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Wearable art or a devilish rip-off? That’s the question posed by a recent collaborative release by art cooperative MSCHF Product Studio and musician Lil Nas X – the limited edition “Satan Shoes.” The Satan Shoes are constructed from Nike Air Max 97 shoes and feature a black and red motif, a pentagram charm on the laces, and the writing “Luke 10:18” which refers to the biblical verse “I saw Satan fall like lightening from heaven.” The shoes also contain red ink in the soles and a drop of human blood, which was provided by MSCHF team members. The shoes, priced at $1,018, sold out in minutes and are individually numbered from 1 to 666, as is common with copies of artistic works. The collaboration came after the release of Lil Nas X’s music video for his song “Montero (Call Me by Your Name)”, which features several biblical motifs and includes the musician gyrating on Satan. Both the music video and the Satan Shoes have generated significant controversy on social media, including Tweets from individuals boycotting Nike over perceived involvement with the shoes, which feature the Nike Swoosh prominently on the side and tongue of the shoe.
Nike put out a statement confirming it is not involved with the shoes, and filed a lawsuit against MSCHF on claims of trademark infringement and trademark dilution. Pointing to the upheaval on social media about the shoes, Nike claims that there is significant confusion in the marketplace that Nike is involved with or endorsed the Satan Shoes. Nike also petitioned the Eastern District Court in New York for a preliminary injunction and restraining order, halting further sales and shipments of the shoes. The Court granted the restraining order, finding that Nike had shown a sufficient likelihood of success on some of its claims and a likelihood of irreparable harm. MSCHF, which has been described previously by The New York Times, as the “Banksy of the Internet”, does not dispute that it used Nike’s mark. Rather, it believes that its use is excusable because it was used in an artistic context.
MSCHF defines itself as “a conceptual art collective known for interventions that engage fashion, art, tech, and capitalism in various, often unexpected, mediums.” And indeed, consistent with their mission, MSCHF has previously put out similar art-shoe projects involving “involuntary collaborations” with brands. These projects have included the “Birkinstock”, Birkenstock style sandals that are made using refashioned Hermes Birkin bags and the “Jesus Shoe”, a natural foil to the controversial Satan Shoe. The Jesus Shoe, which sold for $3,000 a pair, were also created from Nike Air Max 97 trainers, and contained holy water from the River Jordan in the soles. The laces featured a gold crucifix charm on the shoe and the verse Matthew 14:25 stitched on the side, which reads: “And in the fourth watch of the night he came to them, walking on the sea.” The Jesus Shoes, created in 2019, were intended by MSCHF to comment on the absurdity of collaboration culture. Specifically, MSCHF states: “As a manifested speculative artwork, Jesus Shoes conflates celebrity collab culture and brand worship with religious worship into a limited edition line of art objects.” And despite the presence of the Nike Swoosh on the Jesus Shoes and Nike’s lack of involvement, as well as public backlash against the shoes, Nike did not take any adverse action against MSCHF or the Jesus Shoes in 2019.
MSCHF again argues for the Satan Shoes, which also incorporate the Nike Swoosh (albeit more prominently than the Jesus Shoe), that a necessary part of art is to create inside of the real world; “We believe it is better to make art that participates directly in its subject matter. It is stronger to do a thing, than to talk about a thing. MSCHF makes artworks that live directly in the systems they critique, instead of hiding inside white-walled galleries.” Indeed, MSCHF believes itself to be using the Nike Swoosh to make an artistic statement rather than in a consumer context, and that the Nike Swoosh contributes to the overall artistic message. MSCHF is a regular creator of pieces using consumer items, with its first release being “The Persistence of Chaos”, which comprised a 2008 Windows laptop loaded with six malware programs that had purportedly caused millions in damage worldwide. Earlier this year, MSCHF released “Axe No. 5”, a limited run perfume that mixed Axe Body Spray and Chanel No. 5 perfume. While the quality of the artwork may be debatable in certain circles, it is undeniable that these works are seen at least by their creator as art intended to inspire social commentary and discussion, making it unsurprising that it is seeking artistic exemption from infringement in the present dispute. MSCHF specifically argues that its products are not commercial products, but instead a limited run of individually numbered works of art sold to discerning, sophisticated purchasers.
