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Lil Nas X Copyright vs. Trademark Infringement

What happened with Lil Nas X & Nike: Copyright vs. Trademark Infringement

LIL NAS X’S SATAN NIKE SHOES

Earlier in 2021, famed “Old Town Road” singer, Lil Nas X, collaborated with MSCHF, a streetwear company known best for their unique, limited edition items, to create the “Satan Shoes.” The company used the Nike Air Max 97’s (666 of them to be exact) as a base and customized them. The customization includes red and black details and adding a hanging pentagram charm, inverted cross, and a reference to “Luke 10:18” (“I saw Satan fall from heaven like lightning.”). The most shocking customization, however, features a single drop of blood from six different MSCHF employees embedded in the sole of the shoes. Whoa. Talk about dedication to the craft.

“CRYING NERDS ON THE INTERNET”

The shoes were dropped on March 29, 2021 in conjunction with Lil Nas X’s “Montero (Call Me By Your Name)” music video—which is set in Hell. Priced at a whopping $1,018, the 665 pairs of Satan Shoes still sold out within a minute of their release. Lil Nas X intended to have a giveaway of the 666th pair on April 1, but “crying nerds on the internet” (a quote from Lil Nas X) interfered before the giveaway occurred. Nike may not be the “crying nerds” Lil Nas X was referring to in his tweet, but the company was the actual reason he was legally prohibited from continuing the giveaway.

ENTER NIKE…

The Nike empire is no stranger to the Intellectual Property world. Its swoosh logo is one of the most recognizable symbols globally.


On the day the shoes dropped, Nike filed a complaint in the Eastern District of New York claiming that MSCHF was infringing its trademarks. Nike claims that MSCHF’s Satan Shoes may cause “confusion and dilution in the marketplace,” causing Nike consumers to believe that the shoes (featuring its iconic swoosh) were created, promoted, and sold by Nike. They also claim that “decisions about what products to put the SWOOSH on belong to Nike, not to third parties like MSCHF.”

DOES COPYRIGHT LAW NOT APPLY HERE?

It is important to note that even if Nike had copyrights protecting every inch of the Nike Air Max 97s, a copyright infringement claim would likely be unsuccessful under the First Sale Doctrine. This doctrine is a defense to potential copyright infringement claims, which allows someone who has lawfully purchased an item that is copyrighted (such as books or movies) to resell that same copy.


In this case, MSHCF would argue that they can do whatever they want with a Nike shoe after they purchased it. The Nike Air Max 97s were lawfully purchased by MSCHF, altered in some way, and resold. This defense would apply here if copyright infringement was claimed, but it wasn’t.

WHY CAN’T MSCHF AND LIL NAS X JUST USE THIS COPYRIGHT DEFENSE?

The doctrine of first sale does not apply to trademark law. Trademark infringement may be established by showing that:

  • Nike owns the mark;
  • Another company—MSHCF—used the mark without Nike’s approval; and
  • The mark is used in a way that would cause Nike consumers to believe the shoes originated from Nike.

Although it is not an infringement for another person to merely resell previously purchased Nike shoes under trademark law, infringement may be found where Nike consumers may be confused as to the origin of the sneakers. For example, if someone opened a store called “Nike” (that was in no way related to the franchise) and sold all Nike products, that would likely be considered trademark infringement because an ordinary consumer would probably believe that the store was a Nike store.

IS MSCHF HARMING NIKE’S NAME?

Nike claims MSCHF is infringing on its trademark. and that Nike “suffered significant harm to its goodwill” because consumers believe Nike promotes satanism. In Nike’s complaint, some of the comments included read:


“Never buying a Nike shoe again! Bunch of hypocrites.”
“Crazy they need Jesus.”
“I’m appalled. Words cannot describe the amount of disgust and disbelief that this is truly happening. Jesus please save us!!!! Never supporting or buying Nike again!!!!”


These comments show that Nike consumers not only could think the shoes are sold and endorsed by Nike but some consumers actually do believe that.

THE AFTERMATH

MSCHF claimed that Nike allows others to resell customized shoes all of the time, including allowing MSCHF to sell their “Jesus Shoes” previously, which featured a similar idea and included holy water in the sole.


Lil Nas X may not have been taking the claims seriously, as he tweeted a video of Squidward begging for change, captioned “me after the nike lawsuit,” and a video of a man singing an apology in a courtroom captioned “me at nike headquarters tomorrow.” He also tweeted a photo of Chick-Fil-A themed shoes with the caption, “we have decided to drop these to even the score. d@#$ y’all happy now?”

The Parties settled the controversy, although the exact details of the settlement remain hush hush. All that we know at this time is that MSCHF issued a “voluntary recall” of the shoes and will refund all purchases in exchange for the return of the shoes.

At this time, however, it seems unlikely that many (if any at all) participate in the voluntary recall because the shoes are listed for sale on sites like eBay for prices ranging from $1,275 to $20,000. In addition to these steep resale prices, other creators are making derivative products of the Satan Shoes, such as candles, stickers, and graphic t-shirts. Did Nike exacerbate the potential for other merchandise by drawing more attention to Lil Nas X’s campaign?