MSCHF is an art collective that makes provocative stuff, such as a laptop deliberately infected with six different types of malware. Their latest offering is a batch of customised Nike Air Max 97 sneakers that were designed in collaboration with singer Lil Nas X. Dubbed the 'Satan Shoes', these very tame sneakers feature an inverted cross on the tongue, a pentagram pendant hung from the shoelace and an air cushion base filled with red dye mixed with a drop of actual human blood!
Unsurprisingly, the release of these sneakers raised hell especially amongst the god-fearing folks. And with digital torches and pitchforks in hand, they threatened to boycott NIKE under the mistaken assumption that the sports apparel giant has made a Faustian bargain and sold its soles to the Devil by selling these satanic themed footwear. NIKE responded by filing a lawsuit against the diabolically mischievous masterminds claiming that the sneakers cause trade mark confusion, dilution and create an erroneous association between NIKE and MSCHF.
At present, a court order has been issued to stop MSCHF from fulfilling any more orders for the campy footwear. Will NIKE win the suit? We won’t know until the matter has been tried at court.
Nevertheless, this incident raises a couple of interesting questions:-
Can someone be at risk of infringing a trade mark by buying genuine goods and re-selling them?
Generally, reselling genuine goods doesn’t amount to trade mark infringement as the product being sold is genuine. This is known as the exhaustion doctrine or first sale doctrine, where after a product covered by an IP right has been sold by the IP right owner the right is said to be exhausted and it can no longer be exercised by the owner.
What if the goods are altered and sold as customised products? And what about upcycling where pre- or unloved goods are altered or repurposed so as to give them brand new life?
This is where the law becomes less clear-cut and much depends on the extent of the alteration/customisation. Minor and superficial customisations such as adding embellishments or painting the product over with an unusual colour are unlikely to be considered infringement, e.g. a Volvo with new tyres and paint job is still essentially a Volvo.
Major modifications however may affect the quality of the product and change it so much that it cannot be called an original anymore. This is where you may run afoul of the law as technically you're not selling an 'original' product. So if you're selling up-cycled products, an easy fix would be to remove the branding from the final product but this can be difficult if the brand/logo is deeply embedded into the material or is otherwise indelible.
So are you free to sell branded products that have been remade according to your creative vision, or are you at risk of being sued if your ‘art’ is not consistent with the brand’s ethos? Well, it depends...the devil really is in the details!
However, on the flip side, if you're a brand owner, this whole kerfuffle should be a good reminder that trade mark registration is very important. As the registered owner of their trade mark, NIKE was able to easily get a restraining order from the court to stop MSCHF from selling the Satan Shoes. On the other hand, owners of unregistered trade marks have very few options to prevent someone from misusing their brands.
If you're curious to know more about the issues discussed here, or you're currently facing similar issues yourself, come have a chat with us.
Update: Nike and MSCHF have decided to settle the lawsuit instead of fighting it out in court. As part of the settlement, MSCHF has offered to fully refund anyone who has purchased the 'Satan Shoes'. Does this mean that artists should be cautious against provoking big brand owners? We can't say for sure. But one thing is for certain: trade mark registration gives you the power to protect your brand.