Vans v. MSCHF: Are Tyga’s “Wavy Baby” Shoes Artistic Expression?

Vans v. MSCHF: Are Tyga’s “Wavy Baby” Shoes Artistic Expression?

Just over 6 months ago, on April 18th, the rapper Tyga presented a new collaboration with a local Brooklyn art collective, MSCHF – together they created the “Baby Wavy” shoes.^[1] The shoes sold out in only ten minutes after Tyga wore them in the “Freaky Deaky” music video he made with Doja Cat last February.^[2]

Soon after, Vans filed suit in the Eastern District of New York against MSCHF for trademark and trade dress infringement.^[3] MSCHF is not new to lawsuits from shoe brands, as it was involved with Nike in a legal battle last year over the “Satan shoes,” a collaboration they did with hip hop artist Lil Nas X.^[4] Vans eventually settled with Nike, removed the shoes from the market, and offered refunds to the buyers.^[5]

Vans claims that the shoes have many similar details: the side stripe, the visible stitches, a canvas upper, and the sole.^[6] Also, the shoe box has the same colors and style of writing on the sides as the Vans shoe box.^[7] The main difference is the wavy sole that characterize the art collective’s design. Vans Inc. has registered with the U.S. Patent and Trademark Office some of these elements, specifically Vans has registered their side stripe mark for use on footwear as well as their distinctive stitching pattern.^[8] The following image shows the similarities between the shoes.^[9]

In their initial statement released on April 14th, 2022, MSCHF said that, “The Wavy Baby is transformational above and beyond anything Vans would ever attempt.”^[10] They claimed that the shoes were artistic expression, and therefore the argument can be made their shoes are protected under the First Amendment.^[11] Then the company goes on to say, “MSCHF believes in the freedom of expression, and nothing is more important than our ability, and the ability of other artists like us, to continue with our work over the coming years. Fundamentally, artists play with culture. Sampling is a core act of creative expression.”^[12] and that their aim was to criticize the “sneakerhead” culture.^[13]

However, the Eastern District of New York found that “the shoes do not meet the requirements for a successful parody” and “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.”^[14] Judge Kuntz stated that because of the “striking visual similarities” and packaging, there is a high likelihood of consumer confusion between Vans shoes and Tyga’s Wavy Baby.^[15] In this case the court applied the factors set in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961). The 8 factors are: the strength of the trademark, the degree of similarity between the two marks, the proximity of the products and their competitiveness with one another, the likelihood the prior owner may “bridge the gap” in the markets for the products, evidence of actual consumer confusion, the defendant’s good faith in adopting its imitative mark, the quality of defendant’s product compared with the plaintiff’s product and the sophistication of the buyers.^[16]

In particular “the Court finds Plaintiffs have demonstrated a likelihood of prevailing on the issue of consumer confusion.”^[17] Moreover, “Plaintiffs have spent forty-five years, and millions of dollars in advertisement and marketing, to develop the brand recognition and success the Old Skool shoes and associated Trade Dress enjoy today” and that they “have sufficiently demonstrated a likelihood of irreparable harm.”^[18]

For these reasons, the court prohibited the selling of more shoes and ordered MSCHF to cancel all the orders.^[19] Additionally, the defendants had to put the funds gained from the orders into escrow, this way money could possibly be returned to the costumers.^[20]

On Wednesday September 28, the 2d Circuit heard MSCHF’s appeal. Senior Circuit Judge Dennis Jacobs said that Vans’ shoes might be the “perfect object of parody to distort” in order to communicate that an “iconic symbol of sneaker culture can be made absurd and useless.”^[21]