In Vans, Inc. v. MSCHF Product Studio, Inc., No. 22CV2156WFKRML, 2022 WL 1446681 (E.D.N.Y. Apr. 29, 2022), shoe company Vans, Inc. (“Vans”) prevailed in obtaining a temporary restraining order and preliminary injunction against art collective MSCHF Product Studio, Inc. (“MSCHF”), restraining promotion and sale of its WAVY BABY shoes. Vans asserted that the WAVY BABY shoes infringed the company’s trademarks and trade dress. MSCHF appealed to the United States Court of Appeals for the Second Circuit. Oral arguments will be held later this month.

Defendant MSCHF previously appeared in the national spotlight last year when the company partnered with rapper Lil Nas X to sell modified NIKE shoes, dubbed SATAN SHOES. Nike sued for infringement, false designation of origin, and dilution. Nike, Inc. v. MSCHF Product Studio, Inc., 2021 WL 1201086 (E.D.N.Y.). The parties settled in April 2021.

The WAVY BABY shoes currently at issue are a result of a collaboration between MSCHF and the rapper Tyga. Vans claimed the shoes infringed the trademarks and trade dress of its OLD SKOOL skate shoe. See the shoe comparison from the Complaint below:

Source: Complaint at 3, Vans, Inc. et al v. MSCHF Product Studio, Inc., Docket No. 1:22-cv-02156 (E.D.N.Y. Apr 14, 2022).

Source: Complaint at 4, Vans, Inc. et al v. MSCHF Product Studio, Inc., Docket No. 1:22-cv-02156 (E.D.N.Y. Apr 14, 2022).

This case has the potential to address whether MSCHF’s shoes, and other types of “expressive merchandise” that use trademarks without authorization, are artistic expressions protected from trademark infringement claims by the First Amendment. MSCHF argues its shoes are such artistic expressions and must therefore be evaluated under the Rogers test.

In Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), actress Ginger Rogers brought suit against the makers of the movie “Ginger and Fred” for using her name without permission and falsely implying her endorsement of or involvement in the film. The Court found for the filmmakers, holding that the Lanham Act should only apply to artistic works “where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” Id. at 999. The resulting test permits artists to use unauthorized trademarks in artistic expressions, as long as they are not explicitly misleading as to source or content.

The District Court granted the injunction without evaluating the WAVY BABY shoes on their artistic merit. The Court did consider whether the shoes were a successful parody and found that the extensive similarities between the OLD SKOOL and WAVY BABY shoes and the presences of actual confusion in the marketplace cut against MSCHF conveying a satirical message.

On appeal, MSCHF asserts the shoes should be viewed as artistic expressions subject to the Rogers test. As evidenced by the more than dozen amicus briefs filed on both sides of the issue, the trademark community is highly interested in whether new law may result from MSCHF’s appeal.