Image: MSCHF

Vans has asked a New York federal court to find that MSCHF is disregarding a temporary restraining order and preliminary injunction that prohibit it from continuing to offer up and/or fulfill existing orders for the allegedly infringing Wavy Baby sneakers. In a letter to Judge William Kuntz of the U.S District Court for the Eastern District of New York dated May 12, counsel for Vans alleges that despite the court’s April 29 Decision & Order, granting Vans’ motion for a temporary restraining order and preliminary injunction, MSCHF has “continued to fulfill orders for, and ship, its infringing Wavy Baby shoes in violation of the injunction.” 

“Despite the unambiguous language of the injunction,” Vans alleges that it has learned from “multiple sources that MSCHF has continued to ship the infringing shoes to customers even after the injunction issued and that it has also refused to reverse and/or cancel incomplete orders for the infringing shoes.” Specifically, Vans asserts that it maintains evidence that two MSCHF customers who ordered the Wavy Baby sneakers in April “received notifications from MSCHF’s shipping carrier indicating they had received [their] order information.” Beyond that, Vans claims that it has evidence that one of its own employees who ordered the allegedly infringing shoes on April 18 “received a shipment notification that her order had been picked up by the carrier from a warehouse facility in China operated by MSCHF’s manufacturer/distributor” on May 11, almost two weeks after the injunction was issued. 

“Each of the [these] violations, alone,” serves to violate the court’s order, which “clearly and unambiguously” prohibits MSCHF from “fulfill[ing] any orders for the infringing shoes” and requires it to “‘reverse and/or cancel’ any unfulfilled orders,” counsel for Vans contends. As such, they “merit a finding that MSCHF is in contempt of this court’s order,” per Vans, and also “demonstrate that MSCHF has intentionally and repeatedly flouted the authority of the court.” Beyond that, Vans asserts that it is “highly likely that more similar incidents will come to light through the briefing and hearing of Vans’ contempt motion.” 

With the foregoing in mind, Vans argues that a finding of contempt and appropriate sanctions are “necessary to ensure MSCHF’s compliance with its obligations, and to protect Vans’ intellectual property rights from further irreparable harm.” Such a finding is proper here, counsel for the Southern California-based footwear brand argues, as “(1) the [court’s] order that was violated by [MSCHF] is ‘clear and unambiguous;’ (2) the proof of noncompliance is ‘clear and convincing;’ and (3) [MSCHF] has not ‘diligently attempted to comply [with the order] in a reasonable manner.’”

In addition to an order of contempt, Vans contends that the imposition of sanctions is “necessary to immediately ensure that MSCHF conforms its conduct to the court’s unambiguous instructions,” including “a coercive fine to ensure MSCHF’s future compliance with the court’s order.” On this point, Vans cites the award of “a fine of $25,000 plus a fine of $10,000 for each day the contemnor failed to comply with the court’s order” from U.S District Court for the Southern District of New York in Cherie Amie, Inc. v. Windstar Apparel, Corp. It further contends that “an award of attorneys’ fees for the cost to Vans of bringing MSCHF’s contempt to the Court’s attention should also be granted, as MSCHF had ample notice of the Injunction and nonetheless willfully disregarded its obligations.” 

Judge Kuntz responded to Vans’ letter on May 12 with an order that MSCHF file a response to Vans’ contempt and sanctions request “on or before May 20.”

Vans made headlines last month when it filed suit against Brooklyn-based “art collective” MSCHF, alleging that “in spite of, or perhaps due to, [its] knowledge of Vans’ rights and the substantial value of the Vans trademarks and trade dress, MSCHF embarked on a campaign to piggy-back on Vans’ rights and the goodwill it has developed in its iconic shoes” by offering up a shoe of its own that “blatantly and unmistakably incorporates Vans’ iconic trademarks and trade dress.” In its complaint, Vans claims that by way of the Wavy Baby sneaker, MSCHF is willfully infringing its trademark and trade dress rights in the 40-year-old OLD SKOOL shoe, including the Side Stripe trademark, and also engaging in unfair competition, trademark dilution, and unfair trade practices under New York State law.

MSCHF (unsuccessfully) argued in response to Vans’ quest for a temporary restraining order and preliminary injunction that Vans is not likely to succeed on the merits of its trademark infringement (and dilution) claims because the Wavy Baby sneakers are “an artwork protected by the First Amendment” and “no reasonable consumer would be confused into thinking that Wavy Baby was produced or endorsed by Vans.” MSCHF further argued that an injunction prohibiting it from offering up the Wavy Baby shoes “would unconstitutionally restrain [its] free speech because its parody of Vans is protected First Amendment expression.” 

Counsel for MSCHF has since filed a notice of appeal to the U.S. Court of Appeals for the Second Circuit in response to the district court’s grant of a temporary restraining order and preliminary injunction.

The case is Vans, Inc. v. MSCHF Product Studio, Inc., 1:22-cv-02156 (EDNY).