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).

A New York federal court has ordered MSCHF to refrain from offering up, marketing, and/or fulfilling existing orders for its allegedly infringing Wavy Baby sneakers for the duration of the trademark-centric case that Vans filed against it last month. In a decision and order dated April 29, Judge William Kuntz of the U.S. District Court for the Eastern District of New York sided with Vans, granting its motion for a temporary restraining order and preliminary injunction on the basis that Vans is likely to prevail on the merits of its underlying claims, including trademark infringement, and that the sneaker-maker is likely to suffer irreparable harm unless MSCHF’s alleged infringement is stopped.

First addressing the likelihood that consumers will be confused as to the nature of MSCHF’s Wavy Baby sneakers, the court pointed to the “striking visual similarities between the [Vans] Old Skool shoes and the Wavy Baby shoes and their respective packaging.” The court was not persuaded by MSCHF’s argument that while it makes use of marks that are similar to Vans’ marks, it has “distorted” those marks, thereby, making them different from the ones that Vans uses to indicate the source of its offerings. The marks “need not be identical, but rather only similar, for there to be a likelihood of confusion,” per Judge Kuntz, who stated that the critical question is not whether the differences between the two shoes/marks “are easily discernable on simultaneous viewing, but whether they are likely to be memorable enough to dispel confusion on serial viewing.”

MSCHF’s distortion of the original Vans trademarks is insufficient to dispel consumer confusion, according to the court, which also noted that Vans sufficiently establishes that there is actual confusion at play, namely, by way of comments from consumers about the similarity of the two parties’ shoes, and more importantly, comments that demonstrate that “consumers have misunderstood the source of the Wavy Baby sneakers as a collaboration between” MSCHf and Vans.

As for consumer sophistication (a factor in the likelihood of confusion analysis), the court sided with Vans here, unpersuaded by MSCHF’s claims that “few of the purchasers of the Wavy Baby shoes were likely to be unsophisticated members of the general public” by virtue of the fact that the shoes were only available for a short time on MSCHF’s app. The court stated that the MSCHf sneakers were offered up to the general public “through self-service mediums accessible without professional assistance,” and noted that “shoes generally are a common consumer item.” Also weighing in Vans’ favor, according to the court, is the fact that MSCHF engaged in a “broad advertising campaign” for the Wavy Baby shoes in collaboration with Tyga, which makes it “likely that at least some buyers of the Wavy Baby shoes purchased them as a result.”

(To be fair, while the court states that the MSCHF sneakers were offered up and advertised to the general public, and that sneakers, generally, are a common consumer product, which suggests that the level of consumer sophistication and attention to detail in connection with such a purchase is low, there is actually a very good chance that most of the individuals who are in the market to buy MSCHF sneakers are distinct from the average sneaker buyer, which stands to impact the level of consumer sophistication at play here, and thus, the likelihood of confusion.)

MSCHf Wavy Baby

In terms of the proximity of the two parties’ offerings (another likelihood of confusion factor), the court determined that Vans demonstrated “sufficient proximity,” specifically pointing to its practice of regularly releasing special edition versions of the Old Skool shoes, including in limited quantities, in collaboration with others, and at similar price points as the MSCHF sneakers. And in pushing back against MSCHF’s argument that its sneakers are more akin to artworks “likely to be kept in glass cases or on shelves” than to Vans’ more wearable Old Skool shoes, the court cited a podcast interview with MSCHF chief creative officer Lukas Bentel, who stated that the Wavy Baby sneakers, as distinct from previous MSCHF sneaker releases, are a move by MSCHF to “transcend into more of a straight sneaker space.” 

Turning his attention to MSCHF’s First Amendment arguments, namely, that Vans is unlikely to succeed on the merits of its trademark claims because the Wavy Baby sneakers are a “parodic or artistic expression” of Vans’ marks, Judge Kuntz asserted that the MSCHF sneakers “do not meet the requirements for a successful parody.” While the Wavy Baby sneakers “convey their similarly and reference to the Old Skool shoe trademarks,” they do not “sufficiently articulate ‘an element of satire, ridicule, joking or amusement’ clearly indicating to the ordinary observer that [MSCHF] is ‘not connected in any way with [Vans],” according to the court. 

