When Does Customisation Cross The Line – Nike Sues Customization Artist
BACKGROUND
Dominic Ciambrone, known as “The Shoe Surgeon” is a well-known name in the ‘sneaker’ industry, having collaborated with sports brands such as Nike and Adidas, as well as luxury brands including Gucci. Ciambrone’s custom creations are also popular with elite athletes, and celebrities including Drake, Justin Bieber and Jake Paul.
NIKE’S ACTION
Nike is pursuing Ciambrone, two “Shoe Surgeon” entities, and his business partner Dallas Imbimbo for;
“wilful counterfeiting of over 30 Nike trademarks, totalling over $60 million dollars, or the profits Defendants generated from counterfeiting, trebled, along with attorneys’ fees”.
Nike has stated that it has attempted, on multiple occasions, to resolve the matter with Ciambrone in order to avoid legal action.
NIKE’S COMPLAINT
Although Ciambrone and Nike have collaborated in the past, including a bespoke gold and diamond encrusted pair of shoes for basketball superstar LeBron James, Nike has now taken issue with Ciambrone’s attempt “to build an entire multifaceted retail empire” by using Nike’s trade mark rights.
Among Nike’s complaints is the unauthorised use of Nike trade marks in Ciambrone’s collaborations with brands such as Jack Daniels and eBay, as well as custom shoes that display the Nike swoosh logo (without Nike’s consent) along with logos and materials that are clearly identifiable as other well-known brands.
Of particular concern to Nike appears to be Ciambrone’s SRGN Academy, which offers classes, tools and content to help people create their own versions of Nike products, with Nike stating that Ciambrone’s academy is teaching a course in “Nike counterfeiting 101”.
Nike have not taken issue with Ciambrone’s “limited, one-of-one customization” creations for celebrities and athletes, but has challenged Ciambrone’s extensive activities which it described as an “Illicit Nike Empire”.
With Nike having built a worldwide reputation for the design, quality and performance of its products, including its footwear, it is understandable that the sportswear brand wants to protect this reputation. It should come as no surprise that Nike has taken action against a third party making what it considers to be unauthorised use of its trade marks, altering and reselling Nike products (with Nike having no control over the quality of such goods), and the creation of unauthorised products bearing the Nike trade marks.
POSSIBLE DEFENCE
Ciambrone may choose to rely on what is known in the US as the first sale doctrine defence, which allows someone who has legitimately purchased a genuine product, to resell that product without infringing trade mark rights. However, such a defence may not hold up where products have been created from scratch, or materially altered, as Nike’s complaint claims.
This is similar to what the case may be in the UK, where trade mark rights cannot be used to stop the reselling of genuine goods that have been placed on the market by/with the consent of the trade mark owner (exhaustion of rights). This, however, does not prevent a trade mark owner from exercising its rights where the condition or quality of the goods have been altered after they have been put on the market.
It will be interesting to see how this case plays out, and what the future holds for Ciambrone and the associated “Shoe Surgeon” businesses.
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