Did you know that there was a Supreme Court decision on the Nike AIr Force 1 that impacted why Nike and brands go after sneaker look alikes? Here is what happened (video with some more details on the way).
In 2009 Nike sued Already LLC, who does business as Yums, claiming that Yums’ “Soulja Boys” and “Sugars” sneakers infringed and diluted Nike’s “Air Force 1” trade dress. Yums did what most do and denied the allegations and filed a counterclaim alleging that the Air Force 1 trade dress registration was invalid.
Months later Nike decided did not want to risk the potential of getting a ruling against the AF1 silhouette’s trade dress and wanted to end the lawsuit they started. Nike made a rather broad agreement with Yums that said they would not sue Yums in the future for trademark infringement or dilution based on any of Yums current sneakers designs or any colorable imitations after. Nike then asked the court to dismiss the case because they settled and there was no longer any “case or controversy” for the court to decide (aka no jurisdiction). The court agreed with Nike and dismissed Nike’s original infringement claims AND Yums counterclaim against the invalidity of the AF1 trade dress.
Yums did not like that overall decision and wanted the court to rule on the AF1 trade dress so they appealed. The appeals court agreed with the ruling and the case ultimately went all the way to the Supreme Court of the United States of America in 2012. The Supreme Court ruled for Nike in 2013, stating that the broad agreement not to sue Yums made the counterclaim to invalidate the AF1 trade dress moot and there was no issue.
The Supreme Court’s decision here essentially allowed Nike to drop its lawsuit without having to defend counterclaims that challenged their intellectual property rights in the AF1. This decision had a significant impact on intellectual property litigation for Nike and other brands, and highlights the risks associated with commencing infringement actions against other brands. Nike and others have decided that the risks associated with going after brands might not be worth the risk of losing the trademark or trade dress.
*Remember trademarks can last forever, while patents can only last 14-20 years. The patent for the AF1 ran out (think BAPE).
The case mentioned herein is Already, LLC, dba Yums, v. Nike Inc (January 9, 2013).