Image: Nike

Los Angeles-based brand Warren Lotas made headlines late last month when it revealed that it had teamed up with noted Nike collaborator Jeff Staple for what both parties have characterized as a “reinterpretation” of the cult-classic shoe that is said to have “catapulted sneaker culture to the masses” when Staple released it with Nike back in February 2005 to intense fan fare and what has since been characterized as a full-blown “riot.” Consisting of Nike’s classic Dunk silhouette and adorned with a stylized version of the Beaverton-based titan’s swoosh on the side, the “unexpected” announcement of the $300 Staple Pigeon x Warren Lotas Reinterpreted OG Shoes put die-hard sneaker fans and the sneaker media, alike, on high alert. 

Also on high alert? Nike, which asserts in a new “trademark and anti-dilution” lawsuit that it is not in any way involved in the reintroduction of the sneaker, and has not authorized the release. In the complaint that it filed on Wednesday in a California federal court, Nike claims that it “protects its iconic sneaker designs, and its intellectual property in those designs, by rooting-out bad actors that undermine the DNA of sneaker culture by promoting and selling fakes.” According to Nike, “Warren Lotas is one those bad actors,” as Lotas and his corporate entity are “currently promoting and selling fakes of coveted Nike Dunks,” the sneaker that it launched “over 30 years ago, [and which] is now recognized as one of the most iconic and influential sneakers of all time.” 

While “Warren Lotas only recently announced these sneakers,” Nike claims that “there is already confusion in the marketplace regarding whether they are legitimate customizations or illegal fakes,” as indicated by commentary on social media. Hardly a coincidence, such alleged confusion about the nature of the lookalike sneakers has been “intentionally created” by Warren Lotas, per Nike, which argues that Lotas “is attempting to capitalize on it.” (Likelihood of confusion among consumers as to the source of a product is important, as it is the critical element in a trademark and/or trade dress infringement claim).

Such confusion – which comes in the form of “initial interest confusion, post-sale confusion, and confusion in the secondary sneakers markets,” per Nike – is heightened by the fact that Lotas’ sneakers “travel in the identical channels of trades and are sold to identical consumers as Nike’s genuine products,” including authentic limited-edition collaborations Nike Dunk sneakers.” The latter of which “are coveted by sneakerheads throughout the world” and “currently sell for tens-of-thousands of dollars in the secondary sneaker market,” according to Nike.

With the foregoing in mind, Nike asserts that Lotas is running afoul of federal trademark law “by, among other things, using Nike’s registered DUNK word mark, Nike’s registered Dunk trade dress, and a mark that is confusingly similar to Nike’s famous Swoosh design to promote and sell his fakes.” To be exact, his use of Nike’s trademarks is “likely to confuse, mislead, or deceive customers, purchasers, and members of the general public as to the origin, source, sponsorship, or affiliation of [Warren Lotas] or [his] infringing products with Nike or Nike’s products,” and more than that, “is likely to cause such people to believe in error that [his] infringing products have been authorized, sponsored, approved, endorsed, or licensed by Nike or that [Warren Lotas] is in some way affiliated with Nike” when Nike has given no such authorization or approval.

As a result, Nike says that it has filed suit “to protect its intellectual property and to clear the confusion in the marketplace by setting the record straight—not a single component of Warren Lotas’s fake sneakers comes from an original Nike Dunk,” and more than that, “Warren Lotas’s ‘Dunk’ sneakers are not legitimate customizations, they are illegal fakes.” 

In setting forth claims of trademark infringement and dilution, unfair competition, and false designation of origin, Nike claims that it “has suffered, continues to suffer, and/or is likely to suffer damage to its trademarks, business reputation, and goodwill that money cannot compensate.” While money may not be able to remedy the alleged harm caused to its $160.6 billion brand by Lotas, Nike is, nonetheless, seeking monetary damages in a sum to be determined at trial. Maybe more importantly, Nike is seeking immediate and permanent injunctive relief in order to: 1) prevent the actual release of Lotas’ footwear to consumers since the allegedly infringing sneakers were sold on a pre-order basis last month, after all, and are slated to be shipped to consumers in December, something that a preliminary injunction could certainly stop, and 2) ultimately, enjoin the brand from pulling such a stunt again in the future.

The interesting twist in the case is that the Staple Pigeon x Warren Lotas Reinterpreted OG Shoes appear to be something of a joint effort between Lotas and Staple based on the marketing of the “new” shoes. In a Instagram post on September 27, for example, Lotas thanked Staple for “giving [him] an opportunity to be a part of your legacy,” suggesting that the brand had gotten authorization from Staple to recreate the design. Staple further implied a formal tie-up when he helped to promote the pre-sale drop of the sneakers on his personal Instagram page, writing, “The OG. Official. Reinterpreted by Warren Lotas. Sept 27th. 3pm EST / 12pm PST warrenlotas.com.”

Interestingly, despite the seeming collaboration, Nike’s complaint exclusively names Warren Lotas LLC and Lotas in his personal capacity as defendants, meaning that Staple – who has an ongoing collaborative relationship with Nike, while maintaining his own Staple Pigeon brand (in connection with which he holds a registered trademark for the pigeon graphic that appears on the Lotas sneaker) – is not a party to the suit. 

Looking beyond holy-grail Nike sneakers and the impact that such a case could inevitably have on the sizable market of unauthorized “custom” Nike sneakers, the issue of customization and the role of confusion the secondary market, which Nike mentions more than once in the case at hand, joins a larger trend in litigation that center on alteration/modification and customization concerns. Nike’s case against Lotas comes as a number of other cases – such as the currently-pending ones that Chanel has filed against resale sites, like The RealReal and What Goes Around Comes Around, and a bootleg-centric case filed by Ralph Lauren, as well as watch-centric lawsuits, including the since-settled Rolex v. La Californienne case and the Hamilton Watch case – put these issues under the microscope due, in no small number of situations, to the rise and the role of the resale market.

*The case is Nike, Inc. v. Warren Lotas and Warren Lotas LLC, 2:20-cv-09431 (C.D.Cal.).