Just Don’t Do It: Nike’s Increasing Push Against IP Infringement

Last month, Nike officially filed a complaint against BAPE alleging counts of trademark infringement, false designation of origin, and unfair competition.[1]  Many sneakerheads have been anticipating this lawsuit for over a decade, as many of BAPE’s most popular designs closely mirror those of Nike’s.[2]

Nike alleges that BAPE’s designs completely copied three of its Air Force 1 (“AF1”) related trade dresses, its Dunk trade dress, and two of its Air Jordan 1 (“Jordan”) trade dresses.[3] Protected by the Lanham Act, trade dresses are a products’ configuration, design, or distinct shape that serve to identify a brand the way a trademark would.[4]  Nike’s complaint is focused on the design of its products, which are each inextricably tied to the brand’s history and image.

Nike’s Asserted Trademarked Designs, Nike’s Products, & BAPE’s Products[5]

Nike released the AF1s, Dunks, and Jordans, all different types of basketball sneakers, as the sport began to skyrocket in popularity.  The AF1s launched in 1982 as the company’s first basketball sneakers.[6]  Due to extremely high consumer demand for the sneakers, Nike deviated from its standard practice of retiring shoes after a year in the market, and continues to sell them today.[7]  Nike registered three relevant trademarks on the AF1 trade dress.[8]  The Nike Dunk sneaker was also introduced in the 1980s.[9]  It became extraordinarily popular as college basketball and skateboard culture began gaining momentum.[10]  Nike registered at least one trademark on the Dunk.[11]  Finally, the Jordans, inspired by Michael Jordan, were released to consumers in 1985 to commemorate his rookie year in the NBA.[12]  Nike registered two trademarks on the Jordans.[13]  The shoes amassed significant popularity at the time, and continue to be popular today, with continued celebrity collaborations[14] and an upcoming film “AIR” directed by Ben Affleck.[15]

Each of Nike’s complaints is based in the same claim: BAPE is selling sneakers that bear confusingly similar marks to Nike’s trademarked ones, which is damaging the Nike brand significantly.[16]  Nike supports its claims of confusingly similar marks with images of BAPE sneakers from resellers that are mistakenly labeled with “AF1” or “Dunk,” as well as images of BAPE’s collaborative sneakers with third parties Nike is not similarly affiliated with.[17]

BAPE Products Mistakenly Labeled as Nike Products by Resellers[18]

BAPE’s Collaborations with Third-Parties[19]

Nike is no stranger to filing lawsuits to protect its intellectual property.  Five days after filing suit against BAPE, Nike also claimed that several of Lululemon’s shoes infringed its patented Flyknit technology.[20]   Prior to its suit against Lululemon, Nike also sued PUMA, Adidas, and Sketchers over the same patented technology.[21]  Some of Nike’s recent trademark infringement suits include ones against designers John Geiger, Kool Kiy, and Warren Lotas.[22]  Nike’s lawsuit against Geiger involved the use of its AF1 trade dress and was resolved with an amicable consent judgment where Geiger agreed to modify the design of his shoes.[23]

John Geiger’s Post on Resolving the Lawsuit with Nike[24]

Nike accused Kool Kiy of infringing its Jordan trade dresses, and the case is still ongoing.[25]  Warren Lotas is a designer that caught Nike’s attention after taking pairs of Dunks and altering the Nike “swoosh” logo to resemble a hockey mask, as an homage to Jason from the film Friday the 13th.[26]  He originally did not plan to sell them but did so in late 2019, after later stripping the shoes of the word “Nike” and adding in his initials.[27]  In less than a year, Nike sued Lotas for trademark infringement.[28]

Nike Dunks & Allegedly Infringing Warren Lotas Products[29] 

Because Nike waited close to two decades to pursue this lawsuit against BAPE, many are speculating over what changed.[30]  Nike attempts to answer this by detailing its history with BAPE in its complaint.  According to Nike, BAPE began selling its infringing sneakers in the U.S. for the first time in 2005.[31]  However, Nike did not feel the need to pursue litigation yet, as BAPE, a Japanese brand, was struggling to gain popularity in the U.S. footwear market.[32]  Nike met with BAPE in 2009 to address its pirating of the AF1s, after which BAPE stopped selling the sneakers.[33]  However, Nike believes that since 2021, BAPE’s infringing activities picked up both in volume and scope and its U.S. sales channels have significantly increased.[34]  In support of its claim, Nike states that BAPE returned to its infringing design of the BAPE STA after its redesigned version did not sell well.[35]  Nike further points out that since 2021, BAPE opened new brick-and-mortar stores in New York, Los Angeles, and Miami, significantly increasing their sales channels.[36]  Additionally, CVC Capital Partners Asia V Limited announced its investment in BAPE to support its expansion, with a focus on the U.S. market.[37]

