Nike Lawyers Asks Court to Reopen Case Against By Kiy’s Nickwon Arvinger, Days After David Weeks Ruling

Updated Aug. 29, 2023

The battle between By Kiy and Nike continues. After a confusing filing in late August, Nike lawyers asked U.S. District Court Judge Victor Marrero to reopen the trademark case that may have been mistakenly marked closed.

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According to the Aug. 28 court document, Nike representatives noted that on Aug. 22, 2023, Nike and defendant David Weeks filed a joint motion for a consent judgment and permanent injunction, which was entered by the Court on Aug. 23, 2023.

“The consent judgment and permanent injunction was directed to defendant David Weeks alone,” the filing said. “Following the Court’s entry of the consent judgment and permanent injunction, it appears the Court may have marked the case closed as to all parties.”

“As Nike’s claims against By Kiy LLC and Nickwon Arvinger are not resolved and to the extent the above-referenced case was closed as to all parties, Nike respectfully requests that this case be reopened as to defendants By Kiy LLC and Nickwon Arvinger,” the filing noted.

Updated Aug. 24, 2023

A judge in the U.S. District Court for the Southern District of New York ruled in Nike’s favor this week, closing the athletic giant’s trademark infringement lawsuit against defendants Nickwon Arvinger and David Weeks of By Kiy LLC (known as “Kiy”).

In the Aug. 23 ruling, Weeks and By Kiy are permanently forbidden to manufacture, promote, import and sell any products bearing the infringed marks. According to court documents, along with this ruling, By Kiy’s counterclaims against Nike were dismissed.

Updated on Feb. 15, 2023:

Design firm By Kiy, LLC is clapping back at Nike with a countersuit after the Swoosh sued it for trademark infringement in December.

In a countersuit filed against Nike on Monday, By Kiy said its shoe designs in question are “a different type of product than the athletic shoes Nike sells” and that its lightning bolt design in the center looks nothing like Nike’s “Swoosh.”

The countersuit also argued that By Kiy sells in different channels and at a different price point than Nike.

“There is no conceivable way that any reasonable consumer would think he or she is buying a Nike product when the consumer buys a By Kiy product, whether in the primary or secondary sales markets,” the complaint read. “Nike has presented zero pleading or evidence to the contrary.”

By Kiy is looking for a judge to rule that Nike’s claims for trademark infringement are invalid and unenforceable.

What we reported on Dec. 7, 2022:

Nike filed a new trademark infringement lawsuit last week against several “bad actors” accused of knocking off its Air Jordan 1 and Dunk sneaker styles.

According to a complaint filed on Nov. 30 in U.S. District Court for the Southern District of New York, Nike alleged that defendants Nickwon Arvinger and David Weeks of By Kiy LLC (known as “Kiy”), as well as Bill Omar Carrasquillo (known as “Omi”) of Reloaded Merch LLC were “promoting and selling Nike knockoffs in several colorways.”

“Kiy’s and Omi’s conduct constitutes trademark infringement, false designation of origin, unfair competition, and trademark dilution,” the lawsuit said. “And the damage to Nike from Kiy’s and Omi’s knockoffs is considerable.”

Nike added that Kiy’s and Omi’s knockoffs “dilute” Air Jordan 1 and Dunk trade dress and they “confuse, and are likely to confuse,” consumers as to the source, origin, affiliation, and/or sponsorship of the products, especially in the post-sale environment.

The athletic giant also stated in the complaint that it attempted to reach a resolution with Kiy that “does not involve the continued theft of Nike’s Air Jordan 1 design,” but no progress was made. Similarly, Nike said that despite receiving notice from Nike of its infringement, Omi “continues to profit from the theft” of its designs.

What’s more, Nike alleged in the complaint that “bad actors” involved in this infringement include “others in the supply chain” who provide material assistance to direct-to-consumer infringers. This led to the footwear company to add Chinese company Xiamen Wandering Planet Import and Export Co., Ltd. to the suit.

The alleged infringed styles - Credit: Court Documents
The alleged infringed styles - Credit: Court Documents

Court Documents

“Upon information and belief, Wandering Planet manufactures, distributes, sources, sells, and/or supplies knockoff Nike Air Jordan 1 and Dunk sneakers to Kiy, Omi, and possibly others who subsequently sell those products to consumers,” Nike said in the suit.

“Nike cannot allow bad actors like Defendants to confuse consumers by building a business on the back of Nike’s most famous trademarks, undermining the value of those trademarks and the message they convey,” the company added.

According to court documents, Nike is seeking an award of three times the amount of compensatory damages and increased profits, an award of statutory damages, and an order that defendants account Nike for any and all profits earned as a result of “defendants’ acts in violation of Nike’s rights.”

In a statement posted to Instagram last week, Kool Kiy, the CEO and head designer of Kiy Studios, wrote: “Woke up this morning to a lawsuit from the mega giant corporation that I supported my whole life. The fact that they suing a young Black man who started out exactly how they did is kinda crazy to me. Ironic how they tell us to ‘Just Do It.’ Kiy ready tho.”

Carrasquillo didn’t directly address Nike on social media, but in an Instagram post on Tuesday, he seemingly hit back at the company posting a picture of a Reebok shoe that looks similar to an Air Jordan 1. “Yo Nike how ys (sp) letting Reebok do this man is this changed enough,” he wrote.

FN has reached out to Nike for further comment.

This lawsuit is the latest legal action Nike has taken to protect its trademarks. In August, footwear designer John Geiger and Nike resolved their trademark infringement battle. That same month, Nike and Adidas settled a series of U.S. patent disputes over sneaker technology.

What’s more, Odell Beckham Jr. filed a lawsuit against Nike Inc. last month, claiming that the athletic powerhouse “failed to live up to its promises and refuses to abide by its contract.” According to a lawsuit filed in an Oregon Circuit court on Nov. 14, Nike is “willfully withholding millions of dollars” from the longtime Nike athlete and NFL star, who has worked with the Swoosh since 2014. Beckham is seeking more than $20 million in damages.

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