Nike has filed a federal trademark infringement lawsuit against MSCHF shoes that released a controversial customized version of its sneakers “Satan Shoes” with rapper Lil Nas X. In the lawsuit filed today, Nike accused MSCHF Product Studio, Inc. of trademark infringement over the designer’s 666 pairs of modified Nike sneakers made in collaboration with the “Old Town Road” singer. All 666 pairs sold out Monday.
Fara Sunderji is a partner at the international law firm Dorsey & Whitney in its New York office. Sunderji has extensive expertise in all stages of trademark, copyright, clearance, prosecution, maintenance, enforcement, and litigation. Of the lawsuit she says,
“Nike’s swoosh is probably one of the most recognizable non-word trademarks in the world. You see it and you automatically think of Nike as the source of the good on which it appears. This is how trademarks are supposed to operate, as a source identified. Nike’s case here is pretty simple to understand: MSCHF is selling Nike Air Max 97’s that have been modified in a way in which Nike does not approve. People see these “Satan Shoes” and think they come from Nike and some people don’t like that. Nike, therefore, claims that the release of these “Santa Shoes” is harming its valuable brand,” Sunderji says.
“MSCHF will likely argue that they are protected under a theory called the First Sale Doctrine, which allows third parties to resell trademarked goods that have already entered the marketplace. But the doctrine is limited to the sale of genuine goods. The doctrine is based on the premise that consumers are not being deceived because they are receiving what they have bargained for, the trademarked good. Under Second Circuit case law, goods are not genuine if they do not conform to the brand owner’s quality control standards, and it is easy to guess Nike’s take on this issue – Just don’t do it,” Sunderji says.
According to NBC News, the lawsuit states “We don’t have any further details to share on pending legal matters,” Nike said. “However, we can tell you we do not have a relationship with Lil Nas X or MSCHF.”
Trademark attorney Josh Gerben of Gerben Perrott PLLC stated to CNN Business that “It’s a legal rationale that grants artists who purchase and repurpose individual copyrighted products the ability to express and profit off their own creativity.”. He also pointed out Nike shoe redesigners like MSCHF commonly sell their work on online marketplaces. “You’ve got all kinds of artists that go out there and they take a shoe, and they’ll do a whole bunch of custom art on the shoe and maybe resell it for $1,000-3,000,” Gerben said. “This is something Nike is well aware of and has done absolutely nothing to mess with because there’s a sneaker culture here.”
Lil Nas X isn’t named as a party in the lawsuit. Representatives for the musician did not respond to calls or emails requesting comment.
The backlash from social media is incredible with thousands of people expressing their opinions with the shoes and the representation they bring:
- South Dakota Governor Kristi Noem tweeted “Our kids are being told that this kind of product, is not only okay, it’s “exclusive.” But do you know what’s more exclusive? Their God-given eternal soul. We are in a fight for the soul of our nation. We need to fight hard. And we need to fight smart. We have to win.”.
- Angela Stanton King, founder of American King Foundation, tweeted “I’m sitting here trying to figure out where Nike got the blood from for Lil Nas X 666 shoes (shoe emoji) …Who’s blood is it?”
- NBA star Nick Young tweeted “My kids will never play Old Town Road again… I’m still debating about wearing Nike after this come Nike a drop of blood for real”.
- On Instagram, celebrity musician Miley Cyrus shares a photo proudly wearing the controversial sneakers, captioning the post “Can you see Satan?”.
The controversial ‘Satan Shoes’ were strategically dropped after the release of Lil Nas X’s music video for “Montero (Call Me By Your Name)”, which has already been viewed more than 54 million times.
Lil Nas X took to Twitter in his true fashion posting “I spent my entire teenage years hating myself because of the shit y’all preached would happen to me because I was gay. So I hope u are mad, stay mad, feel the same anger you teach us to have towards ourselves.”