This week, the only topic anyone wants to discuss with me is the Satan Shoes. Are Lil Nas X and MSCHF in the wrong, or is Nike a bully? What does this mean for sneaker culture? I'm not going to rehash the (alleged) facts here. You can get up-to-date here. Instead, I'm going to answer some of the most common questions I've gotten over the past several days.
Can Nike really make MSCHF destroy the shoes?
In Nike's complaint, the company seeks more than just money to compensate it for damage to its reputation; Nike also wants the Satan Shoes to be destroyed. Can they ask for that? Oh yes they can. If someone infringes your trademark, you have a lot of options in terms of what you can ask the Court for. Destruction of the infringing goods is one of them. If a Court finds in favor of Nike, those 666 pairs of sneakers may be bound for the fiery pits of hell - or just standard incineration.
That surprised some people, so let's talk for a second about consequences. Often entrepreneurs and small business owners are busy plowing through a never-ending to-do list that does not feature trademark protection near the top. They have not had an attorney do a search for their marks to see if anyone else is already using them. Meaning they do not know if they even have the right to use their own marks or if they are actually infringing someone else's mark. Many times, the thought process is "What's the worst that can happen? They tell me I have to stop?" No, that is not the worst that can happen. Here are just some of the things Nike is asking the Court for in this case:
all of the profits that MSCHF made by using the Nike marks (if this happens to you, all your blood, sweat, and tears went to make someone else money)
a Court order that prevents MSCHF from selling or distributing shoes with the Nike marks on them
money that compensates Nike for the damage to its reputation and the sales it lost because people believed it was the source of the Satan Shoes
money to pay Nike's attorneys for bringing this lawsuit (how much will that end up costing?)
"treble damages": under certain circumstances, the owner of a federal trademark registration can seek 3 times the actual amount of profits the wrongdoer made OR 3 times the actual amount of damages
The takeaway? There can be very painful and expensive consequences for not taking trademark rights seriously.
Is Nike being a bully?
Trademark bullying is a real problem. This happens when some big companies with deep pockets get overzealous about policing the use of their marks and try to bully small business owners out of existence (or at least into a rebrand). They do this by filing lawsuits or oppositions (or threatening to file either) that they have little to no chance of winning in a fair fight. Unfortunately, this strategy often works because the small business owners can't afford to spend tens or hundreds of thousands of dollars to defend against a lawsuit or opposition.
That said, if you can show that someone else's unauthorized use of your mark sparked the kind of outrage we saw in social media this week (people threatening to boycott Nike because they believed the company approved the shoes and endorsed Satanism), I wouldn't put attempts to set the record straight into the category of bullying. Plus, the New York Times reported back in January 2020 that MSCHF raised outside investments totaling more than $11 million since fall 2019. More details here. So, not as big as Nike, but also not exactly the "little guy."
Can I get in trouble for making changes to my own sneakers?
Just your own sneakers or hundreds of pairs of them? Are you going to resell them? And what exactly do you plan to do with them? These are all important questions.
It's worth noting that MSCHF modified Nike sneakers (without Nike's authorization) in the past and sold them as "Jesus Shoes." You can see them here. Instead of Satanic symbols, those shoes featured references to Jesus. Instead of a drop of human blood, they claimed to have holy water from the River Jordan in them. The same New York Times article referenced above quoted a then-creative director at MSCHF saying it would have been "rad" if Nike or the Vatican had publicly disavowed the shoes.
You can get a better sense of the philosophy behind MSCHF in this Business Insider article entitled "Why MSCHF, the viral company behind the trollish 'collab' t-shirt and Holy Water shoes, says a legal fight with Nike or Supreme would be a boon for business."
The key here is that consumers appear to have been confused about where these sneakers were coming from and who endorsed the ideology behind them. The Nike complaint shows several social media posts expressing disgust towards Nike and vowing not to buy any Nike products in the future. One post even reads, in part: "How is Nike not involved when there's a Nike symbol on the shoe!!!" There's a big difference between (a) one artist altering one pair of shoes in a non-commercial context and (b) a commercial project with measurable negative consequences in the marketplace.
But who has the last laugh? To give the devil his due, MSCHF made all of us talk about this. That seems to have been the point all along.
This information was posted on April 1, 2021 and was accurate as of the date of writing. However, the law changes frequently, and readers should not rely solely on general online information but instead should consult a licensed attorney by asking questions about their specific issues when they need legal advice.