Here we go! #IPThursday with your Favourite Lawyer is here! This week we go through a story that’s been dominating the news over the last few weeks....Nike’s Lawsuit vs Lil Nas X for his “Satan Shoes”.

We all know Montero Lamar Hill, probably by his stage name Lil Nas X. Named after the Mitsubishi Montero. Nas X was born in Lithia Sorings Georgia, on the 9th of April 1999, so his birthday is actually tomorrow.

Sidenote, what is it with Black Americans and naming their children after cars?

Anyways, Montero kept to himself a lot growing whilst growing up, particularly in his teenage years. So he spent a lot of time making memes and short videos on the internet. He was what I would call a full time troll.

He ran several Nicki Minaj fan accounts (yes, he was one of those people ). Hills was basically one of those faceless accounts that tweet memes and content about their Favourite artists. If you have not come across this weird area of Stan Twitter, you are blessed.

He graduated from High School in 2017 and went to the University of Georgia. Already I feel old! He didn’t stay long at Uni, he dropped out after a year to pursue a career in music. He adopted the name Lil Nas X, which is a tribute to his Favourite rapper Nas.

Sometime in 2018, Lil Nas X purchased a beat from an online dutch producer. He then paid $20 to an Atlanta Studio and recorded the country rap song “Old Town Road”.

Lil Nas X decided to take a millennial approach to promoting his song. He made hundreds of short videos off the social media app Tik Tok.

For those who don’t know what Tik Tok is, and I’m speaking directly to my parents and their peers here. Tik Tok is a social media app like Facebook and Instagram, except it allows people to create short videos with cool effects. Thats just a basic summary badala.

The real power of Tik Tok comes from the fact that anyone can create fun content, and edit videos easily. Its no longer exclusive to TV companies and video editors. This means that millions of short videos are created per day. Its the perfect place for challenges.

One of these features is that it allows you to add different music to the videos. It is a copyright mess I’ll unpack in future. Lil Nas X figured he could use Tik Tok to promote his song. So he made a lot of memes and short videos and put his song on them.

The song eventually went viral in 2019 when the #YeeHawChallenge was trending. People would post themselves dressed in cowboy clothing with the song playing. By June 2019, the song had been posted on Tik Tok 67million times.

The vast majority of the listeners who drove the popularity of the song were young children. It was repetitive, easy to sing and fun to get them involved. It was probably the biggest song of 2019.

He signed for Colombia records and in April ‘19, country legend Billy Ray Cyrus got involved and recorded a remix with Lil Nas X. At the time, Lil Nas X was getting a lot of hate from a few racist fans of country music who didn’t believe that the song was actually a Country song.

There were a lot of issues here, but as most of you know, lil Nas X is Black and Gay, and as you can imagine the fans of that music didn’t particularly accept him with open arms.

However, since then he has become one of the biggest artists in the world. So how has our star gotten himself an #IPThursday feature. Well at the beginning of this year, In February 2021 he released the song “Montero: Call me by your name”.

The song was officially released on March 26, 2021, along with the music video. The video is truly something else. I am not even post it, I aint tryna be struck by lightning. You guys can check it out on YouTube .

In the video Lil Nas X dresses up in different lavish outfits in what appears to be hell or Snake filled Garden of Eden? He then proceeds to give satan a lap dance in a scene that left me shook.

If his aim was to get a reaction and views, then he certainly got it. The video broke YouTube streaming records and was deemed a “valuable expression of queerness” in some circles.

Naturally the reaction was intense. A lot of Christian groups and conservative people were outraged while a few others called it creative genius. Others were disappointed that Nas X would expose their children to immoral acts and satanic worshiping content. They were big mad!

One entity that wasn’t impressed with the video was clothing company Nike. In the video, Nas X wears a pair of Nike sneakers, namely, the Air Max 97. However, these are different to your usual air maxes.

Nas X and the marketing company he works with had changed the design of the shoe. Each pair of shoes are black, and features a bronze pentagram on the laces and an inverted cross.

They called them “Satan Shoes”. Yea this is starting to feel a lot like mocking Christianity instead of just free expression, but we move.

The sides of the shoes have a reference to the Bible passage Luke 10:18. Only 666 pairs of the shoes were produced, priced at $1,018 dollars each. They sold out in under a minute and they mentioned that they will have a drop of human blood. Its that weird people .

Nike weren’t happy about this and they immediately dragged Nas X and the marketing company MSCHF to a Federal court in the US. Nike argued that the shoes were manufactured without their permission.

They submitted evidence to prove that even regular sneaker buyers were confused by this. They argued that many people thought the shoes belong to Nike and that Nike as a company was endorsing satanism.

Lets take quick sidenote: In trade mark law, in order to determine if there has been trade mark infringement, the test is whether the ordinary consumer would be confused as to the origin and source of the goods.

Nike released a statement saying "Nike did not design or release these shoes and we do not endorse them". Soon after that, they succeeded in court and got a restraining order against Nas X and MSCHF. This meant that all sales of the Satan Shoes were blocked.

Nas X and his fans weren’t happy about this. They felt that sales of the shoes were blocked by bitter people online. I must say, sales of the shoes were blocked due to an act trade mark infringement.

Nike’s case was that the shoes still had Nike’s logo and brand, therefore any sales would be infringement of their IP. Simple....or is it......

Someone asked me this week what happens if you buy white Air Force 1s (plain Nike sneakers), and then redecorate them with different designs/colours to sell them off online? Would that be trade matk infringement. The answer is actually not simple...

There is a rule in IP law called the First sale doctrine. That is, if Nike sells AF1s to a customer, their rights in relation to that shoe have been exhausted and they cannot control what the Customer does with them after the first sale. You can even post them for sale online.

If that Customer goes on to redesign the shoes and add cool features, there is nothing the trade mark owner can do. Think of Pimp My Ride and how you can change the design of your car. VW can’t tell me anything if I change the bumper of the car.

However, the first sale doctrine does not apply to instances where you materially change a trade mark owner’s goods and then put them back onto the marketplace through similar channels, that may cause confusion.

That is what has happened to Lil Nas X here in my opinion. The shoes were available commercially and you could easily think Nike Approved the design.

So there was a likelihood of confusion. This is the ultimate test in any trade mark infringement case. Is the public likely to be confused?

Funny that Nike and other sneaker companies allow for people to make Custom shoes. I just think they did not want to be Associated with Satan worshiping and so they (rightly) used all their trade mark rights.

Big Lesson: I don’t think this case is settled yet, there might be more to come. If you are going to sell off and redesign someone else’s IP commercially, make sure you get their permission and if there is likely to be any confusion, just don’t do it.