by: JD Garcia (photo c/o: MSCHF)
Sports is uniquely pervasive. It can spill over everything; politics, culture, fashion, and even religion. It can serve as an avenue to challenge social issues with just a simple raise of a fist. It can become the catalyst for a fashion trend where sneakers and joggers become acceptable norms in places where they had no business of being (i.e. athleisure). It can even become a symbol of religious acceptance and tolerance.
Sports has opened the doors for companies to ride on its pervasiveness and insert themselves into the lives of people; athletes, avid sports fans, casuals, or even those who just run occasionally. Arguably, there may be no other company that has taken advantage of this than Nike. Nike has become almost synonymous to sports and has been at the forefront of the indoctrination of sports culture into every aspect of human life. And like anything ubiquitous, Nike has had its fair share of controversy.
In 1997, Nike released the signature basketball shoe for Vin Baker called the Nike Air Bakin. It spurred an uproar from the Muslim community as the way the word “Air” was written at the back of the shoe resembled the word “Allah” in Arabic, which was taken to be blasphemous to the religious beliefs of our Muslim brothers and sisters . The backlash caused Nike to recall several thousands of pairs initially released and re-released versions with a new “Nike Air” logo placed on the back.
Two years earlier, Nike had already found itself in hot water with the Muslim community with a billboard posted in Los Angeles for John Williams, then a Los Angeles Clippers basketball player, with the words, “and they call him Allah”.John Williams was known and called by such name coined by the fans in that locality, but for obvious reasons, the Muslim community found it offensive. Nike reacted quickly and took the billboard down immediately.
More recently, in 2019, a pair of Nike Air Max 97 sneakers blew up the internet as this particular pair appear to have been made in collaboration with the chosen one himself. No, I’m not talking about LeBron James, but Jesus Christ himself. The sneakers were dubbed the “Jesus Shoes” and contained holy water from the Jordan River in its soles – talk about literally walking on water!
These shoes were the brainchild of MSCHF, a creative arts company that thought of visualizing what a pair of sneakers made in collaboration with Jesus Christ would look like. While the Jesus Shoes did raise some eyebrows, it wasn’t at the same level of controversy as the Nike Air Bakin – it also didn’t hurt that the shoes looked pretty clean. It’s quite interesting that the Jesus Shoes were not disavowed publicly by any sect or community and all things considered, it actually brought good PR to Nike despite Nike not having anything to do with the shoes. Notably, Nike was not involved at all in the creation of the Jesus Shoes as MSCHF just bought a pair of generally released Air Max 97’s and customized it.
One pandemic later and MSCHF is back at it again, though they are playing with fire this time. Just recently, MSCHF released the “Satan Shoes”. Instead of holy water, the shoes contained one drop of human blood (whose blood you ask? I don’t know but I hope that person got tested before donating his blood). MSCHF released 666 pairs of the Satan Shoes in collaboration with rapper Lil Nas X (thank God it wasn’t in collaboration with Lucifer). Not surprisingly, several people found the Satan Shoes distasteful and offensive — so much so that Nike received public backlash with calls for boycotting Nike.
The Satan Shoes caused so much controversy the past few days that Nike had filed a lawsuit in the US District Court for the Eastern District of New York against MSCHF, clearly attempting to distance itself from the creation of the sneakers. According to Nike, “There is already evidence of significant confusion and dilution occurring in the marketplace, including calls to boycott Nike in response to the launch of MSCHF’s Satan Shoes, based on the mistaken belief that Nike has authorised or approved this product.” While the case remains pending, the Federal Judge had already issued a temporary restraining order impeding the sale of the Satan Shoes, though MSCHF can still argue that the shoes are part of artistic expression.
We’ll avoid trying to discuss First Amendment rights of Americans (‘coz I ain’t tisoy, I’m pinoy.), so we’ll just touch on the intellectual property aspect of the issue.
The Devil is in the Details
When the Satan Shoes were released, it was widely assumed (and not unexpectedly so), that Nike was involved in their conceptualization. It would be difficult not to associate the Satan Shoes with Nike as they were still marketed as pairs of Nike Air Max 97s. Using this particular pair of Nike sneakers wasn’t random, the Nike Air Max 97 is one of the most easily recognizable pairs of sneakers in Nike’s arsenal. It could not have been chosen without earnest thought and intention.
The problem in this case is that by using such a famous pair of sneakers, the public automatically assumed that Nike had a hand in collaborating with the devil himself that it caused direct negative backlash towards Nike as a brand. MSCHF may not have deliberately intended to cause confusion, but at the very least, the prominence of Nike itself as a brand, and the hype over Nike Air Max 97s, led the public to easily associate Nike with the Satan Shoes. Hence, the calls for boycotting Nike.
Due to the backlash, Nike claimed that the Satan Shoes were causing significant harm to their goodwill and brand reputation, and they consequently filed a lawsuit claiming trademark infringement, trademark dilution, and unfair competition, among others.
Sold my sole
To date, MSCHF hasn’t filed its response yet; but it could have a few counter-arguments in its arsenal – such as the defense of exhaustion of intellectual property rights.
Whenever you buy a pair of shoes, you become, for all intents and purposes, the legal owner of the shoes. Two major aspects of the sneaker culture—reselling and customization—are heavily anchored on this principle. The sneaker reselling world persists on the basis that once the manufacturer has sold the shoes, they no longer have control over it. The buyer/re-seller can therefore use, sell or dispose of it according to his/her whims. Hence, if I buy a pair of Adidas sneakers, draw poop emojis on it, and further sell it to an interested customer, Adidas arguably can’t do anything about it as these no longer violate their IP rights. In other words, an IP owner cannot prevent the further resale or distribution of goods that were legally sold in the market, as their rights over the products have already been “exhausted”. This is the first-sale doctrine or the doctrine on exhaustion of intellectual property rights.
In the case of the Satan Shoes, Nike, as the IP rights owner, has exhausted all of its intellectual property rights in the pairs of Nike Air Max 97 when it was sold to MSCHF. MSCHF could then, in principle, do whatever it wanted to do with those 666 pairs of Nike Air Max 97.
Works of Art
Granted that MSCHF had all the right to do whatever it wanted to do on the shoes, the question arises, is it fair though? MSCHF’s arguments heavily rely on the fact that they are positioning all 666 pairs of Satan Shoes as works of art. By saying so, they are banking on the right to artistic expression which would bolster their contention that the Satan Shoes is a promotion of freedom of expression that should be considered fair use of the Nike Air Max 97s. This is the Fair Use doctrine. It allows unlicensed use of intellectually-protected works in certain circumstances, including in the promotion of freedom of expression.
There are parameters to determining whether there is fair use, such as the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion taken, and the effect of the use upon the potential market. Past court decisions have considered parodies or satire as fair use.
In this case, MSCHF could probably claim fair use, as their shoes were allegedly a satirical take on the collaboration culture in the sneaker world. MSCHF said it themselves when they commented that, “brands like Nike collaborate with anyone willing, to make a splash”. It remains to be seen how the courts will decide on this case though.
If MSCHF pulls this off, perhaps we would see more “collaborations” in the market – Adidas SATAN SMITHS, anyone?
JD Garcia is an editor for Batas Sportiva. He’s into motorcycles and secretly hopes to be cast in the next iteration of 90s crime drama Dark Justice.