Anna Pienewald – Attorney
Richards Attorneys
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Nike is the registered holder of the “swoosh” logo which gives Nike the right to exclude others from using its logo without its permission. MSCHF is a conceptual art collective known for interventions that engage fashion, art, tech, and capitalism in various mediums.
Nike is suing MSCHF over its unauthorised sale of 666 pairs of altered Nike Air Max 97s as “Satan Shoes” in collaboration with the rapper Lil Nas X alleging in its Court papers that shoes are likely to cause confusion, dilution. and create an erroneous association between the products of MSCHF and Nike.
In this case Nike must prove that it owns a valid mark, that its mark has priority and that MSCHF’s mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the product offered under the parties’ marks.
What are the elements of confusion and erroneous association?
The courts consider various factors and in this instance the court will have to decide whether there is a degree of similarity between the shoes at issue and whether the unauthorised shoes are likely to lead the public to assume that the shoes come from a common source.
What are the elements of trademark dilution?
A trademark must be famous to be diluted. Furthermore, there must also be a likelihood that the unauthorised third-party use will tarnish the distinctiveness of the famous mark.
Common types of dilution include blurring, tarnishment and free riding.
- Blurring occurs when the unauthorised use of a famous mark weakens or impairs the distinctiveness of the mark.
- Tarnishment occurs when the unauthorised use of a famous mark is offensive or unflattering.
- Free-riding is the unauthorised use of a famous mark on unrelated goods resulting in a positive association with the famous mark.
What defenses are available to dilution?
Fair use must be in accordance with honest practices in industrial or commercial matters and use that does not take unfair advantage of or is detrimental to the distinctive character or repute of the trademark holder are considered “Fair Use”.
Nominative Fair Use is permissible for the purpose of comparative advertising, criticism, commentary, and parody. Nominative Fair Use may be considered “fair” where:
The Madras High Court in Consim Info Pvt. Ltd vs Google India Pvt. Ltd (2010(6) CTC 813) the Court held that for any unauthorised use of the trademark to be considered “nominative fair use” it must meet three tests namely: (i) the product or service in question must be one not readily identifiable without use of the trademark; (ii) only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and (iii) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the proprietor of the trademark.
Parody involves the appropriation of another’s mark with the intention to mock the original mark, make a political statement, to provide social commentary or to convey some type of message to the audience about the original work.
Appropriation occurs when a product mimics the original mark then adding enough differences to indicate that it is not related to the mark. MSCHF altered the Nike Air Max 97 by using the Nike Swoosh logo along the side of the shoes and at the top of the tongue and then adding red ink and human blood to the midsole, red embroidered satanic themed detailing, a new sock liner and a bronze pentagram to the laces.
In this matter, the Court will have to decide whether MSCHF appropriation infringed Nike’s mark, whether such use has diluted the mark by tarnishing it and whether the unauthorised use has caused confusion to the marketplace.
Resources:
https://en.wikipedia.org/wiki/Fair_use_(U.S._trademark_law) – (date accessed 01/04/2021)
Case Law
Anheuser-Busch, Inc. v. VIP Prods., LLC, 666 F. Supp. 2d 974
Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 260
VIP Prods., LLC v. Jack Daniel’s Props., Inc., 953 F. 3d 1170