MSCHF is transforming Nike® Air Max® 97s into “Satan Shoes” by changing various elements of the shoes including, allegedly, adding a drop of human blood to the fluid-filled cushioning of the shoes.
Lil Nas X and MSCHF are using the sale of the 666 pairs of shoes to take a stand against public criticism Lil Nas X has received for being gay.
Nike has filed a lawsuit to protect its trademark rights. I haven’t read the complaint but I assume it’s based on at least one or both of the following:
Is Nike’s suit likely to be successful (as a lawsuit, not as a PR move)?[iii]
People seem to be confused into thinking Nike is associated with MSCHF’s sales of the shoes. Social media is filled with people saying they will never buy NIKE® shoes again. MSCHF is engaged in parody and parody is a defense against a claim of tarnishment,[iv] but in order to use parody as a defense, MSCHF would need to be parodying Nike or its products. The statements made by MSCHF and Lil Nas X seemed to be focused on parodying anti-gay groups and attitudes.
But is that really the way to look at this case?
This case is different from most trademark cases: MSCHF is selling NIKE® brand shoes. In the photos used to promote the Satan Shoes, you can see the Nike swoosh but that’s because they are NIKE shoes.
Does Nike have the right to prevent people from making post-sale modifications to their shoes? Do trademark rights go that far? Can Tesla require that I keep my car clean because the image of a dirty car driving down the street with a Tesla logo tarnishes the TESLA® brand? Can Lacoste stop me from making an anti-racist speech while wearing one of their shirts?
This is a much bigger issue than trademark rights and I hope it’s treated that way.
[i] 15 U.S. Code § 1125 – False designations of origin, false descriptions, and dilution forbidden
(a) Civil action
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
[ii] 15 U.S. Code § 1125
(c) Dilution by blurring; dilution by tarnishment
(1) Injunctive relief. Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.
[iii] Public Relations isn’t my game, but I think Nike could have sought to distance themselves from the Satan Shoes while supporting the message of the campaign. A lawsuit is a powerful but crude PR tool not designed to make those types of subtle distinctions. I expect backlash against Nike for the suit.
[iv] 15 U.S. Code § 1125
(3) Exclusions. The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:
(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with—
(i) advertising or promotion that permits consumers to compare goods or services; or
(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.
(B) All forms of news reporting and news commentary.
(C) Any noncommercial use of a mark.