Regardless of ultimate ideologies and feelings brought about by the Satan Shoes, these shoes present an interesting opportunity to explore the collision between trademark law and the First Amendment. To the chagrin of some trademark holders, the First Amendment does provide leeway for creative use of trademarks in an artistic context, even when that use may result in a likelihood of consumer confusion.
Trademark Infringement and the First Amendment
For many years the courts grappled with how to reconcile the First Amendment’s freedom of speech protections with the Lanham Act’s policy of preventing consumer confusion and deception; however, many courts have since settled on some version of the test first introduced by the Second Circuit in Rogers v. Grimaldi. The goal of the Rogers test is to limit the application of the Lanham Act to expressive works where “the public interest in avoiding consumer confusion outweighs the public interest in free expression.” Thus, the First Amendment and Lanham Act tolerate some levels of likelihood of confusion as to not chill protected expressive speech. Under the Rogers test, the use of another’s mark in an expressive work will not be actionable under the Lanham Act unless it “has no artistic relevance to the underlying work whatsoever, or if it has some artistic relevance, unless [it] explicitly misleads as to the source or content of the work.” These factors are not a rigid test to be applied mechanically, but instead a balancing test that recognizes that the trademark rights of the senior user and the public’s right to not be confused must be carefully weighed against the artistic license granted to the junior user.
The first consideration, “artistic relevance”, is a factual issue that evaluates the relevance of the mark to the overall work as a whole. This degree of relevance is purposefully low—above zero—to avoid forcing judges to make what are essentially subjective judgments about the mark’s intrinsic artistic value in the context of an expressive work. Thus, courts have been extremely liberal in finding artistic relevance, and very few cases have found no artistic relevance. For this reason, it is highly likely the Court would find the Satan Shoes to be using the Nike Swoosh in an artistically relevant way.
The second factor, “explicitly misleading” requires a plaintiff to prove that the mark’s use expressly and obviously misleads as to the source of the work. “Explicitly mislead” requires more than a finding of a likelihood of confusion. The Second Circuit has emphasized that the “finding of the likelihood of confusion must be particularly compelling to outweigh the First Amendment interest recognized in Rogers.” The Ninth Circuit has cautioned that the “explicitly misleads” requires proof that the content, packaging, or advertising of the accused work clearly conveys the message that the plaintiff is affiliated with the work. This factor would be harder for MSCHF to fight against. The Satan Shoes do alter the Nike Air Max 97 shoes, but they do so in a manner similar to other collaborations Nike has done with other artists and entities. With that said, several courts, including the Second Circuit, have issued decisions implying that “explicitly misleading” may require overt and express misstatements by the alleged infringer and not merely use of the mark. MSCHF has never claimed any involvement or collaboration with Nike, and has consistently stated that its collaboration partner for the Satan Shoes is Lil Nas X and not Nike.
Since the Rogers factors were introduced over 30 years ago, other courts have also introduced additional considerations when evaluating artistic works in the context of a trademark infringement dispute. These considerations were collected by the US District Court in Colorado in Stouffer v. National Geographic Partners, LLC and include:
- Whether the senior and junior users of the mark identify the same or similar kind of goods and services.
- To what extent the junior user added his or her own expressive content to the work beyond the mark itself.
- Whether the timing of the junior user’s use of the mark suggests a motive to capitalize on the popularity of the senior user’s mark.
- In what way, if any, the mark is artistically related to the underlying work, service or product.
- Statements made by the junior user to the public that suggest a non-artistic purpose.
- Statements made or conduct engaged in in private by the junior user that suggests a non-artistic purpose.
Each of these factors and others could be considered by the Court in addition to the Rogers test in efforts to balance Nike’s rights in its trademarks against MSCHF’s rights in creative expression.
