Photo from Nike

Alexandria Lewis & Ian Rothweiler are JD Candidates at Southwestern Law School. This article was originally written as a requirement for Victoria Burke and John Begakis’ course on Fashion Law.

Trademark Infringement / Anti-Dilution – Nike v Warren Lotas

Warren Lotas partnered with Jeff Staple to "reinterpret" Staple’s original 2005 collaboration with Nike on the classic Nike Dunk shoe. Nike wasted no time and quickly filed a trademark infringement and anti-dilution lawsuit. The shoes and respective trade dress were nearly identical replicas of the original Dunks, so Nike had a strong case that the Lotas shoes were likely to confuse the general public as to their origin, source, sponsorship, or affiliation with Nike.

As a defense to the trade dress rights infringement claims, Lotas claimed that the tread on the sole of the shoes served a utilitarian function because they are essential to their use and purpose, and thus the quality of the sole.

Staple, who has a history of working for Nike and is the registered owner of the Staple Pigeon brand (seen on Lotas shoes), was left out of the litigation between Nike and Lotas. This is strange, as he was a co-partner in the Lotas product and his trademark pigeon is part of the trade dress of the allegedly infringing shoe. Lotas effectively received constructive approval from Staple to go forward with the Dunk lookalike.

Not only was Nike seeking injunctive relief to enjoin Lotas from selling the allegedly infringing sneakers, but also monetary damages. It is hard to imagine that the existence of these sneakers will damage Nike’s brand (worth $160 billion) enough to warrant monetary damages. The unfortunate reality for Lotas is that Nike has unlimited resources to take on nonstop litigation against designers, manufacturers, and distributors to protect their trademarks. This creates a chilling effect that moves up the supply chain, instilling fear of a pending Nike lawsuit among all involved parties. If trademark law ultimately serves to protect the consumer, do these disputes really put the consumer at risk or is Nike just flexing their muscles and depriving many would-be purchasers of new and potentially more appealing designs because they can?

Photo from MSCHF

Trademark Infringement - Nike v MSCHF

MSCHF, the Brooklyn-based art collective known for distorting the look and feel of well-known products and services, employs several risqué and even arbitrary design methods. Just look at its squeaking rubber chicken bong and YouTube channel presenting videos of a vat of mayo or a photograph of Pete Davidson. Needless to say, MSCHF reimagines popular items and brands to offend more conservative sensibilities.

In early 2021, MSCHF leaned into its disruptive attitude by collaborating with rapper Lil Nas X to craft 666 pairs of Nike Air Max 97 shoes with a Satan-themed twist. The expensive sneakers featured an inverted cross and a bronze pentagram charm embossed with “LUKE 10:18”, a Bible verse which reads “I saw Satan fall like lightning from heaven”. The design model was thought up to promote the Old Town Road artist’s devil-themed music video, Montero (Call Me by Your Name), as well as to increase awareness about MSCHF’s wicked genius.

Most Nike enthusiasts were bummed when the shoes sold out within 60 seconds. Religious or spiritual beliefs aside, so-called “sneaker heads” wanted a pair of rare 97s containing a drop of human blood in the sole.

While progressive critics praised MSCHF’s devilish design, Nike sued MSCHF for trademark infringement. Nike alleged confusion and deception surrounding the shoes’ source because MSCHF’s use of the iconic Nike swoosh implied authorization. Nike also alleged dilution by trademark tarnishment, as enraged customers boycotted original Nike products, hurting their pockets and long-held goodwill with consumers.

Nike obtained a permanent injunction order restricting MSCHF’s production, promotion, and sale of ‘Satan Shoes’. Nike also ordered all attorney fees and profits collected from shoe sales, reaping all the benefits of MSCHF’s creative, albeit mischievous work.

Unsurprisingly, Nike didn’t react with the same disapproval toward MSCHF’s ‘Jesus Shoes’ which had dropped earlier. Celebrities as well-known as Drake sported them. This seems to be due to Christian imagery not holding the stigma that Satanist imagery does today. Nike seems to sue for trademark infringement subject to society’s tolerance of alternative views, and MSCHF exists to push our boundaries.

The post A Brief Recent History of Nike’s Trademark Battles appeared first on IPOsgoode.

Photo from Getty Images

Lauren Romero is a JD Candidate at Southwestern Law School.

“That which we call a rose by any other name would smell as sweet” … but would that which we call a brand by any other name be as hype?

Founded in 2016, Los Angeles-based streetwear brand formerly known as Chinatown Market offers everything you’d need to fit in on Fairfax Avenue. Appearing on the “” podcast, founder Mike Cherman cites the New 91��ɫ street markets that he visited as a kid as inspiration for its name. The problem? As a white man, Cherman is an outsider who is profiting off the Chinatown name.

