Bloomberg Law
Sept. 8, 2022, 8:22 AM

Are Shoes Art? ‘Wavy Baby’ Case Tests Trademark, Expression Line

Isaiah Poritz
Isaiah Poritz
Legal Reporter

A trademark dispute between Vans Inc. and a Brooklyn-based art studio is set to rekindle a debate about how courts should properly balance free speech and trademark law, highlighting the difficulty of distinguishing artistic expression from consumer products.

MSCHF Product Studio Inc. is attempting to reverse a lower court’s order preventing the sale of its “Wavy Baby” shoes made in collaboration with the rapper Tyga, which Vans claims infringe the trademarks of the “Old Skool” skate shoe. Oral argument is set for Sept. 28 in the US Court of Appeals for the Second Circuit.

The Wavy Baby includes similar colors and elements as the Old Skool, but is distorted by a wave that runs through the entirety of the shoe.

The case, which is moving through an expedited appeal, has received attention from major-brand owners, artists, and academics who say it could provide needed clarity in clashes between First Amendment rights and trademark protections over what some call “expressive merchandise.”

Some, including Nike Inc. and the American Apparel & Footwear Association, argue in friend-of-the-court briefs there is a clear line between a work of art and a consumer product like a shoe, which should receive full trademark scrutiny even if imbued with artistic expression.

But others contend the injunction against MSCHF was incorrectly granted because the district judge failed to use the so-called Rogers test, which generally shields artists from infringement claims when they use a trademark in their work.

Without a strong Rogers test, brand owners will “have the power to chill speech of speakers who might not have the resources to fully defend themselves and go through the several hundred thousand dollars, at a minimum, to litigate a trademark case,” said Rebecca Tushnet, an intellectual property law professor at Harvard Law School.

Sneakers Go to Court

This isn’t the first time MSCHF has found itself in court over its sale of controversial shoes. Last year, Nike sued the studio for the release of its “Satan Shoes,” customized Nike Air Max 97s made in collaboration with hip-hop artist Lil Nas X. MSCHF later settled the case after Nike won a preliminary injunction.

Just four days before MSCHF was set to release its Wavy Baby shoes in April, Vans filed suit in the US District Court for the Southern District of New York, claiming the Wavy Baby shoes “blatantly and unmistakably” copied its trademarks.

Vans didn’t respond to requests for comment for this story. MSCHF’s lead attorney, David H. Bernstein of Debevoise & Plimpton LLP, said the First Amendment protects artistic expressive speech “regardless of the medium.”

“Although Vans disparages the idea of sneakers as art, the sneakerhead and art communities disagree, as do the courts, which regularly recognized that apparel may be expressive,” he said in a statement to Bloomberg Law.

After the studio sold over 4,000 pairs of shoes, Judge William F. Kuntz ordered a stop to sales on April 29, finding that Vans was likely to prevail on its claim that consumers would be confused about the source of the shoes.

He was unconvinced by MSCHF’s argument that the shoes were a form of parody that critiques Vans’ “outsized role” in consumer culture. The shoes didn’t “sufficiently articulate an ‘element of satire, ridicule, joking or amusement,’” the judge wrote.

Ruling Questioned

But some disagreed with that analysis. Ron Coleman, a trademark attorney and partner at Dhillon Law Group Inc., said the judge’s conclusion that the Wavy Baby failed to send a satirical message is an acknowledgment that the shoes are a form of expression.

“Once it’s intended as an expression, we no longer make a decision on whether it’s protected based on whether it’s a successful parody or not,” Coleman said. “Rather, we make the decision based on whether it is entitled to protection as expression.”

If the shoe is a form of artistic expression, supporters of MSCHF argue, the court must apply the Rogers test, which provides greater leeway for using somebody else’s trademark.

Photo Illustration: Jonathan Hurtarte/Bloomberg Industry Group

Established in the Second Circuit’s 1989 Rogers v. Grimaldi case, the test allows artists to use an unauthorized trademark as long as it meets a minimal level of artistic expression and doesn’t explicitly confuse consumers.

The test, which has been adopted in courts around the country, generally favors defendants like MSCHF, which Tushnet said is important to prevent trademark owners from chilling non-commercial speech.

“It’s not surprising that it’s actually very hard to flunk the Rogers test,” she said. “So the question is, ‘Is that a bug or is that a feature?’ From my perspective, it’s a feature.”

Expression, Product Divide

The original Rogers case stemmed from a dispute involving actress Ginger Rogers, who accused the makers of the movie “Ginger and Fred” of misleading consumers by using her name in the title of the work without permission. But the court found the filmmaker’s use of her name was artistic and didn’t explicitly mislead.

Within the “continuum of different kinds of expressive activities” that use a trademark, the Rogers test clearly protects films, books, and video games, said University of San Diego School of Law Professor Lisa Ramsey.

But the question of when to apply Rogers can become more complicated when evaluating what Ramsey called “expressive merchandise.” Messages and meaning can be placed onto T-shirts, hats, and—critical for this case—shoes.

Vijay Toke, a partner at Rimon PC who filed an amicus brief on behalf of the International Trademark Association, argued for a new test to discern an artistically expressive work from an ordinary consumer product.

If the expressive elements of a product can be extracted while the underlying product remains intact, it should qualify as an ordinary consumer product, and Rogers shouldn’t apply, Toke argued.

T-shirts, coffee mugs, and shoes like the Wavy Baby can be covered with art and meaning, but if that meaning were removed, the underlying product would still exist. In those cases, a judge should evaluate whether consumers would likely confuse the products, Toke said.

But if the artistic expression were removed from a song or film, there would be no underlying product. The Rogers test would still apply in those cases.

Toke said this test for artistic expression would strike a better balance. When artists wander into the territory of commercial products, he said, courts must also consider the “competing value of making sure consumers aren’t confused.”

Rogers Debate

Nike, which battled Vans in a previous trademark dispute, filed a brief supporting the competing shoe brand, arguing that the Rogers test shouldn’t include products like shoes.

“It’s not like absent Rogers, there is no First Amendment protection for use of another’s mark, that’s not true at all,” Toke said. “There’s plenty of nominative fair use case law, there’s plenty to parody case law that will allow the courts some flexibility.”

Tushnet, who is part of an amicus brief on behalf of the digital artist Mason Rothschild, said the most important distinction is between commercial and non-commercial speech, not products. Courts have long recognized that non-commercial speech can be embodied in physical objects that are sold for profit, she said.

Tushnet also represents Rothschild in another pending trademark case involving artistic expression. The luxury retailer Hermès International accused Rothschild of infringing the trademarks of its Birkin handbag by selling “MetaBirkin” nonfungible tokens.

In cases where there is a mix of commercial and non-commercial speech, courts should err on the side of greater free speech and apply the Rogers test, Tushnet said.

“The larger First Amendment precedents say the communication function is the more important one,” she said. “So when commercial and non-commercial speech are inextricably intertwined, you evaluate with the non-commercial speech standards.”

Ramsey said the heated debate over when to apply the Rogers test can sometimes lose sight of a broader question about the purpose of trademark law in the first place.

“We need to decide—the government, Congress, the courts—well, what are the goals of trademark law?” she said. “Is it primarily trying to prevent misleading uses of trademarks? Or is it also to protect some sort of investment even when people are not confused?”

The case is Vans Inc. v. MSCHF Product Studio Inc., 2d Cir., No. 22-01006, oral argument 9/26/22.

To contact the reporter on this story: Isaiah Poritz in Washington at

To contact the editors responsible for this story: Jay-Anne B. Casuga at; Adam M. Taylor at

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