BAPE does not buy into Nike’s explanation.  On February 17, 2023, BAPE requested a pre-motion conference to dismiss Nike’s entire complaint, in addition to responding to some of Nike’s allegations.[38]  BAPE conceded that it began selling the sneakers at issue in 2005, and that Nike met with BAPE in 2009 to object to BAPE’s sneaker designs.[39]  However, while Nike claims that it stopped contacting BAPE about its allegedly infringing actions after 2009 because BAPE stopped selling the sneakers,[40] BAPE provides a different account of events.[41]  BAPE asserts that Nike never clearly stated its actionable claims against BAPE, even during their 2009 meetings.[42]  BAPE further claims that in 2009, Nike requested that BAPE stop selling the BAPE STA sneakers in exchange for a license, an offer which BAPE claims that it ultimately rejected.[43]

In a 2009 email to Nike, BAPE told Nike that “in the interest of mutual cooperation we would be more than amenable to reconsider our position, provided that you expressly spell out for us what claims Nike believes that it could advance against Nowhere/BAPE.”[44]  BAPE maintains that Nike’s recent complaint is similarly vague, as Nike has not identified any of the distinctive elements that make up its trade dresses at issue.[45]  The district court’s decision on this motion will ultimately turn to whether Nike can describe in enough detail what makes its asserted trade dresses so distinctive, and whether BAPE’s sneakers have actually included these distinct details.[46]

Nike’s decision to sue BAPE raises questions about what this will mean for other customizers that have profited off reimagining Nike’s designs.  Jeff Staple, a designer that intended to collaborate with Warren Lotas on a new line of shoes, in an interview said he could not make sense of why Nike would go after certain imitations when BAPE’s BAPE STA sneakers were left unharmed.[47]  He further implies that the entire sneaker industry is one built on imitation.[48]

Now that Nike is going after what the sneaker community dubs as its “biggest copycat,” the fates of other designers—whose careers are built around re-inventing Nike’s designs—are unclear.  For example, Joshua Vides is an artist that gained popularity for customizing AF1s and Jordans with hand-painted black outlines.[49]  Vides gained so much popularity from posting videos of his custom designs, that celebrities like LeBron James asked him for custom shoes.[50]  Vides even opened a coffee shop that is entirely white with black outlines, keeping with the designs that brought him popularity.[51]  The Shoe Surgeon is another designer who, similar to Warren Lotas, takes popular sneakers and re-assembles them into new designs.[52]  Like Vides, the Surgeon expanded into a second career through his “SRGN Academy,” which teaches new designers how to customize sneakers like him.[53]  On Nike Air Max Day in 2018, Vides and the Surgeon collaborated to create a customized Nike Air Max 1.[54]

Before Nike’s suit against BAPE, it seemed that what separated the lack of litigation against designers like Vides and the Surgeon, from the litigation against designers like Geiger, Kool Kiy, and Lotas, was pure luck.  However, now that Nike is going after BAPE on the basis that the brand “wrongfully capitalized on Nike’s fame and its Asserted Marks” by marketing and selling confusingly similar products, it is not clear how long this “luck” will last for these designers.[55]

Regardless of how any of Nike’s pending cases turn out, the sneaker industry is about to drastically change.  Designers who previously believed they were safe from infringement suits will not want to risk their livelihood.  Even if an accused infringer chooses to settle with Nike, their designs are either wiped off the market or sold at absurdly high prices by resellers.  Nike settled with MSCHF over the latter’s “Satan Shoes,” which were Nike Air Max 97s holding drops of blood and ink in the midsole.[56]  Nike stipulated, under their voluntary recall agreement, that the shoes be removed from circulation.[57]  As a result, only a few of the “Satan Shoes” remain in the market, and their repurchase value has increased three-four fold.[58]  Unfortunately, none of this money ended up in the hands of MSCHF (or even Nike).

