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This case was last updated from PACER on 05/28/2021 at 07:46:15 (UTC).

Nike, Inc. v. MSCHF Product Studio, Inc.

Case Summary

On March 29, 2021, Nike, Inc. (“Nike” or “Plaintiff”), represented by Kyle Aaron Brodkin Schneider of Arnold & Porter Kaye Scholer LLP, filed an intellectual property lawsuit against MSCHF Product Studio, Inc. (“MSCHF” or “Defendant”), seeking statutory, compensatory and punitive damages with increased profits pursuant to 15 U.S.C. § 1117 for alleged false designation of origin, unfair competition, trademark dilution and trademark infringement. This case was filed in U.S. District Court in the Eastern District of New York with Judge Peggy Kuo and Judge Eric R. Komitee presiding.

In its complaint, the Plaintiff alleges that, “MSCHF is currently taking orders for shoes it refers to as Satan Shoes, which are customized Nike Air Max 97 shoes that MSCHF has materially altered to prominently feature a satanic theme. This was done without Nike’s approval or authorization, and Nike is in no way connected with this project. The material alterations include at least referring to the shoe as the Satan Shoe, adding red ink and human blood to the midsole, adding red embroidered satanic- themed detailing, adding a bronze pentagram to the laces, and adding a new sock liner”.

The Plaintiff further alleged that, “Nike has not and does not approve or authorize MSCHF’s customized Satan Shoes. Moreover, MSCHF and its unauthorized Satan Shoes are likely to cause confusion and dilution and create an erroneous association between MSCHF’s products and Nike. In fact, there is already evidence of significant confusion and dilution occurring in the marketplace, including calls to boycott Nike in response to the launch of MSCHF’s Satan Shoes based on the mistaken belief that Nike has authorized or approved this product. MSCHF has attempted to capitalize on Nike’s valuable reputation and customer goodwill by using the Nike Asserted Marks and/or confusingly similar marks in a manner that is likely to cause consumers and potential customers to believe that MSCHF’s Satan Shoes are associated with Nike, when they are not. MSCHF’s acts complained of herein have caused damage to Nike in an amount to be determined at trial, and such damages will continue to increase unless MSCHF is preliminarily and permanently enjoined from their wrongful acts”.

There are four claims for relief laid down by the plaintiff. The first claim is for the trademark infringement in violation of 15 U.S.C. § 1114 because it is likely to confuse, mislead, or deceive customers, purchasers, and members of the general public as to the origin, source, sponsorship, or affiliation of MSCHF’s Satan Shoes with Nike’s products. The second claim is for false designation of origin / unfair competition in violation of 15 U.S.C § 1125(a), the third and fourth claims are for trademark dilution in violation of 15 U.S.C. § 1125(c) and common law trademark infringement and unfair competition respectively.

In its prayer for relief, the plaintiff has requested the court to pronounce a judgment and order that MSCHF has willfully (A) infringed Nike’s Asserted Marks in violation of 15 U.S.C. §1114, (B) used false designations of origin in violation of 15 U.S.C § 1125(a), (C) diluted at least the Nike Asserted Marks in violation of 15 U.S.C. § 1125(c), and (D) violated Nike’s common law rights in Nike’s Asserted Marks, an order that Nike is the exclusive owner of the Nike Asserted Marks and that such marks are valid and protectable, an order granting an award of punitive, statutory and compensatory damages with increased profits suffered by Nike according to proof at the time of trial.

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Case Details Parties Documents Dockets

 

Case Details

  • Case Number:

    1:21-CV-01679

  • Filing Date:

    03/29/2021

  • Case Status:

    Disposed - Other Disposed

  • Case Type:

    Intellectual Property - Trademark

  • Court:

    U.S. District Courts

  • Courthouse:

    New York Eastern District

Judge Details

Referral Judge

Peggy Kuo

Presiding Judge

Eric R. Komitee

 

Party Details

Plaintiff

Nike, Inc.

Defendant

MSCHF Product Studio, Inc.

