Nike’s lawyers served the TRO Wednesday, two days after filing a trademark lawsuit against MSCHF for using its Nike Air Max 97 for its controversial Satan Shoe. The footwear titan had submitted the TRO to halt any further sales and shipments of the footwear, but after MSCHF sent in its own letter asserting that all but one pair had already been sold and shipped, it had requested the court recall those shoes for the time being.
Details about the shoes, a collaboration between MSCHF and Lil Nas X, emerged Friday. A follow-up to the studio’s Jesus Shoes, the Satan Shoes once again retooled Nike Air Max 97s. Both pairs updated the brand’s original silhouette by injecting liquid into the sole—holy water in the case of the first and a human blood-ink mixture in the second—adding Bible verses to the upper, inserting new sockliners, attaching pendants to the shoe’s lacing and making other small detailing alterations.
The Satan Shoes quickly prompted an uproar in certain social media and news circles. Some took specific issue with Nike under the mistaken belief that the footwear company was involved with the project.
MSCHF went ahead and released its Satan Shoe collection as planned on Monday, selling out all but one of the 666 pairs in less than a minute. The last was to be given away on social media, but those plans have been suspended. The shoes sold for $1,018 per pair, a reference to the Bible verse Luke 10:18—“And he said to them, “’I saw Satan fall like lightning from heaven.’”
That same day, Nike filed a lawsuit against MSCHF requesting the court “immediately and permanently stop MSCHF from fulfilling all orders for its unauthorized Satan Shoes.” The company then filed a temporary restraining order (TRO) on Wednesday. MSCHF submitted a letter to the court the same day requesting it deny Nike’s application for a TRO, in part given that it had already sold and shipped all but one pair of the offending shoes and had suspended plans to give away the final pair. Nike responded with a letter of its own Thursday, requesting the court order a recall of those shoes.
Nike argued that courts “are particularly likely to order a recall ‘where there is evidence that a defendant’s infringement was intentional, including where the defendant continued infringing after receiving notice of its potentially unlawful conduct.’” Since MSCHF did not start taking orders for its infringing shoes until Monday, when Nike filed its complaint, it claims that this is such a case.
It is not clear at what time Nike filed its lawsuit on Monday and when MSCHF learned of it. However, Nike pointed out that MSCHF promoted a T-shirt bearing the front page of Nike’s complaint. Named “Legal Fees,” the shirt was priced at $66.60, according to a picture included in Nike’s letter. Nike made no claim as to when MSCHF released the shirt, only implying that it was at the same time it “was apparently hastily fulfilling orders.”
“MSCHF’s apparent goal was and is to stir controversy to provoke Nike into filing a lawsuit and taking further action,” the letter reads. “Despite knowing of Nike’s objections to its unlawful conduct, MSCHF apparently proceeded to fulfill all the orders for its shoes. This Court should order a recall to prevent MSCHF from gaining an advantage from its own gamesmanship.”
Did MSCHF confuse customers?
MSCHF said it made it clear the Satan Shoes were a collaboration with Lil Nas X, not Nike, and that the footwear brand presented no evidence of any confusion by purchasers. This would be unlikely, it said, given “the sophistication of the purchasers, who had to obtain the shoes through MSCHF’s proprietary app, and who are well aware of MSCHF’s approach to art, including its customization of consumer products as part of its expressive message.” In February, for example, it sold what it called “Birkinstocks”— sandals made with Birkenstock footbeds and Hermès’ Birkin bag leather.
Nike, however, pushed back on this claim, saying it “is not required to show actual confusion at the point of sale in order to establish a likelihood of confusion.” Additionally, it reasserted the claim in its lawsuit—unaddressed in MSCHF’s letter—that there could be “post-sale confusion, dilution by blurring, and dilution by tarnishment.”
MSCHF’s Jesus Shoe was sold on resale sites like StockX immediately following its release in 2019, but it appears to have been recently taken down. StockX told Sourcing Journal that the Satan Shoes are not listed on its platform.
