Nike, Inc. (“Nike”) on April 9, 2021 filed a dismissal with prejudice at the United States District Court, Eastern District of New York, “EDNY”) its trademark infringement claims against MSCHF Product Studio, Inc., (“MSCHF”) with each party bearing its own costs and attorneys’ fees, pursuant to Federal Rule of Civil Procedure (“FRCP”).  As to be expected, the temporary restraining order issued by Honorable Judge Eric Komitee, on April 1, 2021, was dissolved and Nike was released from its obligation to file a bond.

Prior to the dismissal, MSCHF having a situs in Brooklyn, New York, had decided not to run with Satan and settled a trademark infringement complaint filed against them by the Oregon based sneaker king Nike.  Many news outlets, including Reggie Wade, a writer for Yahoo!  announced that Nike had settled its legal battle with MSCHF.  Please, check out, Reggie Wade’s article and video. In addition, IP360’s Hannah Albarazi, told us a Nike spokesperson, said, “As part of the settlement, Nike has asked MSCHF, and MSCHF has agreed, to initiate a voluntary recall to buy back any Satan Shoes and Jesus Shoes for their original retail prices, in order to remove them from circulation.”

Turning to the original complaint at the EDNY, Nike filed the trademark infringement complaint on March 29, 2021, in the United States District Court, Eastern District of New York, Case: 1:21-cv-01679, against MSCHF alleging MSCHF was currently taking orders for shoes it refers to as “Satan Shoes”.  MSCHF is the New York product design studio behind rapper Lil Nas X’s (Legal Name: Montero Lamar Hill) Satan Shoes.  The Satan Shoe was promoted in connection of a marketing strategy for Lil Nas X’s song, titled: “Montero (Call Me By Your Name)” as reported by NBC Palm Springs.

The “Satan Shoes” are customized Nike Air Max 97 shoes that MSCHF had materially altered to prominently feature a satanic theme. These material alterations and alleged unlawful activities were configured and manufactured without Nike’s approval or authorization. Nike asserted in the Complaint that Nike is in no way connected with the material alterations to their Nike Air Max 97 shoes. MSCHF marketing goal was to manufacture and sell a limited edition of 666 pairs of Satan Shoes individually numbered for a satanical price of $1,018.00 containing 60cc ink and 1 drop of HUMAN BLOOD, according to a tweet published on March 26, 2021 by a Twitter account focused on sneakers and popular culture, please, see tweet, reproduced, below, directly from Case: 1:21-cv-01679. (See, Pacer). 

Nike sought a judgment and order alleging MSCHF of:

• Willful infringement of Nike’s Trademarks pursuant to 15 U.S.C.  1114;
• False designations of origin in violation of 15 U.S.C. § 1125(a); 
• Dilution of Nike’s Trademarks in violation of 15 U.S.C. §1125(c); and
• Violation of Nike’s Common Law Rights in Nike’s Trademarks.

In a Letter, respectfully, submitted by MSCHF, addressed to Honorable Eric Komitee, U.S. District Court Judge of the Eastern District of New York, MSCHF requested Judge Komitee to deny the temporary restraining order in Nike’s complaint explaining that the Satan Shoe – “These are not typical sneakers, but rather individually – numbered works of art that were sold to collectors for $1,018.00 each…”. Further, stating, in part, that there is no imminent or immediate threat of irreparable harm related to the Satan Shoes because all but one pair of the Satan Shoes had already been sold and shipped, and MSCHF did not have intentions of issuing additional pairs of Satan Shoes.  The Letter emphasizes to Judge Komitee, “More significantly, these shoes are works of art that are intended to criticize the ever popular “collab culture,” where brands like Nike collaborate with anyone willing, to make a splash.” MSCHF rationalized because “…Lil Nas X’s most recent video prominently features Satan, [Lil Nas X] is, thus, the perfect collaborator for these shoes, which are, also, portrayed as a collaboration with Satan himself.” Noteworthy, MSCHF argues given the artistic expression at the core of the Satan Shoes, Nike could not prevail on its Trademark infringement or dilution complaint where the First Amendment protects artistic expression and would bar Nike relief, citing Cliff Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490, 494 – 95 (2d Cir. 1989) quoting: “works of artistic expression that include trademarks are protected under the First Amendment so long as the use is (1) artistically relevant, and (2) not explicitly misleading); VIP Prods, LLC v. Jack Daniel’s Props., Inc., 953 F. 3d 1170, 1176 (9^th Cir. 2020) quoting: “works that contain some protected expression are “noncommercial” and, therefore, non – actionable under the dilution act”; and Mattel Inc., v. Walking Mt. Prods., 353 F.3d 792, 806 – 12 (9^th Cir. 2003) quoting: “photographs of Barbie dolls that offered critique of the objectification of women was artistic, protected speech that outweighed Mattel’s right in its Barbie trademarks and trade dress.”

