MSCHF Opposes Nike's TRO Request
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Sarah BursteinMSCHF Opposes Nike's TRO Request
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Sarah BursteinCase 1:21-cv-01679-EK-PK Document 14 Filed 03/31/21 Page 1 of 3 PageID #: 228
Debevoise & Plimpton LLP Megan K. Bannigan
919 Third Avenue Partner
New York, NY 10022 [email protected]
+1 212 909 6000 +1 212 909 6127
March 31, 2021
BY ECF
The Honorable Eric Komitee
United States District Court for the Eastern District of New York
225 Cadman Plaza East
Brooklyn, NY 11201
Nike, Inc. v. MSCHF Product Studio, Inc.
Case No. 1:21-cv-21-01679-EK-PK
Dear Judge Komitee:
We represent defendant MSCHF Product Studio, Inc. (“MSCHF”) in the above-
captioned matter. We write in connection with the hearing Your Honor has set for
9 am tomorrow, and to oppose Nike’s application for a temporary restraining order.
As detailed below, and as we will discuss with Your Honor tomorrow, there is no
threat of imminent or immediate irreparable harm warranting the issuance of a TRO.
Further, there are substantial questions going to the merits of plaintiff’s claims. As
such, MSCHF respectfully requests that the Court deny Nike’s application for a TRO
and set a briefing schedule on Nike’s motion for a preliminary injunction.
MSCHF is a Brooklyn-based art collective, described by The New York Times as
Banksy for the Internet, that was founded to push the boundaries of today’s culture
through story-telling and performance art. See
generally https://www.nytimes.com/2020/01/
30/style/MSCHF-sneakers-culture.html. As
part of its mission, it issued 666 pairs of the
limited collection “Satan Shoes” that are at
issue in this litigation. These shoes were
produced in collaboration with rapper Lil Nas
X (shown at right with the Satan Shoe).
These are not typical sneakers, but rather
individually-numbered works of art that were
sold to collectors for $1,018 each (much as
Banksy and other artists sell numbered,
limited-edition prints of their artistic works).
The Satan Shoes, which were customized
using authentic Nike Air Max sneakers, were
a follow-on art project related to the limited-
edition Jesus Shoes (shown at right), created from the same model of Nike Air Max
sneakers, that MSCHF introduced in October 2019. Those Jesus Shoes also are
Case 1:21-cv-01679-EK-PK Document 14 Filed 03/31/21 Page 2 of 3 PageID #: 229
The Honorable Eric Komitee 2 March 31, 2021
works of art, and in fact museums have arranged for display of these works in their
collections.
MSCHF respectfully requests that the Court deny Nike’s application for a temporary
restraining order for two reasons.
First, there is no imminent or immediate threat of irreparable harm related to the
Satan Shoes. That is because, contrary to Nike’s speculation in its papers, all but one
pair of the shoes already have been sold and shipped. MSCHF has no intention of
issuing additional Satan Shoes. It had been planning a giveaway of the last pair of
Satan Shoes on Friday, April 2, but has suspended that plan pending resolution of
Nike’s application.
Second, contrary to Nike’s arguments, Nike cannot show a likelihood of success on
the merits. MSCHF has made clear that the Satan Shoes are a collaboration with Lil
Nas X, not with Nike, and Nike presents no evidence whatsoever of any confusion by
purchasers. Such confusion is highly unlikely given the sophistication of the
purchasers, who had to obtain the shoes through MSCHF’s proprietary app, and who
are well aware of MSCHF’s approach to art, including its customization of consumer
products as part of its expressive message. To the extent observers have mistaken the
art project as being associated with Nike and have criticized Nike for its sacrilege,
see Nike Br. at 2–3, that is exactly the reaction that resulted when MSCHF
introduced the companion Jesus Shoes nearly 18 months ago (see examples below),
and Nike never raised any objections whatsoever to the first stage of this project.
(Nike also never contacted MSCHF prior to filing this suit to inquire about MSCHF
intentions with this artistic project.)
More significantly, these shoes are works of art that are intended to criticize the ever-
popular “collab culture,” where brands like Nike collaborate with anyone willing, to
make a splash. They also are intended to criticize social norms that discriminate,
Case 1:21-cv-01679-EK-PK Document 14 Filed 03/31/21 Page 3 of 3 PageID #: 230
The Honorable Eric Komitee 3 March 31, 2021
such as religious norms that marginalize certain groups of people. Lil Nas X, a gay
Black artist who has publicly discussed how he spent his teenage years hating
himself because of what Christianity taught about homosexuality, and whose most
recent video prominently features Satan, is thus the perfect collaborator for these
shoes, which are also portrayed as a collaboration with Satan himself (a comment on
the extreme collab culture). See generally https://www.nytimes.com/2021/03/30/
arts/music/lil-nas-x-twitter-sneakers-outrage.html. Given the artistic expression that
is at the core of the Satan Shoes project, Nike cannot prevail on its trademark claims.
The First Amendment protects this expression, and bars any relief based on claims of
trademark infringement or dilution. See generally Cliffs Notes, Inc. v. Bantam
Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490, 494–95 (2d Cir. 1989) (works of
artistic expression that include trademarks are protected under the First Amendment
so long as the use is (1) artistically relevant and (2) not explicitly misleading); VIP
Prods. LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1176 (9th Cir. 2020)
(works that contain some protected expression are “noncommercial” and therefore
nonactionable under the dilution act); Mattel Inc. v. Walking Mt. Prods., 353 F.3d
792, 806–12 (9th Cir. 2003) (photographs of Barbie dolls that offered critique of the
objectification of women was artistic, protected speech that outweighed Mattel’s
right in its Barbie trademarks and trade dress).
For these reasons, and as we will explain in greater detail at tomorrow’s hearing,
there simply is no emergency that justifies the extraordinary issuance of a TRO.
Rather, MSCHF respectfully requests that the Court deny the TRO and set a briefing
and hearing schedule on Nike’s motion for a preliminary inunction. Allowing
MSCHF the opportunity to brief these important issues will help ensure that the
Court has a complete record on which to assess Nike’s motion. Such a process will
cause no prejudice to Nike because there will be no further distribution of Satan
Shoes, pending the Court’s ruling on the preliminary injunction motion.
Respectfully submitted,
/s/ Megan K. Bannigan
Megan K. Bannigan
cc (via ECF): Kyle A. Schneider, Esq.
Christopher J. Renk, Esq.
Rhonda R. Trotter, Esq.
Bridgette Boyd, Esq.
Counsel to Plaintiff Nike, Inc.
