Nike, USPS Reach A Licensing Deal For USPS-Inspired Sneakers

from the just-license-it dept

What a wild trademark ride for Nike over the past few weeks. You will recall that Nike found itself on our pages after its trademark dispute with MSCHF over the so-called "Satan Shoes" being pushed by Lil Nas X. What had all the makings of a very interesting case that would have involved questions about resale rights, free speech, and property rights instead ended in a mostly meaningless settlement that saw MSCHF agreeing to offer to buy back shoes that are now wildly famous and valuable and will almost certainly never be bought back. Almost immediately afterwards, interestingly, Nike found itself on the flip side of the trademark coin with the United States Postal Service, after Nike produced an experimental Air Force 1 sneaker that was clearly inspired by the postal service.

Now, while saying that these shoes were clearly inspired by the USPS would be an understatement, here again we have a situation where a trial could cover all sorts of interesting ground. Would the public be confused by any of this? C'mon now. Does Nike's homage to the USPS somehow diminish the USPOS brand? If anything, I would think the opposite effect would be on the table. When is the last time anyone before Nike considered the postal service cool enough to be honored with a sneaker produced by one of, if not the, most famous athletic apparel and shoe manufacturers on the planet? And, ultimately, what actual harm would be done to the USPS or its trademark rights by Nike's actions?

Sadly, we'll never get answers to those questions as Nike has decided to abide by its stance against MSCHF and instead settle the dispute by entering a licensing agreement with the USPS.

The all-white Experimental Nike Air Force 1 footwear are now officially licensed by the USPS, according to a USPS release that was issued by a Nike spokeswoman. The statement also noted, “Any early images of this shoe were not authorized to be released by Nike.”

A spokeswoman for the USPS did not respond immediately for a request for comment about the financial terms of the deal.

So, on the one hand, fine, Nike finally lived up to the same standards it laid out in the MSCHF dispute when it was the complaining party. On the other hand, a settlement like this only perpetuates the permission culture the far too often plagues the realm of intellectual property generally and trademark particularly.

Wouldn't it have been better for the USPS to simply accept the honor of the homage and get back to the business of delivering mail and spying on all of us?

Filed Under: sneakers, trademark, usps
Companies: nike

Flip-Flop: Nike Now On The Receiving End Of Trademark Threat Over USPS Inspired Sneakers

from the die-by-the-sword dept

Nike finds itself on our pages again. We're fresh off of the settlement Nike reached with MSCHF over the Lil Nas X "Satan shoes". That settlement sees MSCHF agreeing to buy back at retail prices 666 modified Nike Air Max 97s after Nike sued over trademark. It could have been an interesting case, bringing in all kinds of questions about resale rights, the First Amendment, ownership of property, and more. Instead, it all ends with a posturing settlement that achieves nearly nothing, since these fought-over shoes have suddenly been moonshot into an even more rare and valuable item than they already were. But, Nike gets its ounce of litigation blood and gets to pretend this is all somehow a victory.

And perhaps that settlement will be referenced in another trademark dispute that seems to be brewing between the United States Postal Service and Nike, with Nike this time on the receiving end of the threats.

In an ironic twist, the sneaker giant is being taken to task by the United States Postal Service over an upcoming postal service-inspired sneaker reportedly being planned by Nike. The USPS’s challenge, the latest in a string of public relations headaches for the top athletic brand, all but guarantees the company will end up in court once again — but with the shoe on the other foot.

According to a USPS statement provided to Yahoo Finance, Nike’s experimental Air Force 1 sneaker “is neither licensed nor otherwise authorized by the U.S. Postal Service This is an unfortunate situation where a large brand such as Nike, which aggressively protects its intellectual property, has chosen to leverage another brand for its gain.”

Now, perhaps you're wondering just how much borrowing Nike is doing here. Well...

So, yes, the imagery of this entire sneaker is very clearly an homage to the USPS iconography and dress. Due to that, the USPS statement also noted ominously that it will do everything necessary to protect its "IP rights".