A few years ago, Nike was credited with inspiring designers like Virgil Abloh to create the streetwear designs that have since taken over the industry.[59]  Abloh, like Lotas and others, grew up “enamored with Nike,” and credited the brand for inspiring him from a young age.[60]  More recently however, Nike’s outpour of lawsuits has rendered the brand overly litigious as a “trademark troll” to burgeoning designers.[61] Nike must consider whether the harm it alleges outweighs the harm it is doing to itself by rejecting its role as a motivator for young designers.

[1] 15 U.S.C. §§ 1114, 1125(a). Nike also alleges two counts of Trademark Infringement under New York State law. N.Y. Gen. Bus. Law §§ 133, 260-L (Consol. 2022).

[2] See, e.g., Thread on Why Hasn’t Nike Sued Bape?, NikeTalk: General Lounge (Dec. 18, 2009), https://niketalk.com/threads/why-hasnt-nike-sued-bape.224223.

[3] Complaint at 1-2, Nike, Inc. v. USAPE LLC, No. 23-CV-00660 (S.D.N.Y. Jan. 25, 2023) [hereinafter USAPE Complaint].

[4] 35 U.S.C. § 1125(a).

[5] Nike, Photograph of Nike’s Asserted Trademarked Designs, Nike’s Products, & BAPE’s Products, in Complaint at 2, Nike, Inc. v. USAPE LLC, No. 23-CV-00660 (S.D.N.Y. Jan. 25, 2023).

[6] USAPE Complaint, supra note 3, at 5.

[7] Id. at 6.

[8] Id. at 7.

[9] Id. at 8.

[10] Id.

[11] Id. at 9.

[12] Id. at 9-10.

[13] Id. at 10.

[14] Kristen Conti, Notable Jordan Shoe Collaborations: A Timeline, NBCSports (Aug. 24, 2022), https://www.nbcsports.com/chicago/bulls/notable-jordan-shoe-collaborations-timeline.

[15]Air (Amazon Studios 2023); see also AIR (@airmovie), Twitter (Feb. 9, 2023, 7:19 AM), https://twitter.com/airmovie/status/1623703241341997057.

[16] USAPE Complaint, supra note 3, at 11.

[17] Id. at 14-15.

[18] Nike, Photograph of Bape Products Mistakenly Labeled as Nike Products by Resellers, in Complaint at 15, Nike, Inc. v. USAPE LLC, No. 23-CV-00660 (S.D.N.Y. Jan. 25, 2023).

[19] Nike, Photograph of BAPE’s Collaborations with Third-Parties, in Complaint at 15, Nike, Inc. v. USAPE LLC, No. 23-CV-00660 (S.D.N.Y. Jan. 25, 2023).

[20] Complaint for Patent Infringement at 2, Nike, Inc. v. Lululemon USA Inc., No. 23-CV-00771 (S.D.N.Y. Jan. 30, 2023).

[21] Days After Bape, Nike Sues Lululemon over Sneakers, Too, Highsnobiety, https://www.highsnobiety.com/p/nike-lululemon-lawsuit (last visited Feb. 26, 2023).

[22] See, e.g., Complaint at 5, Nike, Inc. v. La La Land Prod. & Design, Inc., No. 21-CV-00443 (C.D. Cal. Jan. 15, 2021); Complaint at 6, Nike, Inc. v. By Kiy LLC, No. 22-CV-10176 (S.D.N.Y. Nov. 30, 2022) [hereinafter By Kiy Complaint]; Complaint at 4, Nike, Inc. v. Lotas, No. 20-CV-09431 (C.D. Cal. Oct. 14, 2020) [hereinafter Lotas Complaint].

[23] John Geiger (@johngeiger_), Instagram (Aug. 30, 2022), https://www.instagram.com/p/Ch5X9a4vsXf.

[24] John Geiger, Photograph of John Geiger’s post on Resolving the Lawsuit with Nike, in John Geiger (@johngeiger_), Instagram (Aug. 30, 2022), https://www.instagram.com/p/Ch5X9a4vsXf.

[25] By Kiy Complaint, supra note 22.

[26] Brendan Dunne, Nike v. Warren Lotas: The Bootleg Dunks and Their Place in History, Complex (Nov. 13, 2020), https://www.complex.com/sneakers/nike-warren-lotas-lawsuit-knockoff-dunks-history; see generally Friday the 13th (Paramount Pictures 1980).

