The battle between Nike and Warren Lotas

UPDATE 14/12/20 - The latest chapter in the legal saga that has seen the Nike giant stand up to designer Warren Lotas in recent months is destined to remain shrouded in mystery: the lawsuit filed by the Beaverton brand to the designer would finally seem to have ended with an unspecified private agreement between the two parties. However, lotas is still prohibited from selling products that are similar to those of Nike - whose trademarks have been judged valid.

Lotas remains confident about the possibility of marketing at least the Reaper Sneaker, it is not known with what modifications. In a recent Instagram post, she announced the imminent publication of a video explaining the process of creating the shoe.

***

To see the most recent evolutions of the lawsuit between Nike and designer Warren Lotas one might wonder what a cult horror film released 40 years ago has to do with what will perhaps go to the news as the legal battle of the year after that, happily ended, of LVMH and Tiffany. Yet it all starts from the fortieth anniversary of Jason Vorhees' debut on the screens on Friday the 13th – a anniversary that Lotas decided to celebrate with a limited edition of just two thousand pairs of custom-made sneakers. Unique, crucial problem: the shoes are an almost exact replica of a pair of Nike SB Dunks inspired by Jason Vorhees and never released to the public; the second pink and brown colorway created was a copy of the Stussy x Nike SB Dunk "Cherry". 

For a month the waters remained calm, then Lotas decided to collaborate on a new version of the silhouette together with Jeff Staples of Staples Pidgeon – a remake of the legendary Nike SB Dunk Low Pro "NYC Pigeon" presented with a surprise drop. Redoing an iconic sneaker like Staples's, and on top of Staples, touched an uncovered nerve: some voices in the audience rose to call the sneaker a knock-off and, in the first weeks of September, Nike sued Lotas before the Los Angeles Court for plagiarism and deceptive advertising. According to the documents:

«Warren Lotas intentionally created the confusion, and he is attempting to capitalize on it, by, among other things, using Nike’s registered Dunk word mark, using Nike’s registered Dunk trade dress, and using a mark that is confusingly similar to Nike’s famous Swoosh design to promote and sell his fakes.».

In compensation, Nike asked for three times the revenue that the sale of the sneaker had brought to Lotas, as well as damages and total coverage of legal fees, ordering it to withdraw any merchandise items that contained the misleading symbol – including flyers, digital files and business cards. I mean, a complete clean slate.

Instead of relegation, Lotas planted his foot on the ground more forcefully and assured his customers that their orders would arrive on time. Faced with this indirect but open challenge, a few weeks after the opening of the case, Nike filed a preliminary injunction in court aimed at stopping all pre-orders. The motivation for the injunction had now become Nike's goodwill, i.e. the imbued value of its trademarks and, in a broad sense, the reputation of the entire brand. The filing reads: «[Warren Lotas] must be stopped from fulfilling the pre-orders for the infringing sneakers during the pendency of this action.» Lotas was given 30 days to comply, but only seven passed and answered for the rhymes to Nike: he created the Reaper Sneaker "Chainsaw", always along the lines of the Nike SB Dunk, without releasing them to the public but sending them to customers who had not received the original sneakers. The motivation was explained by Lotas himself:

«We believe they are making unnecessary demands in order to intimidate other small businesses from exercising their creative freedom in the future.».

Of course, Nike's response did not wait and a new injunction arrived, pointing out that even the terms of the first had not yet been respected. In addition, the Reaper Sneaker was still too similar to the trade dress registered by Nike and had never been presented to the brand for approval. The whole matter was postponed until November 19 – the day the case was brought before a judge. The day after the second injunction there was a twist: Warren Lotas counter-sued Nike by claiming that the trademarks for Dunk, originally registered in 1985, could not be considered valid. The argument follows this logic: the trade dress is a type of intellectual property related to the appearance of a certain product, but some of the elements of the Lotas sneaker that Nike accuses of plagiarism, such as the seams and panels of the upper, are structural elements of the shoe, which therefore do not fall within the scope of intellectual property. Jeff Staples arrived shortly afterwards to support Lotas, pointing out in an interview how A Bathing Ape's BAPE STA was born as an imitation of Air Force 1, explaining the difference between plagiarists and customizers and, as a final lunge, calling Nike's Jeff Knight the "OG bootlegger" for copying Nike Cortez's design from Onitsuka Tiger.

On Sunday, November 22nd came what for now seems to be the terminus of the saga: Judge Mark Scarsi has proved Nike right and validated his injunction to Lotas to stop pre-orders and, essentially, to stop all his activities (marketing and non-marketing) related to the sneaker. The judge also ordered not to market the Reaper Sneaker – another potential source of undue profit. At the same time, the judge denied Nike's request to withhold all pre-order money as collateral and then compensate Lotas' customers later. Curiously, the basis for Nike's legal victory was the world of resell: the fact that on eBay Lotas sneakers were defined as Nike and with the acronym SB was the definitive proof to prove that sneakers were a misleading product. Warren Lotas has not yet made any statements in response to the ruling.