This summer during commercial breaks for the Major League Baseball All-Star Game, Nike rolled out a powerful three-part campaign aimed at encouraging youth sports. In three video segments, the Portland-based sportswear giant featured the stories of teen mother and soccer player Nayeli Rivera, Chicago-native Maynor De Leon, who set out to lose 500 pounds, and runner Justin Gallegos, who dreamt of running a half marathon in two hours despite being plagued with cerebral palsy. The message of the inspirational campaign: “Sport Changes Everything.”
Less than two months after Nike debuted the campaign, one that cost it a whopping $16 million to make and that Nike planned to run through 2020, a North Carolina-headquartered sportswear retailer called foul. In a 23-page complaint filed in a federal court in North Carolina, Fleet Feet accused Nike of running afoul of its federally protected trademarks “Change Everything” and “Running Changes Everything,” arguing that Nike’s national campaign was trampling on the marks it has used since 2012.
Fleet Feet alleged in its complaint that despite Nike being well aware of its trademarks since it stocks its footwear in Fleet Feet’s chain of nearly 200 stores, the sportswear giant opted to use the marks anyway. In fact, Fleet Feet argued that Nike initially went so far as to use the “Running Changes Everything” phrase – its exact trademark – on the Nike website, prompting Fleet Feet to complaint and Nike to swap “running” with “sport.”
When Nike refused to abandon its use of the allegedly still-infringing mark, which Fleet Feet says is the “cornerstone [of] its brand,” the retailer filed suit, asking a federal court to stop Nike from making use of the trademark-protected phrase and pay an array of monetary damages in a sum to be determined at trial.
Fast forward to this week and Fleet Feet has bagged a preliminary win. In a 51-page decision issued on Monday, U. S. District Judge Catherine Eagles awarded Fleet Feet a preliminary injunction on the basis that it has shown that it is likely to succeed on its trademark claims. The judge found that “Fleet Feet’s distinctive ‘Change Everything’ and ‘Running Changes Everything’ marks have relatively low commercial strength, Fleet Feet’s substantial advertising expenditures are a drop in the bucket compared to Nike’s spending, and Nike’s advertising campaign using the ‘Sport Changes Everything’ phrase is likely to swamp Fleet Feet’s marks in the market and to cause consumers to link Fleet Feet’s marks with Nike.”
Despite Nike’s arguments that Fleet Feet improperly “delayed in seeking a preliminary injunction” and that it “presented no evidence its revenue has begun to decline or that its franchisees are leaving due to the [Sports Changes Everything] campaign” (to which the court stated that “this form of harm takes time to rise to the surface”), the judge sided with Fleet Feet, noting that “Nike had the option to perform a trademark search in advance—or, if it did one, to respond differently—to ensure its planned campaign would appropriately respect other companies’ marks and would not be subject to court action.”
With the forgoing in mind, Judge Eagles held that Nike is “immediately ENJOINED AND PROHIBITED on a nationwide basis from any use whatsoever of the phrase ‘Sport Changes Everything,’ or any other designation confusingly similar to the RUNNING CHANGES EVERYTHING and CHANGE EVERYTHING marks owned by [Fleet Feet], in any form of … advertising, marketing, promotion, offering for sale, sale, or distribution of athletic shirts, athletic training programs and events, retail sporting goods store services and goods, and related goods and services.”
She further ordered that the preliminary injunction bars – but is not limited to – “the release of new advertising materials,” and requires Nike to immediately remove the “Sport Changes Everything” phrase from “its own websites and social media pages, its brick-and-mortar locations, and billboards, banners, or similar large advertisements,” as well as from “videos it posted on YouTube or other websites” and any paid-for promotions by third parties.
Judge Eagles noted that while Nike argued that “hundreds if not thousands of hours of work and many millions of dollars would be wasted” if an injunction was awarded, she, nonetheless, determined that “much of the [Nike] advertising the Court has seen can be modified to delete the infringing use and still be used.”
In the wake of the court’s preliminary injunction decision, one that puts a swift hold – at least until the duration of the proceedings – on the nearly $20 million campaign that Nike planned to use through the 2020 Super Bowl, Nike has filed a notice of appeal, alerting the court that intends to appeal the decision to the U.S. Court of Appeals for the Fourth Circuit.
*The case is Fleet Feet, Inc. v. Nike, Inc., 1:19-CV-885 (M.D.N.C.).