Nike and Converse reach settlement with ex-employee in custom shoe case

Nike has settled a custom sneaker lawsuit against a former employee and his company. Nike and Converse filed suit against Jeffrey Waskowiak and KickRich LLC on July 19, 2021 in the District of Oregon, accusing the defendants of trademark infringement, dilution, misrepresentation of origin and unfair competition in connection with their alleged practice of “reselling Nike and Converse”. products that have been materially modified in a way that the brands have never approved or authorized”.

Nike and Converse claimed that the defendants purchased genuine Nike and Converse footwear, such as Converse’s Air Jordan 1, Air Force 1 and Chuck Taylor All Star, and then modified the uppers to create custom footwear products that still display the logos. brands Nike and Converse. While defendants use Nike and Converse shoes as a basis, plaintiffs argued that the genuine parts are “so modified and combined with non-authentic parts or logos from other brands that they can no longer be considered Nike or Converse shoes”. The plaintiffs alleged that these unauthorized customizations limit their ability to control “their trademarks, business reputation and associated customer base, which they have spent decades building.”

The plaintiffs also claimed that the modified shoes falsely affiliated them with other brands. For example, Nike included images of shoes that defendants promote as “Custom Prime Nike Air Jordan 1”, which it claims “falsely affiliates Nike with Amazon” by crushing an authentic Nike Air Jordan 1 shoe, in adding a “custom leather lining”. tongue made from Amazon Prime bubble wrap” and new metal eyelets, followed by “applying Amazon Prime branding in multiple locations at the top right alongside the Nike Swoosh design.”

In addition, the plaintiffs claimed that the defendants “manufactured and sold laser-cut and digitally downloaded ‘shoe designs’ that allowed others to manufacture knockoffs for many of Nike’s iconic and copyrighted shoe styles, including the Air Force 1, the Dunk, and the Air Jordan 1”. Essentially, the plaintiffs alleged that the defendants’ customers “purchase these designs to make their own fake Nike uppers bearing the famous Swoosh design and other copyrighted trade dress.”

Finally, plaintiffs alleged that defendants confused the market by including plaintiffs’ vintage logos and slogans, as well as references to Waskowiak’s previous employment as a Nike shoe developer, suggesting authorization . The plaintiffs not only sought damages, but also an injunction.

On December 10, 2021, the parties filed a motion for judgment that named Nike and Converse as the “exclusive owners” of a number of trademarks and trade dress (including upper design), entered into a permanent injunction against KickRich for infringing and diluting the Nike and Converse trademarks, and for using false trade names through its practice of “promoting, offering for sale and/or selling the products” bearing such brands. Interestingly, KickRich “may offer and promote genuine Nike and/or Converse product customization services pursuant to the terms of the parties’ settlement agreement.”

Since the settlement agreement is confidential, it is unclear what KickRich is authorized to do when providing said personalization services. It wouldn’t come as a surprise to find that it’s forbidden to customize Nike and Converse sneakers to include a third party’s brand, and furthermore it’s not allowed to sell designs to the shoes. It is also possible that KickRich may be permitted to modify the shoes in a non-material way and therefore permitted by the first-sale doctrine. However, until KickRich launches its website, the true customization settings available are pure speculation.

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