“While we have a wide-ranging catalog, we do not include every sneaker release on our platform,” StockX said. “All products traded on StockX are subject to rigorous verification by our industry-leading authentication team, and given the inherent challenges in authenticating custom sneakers, we rarely include them in our catalog.”
Both the Jesus Shoe and the Satan Shoe are listed on eBay.
The footwear titan also categorized as false MSCHF’s assertion that it made clear its shoes were not a collaboration with Nike. It argued that none of the marketing disclaimed association with Nike and that despite its statements since then, MSCHF cannot plausibly dispel the confusion it caused.
In its letter, MSCHF addressed Nike’s concerns about public confusion by saying the same thing occurred when it introduced the Jesus Shoes a year and a half ago. “Nike never raised any objections whatsoever to the first stage of this project,” it added.
Fara Sunderji, a partner at international law firm Dorsey & Whitney’s New York office with a background in trademark, copyright, clearance, prosecution, maintenance, enforcement and litigation, said Tuesday that assuming Nike did not previously sue MSCHF over the Jesus Shoe, the company could argue Nike’s failure to protest in the past “acts as a consent to the Satan Shoe on a theory of acquiescence, waiver or estoppel.” Those theories, she noted, are complex and difficult to prove. “The law does not require that trademark owners go after each and every infringement to maintain their rights. Such a rule would be cost prohibitive.”
In its letter, Nike cited precedent that a trademark plaintiff “has no obligation to sue until the likelihood of confusion looms large” and that “the Jesus Shoe was a smaller release that attracted little attention.” However, when the Jesus Shoe was released back in 2019, it did receive broad media coverage. According to Footwear News, it even made Google’s list of most-searched shoes in 2019.
Nike also asserted that the earlier release “was not one that associated Nike’s brand with as charged a topic as Satanism.” Thus, it said, it “was under no immediate obligation to sue for the Jesus Shoe, and MSCHF’s prior infringements of Nike’s trademarks do not excuse its more recent infringements.” Nike added that it has not ruled out “pursuing relief” over the Jesus Shoe yet. MSCHF did note in its letter that users on social media were outraged over the Jesus Shoe at the time.
Are the Satan Shoes art?
In its letter, MSCHF argued the Satan Shoes “are not typical sneakers, but rather individually-numbered works” “much as Banksy and other artists sell numbered, limited-edition prints of their artistic works.” As works of art, it added, they are intended to criticize “the ever-popular ‘collab culture,’ where brands like Nike collaborate with anyone willing to make a splash.”
“They also are intended to criticize social norms that discriminate, such as religious norms that marginalize certain groups of people,” the letter argued. “Lil Nas X, a gay Black artist who has publicly discussed how he spent his teenage years hating himself because of what Christianity taught about homosexuality, and whose most recent video prominently features Satan, is thus the perfect collaborator for these shoes, which are also portrayed as a collaboration with Satan himself.”
Framing its Satan Shoes as a matter of artistic expression, MSCHF argued the project is protected by the First Amendment and “Nike cannot prevail on its trademark claims.” Museums have already arranged to display its predecessor, the Jesus Shoe, in their collections, the letter noted.
Nike responded by saying MSCHF did not simply create one pair for a museum, but hundreds that were sold to anyone, “exactly the business that Nike is in.”
“Nike’s valuable trademarks would be severely diminished if anyone were free to manufacture a shoe with a Swoosh simply by calling it a work of art,” Nike’s letter said. “The First Amendment requires no such absurd result.”
Additionally, Nike said, though MSCHF has a First Amendment right to criticize discriminatory social norms, that has nothing to do with Nike’s Swoosh logo or word mark. “MSCHF is free to criticize societal norms, but it is not free to sell sneakers advertised with the Nike word mark and emblazoned with the Nike Swoosh,” Nike asserted.
“When the reasonable consumer sees a Nike Swoosh on a shoe or sees the Nike word mark in advertising for a shoe, it is inevitable that he will believe Nike is the source of that shoe,” it added.