Sneaker Trade Dress Infringement

Sneakerheads have long questioned Nike's decision not to bring a trade dress infringement lawsuit against BAPE. Tomoaki Nagao, also known as Nigo, established the company BAPE in Japan in 1993.  Ten years after the business was founded, we started to see these distinctive, colorful items and shoes trickle into the United States. Rappers and other people in the music industry started using them as status symbols.

In the early 2010s, BAPE changed the design to make the shoe look less like Nike's shoe after it seemed they were making shoes that resembled the Nike Air Force 1. Nike hadn't yet filed a lawsuit against BAPE, despite appearing to be tougher and more motivated to pursue infringing designs. BAPE's luck, however, finally ran out on January 25, 2023, when Nike filed the long-awaited lawsuit against the company, alleging that "BAPE's current footwear business revolves around copying Nike's iconic designs" (Dunne, B. 2023, January 31).

Trade Dress and Trade Dress Infringement

Trade dress refers to a product’s overall look and feel or its packaging. This may include things like its design, color scheme, graphics, or other visual aspects that provide the product with an identity and uniqueness in the marketplace (EPDG 2019). Trade dress infringement refers to the unauthorized use or imitation of another’s trade dress and occurs when a product design or its packaging creates confusion in the minds of consumers with another product’s trade dress that is protected by law (EPDG 2019).

Kenneth Anand, a lawyer and former General Counsel of Kanye West’s YEEZY Apparel, explained trade dress infringement to us:

In order for a trade dress to be protected by the law:

  • It must be nonfunctional. While product packaging is almost always nonfunctional, product designs may not be but the ones that are can be eligible for trademark protection.

  • It must meet four requirements for trademarks:

    • It’s a device.

    • It is used to identify the source of goods/services.

    • It distinguishes that source and that goods/services from the goods/services of others.

    • It has not been trademarked by someone else.

  • The trade dress must be distinctive. Product packaging can be inherently distinctive under the law, but product design cannot be inherently distinctive -- it must have a secondary meaning. Secondary meaning occurs when consumers see a trade dress and associate it with a specific source; in other words, when the trade dress becomes iconic. (For example, the shape and design of a Coca-Cola bottle, and a Domino’s pizza box.)

  • It must be used in interstate commerce (sold in multiple states).

Notable Trade Dress Infringement Cases in the Sneaker Industry

Nike v. BAPE (Air Force 1 v. Bapesta)

Because of BAPE’s sneakers’ striking resemblance to Nike's, Nike contends that the BAPE sneaker line has caused confusion in the market and among customers (Complex, January 2023).  In this case, Nike will need to prove the likelihood of confusion through the demonstration of BAPE creating designs substantially similar to Nike’s protected trade dresses. Being able to demonstrate the infringement comes with being able to depict things like the overall similarities, strength, and recognition of the accused party’s design in the market, the intent of the creators, and the actual confusion if any (EPDG 2019). Nike claims that the Bapesta shoe's design, which features a star logo on the side and a distinctive toe box design, was a direct copy of the Air Force 1 and that BAPE's use of the design constituted trademark infringement, trade dress infringement, and unfair competition (Dunne, B. 2023, January 31).

Since its debut in 1982, the Air Force 1 has been a well-known and influential shoe, and other sneaker companies have widely acknowledged and used some of its design cues in their products. While looking at the Nike Air Force 1 and the Bapesta shoes (see photos below), you can see that they are almost identical. Both sneakers feature an overall similar shape and silhouette. They are both low-top sneakers with a rounded toe-box and a flat sole. The Bapesta midsole closely resembles the thicker midsole of the Air Force 1. The placement and arrangement of the different panels are similar - the upper of the Bapesta is reminiscent of the paneling on the Air Force 1, as are the stitching patterns, overlays, and the division of the sections on the shoe.  The combination of these details, identical metrics, and paneling could cause consumer confusion, as someone who is not familiar with the differences between the two models may associate the Bapesta shoe with Nike as a brand.

While the Bapesta does not feature the iconic Nike swoosh, it incorporates its own branding in a similar location on the side of the shoe. Due to the Bapesta branding being in the same position as the Nike swoosh for branding and having a strong resemblance to the overall shape, consumers may mistake BAPE for a Nike product. Intellectual property laws protect brands and their designs, and causing consumer confusion can potentially lead to trade dress infringement and legal consequences.

It seems these resemblances are deliberate and show how the Bapesta pays homage to the Air Force 1 and the way it has influenced streetwear culture. It isn’t uncommon for different brands to draw inspiration from each other or from classic and iconic designs and derive their own unique interpretations, but it is important as a brand to make sure their designs do not infringe upon any intellectual rights like trademarks or trade dress.

Nike v. Kool Kiy/Omi (Air Jordan 1)

Nike filed a lawsuit in 2022 for trade dress infringement against two well-known shoe designers who have been "promoting, copying, and selling" Nike's designs and making their own version of the Air Jordan 1 and Dunk Lows (Jones, R., 2023, March 7). The two designers are Reloaded Merch LLC, the company behind Omi, and By Kiy LLC, the company behind the Kool Kiy brand.

Like the case with BAPE, Nike alleges these two companies have infringed upon Nike’s protected trade dress. They will need to prove the likelihood of confusion associated with their iconic Air Jordan 1 model against the Kool Kiy and Omi shoes.

