Pumped Up Kicks: What’s Up in the World of Sneaker Customization
Sneakers (I’m sure you’ve heard of them) were once only known for their primary function—athleticism. Now, and over the last several decades, they have become fashionable and desirable objects (I even had a middle school teacher who had a different pair of sneakers for every day of the school year). In fact, in 2020, the global sneaker market was valued at approximately $79 billion and is expected to reach $120 billion by 2026.[1] Meanwhile, the global sneaker resale market was valued at $6 billion in 2019 and is expected to reach $30 billion by 2030.[2] As sneaker culture has grown, so has the range of customization options, from Nike’s “Nike By You” program to aftermarket work by independent artists.
However, with the growth of e-commerce sites, such as Etsy and The Custom Movement, sneaker customization has recently come under legal threat. While sneakerheads and artists may see sneaker customization as a way of self-expression, corporations such as Nike see a violation of intellectual property rights.
A Brief Sneaker History
The first rubber-soled sneaker was created for croquet in the 1860s to help prevent potential grass stains and damage to the lawn.[3] Croquet led to tennis, which then led to basketball, and people outside of the traditional upper class became more involved in athletics. Enter Chuck Taylor, a semi-professional basketball player who dominated the basketball shoe market for decades with his All Stars sneakers, which were originally released in 1917. Basketball eventually gave way to running and in-home aerobics, and more and more people entered the market for athletics shoes.
Sociologist Yuniya Kawamura has identified three waves of the sneaker phenomenon. The first began in the 1970s with underground sneaker culture and the emergence of hip-hop. The sneaker became further ingrained in pop culture with the release of Run-DMC’s “My Adidas,” which led to a sponsorship deal with the company. The launch of Nike Air Jordan’s kicked off the second wave in 1984, and sneakers became indicators of status and earned celebrity endorsements. Today’s digital age of sneaker marketing and resell culture represents the third wave.[4]
The eternal quest for a one-of-a-kind sneaker that shows off the wearer’s personality and views has existed through it all. Sneaker customization has been around for decades, becoming one of the most important sub-categories in the sneaker world, and the rise of e-commerce has only further promoted that practice. In fact, one shoe customizer reported about $10,000 in net income over the course of a few months.[5] While customizers such as Methamphibian and C2 Customs have been influential in the industry, some may ask whether custom sneakers are any different from fakes. As any attorney will likely tell you, “It depends.”
Laws that Apply to Sneaker Customization
When looking at sneaker customization, there are various laws that could come in to play, especially copyright and trademark doctrines.
Copyright Doctrine
United States copyright law protects original works of authorship fixed within a tangible medium of expression, regardless of whether the work is published and unpublished.[6] These works can include literary works; musical works; dramatic works; pantomimes and choreographic works; pictorial, graphic, and sculptural works; motion pictures and other audiovisual works; sound recordings; and architectural works.[7] With copyright protection comes the rights to control distribution of the work, as well as derivatives (works that are based on a work that has already been copyrighted).
Federal copyright law has codified a defense to copyright infringement called the first sale doctrine.[8] The first sale doctrine allows for the resale of products that contain another’s intellectual property, without the original owner’s permission, so long as the reseller lawfully owns the product. Without this doctrine, we (bookstores and libraries included) would not be able to sell or otherwise dispose of works such as books or CDs without the copyright owner’s permission.
Trademark Doctrine
Trademark infringement is an unauthorized use of a trade or service mark on or in connection with goods and/or services that is likely to cause confusion, deception, or mistake as to the source of the goods and/or services.[9] The purpose of trademark law is to protect the consumer from confusing the source of a good or service with another. As an example, if a sneaker company called Nice were to use a symbol similar to the Nike “swoosh,” this would, in all likelihood, be very confusing to consumers, which may lead them to believe that Nice sneakers were actually Nike. As far as sneaker customization goes, you cannot take the colorway or design of one shoe and put it on another. For instance, taking a pattern similar to the classic checkered look of a Vans shoe and putting it on an Air Force 1 would likely cause confusion as to the source of goods, as you are then piggybacking off of the success of one brand to sell your own product.
