you may have heard of MSCHF’s Satan Shoes and Jesus Shoes.[1] If you’re more of a visual arts person, MSCHF’s Medical Bill Art[2] or the Museum of Forgeries[3] might have caught your attention. Maybe you have no idea what I’m talking about. Well, if you’re a corporate lawyer, the art collective behind these genre-defying creations is hoping to change that. In January 2022, MSCHF sought to gain the legal world’s attention with a new project: the Cease & Desist Grand Prix.[4] In doing so, it gave one company an opportunity to demonstrate the importance of tailoring a cease and desist letter for its audience.
Known for its buzzworthy, biweekly releases (or “drops” as MSCHF calls such events), MSCHF (pronounced “mischief”) launched the Cease & Desist Grand Prix as drop #68 on January 24, 2022.[5]
MSCHF has fostered an increasingly entertaining relationship to copyright and trademark law and is no stranger to cease and desist letters.[6] According to its website, “A ‘C&D’(or ‘Cease and Desist’) is a written notice demanding that the recipient immediately stop an illegal or allegedly legal activity… MSCHF gets a lot of these letters, so we decided to make a game out of it.”[7]
The game involved t-shirts prominently displaying one of eight companies’ logos.[8] Subway, Disney, Microsoft, Tesla, Walmart, Starbucks, Amazon, and Coca-Cola were all represented, their logos looming large on the shirts’ fronts and backs.[9] MSCHF placed these long-sleeve, car racing-style team shirts for sale on its website, which links to its app.[10] Participants bet on which company they thought was most likely to send MSCHF the first C&D by purchasing a shirt bearing that company’s logo.[11] The collective even provided a link to each company’s official Twitter page with the instruction to “provoke [the company] to C&D us.”[12] By way of an incentive, MSCHF promised “an exclusive MSCHF Grand Prix champion’s hat” to those who correctly guessed which company would send a C&D first by purchasing a shirt featuring that company’s logo.[13] MSCHF reassured buyers that they “are in no way complicit or guilty or in danger of legal ramifications by buying [the shirts]” and that MSCHF is not affiliated with any of the eight companies: “that’s the whole point. All of this merch is totally unauthorized—we’re trying to get C&D’d here!!”[14]
In its grand prix manifesto, MSCHF lambasted the advantage that highly-resourced mega-corporations have in legal battles with smaller creators, “Rest assured, dearest corporate lawyers, we will comply with any C&Ds we get. Independent creators can never fight real legal action with a corporation: they can’t afford it.”[15] While MSCHF may be approaching the current IP enforcement landscape from a biased position, this argument is not pure spleen. Congress recently passed the Copyright Alternative in Small-Claims Enforcement Act of 2020 (“CASE Act”) to address the often prohibitive costs of litigating copyright disputes for small copyright owners.[16] In the trademark context, smaller brands often find themselves tangled up in trademark disputes with larger companies to the same effect. The Wall Street Journal noted that “[M]any small businesses find it's not worth picking a battle with a deep-pocketed corporation . . . Most owners who find themselves on the receiving end of a cease-and-desist letter often settle the matter quickly to avoid the cost of a prolonged lawsuit . . . ”[17] MSCHF clearly has no intention to defend its illegal merch in court, but its infringement-as-commentary strategy does highlight a valid equity issue.
As unwilling participants in this illicit race, Subway, Disney, Microsoft, Tesla, Walmart, Starbucks, Amazon, and Coca-Cola were pitted against each other in a bid to be the first to defend their intellectual property.[18] With their logos shamelessly infringed and their attorneys thoroughly mocked, it seemed obvious that all eight companies would finish this race losers, in some sense of the word. The C&D Grand Prix, however, did not end in strife and bitterness.
Intellectual property owners, no matter their size, have a right to protect their IP from infringement. In the trademark context, not doing so could lead to trademark genericide—a worst case scenario for many trademark owners.[19] However, overly zealous trademark policing and hostile C&D language can result in a company facing bad publicity, a loss of consumer goodwill, and even a “trademark bully” label.[20]
After the Cease & Desist Grand Prix caught its attention, Subway responded by tweeting a photo of a t-shirt like the ones MSCHF was selling, except the shirt prominently displayed MSCHF’s logo instead of Subway’s, and the shirt featured Subway’s green-and-yellow color scheme.[21] Subway captioned the January 24 Tweet “Two can play at this game. Who’s interested in this bad boy? Hurry before @mschf shuts us down.”[22] In a subsequent Tweet on January 26, Subway posted an image of a C&D with the caption “You asked and you shall receive. Give the people hats @mschf.” The C&D read:
Dear MSCHF,
It is with great pleasure and a distinct honor to send this cease and desist to MSCHF INC. We didn’t want to send this, we really didn’t, but with free hats on the line, how could we not.
With that being said . . . stop using our logo or we’ll sue you, lol. Now give the people free hats!
