Trademark Infringement Update: Nike requested an injunction to prevent further sales of the “Satan Shoes” and was granted a temporary injunction against the trademark infringement on April 1, 2021.
Is sportswear giant Nike suing rapper Little Nas X for trademark infringement because of the “Satan Shoes”? Well, not exactly. Nike is actually suing the Brooklyn-based art collective MSCF for converting 666 pairs of Nike’s Air Max 97s into “Satan Shoes,” as part of a limited-edition collaboration with the rap music star. Not surprisingly, the collectable limited edition shoes sold out within a matter of minutes, but Nike is up in arms, because 1) they didn’t get any of the profits from the $1018-dollar shoes, and 2) the shoes now associate Nike’s very valuable brand with satanism, which is considered by most people to be revolting.
The shoes feature a pendant that features a pentagram and an inverted cross, and an altered red midsole that contains a drop of human blood, extracted from one of the MSCF members. Gruesome, but scandal sells, right? Everyone is talking about these shoes, and so the marketing worked, if purely for shock value. Offended Christians are now threatening a boycott of Nike over the “Satan Shoes,” which is odd, considering that they weren’t so very bothered when it was revealed that Nike was using the equivalent of slave labor in its Chinese factories.
Why is Nike suing? They allege that MSCF Product Studio Inc. is diluting their trademark by offering these “Satan Shoes,” and that Nike’s reputation is at risk as a result of the rather gruesome modifications made to the Nike sneakers. Nike seeks an injunction to prevent these sneakers from being sold (which is rather ineffective, considering that the entire 666-pair lot has already sold out) and money damages to be determined later. The 24 page complaint, filed in the U.S. District Court in the Eastern District of New York, gives a detailed history of Nike’s use of the NIKE and swoosh-design trademarks, and alleges unfair competition, trademark infringement, and false designation of origin, and requests a jury trial. I hope the folks at MSCF Product Studio set aside some of their profits for legal fees, because it looks like this case will probably cost them millions to defend.
Trademark “dilution” occurs when a trademark infringer creates a false association between the trademark infringer’s goods and the goods produced by the famous mark. Dilution creates confusion in the marketplace, and confuses consumers — as here — into thinking that the famous brand has some sort of association with the infringer, and perhaps that the trademark owner is somehow endorsing the goods created by the infringer.
Nike may have trouble collecting damages for the altered shoes under something called the “first sale doctrine.” Under the trademark “first sale” doctrine, a buyer of the goods who purchased through an authorized channel has the right to modify the goods and resell them. But what happens when, as here, the reselling creates an unsavory association in the mind of the consumer, such that a boycott is threatened and the reputation of the famous trademark holder is put at risk? I suppose we’ll find out as the case makes it way toward resolution.
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