While the first sale doctrine is based in copyright law, the principle has been applied to trademark law through case law, and can be a defense to trademark infringement.[10] In trademark law, the first sale doctrine allows an item bearing a trademark, such a logo or brand name, to be resold, after the original trademark owner has sold the item, with some exceptions, such as if it is likely to confuse or deceive customers. Essentially, once the product has been placed into the marketplace, the trademark owner no longer has any right to control further distribution. However, the first sale doctrine may not apply if the unauthorized seller’s product is “materially different” from the trademark owner’s product.[11] Trademark owners are also able to overcome the first sale doctrine if they are able to show that the unauthorized reseller is using the trademark on goods lacking the owner’s quality control standards. To overcome a first sale defense based on quality control standards, a trademark owner must show that (1) it maintains a substantial set of quality control standards and procedures; (2) these standards and procedure are consistently applied; (3) these standards are not abided by the reseller; and (4) the of the products not meeting the trademark owner’s quality control standards and procedures is likely to cause consumers confusion and harm the value of the trademark.[12]
Trademark law also addresses the concept of trade dress, which is the overall commercial look and feel of a product or service, which indicates the source and distinguishes it from others.[13] Trade dress can include product design, packaging, and the décor or environment in which a service is provided, to the extent that these elements are not functional. A classic example of this is Christian Louboutin, S.A. v. Yves Saint Laurent Am. Holding, Inc.,[14] wherein the court held that Louboutin’s signature red bottom shoe is a valid and enforceable trademark in instances where the red outsole was contrasting in color with the “upper” portion of the shoe.
Nike Lawsuits
A recent slew of lawsuits filed by Nike has prompted the discussion of what is and is not legal customization in the realm of sneakers.
Nike, Inc. v. MSCHF Product Studio, Inc., Case No. 21-cv-1679, U.S District Court, Eastern District of New York
In March 2021, Nike filed a lawsuit against MSCHF alleging federal trademark infringement, false designation of origin/unfair competition, trademark dilution, and common law trademark infringement and unfair competition for the “Satan Shoe,” a customized Nike Air Max 97 shoe.[15] The shoes were made in collaboration with rapper, Lil Nas X. Nike alleged that the Satan Shoe was an unauthorized material alternation of its Nike Air Max 97, including 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. Nike included the below picture for comparison within its complaint.
Nike further alleged that the shoes had harmed its reputation, stating that some customers had believed that Nike was endorsing satanism.
Interesting enough, MSCHF released a counter pair of shoes in 2019 called “Jesus Shoes,” which was a white pair of Nike Air Max 97s, which included custom stitching and 60ccs of water from the River Jordan. However, Nike did not object to this rendition of its shoe.[16]
MSCHF was able to defend itself on multiple grounds, arguing that (1) the first sale doctrine was applicable in this scenario, (2) the shoes were protected as a parody, and (3) consumers were unlikely to confuse these shoes with those actually manufactured by Nike.
The parties settled in April 2021. While the details of the settlement were not disclosed, customers were allowed to return their pair of Satan Shoes (or Jesus Shoes) for a full refund.[17]
Nike, Inc. v. Customs by Ilene, Inc., Case No. 5:21-cv-01201, U.S. District Court, Central District of California
In July 2021, Nike filed a lawsuit against Customs by Ilene, Inc. d/b/a Drip Creationz, alleging counterfeiting, federal trademark infringement, false designation of origin/unfair competition, trademark dilution, unfair competition in violation of California state law, and common law trademark infringement and unfair competition.[18]
According to the Complaint, Drip Creationz is a California-based company who sells “customized” footwear and advertises and sells many designs on what it claims to be “100% authentic” Nike Air Force 1 shoes. However, Nike alleges that in many instances, counterfeit Air Force 1 shoes were being sold instead. Nike further alleged that Drip Creationz’ further customizes these Nike Air Force 1 shoes to include images, materials, stitching, and/or colorways that have not been approved or authorized by Nike, including deconstructing the shoe, replacing/adding material on the shoe, and including fake and unauthorized designs of the Nike Swoosh and other third-party trademarks and protected images, which were likely to cause confusion as to the source, origin, affiliation, and/or sponsorship of the sneakers. Nike included the following image as examples of designs that Drip Creationz has offered bearing the Nike mark.
Nike also alleged that Drip Creationz also offers customized patches that are shaped like the Nike Swoosh, which are called “Swoosh” Patches.[19]
Drip Creationz also offers its own sneaker called the D1, which Nike alleges is a “knock-off” of the Air Force 1.[20]
Nike also included several instances of actual confusion of customers who believed they were going to be receiving an authentic pair of Nike Air Force 1 shoes.