MSCHF included its own branding on the shoe label and “distorted” the original Vans trademarks, but “the extensive similarities and overall impression [of the MSCHF sneaker] overcome any such distinguishing features,” Judge Kuntz stated, “as evidenced by actual confusion in the marketplace.” Moreover, the judge stated that while the manifesto accompanying the shoes – which commented on the rampant copying in the sneaker space, Vans’ “outsized role” in consumer culture, and Vans’ ventures in the metaverse – “may contain protected parodic expression,” the shoes, themselves, and the packaging “fail to convey the satirical message.”

MSCHf Wavy Baby

Addressing MSCHF’s reference to the Louis Vuitton v. My Other Bag case, in which MOB successfully argued parody in connection with its manufacture and sale of canvas tote bags bearing depictions of Louis Vuitton-like bags, Judge Kuntz says the case at hand is distinguishable, as “the satirical message presented by the Wavy Baby shoes is not readily perceived from the product without the accompanying manifesto or descriptions.” As such, this is different from the play on the well-known “my other car …” joke in the My Other Bag case, Judge Kuntz asserts. 

Judge Kuntz also shoots down MSCHF’s comparison of the Wavy Baby sneakers to the rubber dog toys in the Bad Spaniels case. Unlike the MSCHF and Vans sneakers, the dog toy in the Bad Spaniels case “does not occupy the same market as Jack Daniels whiskey,” per Judge Kuntz, who notes that “where the infringement claim involves a competing product, ‘parodic use is sharply limited.’” Beyond that, the dog toy incorporates “clear puns and parodic references and displays clear distinctions between the products, making the parody more discernable and overt,” according to the judge. 

Finally, Judge Kuntz determined that the irreparable harm factor weighs in favor of Vans, as the Wavy Baby shoes “create a strong risk of consumer confusion and irreparable harm to the consumer recognition and good will cultivated by [Vans,’” namely, the brand recognition and success of the Old Skool shoes and associated trade dress that Vans has spent forty-five years and millions of dollars in marketing. The court also stated that MSCHF “failed to many any representations” that it would “not continue to produce iterations of the Wavy Baby shoes following the conclusion of the present litigation for one reason: it intends to do precisely that.”

Against this background, the court granted Vans’ request for a temporary restraining order and preliminary injunction, thereby, requiring MSCHF and all persons acting in concert with it to refrain from “advertising, marketing, prompting, offering to sell, selling, distributing, and/or taking orders” – or fulfilling existing orders – for the Wavy Baby shoes. MSCHF must also “reverse and/or cancel any orders for the shoes that have been places as of the time” of the court’s order, and put the revenues from all of orders for the Wavy Baby sneakers that it did fulfill (roughly 4,000 pairs) into escrow.

It is not yet clear whether MSCHF will appeal, and as of now, all mention/images of the Wavy Baby sneakers have been removed from MSCHF’s website. Imagery of the Wavy Baby sneakers remains on the social media accounts of MSCHF collaborator Tyga, who is not named as a defendant in Vans’ suit. 

UPDATED (May 2, 2022): Counsel for MSCHF has 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).

The controversial Wavy Baby sneakers courtesy of MSCHF sold out in a reported 10 minutes on Monday, just days after Vans filed a trademark infringement and dilution lawsuit against the Brooklyn-based art collective-slash-budding sneaker brand. Ahead of the launch of the allegedly infringing footwear this week, counsel for Vans filed an emergency motion for a temporary restraining order and preliminary injunction, arguing that MSCHF’s Wavy Baby offerings “purposefully imitate the famous and well-recognized OLD SKOOL trade dress while also incorporating numerous other Vans trademarks and indicia of source,” and thus, immediate injunctive relief is necessary to prevent irreparable harm to Vans. 

In its April 15 motion and corresponding memo in support, Vans argues that the court should award it a temporary restraining order and a preliminary injunction to bar the release of the Wavy Baby sneakers immediately and for the duration of the case on the basis that it is likely to succeed on the merits of its claims, including trade dress and trademark infringement. Primarily, Vans argues that it maintains valid and protectable trademark rights in the appearance of the OLD SKOOL sneaker and other related marks, and that MSCHF’s Wavy Baby sneakers are likely to cause confusion, thereby, giving rise to infringement liability.

Beyond that, Vans looks to preempt MSCHF’s inevitable fair use defense (which does, in fact, follow in MSCHF’s opposition motion), arguing that the allegedly infringing MSCHF shoes “are not a parodic or artistic expression.” Specifically, Vans asserts – citing Harley Davidson, Inc. v. Grottanelli – that the Second Circuit has “recognized that parodic use or artistic alteration of a mark is ‘sharply limited’ in circumstances where, as here, ‘an alleged parody of a competitor’s mark [is used] to sell a competing product.’” Moreover, Vans argues that “parody marks also cannot, themselves, be used to indicate the source or sponsorship of a good.” 

