Nike Lawsuit Series - Nike’s legal battle with brands and designers BAPE, and Kool KIY/Omi
‘’Hands off my brand!'' is just among the common phrases Nike executives have adopted over the past few years. Recently embroiled in three legal crackdowns on counterfeit designers, one would wonder just how commonly Nike is involved in trademark infringement cases. Nike is no stranger to court cases, especially ones related to patents and trademarks.
Over the past decade, Nike has been involved in several court lawsuits concerning the trademark infringements and copyright of its sneaker designs. Not surprisingly, numerous companies turn to courts to safeguard their trademarks from counterfeiting, competitors' false claims, or imitation. Who are Nike’s latest victims? One would wonder. Well, after lighting comes thunder- this time round with the slamming sound coming from the Southern District of New York's gavel, as the footwear giants filed a trademark infringement lawsuit against three brands: BAPE, Omi, and Kool Kiy.
Why hasn’t Nike sued Bape? For years, this question lingered, popping up in debates regarding intellectual property ownership in the shoe industry and as a barricade used by designers who received lawsuits from Nike for counterfeiting its most prominent silhouettes. Based on court filings by Reuters, the case reflects what Nike executives see as nearly twenty years of tension between the two enterprises, which began when the Japanese fashion brand A Bathing Ape, commonly known as Bape, first sold its prominent candy-colored footwear in the U.S. in 2005 (Blake, 2023).
According to Blake (2023), filling their case in Manhattan federal court, Nike is looking to end BAPE's manufacture and sale of their Sk8s, Bapestas, and other designs ripping off the Nike Dunks, Nike Air Force 1, and more. Nike holds that BAPE's sneaker sales were perceived as ''sporadic'' when they were first launched on the market.
What is baffling is that since BAPE began selling the Bapesta shoe, which is clearly a
derivative of Nike's Air Force 1, Nike never took any legal action against them. A little over two decades after Bapesta was first launched, Brendan (2023) documents, Nike files a formal complaint lawsuit against Bathing Ape for counterfeiting. So, what changed? Why now? As for what changed, we are unable to clearly state. But as for why it took them more than 20 years to file a court case against Bathing Ape, Nike postulated in 2009; they had a meeting with the company to discuss designs, which saw BAPE closing a couple of its stores in the U.S. and reducing its presence in the United States market. ''However, the company's copying is and always has been unacceptable to us,'' Nike's suit reads. ‘’And because their infringements have recently expanded to become a great danger to our rights, Nike must now take action.'' (Brendan, 2023). Nike Contents that BAPE's sales could not have been more significant over the previous years.
However, circumstances altered in 2021, as the company started to ''drastically increase the scope and volume of its infringement, quickly expanding its physical presence in the United States (establishing new brick-and-mortar stores in Miami, Los Angeles, and New York) and launching various versions of the COURT STA and SK8 STA all which were copies of iconic Nike designs. The company illustrates the abundant similarities between Bathing Apes' designed sneakers and their trademarked silhouettes in a graphic chart. The visual displays the comparisons between BAPE's designs, such as the Court Sta, SK8 Sta, and the Bape Sta, and their corresponding Jordan 1, Dunk Low, and the Air force 1, respectively.
According to Marc (2023), Nike also contends that the Japanese organization ''refused'' to end their infringements when they were amicably asked. In addition, as observed from the picture above, the Oregon-based footwear juggernaut claimed that BAPE’s counterfeit designs were not only perplexing but also baffling to potential customers, alleging that ''secondary-market sellers'' referred to Bathing Ape's kicks as ''Dunks'' or ''Air Force 1s''. with this case, Nike hopes Bathing Ape will stop the production of copycat sneaker design and pay a requested, yet the unnamed sum of money for the harm caused throughout the sales. Switching gears, BAPE isn’t and is likely not the only company to be sued by Nike.