Attorney/Law Firm Details

Plaintiff Attorneys

Kyle Aaron Brodkin Schneider

Attorney at Arnold & Porter Kaye Scholer LLP

250 West 55Th Street

New York, NY 10019

Rhonda R. Trotter

Attorney at Arnold & Porter Kaye Scholer LLP

777 S. Figueroa Street, Suite 4400

Los Angeles, CA 90017

Christopher J. Renk

Attorney at Arnold & Porter Kaye Scholer LLP

70 West Madison Street, Ste 4200

Chicago, IL 60602-4231

Michael J. Harris

Attorney at Arnold & Porter

70 West Madison Street, Suite 4200

Chicago, IL 60602

Defendant Attorneys

David H. Bernstein

Attorney at Debevoise & Plimpton

919 Third Avenue

New York, NY 10022

Megan K. Bannigan

Attorney at Debevoise & Plimpton LLP

919 Third Avenue

New York, NY 10022

 

Court Documents

22 #1

Electronic Order Dismissing Case

#22

(#22) Notice of Report on the Filing or Determination of an Action or appeal Regarding a Copyright. (Attachments: #1 Electronic Order Dismissing Case) (Hong, Loan) (Entered: 04/15/2021)

#21

(#21) NOTICE of Voluntary Dismissal by Nike, Inc. with Prejudice (Harris, Michael) (Entered: 04/09/2021)

20 #2

Certificate of Good Standing California

20 #1

Affidavit in Support

#20

(#20) MOTION to Appear Pro Hac Vice Filing fee $ 150, receipt number ANYEDC-14347741. by Nike, Inc.. (Attachments: #1 Affidavit in Support, #2 Certificate of Good Standing California) (Trotter, Rhonda) (Entered: 04/06/2021)

#19

(#19) MOTION for Extension of Time to File Response/Reply as to #17 Show Cause Hearing, #18 Order,, /Stipulation and Proposed Order modifying schedule on preliminary injunction motion by MSCHF Product Studio, Inc.. (Bannigan, Megan) (Entered: 04/03/2021)

#18

(#18) ORDER re #7 Unsigned Order to Show Cause, filed by Nike, Inc. Plaintiff's motion for a temporary restraining order is granted. Defendant shall appear before the Court on April 14, 2021 at 3 p.m. to show cause why a preliminary injunction should not be issued. Defendant shall file opposing papers by April 8, 2021. Plaintiff shall file reply papers by April 12, 2021. The Court will post information on how to access the preliminary-injunction hearing on the public docket. Ordered by Judge Eric R. Komitee on 4/1/2021. (Richards, David) (Entered: 04/01/2021)

#17

(#17) Minute Entry for proceedings held before Judge Eric R. Komitee: Argument held on 4/1/2021. Case called. Arguments made. For the reasons stated on the record, the Court grants Plaintiff's motion for a temporary restraining order. (Court Reporter Victoria Torres-Butler.) (Richards, David) (Entered: 04/01/2021)

#6

(#6) SCHEDULING ORDER: A Telephone Initial Conference will be held in this case on June 29, 2021 at 10:30 a.m. before Peggy Kuo, United States Magistrate Judge. All counsel are required to attend. The parties are directed to call toll free (877) 336-1274 and input the Access Code 1453850 at the time of the Conference. No additional security code is needed. Once all parties are on the line, the call will be connected. (The parties are reminded that, pursuant to Local Civil Rule 1.8, they may not independently record any court proceedings. A transcript of the proceedings may be ordered from the Clerk's Office.)Counsel are directed to the annexed Initial Conference Order for instructions. By June 24, 2021, the parties must file a joint and completed copy of the Proposed Discovery Plan, a PDF version of which may be found at: # https://img.nyed.uscourts.gov/files/forms/PK-discovplan.pdf Any request for adjournment of this or any other conference must be made in writing on notice to opposing parties, and must disclose whether or not all parties consent. No request for adjournment will be considered unless made at least two (2) business days before the scheduled conference, except in the event of an emergency. Counsel with knowledge and authority must be present. Per diem counsel may not appear without prior permission of the Court. Plaintiff's counsel is directed to ensure that Defendant is aware of this conference. Ordered by Magistrate Judge Peggy Kuo on 3/29/2021. (O'Neil-Berven, Ryan) (Entered: 03/29/2021)