MSCHF did not release the allegedly infringing shoe “as an obvious commentary on Vans, the OLD SKOOL shoe, or some other societal issue, as is typical in a parody case,” Vans argues. “Instead, it has merely adopted the well-known and famous asserted marks and slightly altered their appearance,” which amounts to “a fast gimmick to sell shoes [that] is not a fair or artistic use of Vans’ intellectual property rights.” Vans claims that “this is particularly true [given that] Vans, itself, is known for customized versions of its shoes that retain its core OLD SKOOL trade dress, as the infringing shoes do here, and also for playful ‘skews’ of its own branding, such as placing a crooked version of the classic VANS logo on the footbed of its shoes.”  

With this in mind, Vans contends that MSCHF’s “only defense is, therefore, unlikely to prevail on the merits,” and thus, the court should temporarily and preliminary enjoin MSCHF from selling the Wavy Baby sneakers until there is an adjudication on the merits. 

Wavy Baby MSCHF

Fast forward to Monday and MSCHF (represented by David Bernstein and Megan Bannigan of Debevoise) filed an opposition motion, arguing against a temporary restraining order. Setting the stage in the filing, MSCHF states that it is an “art collective” in the business of critiquing consumer culture, and that given its “penchant for critiquing consumer culture from within consumer culture, [it] realized that ‘sneakerhead’ culture is ripe for parody.” In furtherance of its desire to comment on “consumerism in sneakerhead culture (that Vans helped to create) and the intersection of the physical and virtual worlds (the boundary of which Vans straddles by selling ‘digital shoes’ and other ‘digital skate gear’ in the metaverse),” MSCHF introduced the Wavy Baby project, which consists of “a limited-edition series of 4,000 wearable artworks.” 

Against that background, MSCHF argues that Vans is not likely to succeed on the merits of its trademark infringement (and dilution) claims because the Wavy Baby sneaker is “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 claims that an injunction that prohibits it from offering up the Wavy Baby shoes “would unconstitutionally restrain [its] free speech because its parody of Vans is protected First Amendment expression.” 

Allegedly wanting to comment on Vans’ venture into the metaverse by “translating virtual goods back into physical goods – and thereby flipping Vans’ project [of translating its functional skate shoes into digital goods used in games like Roblox] on its head,” MSCHF claims that the Wavy Baby project is expressive – and not explicitly confusing – and thus, “satisfies both prongs of the Second Circuit’s seminal Rogers v. Grimaldi test.” 

In fact, MSCHF asserts that its references to Vans’ Old Skools are “relevant to – indeed, they are essential to – its expressive purpose,” as the Wavy Baby sneakers are “a warped rendition of Vans, rendering what could previously only be seen digitally into something physical, and critiquing consumer culture and Vans’ outsized role in that culture.” As such, MSCHF argues that the sneakers “easily clear the Rogers bar for artistic relevance, which is ‘purposely low and will be satisfied unless the use ‘has no artistic relevance to the underlying work whatsoever.’” 

Wavy Baby MSCHF

Pointing to precedent from the Ninth Circuit in the Bad Spaniels case, MSCHF contends that “if a $15 dog toy that pokes slight fun at a bottle of whiskey can be protected by the First Amendment, surely the use of Vans’ transformed trade dress in a $220 work of art as part of an art collective’s commentary on Vans’ role in consumerism and digital society is artistically relevant to the work.” 

As for the potential that consumers will be confused about the nature of the Wavy Baby sneakers, MSCHF asserts that it “has made clear in its advertising and packaging that Wavy Baby is a collaboration with Tyga, not with Vans,” and that Vans “has failed to show a likelihood of confusion.” Moreover, “the bizarre and unconventional shape of Wavy Baby undermines any risk of confusion,” per MSCHF, “in part because Wavy Baby cannot substitute for Old Skools.” More than that, MSCHF argues that “no reasonable consumer who has any familiarity with Vans would conclude that Wavy Baby is anything but an exaggerated artwork by someone other than Vans.” 

MSCHF further alleges that the law is on its side on this front, as “courts regularly find no likelihood of confusion with parodic consumer goods,” and “the more outlandish a parody, the less likely consumers are to think the trademark owner sponsored or approved it.” 