In response to this lawsuit, anticipating that it may be viewed as an attack on the “little guy,” Nike issued a statement that “it has no desire to limit the individual expression of creatives and artisans, many of whom are Nike’s biggest fans,” but that it “cannot allow ‘customizers’ like Drip Creationz to build a business on the backs of its most iconic trademarks, undermining the value of those marks and the message they convey consumers.”[21]
On January 13, 2022, this matter was ordered to a private mediator, with the ADR proceeding to be held no later than October 21, 2022.[22] Additionally, the jury trial for this matter was tentatively set for January 30, 2023.[23]
Nike, Inc. and Converse Inc. v. Jeffrey Waskowiak and Kickrich, LLC, Case No. 3:21-cv-1068, U.S. District, District of Oregon, Portland Division
Nike, in conjunction with Converse, filed a lawsuit against Jeffrey Waskowiak and Kirkrich, LLC in July 2021.[24] Similar to the previous two cases, Nike and Converse alleged federal trademark infringement, false designation of origin/unfair competition, trademark dilution, common law trademark infringement and unfair competition, and trademark dilution under Oregon state law.
Nike alleged that defendants make and sell custom footwear products which combine purportedly genuine Nike Air Jordan 1 soles with uppers entirely fabricated by the defendants, which include reproductions of the Nike Swoosh and other protected trade dress., and included the below photograph as an example[25]
Nike further alleged that defendants’ products also falsely affiliate Nike with other brands, such as Amazon.[26]
Nike also alleged that defendants make and sell laser cut and digital download shoe patterns, which would allowed other third-parties to make fakes of several iconic Nike trade-dress protected footwear styles, including the Air Force 1, the Dunk, and the Air Jordan 1.[27] Defendants also allegedly sold other products which displayed prominent Nike and Converse marks, including clocks and stools.[28]
On December 10, 2021, the parties filed a Joint Motion for Entry of A Consent Judgment and Permanent Injunction as to Defendant Kickrich, LLC,[29] citing that the parties had entered into a confidential settlement agreement. Kickrich, LLC was permanently enjoined from, among other things, “manufacturing, transporting, promoting, importing, advertising, publicizing, distributing, offering for sale, or selling any products . . . under the Asserted Marks or any other marks, names, symbols, or logos which are likely to cause confusion or to cause mistake or to deceive persons into the erroneous believe that any products that Defendant caused to enter the stream of commerce or any of Defendant’s commercial activities are sponsored or licensed by Plaintiffs, are authorized by Plaintiffs, or are connected or affiliated in some way with Plaintiffs or the Affiliated Marks.”[30] The Consent Judgment and Permanent Injunction was entered on December 13, 2021.[31]
Nike, Inc. v. La La Land Production & Design, Inc. and John Geiger Collection LLC, Case No. 2:21-cv-0443, U.S. District Court, Central District of California
In August 2021, Nike filed a First Amended Complaint against La La Land Production & Design, Inc. and John Geiger Collection LLC,[32] alleging direct and/or contributory federal trademark infringement, direct and/or contributory false designation of origin/unfair competition, direct and/or contributory trademark dilution, unfair competition in violation of California state law, and direct and/or contributory common law trademark infringement and unfair competition.[33]
Nike alleged that “La La Land manufactures, distributes, sources, sells, and/or supplies footwear products that infringe on Nike’s intellectual property rights to others who subsequently sell those products to consumers.” As an example, La La Land manufactures and provides production and design services to Warren Lotas, a California-based company that has promoted and sold fake Nike Dunks, which were supplied by La La Land. Nike included the below table for comparison.[34]
Nike further alleged that La La Land has also worked with another well-known shoe customizer, John Geiger Collection, to product shoes that bear the Nike Air Force 1 trade dress.[35]
In all, Nike alleged that La La Land’s sneakers, such as those above, cause confusion in the marketplace regarding whether they are legitimate authorized customizations or illegal facts, that by providing such sneakers, La La Land is knowingly participating in a scheme to intentionally create confusion in the marketplace and capitalize on it, and that John Geiger knowingly and intentionally creates confusion in the marketplace and capitalizes on Nike’s reputation and the reputation of its sneakers by marketing and selling shoes using Nike’s registered Air Force 1 trade dress.[36]
