{"id":1868,"date":"2022-03-24T19:10:29","date_gmt":"2022-03-24T19:10:29","guid":{"rendered":"https:\/\/blogs.luc.edu\/ipbytes\/?p=1868"},"modified":"2024-07-13T07:14:41","modified_gmt":"2024-07-13T07:14:41","slug":"devil-shoes-and-trademark-blues","status":"publish","type":"post","link":"https:\/\/blogs.luc.edu\/ipbytes\/devil-shoes-and-trademark-blues\/","title":{"rendered":"Devil Shoes and Trademark Blues"},"content":{"rendered":"

Now, I wouldn\u2019t call myself a sneakerhead by any definition of the phrase, but certain shoes will forever pique my interest. The classic Jordan 1 silhouette<\/a> has captivated me since I saw Space Jam<\/a> as a kid and became entranced with the MJ<\/a> legend. For decades after that seed of appreciation was planted in my head as a child, I never thought twice about sneaker style. I was more of a chukka<\/a> guy, to be honest.<\/p>\n

<\/p>\n

\"AirForce1s\"
Nike Air Force Ones: The picture I took at the thrift store to get my family’s opinion on whether I should by them. Attributed to Louay Meroueh.<\/em><\/figcaption><\/figure>\n

Fast forward to Summer 2019: I\u2019m at a thrift store in Greenpoint, Brooklyn. \u00a0I\u2019m browsing the shelves for a rare size 13 shoe that would be worth salvaging. I come across a pristine pair of Air Force Ones<\/a> for $30. At that moment, my limited interests in sneakers burst open to include the entire Nike roster.<\/p>\n

Fast forward a few more years: I\u2019m a first-year law student reading about a devilishly controversial case involving another famous Nike sneaker.<\/p>\n

<\/p>\n

Old Town Roads, Unholy Footwear<\/strong><\/p>\n

In early 2021, viral music<\/a> sensation and provocateur, Lil Nas X<\/a> made headlines for a shoe he planned to sell. The shoes had a swooping silhouette, a raised heel, and a bronze pentagram charm. The cherry on top? The shoes allegedly contained real human blood. Dubbed the \u2018Satan Shoes<\/a>\u2019, Mr. Nas X naturally only planned to issue 666 pairs of the shoe. These were Nike Air Max<\/a> shoes that Mr. Nas X was selling. But Nike wasn\u2019t the one making or issuing the shoe. What was going on? I smelled an intellectual property issue at play.<\/p>\n

MSCHF Managed<\/strong><\/p>\n

Lil Nas X created his \u2018Satan Shoes\u2019 by altering Nike Air Max 97s<\/a> after purchase. He collaborated with a\u00a0 New York-based art collective called MSCHF<\/a> to design and produce the shoes. To make them, MSCHF essentially bought a large amount of sneakers from Nike and to modified each one. Afterwards, they sold the modified Nike shoe as the \u201cSatan Shoe.\u201d<\/p>\n

Buying, modifying, and reselling shoes like this isn\u2019t new. There is a healthy market<\/a> for customized shoes from artists who put their own twists on famous silhouettes. The Air Force One is a common shoe for such a market due to their comfort, plain white leather, and appealing silhouette. Legally, this type of secondhand sale is possible through something called the first sale doctrine<\/a>, but we\u2019re not going to get into that. The star of the show is the \u2018Satan Shoe\u2019 controversy!<\/p>\n

Panic Attack<\/strong><\/p>\n

What\u2019s unique about this controversy is that Nike doesn\u2019t typically sue artists who modify and resell their shoes. Here, Nike was prompted by outrage<\/a> to sue Mr. Nas X and MSCHF as a way of denying involvement and distancing themselves from the shoe. Reminiscent of the satanic panic<\/a> from the 80s, those made uncomfy by satanic themes littered the internet with angry tirades, tweets, and threats of boycott, aimed at Nike.<\/p>\n

While Nike had to deal with this PR nightmare, they didn\u2019t actually have any role in the creation of this luciferin footwear. Having customers associate these satanic shoes with their brand had the potential to be economically harmful in the long term. Nike needed to preserve their brand image. Consequently, Nike brought suit<\/a> alleging trademark dilution and infringement.<\/p>\n

Metal isn\u2019t the only thing that tarnishes<\/strong><\/p>\n

To understand Nike\u2019s basis for suing, let\u2019s learn a little bit about trademarks. A trademark<\/a>, or \u201cmark,\u201d can be a word, phrase, symbol, or design that is used in commerce to identify a good or service. It distinguishes a product from others in the mind of the consumer. Fundamentally, trademark law prevents unauthorized uses of the same or even similar mark on goods if it would cause a consumer confusion about who is making or selling a product. Unauthorized use of a mark that confuses consumers is referred to as trademark infringement.<\/p>\n

