Just Don’t Do It – Lil Nas X, Satan Shoes & Intellectual Property

It is not that often that we talk about Satan and intellectual property in the same sentence. However, thanks to Lil Nas X, we get to consider not only the exhaustion of rights but also how a link or association with Satan might affect the way that this doctrine operates.

For those who are unaware, the video that accompanied the rapper’s latest single – “Montero (Call Me By Your Name)” – was released with some controversy, due to its depiction of the rapper dancing with Satan.

No doubt by design, this caused disquiet in some quarters, with calls for the video and the song itself to be banned.

However, it would appear that Lil Nas X is not one to shy away from controversy as, to coincide with the release of his single, he collaborated with a Brooklyn based “conceptual art collective” MSCHF, to release 666 pairs of customised Nike Air Max 97s.

Those trainers were modified to display a pentagram, the text “Luke 10:18” and the air cushions were filled with red ink and a drop of human blood. The Nike ‘swoosh’ remained on the shoes.

Nike was unimpressed, stating that the shoes were “likely to cause confusion and dilution and create an erroneous association between MSCHF’s products and Nike.”

Nike issued proceedings in the US for trade mark infringement, obtaining an injunction to prevent any of the shoes from being shipped and subsequently settling the dispute with MSCHF, with MSCHF voluntarily recalling the shoes, and buying them back at their original retail price.

Lil Nas X had been due to give away the final pair but has not done so – he has since tweeted “Sorry guys, I’m legally not allowed to give the 666th away anymore because of the crying nerds on the internet.”

Crying nerds or intellectual property rights?

All of this has played out in the US – but how might this dispute have looked, if MSCHF had been based in the UK?

Which, if any, intellectual property rights could Nike have relied upon to try and stop the sale of the shoes?

Trade marks and the doctrine of exhaustion of rights

As a general principle, the proprietor of a registered trade mark has the exclusive right to place goods bearing that trade mark onto the market. However, that exclusive rights apply only to the instance in which the goods are first placed on the market.

By way of example, if you buy a genuine pair of Nike trainers from Nike (or its authorised distributor in the UK), you are then free in principle to sell those within the UK. Nike’s rights would be considered to be ‘exhausted.’

So, on that basis, would MSCHF have a defence to a claim for trade mark infringement?

Not necessarily: exhaustion of rights is not absolute and there is an exception as to how this operates in practice in the UK. Section 12(2) of the Trade Marks Act 1994 provides that exhaustion of rights will not apply…

Given Nike’s concern that it was being seen to be associated with or otherwise endorsing Satanism and the prominent display of the Nike ‘swoosh’ on the shoes, it seems to me that, section 12(2) may provide Nike with the basis on which to argue that its rights were not exhausted and that there was an actionable infringement of its rights.

After all, the addition of the pentagram, Biblical chapter/verse references and red ink and blood in the ‘air’ would likely be said to have changed the condition of the shoes.

Passing off

Alternatively, it is possible that Nike could have found assistance in a passing off claim.

Passing off is a claim that allows the owner of goodwill that accrues to a trade mark (registered or not) to prevent unauthorised third parties from misrepresenting that they are in some way associated with the rights holder if that misrepresentation has or is likely to cause damage.

The shoes were originally marketed as “MSCHF x Lil Nas X “Satan Shoes”” but the iconic Nike swoosh was clearly visible and the advert specified that the shoes were “Nike Air Max ’97”.

It would certainly seem credible to argue that consumers would or could assume that Nike had worked in collaboration with or had authorised the making of the shoe in these circumstances – as indeed Nike complained had happened in the US.

Conclusion

Beyond the voluntary recall of shoes sold by MSCHF, we do not know what the other terms agreed between MSCHF and Nike were and so we do not know who might be considered to have ‘won’.

However, with “Montero” continuing to dominate the charts all over the world, it would seem that the true winners are in fact Lil Nas X and his record label.