MSCHF’s ongoing legal battle with Vans is shaping up to be a far more drawn-out affair than the instigator’s two-week tussle with Nike last year.
The Brooklyn-based art collective first invited the skate brand’s ire in April when it unveiled what it called the “Wavy Baby.” The impractical footwear—an “extremely wavy” warning on the shoe’s undulating outsole depicts a wearer falling on a flight of stairs—clearly draws inspiration from Vans’ signature “Old Skool” sneaker. In an April podcast with Complex, MSCHF chief creative officer Lukas Bentel admitted as much, acknowledging that the “base of the shoe before our transformation is of course a Vans, and I think there’s no doubting that.”
Unlike last year’s Satan Shoes, which retooled actual pairs of Nike Air Max 97s, MSCHF had the Wavy Baby sneakers manufactured in China. The unconventional footwear marked the second entry from MSCHF Sneakers, a new side project that will release a new shoe roughly once a month.
“Sneakers are a rich cultural format,” MSCHF said in March when it announced its first MSCHF Sneakers release, the tape-covered Tap3. “They sit at a strange nexus of fashion, collecting, hypebeasts, and investing—or more accurately whatever financialized mess sneaker flipping is. We knew there was more meat there we wanted to play with in the future, and after Satan Shoes it was clear we’d have to eliminate any outside dependencies to have creative freedom.”
Ironically, MSCHF’s determination to build its own shoes overseas may have unintentionally landed the collective in further trouble.
Two weeks after filing its trademark infringement, Vans won a temporary restraining order (TRO) and a preliminary injunction instructing MSCHF to stop fulfilling orders of its Wavy Baby shoes and to reverse or cancel all orders where it could do so. Another two weeks later, Vans filed a motion to hold MSCHF in contempt of court for allegedly continuing to fulfill orders. It held up as proof shipping notifications alerting customers on May 11 that their order had been picked up by the carrier from a warehouse in Guangzhou, China.
MSCHF, for its part, claims it did everything it could to stop these orders from going out. In its response, filed May 20, it said it had taken the injunction “seriously” and made “diligent, substantial efforts to comply.”
“Contrary to plaintiffs’ assertions, MSCHF has not ‘continued to fulfill orders for’ the Wavy Baby; to the contrary, MSCHF made ample, reasonable efforts to halt and reroute all Wavy Baby shipments in compliance with the injunction,” it wrote. “Although these efforts were largely unsuccessful, that is not because of a lack of trying or diligence.”
MSCHF’s efforts, it said, included attempting to work with its liaison in China to cancel orders, with its logistics vendor in the U.S. to reroute orders to the vendor’s warehouse, with its U.S. vendor’s shipping vendors to reroute the orders and directly with the carrier to reroute the orders. Despite these “diligent efforts,” it said “most” of the Wavy Baby packages were delivered to purchasers.
James Kernan, MSCHF’s head of footwear, submitted an affidavit alongside his company’s May 20 filing attesting to these efforts. Of the 4,306 Wavy Baby pairs sold, he said, 2,086 had already arrived at its New York warehouse as of April 18, the day the shoe became available for purchase. The others, still at Qingyuan Hanjia Shoes Company Limited’s factory in China, were supposed to ship directly to consumers on April 20.
On April 22, Kernan said he learned that not all the 2,220 Wavy Baby shoes in China had shipped. In fact, because DHL-China had imposed a daily shipping quota, 1,912 pairs remained at the factory, he attested. On April 26, ahead of the court’s TRO hearing, Kernan said he emailed his factory liaison, Gary Hanjia, to ask if it was still possible to cancel the shipment of the remaining shoes.
“Here I confirm that all the Wavy shoes have left the factory and have been handed off to a third party for shipping via DHL to US customers,” Hanjia wrote on April 26. “No, It is impossible to stop the shipments right now from delivery to customers. I am sorry , James . It is too late since the goods have left the factory, Pls understand. [sic]”
Isa Zinser—the warehouse manager at LW12, a logistics vendor owned by Kernan that fulfills “many” of MSCHF’s art projects—led LW12’s fulfillment of Wavy Baby orders through the Utah-based shipping company Buku. On May 3, Kernan said he learned from Zinser that, “according to Buku, it might be possible for DHL to re-route the shipments from purchasers’ addresses to LW12’s New York warehouse.”
On May 4, a MSCHF employee, Jacob Krowicki, told Kernan he had called the general DHL-America customer service phone number and said it would be “theoretically possible” to reroute orders carried by DHL. Kernan’s affidavit spends nearly four pages explaining the various ways MSCHF attempted to facilitate this rerouting. Ultimately, however, these efforts largely failed. As of May 26—as required by the April 29 order, MSCHF general counsel John Belcaster filed an update on May 29 detailing MSCHF’s compliance with the TRO—1,802 pairs shipping from China had been delivered.
Vans filed its reply to MSCHF’s response Friday. In it, the brand argued that MSCHF failed “to take even obvious steps to prevent shipment of the infringing shoes.”
More specifically, it took issue with the nearly two-week period in which the 1,912 remaining Wavy Baby shoes sat in a “third-party holding area” before DHL picked them up. According to Vans, “all that MSCHF needed to do was instruct its affiliates to say ‘no’ when DHL tried to pick up the Infringing Shoes.”
“MSCHF’s attempt to muddy the waters with a narrative of futile efforts to ‘re-route’ shipments is belied by the record, which confirms that MSCHF had ample opportunity to comply with the Injunction but chose not to do so,” Vans wrote. “MSCHF’s blatant violation of the Injunction justifies a finding of contempt and the imposition of sanctions.”
Though Vans declared MSCHF “suspiciously silent as to which entity had control over the ‘third-party holding area,’” the update Belcaster filed two days later claims “MSCHF lacked any legal right or practical ability to control the fulfillment of the orders once they left the factory with which MSCHF does business, including once they arrived at the third-party holding area from which DHL-China picked up the orders.”
At the same time it is fighting Vans’ push to hold it in contempt, MSCHF is also seeking an order that would rescind certain provisions of the TRO. In a motion filed May 20, it asked the court to stay the provisions that prohibit it from promoting its Wavy Baby “artwork” on its website, mobile app and in upcoming art exhibitions. These restrictions, it argued, infringe on its First Amendment rights.
“A stay is appropriate if only because the order constitutes a prior restraint on MSCHF’s expression, including its right to display accurate archival images of its artworks on its website and app and to display its artworks in art museums and galleries,” it wrote. “Furthermore, forcing MSCHF to comply with an unconstitutional injunction casts a cloud over MSCHF’s and other artists’ works—even those that have nothing to do with Vans—that provide incisive commentary and critique of consumerism and famous brands.”
MSCHF also asked the court rescind the direction that MSCHF escrow all of its revenue from the Wavy Baby release. “The parties neither briefed nor argued this issue, and it is contrary to law,” it said, further adding that it “identified no cases where a court has ordered a purported trademark infringer to escrow its gross revenues for any purpose.”
Vans is scheduled to file its opposition papers to this motion on or before June 10. MSCHF is slated to submit its reply on or before June 17.