5 #1

complaint

#5

(#5) Notice of Report on the filing of an action regarding a Patent or Trademark. (Attachments: #1 complaint) (Rocco, Christine) (Entered: 03/29/2021)

#4

(#9) CERTIFICATE OF SERVICE by Nike, Inc. re #8 Summons Returned Executed, #1 Complaint, #4 Summons Issued, #7 Unsigned Order to Show Cause,, [Served via E-mail on March 30, 2021] (Schneider, Kyle) (Entered: 03/30/2021)

#3

(#3) This attorney case opening filing has been checked for quality control. See the attachment for corrections that were made, if any. (Bowens, Priscilla) (Entered: 03/29/2021)

#2

(#2) In accordance with Rule 73 of the Federal Rules of Civil Procedure and Local Rule 73.1, the parties are notified that if all parties consent a United States magistrate judge of this court is available to conduct all proceedings in this civil action including a (jury or nonjury) trial and to order the entry of a final judgment. Attached to the Notice is a blank copy of the consent form that should be filled out, signed and filed electronically only if all parties wish to consent. The form may also be accessed at the following link: #http://www.uscourts.gov/uscourts/FormsAndFees/Forms/AO085.pdf. You may withhold your consent without adverse substantive consequences. Do NOT return or file the consent unless all parties have signed the consent. (Bowens, Priscilla) (Entered: 03/29/2021)

1 #2

Proposed Summons

1 #1

Civil Cover Sheet

#1

(#9) CERTIFICATE OF SERVICE by Nike, Inc. re #8 Summons Returned Executed, #1 Complaint, #4 Summons Issued, #7 Unsigned Order to Show Cause,, [Served via E-mail on March 30, 2021] (Schneider, Kyle) (Entered: 03/30/2021)

32 More Documents Available
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Docket Entries

  • 04/15/2021
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  • Docket(#22) Notice of Report on the Filing or Determination of an Action or appeal Regarding a Copyright. (Attachments: #1 Electronic Order Dismissing Case) (Hong, Loan) (Entered: 04/15/2021)

    Read MoreRead Less
  • 04/12/2021
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  • DocketORDER DISMISSING CASE re #21 NOTICE of Voluntary Dismissal by Nike, Inc. with Prejudice -- The temporary restraining order issued on April 1, 2021, is hereby dissolved, and Nike is released from the obligation to filea bond. The Clerk of Court is respectfully directed mark this action closed. Ordered by Judge Eric R. Komitee on 4/12/2021. (Guy, Alicia) (Entered: 04/12/2021)

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  • 04/09/2021
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  • Docket(#21) NOTICE of Voluntary Dismissal by Nike, Inc. with Prejudice (Harris, Michael) (Entered: 04/09/2021)

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  • 04/07/2021
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  • DocketORDER granting #20 Motion for Leave to Appear Pro Hac Vice. Attorney Rhonda R. Trotter is permitted to appear pro hac vice on behalf of Plaintiff Nike, Inc. The attorney shall register for ECF, registration is available online at www.pacer.gov. Once registered, the attorney shall file a notice of appearance and ensure that they receive electronic notification of activity in this case. Also, the attorney shall ensure the $150 admission fee be submitted to the Clerks Office via filing the event Pro Hac Vice Filing Fee. Ordered by Magistrate Judge Peggy Kuo on 4/7/2021. (O'Neil-Berven, Ryan) (Entered: 04/07/2021)

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  • 04/06/2021
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  • Docket(#20) MOTION to Appear Pro Hac Vice Filing fee $ 150, receipt number ANYEDC-14347741. by Nike, Inc.. (Attachments: #1 Affidavit in Support, #2 Certificate of Good Standing California) (Trotter, Rhonda) (Entered: 04/06/2021)

