Vans Wins Appeal to Ban MSCHF From Selling Its ‘Wavy Baby’ Sneakers
Updated Dec. 6, 2023
On Tuesday, the U.S. Court of Appeals for the Second Circuit upheld a previous victory for Vans in its bid to block parody art collective MSCHF from selling its “Wavy Baby” shoes.
The appeals court reaffirmed the previous decision that MSCHF’s parody of Vans’ “Old Skool” shoes are likely to cause confusion amongst consumers and that the Brooklyn collective is not entitled to First Amendment protections that can apply to works of art in trademark cases.
The three-judge panel added that the First Amendment did not apply because MSCHF was using Vans’ trademarks to “brand its own products,” citing a recent U.S. Supreme Court decision for Jack Daniel’s against dog toys that parodied its whiskey bottles.
“We conclude that the Wavy Baby does create a likelihood of consumer confusion, and the district court correctly concluded that Vans is likely to prevail on the merits,” the panel of judges on the Second Circuit wrote. “It did not exceed its discretion by enjoining MSCHF’s marketing and sale of the Wavy Baby.”
MSCHF released its “Wavy Baby” sneakers in collaboration with rapper Tyga in April 2022. The release of 4,306 pairs sold out in an hour. The shoes went for $220 a pair.
Shortly after going on sale, Vans filed a motion for a temporary restraining order and preliminary injunction against MSCHF. After oral arguments that same month, the district court granted the temporary restraining order and injunction, concluding primarily that Vans had shown a significant danger of consumer confusion.
Updated May 2, 2022:
In response to being hit with a lawsuit from Vans, MSCHF is claiming that its Wavy Baby sneakers represent a form of “commentary” and are therefore protected by the First Amendment.
Vans in April accused the Brooklyn-based art collective of copyright infringement by selling its limited edition Wavy Baby sneakers that look like a distorted version of the Vans Old-Skool silhouette. In May, Vans accused MSCHF of violating a temporary restraining order that restricts the Brooklyn-based art collective from selling the shoes in question.
In its response, MSCHF admitted that the Vans Old Skool silhouette is iconic and “therefore a ripe subject for MSCHF’s commentary through its artwork.”
A federal judge in late April ordered MSCHF to halt marketing, selling, promotion, and fulfillment for its MSCHF x Tyga “Wavy Baby” sneakers in the midst of a lawsuit regarding the shoes. According to the motion, sneaker orders that had already been placed had to be reversed or cancelled. For orders that could be cancelled, MSCHF had to escrow these funds in the event that Vans prevails in the lawsuit and MSCHF must return this money to consumers.
The preliminary injunction was meant to help prevent Vans from suffering irreparable harm due to consumer confusion before a verdict on the lawsuit was issued.
According to the Vans’ May filing, MSCHF ” continued to fulfill orders for, and ship, its infringing Wavy Baby shoes in violation of the Injunction.” Vans asked for an order of contempt and additional sanctions to make sure MSCHF follows the orders of the court.
What We Reported in April 2022:
The Brooklyn-based art collective has been hit with another lawsuit, this time from Vans. According to a lawsuit filed in the Eastern District of New York on Thursday, Vans argues that MSCHF “blatantly and unmistakably copied Vans’ trademarks and trade dress” as it relates to the marketing, advertising and product packaging for its Wavy Baby shoe.
MSCHF started marketing the shoe in question, the MSCHF x Tyga “Wavy Baby,” in March. The sneaker is set to launch April 18 and appears to be based on the classic Vans Old-Skool silhouette, though altered to feature a wave-like aesthetic throughout the shoe. The shoe features a black-based canvas upper coupled with white shoelaces and a wavy white striped overlay panel on the sides.
Vans also alleges that the name “Wavy Baby”is a play on Vans’ WAYVEE mark that the company has used since August 2021.
“The Old Skool is one of our iconic styles worn by Vans fans of all ages around the world and we remain committed to safeguarding our heritage and intellectual property,” Vans said in a statement. “While we’re unable to comment on pending litigation and are disappointed that it has reached this point, we are taking the necessary legal action.”
Vans sent a cease and desist to MSCHF prior to filing the suit. According to a statement from MSCHF, Vans also asked MSCHF to settle in return for for half of the profits generated from the sneaker as well as four pairs for themselves ahead of the launch.
“They also indicated they were willing to meet about future collaborations LMAO,” MSCHF wrote in a statement. “Turns out that they were shaking our hand at the same time they were stabbing us in the back.”
MSCHF is known for creating viral, irreverent products that stir conversation — and often controversy — online. These statement-making items have taken the form of footwear in the past. For example, MSCHF in March released controversial “Satan Shoes” in connection with Lil Nas X. The shoes were essentially the classic Air Max 97s reimagined with black uppers and red detailing. Only 666 pairs of the shoe, which also contained drops of human blood and sold for $1,018, were meant to be released.
In March, Nike filed a trademark infringement and dilution complaint against MSCHF for the sneakers.In a statement at the time, Nike said it does not have a relationship with Lil Nas X or MSCHF. In April, Nike and MSCHF reached a settlement, which included a voluntary recall of the shoes that sold.This recall also included removing the company’s previously launched “Jesus Shoes,” which were also based on a Nike Air Max 97 and included actual holy water in them from the River Jordan.
