Jeffrey Waskowiak and KickRich, LLC agreed to a confidential settlement agreement with Nike and Converse Friday. As part of the agreed-upon terms, a federal judge entered a consent judgement against the former Nike employee’s business—the settlement removed Waskowiak as a defendant, according to The Fashion Law—that found the 18 products in the original lawsuit infringed on and diluted Nike and Converse’s trademarks, violated their common law rights and used false designations of origin.
Monday’s judgement also reaffirmed Nike as the exclusive owner of more than 50 different trademarks, including its Air Jordan trade dress, Dunk trade dress, Chuck Taylor All Star trade dress and a slew of logos and word marks.
The agreement included a permanent injunction explicitly prohibiting KickRich from creating or selling goods bearing marks or symbols that could “deceive” consumers into believing they are connected or affiliated with Nike or Converse. The order also enjoined the customization business from creating or selling products—including but not limited to those targeted in the original suit—under any one of dozens of Nike trademarks or “confusingly similar” marks; implying Nike or Converse’s approval of or affiliation with KickRich and its products and services; and “engaging in any act which is likely to dilute the distinctive quality” of Nike’s trademarks.
Though the terms would seem to prohibit much of KickRich’s central business, the injunction leaves the door open for it to offer and promote customization services of genuine Nike or Converse products—so long as it sticks to terms specified in the undisclosed settlement agreement.
Nike and Converse originally filed their complaint against KickRich and Waskowiak in mid-July. The suit alleged the customizer’s creations were likely to cause confusion as to the source, origin, affiliation and sponsorship of the products. “It is Nike’s prerogative to choose who it collaborates with, which colorways it releases, and what message its designs convey,” it wrote. The insinuation of non-existent collaborations—one example pair used Amazon Prime bubble mailer packaging to customize an Air Jordan 1—and the application of unapproved colorways and materials—in some cases, KickRich fabricated entire uppers—”have and will continue to cause substantial harm to Nike’s brand and hard-earned reputation,” the suit asserted.
The same day Nike filed its KickRich lawsuit, the company also submitted a similar complaint against Customs by Ilene, Inc., a sneaker customization commonly known as Drip Creationz. Though the exact details in that case are different, Nike’s broader case against customizers was virtually the same, with some of the language nearly identical across the two complaints.
“Nike and Converse have no desire to limit the individual expression of creatives and artisans, many of whom are some of the brands’ biggest fans,” Nike wrote in its complaint against KickRich. “But Nike and Converse cannot allow ‘customizers’ like Defendants to build a business on the backs of their most iconic trademarks, undermining the value of those marks and the message they convey to consumers.”
In both suits, Nike pointed directly to consumers’ reactions this March to MSCHF’s controversial Satan Shoes. “Almost immediately,” Nike claimed, it began receiving criticism from consumers who believed Nike was endorsing Satanism, including some who said they never wanted to purchase Nike products again. “The damage to Nike from unauthorized ‘customizations’ is considerable,” the lawsuit claimed.
Nike managed to reach a settlement with MSCHF less than two weeks after it dropped its Satan Shoes. Under the term of the agreement, the Brooklyn-based creative agency agreed to take back any sneakers for the full price consumers paid “in order to remove them from circulation.”