It's worth noting that I don't think this sort of thing represents trademark infringement necessarily. The chief questions in these cases are, first, will the public be confused into thinking there is some kind of official association at play here and, second, does the use in question dilute the brand. I would argue that nobody is going to think that the USPS is somehow now in the sneaker business and, because of that, nobody is going to think less or differently of the federal mail system by this use.

But, on the other hand, those are the same arguments made by those of us who pushed back on Nike's suit against MSCHF.

According to Christopher Buccafusco, a legal expert at the Cardozo Law School in New York City, Nike might find itself on far more shaky ground than when a judge ruled relatively swiftly in its favor.

“Nike’s claims to doing this without a license are much weaker than MSCHF,” he told Yahoo Finance. The latter “is engaged in a pretty obvious set of criticism and comments on Nike and Nike’s role in corporate culture. All of the sorts of things that we think fair use are there to protect,” he explained.

Yet Nike “is not doing any of that. [It’s just saying] that’s a cool logo that USPS uses, we want to use your cool logo. It’s not a commentary on USPS,” Buccafusco added. “Nike is not engaged in a first sale. It’s not like Nike bought USPS logos and stuck them on their shoes. They created a logo that was like the USPS logo because it kind of looks cool to them,” he said.

Note here as well that Buccafusco, despite the above, went on to state that he does not think Nike should lose this case if it does in fact go to court.

But, you know, live by the sword and die by the sword and all that. Given the recent lawsuit and settlement reached, it strains the mind to see how in the world Nike plans to articulate a coherent defense for itself in this case.

Filed Under: postal service sneakers, shoes, sneakers, trademark, usps
Companies: nike

Kawhi Leonard Accuses Nike Of Trying To Steal His Logo Via Trademark

from the from-downtown dept

As we've stated in previous posts, Nike has a reputation for jealously protecting its intellectual property, while also on occasion acting as though those same rules don't apply to its actions. This isn't terribly uncommon among those that treat IP concerns more severely: IP for me, but not for thee. Still, Nike does have some past examples of its own hypocrisy that are fairly glaring.

But nothing compares to the accusations against the company made by Toronto Raptors star Kawhi Leonard, who claims that Nike basically tried to trademark his logo design out from under him.

Kawhi Leonard has sued Nike, the apparel company with whom he recently ended an endorsement contract, over control of the “Klaw” logo used to identify his branded merchandise. Kawhi says he provided the logo to Nike, and that Nike’s claim to ownership of the logo is based upon an underhanded move to go to the United States Copyright Office and claim “authorship” and “rights and permissions” behind his back.

The lawsuit says that the “Klaw” logo marketed by Nike when they had Kawhi under contract was the product of Kawhi’s imagination, and was refined by Kawhi mostly without Nike’s participation, before he ever signed with the brand.

The lawsuit states that for the period of time in which Leonard was under Nike contract, everyone was in full agreement that the logo was his. Nike sought to alter the logo several times, but Leonard rejected those requests. In 2014, he did allow Nike to use the logo on its Kawhi Leonard merchandise, but only for as long as he was contracted for sponsorship with Nike. The acknowledgement of ownership went so far as Nike declining to pursue legal action against 3rd parties that used the logo, ostensibly at Leonard's request.

It was only in 2018, when Leonard left Nike for a sponsorship deal with New Balance, that he discovered Nike had gone ahead and trademarked his logo in 2017 without his knowledge.

But Nike’s quiet registering of the logo in 2017 eventually came to Kawhi’s attention late in 2018, after Kawhi left Nike to sign with New Balance in November. Apparently Nike executive John Matterazzo sent Kawhi’s people a cease and desist letter the following month, asserting Nike’s ownership of the logo and demanding that it not be used on non-Nike merchandise.

You will remember, this is the logo that the Los Angeles Clippers reportedly looked into buying away from Nike as part of their anticipated courtship of Leonard this summer. The organization was apparently interested in passing along Nike’s ownership share of the logo to Kawhi as a condition of Kawhi jumping to the Clippers in free agency. Marc Stein reported then that Nike, meanwhile, “is intent on rebuffing all approaches and retaining its rights to that logo for as long as it can.”

