Nike and John Geiger Collection have settled a trademark lawsuit over “copycat” footwear. In a motion lodged with the U.S. District Court for the Central District of California on Tuesday, the parties are seeking the court’s approval of a consent judgment and motion for permanent injunction regarding Nike’s trademark infringement and dilution claims against John Geiger Collection, which stem from its sale of its signature GF-01 sneakers, and the Los Angeles-based footwear brand’s declaratory judgment counterclaims against Nike, in which it sought to have Nike’s Air Force 1 (“AF1”) trademark registrations invalidated on the basis that the AF1 trade dress consists of “functional features.”
Setting the stage in the proposed consent judgment and permanent injunction, Nike and John Geiger Collection (“JGC”) do away with Geiger’s counterclaims, which will be dismissed with prejudice, as “JGC stipulates, agrees, and acknowledges that Nike is the exclusive owner of the following registered trademarks and all related common law rights: U.S. Trademark Registration Nos. 3,451,905; 3,451,907; and 5,820,374,” which cover Nike’s AF1 designs, and JGC “stipulates, agrees, and acknowledges that [these] marks are valid and enforceable.” (JGC previously argued that Nike lacks rights in the AF1 marks, as elements of the marks are “essential to the use and purpose of the sneaker and/or affect the cost, quality, performance, durability, and safety of the sneaker,” making them functional and ineligible for protection. The company also alleged that Nike has failed to police unauthorized uses of its AF1 marks, thereby causing them “to cease functioning as a symbol of quality and a controlled source.”)
Turning to the claims that Nike made against Geiger in furtherance of its lawsuit, the parties state that a judgment should be entered against JGC “on all of Nike’s counts in the First Supplemental First Amended Complaint” – trademark infringement, false designation of origin, contributory trademark dilution, and unfair competition – “because JGC, although without intent, infringed [Nike’s] asserted marks by having manufactured, using, transporting, promoting, importing, advertising, publicizing, distributing, offering for sale, and/or selling [a long list of the GF-01] products.” (While JGC has seemingly traded an infringement judgment (and other things) in exchange for Nike dropping its claims, there is certainly some room for discussion about likelihood of confusion and thus, infringement, here.)
As for what will happen to any remaining inventory that JGC has of the “infringing” GF-01 sneakers, the agreement enables the company to sell-off its “existing inventory […] up to and through May 31, 2023,” and after that point, the company is required to “destroy within 14 days any remaining inventory of infringing products.”
As part of the settlement, Nike has also garnered itself a permanent injunction (subject to court approval), which places strict limits on what JGC and any parties acting in concert with it cannot do with regards to Nike’s trademarks, this includes a permanent bar against “manufacturing, transporting, promoting, importing, advertising, publicizing, distributing, offering for sale, or selling any products … under the asserted [AF1] marks or any other [Nike] marks” that are likely to confuse consumers into believing that any JGC products “or any of JGC’s commercial activities are sponsored or licensed by Nike, are authorized by Nike, or are connected or affiliated in some way with Nike.”
Beyond that, JGC cannot imply that it has “Nike’s approval, endorsement, or sponsorship of, or affiliation or connection with, JGC’s products, services, or commercial activities, pass off [its] business as that of Nike, or engag[e] in any act or series of acts … [that] constitute unfair methods of competition with Nike and from otherwise interfering with or injuring the asserted marks or the goodwill associated” with those mark, among other things.
The filing follows from a win for Nike early this year when Judge Mark Scarsi of the U.S. District Court for the Central District of California refused to dismiss the Beaverton-based sportswear giant’s claims against JGC, who accused the brand of attempting to “capitalize on the strength and fame of Nike and its Air Force 1 (“AF1”) by making, promoting, advertising, marketing, and selling footwear bearing the AF1 trade dress and/or confusingly similar trade dress,” albeit without Nike’s involvement or authorization, among other things. (More about that here.)
A statement published on Geiger’s Twitter on Tuesday states, “Nike and John Geiger have resolved the lawsuit related to Nike’s Air Force 1 trade dress and John Geiger’s footwear products, specifically his GF-01 Shoes. The lawsuit has been resolved through an amicable resolution that includes a consent judgment. As part of the resolution, John Geiger has agreed to modify the design of his GF-01 shoes. Nike respects John Geiger as a designer and other designers like him, and both parties are pleased to resolve this dispute in a way that allows John Geiger to continue building his brand while also respecting Nike’s intellectual property rights in its iconic Air Force 1 trade dress”
Customizations, Unauthorized NFTs
Nike’s lawsuit, which started as an action against Warren Lotas’ footwear manufacturer La La Land Production & Design and subsequently added Jian Geiger as a defendant, comes as part of an enduring push by the sportswear giant to “hold accountable all bad actors” that “wrongfully trade off of Nike’s famous brand and dupe consumers into purchasing fake Nike products.” In addition to this case, Nike has filed a number of trademark-centric lawsuits against entities and individuals that it alleged were looking to build businesses on the back of its famous branding. After filing a headline-making suit against MSCHF in the wake of backlash over the Brooklyn-based company’s sale of customized (read: blood-infused) Air Max sneakers, Nike filed suit against a former employee that was customizing – and selling – initially-authentic Nike sneakers without its authorization. That case has since settled.
Around the same time, Nike initiated a trademark suit against Drip Creationz, which has allegedly offered up unabashedly counterfeit AF1 sneakers, which it advertises as “100% authentic,” while also promoting and selling unauthorized footwear that it markets as handmade “customizations” of Nike’s most iconic products. That case is currently underway in federal court in California, with Nike recently amending its complaint to add new defendants to the lineup.
And most recently, Nike has taken its trademark enforcement virtual, filing suit against StockX on the basis that the marketplace has allegedly offered up NFTs that amount to “unsanctioned products [that] are likely to confuse consumers, create a false association between those products and Nike, and dilute Nike’s famous trademarks.”
The case is Nike, Inc. v. La La Land Production & Design, Inc., 2:21-cv-00443 (C.D. Cal.)