The Power of Copyright

It’s all about the “swoosh”

Nike’s famous swoosh is just one of the many registered trademarks in the United States. However, although it might seem an innocent symbol, it carries copyrights protected by the 15 U.S. Code § 1051 (“15 U.S. Code § 1051 - Application for registration; verification,” 2021). Its usage is protected by the legislation as it aims to distinguish itself through unique features. By providing an identifying symbol as the swoosh, Nike’s products are easily identified by consumers, and thus, covered by the trademark laws. (“Overview of Trademark Law,” 2021)

The Case

On the day after Palm Sunday - a relevant Christian holiday - MSCHF, an American art collective announced the release of its “Satan Shoes”, modified Nike Air Max 97s with an inverted cross, a pentagram and the words “Luke 10:18” engraved in it referred to the passage were Lucifer falls from heaven. The release gained further attention as Lil Nas X, a famous singer and composer, announced its partnership with MSCHF disclosing a giveaway for the 666th pair of the shoes. What would get Nike’s attention was not the known design, or the air bubble cushioning sole containing 66cc of red ink and a single drop of human blood, but rather the usage of its signature “swoosh” engraved in these shoes and what it would represent to the company’s image. 

Nike’s “swoosh” is known all around the globe. The symbol is a type of intellectual property - an intangible asset developed from human creativity  - and is an emblem for the sportswear company. One glance at the well known figure and the first brand that comes to consumers’ minds is: Nike. Thus, anything carrying the famous “swoosh” will be associated with the company. 

In addition, the association of this intellectual property is further assured by trademark laws. By directly relating the brand Nike to the symbol, the trademark laws gave the company the ability to pursue legal actions against any infringement of its trademark. Thus, as the swoosh became strictly tied to Nike’s image, the company ensured that it is not associated with anything that could harm the organization. 

Finding a loophole on trademark laws 

Trademark laws protect the usage of a brand’s intellectual property for most cases. However, in a lawsuit as MSCHF’s, where Nike was suing them for infringement of these laws - there is a claim the defense could make: fair use. The argument states that the usage of this symbol was only used in good faith for its owner rather than the seller, done for a limited and transformative purpose. In addition, it could unfold to the purpose of criticism or comment, allowing for it to be a parody - an imitation of the style of a particular creator. However, the Satan Shoes didn’t follow any of the requirements for the fair use claim. As courts evaluate the purpose and character of the use of the intellectual property, sneakers with pentagrams didn’t appeal to be very “transformative” (“Overview of Trademark Law,” 2021). Added to the misleading shoes’ objective, the usage of the characteristic swoosh caused consumer confusion, as consumers associated the image of Nike’s brand to Satanism, who had no actual involvement with MSCHF's shoes. Thus, the art collective could not use the fair use argument in its defense. 

Jesus vs. Satan

The Satan Shoes were not MSCHF’s first creation that created a relation between a Nike design and Christianism. With it’s 2019 release, the art collective released its Jesus Shoes, which are very similar to the Satan Shoes, but with no pentagrams or inverted cross, and holy water in its air bubble sole instead of blood and ink. However, even with the characteristic swoosh, there were no lawsuits in 2019 from the sports brand. Thus, it creates the impression that it is not necessarily about the usage of the intellectual property itself, but the implications this use brings to the brand owner. As not many consumers are avidly against Jesus or holy water, the sneakers didn’t bring as much attention and harm to Nike. Thus, differently from the current lawsuit, there was no association of Nike with Christianism, causing no consumer confusion and harm to the original sports brand, allowing MSCHF to fall under the fair use claim.  (Ernest, M. 2021)

Results

The lawsuit resulted in a settlement between Nike and MSCHF where both parts seemed satisfied with the results. Any shoes with Nike’s swoosh created by the art collective were taken out of the market and bought back from the consumers. 

Agreeing to a settlement, Nike achieved its goal: the Satan Shoes were collected and refunded from the market by MSCHF. In addition, the art collective also agreed that its 2019 Jesus Shoes would also be bought back, ending any ties of the group to the usage of Nike’s trademarked swoosh. 

Although Nike came as the legal “winner” to the lawsuit, MSCHF seems to have come out of it with the most benefits. As a Brooklyn-based art collective, the organization works to get attention from consumers through its bold creations in order to spread its message. Thus, the collective and its attorney were satisfied with the results the lawsuit brought even after having to remove its products from the market. 

Resolution

The breakdown of this lawsuit, built entirely in the usage of Nike’s swoosh and MSCHF’s violation of trademark laws raises a question: what if MSCHF produces the same shoe but without the swoosh? The presence of the trademarked symbol was the only thing that allowed Nike to stop the promotion and sale of these shoes, thus is it possible that removing the emblem would allow the art collective to keep its divine shoes? Yes. Although MSCHF used the AirForce Max 97 design, a characteristic Nike design, it does not have a trademark and thus the claims used by the sports company in the current lawsuit could not be filed in this case. As consumer confusion would not be recurrent due to the lack of the characteristic symbol, no association between Satanism and Nike would be technically built. Taking in consideration the current lawsuit, Jesus and Satan shoes, the swoosh, and Nike’s intentions it can be concluded that the reasoning is not only embedded in the pure usage of the intellectual property, but the unfolding this use will bring to the brand owner. 

References

Albert, V. (2021, April 9). Nike settles lawsuit against company that produced Lil Nas X “Satan Shoes.” Retrieved May 1, 2021, from Cbsnews.com website: https://www.cbsnews.com/news/lil-nas-x-shoe-nike-settles-with-company-that-produced-satan-shoes/

BBC News. (2021, March 30). Nike sues over “Satan Shoes” with human blood. Retrieved May 1, 2021, from BBC News website: https://www.bbc.com/news/business-56572245

Ernest, M. (2021, April). Why did Nike sue over the “Satan Shoes” but not “Jesus Shoes”?. Retrieved May 1, 2021, from Input website: https://www.inputmag.com/style/nike-satan-shoes-lawsuit-lil-nas-x-mschf-jesus-shoes

‌Deabler, A. (2019, October 9). $3G “Jesus Shoes” filled with holy water sell out within minutes. Retrieved May 1, 2021, from Fox News website: https://www.foxnews.com/lifestyle/3g-jesus-shoes-holy-water-sell-out

Nike Trademarks - Gerben Law Firm. (2020, May 15). Retrieved May 1, 2021, from Gerben Law Firm - website: https://www.gerbenlaw.com/trademarks/footwear/nike/#86166686

‌Is My Parody Fair Use? (2021, March 16). Retrieved May 1, 2021, from Copyright Alliance website: https://copyrightalliance.org/is-my-parody-fair-use/

‌https://fairuse.stanford.edu/author. (2013, April 4). What Is Fair Use? Retrieved May 1, 2021, from Stanford Copyright and Fair Use Center website: https://fairuse.stanford.edu/overview/fair-use/what-is-fair-use/

‌Overview of Trademark Law. (2021). Retrieved May 1, 2021, from Harvard.edu website: https://cyber.harvard.edu/metaschool/fisher/domain/tm.htm#10

User Action Menu (Mobile. (2019, October 11). “Jesus Shoes” Filled With Holy Water From Jordan River Sell for $3,000. Retrieved May 1, 2021, from Universal Life Church Monastery website: https://www.themonastery.org/blog/jesus-shoes-filled-with-holy-water-from-jordan-river-sell-3000