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  • 04/05/2021
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  • DocketORDER: Pursuant to the parties' request #19 , the preliminary-injunction hearing is adjourned to April 23, 2021 at 1 p.m. Defendant shall file opposing papers by April 15, 2021. Plaintiff shall file reply papers, if it chooses, by April 20, 2021. On consent of the parties, the temporary restraining order dated April 1, 2021 shall remain in effect through April 23, 2021. See Fed. R. Civ. P. 65(b)(2). The Court will post information on how to access the preliminary-injunction hearing on the public docket prior to the rescheduled hearing. Ordered by Judge Eric R. Komitee on 4/5/2021. (Guy, Alicia) (Entered: 04/05/2021)

    Read MoreRead Less
  • 04/03/2021
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  • Docket(#19) MOTION for Extension of Time to File Response/Reply as to #17 Show Cause Hearing, #18 Order,, /Stipulation and Proposed Order modifying schedule on preliminary injunction motion by MSCHF Product Studio, Inc.. (Bannigan, Megan) (Entered: 04/03/2021)

    Read MoreRead Less
  • 04/01/2021
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  • Docket(#18) ORDER re #7 Unsigned Order to Show Cause, filed by Nike, Inc. Plaintiff's motion for a temporary restraining order is granted. Defendant shall appear before the Court on April 14, 2021 at 3 p.m. to show cause why a preliminary injunction should not be issued. Defendant shall file opposing papers by April 8, 2021. Plaintiff shall file reply papers by April 12, 2021. The Court will post information on how to access the preliminary-injunction hearing on the public docket. Ordered by Judge Eric R. Komitee on 4/1/2021. (Richards, David) (Entered: 04/01/2021)

    Read MoreRead Less
  • 04/01/2021
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  • Docket(#17) Minute Entry for proceedings held before Judge Eric R. Komitee: Argument held on 4/1/2021. Case called. Arguments made. For the reasons stated on the record, the Court grants Plaintiff's motion for a temporary restraining order. (Court Reporter Victoria Torres-Butler.) (Richards, David) (Entered: 04/01/2021)

    Read MoreRead Less
  • 04/01/2021
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  • DocketORDER granting #16 Motion for Leave to Appear Pro Hac Vice. Attorney Christopher J. Renk is permitted to appear pro hac vice on behalf of Plaintiff Nike, Inc. The attorney shall register for ECF, registration is available online at www.pacer.gov. Once registered, the attorney shall file a notice of appearance and ensure that he receives electronic notification of activity in this case. Also, the attorney shall ensure the $150 admission fee be submitted to the Clerks Office via filing the event Pro Hac Vice Filing Fee. Ordered by Magistrate Judge Peggy Kuo on 4/1/2021. (O'Neil-Berven, Ryan) (Entered: 04/01/2021)

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9 More Docket Entries
  • 03/30/2021
  • View Court Documents
  • Docket(#9) CERTIFICATE OF SERVICE by Nike, Inc. re #8 Summons Returned Executed, #1 Complaint, #4 Summons Issued, #7 Unsigned Order to Show Cause,, [Served via E-mail on March 30, 2021] (Schneider, Kyle) (Entered: 03/30/2021)

    Read MoreRead Less
  • 03/30/2021
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  • Docket(#8) SUMMONS Returned Executed by Nike, Inc.. MSCHF Product Studio, Inc. served on 3/30/2021, answer due 4/20/2021. (Schneider, Kyle) (Entered: 03/30/2021)

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  • 03/30/2021
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  • Docket(#7) Unsigned Order to Show Cause by Nike, Inc. (Attachments: #1 NIKE, INC.S MEMORANDUM OF LAW IN SUPPORT OF ITS MOTION FOR A TEMPORARY RESTRAINING ORDER & PRELIMINARY INJUNCTION, #2 Exhibit 1 - DECLARATION OF JOE PALLETT IN SUPPORT OF NIKE, INC.S MEMORANDUM OF LAW IN SUPPORT OF ITS MOTION FOR A PRELIMINARY INJUNCTION & TEMPORARY RESTRAINING ORDER, #3 Exhibit 2 - DECLARATION OF BRIDGETTE BOYD IN SUPPORT OF PLAINTIFF NIKE, INC.S MOTION FOR A TEMPORARY RESTRAINING ORDER AND PRELIMINARY INJUNCTION) (Schneider, Kyle) (Entered: 03/30/2021)