Strongly Worded Lawyer Sign-Off,
SUBWAY[23]
This was a winning strategy. Subway was the first to send MSCHF a C&D, and in doing so they won the grand prix, ending the race and thus MSCHF’s infringing logo use.[24] Subway’s C&D language cleverly mirrors MSCHF’s casual, farcical tone. Its feigned reluctance and emphasis on the hat reward positioned Subway as a people’s hero, taking one for the team by writing a C&D when it “really didn’t’” want to. In other words, Subway won by playing along. The end result was that MSCHF won a big company’s attention, Subway regained control of its IP, those who had purchased the Subway shirt won hats, and we all won a good laugh.
MSCHF might have succeeded in commanding the legal world’s attention through its grand prix, but its message about disparities in IP litigation access was perhaps left in the dust behind a different message: brands confronted with IP infringement can boost their reputation in the marketplace by striking the right balance between enforcing their IP rights and suiting their C&Ds to the infringing activity.
[1]Bryan Pietsch, Nike Sues Over Unauthorized ‘Satan Shoes’, New York Times (June 18, 2021), https://www.nytimes.com/2021/03/28/style/nike-satan-shoes-lil-Nas-x.html.
[2]Taylor Dafor, An Art Collective Turned Three Americans’ Medical Bills Into Paintings and Then Sold Them to Erase $73,000 Worth of Debt, Artnet (Sept. 28, 2020) https://news.artnet.com/art-world/mschf-medical-debt-paintings-1911250.
[3]Nora McGreevy, For Sale: One Real Warhol Print, Hidden Among 999 Fakes, Smithsonian Magazine (Nov. 2, 2021), https://www.smithsonianmag.com/smart-news/art-pranksters-sell-one-real-warhol-print-amid-999-fake-ones-180978975/.
[4]MSCHF, Cease & Desist Grand Prix, https://cdgrandprix.com/?utm_source=homepage&utm_medium=cdgrandprix&utm_campaign=droplist(last visited Mar. 3, 2022) (“Hey lawyers, fire up your keyboards! First Brand to C&D Us Wins!”).
[5]Alexandra Pauly, MSCHF’s New Drop Is Illegal (On Purpose This Time), High Snobiety (Jan. 25, 2022) https://www.highsnobiety.com/p/mschf-cease-desist-grand-prix-lawsuit/.
[6]See, e.g., TFL, Nike, MSCHF Settle 2-Week-Old Lawsuit Over Allegedly Infringing “Satan Shoes”, The Fashion Law (Apr. 8, 2021), https://www.thefashionlaw.com/nike-mschf-settle-2-week-old-lawsuit-over-allegedly-infringing-satan-shoes/; Taylor Dafoe, This Art Collective Is Taking Preorders on a ‘Bootleg’ Mickey Mouse Collectible Ahead of Disney’s Copyright Expiration on the Character, Artnet (Aug. 23, 2021), https://news.artnet.com/art-world/art-collective-selling-early-access-custom-mickey-mouse-collectible-ahead-characters-copyright-expiration-mocking-disney-along-way-2001756.
[7]MSCHF, FAQ, https://cdgrandprix.com/?utm_source=homepage&utm_medium=cdgrandprix&utm_campaign=droplist(last visited Mar. 3, 2022).
[8]Id.
[9]Id.
[10]MSCHF, Cease & Desist Grand Prix, supra note 4.
[11]Id.
[12]Id.
[13]MSCHF, FAQ, supra note 7.
[14]Id.
[15]MSCHF, Cease & Desist Grand Prix, supra note 4 (scroll to the right).
[16]Copyright Small Claims and the Copyright Claims Board, U.S. Copyright Office, https://www.copyright.gov/about/small-claims/ (last visited Mar. 3, 2022). Congress passed the Case ACT in recognition that “Federal litigation . . . can require a lot of time and money. When disputes about small copyright claims arise, the cost and effort of a federal lawsuit can outweigh possible relief and make it very difficult for people to get a legal resolution.” However, the Copyright Small Claims procedures are voluntary, and any part can opt out. The Board’s voluntary nature will likely undercut some of the benefits that the new legislation seeks to provide.
[17]Emily Maltby, Name Choices Spark Lawsuits, Wall Street Journal (June 24, 2010, 12:01 AM), https://www.wsj.com/articles/SB10001424052748704895204575321230041321508.
[18]MSCHF, Cease & Desist Grand Prix, supra note 4.
[19]Mark A. Lemley, Fame, Parody, and Policing in Trademark Law, 2019 Mich. St. L. Rev. 1 (2019) (“If [trademark owners] don't aggressively enforce their marks, they worry that the value of their marks will be weakened by multiple, conflicting uses. In extreme cases, they worry that they will lose their marks altogether by having courts deem them generic or abandoned or else lose the right to enforce them through laches”).
[20]Paul Martello, #trademarkbully ... Who Me? A Practical Guide for Attorneys on How to Avoid the Label, 20 U.C. Davis Bus. L.J. 165 (2020).
[21]@SUBWAY, Twitter (Jan. 24, 2022, 8:15 PM), https://twitter.com/SUBWAY/status/1485783404385902595?cxt=HHwWhoC9-cuIyJ4pAAAA.
[22]Id.
[23]@SUBWAY, Twitter (Jan. 26, 2022, 6:07 PM), https://twitter.com/SUBWAY/status/1486475878062301185?cxt=HHwWgoC58e77gqEpAAAA.
[24]MSCHF, Cease & Desist Grand Prix, supra note 4.