In Nike’s most recent swooshing controversy, Nike filed a trademark infringement and dilution, false designation of origin, and unfair competition lawsuit in the U.S. District Court for the Eastern District of New York on Monday against a Brooklyn artist collective, MSCHF Product Studio, Inc. Without Nike’s approval or authorization, MCSHF, in collaboration with singer Lil Nas X, released a shoe called “Satan Shoes” which were customized black and red Nike Air Max 97s featuring a pentagram and a drop of real blood in the soles of the shoes, along with Luke 10:18 on the side. All 666 pairs of the shoes sold out within minutes of being on sale. The release of the shoes was in tandem with the release of the singer’s new song “Montero (Call me by Your Name)” and music video that got backlash for explicit images of the artist pole dancing into the underworld and dancing provocatively on Satan. Interestingly, Lil Nas X was not named in the lawsuit.
The shoes’ satanic imagery drew strong reactions online. “MSCHF and its unauthorized Satan Shoes are likely to cause confusion and dilution and create an erroneous association between MSCHF’s products and Nike,” Nike says in its complaint. “In the short time since the announcement of the Satan Shoes, Nike has suffered significant harm to its goodwill, including among consumers who believe that Nike is endorsing satanism.” The company argued the shoes are “likely to cause confusion and dilution and create an erroneous association between MSCHF’s products and Nike,” alleging that there’s “already evidence of significant confusion and dilution occurring in the marketplace, including calls to boycott Nike in response to the launch of MSCHF’s Satan Shoes based on the mistaken belief that Nike has authorized or approved this product.” For these reasons, Nike has requested a Court Order to force MSCHF to stop producing the shoes and to award monetary damages for the financial harm the company has suffered.
While this may seem like a slam dunk for Nike, there is also the first-sale doctrine in place that could protect MSCHF. The law tends to be pretty forgiving of doing whatever you want with a product after you have legally purchased it. In intellectual property law, this legal principle is called the first-sale doctrine. The first-sale doctrine allows for artists to purchase a product and repurpose that product creatively and resell it without the permission of the original copyright owner. The original seller loses their intellectual property rights once the product is sold. In other words, if you spend your money legally to acquire something, can modify it however you want and then sell it to whoever you want for whatever price that person is willing to pay.
It is common business for studios like MSCHF to redesign products, such as Nike shoes and then sell their work on online marketplaces. This was not the first time that MSCHF has repurposed and sold Nike shoes as they sold “Jesus Shoes” in 2019. This is something Nike and other brands are aware of and don’t mess with because there’s a sneaker culture out there.
The issue for MSCHF here is the amount of shoes that were sold. “People are thinking Nike’s behind something because there’s so many of these [shoes],” he said. “It’s not just a single piece of art that some artist took a shoe and made. It’s that someone took a whole bunch of Nike shoes, customized them the exact same way and is selling them to a point in such sophisticated fashion that people think Nike’s involved.” https://www.cnn.com/2021/03/29/business/satan-shoes-nike-lil-nas-x/index.html
Nike’s argument about the harm to their business is not unfounded. We will keep you updated as new details are released!