Satan Shoes - Nike and the devil tussle over trade mark exhaustion
Occasionally IP disputes break into the public domain. This one has to do with Nike, a famous brand, and also to do with Satan. Rosie and Crafty Counsel investigated this issue as part of the Crafty Counsel Investigates series. Whilst the dispute was quickly resolved, the wider issues for brand owners worldwide remain noteworthy.
A company called MSCHF was up to no good. They took some Nike Air trainers, added a drop of blood and water, and repackaged them as a new product which they sold as 'Satan Shoes'.
Why is this an issue for Nike?
(A few) people in the US saw the Satan Shoes online and genuinely believed that it was Nike that was selling the shoes. It's obviously not ideal for a mainstream American sportswear brand to be associated with devil worship... it's not typically in anyone's marketing plan.
Has this happened before?
This isn't the first time that there's been a Satan's shoes type product sold by MSCHF. (They have taken out the Marauder's Map again.) They first sold something very similar, Jesus Shoes: a Nike shoe that included holy water, was sold around early 2020.
The important difference between Satan and Jesus Shoes was the number of shoes sold. MSCHF only made around 20 pairs of Jesus shoes - whereas the volume of the Satan shoes was 666. The number of products offered for sale and the increased media attention, meant that this became much more of branding issue for Nike. Obviously an association with Jesus isn't as problematic for a brand as an association with Satan.
Why did Nike stop the 'Devil Shoes'?
Let's say you bought some Nike trainers, you decide you don't like them and put them up for sale on eBay. This is completely fine and Nike can't stop you from selling them because you are basically selling exactly the same product. Nike "exhausted" its rights in the shoe when it made its first sale. It cannot stop future sales of the same product.
However, Nike was able to stop the sale of the Satan Shoes because MSCHF was not selling exactly the same goods (the originals didn't have the pentagram and blood). However, MSCHF kept in the Nike swoosh (one of their key trade marks). That meant that the rights in the modified shoe haven't been exhausted and Nike was able to stop this different use of their trade mark and the underlying product.
What can we learn from Satan?
The key takeaway is you can control what happens to your goods after they are sold if the product has been repackaged or repurposed prior to onward sale. The other important thing to note is that Nike has an extensive brand protection programme, and they have taken the misuse of their trade mark rights very seriously. This is the way to maintain your rights and ensure this sort of thing doesn't happen again in the future.
Check out the full Crafty Counsel video here.
To find out more about the issues raised in this case contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - firstname.lastname@example.org #IP #IntellectualProperty #IPLaw #UKlaw #UKtrademarklaw #trademarks #trademark #TM #trademarkinfringement #infringement #nike #satanshoes #nikeshoes #mschf #lilnasx #iprights #dispute #litigation #counsel #jesusshoes