Expert: Why Nike stands a 'reasonably good chance' to win its case vs Lil Nas X’s ‘Satan sneaker’
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Nike has found itself trapped in a battle between heaven and hell after a shoemaker linked to rapper Lil Nas X created a decidedly devilish pair — but some think the sneaker giant may have the advantage.
Over the weekend, the rapper (whose real name is Montero Lamar Hill) went viral when he unveiled a collaboration with MSCHF, a Brooklyn design brand, on a repurposed version of Nike's (NKE) Air Max 97. Tied to a racy and controversial new music video dropped by Hill, the shoe is infused with a drop of human blood and dubbed the "Satan shoe."
MSCHF produced and sold 666 pairs of the shoe which retailed for $1,000 — but Nike, which also took heat for being associated with the project, was not thrilled with the artistic representation. On Monday, it slapped MSCHF with a lawsuit alleging trademark infringement, a move that could upend the sneaker customization business.
In the complaint filed in the U.S. District Court in the Eastern District of New York, Nike says that the black and red shoe did “significant harm to its reputation and goodwill.” Nike is seeking damages that will be determined at trial.
In a statement released to Yahoo Finance, the athletic gear giant insisted that it does not “have a relationship with Lil Nas X or MSCHF. The Satan Shoes were produced without Nike's approval or authorization, and Nike is in no way connected with this project."
However, unauthorized sneaker customizations made for resale are nothing new. Many shoes customized by design brands such as MSCHF have been Nike's. In fact, MSCHF’s 2019 project created a $1,425 pair of white Nike Air Max 97s dubbed the "Jesus Shoes,” which Nike didn’t object to at the time.
Christopher Buccafusco, a law professor at Cardozo law school in New York City explained to Yahoo Finance that there is a degree of uncertainty surrounding this case, and that could work to the shoe maker’s benefit.
"My sense of following this case in IP (intellectual property) law ... is that people are pretty uncertain and that probably is a good thing for Nike,” he said.
“If IP law professors who think about this stuff all the time aren't really sure what the outcome is likely to be, that gives Nike or a reasonably good chance of going forward with the case and winning."
Buccafusco explained that the fair use and the first sale doctrine, which gives people the right to buy something, modify, then sell it — might stand in Nike's way.
"If I'm selling a Ford truck, I'm allowed to tell people that my truck is a Ford. If I'm selling reconditioned golf balls, I'm allowed to tell people that they were initially Titleist golf balls even though I had reconditioned them or done something to them before I resold them,” he added.
“So MSCHF is engaged in a first sale.They lawfully purchased copies of the Nike shoes and modified them and are reselling them," he said.
Yet as Buccafusco pointed out, purchasers of the MSCHF know that they are not buying a product designed by Nike. "They know they're buying the Lil NAS, X collaboration with MSCHF and so they know that the original shoe was Nike, but they also know that the thing that they're buying is not actually sold by Nike."
Buccafusco noted that one potential, yet implausible, Nike strategy would be to point out how people who were confused and thought that Nike was behind the design — and claimed they would not buy Nike products again.
Yet the legal expert highlighted an alternate scenario in which Nike could prevail — on the concept of brand tarnishment.
"Brands can sue when their brands have been tarnished in the eyes of consumers,” Buccafusco explained to Yahoo Finance.
“So here, although no consumers of the Satan shoes are confused, the brand is tarnished in some sort of way. Generally these are harder cases to make but it still gives Nike an opportunity to go forward,” he added.
Reggie Wade is a writer for Yahoo Finance. Follow him on Twitter at @ReggieWade.
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