Seven months after winning a U.S. court preliminary injunction against Walmart, restricting the Arkansas-based company from selling any more shoes made in the likeness of Vans, the VF-owned skate shoe brand was back in court last week complaining that the nation’s largest retailer isn’t complying with the court’s decision.
This came after a failed attempt to get the U.S. District Court in California to put some teeth behind its March 31 ruling when Vans filed a motion to show cause for civil contempt in the trademark infringement lawsuit. But on Oct. 22, Judge David Carter, the presiding judge in the March decision, denied the plaintiff’s motion to show cause.
“The Court nonetheless finds that these allegeldy [sic] infringing shoes found in two of Walmart’s 3,500+ stores represent a ‘few technical violations,’ such that Walmart is still in substantial compliance with the injunction,” Carter wrote.
Carter cautioned that the ruling was not a vindication of Walmart’s performance under his order, writing that “these incidents, coupled with the other violations above, could indicate a pattern of negligence.”
“While the Court finds that the evidence shows Walmart has substantially complied with the injunction, the Court may reconsider upon a showing of continuing violations,” he added.
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Nevertheless, the denial of the motion was framed as an outright victory for Walmart, which complained at the hearing before Carter in March that prohibiting it from selling these products would cost the retailer tens of millions of dollars.
“Walmart took appropriate action and removed the inventory in question when the matter was brought to our attention earlier this year. We take court orders seriously and are pleased that the district court has affirmed our compliance with the injunction. We are reviewing the amended complaint and will respond in court as appropriate,” Walmart said in a statement provided to Sourcing Journal on Tuesday.
Not about to give up against what it sees is a continuing infringement on its brand as well as consumer deception, Vans filed an amended complaint last week in a 142-page document that included more recent allegations on top of what it listed in its original 106-page complaint in November last year.
The latest filing with request for jury trial includes side-by-side comparison photos of Vans originals and Walmart’s extremely similar-looking brands that the shoe brand says postdates the March 31, 2022 injunction. The California-based company that rose to prominence in the 1970s and ’80s alongside the rise of skateboarding contends that Walmart continues to sell more than two dozen knockoff brands, despite the court’s injunction.
“Walmart refused to address any of Vans’ concerns and defiantly continued selling the copycat shoe up to the present. Indeed, rather than addressing Vans’ concerns, Walmart turned around and introduced over twenty more knockoff shoes. Walmart’s continued usage of Vans’ intellectual property and further encroachment on V ans’ rights—after being placed on unequivocal notice of its infringement—confirms Walmart’s willful infringement and bad faith intent to profit from Vans’ goodwill,” Vans said in the amended complaint.
The Nov. 8 filing also names as defendants The Dollmaker LLC, Trendy Trading LLC and ACI International, the last of which Vans accuses of being in cahoots with Walmart to sell knockoff shoes in Canada and other countries.
Heavily at issue is Walmart’s insistence on using a mark strikingly similar to the patented Vans “jazz stripe” along the sides of their shoes in question.
Walmart’s version of the stripe appears more like a heavily italicized Pi symbol and on some styles Vans displayed in its filing, that difference in the stripe was about the only element plainly distinguishable.
“On its infringing shoes, Walmart blatantly copies at least two-thirds of the Side Stripe Mark, as well as the exact sizing and placement of the Mark on the shoe upper,” the document states. “Walmart’s side stripe is confusingly similar to Vans’ Side Stripe Mark even when compared side by side.”
This filing is just the latest in what has been a heavily litigious year for Vans. Earlier this year the company filed a trademark infringement lawsuit against the subversive art collective MSCHF for its satirical take on Vans’ hallowed “jazz line,” which it called its “Wavy Baby” line. Just as in the Walmart case, the judge issued a temporary restraining order and weeks later, Vans was back in court filing a complaint that alleged MSCHF was violating said restraining order by not canceling all preexisting orders and asked that the art collective be “held in contempt of court.”
As with the Walmart case, the judge in the MSCHF case declined to go so far as to issue a contempt of court order, though the ‘Wavy Baby’ shoes no longer appear for sale on the MSCHF website.
Of course, MSCHF’s main purpose is subversive art, whereas Walmart’s business is retail sales.
Consumer confusion was a key factor in the decision on March 31, 2022 when Carter issued a preliminary injunction against Walmart, writing “the high degree of similarity between Walmart’s allegedly infringing shoes and the respective Vans models raises an inference of intent to confuse.”
Walmart, in its defense in the March hearing, claimed that consumer confusion was minimal, though a 2014 tweet from the Walmart official account asking its customers whether they “would mind a shoes [sic] similar to Vans,” didn’t help the retail giant’s case.
In the latest court filing, Vans attorneys show examples of Walmart and its partners in social media influencing conflating the Walmart products with that of Vans, “explicitly selling them as ‘Vans Dupes’ or ‘Vans Knockoffs’” the documents claim, openly price-comparing the similar-looking shoes side by side.
Attempts to reach McGuire Woods, the Los Angeles-based law firm representing Vans, were unsuccessful.
Vans isn’t the only footwear brand that’s tripped up Walmart, which this summer settled a lawsuit claiming it sold counterfeit Yeezy knockoffs.