[27] Id. (“The shoes are stripped of the word ‘Nike,’ the instances of the brand name replaced with the designer’s initials.”).

[28] Lotas Complaint, supra note 22.

[29] Nike, Photograph of Nike Dunks & Allegedly Infringing Warren Lotas Products, in Complaint at 3, Nike Inc. v. Lotas, No. 20-CV-09431 (C.D. Cal. Oct. 14, 2020).

[30] See, e.g., Mike D. Sykes, Why Nike Is Finally Suing BAPE After so Many Years, Explained, USA Today: FORTHEWIN (Jan. 26, 2023, 3:24 PM), https://ftw.usatoday.com/lists/nike-bape-lawsuit-explained.

[31] USAPE Complaint, supra note 3, at 3.

[32] Id. at 12.

[33] Id.

[34] Id. at 3.

[35] Id.

[36] Id.

[37] Id. at 13; CVC Completes Investment in A Bathing Ape to Accelerate Global Expansion, CVC (June 3, 2021), https://www.cvc.com/media/news/2021/2021-06-03-cvc-completes-investment-in-a-bathing-ape-to-accelerate-global-expansion/.

[38] Letter Motion for Conference at 1, Nike, Inc. v. USAPE LLC, No. 23-CV-00660 (S.D.N.Y. Jan. 25, 2023) [hereinafter USAPE Motion for Conference].

[39] Id. at 1.

[40] USAPE Complaint, supra note 3, at 12.

[41] USAPE Motion for Conference, supra note 38, at 1-2.

[42] Id.

[43] Id. at 1.

[44] Id.

[45] Id. at 3.

[46] Id.

[47] Dunne, supra note 26 (“In the interview, Staple questioned why certain bootlegs, like Bape’s Bapesta take on the Nike Air Force 1, are accepted, while others . . . are rejected.”).

[48] Id. (“‘The founder of Nike Inc. is the OG shoe dog bootlegger,’ Staple said, recounting how the company began as Blue Ribbon Sports . . . and got in legal trouble for applying its logo to Tiger shoes and selling them. ‘The whole company is built on a bootleg.’”).

[49] Mallory Chin, Joshua Vides on Becoming a “Professional” Artist, His Streetwear Hustle & Gifting LeBron His Nikes, Hypebeast (Aug. 6, 2018), https://hypebeast.com/2018/8/joshua-vides-interview-the-forest-basketball-court-lebron-james.

[50] Id.

[51] MatteBlackCoffee, https://matteblackcoffee.com (last visited Feb. 26, 2023).

[52] TheSurgeon, https://www.thesurgeon.com (last visited Feb. 26, 2023).

[53] SRGN, https://www.srgnacademy.com (last visited Feb. 26, 2023).

[54] Jason Dike, Nike Air Max 1 Gets Revamped by the Shoe Surgeon & Joshua Vides, Hypebeast (Mar. 23, 2018), https://hypebeast.com/2018/3/nike-air-max-1-shoe-surgeon-joshua-vides.

[55] USAPE Complaint, supra note 3, at 10 (“Nike’s Air Force 1 trade dress, Air Jordan 1 trade dress, and Dunk trade dress are collectively referred to in this complaint as the ‘Asserted Marks.’”).

[56] Neil Vigdor, Company Will Offer Refunds to Buyers of ‘Satan Shoes’ to Settle Lawsuit by Nike, N.Y. Times (Apr. 8, 2021), https://www.nytimes.com/2021/04/08/style/satan-shoe-settlement-nike.html.

[57] Id.

[58] Id.

[59] Cam Wolf, “The Vibe of the Times”: How Nike Became the Biggest Fashion Brand in the World, GQ (Sept. 24, 2018), https://www.gq.com/story/how-nike-became-the-biggest-fashion-brand-in-the-world.

[60] Id. (“Abloh was so enamored with Nike that at 15 . . . he started sketching sneaker designs and sending them to Beaverton, getting a taste of what it would be like to be more than just a Nike consumer.”).

[61] Answer at 5, Nike, Inc. v. By Kiy LLC, No. 22-CV-10176 (S.D.N.Y. Nov. 30, 2022) (“Nike also has submitted a flurry of recent trademark applications trying to further broaden its illegitimate dominion over how others design sneakers. . . . Much as there are ‘patent trolls,’ Nike increasingly acts as a ‘trademark troll.’”).