Thread by @lexlanham

nike sues MSCHF over lil nas x "unauthorized satan shoe" for infringement, false designation of origin, & dilution (blurring & tarnishment); allegations of actual confusion backed by social media evidence

(i typed "nike satan" into the bloomberg search bar, so that's fun)

i'll live-tweet the complaint @questauthority-style even though i am supposed to be grading.

right out the gate--in literally the 1st sentence--nike characterizes the shoes as "materially altered to prominently feature a satanic theme."

this is key to rejecting a 1st sale defense, which protects ability to resell genuine branded goods but not "materially altered" ones.

in a 2020 case over maui jim sunglasses, a court held "an alteration is material if it changes something about a product...relevant to consumers’ decision to purchase." does embroidering a bible reference, adding a pentagram, & injecting ACTUAL HUMAN BLOOD feel material or nah?

oh haha nike thinks some other changes are material too: "referring to the shoe as the Satan Shoe, adding red ink & human blood to the midsole, adding red embroidered satanic- themed detailing, adding a bronze pentagram to the laces, & adding a new sock liner."

nike alleges not only likelihood of confusion, but "significant" actual confusion already taking place, "incl. 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." it has receipts.

love us or hate us, only WE decide what our swoosh gets used on (basically)

with an assist from the 9th circuit court of appeals in one of my favorite cases, which once called the swoosh not only famous but "exalted"!

either way, the "famous among the general consuming public of the US" requirement for dilution claims will be handily met

me: how soon til they call it iconic
nike:

so far nike has gone with the relatively chaste & understated "making changes to the midsole may pose safety risks for consumers" rather than "heads up, putting some rando's ACTUAL BLOOD inside the midsole of our sneakers is super sketch??? like we don't even know this guy?"

YOUR HONOR, LET THE RECORD SHOW a genuine nike air max 97 shoe does not contain any of these...shall we say.... "customized features"

in case you're curious, lil nas x is not only not a named defendant, he barely warrants a mention--the complaint notes that the shoes say "lil nas x" & identifies him as "a rap artist who apparently collaborated with MSCHF on the Satan Shoes."

most trademark infringement cases: "plaintiff has suffered harm to its goodwill, including among consumers who believe it is endorsing defendant's product."

this case: "nike has suffered harm to its goodwill, including among consumers who believe it is endorsing satanism."

trademark law students may enjoy the fact that nike here alleges ALL the confusions. point of sale! post-sale! initial interest! secondary markets!

not to mention all the dilutions: by tarnishment! & by blurring!

"any defects, objections, or faults...w/ the satan shoes will negatively reflect upon & injure the reputation that nike has established," such as for example if any of the human blood were to escape the air bladder (not to make it weird or anything)

for the newbies, there are 2 kinds of dilution: tarnishment (harming reputation by association w/ something tawdry or bad, like sex, drugs, etc.) & blurring (harming the strength of the famous mark by associating it w/ a different source). neither requires confusion.

anyway i'm a little surprised nike didn't hit the tarnishment harder, because satan! but i appreciate a light touch--it's classy. it says "we're all adults here, even governor kristi noem."

nike wants injunctive relief, destruction of all the shoes, an order affirming nike's TM rights, pre-judgment interest, costs & attorneys' fees, & ALL the kinds of damages (statutory, punitive, profits, treble).

nike & i both love a good specific injunction

also interesting to note that the (registered, incontestable, famous) marks nike alleges MSCHF infringes & dilutes are the NIKE word mark & the swoosh--no allegation of trade dress rights in the air max '97, which keeps things simpler.

folks have asked about defenses--they include 1st sale/exhaustion, fair use, parody/expressive use, & simply no likelihood of confusion at point of sale.

i think this is going to be a fun one to watch, w/ broad implications, & isn't a slam dunk for either party. strap in, satan!

update! initial conference scheduled for june 29.

the thing is, #satanshoes purchasers are going to expect to receive their shoes before then. will MSCHF ship them out, settle, or wait & see?

a lot of people in the replies have been asking about how nike can sue MSCHF over the satan shoes while recently declining to sue over the same company's jesus shoes.

i don't think that inconsistency hurts them.

abc7news.com/jesus-shoes-ho…

this drop was far bigger & the use more tarnishing & more materially altered. evidence of actual confusion (folks believing nike was on board w/ satan shoes) is widespread & unmissable. so i think this case is more winnable & falls further outside the bounds of 1st sale.

