from the 1st sale and dilution dept
Well, here’s a fun one. Over the weekend, the musician Lil Nas X announced that, along with MSCHF, he was selling “Satan Shoes.” From the beginning this was all just a silly publicity stunt that more or less played out probably exactly as those involved expected. If you don’t know what MSCHF is then it’s worth reading up on the organization that claims it’s based on “structured chaos” and only ever so often randomly drops some kind of offering for sale, usually in limited quantities that get lots of attention and sell out quickly. As was summarized in a Business Insider article about MSCHF last year:
There’s no apparent thread connecting MSCHF’s slew of projects: The team has built a browser add-on that disguises your Netflix watching as a conference call, designed a squeaking rubber chicken bong for smoking weed, and created a YouTube channel solely consisting of videos of a man eating everything from a tub of mayonnaise to a photo of Pete Davidson. But for Whaley, the lack of continuity is the point: As long as the team can figure out the resources to create and launch a product, “nothing is safe.”
“Our perspective is everything is funny in a nihilistic sort of way,” Whaley said. “We’re not here to make the world a better place. We’re making light of how much everything sucks.”
The company originally got the most attention for another pair of shoes — the “Jesus shoes.” That involved a modified Nike Air Max 97 with — they claimed — holy water injected into the soles of the shoe. The Satan shoe is a somewhat obvious follow up to the Jesus shoe. This time, 666 pairs of the shoe were made, also upcycled Nike Air Max 97s. Rather than having “holy water” injected into the soles, this one included red ink, with a promise of a single drop of blood (whose blood is never stated), and then some red stitching and embellishments on the shoes.
A whole bunch of people idiotically freaked out about this, like we were back in the Satanic Panic from the 1980s. Even worse, though the whole thing was (1) clearly a stunt and (2) obviously not endorsed by Nike, the usual brigade of pearl clutching culture warriors immediately insisted that Nike was behind the whole thing, and being a culture warrior seems to have more power when you can blame a company for it. Nike was quick to point out that it had nothing to do with all of this, but by Monday the company decided to sue MSCHF over the shoe, making a variety of trademark infringement claims. The lawsuit gives us excellent images such as this one:
Obviously, if you buy a pair of Nikes, you can resell them. And there is the concept of the first sale doctrine that allows you to resell goods that you bought that are protected by copyright or trademark laws. However, as law professor Alexandra Roberts notes in a detailed Twitter thread, 1st sale does not apply to “materially altered” products. Of course, that doesn’t mean that Nike will win either. You can argue over whether or not these shoes are actually “materially” altered, or just cosmetically so. Nike includes the ink/blood in the sole as evidence that the alterations are material:
The material alterations include at least referring to the shoe as the Satan Shoe, adding red ink and human blood to the midsole, adding red embroidered satanic-themed detailing, adding a bronze pentagram to the laces, and adding a new sock liner.
Frankly, this feels… pretty weak. There are examples of artists taking others’ products — even those protected by trademark — and altering them for artistic purposes.
Much of the trademark claims rely not so much on the likelihood of confusion regarding the origin of the shoes, but rather on dilution — including both blurring and tarnishment. We’ve argued in the past that it’s insane that dilution and tarnishment are a part of trademark law, as they appear to be complete bastardizations of the purpose and intent of trademark. Trademark law — unlike copyright and patent law — is really supposed to be about consumer protection. It’s supposed to be so that users aren’t buying a product they believe is made by this reputable entity, only to be tricked as it was actually built by that unreputable entity. It was only more recently — through a concerted effort by trademark lawyers who sought to cast trademarks as “property” and put them next to copyrights and patents — that the law morphed into something that included “tarnishment” and “dilution.”
But… those do exist, and will be a key part of the lawsuit if it moves forward and is not settled quickly (as may well happen).
MSCHF?s use of the Nike Asserted Marks and/or confusingly similar marks has caused, continues to cause, and/or is likely to cause irreparable injury to and dilution of the distinctive quality of the Nike Asserted Marks in violation of Nike?s rights under 15 U.S.C. ? 1125(c). MSCHF?s wrongful use of the Nike Asserted Marks is likely to cause dilution by blurring and the whittling away of the distinctiveness and fame of the Nike Asserted Marks. In addition, MSCHF?s wrongful use of the Nike Asserted Marks in connection with satanic imagery is likely to cause dilution by tarnishment.
I am hard pressed to see how this shoe would “whittle” away at the distinctiveness of Nike’s brand, but trademark law can be pretty silly sometimes. Nike also does claim that there is confusion and highlights a bunch of social media posts from very, very stupid people who actually believe the shoe comes from Nike itself.
Of course, there’s a decent likelihood that MSCHF is loving every minute of this. The company has said in the past that a lawsuit would “help increase the value” of the products it releases.
Meanwhile, the Fashion Law blog has a detailed analysis of the legal issues here (written before the lawsuit was filed) that also notes that 1st sale might not apply here, given the alterations. However, it also highlights that it could make a fair use claim in response:
On the other hand, given the lengths to which MSCHF routinely goes to build a narrative around its individual drops (all of which are relatively limited in quantity), there is a chance that a fair use claim ? satire, maybe? ? might serve to shield it from liability for making use of the Nike logo in the process.
Lots of interesting legal questions here — but on the whole, the entire thing just seems so… freaking… pointless. The shoes are clearly a publicity stunt. A bunch of people fell for it, and now Nike is playing into it with a lawsuit.
It’s just a silly pair of shoes, people.
Filed Under: blood, confusion, dilution, drop, lil nas x, publicity stunt, satan shoes, shoes, swoosh, tarnishment, trademark
Companies: mschf, nike