2nd April 2021
Nike is Suing MSCHF for Trademark Infringement, Dilution Over “Satan Shoes”
By the fashion law
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Within hours of MSCHF dropping 666 pairs of its blood-infused “Satan Shoes,” the now-sold-out footwear is at the center of a brand-new lawsuit. Amid a barrage of social media commentary and calls for a boycott of Nike over the customized shoes, Nike filed a trademark infringement and dilution, false designation of origin, and unfair competition lawsuit in the U.S. District Court for the Eastern District of New York on Monday, alleging that MSCHF Product Studio Inc. “is currently taking orders for shoes it refers to as Satan Shoes, which are customized Nike Air Max 97 shoes that MSCHF has materially altered to prominently feature a satanic theme,” and which it is doing “without Nike’s approval or authorization.”
“Nike has not and does not approve or authorize MSCHF’s customized Satan Shoes,” counsel for the Beaverton-based behemoth argues, claiming that while MSCHF may have acquired authentic Nike sneakers, its customization of the sneakers has resulted in shoes that “are not genuine Nike products.” In other words, the MSCHF sneakers may bear Nike’s Swoosh, but the Brooklyn, New York-based collective “has customized them in such a manner that they constitute new, unauthorized products,” thereby, running afoul of federal trademark law by advertising and selling them without Nike’s authorization.
What exactly are the “material alternations” that Nike takes issue with in the newly-filed complaint? Well, there are the obvious ones, such as MSCHF “adding red ink and human blood to the [sneakers’] midsole, adding red embroidered satanic-themed detailing, [and adding a bronze pentagram to the laces.” Nike claims that MSCHF – which is the sole defendant named in the complaint (MSCHF collaborator Lil Nas X has seemingly escaped liability, at least for now) – has altered the footwear further by “adding a new sock liner,” and interestingly, renaming the shoe and “referring to the shoe as the Satan Shoe.”
“A genuine Nike Air Max 97 shoe does not contain any of these customized features,” per Nike, which also notes that “making changes to the midsole may pose safety risks for consumers.” And yet, “despite these drastic alterations,” the $1,018 Satan Shoes “still prominently display the Nike Swoosh logo both at the top of the tongue and along the side of the shoes.”
In furtherance of its quest to “capitalize on Nike’s valuable reputation and customer goodwill,” Nike asserts that MSCHF is “using the Nike [trademarks] and/or confusingly similar marks in a manner that is likely to cause consumers and potential customers to believe that MSCHF’s Satan Shoes are associated with Nike, when they are not.” (Those trademarks consist of the Nike Swoosh logo and the “Nike” word mark, but not the source-indicating design of the Air Max 97, itself). Hardly a theoretical concern, Nike contends that “there is already evidence of significant confusion and dilution occurring in the marketplace, including 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.” To back up these assertions, Nike includes screenshots of negative social media comments, including ones in which users assert that they “never want to purchase any Nike products in the future.”
Citing the “tens of billions of dollars” that it has spent “promoting both NIKE and Swoosh design branded products in the United States” and the “billions of products bearing the NIKE word mark and Swoosh design [that it has sold] in the United States, accounting for hundreds of billions of dollars in revenue,” Nike claims that it is filing “this lawsuit to maintain control of its brand, to protect its intellectual property, and to clear the confusion and dilution in the marketplace by setting the record straight – Nike has not and does not approve or authorize MSCHF’s customized Satan Shoes.”
“By virtue of the acts complained of herein, MSCHF has created a likelihood of injury to Nike’s business reputation and goodwill, caused a likelihood of consumer confusion, mistake, and deception as to the source of origin or relationship of Nike’s products and MSCHF’s Satan Shoes, and has otherwise competed unfairly by unlawfully trading on and using Nike’s [trademarks] without Nike’s permission,” Nike argues. “Unless stopped, MSCHF’s Satan Shoes and [its] use of Nike’s marks will continue to cause confusion in the marketplace, including but not limited to initial interest confusion, post-sale confusion, [and] confusion in the secondary sneakers markets.”
On the trademark dilution front, which is a cause of action that is from trademark infringement and centers on the results from the unauthorized use of a famous trademark (such as Nike’s 50-year-old swoosh), Nike asserts that MSCHF’s “wrongful use of the Nike marks is likely to cause dilution by blurring and the whittling away of the distinctiveness and fame of the Nike marks,” and more than that, “MSCHF’s wrongful use of the Nike marks in connection with satanic imagery is likely to cause dilution by tarnishment.”
With the foregoing “willful and deliberate” activities in mind, Nike has asked the court to preliminarily and permanently bar MSCHF from “manufacturing, transporting, promoting, advertising, publicizing, distributing, offering for sale, or selling any products (including but not limited to the Satan Shoes) under Nike’s marks, [and/or] any marks substantially indistinguishable therefrom,” among other things. In addition to injunctive relief and monetary damages (including “any and all profits earned as a result of MSCHF’s acts in violation of Nike’s rights”), Nike is also seeking an order from the court requiring MSCHF “to deliver to Nike for destruction any and all shoes, apparel, digital files, packaging, printed graphics, promotional materials, business cards, signs, labels, advertisements, flyers, circulars, and any other items in any of their possession, custody, or control bearing Nike’s marks.”
The debut of the Satan Shoe comes on the heels of a previous Nike drop in 2019 when MSCHF offered up a under of similar Nike sneakers, but instead of filling the soles with blood, affixing a pentagram to the laces, and calling them the “Satan Shoes,” MSCHF filled the white sneakers’ soles with holy water, attached a cross to the front, and called them the “Jesus” shoes. As for why Nike did not take legal action then, and whether its failure to do so will impact its ability to successfully pursue MSCHF in the case at hand, the answer is two-fold. In terms of why Nike did not take action the first time around, it may be because of the quantity that MSCHF offered up; it sold fewer pairs of the “Jesus” sneakers (“less than 24 pairs,” according to many mainstream media outlets), compared to 666 of the Satan version.
And while the “Jesus” sneakers generated viral-level hype, the backlash against Nike in that instance was quite a bit less significant that it is now, with consumers calling for a Nike backlash as a result of believing that the sportswear giant is in some way affiliated with the MSCHF sneakers.
As for whether Nike will face pushback from MSCHF over its failure to formally take issue with the previously-issued Jesus shoes (potentially in the form of an acquiescence affirmative defense), University of New Hampshire School of Law Alexandra Roberts noted on Twitter on Monday that she does not “see [Nike’s] decision not to sue over [the Jesus shoes] as harming its chances of success over the so-called Satan shoes,” including because the two shoes come with “a few key differences—there were [fewer] pairs of Jesus shoes (I believe), the tarnishment claim is less strong, and [there was] less consumer backlash, threat of boycott, [and] evidence of actual confusion all over social media” in connection with the Jesus sneakers.
As of Monday evening, MSCHF was still displaying imagery of the since-sold-out Satan sneakers on its Instagram account and website.
UPDATED (March 30, 2021): One day after Nike filed suit, MSCHF has started teasing a new offering, a $66 “Legal Fees” t-shirt, which is emblazoned with the first page of the Nike complaint on it. (This move comes in much the same vein as Warren Lotas’ unsuccessful attempt to a market a “commemorative lawsuit shirt, pencil and bumper sticker” in the midst of a legal battle initiated against it by Nike last year). Meanwhile, according to multiple consumers, who received shipment confirmations, MSCHF has also started dispatching the lawsuit-inducing footwear.
*The case is Nike, Inc. v. MSCHF Product Studio Inc., 1:21-cv-01679 (EDNY).
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