“Cultural appropriation” usually receives little attention or punishment from courts. Although huge name brands are often called out for it , “cultural appropriation” is a difficult cause of action to present. In a rare occurrence where cultural appropriation was brought to the court’s attention, the Navajo Nation brought a trademark infringement claim against retailer Urban Outfitters (UO). The case, filed in 2012 in the U.S. District Court in New Mexico, alleged that UO infringed the NAVAJO trademark in a way that inaccurately linked the Navajo Nation with designs printed on UO garments. While cultural appropriation was not a cause of action in this case, the discussion surrounding white-owned companies’ use of designs, names, and clothing belonging to another culture arose to the forefront of fashion law. Eventually, the case was settled for an undisclosed amount and UO agreed to collaborate with the Navajo Nation on authentic Native American jewelry. Issues of cultural appropriation continue to play out in the court of public opinion.

Photo from Twenty20.com

. Hashtags like #StopAsianHate flooded social feeds to bring attention to horrific attacks and show solidarity with the AAPI community. After noticing Chinatown Market’s silence, Julian Han Bush created an for Chinatown Market to rebrand. In the petition, Bush explains that “Chinatown is not for sale” and discusses the cultural significance of Chinatowns.

Businesses and community members in New 91��ɫ’s Chinatown suffered due to the COVID-19 pandemic. Lack of foot traffic resulted in lack of customers for many family-owned businesses; racism cast its ugly shadow on the once lively streets of Chinatown as community members fought against racist attacks. As a response, two New 91��ɫers began an initiative called to help struggling small businesses. They raised over $2 million to aid businesses in keeping their doors open. While members of the community helped one another during this time, Chinatown Market posted an Instagram story and offered a single shirt, with proceeds apparently going to AAPI organizations.

Photo from Market

The brand drew waves of criticism from folks on Instagram who argued that it was coming up short. Chinatown Market released a on May 20, 2021, acknowledging the discourse surrounding their name. They announced a name change along with a decision to sell all existing merchandise and donate the proceeds to non-profit organizations supporting the AAPI community. On August 15, Chinatown revealed their rebrand and began promoting new designs emblazoned with their new name, “Market”.

While a rebrand and donations are steps in the right direction, the conversation remains open. Can designers respectfully pay homage to cultures that they don’t belong to? Should they? These questions may not have solid answers, but I would like to provide some tips on how to appreciate cultures without exploiting them or taking them as your own.

At the 2015 Met Gala, Rihanna turned heads and broke necks in Chinese designer Guo Pei’s design. The theme for that year’s Gala was “China Through the Looking Glass,” which focused on the impact of Chinese design on Western fashion. As usual, Rihanna understood the assignment with the stunning design, which featured a massive canary yellow cape with waves of embroidered florals. While many high-profile guests chose to wear American or European designers, Rihanna highlighted a Chinese designer and gave visibility and appreciation to AAPI designers.

As individuals, we can shop consciously. Various streetwear brands similar to “Market” are AAPI-owned and/or do not appropriate AAPI culture. For example, Akashi-Kama is a sustainable Japanese-American streetwear brand founded by Alec Nakashima, who draws inspiration for his designs from both Japanese culture and American streetwear.

Noragi Jacket by Akashi-Kama

By putting our wallets where our mouths are, we can ensure that AAPI businesses flourish and that we are contributing to cultural appreciation and not appropriation.

The post The Market Value of Chinatown’s Culture appeared first on IPOsgoode.

Photo by (Pexels)

Meena Alnajar is an��IPilogue��Writer, IP Innovation Clinic Fellow,��and a 2L JD Candidate at��Osgoode��Hall Law School.

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On July 26, 2021, the fashion brand . The complainant alleges that websites are to sell counterfeit products infringing on the ‘Fear of God’ trademark. With all things moving virtually, we are starting to see new strategies for the counterfeit market. Electronic-commerce, or ‘e-commerce’, is an expedient way for businesses to establish themselves online and create a fruitful marketplace, but it could also act as new vehicle for concealing the counterfeit industry.

Counterfeiting with the intent of using them as valid trademarked items, such as fake merchandise from a well-known brand like, in this case, Fear of God. Online retailers have noted an uncontrollable surge in counterfeit products, with some sources stating that sold online are fakes. In Canada, the punishment for someone or imprisonment for up to five years. However, e-commerce makes conviction trickier in the case of Fear of God’s suit. Web designers can effectively imitate popular online retailers or claim to be resale sites authorized to sell the trademarked items, promoting uncertainty as to which sites are counterfeiters. Fear of God’s claim is driven by the fact that the defendants have concealed their identity and constructed a “counterfeit network” with fake seller profiles. Fear of God’s complaint states that the matter can be amended, if�� “defendants regarding their identities.”

