MANHATTAN (CN) — The Second Circuit found on Tuesday that Vans, famous for its waffle-soled shoes, is likely to succeed in its lawsuit against a Brooklyn-based company for ripping off its iconic “Old Skool” skater sneakers.
According to the decision affirming a lower court's ruling, novelty goods maker MSCHF altered Vans’ sneaker by distorting their trademarks and logo, “resulting in a shoe that was ‘exceedingly wavy.’”
MSCHF released its “Wavy Baby” shoes, created in collaboration with rapper Tyga, on April 18, 2022, and sold out in an hour. The shoes went for $220 a pair.
The Second Circuit also affirmed a federal judge’s order that MSCHF should escrow its revenues from the sneaker sales and not fill any orders, nor advertise or sell Wavy Baby shoes, while the case proceeds.
In its decision, the Second Circuit pointed to a 2023 U.S. Supreme Court decision, Jack Daniel’s Properties v. VIP Products, that found First Amendment protections did not apply if “an alleged infringer used another’s trademarks for an expressive purpose.”
In the Jack Daniels decision, the Supreme Court found VIP Products used the whiskey company’s bottle as source material when creating its dog toy called “Bad Spaniels.” The dog toy was designed to look like a bottle of Jack Daniel’s whiskey, with some playful changes, the nation’s high court found.
“Here, MSCHF used Vans’ marks in much the same way that VIP Products used Jack Daniel’s marks — as source identifiers,” a panel of judges for the Second Circuit said in their decision.
The case appeared before judges Dennis Jacobs, a George H.W. Bush appointee; Denny Chin, a Barack Obama appointee; and Stephen Robinson, a George W. Bush appointee.
The court found that, riffing off Vans’ iconic “Old Skool” sneaker, the Wavy Baby shoes distort Vans’ black and white color scheme by making the traditional design wavy. The shoe also mimics Vans’ trademarked logo and replaces the brand with the word “wavy.”
In a promotional video for the MSCHF shoes posted by Tyga, whose full name is Michael Stevenson, the rapper places the original shoe in a microwave to seemingly create the Wavy Baby sneaker.
“MSCHF included its own branding on the label and heel of the Wavy Baby sneaker, just as VIP Products placed its logo on the toy’s hangtag,” judges for the Second Circuit wrote. “But even the design of the MSCHF logo evokes the Old Skool logo.”
The Second Circuit also says that, while Vans has never warped its design for the Old Skool sneaker in the same way as MSCHF to make the shoe look “microwaved” to create the rippled effect, it has created special editions of the sneaker and has often collaborated with celebrities and high-profile brands including Marc Jacobs, Supreme and The North Face.
In U.S. District Judge William F. Kuntz’s decision in the U.S. District Court for the Eastern District of New York, he disagreed with MSCHF’s claim that sneakerheads willing to drop hundreds on the shoe were unlikely to get the two brands mixed up.
“Defendant has offered no persuasive rationale as to why the Wavy Baby shoe’s sale solely on defendant’s website and application poses such a barrier to entry that only sophisticated consumers would have purchased the shoe,” Kuntz wrote in his decision.
The Second Circuit agreed with Kuntz’s finding in its decision, saying its parodic use of Vans’ Old Skool shoe is not enough to avoid consumer confusion.
“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 also defended itself in a similar lawsuit last year after releasing its “Satan Shoes” in collaboration with artist Lil Nas X. In custom Nikes designed with a pentagram, Bible verse and a drop of human blood in the sole, the shoes were met with a separate trademark lawsuit that was settled shortly after it was filed.
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