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By Tony Poland, LegalMatters Staff • Nike’s recent court victory to stop the sale of “Satan Shoes” is the latest high profile legal battle relating to “mashup culture,” says Toronto intellectual property lawyer John Simpson.
“We live in a world where there is constant recycling of existing content, especially in the music business,” says Simpson, principal of IP and new media law boutique Shift Law Professional Corporation. “That typically applies to copyright cases, to such an extent that Canada’s Copyright Act has been amended to specifically address circumstances in which it is permissible to take existing works and reuse them.
“But the legal issues arising from mashup culture are not limited to copyright law. We are now seeing it in trademark cases and we’re likely to see more of it,” he adds. “This case potentially has broad implications and big brands will be watching closely.”
Nike files trademark infringement complaint
Nike filed a complaint in a New York court last month alleging Brooklyn-based art collective MSCHF engaged in trademark infringement, false designation of origin and trademark dilution with the sale of rapper Lil Nas X’s “Satan Shoes.”
The shoes are a modification of Nike Air Max 97s, featuring a drop of human blood in the sole, a pentagram pendant and a reference to Luke 10:18, a Bible verse dealing with Satan’s fall from heaven.
“Nike is in no way connected with this project,” the complaint reads. “Nike has not and does not approve or authorize MSCHF’s customized Satan Shoes. Moreover, MSCHF and its unauthorized Satan Shoes are likely to cause confusion and dilution and create an erroneous association between MSCHF’s products and Nike. In fact, 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.”
NBC News reported that MSCHF manufactured 666 pairs of the shoes, priced at US$1,018, which sold out within minutes of their release.
According to the report, the art collective released a statement saying they are “known for interventions that engage fashion, art, tech, and capitalism in various, often unexpected, mediums.”
“We believe it is better to make art that participates directly in its subject matter; it is stronger to do a thing than to talk about a thing. MSCHF makes artworks that live directly in the systems they critique, instead of hiding inside whitewalled galleries,” the statement reads. “Satan Shoes started a conversation, while also living natively in its space. It is art created for people to observe, speculate on, purchase, and own.”
Federal judge issues restraining order
A federal judge issued a restraining order against MSCHF, which has indicated it has no plans to produce any more of the shoe.
According to a media report, Nike announced that in order to remove the shoes from circulation, MSCHF has agreed to buy them back at the original price, resolving the trademark infringement lawsuit filed by the athletic wear giant.
Simpson says the case raises some interesting questions.
“In what circumstances can someone buy a branded good, modify it and resell it? That question hasn’t really been explored,” he tells LegalMattersCanada.ca.
Simpson explains that there is legal doctrine in intellectual property law called the first sale doctrine, which allows someone to buy a product and resell it without infringing intellectual property rights associated with the product.
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“Once the rights owner has made its first sale, they lose any rights over the goods. The purchaser can then resell it without infringing on the trademark,” he says. “Here, something different is happening. They’re not just reselling it but they’re modifying it to such an extent that the purchaser could be confused about the source of the goods.
“They stitched in details on the shoes and it’s very elaborate but the trademark swoosh remains. That will lead some consumers to think that Nike is involved in this.”
He says the confusion is understandable and points to Nike’s complaint, which claims they have suffered “significant harm to its goodwill, including among consumers who believe that Nike is endorsing satanism.”
‘Words cannot describe the amount of disgust’
Nike gave examples of online commentary including one consumer who stated, “I’m appalled. Words cannot describe the amount of disgust and disbelief that this is truly happening. Never supporting or buying Nike again!!!!”
“Is MSCHF getting any sort of advantage by selling these modified shoes with the Nike brand? That can certainly be argued,” Simpson says. “They’re not just taking any shoe. They are leveraging the Nike brand. They could have manufactured their own shoes but chose to use something that is iconic.
“If you talk to the average consumer, many would say they can see why Nike would have a problem with this,” he adds.
Simpson says MSCHF could argue that once they purchased the shoes they are entitled to modify and resell them, though he doubts that would be a good defence.
“You’re not selling any old shoes. Part of the appeal of these modified shoes is that they are modified Nike shoes,” he says. “It can be argued that it’s very much built on the Nike brand. You’re not white labelling these shoes. The Nike logo is prominent.”
Simpson says the U.S. has a parody defence in trademark law.
“MSCHF could claim they are making fun of the Nike brand but It comes down to whether you are actually using the trademark or whether you are making fun of it. Nike has evidence of actual confusion and that really weakens any parody defence,” he says. “There are a number of different tactics MSCHF could use, but ultimately none would hold water in my view.”
An example of ‘mashup culture’
Simpson says the case is an example of the “mashup culture” where a branded item is used to make another product. According to a CNN report MSCHF also ripped up four Hermes Birkin bags worth US$122,500 and made them into sandals priced between $34,000 and $76,000. The sandals were called Birkinstocks, although there was no connection to the iconic Birkenstock shoe brand.
“This is an example of the mashup culture we live in and there is likely going to be more of this, Simpson says. “Obviously the ‘Satan Shoe’ is a stunt but you can see how there would be other cases where people use bits of other brands to create something transformative. Is that person infringing on those other brands’ trademark rights?
“If the Nike complaint goes to trial, you imagine that the court would have something to say about it and that would have implications beyond just this case. That’s why I believe there would be a lot of big brands watching closely.”