Finally, MSCHF argues that injunctive relief is inappropriate here, as “Vans’ conduct establishes that it will not suffer irreparable harm from the sale of MSCHF’s limited-edition artworks.” For instance, MSCHF alleges that before filing suit, “Vans offered to allow MSCHF’s ‘drop’ of Wavy Baby to proceed as scheduled in return for a share of MSCHF’s profits; Vans also agreed to a meeting between the parties to discuss potential future collaborations.” The fact that Vans “would accept payment to allow the launch and expressed interest in future collaborations undermines Vans’ protestations about the harm Wavy Baby will cause to its brand,” per MSCHF. “It also demonstrates that any harm to Vans is not irreparable but rather compensable.” 

As such, MSCHF requests that the court deny MSCHF’s application for a temporary restraining order. 

While the sneakers dropped on Monday, the court has, nonetheless, issued an order to show cause for a temporary restraining order and a preliminary injunction, calling on MSCHF to appear show cause why Vans should not be granted a temporary restraining order and preliminary injunction enjoining it from: “(1) selling to the public any of the “Wavy Baby” shoes, or any colorful imitations or reconstructions thereof; (2) fulfilling orders for any of the Shoes; (3) using Vans’ OLD Skool Dress or Side Stripe Mark, or any mark that is confusingly similar to those marks and trade dress, or is a derivation or colorable imitation or recreation thereof, regardless of whether used alone or with other terms or elements; (4) referring to or using any marks in any advertising, marketing, or promotion; and, (5) instructing, assisting, aiding, or abetting any other person or business entity in engaging in or performing any of the activities referred to above, or taking any action that contributes to any of the activities referred to above.” 

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

Just over a year after settling the trademark-centric lawsuit waged against it by Nike, MSCHF has landed on the receiving end of a new lawsuit, this time from Vans. According to a 57-page filing with the U.S. District Court for the Eastern District of New York on Thursday, Vans and its parent company VF Corp. allege 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 recently 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 the newly-filed complaint, Vans claims that by way of the not-yet-released 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. “The combination of elements comprising the OLD SKOOL Trade Dress is distinctive, and the public recognizes and understands that the OLD SKOOL Trade Dress distinguishes and identifies genuine Vans brand shoes,” the footwear brand asserts. “As a result of Vans’ extensive use of the OLD SKOOL Trade Dress,” including sales of “hundreds of millions of shoes bearing the side stripe mark,” which have accounted for “tens of billions of dollars in revenue,” Vans claims that it “has built up and now owns extremely valuable goodwill that is embodied by the OLD SKOOL trade dress.” 

(Vans describes its “OLD SKOOL Trade Dress” as “a distinctive combination of source- identifying elements,” including: “(1) the Vans Side Stripe Mark on the shoe upper; (2) a rubberized sidewall with a consistent height around the perimeter of the shoe; (3) the uppermost portion of the sidewall having a three-tiered or grooved appearance; (4) a textured toe box outer around the front of the sidewall; (5) visible stitching, including where the eyestay meets the vamp; and (6) the placement and proportion of these elements in relation to one another.”)

Vans also maintains trademark rights in and registrations for “other unique aspects” of its well-known sneaker, including a “distinctive stitching pattern on a sneaker,” its “signature waffle” shoe sole, and the placement and design of the heel tab. And still yet, Vans asserts that it has protectable rights in its distinctive shoe boxes, namely, “the unique red and brown shoe box [which it adopted] in June of 2014, and has since sold over one billion pairs of Vans shoes, each inside of Vans’ iconic red and brown shoe boxes.” 

MSCHF Vans

Against this background, Vans alleges that MSCHF has sought to “skip the significant investments required to develop original, authentic, and high-quality shoes, and instead chose to free-ride off Vans’ reputation and popularity.” MSCHF and rapper Tyga have “aggressively marketed” the Wavy Baby shoe and plan to make it available for purchase on April 18, per Vans, in order to “intentionally confuse consumers as to [the sneakers’] source, or to suggest that [it] has sponsored or otherwise approved of the infringement, by mimicking [its] trademarks and trade dress,” and in order to profit from “the reputation and goodwill earned by Vans for over half a decade.”