1 more twist: you can work w/ nike to customize your own nike air max's! does that increase or decrease the likelihood consumers will believe nike authorized these? could you build satan shoes on the nike website?

(this teal is more my style personally)

nike.com/nike-by-you?fb…

given the docket, i've been wondering whether MSCHF would cancel the sales, ship out the shoes, or wait & see.

at least one twitter user says their #satanshoes just shipped, suggesting MSCHF isn't going down without a fight...

https://twitter.com/Smerjip00/status/1376944319039430664?s=20

& this one makes three shipping confirmations I’ve heard about.

https://twitter.com/mpmercantile/status/1376959731596730372

for a successful trademark parody defense, defendant must show it used the mark to parody the mark owner or at least the consumers/culture around it, not some unrelated 3rd thing. MSCHF shd have plenty of ammo to argue #satanshoes send up collab culture.

https://twitter.com/beckitob/status/1376991409656504320?s=20

one point i got a chance to touch on here: point of sale confusion is unlikely. the 666 purchasers probably weren't confused. so nike instead has to argue that confusion among the general public--NON-purchasers-- harmed its reputation & future sales.

bizjournals.com/portland/news/…

good morning! time for updates.

first, i see bernstein & bannigan of @Debevoise are counsel for MSCHF. they just helped secure a win for booking .com at the supreme court so MSCHF is in great hands & taking this seriously. (we 3 were also copanelists at a TM event last week.)

nike filed a proposed TRO & order to show cause for prelim injunction--basically a request for much speedier relief, temporarily restraining MSCHF pending final outcome of suit "to protect the public from confusion & mistake, & to protect nike from immediate irreparable injury."

the TRO would enjoin MSCHF from filling any orders for #satanshoes; using the nike word mark or swoosh or any imitations; referring to or using those marks in advertising, marketing or promotion; and aiding or abetting anyone else in using those marks.

nike also wants MSCHF to escrow funds received from all orders so if nike wins the suit, MSCHF can refund any customers who ordered #satanshoes under the mistaken belief that nike was their source or approved or sponsored them.

do you think any such purchasers exist?

people keep asking about the jesus shoes! @eriqgardner points out this footnote: nike says we're not adding the jesus shoes to the suit rn b/c we understand MSCHF isn't currently selling them, but we may do so if we learn otherwise, b/c they infringe too.

https://twitter.com/eriqgardner/status/1377248600758104068?s=20

MSCHF's attorneys replied re: the TRO & today's hearing, stating there's no threat of imminent or immediate irreparable harm & substantial questions going to the merits, so the court should deny the TRO & set a briefing schedule on nike’s motion for a preliminary injunction.

they characterize MSCHF as an "art collective...founded to push the boundaries of tculture through story-telling & performance art."

the #satanshoes are "individually-numbered works of art sold to collectors for $1,018 each," a follow-on to the museum-worthy jesus shoes.

MSCHF says nike's TRO is unnecessary & pointless b/c oops, too late! "all but one pair of the shoes already have been sold & shipped. MSCHF has no intention of issuing additional satan shoes" & has cancelled the giveaway of the last pair in response to nike's suit.

MSCHF previews its main defenses: first, no likelihood of confusion at point of sale, given sophistication of consumers & absence of any misleading marketing.

as i tweeted previously, i think this is right & nike knows it--it has to hang its hat on confusion by non-purchasers.

now the fun part. in addition to being museum-worthy works of art, #satanshoes are social criticism: of "the ever-popular 'collab culture,' where brands like nike collaborate with anyone willing, to make a splash..."

..."& of social norms that discriminate, such as religious norms that marginalize certain groups of people. lil nas X, a gay black artist who...spent his teenage years hating himself because of what christianity taught about homosexuality...is thus a perfect collaborator."

MSCHF argues 1st amendment protects #satanshoes, given the artistic expression at their core. it cites barbie in a blender & bad spaniels cases as precedents--while shoes are commercial goods, these contain an expressive message, just like the parodic jack daniel's dog chew toys.