Nike's response to the lawsuit is going to be fascinating. Hearing the legal retort as to why the company has any trademark rights save what was in Leonard's sponsorship contract ought to be interesting. As is, perhaps, why certain other IP rights to the logo shouldn't apply, given Leonard's claim that he created it, such as copyright. For a superstar like Kawhi Leonard, it seems absurd to think that such a detail in a sponsorship contract wouldn't have been uncovered by his own legal representation prior to filing this lawsuit. It's also beyond weird to have Leonard no longer be a Nike athlete, but to have Nike still utilize his logo that denotes his brand.

All of this is strange, but it's also worth recalling the hypocrisy in all of this. Nike is aggressive, it seems, both in its enforcement of its own IP rights and in allegedly how it violates others'.

Filed Under: contracts, kawhi leondard, logo, ownership, sneakers, trademark
Companies: new balance, nike

Shoe Company New Balance Says US Gov't Basically Offered It A Bribe To Support TPP

from the wow dept

We've mostly focused on the impact of the TPP and trade deals on the internet (and also on national sovereignty), because that's the kind of stuff that interests us most around here. We've spent a lot less time looking at the more traditional free trade arguments, in part because that's not nearly as controversial, and in part because -- despite claims to the contrary -- there really aren't that many tariff-related barriers that make a big difference any more. It's generally good to reduce such tariffs, and in response you see the typical response from firms based on whether or not they benefit from those reduced tariffs. The "benefits" of free trade tend to be focused on the companies looking to expand into those markets where tariffs are being lowered or abandoned -- and not so much for companies competing against products from those same countries. Frankly, I find arguments that the companies who freak out about trade deals because it will mean more competition against them a bit tiresome, because I tend to believe competition is a good thing for innovation.

However, the Boston Globe has quite a story about one such company, the sneaker company New Balance, which was quite worried about how the TPP would increase competition from shoemakers in Vietnam. Again, I find those concerns to be overblown, but the next part of the story is where it gets interesting: New Balance is now claiming that it stopped publicly complaining about the TPP after the US government more or less promised it a big government contract, which never came through:

After several years of resistance to the Trans-Pacific Partnership, a pact aimed at making it easier to conduct trade among the United States and 11 other countries, the Boston company had gone quiet last year. New Balance officials say one big reason is that they were told the Department of Defense would give them serious consideration for a contract to outfit recruits with athletic shoes.

But no order has been placed, and New Balance officials say the Pentagon is intentionally delaying any purchase.

New Balance is reviving its fight against the trade deal...

The US government, of course, is insisting the issue of a contract is entirely separate from the TPP, but New Balance said an explicit offer was made. The company notes that while most of the uniform worn by the military is American made, there has always been an exception for sneakers because so few were actually fully made in the US. New Balance apparently decided to change that in hopes of getting a government contract, and the administration more or less said that this would work if New Balance shut up about opposing the TPP:

In 2014, the Pentagon relented. With competition among US manufacturers, officials said they were ready to consider domestically made shoes.

LeBretton said a representative for the Obama administration then asked New Balance to accept a compromise version of the trade deal, partly in exchange for a pledge of help getting the Department the Defense to expedite the purchase of US-made shoes.

The Globe claims that the Defense Department says the reason that it didn't give New Balance a deal was because its shoes weren't durable or cheap enough, but even if that's true, the very idea that the government more or less tried to buy off the company's opposition to the TPP seems highly questionable.

Of course, I wonder, should the TPP get ratified and should the Defense Department then agree that it will only buy American made sneakers... one wonders if Vietnamese sneaker makers would then have an ISDS corporate sovereignty case against the US government? After all, it would be harming "future profits" that the Vietnamese sneaker-makers would have been expecting, and a "buy American" rule could clearly be seen as a non-tariff trade barrier to foreign goods, no?