In response to the Amended Complaint adding him as a defendant, John Geiger stated, “I feel like Nike has been taking inspiration and benefiting off the hard work of myself and a lot of creators within the community over past 10+ years” and that he is “preparing to fight this battle for all creators and underdogs fighting the same uphill battle as me. I’ve been very clear throughout the two years of developing and selling the GF-01 that this silhouette was inspired by Nike and also made sure that everyone purchasing the shoe is aware that it is a designer shoe crafted with higher end materials and quality, along with my trademark and changes to the silhouette. I also created my own mold for our outsoles with branded JG trademark and changed the pattern multiple times all while following trade dress guidelines.”[37]
John Geiger filed a Motion to Dismiss Nike’s First Amended Complaint on November 2, 2021, wherein Geiger argued that his GF-01 shoes are not infringing upon Nike’s trademarks, and that the GF-01 shoe is unlikely to be confused for a Nike product because it does not feature the Nike Swoosh logo. Instead, Geiger’s shoes have a “G” logo on its side, which Geiger argues looks nothing like the Nike Swoosh.[38] Geiger further argued that there is unlikely to be any confusion in the marketplace because “sneakerheads” are education and exercise a “high degree of care” with their purchases, and there is no evidence of actual confusion.[39]
Ultimately, the court denied Geiger’s Motion to Dismiss on February 8, 2022, and ordered an answer to be filed within 14 days.[40] Geiger filed an answer on February 22, 2022, which included a counterclaim seeking declaratory judgment for invalidity and cancellation of two Nike trademark registrations.[41]
Conclusion
One of the main concerns that customizer’s have regarding lawsuits like Nike’s is the impact on freedom of expression and their ability to continue their work. While trademark owners generally can prevent others from commercially benefitting from selling goods or services that incorporate their trademarks without permission, there are limitations, such as the first sale doctrine. While it is not an absolute safe harbor for creators, the first sale doctrine is the principle that allows e-commerce sites such as eBay to exist. However, the protection offered by the first sale defense starts to weaken when genuine goods from a trademark owner are customized to dramatically contrast what is originally produced by the manufacturer, or when they are offered for sale in mass, such was the case with the Satan Shoes (666 pairs were made for purchase). As stated above, first sale doctrine applies where the goods that are being resold are not “materially altered.” What constitutes a material alteration depends on the product, but for shoes, it may mean alterations where there is an alteration to the comfort or other performance-related features.
The Nike complaints are informative as to what big-name sneaker manufacturers, or any trademark owner, may be looking for when assessing trademark infringement. Factors include, but are not limited to, whether the reseller is implying a false association between the reseller and the original owner, whether the quality of the product is at risk by the reseller’s alteration, and whether the reseller is creating an association with the original owner with some unsavory promoter or practice.[42] However, the Nike complaints also are informative of best practices for sneaker customizers to keep in mind when they are working on projects. Customizers should not use distinctive prints from other brands or collaborations in their own custom work.[43] However, customizers would benefit from adding explicit disclaimers to your website and invoices that they are not associated with the particular brand of sneaker that they are working with.[44] E-commerce sites may even pass this off to the individual artist.[45] Similarly, customizers should not intentionally misrepresent an affiliation with a particular sneaker manufacturer and should avoid naming their shoe design or colorway similar to or the same as another popular sneaker.[46]
Amanda Alasauskas
Amanda Alasauskas is an associate at Innis Law Group, where she focuses her practice on trademark, copyright, and internet law matters. Amanda has experience with trademark prosecution and litigation, contract and licensing matters, and commercial and general civil litigation. She was admitted to the Illinois Bar in 2017.Amanda earned her B.A. in Criminal Justice with a minor in Sociology from Indiana University Bloomington in 2014, and her J.D. with a certificate in Intellectual Property from DePaul University College of Law in 2017. Amanda is one of LCA’s volunteer attorneys and serves as President of the Associate Board.