Specifically, MSCHF claims that MSCHF has “copied the shape and location of the side stripe mark, in addition to copying [its] iconic black shoe with white side stripe mark, on the shoe upper.” Beyond that, the allegedly infringing Wavy Baby shoe “deliberately incorporates another iconic feature of the Vans OLD SKOOL shoe: the square, red and white heel logo on the back of the shoe,” per Vans, while also co-opting “Vans’ trademark Waffle Sole, as well as the Vans footbed logo.” Finally, MSCHF also has “copied Vans’ trademarks and trade dress in connection with advertising and product packaging for the Wavy Baby shoe,” namely, by way of the lookalike shoe box.

While the shoes are confusingly similar when considered in a side-by-side capacity, Vans contends that when they are “encountered at separate times, as most consumers will do in the marketplace or in the post-sale context, the parties’ respective designs are even more confusing.” Such potential for confusion is heightened, Vans asserts, given its own practice of collaborating with “other designers, companies, or celebrities” and the fact that it enables consumers to “design their own colorway while utilizing the OLD SKOOL Trade Dress” by way of its “Vans Customs” service in its website. 

MSCHF Vans

Beyond “mimicking the design of Vans’ shoes,” Vans alleges that MSCHF has taken “additional affirmative steps in an attempt to suggest an association between [itself] and its infringing shoe and Vans,” including using a stylized “wavy” mark that is confusing similar to Vans’ stylized word mark – complete with the ® symbol, which Vans says “deceptively suggest[s] that the mark is federally registered.” (In reality, “MSCHF has not even applied for registration of the ‘wavy’ mark, let alone actually obtained federal registration.”)

In a further attempt to hijack the ethos of its brand, Vans claims that MSCHF uses imagery to market the allegedly infringing shoe “that is intended to evoke a ‘skate’ or ‘retro’ image.” For example, Vans states that “MSCHF’s marketing of the infringing Wavy Baby shoe relies heavily on images of individuals with skateboards.” 

Despite it attempts to settle the matter out of court, including by sending a cease-and-desist letter to Tyga (who is not named as a defendant in the case) on April 5 and MSCHF on April 6, Vans claims that they have been unable to agree on an appropriate resolution. As such, Vans has lodged claims of trademark infringement, unfair competition, trademark dilution, and unfair trade practices under New York State law against MSCHF, seeking monetary damages (including any profits should MSCHF actually go ahead with its release of the sneakers on April 18) and a court order barring MSCHF and any related entities from advertising and offering up footwear that infringes its trademark. 

In a lengthy statement on Thursday, MSCHF co-founder Daniel Greenberg noted that Vans reached out ahead of the suit in an attempt to “proactively settle,” seeking, among other things, “half the profits and also four pairs of shoes for themselves.”

The most interesting element of his statement and of this lawsuit (in my opinion), however, is the part where Goldberg appears to clearly position the company to make a commentary-centric defense in order to shield itself from Vans’ trademark claims, stating, “Sneaker companies are in a constant cycle of riffing on each other. Standard shoe industry practice is: steal a sole, steal an upper, change a symbol. Wavy Baby is a complete distortion of an entire object that is itself a symbol.” (Goldberg is not necessarily wrong; the sneaker space is rife with litigation between giants, alleging infringement in lieu of innovation. Nike’s ongoing ITC battle over adidas’ knitted shoes, for example, comes to mind.)

Additionally, Goldberg claims that the Wavy Baby shoe is “transformational above and beyond anything Vans would ever attempt.” 

MSCHF Vans

The suit comes just over a month after MSCHF announced that it would launch a sneaker brand of its own, MSCHF Sneakers, seemingly parlaying the viral attention it gained from its lawsuit-inducing Satan Shoes into a formal footwear venture. As we previously noted in connection with MSCHF’s new footwear venture, it will be interesting to see how this approach of “poking the bear,” which appears in many cases to deliberately court the potential for litigation, plays out as the company sets its sights on becoming a bona fide brand and scaling the volume of their operations. 

Should MSCHF really begin to move away from their one-and-done drops, at least when it comes to the footwear category, the company stands to chip away at the main defense that it set out in response to the Satan Shoes case: that its sneakers fall more within the realm of an “artistic and expressive” project than the world of purely commercial footwear. It is not yet clear if – or how – the company would be able to straddle the line between expressive and commercial works. 

It will also be interesting to see how much longevity MSCHF’s media-by-litigation model has before it begins to cause fatigue among consumers, who might begin to view such stunts as pure gimmick. The company shuns traditional advertising efforts, and thus, is largely reliant on the hype that surrounds threats of litigation and actually-initiated litigation in response to its offerings.