In addition, because the effectiveness of a mark is based on how a customer associates it with a company and its product, anything that disrupts or damages that association in the mind of the consumer can be problematic for the company. This disruption is called trademark dilution<\/a>.\u00a0 Dilution refers to the weakening of the association the consumer has made of the product with the mark. The mark that\u2019s being diluted must be famous enough that people can even make such associations. \u00a0Dilution can be broken down into two categories, blurring and tarnishment.<\/a><\/p>\n

Dilution by blurring occurs when the distinctiveness of a famous mark, or how well the mark distinguishes the product from others, is impaired.\u00a0 Consumers end up having a weaker association between a mark and the mark owner due to the use of another similar mark. For example, imagine a new company makes and sells a phone called the myPhone. This could present an issue for Apple who sells the iPhone. People might start to think that Apple is associated with the myPhone given how similar the names are.<\/p>\n

Dilution by tarnishment occurs when the famous mark suffers reputational harm through association with a product of shoddy or inferior quality, or a mark that is distasteful or unsavory. Nike\u2019s fear, in this case, was likely that their trademarks associated with their Air Max shoe would become associated with the \u2018unsavory\u2019 satanic shoe, thus tarnishing the reputation of their mark.<\/p>\n

Nike\u2019s Trademarks<\/strong><\/p>\n

\"NIKE
Attributed to the USPTO.<\/em><\/figcaption><\/figure>\n

Nike as a company has a massive catalogue of trademarks. All the logos, words, and phrases<\/a> that are stamped on their merchandise and advertisements that distinguish their product such as \u201cjust do it\u201d fit the definition. With respect to the Air Max, the shoe is stamped with a good smattering of these marks. Most prominently among these are the Nike swoosh and the actual word \u201cNike.\u201d These marks were not removed from the shoe after being modified. The Swoosh is clearly visible on the Satan shoe, and it was featured prominently in advertisements<\/a> for it. So, anyone who looks at the Satan shoe and didn\u2019t know that it was modified, might assume that the Satan shoes were made directly by Nike. The ensuing backlash Nike faced suggested the public assumed just that. Nike cited such backlash<\/a> to support their claims of dilution by tarnishment.<\/p>\n

Sale and Resolution<\/strong><\/p>\n

The shoes sold out immediately despite the +$1000 price tag. Even I, with my poor impulse control when it comes to purchasing novelties like this, did not entertain such a cost (RE: my last article<\/a>: I bought the cards). After a judge granted Nike\u2019s injunction to stop the sale of the shoes, the suit quickly resolved and the case was settled<\/a>.<\/p>\n

Additionally, Nike managed to repair any reputational damage. They successfully distanced themselves from the shoe by issuing public statements<\/a>, by publicizing the filing of the suit, and by getting MSCHF to agree to issue a voluntary recall<\/a> of the Satan shoe to any customer who thought they were getting a shoe sold directly by Nike.<\/p>\n

So, what\u2019s the ultimate outcome?\u00a0 Nike was no longer in the public hot seat. Lil Nas X successfully performed in his role as a provocateur. MSCHF made an artistic statement<\/a> by taking on this project. Everyone wins and they all lived happily ever after.<\/p>\n

Louay Meroueh\u00a0<\/strong>
\nCo-Technical Editor for the Loyola Intellectual Property Law Blog \u201cIP Bytes\u201d
\nDirector of Programming for the Intellectual Property Law Society
\nTechnical Manager for the Rule of Law Institute at Loyola
\nCompetitor on the Fall 2021 Negotiation<\/p>\n

\"Louay<\/p>\n","protected":false},"excerpt":{"rendered":"

Now, I wouldn\u2019t call myself a sneakerhead by any definition of the phrase, but certain shoes will forever pique my interest. The classic Jordan 1 silhouette has captivated me since I saw Space Jam as a kid and became entranced with the MJ legend. For decades after that seed of appreciation was planted in my head as a child, I never thought twice about sneaker … Continue reading Devil Shoes and Trademark Blues<\/span><\/a><\/p>\n","protected":false},"author":25,"featured_media":4040,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[4,11],"tags":[322],"class_list":["post-1868","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-fun-facts","category-trademarks","tag-trademarks"],"_links":{"self":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts\/1868","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/users\/25"}],"replies":[{"embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/comments?post=1868"}],"version-history":[{"count":2,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts\/1868\/revisions"}],"predecessor-version":[{"id":4260,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts\/1868\/revisions\/4260"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/media\/4040"}],"wp:attachment":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/media?parent=1868"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/categories?post=1868"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/tags?post=1868"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}