[1] Naomi Braithwaite, The history of sneakers: from commodity to cultural icon, The Conversation, May 17, 2021, https://theconversation.com/the-history-of-sneakers-from-commodity-to-cultural-icon-127268. [2] Id. [3] Kate Keller, A Brief History of America’s Obsession With Sneakers, Smithsonian Magazine, May 18, 2018, https://www.smithsonianmag.com/innovation/brief-history-americas-obsession-sneakers-180969116/. [4] Braithwaite, supra note 1. [5] Khristopher J. Brooks, Nike cracking down on people customizing its sneakers. But is it shooting itself in the foot?, CBS News, Aug. 13, 2021, https://www.cbsnews.com/news/nike-shoes-sneakers-customizers-air-force-one-lawsuit/. [6] 17 U.S.C. § 102. [7] Id. [8] 17 U.S.C. § 109. [9] About Trademark Infringement, USPTO.gov, https://www.uspto.gov/page/about-trademark-infringement (updated May 5, 2021). [10] See Prestonettes, Inc. v. Coty, 264 U.S. 359 (1924). [11] See Beltronics USA, Inc. v. Midwest Inventory Distribution, et al., 562 F.3d 1067 (10th Cir. 2009). [12] See Shell Oil Co. v. Commercial Petroleum, Inc., 928 F.2d 104 (4th Cir. 1991); Warner-Lambert Co. v. Northside Dev. Corp., 86 F.3d 3 (2d Cir. 1996). [13] Trade Dress, International Trademark Association, https://www.inta.org/topics/trade-dress/ (last accessed Mar. 14, 2022). [14] 696 F.3d 206 (2d Cir. 2012). [15] Complaint, Nike, Inc. v. MSCHF Product Studio, Inc., Case No. 21-cv-1679, U.S District Court, EDNY, https://storage.courtlistener.com/recap/gov.uscourts.nyed.461880/gov.uscourts.nyed.461880.1.0.pdf. [16] Adi Robertson, Nike sues over Lil Nas X’s ‘unauthorized Satan Shoes,’ The Verge, Mar. 29, 2021, https://www.theverge.com/2021/3/29/22357225/nike-sues-lil-nas-x-unauthorized-satan-shoes-mschf; Caitlin O’Kane, “Jesus shoes” with holy water in the soles are selling for $4,000, CBS News, Oct. 11, 2019, https://www.cbsnews.com/news/nike-air-max-97-jesus-shoes-filled-with-holy-water-selling-for-4000-2019-10-11/. [17] Adi Robertson, Nike and MSCHF settle Satan Shoe lawsuit, say any ‘confused’ buyers can get a refund, the V Ierge, Apr. 8, 2021, https://www.theverge.com/2021/4/8/22374480/nike-mschf-lil-nas-x-unauthorized-satan-shoes-lawsuit-settled. [18] Complaint, Nike, Inc. v. Customs by Ilene, Inc., Case No. 5:21-cv-01201, USDC CD Cal., https://www.scribd.com/document/519641159/Nike-v-Drip-Creation-z. [19] Id. [20] Id. [21] Brandon Richard, Nike Says Sneaker Customizer Is Infringing On Its Trademarks, Complex, July 21, 2021, https://www.complex.com/sneakers/nike-lawsuit-drip-creationz-custom-sneakers. [22] Order/Referral to ADR Procedure No 3, ECF No. 36. [23] Civil Trial Scheduling Order, ECF No. 35. [24] Complaint, Nike, Inc. and Converse Inc. v. Jeffrey Waskowiak and Kickrich, LLC, Case No. 3:21-cv-1068, USDC Dist. Oregon, Portland Div., https://www.scribd.com/document/519573112/Nike-and-Converse-v-Kickrich. [25] Id. [26] Id. [27]Id. [28] Id. [29] Defendant Jeffrey Waskowiak was previously dismissed without prejudice. Notice of Dismissal as to Jeffrey Waskowiak, ECF No. 13. [30] Joint Motion for Consent Judgment and Permanent Injunction as to Defendant Kickrich LLC, ECF No. 14. [31] Consent Judgment and Permanent Injunction as to Defendant Kichrich, LLC, ECF No. 15. [32] The original Complaint was filed in January 2021 and only named La La Land Production & Design, Inc. as a Defendant. Complaint, ECF No. 2. [33] Complaint, Nike, Inc. v. La La Land Production & Design, Inc. and John Geiger Collection, LLC, Case No. 2:21-cv-0443, USDC CD Cal., https://www.scribd.com/document/538612460/55-First-Amended-Complaint-Nike-v-La-La-Land. [34] Id. [35] Id. [36] Id. [37] John Geiger (@johngeiger_), Instagram (Aug, 27, 2021), https://www.instagram.com/p/CTGEfrOF7b7/?utm_source=ig_web_copy_link. [38] Notice of Motion and Motion to Dismiss Nike’s First Amended Complaint, ECF No. 82. [39] Id.; Brendan Dunne, John Geiger Responds to Nike in Sneaker Knockoff Lawsuit, Complex, Nov. 3, 2021, https://www.complex.com/sneakers/nike-john-geiger-air-force-1-sneaker-lawsuit-response. [40] Order Denying Defendant John Geiger Collection LLC’s Motion to Dismiss the First Amended Complaint and Sever Claims, ECF No. 92. [41] Answer to Amended Complaint/Petition with Jury Demand, Counterclaim, ECF No. 94. [42] Angela Langlotz, First Sale Doctrine: Why Nike Isnt Suing These Resellers, Trademark Doctor, Apr. 20, 2021, https://trademarkdoctor.net/federal-trademarks/first-sale-doctrine-proper/. [43] Karl Fowlkes, Customs or Counterfeits? Understanding the Ethics and Legality of Custom Sneakers, Medium, Dec. 4, 2018, https://medium.com/the-courtroom/customs-or-counterfeits-understanding-the-ethics-and-legality-of-custom-sneakers-1ce39854ffc8. [44] Id. [45] See Intellectual Property Policy, The Custom Movement, https://www.thecustommovement.com/legal/ip (last accessed Mar. 14, 2022). [46] Fowles, supra note 43.