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?
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.