The marketing ploy was enough to grab anyone’s attention. Lil Nas X teamed up with MSCHF to create a pair of sneakers that contained a drop of human blood. The sneakers, dubbed Satan Shoes, are based off of Nike’s Air Max 97s.
The problem: Nike claims Lil Nas X and MSCHF did not have permission to use their design. The Satan Shoes marketing campaign included use of the Nike “swoosh” mark and made no attempts to disassociate itself from Nike. Not surprisingly, Nike has taken steps to protect its Air Max 97 shoe design and make it clear to the public that it is not involved in this operation. These steps include trademark protections.
How do trademark protections work in Nike’s favor in this case?
It is important to note that these protections are not automatic. In order for the trademark protections to work, Nike has to enforce its rights. Trademark protections are available for designs, like the sneaker design in question, through the United States Patent and Trademark Office (USPTO). Inventors or designers who wish to protect their product must file an application with the USPTO. If approved, the protection is generally valid for as long as the trademarked product is used and defended against infringement.
The defense step is vital.
In order to exercise its protections, Nike filed a lawsuit against Lil Nas X and MSCHF. These lawsuits can serve two main purposes: stop the infringement and provide compensation to the trademark holder to make up for the violation. In this case, the judge agreed to provide a court order forcing the group to refrain from fulfilling any orders for the Satan Shoes.
The group has countered that the work is art and sold as such, not intended for use as footwear.
Who will win?
It is too early to tell. It is possible the parties will enter negotiations and may settle the matter without going to court.