Vans’ case against MSCHF also comes as the footwear brand is facing off against Walmart for allegedly infringing its OLD SKOOL trademarks. The sneaker company landed a win in the latest round against the retail titan, with the Judge David Carter of the U.S. District Court for the Central District of California granting Vans’ motion for a preliminary injunction on the basis that “Vans is likely to succeed in showing that its trademarks and trade dresses are valid and protectable,” and given that “Vans’ evidence of loss of market control, consumer confusion, and the poor quality of Walmart’s shoes is sufficient to establish that [it] is likely to suffer irreparable harm absent injunctive relief.” 

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

Christian Louboutin has been handed a loss in a legal battle over its red sole trademark in Japan. After filing suit against Eizo Collection Co., Ltd., alleging that the Japanese footwear company was infringing its red sole trademark and thus, running afoul of unfair competition law by selling red soled shoes of its own – albeit without the affiliation of or authorization from the famed French brand, the Tokyo District Court sided with Eizo on the basis that Louboutin lacks robust rights in the red sole trademark in Japan, and beyond that, consumers are unlikely to confuse the two companies’ offerings. 

In a decision dated March 11, the Tokyo District Court dismissed Christian Louboutin’s unfair competition case, determining that the celebrity-favored footwear brand fell short in showing that its red sole trademark maintains the necessary level of secondary meaning to act as a trademark. In order to make its case for acquired distinctiveness, counsel for Louboutin pointed to consistent use of the red sole by the brand in Japan for more than 20 years. At the same time, the brand revealed that it has generated revenues of JPY3.3 billion ($26.33 million) for women’s heels since 2016, alone, and has spent JPY15 million ($120,000) per year to advertise its offerings, namely, red soled heels, in the Japanese market. 

Still yet, Louboutin cited a consumer survey conducted in October 2020, which found that 65 percent of 3,149 interviewees, namely, women between 20 and 50 years old, named Louboutin as the source of a depiction of a high heel shoe with a red sole. (The court ultimately took issue with this survey given that the pool of surveyed individuals was primarily limited to luxury shoppers, and they were not shown a photo of the Eizo’s footwear, only Louboutin’s.)

Louboutin Trademark

Unpersuaded by this evidence, the Tokyo District Court found that the color red “has been commonly used on shoes [in the Japanese market] to enhance the aesthetic appearance and attract consumers,” according to Osaka-based trademark attorney Masaki Mikami, holding that women’s heels with red-colored soles “have been widely distributed even before the launch of Louboutin shoes in Japan.” The court also determined that the two decades of use and the advertisements relied upon by Louboutin “would be insufficient to find [its] red soles have played a role as a source indicator in Japan.”

Even if the court were to find that Louboutin has rights in the single-color red sole mark, it still would not prevail in the unfair competition case at hand, as consumers are not likely to confuse its footwear with Eizo’s offerings. A few factors weigh against Louboutin on this front, according to the court. Primarily, there is the level of sophistication of consumers/the level of attention they are paying to such purchases. Considering that Louboutin’s offerings generally come with price tags of $700 or more, relevant consumers are likely to pay a fair amount of attention in the purchasing process, the court stated. 

Louboutin Trademark

Also weighing against confusion, the court noted that Louboutin’s red soles have the brand’s name adorned on them, and the same goes for EIZO’s footwear, which bears the “EIZO” name on the soles. And still, the court found that the two companies’ shoe soles, themselves, are visually quite different, with Louboutin’s consisting of red lacquered soles and Eizo’s being red rubber, which serves to further decrease the chance that consumers might be confused as to the source of the Eizo shoes and/or believe they are in some way affiliated with Louboutin. 

With the foregoing in mind, the court dismissed Louboutin’s unfair competition complaint, refusing to fashion any of the remedies that it was seeking, including monetary damages, injunctive relief to bar Eizo from continuing to offer up red sole heels, and a court order requiring Eizo to deliver the red soled heels in its possession to Louboutin for destruction. 

The loss for Louboutin comes as the brand’s 2015 application to register the red sole as a position trademark on women’s high-heeled shoes has been pending before the Japan Patent Office due to “a lack of inherent and acquired distinctiveness.” Brands have struggled to secure protection for single color marks in Japan. For some larger context, all of the color marks that have been registered by the JPO to date consist of more than two colors, with the national trademark body refusing to register a single color as a trademark as of now.