Nike’s ‘Satan shoes’ victory: would demonic branding have fared better in the UK?

Last month, Nike brought trademark infringement proceedings at the US District Court for the Eastern District of New York against MSCHF Product Studio, in response to the art collective’s launch of its so-called “Satan shoe”.

The shoe—a genuine Nike Air Max 97 shoe featuring Nike’s trademarks (such as its swoosh logo)—was modified by MSCHF without Nike’s approval to give it a satanic theme.

The collective added red ink, and—sensationally—a drop of human blood, to the “air bladder” in the sole; a pentagram to the laces and inside the shoe, as well as an inverted red cross. In addition, “LUKE 10:18” was embroidered on the shoe—a reference to the biblical passage which recounts: “I saw Satan fall like lightning from heaven”.

MSCHF offered only 666 products at a price of $1,018 each, referencing the numbers associated with the devil and the bible passage.

The court ordered a temporary restraining order against MSCHF, shortly after which the case settled. This article discusses relevant considerations had the dispute arisen in the UK.

Trademark exhaustion in the UK

Nike would likely argue that there was “double identity” infringement due to MSCHF’s use of its trademarks without consent for goods identical to those for which the marks were registered. However, under the principle of exhaustion, a trademark owner has no recourse against goods put on the market in the European Economic Area (EEA) or the UK under its trademark by, or with the consent of, the trademark owner.

When the UK was part of the EU, the purpose of exhaustion was to reconcile the fundamental interests of protecting trademark rights and the free movement of goods within the EEA. Post-Brexit, the UK has, for now, retained the same exhaustion regime.

Trademark exhaustion is qualified in the UK “where there exist legitimate reasons for the proprietor to oppose further dealings in the goods (in particular, where the condition of the goods has been changed or impaired after they have been put on the market)”. Nike would likely rely on this exception to oppose the sale of the ‘Satan shoe’.

Alterations to goods

Much of the case law around trademark exhaustion in the UK has concerned repackaging of pharmaceuticals, and there has been little judicial consideration of how the exception applies where the goods themselves have been altered.

Nike could point to MSCHF’s modifications as having “changed or impaired” the condition of its goods. On the wording of the provision above, change/impairment can be said to be an express example of a “legitimate reason”.

However, in Viking v Kosan (2011) the Court of Justice of the European Union (CJEU) held that, “alteration or impairment of the condition of goods bearing a mark is given […] as an example of what may constitute legitimate reasons”.