Trademarks are legal tools that can help inventors and businesses protect their intellectual property. Nike recently tested the reach of this tool when the shoe manufacturing giant took on a case against a project associated with pop sensation Lil Nas X for an alleged violation.
What was the project?
Lil Nas X worked with MSCHF, a Brooklyn-based designing label, to promote a shoe the designer made specifically for one of his music videos. The musician, well-known for his hit “Old Town Road,” worked in collaboration with the designer to release a black and red tennis shoe shortly after the release of his music video “Montero (Call Me By Your Name).”
The problem? It had an uncanny resemblance to the Nike Air Max 97.
Just how uncanny? The sole looked similar. The wave pattern along the side almost identical. The shoe even had the iconic Nike swoosh in not one, but two separate places. The designer marketed the customized sneaker as its own, separate product. Not a shoe, it explained, but a work of art.
Not only were there questions about the similarities and potential IP violations with Nike, but the shoe was also controversial because it touted the presence of human blood in its sole and was named “Satan Shoes.” Regardless of Nike’s views on the connection between its brand and a shoe marketed as the choice of Satan, the fact that the designer was using their protected product for financial gain was a problem.
What options are available when a business suspects a trademark violation?
In cases like this, the first step is generally to write a cease and desist letter. If that does not work, the trademark holder can seek a court injunction. In this case, the court approved the injunction, and the court ordered the designer to stop production and sale of the shoe.
Next, the business could take the designer to court for a financial penalty — essentially to recoup any funds the designer made off of the violation. These can be large awards. In this case, each individual pair sold for over $1,000. This can either end in a settlement, as it did with Nike and MSCHF, or the court can make a ruling.
The case provides an example of the power of trademark protections. Nike was able to act swiftly to stop production and hold the infringing party accountable for the violation.