Filed Under: competition, defense department, shoes, sneakers, tariffs, tpp, ustr
Companies: new balance

Nike Sues Guy Who Ordered Single Pair Of Counterfeit Sneakers Over The Internet

from the nike-picks-up-the-RIAA-strategy dept

Warning: you might not want to ever buy Nike shoes again. If you accidentally buy a counterfeit pair of shoes, Nike might sue you. Via Glyn Moody, we learn that Nike chose to sue a guy who ordered a single pair of trainers online, believing they were legitimate Nike shoes. The shoes were seized at the UK border as counterfeits. Nike could have gone after the actual counterfeiters. Or it could have (perhaps more questionably) gone after some other third parties, such as the retailers who sold the shoes. Instead, it chose option 3 and sued the buyers directly. Most of the suits were settled (or, apparently, ignored).

However, one customer, a Mr. E. Bateman, thought this was ridiculous, and fought it. He pointed out that he simply thought he was buying legitimate Nikes, and it seems rather ridiculous to then be sued for it. The judge noted that, under UK trademark law, the buyer's intent is absolutely meaningless:

"Whether or not the defendant believed the goods were authentic is irrelevant to the question of trade mark infringement. Whether the goods are infringing goods or counterfeit goods is an objective question. The Defendant's state of mind does not matter. Equally the Defendant's state of mind is irrelavant to the question of importation."

In other words, don't ever buy Nike shoes, or you might get sued.

Of course, all this makes you wonder: what the hell was Nike thinking? We've seen how suing customers backfired badly for the RIAA and others, but this goes even beyond that. Here's a case where a guy appeared to believe he had just bought legitimate shoes, and Nike's response is to sue him, take him to court, and then win its lawsuit against him. The judge did point out that he "questioned whether the sledge hammer of these proceedings is necessary in order to crack this nut of this magnitude," and even then Nike pushed forward, claiming that the companies has "no realistic alternative to enforcing their rights this way."

Um. Sure they do: the alternative is not suing their customer. That said, at least the judge did not make Mr. Bateman pay any fine or award to Nike (even though Nike did ask for money), but rather, he has to promise not to infringe in the future, allow the shoes (still held by UK customs) to be destroyed and provide the details of where he bought the shoes. Of course, the only way he can make sure not to infringe in such a manner again is to never buy Nike shoes again, since he has no way of knowing beforehand if they're infringing or not. Nice work Nike.

Filed Under: sneakers, suing customers, trademark, trainers, uk
Companies: nike

Apple Trying To Patent Not Letting You Use Your Nike+iPod With Non-Nike Shoes

from the this-raises-some-questions dept

I know plenty of folks (including my wife) who have purchased the Nike+iPod device to use with non-Nike sneakers. The device puts a sensor in your shoe, which communicates with a separate dongle connected to your iPod (or built in to the new iPod Touch), and tracks your running stats, which you can then upload. Many Nike sneakers have a little cutout underneath the insoles where you can stick the sensor, but you can buy (or make) a little pouch and connect it to shoelaces on non-Nike shoes. However, not only is Apple thinking about ways to stop this -- it's trying to patent those ways. It's got a patent application in for smart garments which would create basically a DRM for devices -- forceably pairing a device like the Nike+iPod sensor to a specific shoe.

This seems odd for a whole variety of reasons. First, it seems positively silly for Apple to do this, as it severely limits the market for the devices, and lessens the value of the iPod. You can see why Nike might ask for it, but it's hard to see why Apple would implement it. Second, however, is that this seems highly questionable as a patent. I mean why would you patent something that makes your product less desirable? Would Apple actually sue someone else (say, Microsoft) for doing the same thing? That would (oh no!) force Microsoft to make its product more useful and more valuable. Finally, as a patent, how is this not "obvious"? It seems like a bad idea to implement, but that doesn't make it non-obvious. If any engineer wanted to create such a system, it wouldn't take much thought at all. The whole thing seems rather pointless.

Filed Under: drm, ipod, nike+ipod, patents, running, sneakers
Companies: apple, nike