Vans claims MSCHF violates Wavy Baby injunction

Vans has asked a federal court in New York to find that MSCHF disregards a recently ordered temporary restraining order and preliminary injunction that prohibits it from continuing to offer and/or fulfill existing orders for the allegedly infringing Wavy Baby sneakers. In a letter to Judge William Kuntz of the U.S. District Court for the Eastern District of New York dated May 12, Vans’ attorney alleges that despite the court’s April 29 decision and order, granting Vans’ motion for a temporary restraining order and a preliminary injunction, MSCHF “continued to fulfill orders and ship its counterfeit Wavy Baby shoes in violation of the injunction.”

“Despite the unambiguous wording of the injunction,” Vans claims to have learned from “multiple sources that MSCHF continued to ship the counterfeit shoes to customers even after the injunction was issued and also refused to specifically, Vans says it maintains evidence that two MSCHF customers who ordered the Wavy Baby sneakers in April “received notifications from the shipping carrier of MSCHF indicating that they had received [their] Order Information.” Beyond that, Vans claims to have evidence that one of its own employees who ordered the allegedly counterfeit shoes on April 18 “received a shipping notification that their order had been picked up. by the carrier at a warehouse in China operated by MSCHF’s manufacturer/distributor” on May 11, nearly two weeks after the injunction was issued.

“Each of [these] violations, on their own,” serves to violate the court order, which “clearly and unambiguously” prohibits MSCHF from “fulfilling[ing] any order of counterfeit shoes” and obliges him to “‘cancellate and/or cancel’ any unfulfilled order”, says the lawyer for Vans. As such, they “merit the conclusion that MSCHF disregarded the order of this court”, according to Vans, and “also demonstrate that MSCHF intentionally and repeatedly flouted the authority of the court”. Beyond that, Vans says it’s “highly likely that other similar incidents will come to light through Vans’ briefing and contempt motion hearing.”

In light of the foregoing, Vans argues that a contempt conviction and appropriate penalties are “necessary to ensure MSCHF’s compliance with its obligations and to protect Vans’ intellectual property rights from further irreparable harm.” Such a finding is appropriate here, argues the attorney for the Southern California-based shoe brand, because “(1) the [court’s] order which was violated by [MSCHF] is ‘clear and unambiguous’; (2) the evidence of non-compliance is “clear and convincing”; and (3) [MSCHF] did not “diligently attempt to comply [with the order] in a reasonable way.

In addition to a contempt order, Vans argues that the imposition of sanctions is “necessary to immediately ensure that MSCHF conforms its conduct to the unambiguous instructions of the court”, including “a coercive fine to ensure that MSCHF in accordance with the order of the court in the future”. On this point, Vans cites the awarding “a fine of $25,000 plus a fine of $10,000 for each day that the objector failed to comply with the court order” from the U.S. District Court for the Southern District from New York to Cherie Amie, Inc. vs. Windstar Apparel, Corp. He further argues that “an award of attorneys’ fees for the cost to Vans of bringing MSCHF’s contempt to the Court’s attention should also be awarded, as MSCHF has been widely advised of the injunction and nevertheless deliberately ignored his obligations”.

Judge Kuntz responded to Vans’ letter on May 12, ordering MSCHF to file a response to Vans’ request for contempt and sanctions “by May 20.”

Vans made headlines last month when it filed a lawsuit against Brooklyn-based “art collective” MSCHF, alleging that “despite, or perhaps because of, [its] Knowing Vans’ rights and the substantial value of Vans’ trademarks and trade dress, MSCHF embarked on a campaign to build upon Vans’ rights and the reputation it has developed in its iconic shoes” by offering a shoe of its own that “Blatantly and unequivocally incorporates Vans’ iconic trademarks and trade dress.” In its complaint, Vans claims that by means of the Wavy Baby sneaker, MSCHF is willfully infringing on its rights trademark and trade dress in the 40 Year Old SKOOL Footwear, including the Side Stripe trademark, and also engages in unfair competition, trademark dilution and unfair trade practices under the laws of the State of New York.

MSCHF (unsuccessfully) argued in response to Vans’ request for a temporary restraining order and preliminary injunction that Vans is unlikely to succeed on the merits of its trademark infringement (and dilution) claims because than the Wavy Baby sneakers are “a work of art protected by the First Amendment” and “no reasonable consumer would be confused by thinking that Wavy Baby was produced or endorsed by Vans. MSCHF further argued that an injunction prohibiting it from offering the Wavy Baby shoes would “unconstitutionally restrict [its] free speech because his parody of Vans is First Amendment protected speech.

MSCHF’s attorney has since filed a notice of appeal with the United States Court of Appeals for the Second Circuit in response to the district court’s granting of a temporary restraining order and a preliminary injunction.

The case is Vans, Inc. v. MSCHF Product Studio, Inc., 1:22-cv-02156 (EDNY).

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