Enrico Bonadio and Magali Contardi

The legal battle between Nike and conceptual art collective MSCHF around their infamous Satan Shoes has been finally settled. After the recent decision of a New York judge ordering to temporarily halt the sales of the shoes, MSCHF has agreed to recall the shoes from the market to end the dispute.

MSCHF, itself a creative arts entity also focused on business, had put into sale 666 modified Nike Air Max 97 shoes. The sneakers featured an inverted cross, a bronze pentagram adorning the laces, and the Bible Luke verse 10:18 also referring to Satan (“He replied, ‘I saw Satan fall like lightning from heaven”). The shoes’ sole also incorporated one drop of human blood.

In customising the sneakers, MSCHF collaborated with US rapper Lil Nas X, and released them concomitantly with his latest music video, which is also imbued with references to Satanism and criticises society’s attempts to shame his homosexuality. MSCHF are not new to similar initiatives. In 2019 they filled Nike sneakers’ soles with holy water from the river Jordan, attached a cross to the front, and renamed them the Jesus shoes. The Jesus shoes are also part of the voluntary recall as part of the settlement with Nike.

Priced at $US1,018 a pair, almost all Satan Shoes were sold in less than a minute. The last pair was meant to be given away by Lil Nas X on Twitter, but following the judge’s order, this was also put on hold.

 Protecting Nike’s brands

In addition to a public outcry and even an angry tweet by South Dakota Governor Kristi L. Noem, Nike sued MSCHF for allegedly infringing its trademarks. It noted that MSCHF’s customisation resulted in shoes materially different from genuine Nike sneakers, which still displayed the famous “Swoosh logo” at the top of the tongue and along the side of the shoes.

The multinational footwear company argued that consumers would be led to believe that the shoes are offered for sale by Nike, or that Nike has anyway endorsed them. It pointed to the fact that the shoes have been made available for re-sale in e-commerce platforms such as eBay, and presented as a collaboration between Nike and MSCHF.

Nike also claimed that the false association with the Satan Shoes was blurring the distinctiveness of its trademarks and tarnishing its brands’ reputation. This would have caused significant harm to the company’s goodwill, because consumers could believe that Nike is endorsing satanism. Nike backed up such dilution claims by pointing to social media material showing comments from people who vow never to buy Nike products again because of the Satan Shoes.

MSCHF counterargued that the shoes are not ordinary sneakers, but instead individually-numbered and collectable artworks, which convey a message of criticism to collaboration culture and other religious norms that discriminate. MSCHF defines itself as a “conceptual art collective” which “engage[s] fashion, art, tech and capitalism in various, often unexpected mediums”. It also issued a statement where it claimed that it “strongly believes in the freedom of expression”, followed by another one after the settlement clarifying that the collective has “already achieved its artistic purpose”.

Trademark protection vs free speech: some precedents

This is not the first time the legal protection of brands has entered into collision with the right to free speech, protected under the First Amendment to the US Constitution. But in a string of cases, American courts have often sided with the brand appropriator, especially on parody grounds.

In 1999 Mattel sued on trademark dilution grounds artist Thomas Forsythe after he produced a series of photos that depicted nude Barbie dolls posing provocatively around vintage kitchen appliances. The 9th Circuit Court sided with the artist, finding that as long as a work was not purely commercial, the artist’s right to critique the “objectification of women” and “conventional beauty myth” embodied by Barbie outweighed Mattel’s rights over the Barbie trademark. So, the parodistic use of the Barbie brand in the photos was protected by free speech and fell within the statutory dilution exemption.

Mattel lost another case over the Barbie brand. In 2000 it sued Danish-Norwegian music band Aqua that had released a few years earlier the humoristic song Barbie Girl. The 9th Circuit Court rejected Mattel’s trademark infringement and dilution claims. It found that consumers would not be led to believe that Mattel produced or endorsed that song. It also held that, although the song was offered for sale, it was not strictly commercial, and as a parody should again be considered statutorily exempted from trademark dilution liability.

Also, the 4th Circuit Court found that the producer of the Chewy Vuiton dog toys did not violate Louis Vuitton’s trademarks because the products were a parody and there was no likelihood of confusion between the two companies. And in another more recent case involving dog toys, the 9th Circuit Court held that the manufacture of such toys resembling the well-known Jack Daniel’s bottles did not infringe any proprietary rights owned by the famous whisky producer. Just because the parodistic product is commercial, the court further noted, does not entail that it cannot be protected by the free speech rights against trademark-related claims. Applying an established balancing test (first affirmed in the landmark case Rogers v Grimaldi), the court expanded the concept of expressive works to include a pure commercial product (the decision has been appealed with the US Supreme Court).

Achieving a balance

Would a court in a case similar to the Satanic Shoes dispute follow in the steps of these cases? There is no easy answer. It would also depend on how the balancing exercise is conducted. The test needs to weigh freedom of expression values against the need to protect trademarks and avoid consumer confusion. Pursuant to this test, the use of brands in an expressive work constitutes an infringement only if it doesn’t have artistic relevance to the underlying work, and if there is artistic relevance, if the work/product explicitly misleads consumers.

Who uses someone else’s brand needs to convince the judge that the product is more an artwork than a commercial good, perhaps reminding him what Judge Alex Kozinski pointed out in the Barbie Girl case: “With fame often comes unwanted attention”. On the other hand, the trademark owner will likely argue that customising its own products and selling them at a high price is not as expressive as exhibiting a painting in a gallery or producing a song. Given that brands are part of our daily life, and that several artists inevitably incorporate them in their works, more Satan Shoes style disputes may materialise in the future.

For more information on research about intellectual property, visit City Law School’s Intellectual Property Engagement Group