Loyola University Chicago School of Law, JD 2022
Everyone seems to be talking about the controversial “Satan shoes” released by famous rapper Lil Nas X (“Nas”) in collaboration with MSCHF Product Studio, Inc. (“MSCHF”). The shoes are controversial for many reasons, including their Satanic imagery, allegedly containing a drop of human blood in the sole, their perceived endorsement by Nike, and the music video and hit rap song that Nas released in tandem. Though the song, video, and shoes have sparked a moral and ethical debate worldwide, attorneys are intrigued by the legal debate that arises regarding the various trademark claims that Nike brought against MSCHF in a lawsuit filed on March 29, 2021.
Who is Lil Nas X and what is the song behind the shoes?
Lil Nas X, whose birth name is Montero Lamar Hill, is a 21-year-old rapper best known for his wildly popular debut single “Old Town Road.” Old Town Road became a huge success, topping the 2019 charts as a multi-platinum and number one song worldwide. This song was also a massive hit among school-age children, which resulted in Nas surprising an elementary school with a live performance on the last day of school. In June of 2019, Nas released his album titled “7” which resulted in seven Grammy nominations, including: Record of the year (Old Town Road), Album of the Year (7), Best New Artist, Best Duo Performance (with Billy Ray Cyrus), and Best Music Video, of which he won two for Best Duo Performance and Music Video.
A large part of Nas’s identity is his struggle with coming out to himself and others as being gay. In an interview with Gayle King, Nas recounts his teenage years, during which he repeatedly prayed that he was not gay, but ultimately decided that his decision to come out would help others do the same. His decision to embrace his sexuality is one of the main reasons that the release of his namesake song “Montero (Call Me By Your Name)” in tandem with the limited edition Satan shoe is so controversial. In the song and corresponding music video, Nas’s lyrics stick out as a clear attempt at normalizing same sex lust in rap songs. Additionally, Nas uses biblical imagery in an attempt to take hold of the extreme religious narrative that gay persons are “going to hell” and flipping it on its head. In doing do, Nas “accepts” going to hell by going there himself and seducing the devil, which has many parents and conservatives outraged. In response to these concerns, Nas reiterated to parents that he is a rapper whose music is never intended for children. On the flipside however, others praise the song and video as a masterpiece and a narrative that, “centers queerness in historical and religious spaces where it is too often erased.”
How did Nike get involved and who is being sued?
Nas admits that he knew his song and video would spark controversy and intentionally took things one step further by collaborating with the New York-based art collective MSCHF to release the Satan shoe at the same time. MSCHF is familiar with exclusive limited-run shoe promotions as a form of art and fashion and has been doing so by purchasing shoes from authorized retailers. Earlier this year they released Birkenstocks made from designer Birkin bags priced between $34,000 to $76,000. Ironically, or not so ironically, MSCHF released a limited run of “Jesus shoes” in 2019 which were Nike Air Max 97 sneakers adorned with a crucifix and filled with holy water, priced at $1,000 to $4,000. In 2019, Nike did not seek legal action, likely due to the majority of good press the shoes generated. However, when MSCHF struck a lucrative deal with Nas to release 666 pairs of Nike Air Max 97 sneakers on Palm Sunday adorned with a pentagram, bible verse Luke 10:18, and filled with a drop of human blood mixed with red ink, Nike promptly filed a lawsuit within hours of the release. The complaint did not name Nas as a defendant.
The complaint alleges four causes of action: (1) trademark infringement in violation of 15 U.S.C. §1114, (2) false designation of origin/unfair competition, (3) trademark dilution, and (4) common law trademark infringement and unfair competition. Nike chose to sue over this specific instance of trademark infringement and not prior instances, such as the Jesus shoe, because of consumer confusion regarding Nike’s apparent endorsement of the shoe and the negative backlash that ensued. Even though the Satan shoe is seen as an art piece or freedom of speech, Nike does not want to be associated with it in any way. MSCHF released a statement defending its collaboration with Nas stating, “MSCHF strongly believes in the freedom of expression, and nothing is more important than our ability, and the ability of other artists like us, to continue with our work over the coming years.” For those in support of MSCHF, they may be able to get their hands on a “legal fees” t-shirt that MSCHF teased, adorned with the first page of the lawsuit priced at $66.60, but has since been deleted from their website.
What does this controversy mean for artists and trademark cases moving forward?
MSCHF has previously escaped legal consequences stemming from their artistic collaborations using trademarked brands by citing the First-Sale Doctrine. This specific copyright-infringement doctrine allows individuals who knowingly purchase copies of copyrighted work from the authorized copyright holder to “sell, display or otherwise dispose of that particular copy, notwithstanding the interests of the copyright owner.” For example, one can buy a pair of white Vans, paint a unique design on them, and sell them to friends without fear of copyright infringement. This doctrine gives artists who purchase and repurpose individual copyrighted products the ability to express and profit off their own creativity. But it’s not that simple in this case.
Here, the most salient legal argument Nike has is not that MSCHF sold copyrighted shoes, but rather that by selling shoes with the Nike swoosh, consumers are likely to be misled by a false designation that Nike endorsed this shoe, which will cause Nike’s brand image to suffer. In support of brand damage Nike’s complaint attached customer tweets alleging their refusal to buy from Nike in the future. Trademark attorney Josh Gerben notes that Nike has been well aware of the custom shoe art trend for many years and has done nothing about it until now. But should Nike’s decision to ignore prior infringements affect its decision to sue in this circumstance? Not likely. And had MSCHF simply omitted the coveted Nike swoosh from the sneaker, would that have protected them from this lawsuit? Maybe.
As of now, Nike successfully won a temporary restraining order against MSCHF restricting the sale of the shoes. In its complaint, Nike states that “decisions about what products to put the swoosh on belong to Nike, not to third parties like MSCHF.” This stance seems to be the heart of Nike’s argument, and a debate that will likely alter the ability of artists to use trademarked images in their art in the future.