Fashionable Parody Or A Trademark Infringing Wearable Sneaker? The Second Circuit Hears Both Sides

• Published date: 17 October 2022
• Subject Matter: Consumer Protection, Intellectual Property, Consumer Law, Trademark
• Law Firm: Crowell & Moring
• Author: Ms Preetha Chakrabarti, Suzanne Trivette and Alexa La Barbiera

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".¹ 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.² 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. Grimaldi³, 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".⁴ 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.⁵ 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...