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 Credits: satan.shoes (screenshot taken March 31st)

Photo Credits: https://www.google.com/shopping

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Lil Nas X, internet sensation and Grammy Award winning musician, released his unofficial Nike “Satan Shoes” on March 28^th, 2021. The “Satan Shoes” are a promotional item for his latest song and music video, Montero (Call Me By Your Name). Nike promptly against over the unofficial shoes, leaving fans and sneakerheads alike scratching their heads.

The viral video for Montero features the musician dancing provocatively on a caricature of the Devil. Lyrically, the song is unabashedly Lil Nas’s expression of homosexuality - in an effort to normalize queer narratives in music. The accompanying promotional sneakers were announced on Palm Sunday and were limited to 666 pairs. They feature a familiar Nike check mark and a drop of real human blood. 665 pairs sold out at $1,018 each. The 666^th pair were held for a giveaway on .

One does not have to be a fan of Lil Nas X to see that his marketing campaigns achieve the desired result. He continually keeps his millions of followers engaged through his viral Tweets and TikTok videos. The Old Town Road singer’s latest Satanic-themed marketing initiative is garnering large amounts of attention, especially from Nike, Inc.

While the Satan Shoes look very much like Nike sneakers, Nike did not license them. They are instead a revamped version of Nike Air Max 97s from a collaboration between the New 91��ɫ based art collective, MSCHF, and Lil Nas X. Each pair contains two ounces of red ink and a drop of human blood from a MSCHF team member. The kicks also a pentagram charm, an inverted cross, and a reference to Luke 10:18.

MSCHF are known for reappropriating designer items and creating their own reworked pieces from existing styles. In the past they have sold cut-up Hermès Birkin bags and unauthorized which were customized Nike Air Max 97s filled with holy water from the Jordan River. The Satan Shoes appeared to be just another hype product release in the same vein as the Jesus Shoes.

The devil-themed song, sneakers, and music video made for immense backlash on social media. The public outcry surrounding the controversy was reminiscent of the “Satanic Panic” of the ‘80s and ‘90s. The outcry prompted Nike to quickly release statements and file a lawsuit against MSCHF. Nike that customers have started boycotting Nike for “apparent association with Satan,” citing this as “irreparable harm to [Nike’s] goodwill” caused by the sneakers. Nike asked the courts to halt order-fulfillments and requested a jury trial to seek damages. A temporary restraining order was granted against MSCHF, however, the 665^th pairs had already been sent to customers. The 666^th pair giveaway has .

Curiously, Nike did not take issue with MSCHF’s previously released Jesus Shoes despite them being also unauthorized and unendorsed by the company. The Jesus Shoes were as they also sold out in minutes and were the most googled shoes in the year of their release. Drake and other high-profile celebrities rocked the Jesus kicks and the shoes brought Nike positive press. So why are Lil Nas X and his Satan Shoes in so much heat?

Nike has won the action to halt shoe sales and against MSCHF; but what comes next? MSCHF themselves the shoes are works of art protected by the First Amendment. Freedom of expression and freedom of speech are at the forefront of this suit. Nike has historically not hesitated to protect their brand and image through legal proceedings. This case has the potential to change the world of customized fashion – staples in modern streetwear and the art world. ��

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