The novelty goods maker MSCHF dropped the controversial shoes, created in collaboration with rapper Tyga, on April 18, dubbing them the “Wavy Baby.” They sold out in an hour, going for $220 a pair.
But those who ordered the shoes and haven’t yet received them shouldn’t expect a delivery any time soon.
Seeing merit in Vans’ arguments, a federal judge in Brooklyn ordered MSCHF not to fill any orders, nor advertise or sell Wavy Baby shoes, while the case proceeds.
In addition, the company must cancel or reverse orders that have already been placed. Money from orders that can’t be reversed is to be held in escrow — that way, if Vans wins its case, MSCHF can return the money to any customers who ordered the shoes believing they were legitimate Vans.
“In particular, the Court notes the striking visual similarities between the Old Skool shoes and the Wavy Baby shoes and their respective packaging,” reads the 18-page ruling by U.S. District Judge William F. Kuntz entered Friday just before 6:30 p.m. “[T]he marks need not be identical, but rather only similar, for there to be a likelihood of confusion.”
The order rebuffs MSCHF’s claim that sneakerheads willing to drop hundreds on novelty shoes are unlikely to get mixed up between the two shoes, calling it “merely supposition.”
“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 writes.
MSCHF acknowledges that it used Vans’ “Old Skool” shoe, which debuted in 1977, as a jumping point. Both shoes are black with a white stripe on the side, have a waffled sole, and include a red label on the heel.
The major difference is the shoe’s silhouette: MSCHF’s shoe is a warped, rippling sneaker, as if someone took the original Old Skool and melted it. In fact, a promotional video posted by Tyga, whose full name is Michael Stevenson, shows the rapper placing the original shoe in a microwave to seemingly create the Wavy Baby.
Kuntz pointed to the video and Tyga’s fan base as supporting the potential for confusion.
MSCHF contends that its spinoff shoe — designed in Photoshop using a liquify filter on the Old Skool, according to MSCHF attorneys — is a commentary on big brands like Vans.
“You walk out, you look at the street, you’re seeing just advertising everywhere, and these are the things that are untouchable,” said MSCHF’s chief creative officer Lukas Bentel in a podcast interview cited in Kuntz’s order. “They’re like sacred in some sense, and in the same sense we’re just completely inundated by it all the time.”
Kuntz wasn’t convinced that the message would get through to customers.
“While the manifesto accompanying the shoes may contain protected parodic expression, the Wavy Baby shoes and packaging in and of themselves fail to convey the satirical message,” the judge writes.
MSCHF has 30 days to inform the court about how it is complying with the injunction.
MSCHF found itself in hot water last year after releasing its “Satan Shoes” in collaboration with artist Lil Nas X. Styled with a pentagram, Bible verse and a drop of human blood in the sole, the custom Nikes were met with a separate trademark lawsuit that was settled shortly after it was filed.
Settlement talks in this case didn’t come to fruition. MSCHF claims that Vans reached out to discuss sharing profits, future collaborations, and even asked for four pairs of the shoes. Vans’ attorney said in court Wednesday that it was the other way around, and it was MSCHF that asked to collaborate.
Neither Vans nor MSCHF returned an after-hours request for comment on Friday.
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