While launching lawsuits may be an effective long-term approach, they may not act fast enough to resolve online counterfeit. Counterfeiters can continue to create e-commerce sites selling counterfeit goods under different addresses and owners. By 2017, major e-commerce site its products sold by marketplace listings of outside sellers, some of which may be counterfeiters. counterfeit craze, stating in their ‘Risk Factors’ section: “Under our seller programs, we may be unable to prevent sellers from collecting payments, fraudulently or otherwise… we also may be unable to prevent sellers in our stores or through other stores from selling unlawful, counterfeit, pirated or stolen goods” and accepts possible criminal liability for counterfeit sales. Although Canada has a in place, legal experts have outlined that the crime requires extensive evidence to warrant a conviction. Federal agents also perform of alleged counterfeit crimes. In the time it takes to obtain evidence and wrap up an investigation, the seller has probably transformed into another web address or online persona.

If the law cannot act fast enough against e-commerce counterfeit, what can? Two avenues may tackle e-commerce counterfeit more expediently. The first is requiring a person behind the e-commerce. India is significantly changing its e-commerce policy to require ’ This nodal person of contact denotes an alternate authority or legal department that can assure proper implementation of all the country’s consumer regulations and e-commerce policy. With a legal source to verify the platform’s content, it may be easier to flag illegitimate or counterfeit sellers in the future. Another avenue is fighting e-commerce with what feeds it: technology and big data. E-commerce giant Alibaba announced the in 2017 and harnesses artificial intelligence (AI) and big data to keep the platform free of fake sellers. The company disclosed that the Alliance’s technological strategy successfully seized of fake goods in 2016. Perhaps fighting e-crime with e-stop-and-seizure is optimal to limit counterfeit products in the online space.

Counterfeit can deteriorate brands as consumers cannot be certain what they are purchasing, but the fight against counterfeit may never stop. Regardless of how counterfeit is combatted, be it through legal action or AI, creating new online businesses, even for unethical purposes, has never been easier.

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On November 9, 2020, the hosted its annual Fashion Law Panel (virtually, of course). The panelists consisted of a range of industry experts, including the founder of the OFLS and recent graduate of Osgoode, At this panel, attendees gained insight on what fashion law entails, how to get involved with it, and where it is predicted to go in the future.

Often, the OFLS is asked what fashion law is. It is quite difficult to provide a succinct answer to this question because, as of boutique branding law firm Froese Law explained, the practice of fashion law is relatively new, especially in Canada. It is also a niche area of law. But because it is a growing field of law, based on the types of work that the panelists shared, it seems to include a lot. Legal work related to fashion can involve litigating trademark infringement, advising foreign fashion houses how to enter the Canadian market, guiding small brands in growing their business, and, recently, regulating the use of brands by influencers on social media. As such, fashion law does not fit into a single neat box. Instead, it involves legal issues within the fashion industry that find their solutions through the intersection with other related legal fields, such as entertainment, business, ecommerce, technology, privacy, and intellectual property.

In order to actually work in fashion law, the panelists cautioned attendees to be as marketable as possible and to be open to all opportunities. In other words, law students with an interest in fashion law should not limit themselves to this field too quickly. Especially given how new and niche fashion law is, as information technology and intellectual property lawyer stated, it is important to first understand all aspects of the subject. This means learning about trademarks, copyright, counterfeiting, business, and other areas that impact fashion. By taking this broad approach, one can really understand whether fashion law may be their calling. However, there are immediate ways to stay up-to-date with the fashion industry and get involved. For example, Alessia runs an Instagram account that provides daily updates on the latest in fashion, business, and law. Similarly, Osgoode students can reach out to the OFLS to become a general member and get involved in any club events.

As for where fashion law is set to go in the future, all of the panelists made reference to fashion and the web. As Hashim pointed out, as brands have begun to limit their brick and mortar presence (no thanks to the pandemic) and shifted to online stores, the biggest question becomes how to create that in-person experience, online? Perhaps we will see a rise in the use of artificial intelligence by brands to help visualize what styles will look like on different people, Hashim suggested. But in doing so, how do these brands ensure the privacy of their online buyers? Similarly, how can brands protect against the infringement of their designs by fast fashion online stores and ensure that buyers come back? Well, as social media influencer marketing increases, Canadian and American attorney and founder of the Fashion Law Boutique Bogdan Enica pointed towards one option used more frequently by brands, which involves filing .

When it comes to this ongoing trend where fashion, technology, and the law come together, we are already starting to see brands digitize their collections. For instance, the Telfar brand which prides itself on inclusivity and often sells out of their infamous handbags in milliseconds, provides online access to their collections throughout the years. Similarly, Louis Vuitton recently hosted a live stream for their wherein the brand offered immersive coverage through their use of 360-degree cameras and green screens. Although the latter example was mainly incited by the pandemic, perhaps it is the start of the new normal for the fashion industry. While this move towards a virtual reality allows more viewers to immerse themselves in fashion from the comfort of their own homes, we can expect legal issues to arise ranging from the copyright protection of songs used to entertainment contracts with broadcasting networks, just to name a few.��

Eloise Somera is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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