You may have heard about the “Satan Shoes” created by rapper Lil Nas X in collaboration with the MSCHF clothing brand. The limited-edition shoes, which began as ordinary Nike Air Max 97 running shoes, sold out in less than one minute despite costing $1,018 a pair.
In addition to the Nike swoosh on the side and tongue of each shoe, the shoes sport a pentagram charm dangling from the laces. They also have “Luke 10:18” printed on them, referring to a Bible verse about Satan’s fall from heaven.
A mixture of human blood and red ink fills what is normally an air bubble in the sneaker. Inside the shoe, on the heel, there is another pentagram, and the tab at the top of the tongue depicts an inverted cross.
As you might guess, a lot of people found these Satan Shoes to be sacrilegious and mistakenly believed that Nike had authorized or approved them. There have even been calls to boycott Nike.
As a result, Nike filed a trademark infringement and dilution complaint against MSCHF Product Studio. Nike also requested that the court issue a temporary restraining order prohibiting MSCHF from filling orders for the shoes and from using Nike’s trademarks.
The U.S. District Court, Eastern District of New York, did so after finding that Nike had presented sufficient evidence demonstrating that MSCHF’s actions are “likely to confuse and likely are confusing, consumers about the origin, sponsorship, or approval of MSCHF’s goods” and “likely to dilute and tarnish Nike’s marks.”
Trademarks are used to identify the source of a particular product. This is why people who see the word “Nike” or the Nike swoosh on shoes believe that Nike either made the shoes or gave someone else permission to do so.
Understandably, Nike isn’t happy when it gets bad publicity and loses sales through no fault of its own, but the primary purpose of trademark law is to protect consumers, who should be able to rely on the trademark used in connection with a product or service to identify the source of that product or service.
The federal trademark laws were amended in 1996 to provide owners of famous marks like Nike with protection from “dilution.”
The law defines dilution as “the lessening of the capacity of a famous mark to identify and distinguish goods or services,” whether or not there is any competition between the owner of the famous mark and the new user and whether or not there’s “any likelihood of confusion, mistake, or deception.”
Dilution can occur as a result of either “blurring” or “tarnishment.” Blurring means the erosion of a mark’s distinctiveness caused by the unauthorized use of a mark on a dissimilar product, while tarnishment involves the unauthorized use of a mark in connection with a product or service that is of poor quality or is somehow unwholesome or unsavory, reflecting adversely upon the mark owner’s products.
A famous mark is one that is “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” The remedies available for violations of the antidilution statute are comparable to those for trademark infringement.
Please feel free to contact us if you have any questions about how to protect your trademarks or how to avoid infringing others’ rights.