Trademark Dilution and the First Amendment
What is also concerning to Nike is trademark dilution. Under the Trademark Dilution Revision Act, owners of distinctive famous are entitled to injunctions where a junior user’s use of the famous mark causes dilution by blurring or tarnishing the mark, regardless of any actual or likely confusion, of competition, or any actual economic injury. Nike has established in prior cases that the Nike Swoosh is famous, so the larger question is whether the Satan Shoes are likely to tarnish the Nike Swoosh and whether that risk of tarnishment is so great that it outweighs MSCHF’s creative expression rights. Courts have frequently enjoined the tarnishment of a mark through association with unsavory or scandalous goods, persons, or services. Nike argues in its Complaint that the Satan Shoes are causing dilution by tarnishment by associating the Nike Swoosh with satanic symbols and imagery.
A straightforward application of dilution laws may lead to the conclusion that the Satan Shoes tarnish the Nike Swoosh, despite MSCHF’s claimed noncommercial use (which is exempted from dilution laws). But the First Amendment issues further influence this analysis, particularly after the Supreme Court’s 2017 decision in Matal v. Tam. In Tam, the Court evaluated the constitutionality of the disparagement clause in federal trademark law after an Asian-American musical group named “The Slants” was refused trademark registration because the name was disparaging to those of Asian descent. The eight justices unanimously agreed that the law violated the free speech clause of the First Amendment because the government was discriminating against certain trademarks based upon viewpoint and was targeting offensive expression with the intent of discouraging its use.
While scholars have long mused that dilution laws may run contrary to the First Amendment, the Tam decision and other recent jurisprudence have raised the question among legal commentators as to whether dilution laws could be overturned or found unconstitutional. Prior to Tam, courts had generally avoided First Amendment scrutiny of trademark laws, arguing that intellectual property laws regulate commercial conduct and not speech. The Federal Circuit en banc decision in In re Tam recognized this hesitation, conceding that “courts have been slow to appreciate the expressive power of trademarks.” For Tam, the Asian-American band specifically picked the name “The Slants” in an act of reclamation of the derogatory term and was expressive speech. Recognizing that modern trademarks operate in socially significant ways, which can often go beyond just the products or services the mark holder offers, ultimately results in the question of how far trademark law will bend to accommodate expressive speech.
Because famous marks are more likely to be appropriated for an expressive purpose, dilution is brought into sharp focus. As observed by Professor Robert Denicola more than 30 years before Tam, famous marks have particular utility in expressive works:
Famous trademarks offer a particularly powerful means of conjuring up the image of their owners, and thus become an important, perhaps at times indispensable, part of the public vocabulary. Rules restricting the use of well-known trademarks may therefore restrict the communication of ideas. When this occurs, the confrontation between trademark protection and free speech can no longer be ignored. . . . Since a trademark may frequently be the most effective means of focusing attention on the trademark owner or its product, the recognition of exclusive rights encompassing such use would permit the stifling of unwelcome discussion. Though other means of communication may be available, trademark use often offers opportunities unmatched by more conventional methods of expression.
MSCHF has not specifically stated why it chose Nike shoes specifically for the Jesus Shoes or Satan Shoes, but given Nike’s immense brand value, topping the Brand Finance “most valuable apparel companies” for 7 years, there is certainly a probability that the choice to use Nike shoes specifically was distinctly related to MSCHF’s artistic message.
For the time being, it looks like these questions will go unanswered. On April 8, 2021, Nike and MSCHF announced that they had reached a settlement. As part of the settlement, MSCHF has agreed to a voluntary recall and will buy back any Satan Shoes and Jesus Shoes for the original retail price. MSCHF’s attorney indicated that they are pleased with the settlement and feel that the publicity the case brought to MSCHF and its artistic works achieved the artistic purpose of the Satan Shoes and Jesus Shoes. Settling the case will allow MSCHF to focus on new artistic works, the next of which is scheduled to drop on April 12, 2021. Whether any buyers of the Satan Shoes or Jesus Shoes will take MSCHF upon their refund offer remains to be seen.
 Bryan Peitsch, “Nike Sues over Unauthorized ‘Satan Shoes’”, The New York Times (last updated April 9, 2021) (https://www.nytimes.com/2021/03/28/style/nike-satan-shoes-lil-Nas-x.html).
 Bill Donahue, “Nike Wins Restraining Order on Lil Nas X ‘Satan Shoes’”, Law360.com (Apr. 1, 2021) (https://www.law360.com/articles/1371374/nike-wins-restraining-order-on-lil-nas-x-satan-shoes-).