As posited by Riley (2023), Nike recently filed another trademark infringement case against two famous sneaker designers as well as their manufacturers. Are the two cases similar? And if so, to what extent? The documents filed on the 30th of November, 2022, in federal court in New York allege that designer Bill Omar Carrasquillo, alias Omi and designers David Weeks and Nickson Arvinger of By Kiy LLC, aka Kool Kiy, have been counterfeiting Dunk and Jordan 1 designs for years.
Also aiming for Wandering Planet- the China-based manufacturer, Nike claims that they acted as behind-the-scenes participants that facilitated the infringement of the two designers. ''Products from Wandering Planet aren't genuine Nike goods,'' the lawsuit states. ‘’Nike didn’t inspect or manufacture the infringing goods or any part of the infringing goods, and it didn’t permit Wandering Planet to sell, distribute, promote or make the infringing products.'' (Riley, 2023). Nike points to the fact that they reached out to the designers about the infringement, but unfortunately, they could not find a solution. They claim that the violation was and continues to be out of free will and that both Omi and Kool Kiy have kept infringing on the trademark even after being contacted by Nike.
"Nike can't and refuses to permit bad actors like the defendants to confuse customers by creating a business on the back of one of our most prominent trademarks, undermining the value of such trademarks and the messages they spread. Therefore, Nike files this lawsuit to immediately end bad actors such as the defendants from selling, distributing, sourcing, and making knockoffs of Nike's footwear and illegally utilizing Nike's most prominent designs'',
the plaintiff states.
In their court documents Cheyenne, (2022), postulates that Nike attached tweets referring to the similarities of the designs and even accusing Omi and Kool Kiy of stealing the structure in case to show the prevailing confusion among consumers. One user tweeted'' (Kiy is) biting off Jordan 1's,'' while another posted ''that Kool Kiy dude has a good scam going.'' Furthermore, to cement that already stated confusion in the market, Nike also documents side-by-side comparison pictures between Omi and Kiy’s designs and actual Nike products. Below is an example of such images:
So, what did Kool Kiy have to say upon notification of the lawsuit? According to Shanique (2022), in response to the case, Kool Kiy, via Instagram, writes: “Woke Up This Morning to A Lawsuit from The Mega Giant Corporation That I Supported My Whole Life. The Fact That They Suing a Young Black Man, Who Started Out Exactly How They Did, Is Kinda Crazy to Me ... Ironic How They Tell Us To “Just Do It” … KIY READY THO”
Omi, on the other hand, is yet to share his thoughts on the lawsuit. We hope they get to resolve this conflict as soon as possible. What are your thoughts? References Marc, G. (2023). Nike Hits BAPE With Lawsuit Over Alleged Copycat Designs. [online] ESPN.com. Available at: https://www.vibe.com/news/business/nike-bape-lawsuit-copycat-designs-1234730335/ Blake B. (2023, Jan 26). Nike lawsuit says fashion brand BAPE copied famous sneaker designs. [online] Reuter.com. Available at: https://www.reuters.com/legal/litigation/nike-lawsuit-says-fashion-brand-bape-copied-famous-sneaker-designs-2023-01-25/ Brendan, D. (2023). Nike Suing Bape Is 20 years in the Making. [online] Jan 28, Reuter.com. Available at: https://www.complex.com/sneakers/nike-bape-trademark-lawsuit-explained
Riley, J. (2023). Nike Sues Designers Kool Kiy & Omi for Trademark Infringement. (Online) Dec, 01. Complex.com. Available at https://www.complex.com/sneakers/nike-sues-designers-kool-kiy-omi-trademark-infringement Cheyenne, F. (2022). Nike Strikes Down Kool Kiy & Omi with a Trademark Infringement Lawsuit. (Online) Dec, 2. Available at: https://www.nicekicks.com/nike-kool-kiy-omi-wandering-plant-trademark-infringement/ Shanique, Y. (2022). Kool Kiy Responds To Nike Lawsuit- ‘They Suing A Young Black Man Who Started Out Exactly How They Did’. (online) Dec, 2. Available at https://afrotech.com/nike-files-trademark-infringement-lawsuit-against-sneaker-designers