Nike prevailed in the final round of a ‘hearty’ shoe deal. In an order dated February 8, Judge Mark Scarsi of the United States District Court for the Central District of California declined to dismiss allegations of trademark infringement, misrepresentation of origin and unfair competition that Nike had brought against John Geiger Collection in connection with the Los Angeles. -the based brand’s attempt to “capitalize on the strength and fame of Nike and its Air Force 1 (“AF1”) by manufacturing, promoting, advertising, marketing and selling footwear bearing the AF1 trade dress and/or a confusingly similar trade dress,” but without Nike’s involvement or permission.
In an amended lawsuit she filed in August, in which she added John Geiger as a defendant to the existing trademark lawsuit she originally filed against shoemaker La La Land in January 2021, Nike alleged that Geiger took “systematic actions in an attempt to falsely associate [its] counterfeiting products with Nike,” and “attempted to capitalize on Nike’s valuable reputation and customer goodwill” by using its Dunk and AF1 trade presentation, as well as its iconic swoosh logo, “in a way likely to lead consumers and potential customers to believe that the counterfeit products are associated with Nike, when they are not.
Geiger’s Motion to Dismiss
In response to Nike’s decision to add him as a defendant in the La La Land lawsuit, Geiger filed a motion to dismiss, arguing that the Beaverton, Oregon-based sportswear titan did not failed to enforce its trademark claims, including failing to establish the critical element of whether consumers are likely to be confused about the nature of Geiger’s “look-alike” sneakers, and urging the court to dismiss the claims of Nike against him accordingly.
Following an objection from Nike, Judge Scarsi dismissed Geiger’s motion to dismiss, finding that Nike had sufficiently pleaded its claims. First addressing Geiger’s argument that Nike failed to make a viable claim for trademark infringement because “the elements of the trade dress that Nike claims Geiger infringed – things like the seams that hold the sneaker together – are primarily functional and do not have the distinctiveness required to obtain a clothing trade registration in the first place.
Not persuaded, the court held that Geiger’s argument that the AF1 trade dress “includes functional elements” – and therefore cannot serve as a trademark – “because each of the elements is functional” is either “unsubstantiated , or based on extraneous evidence” that does not appear in the Complaint or that “is not fairly incorporated in the Complaint”. Further, Geiger “does not explain why the various elements of the AF1 commercial dresses cannot be ‘combined into a non-functional aesthetic whole.’ AF1 sneakers is not functional”.
The court held that Nike had also shown that despite Geiger’s assertion to the contrary, “the presence of the Swoosh branding on the AF1 shoes does not contradict [its] claims” that the configuration of the AF1 has a secondary meaning, allowing it to function as a brand. In its amended complaint, Nike pointed to its “marketing of the AF1 shoes, the significant sales of these shoes, and the recognition these shoes obtain in the community at large,” which the court determined were “enough facts to do… the secondary meaning element ‘plausible at first sight’.
(In its motion to dismiss, Geiger argued that while the Swoosh logo is “undoubtedly the most distinct source identifier for Nike’s sneakers”, Nike does not allege “sufficiently that the AF1 trade dress to it alone would serve the same purpose.” Instantly identifiable Swoosh logo, Geiger argued – unsuccessfully – that the elements that make up the AF1 trade dress have “little or no ‘source identification’ function”, resulting in the shoe design itself, instead of the Swoosh, is not protectable as a trademark.)
While the parties also clashed over Nike’s misleading appellation of origin, unfair competition and common law trademark infringement allegations, the court sided with Nike on all counts for the same reasons. than those stated above.
On the false designation of origin front, Geiger pushed for the dismissal based on the Deckers Outdoor Corp. vs. JC Penney Co. Inc. case, in which a judge in the Central District of California found that “a claim for misappropriation of commercial apparel cannot be presented as a false claim of appellation of origin”. Agreeing with Nike, Judge Scarsi said he believed the Deckers the court erred in extending the reasoning of Dastar Corp. against Twentieth Century Fox Case beyond “the narrow instance in which a plaintiff alleges that the defendant violated the Lanham Act by misrepresenting the origin of a ‘communications product'”. Deckers decision.
And in a final blow to Geiger, the court refused to sever the claims Nike filed against him from those Nike asserted against La La Land. Geiger argued in favor of severing Nike’s claims, as they “do not arise out of the same transaction or the same occurrence, there is no commonality between the claims against [it] and La La Land, and the junction is fundamentally unfair. Siding with Nike, Judge Scarsi said that, among other things, Nike alleges that Geiger infringed on its AF1 marks by selling products made by La La Land. Such a fabrication scenario meets the “same transaction or event” standard, thus giving rise to “common issues of law and fact” between the two defendants. As such, the court denied Geiger’s motion for separation.
Customizations, NFT not allowed
Nike’s suit is part of an ongoing push by the sportswear giant to “hold accountable all bad actors” who “misrepresent Nike’s famous brand and trick consumers into buying fake Nike products”. In addition to this case, Nike has filed a number of trademark-centric lawsuits against entities and individuals who allegedly seek to build businesses on the back of Nike’s famous brand. On the heels of filing a lawsuit against MSCHF after it suffered backlash over the Brooklyn-based company’s sale of personalized (read: blood-infused) Air Max sneakers, Nike has filed a lawsuit against a former employee who personalized – and was – initially – selling genuine Nike sneakers without his permission. This case has since been settled.
Around the same time, Nike filed a lawsuit against Drip Creationz, which allegedly offered shameless counterfeit AF1 sneakers, which it advertises as “100% authentic,” while promoting and selling unauthorized footwear that ‘she markets as handmade ‘customizations’. Nike’s most iconic products. That case is currently pending in federal court in California, with Drip Creationz claiming in response that it does not need Nike’s permission to sell modified sneakers bearing the Swoosh.
And more recently, Nike made its trademark application virtual, suing StockX on the grounds that the marketplace allegedly offered NFTs that amounted to “unlicensed products.” [that] are likely to confuse consumers, create a false association between these products and Nike, and dilute Nike’s well-known brands.
The deal is Nike, Inc. vs. La La Land Production & Design, Inc.2:21-cv-00443 (CD Cal.)