When comparing the Jordan 1 to the designs that Kiy and Omi created (see photos above), some of the design elements that suggest potential consumer confusion and trade dress infringement consist of:

  • Stitching pattern, as the Kool Kiy and Omi shoes both are constructed using a stitching pattern that closely resembles the pattern on the iconic Air Jordan 1

  • Paneling, as the alleged knockoffs utilize similar paneling techniques and divide the shoe in the same way the Air Jordan 1 does.

  • Shape, as the overall shape and silhouette of their shoe is strikingly similar to the Air Jordan 1 with the rounded toe box and identical proportions. They could even be passed as Jordan 1s upon first glance, whether on feet or in hand (confusion).

  • Color Palettes, as the knockoffs utilize color combinations associated with the iconic Air Jordan 1 and its many known colorways. (In the picture we see the Air Jordan Bred Toe 1, Bred 1, and Shadow 1 being compared to the knockoff versions created)

Another aspect worth mentioning in Nike’s case is that Nike also sued Chinese-based manufacturer Xiamen Wandering Planet for manufacturing the infringing sneakers for Kiy and Omi (Jones, R. 2022, December 1).

Nike v. Warren Lotas (Nike Dunk Low v. Reaper Dunks)

Lastly, Nike filed a trademark infringement lawsuit against designer Warren Lotas in October 2020. The lawsuit alleged that Warren had profited from designs that were misleadingly similar to the famous Nike Dunk Low trade dress.

As mentioned in the previous two cases, Nike will need to prove the likelihood of confusion associated with Warren’s shoe. In a preliminary injunction order, the court noted, “that Nike's claims of marketplace confusion hold merit,” with examples of Warren Lotas Reaper Dunks being listed on platforms for resale like eBay and other online marketplaces “with the names SB, Nike SB, and Nike Dunk” (Jones, R. 2020, November 20).

Both shoes feature a low-top design with a rounded toe box in addition to a flat sole. The Reaper Dunks imitate the colorways of iconic rare dunks and panels/silhouettes of well-known Nike dunk models as the Nike Dunk and the Warren Lotas Dunk have similar panel arrangements and designs. Similar divisions and patterns are visible in the positioning and arrangement of the panels on the upper, which are the same as the paneling on the Nike Dunk. While the other three companies in the legal cases discussed above sported their own version of a swoosh, the branding element that Warren incorporates is a version of a swoosh that takes on the general shape of the Nike swoosh but resembles a Jason Voorhees mask at the curve and makes the end flat instead of circular. In comparison to the other alleged infringing designs, this is the one branding that maintains a visual association with Nike’s actual swoosh.

Julie Zerbo, of The Fashion Law website, states that "For consumers, when they see those elements put together, regardless of whether the sneaker has a Swoosh on it, they see that and they can link it to a single source, that single source being Nike” (Dunne, B. 2020, December 11).

As a big corporation with all eyes on them, Nike actively works to protect and defend their intellectual property as well as eliminate any confusion in the market. In the case with Warren Lotas, Nike expresses satisfaction with the preliminary junction order issued as a spokesperson came out and stated, “By prohibiting the sale of the fake Nike Dunks, yesterday’s order is an important step towards achieving that goal.” (Jones, R. 2020, November 20). With the development of this case, Nike is able to maintain consistency in its efforts to protect the integrity of their brand and crack down on infringement.

References

Nike vs BAPE

Dunne, B. (2023, January 31). Nike suing BAPE is 20 years in the making. Complex. https://www.complex.com/sneakers/nike-bape-trademark-lawsuit-explained

EPDG Business Law (2019, June 17), “Trade Dress Infringement.” https://www.epgdlaw.com/trade-dress-infringement/

YouTube. (2023, January 29). NIKE Just Sued BAPE!. YouTube. https://www.youtube.com/results?search_query=nike%2Bsuing%2Bbape

Nike vs Kool Kiy/Omi

Jones, R. (2023, March 7). Nike responds to Kool Kiy, labels him “serial copyist” in infringement case. Complex. https://www.complex.com/sneakers/nike-responds-kool-kiy-counterclaim-trademark-infringement

Jones, R. (2022, December 1). Nike sues designers Kool Kiy & Omi for trademark infringement. Complex. https://www.complex.com/sneakers/nike-sues-designers-kool-kiy-omi-trademark-infringement

YouTube. (2021, September 7). Omi in a Hellcat explains why he stole Kool Kiy’s Sneaker Idea “he hated on me!” (part 9). YouTube. https://www.youtube.com/watch?v=mUD5YAzPlu0  

Nike vs Warren Lotas

Jones, R. (2020, November 20). Nike responds after court orders Warren Lotas to stop selling lookalikes. Complex. https://www.complex.com/sneakers/2020/11/warren-lotas-nike-lawsuit-court-stop-selling-lookalikes  

President, P. (2020a, November 9). Nike v. Lotas: Nike dunk confusion?. PIPG. http://www.pennip.org/useful-arts-and-sciences/2020/11/9/nike-v-lotas-nike-dunk-confusion  

Dunne, B. (2020, December 11). Nike v. Warren Lotas: The bootleg dunks and their place in history. Complex. https://www.complex.com/sneakers/nike-warren-lotas-lawsuit-knockoff-dunks-history