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  • 03/29/2021
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  • Docket(#6) SCHEDULING ORDER: A Telephone Initial Conference will be held in this case on June 29, 2021 at 10:30 a.m. before Peggy Kuo, United States Magistrate Judge. All counsel are required to attend. The parties are directed to call toll free (877) 336-1274 and input the Access Code 1453850 at the time of the Conference. No additional security code is needed. Once all parties are on the line, the call will be connected. (The parties are reminded that, pursuant to Local Civil Rule 1.8, they may not independently record any court proceedings. A transcript of the proceedings may be ordered from the Clerk's Office.)Counsel are directed to the annexed Initial Conference Order for instructions. By June 24, 2021, the parties must file a joint and completed copy of the Proposed Discovery Plan, a PDF version of which may be found at: # https://img.nyed.uscourts.gov/files/forms/PK-discovplan.pdf Any request for adjournment of this or any other conference must be made in writing on notice to opposing parties, and must disclose whether or not all parties consent. No request for adjournment will be considered unless made at least two (2) business days before the scheduled conference, except in the event of an emergency. Counsel with knowledge and authority must be present. Per diem counsel may not appear without prior permission of the Court. Plaintiff's counsel is directed to ensure that Defendant is aware of this conference. Ordered by Magistrate Judge Peggy Kuo on 3/29/2021. (O'Neil-Berven, Ryan) (Entered: 03/29/2021)

    Read MoreRead Less
  • 03/29/2021
  • View Court Documents
  • Docket(#5) Notice of Report on the filing of an action regarding a Patent or Trademark. (Attachments: #1 complaint) (Rocco, Christine) (Entered: 03/29/2021)

    Read MoreRead Less
  • 03/29/2021
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  • Docket(#4) Summons Issued as to MSCHF Product Studio, Inc.. (Bowens, Priscilla) (Entered: 03/29/2021)

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  • 03/29/2021
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  • Docket(#3) This attorney case opening filing has been checked for quality control. See the attachment for corrections that were made, if any. (Bowens, Priscilla) (Entered: 03/29/2021)

    Read MoreRead Less
  • 03/29/2021
  • View Court Documents
  • Docket(#2) In accordance with Rule 73 of the Federal Rules of Civil Procedure and Local Rule 73.1, the parties are notified that if all parties consent a United States magistrate judge of this court is available to conduct all proceedings in this civil action including a (jury or nonjury) trial and to order the entry of a final judgment. Attached to the Notice is a blank copy of the consent form that should be filled out, signed and filed electronically only if all parties wish to consent. The form may also be accessed at the following link: #http://www.uscourts.gov/uscourts/FormsAndFees/Forms/AO085.pdf. You may withhold your consent without adverse substantive consequences. Do NOT return or file the consent unless all parties have signed the consent. (Bowens, Priscilla) (Entered: 03/29/2021)

    Read MoreRead Less
  • 03/29/2021
  • DocketCase Assigned to Judge Eric R. Komitee and Magistrate Judge Peggy Kuo. Please download and review the Individual Practices of the assigned Judges, located on our #website. Attorneys are responsible for providing courtesy copies to judges where their Individual Practices require such. (Bowens, Priscilla) (Entered: 03/29/2021)

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  • 03/29/2021
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  • Docket(#1) COMPLAINT against MSCHF Product Studio, Inc. filing fee $ 402, receipt number ANYEDC-14320929 Was the Disclosure Statement on Civil Cover Sheet completed -YES,, filed by Nike, Inc.. (Attachments: #1 Civil Cover Sheet, #2 Proposed Summons) (Schneider, Kyle) (Entered: 03/29/2021)

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