Vans Keeps Court Order Blocking MSCHF ‘Wavy Baby’ Shoes

Vans Inc. convinced the Second Circuit to maintain a trademark injunction against MSCHF Product Studio Inc. over the sale of “Wavy Baby” shoes, which look similar to Vans’ “Old Skool” shoes but are distorted by a wave.

A three-judge panel for the New York-based federal appeals court concluded Tuesday that “no special First Amendment protections apply to insulate MSCHF against Vans’ trademark infringement claim.”

The dispute hinged on the Rogers test, a legal doctrine that attempts to balance trademark rights with free speech.

MSCHF, a Brooklyn-based art collective, is well known for releasing high-profile, satirical art “drops,” including modified Nike shoes inspired by Lil Nas X and sandals made out of Birkin handbags.

Photo Illustration: Jonathan Hurtarte/Bloomberg Industry Group

The US Court of Appeals for the Second Circuit paused the case in December 2022 to await guidance from US Supreme Court, which took up a similar trademark dispute that probed the boundaries of the Rogers test. The high court ruled in Jack Daniel’s Properties Inc. v. VIP Products LLC that the test doesn’t apply if the alleged infringer uses the original trademark to identify itself as the source of the product.

The test, established by the Second Circuit in the 1989 decision in Rogers v. Grimaldi, allows the unauthorized use of a trademark as long as it meets a minimal level of artistic expression and doesn’t explicitly mislead consumers. The Tuesday opinion said the test doesn’t apply to MSCHF.

“Notwithstanding the Wavy Baby’s expressive content, MSCHF used Vans’ trademarks in a source-identifying manner,” the opinion said.

Vans sued MSCHF for trademark infringement in March 2022, four days before it was set to release the Wavy Baby shoes made in collaboration with the rapper Tyga. Vans claimed the Wavy Baby sneaker copied Vans’ “now iconic” side stripe found on the Old Skool skate shoe first released in the 1970s.

MSCHF sold more than 4,000 pairs before US District Judge William F. Kuntz blocked further sales, ruling that Vans would likely succeed in showing that consumers would incorrectly believe that the two shoe brands are connected.

MSCHF maintained that its sneakers are a form of art that critiques Vans’ “outsized role” in consumer culture and are therefore protected by the First Amendment. But Kuntz found that the shoes didn’t “sufficiently articulate” an element of satire or parody. MSCHF obtained an expedited appeal before the Second Circuit.

Circuit Judges Dennis Jacobs, Denny Chin, and Beth Robinson joined the unsigned opinion.

McGuireWoods LLP represents Vans. Debevoise & Plimpton LLP and Swanson, Martin & Bell LLP represent MSCHF.

The case is Vans Inc. v. MSCHF Product Studio Inc., 2d Cir., No. 22-01006, opinion 12/5/23.