THE FASHION LAW EXCLUSIVE - If you watched Kanye West's recent performance on Saturday Night Live, you likely noticed a few things. There was his pearl-studded Balmain jacket (if you pay attention to Kanye at all, you know Balmain is a staple in his wardrobe and the wardrobes of his family members-by-marriage) and you may have also noticed his all white adidas sneakers, which bore the brand’s three-stripe trademark in black. The rapper’s footwear choice comes as little surprise, as he has been collaborating with the Germany-based sportswear giant for sometime now. What you might not have discerned: Those white adidas sneakers were not actually adidas sneakers at all. Turns out, Kanye was wearing a pair of white Vans on which someone drew three adidas-like black stripes.
This raises quite a lot of questions. For instance, did West plan this or was it a spur of the moment thing? Did anyone know he was doing this? Does adidas know? Why draw the three-stripes on at all? Why not just wear a pair of Vans?
The answers to these questions require a certain level of insight into both Kanye’s thinking and his relationship with adidas, neither of which we have. That does not mean, however, we can’t speculate as to some of the potential legal issues that might be at play for West as a result of his decision to wear the do-it-yourself “adidas” sneakers.
Breach of Contract
Kanye West is known for being controversial. He likes to cause a scene. That is kind of his thing. So, maybe his footwear choice is as simple as him deciding to draw the three lines to be extra noteworthy – you know, just in case a recorded backstage meltdown that was subsequently leaked to the press did not garner enough attention for him.
On the other hand, his contract with adidas, either in connection with his Yeezy collection or otherwise, may include a provision that requires him to wear adidas shoes when he performs – much like when an endorser athlete is contractually obligated to wear adidas on the court or the field, etc. So, in an effort to comply, West took to his sneakers with a marker before he went on stage when someone didn’t show up with his proper wardrobe or something (there was, after all, a big mix up with the set (as documented in a leaked audio recording), the same could potentially be said of West's sneakers).
There are two reasons that suggest that the latter is a very real possibility that West is being paid to endorse adidas and thus, is contractually obligated to perform in adidas. The first reason is because, as you might have noticed, since Kanye teamed up with adidas in 2013, in most – if not all – of his performances, he’s wearing an adidas shoe of some sort. Maybe that’s just a coincidence (he does, after all, vehemently despise Nike). But it could also be that he’s contractually required to tout the brand’s gear.
The second reason is that it’s just smart business. As far as both adidas and Kanye are concerned, what he wears for a performance – or even in his daily life – likely equals sales (more on this below). Many people watch him perform and want to know what he’s wearing – and various websites and apps make that easy. Some of those people then might go and buy whatever it is. With this in mind, mandating that he wear adidas shoes at a performance is smart for all parties involved. It allows adidas to advertise and allows West to profit off of his wardrobe and drive sales of his adidas designs.
So let’s say adidas included a clause stipulating that West could only wear adidas sneakers while performing and West agreed: He’d be in breach of contract as a result of his SNL performance. And as a result, adidas could seek damages and/or specific performance, which is basically a court order that going forward, West has to wear adidas shoes while performing. But this is where the drawn-on stripes come in (again): In an effort to not breach his contract, he drew them on hoping the camera wouldn’t catch his feet and just in case it did, at a glance, the shoes look like adidas.
Another option for adidas – if it chose to go after West, which it won’t – would be to file a trademark infringement claim (and we know this one is likely a stretch, but worthy of discussion anyway). For those who need it, here’s a little review: A trademark is a logo, symbol, word, or phrase that is used distinguish one product from another. Trademarks essentially make it easier for a consumer to identify the source from which an item comes. With this in mind, there’s no denying that adidas has trademarks for it’s Three-Stripe Mark, and there’s also no question that adidas is very protective of this mark (see here and here).
Basically, this all means that unless you have permission, you can’t sell goods with the Three-Stripe Mark unless you’re willing to accept the possibility of an infringement suit. Adidas would just have to show that there is a likelihood of consumer confusion to be successful in such a suit, meaning that consumers are confused as to the source of the goods or think that adidas has approved of or sponsored the use of its marks.
Courts consider a number of factors when determining if there is consumer confusion, including: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; and (6) the defendant's intent.
So let’s start from the top. (1) Adidas’ mark is strong. (2) It’s likely that consumers will assume there is an association between adidas and Kanye’s shoes. (3) The marks are nearly exact (taking into account that whoever drew the three lines on Kanye’s shoes didn’t use a ruler). (4) We know of at least one case of consumer confusion (more below). (5) Not really applicable because, as far as we know, Kanye isn’t trying to sell his version. (6) Who’s brave enough to try to guess Kanye’s intent?
Most of these weigh pretty handily in adidas’ favor. But the thing about Kanye’s shoes on SNL is this is not a typical example of trademark infringement. He’s not trying to sell his Vans-turned-adidas shoes, so there’s not the typical connection to the consumer.
But you can argue that he’s basically a walking advertisement. Think about it: Kendall and Kylie Jenner seemingly get some type of compensation just to shop for Uggs. And then there was the prescription drug ad via Kim’s Instagram account. These are people who create value for a company just by saying something or buying something or wearing something. Kanye is no different. Wearing adidas shoes while performing is definitely valuable for adidas. Which is why it’s not a stretch to say that by wearing adidas shoes during a performance (or, in this case, Vans that appear to be adidas shoes), there’s an impact on consumers.
And more importantly, Kanye is confusing consumers as to the source of his shoes. We know of one consumer, for example, who wanted to buy the shoes he saw Kanye performing in and was understandably under the impression that the shoes were made by adidas. It was only after some investigating that he realized what was going on.
It’s anyone’s guess why Kanye drew the Three-Stripe Mark on his Vans. And we haven’t heard or read anything about the faux adidas shoes yet, so it’s hard to say if anything will come of this. But here’s a question or two to consider: How many of you out there 1. watched his performance on Saturday Night Live and 2. assumed he was wearing actual adidas shoes?
JENNIFER WILLIAMS is a law school graduate who writes about fashion, the legal avenues available for protecting it, and the ways in which the laws are falling short. She is currently admitted to the NY State Bar.