On April 01, 2021, Honorable Judge Eric Komitee ran with Nike’s position alleging MSCHF’s alleged violations of Nike’s Trademarks under federal law and common law related to NSCHF’s marketing of the “Satan Shoe” bearing Nike’s trademarks and granted a temporary restraining order (“TRO”) pending resolution of Nike’s motion for a preliminary injunction pursuant to the Lanham Act, 15 U.S.C. § 1125; and Rule 65 of the Federal Rules of Civil Procedure (“FRCP”), and, thereby, deflecting the sales of the 666 pairs of Satan Shoes. The court ordered MSCHF enjoined from:

a.  fulfilling any orders for MSCHF’s Satan Shoes;

b.  using the Nike word mark or the Nike Swoosh mark or any mark that is confusingly similar to Nike’s marks, or is a derivation or colorable imitation thereof regardless of whether used alone or with other terms;

c. referring to or using any of Nike’s marks in any advertising, marketing, or promotion; and

d. instructing, assisting, aiding, or abetting any other person or business entity in engaging in or performing any of the activities referred to in the allegations asserted by Nike.  

Judge Eric Komitee further ordered MSCHF to appear before the Court on April 14, 2021 to show cause why, pursuant to FRCP 65, a preliminary injunction should not be issued.

Please, see, below is an image of the genuine Nike Air Max 97 shoe next to MSCHF’s customized Satan Shoe.

As noted in the Complaint, on March 26, 2021, a Twitter account focused on sneakers and popular culture published the following tweet announcing MSCHF’s Satan Shoes.

Following the publication of the tweet, numerous media outlets reported on the satanic theme of the shoes and that MSCHF would be releasing a limited edition of 666 individually numbered “Satan Shoes” having a NIKE AIR MAX 97 as the body of the Satan Shoe, and as depicted in the images reproduced, below, including:

• red ink;
• a drop of literal human blood incorporated into the sole of each Satan Shoe; 
• a side of the Satan Shoe featuring in red embroidered text that recites “LUKE 10:18” (New International Version translation of the Bible Verse Luke 10:18 recites: “He replied, ‘I saw Satan fall like lightning from Heaven’”;
• embroidered in red on a side of the Satan Shoe the number “6/666”;
• a circular pendant including a pentagram attached to the laces of each Satan Shoe;
• an image of a pentagram imprinted inside the Satan Shoe at the heel;
• a red inverted cross depicted at the top of the tongue of each of the Satan Shoe; and
• an air bladder in the sole of each Satan Shoe appears to be filled with red liquid;
• the left Satan Shoe displays the letters “MSCHF” which identifies MSCHF Product Studio; and the right Satan Shoe displays the letters “LIL NAS X” identifying the rap artist who apparently collaborated with MSCHF on the design of the Satan Shoes.

Nike asserted all of the above identified material alterations to the NIKE AIR MAX 97 are associated with “satanism or demonic activity”.