A New York judge imposed a temporary restraining order and a preliminary injunction against MSCHF on Friday, forcing the art collective to stop selling the “Wavy Baby” line of sneakers it produced in collaboration with hip-hop star Tyga in the wake of a trademark dispute with Vans.
MSCHF, which ran afoul of Nike last year after debuting repurposed Nike Air Max 97s called “Satan Shoes” in collaboration with rapper Lil Nas X, appealed the ruling on Monday. The Satan Shoes, marked by a pentagram pendant a drop of human blood mixed in with red ink in the sole alongside, only lasted two weeks last year until a settlement with the Swoosh led to their swift recall.
Vans complained to a New York federal court that MSCHF’s shoes violated its intellectual property rights by incorporating its trademarks and trade dress, both of which imitate its iconic Old Skool sneakers.
The court determined that the plaintiffs have demonstrated that the Wavy Baby shoes will “likely cause consumer confusion” and harm sales, reputation and goodwill, Judge William Kuntz wrote in his decision and order.
Vans and MSCHF did not respond to requests for comment.
Vans said the Wavy Baby shoes and associated advertising infringe on its “jazz stripe” trademark, “Flying V” mark, “Off the Wall” mark, waffle sole mark and Vans footbed logo. They also said MSCHF infringed on the sneaker’s trade dress—the overall visual and promotional appearance that signals to a buyer that they are buying a Vans shoe—namely by evoking the company’s Old Skool and Off the Wall branding as well as its shoe box.
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Vans initially filed the lawsuit on April 14, alleging trademark infringement, false designation of origin, unfair competition, unfair trade practices and trademark dilution. MSCHF released 4,306 pairs of Wavy Baby shoes for sale on April 18.
MSCHF has opened itself up to controversy over the past year as it habitually toes the line of trademark infringement with other releases that lampoon popular brands. The Brooklyn art collective in January baited further litigation when it launched a line of motorsport-inspired long-sleeve shirts aptly named the “Cease & Desist Grand Prix.”
The shirts included logos of major brands like Walmart, Amazon, Starbucks, Disney and others on the fronts and backs. The website where the shirts were sold, CDGrandprix.com, said Subway “won the race” by being the first brand to send MSCHF an actual cease-and-desist letter to take the product down. The art collective said the limited-edition shirts sold out. None of the brands involved have publicly said whether they’s taken legal action against the MSCHF.
Meanwhile, the collective recently embarked on its official foray into the footwear space with the launch of MSCHF Sneakers, which will release a shoe roughly once a month. The first drop in March riffs off Nike’s popular Air Force 1 sneaker, called the Tap3. But this time around, the company isn’t just retooling the existing shoe, instead constructing sneakers from the ground up in a move that might help the company avoid more legal headaches.
But the current suit indicates that MSCHF is all too willing to push buttons. Vans supplied footage from a recent Complex podcast during the April 27 hearing on its motion, in which one of the media brand’s show’s hosts told MSCHF chief creative officer Lukas Bentel of the similarities between the Vans shoes and the Wavy Baby sneaker.
“Everyone I’ve spoken to about this shoe says that if someone was walking down the street…if I asked you to tell me what the person across the street was wearing, they’d say they’re wearing a pair of Vans,” said podcast co-host Matt Welty, an editor for the Gen Z and millennial street culture outlet. “If you walked across the office, if you were wearing a pair of those sneakers, it’s a pair of Vans.”
Bentel acknowledged that the “base of the shoe before our transformation is of course a Vans, and I think there’s no doubting that.” He defended the decision saying that it was “a really unique transformation Vans would not have done,” before admitting that MSCHF is “trying to push those boundaries of… what we as people interacting in the world can touch and mess with.”
During the podcast, Bentel also noted that the Vans-inspired sneakers are part of his company’s impetus for pushing the MSCHF Sneakers brand, a change from the collective’s previous shoe releases, which were primarily developed as art pieces.
MSCHF retained approximately 280 pairs of the Wavy Baby shoes because of fulfillment errors stemming from the wrong sizes being shipped to consumers, it said in the April 27 hearing. But Vans countered that if the shoes were art pieces meant to be displayed and not worn, then there would be no need for consumers to receive a specific shoe size.
In his order, Kuntz challenged the defendant’s argument that few of the buyers of Wavy Baby shoes were likely unsophisticated enough to not be able to differentiate between the MSCHF line and the Old Skool shoes, calling it “merely supposition.”
MSCHF offered “no persuasive rationale as to why the Wavy Baby shoe’s sale solely on the defendant’s website and application poses such a barrier to entry that only sophisticated consumers would have purchased the shoe,” Kuntz wrote in the order.
With that said, Kuntz determined that Wavy Baby sneaker does not satisfy the requirements to be considered a parody of Vans’ Old Skool. The MSCHF shoes lack an “element of satire, ridicule, joking or amusement” to demonstrate to an average consumer that they are not manufactured by Vans, he added.
As part of the injunction, MSCHF is required to halt not just the sale and ordering of the Tyga-promoted shoes, but also any related advertising and promotion. Additionally, it must refund paying customers in the event Vans prevails in the larger suit.
This isn’t the only major trademark suit involving Vans in recent months. The VF label sued Walmart in November, identifying more than 20 “blatant knockoff versions of Vans shoes” and alleging trademark infringement, unfair competition and false designation of origin against both the Old Skool line and its Sk8-Hi sneaker.
Like the MSCHF example, a federal court judge issued a preliminary injunction in April on the more than two dozen Walmart sneakers—Vans added more styles to its complaint after its initial filing—ruling that Vans was “likely to suffer irreparable harm absent injunctive relief.”