Allegations of trademark infringement against celebrity-founded brands are not new. In 2015, resort-wear brand Island Company LLC sued Kendall and Kylie Jenner for use of the phrase “Run Away, Fall in Love, Never Return,” which resembled Island Company’s trademark phrase “Quit Your Job, Buy a Ticket, Get A Tan, Fall In Love, Never Return”. The case was settled in January 2016. In 2021, an Italian tribunal ordered social media influencer Chiara Ferragni to pull her snow boots from her footwear line, finding infringement on Tecnica group’s trademark for the world-renowned Moonboot. Now, Vans, Inc., a sneaker company born out of 1960s California counter-culture, alleges trademark infringement by MSCHF, a Brooklyn art collective endorsed by rapper Tyga.
On Wednesday, September 28, 2022 the U.S. Court of Appeals for the Second Circuit heard oral argument in Vans. Et al. v. MSCHF Product Studio Inc.. Vans argued that the District Court did not err in its finding that MSCHF’s “Wavy Baby” sneaker infringes on Vans’ “Old Skool” Trademark.
MSCHF counsel centered his argument on the premise that the “Wavy Baby” sneaker is a parodic, “biting commentary” on Vans’ “Old Skool” sneaker that does not amount to trademark infringement. MSCHF relied on the Second Circuit case Rogers v. Grimaldi, where the Court had established that “minimally relevant use of a celebrity name in the title of an artistic work was not barred by statute where it did not mislead as to content or denote authorship, sponsorship, or endorsement”. In response, Vans noted that the Second Circuit had strictly limited the application of Rogers to apply to the titles of books.
The panel asked MSCHF to explain the supposed biting commentary on Vans, and counsel cited to Yankee Publ’g, Inc. v. News Am. Publ’g, Inc. that notes “[n]ot every parody will be understood by everyone.” After being further pressed for a concrete response, counsel stated: “MSCHF . . . believe[s] that this design [the Old Skool shoe] . . . has become bland, mass culture. And so in order to comment on that, MSCHF took that shoe, they put it through a filter to do what’s known as ‘liquify’ it, and created digitally a very wavy image, kind of like a ‘funhouse mirror’.”
MSCHF then argued that the “Wavy Baby” shoe is intended to be a statement piece and a work of art, not to be worn as a skate shoe (like the Vans “Old Skool” shoe) or, more succinctly, worn even a shoe at all. But the Court did note that MSCHF has sold several hundred pairs of its shoes, suggesting that MSCHF’s actions walk a fine line, between art and a consumer product. In further support of the “Wavy Baby” shoe functioning as a piece of art, MSCHF noted that that there is a label on the bottom of the sneaker warning that the shoe is “extremely wavy” and not intended to be worn for skating and that the shoe is recognized as art by art professionals, and will in fact be displayed in upcoming exhibitions at the Perrotin Gallery and Art Basel.
When asked about the Lanham Act test for trademark infringement—whether there is a likelihood of confusion—counsel replied that even if it were true that there was a likelihood of confusion between the “Wavy Baby” and the “Old Skool” shoe, Rogers controls, and “parody and expression are so important under the First Amendment that sometimes the trademark laws have to yield.”
Counsel for Vans in turn focused her argument on the Lanham Act’s concern with post-sale confusion, MSCHF’s inability to exercise a First Amendment right to speech because the “Wavy Baby” lacks commentary that warrants protection, and that the “Wavy Baby” is an unsuccessful parody.
Vans noted that in Vans, Inc. v. Walmart, Inc., the Central District of California found that Vans had shown secondary meaning in the “Old Skool” trade dress, indicating that the “Old Skool” is recognizable as a Vans shoe. Further, Vans argued that there is a likelihood of confusion at different points of time in the life cycle of the “Wavy Baby,” such as advertisement, point of sale, and post-sale. At point of sale, the MSCHF website does not indicate that MSCHF is not collaborating with Vans, nor that it never received permission from Vans to create the “Wavy Baby” sneaker.
Yet, MSCHF contended that Vans’ argument presupposes that purchasers of the “Wavy Baby” tend to wear the shoe. If the “Wavy Baby” is indeed a “collectible” or a piece of art, the post-sale likelihood of confusion argument dissipates. MSCHF’s rebuttal cited Campbell v. Acuff-Rose Music, Inc., affirming that “when it comes to parody, context is everything.” The “Wavy Baby” worn by someone in the streets creates a likelihood of confusion with the Vans “Old Skool.” The “Wavy Baby” displayed at Art Basel is unlikely to confuse consumers.
Vans also countered MSCHF’s argument by asserting that the “Wavy Baby” is trademark infringement and not protected parody speech, because the First Amendment only protects commentary, “some discernable satire or comedy or joke.” While a “successful parody evokes the original so people get what it’s about, but then it tells people that there is a comment on the original or a joke about the original,” Vans argued that there is no relevant commentary in the “Wavy Baby.” Thus, it is an “unsuccessful parody” in which there is no protectable First Amendment expression.
We will continue to monitor this case, as the result could have broad implications for trademark owners vis-à-vis arguments of fair use.
 Rogers v. Grimaldi, 875 F.2d 994 (1989).
 Id. at 3.
 Yankee Publ’g, Inc. v. News Am. Publ’g, Inc., 809 F. Supp. 267 (1992).
 Vans, Inc. v. Walmart, Inc., No. 821CV01876DOCKES, 2022 WL 1601530, at *14 (C.D. Cal. Mar. 31, 2022).
 Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 589 (1994).