 Order, Nike, Case No. 1:12-cv-019679-EK-PK (E.D.N.Y. Apr. 1, 2021).
 Sanam Yar, “The Story of MSCHF, a Very Modern . . . Business?”, The New York Times (updated Mar. 30, 2021) (available at https://www.nytimes.com/2020/01/30/style/MSCHF-sneakers-culture.html).
 Satan Shoe Statement, MSCHF.com (Apr. 1, 2021) (https://mschf.xyz/statement.pdf).
 Stephanie Dube Dwilson, “’Satan Shoes’ with Drops of Blood Announced by Company Behind ‘Jesus Shoes’”, Heavy, Inc. (Mar. 29, 2021) (https://heavy.com/news/nike-satan-shoes/). Heavy.com
 Satan Shoe Statement, MSCHF.com (Apr. 1, 2021) (https://mschf.xyz/statement.pdf).
 MSCHF specifically argues that its purchasers could only obtain the shoes through MSCHF’s proprietary app, and who would be already familiar with the nature of MSCHF’s works and approach to art. Letter from MSCHF Counsel (Mar. 31, 2021) (available at https://www.documentcloud.org/documents/20536836-nike_v_mschf_defendant_letter).
 6 McCarthy on Trademarks and Unfair Competition § 31.1440 (5th ed.).
 Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989).
 Id. at 999.
 6 McCarthy § 31:144.50
 Lynn M. Jordan & David M. Kelly, “Another Decade of Rogers v. Grimaldi: Continuing to Balance the Lanham Act with the First Amendment Rights of Creators of Artistic Works,” 109 TMR 833, 838 (September-October 2019).
 6 McCarthy § 31:144.50.
 See Nike News – Collaborations (last accessed Apr. 7, 2021) (https://news.nike.com/collaborations).
 Jordan, 109 TMR at 852.
 400 F.Supp.2d 1161, 1179 (D. Colo. 2019).
 15 U.S.C. § 1125(c)(1).
 See e.g., Nike, Inc. v. Nikepal Intern., Inc., 2007 WL 2782030 (E.D. Ca. Sept. 18, 2007); Nike Inc. v. Variety Wholesalers, Inc., 274 F.Supp. 2d 1352 (S.D. Ga. 2003).
 Anheuser-Busch, Inc. v. Balducci Publications, 28 F.3d 769, 777 (8th Cir. 1994).
 137 S. Ct. 1744 (2017).
 Justice Neil Gorsuch did not participate in the consideration or decision.
 Lisa P. Ramsey, “Free Speech Challenges to Trademark Law After Matal v. Tam”, 56 Hous. L. Rev. 401 (2018); Sara Gold, “Does Dilution ‘Dilute’ the First Amendment?: Trademark Dilution and the Right to Free Speech after Tam and Brunetti”, 59 IDEA: L. Rev. Franklin Pierce Center for Intell. Prop. 483, 489 (2019) (student work).
 Alfred C. Yen, “Choosing the Consequences of Tam and Brunetti”, 16 Chi.-Kent J. Intell. Prop. 396,
 137 S. Ct. 1744 (2017).
 Giulio Ernesto Yaquinto, “The Social Significance of Modern Trademarks: Authorizing the Appropriation of Marks as Source Identifiers for Expressive Works”, 95 Tex. L. Rev. 739 (Feb. 2017) (student work).
 Robert C. Denicola, “Trademarks as Speech: Constitutional Implications of the Emerging Rationales for the Protection of Trade Symbols,” 1982 Wis. L. Rev. 158, 195–197
 “Nike Tops Brand Finance’s Most Valuable Brands List, Rolex Claims ‘Strongest’ Title”, TheFashionLaw.com (Apr. 8, 2021) (https://www.thefashionlaw.com/nike-tops-brand-finances-of-most-valuable-brands-rolex-claims-strongest-title/).
 Hannah Albarazi, “Nike Resolves Bad Blood with Lil Nas X ‘Satan Shoes’ Seller”, Law360.com (Apr. 8, 2021).
 MSCHF (https://mschf.xyz/).