Nike slaps StockX with 'unauthorised' trademark use lawsuit in metaverse

Nike has sued Detroit- based reseller StockX on 3 February for selling NFTs with unauthorised images of Nike shoes. The brand said that consumers are already questioning whether Nike authorised StockX to sell its infringing NFT products. It added that the Vault NFTs’ "inflated prices and murky terms of purchase and ownership, have already led to public criticism of StockX and allegations that the Vault NFTs are a scam”. Nike said the StockX’s misappropriation of Nike’s famous trademarks and goodwill to buoy its entry into the lucrative NFT and digital collectible market deprives Nike of its exclusive right to use its marks in connection with this new commercial medium.

As such, the brand claims that the “unsanctioned products are likely to confuse consumers, create a false association between those products and Nike, and dilute Nike’s famous trademarks". The brand added that despite StockX’s prominent use of Nike’s trademarks in connection with the Vault NFTs, Nike has no control over the quality of the Vault NFTs whatsoever.  The lawsuit outlined that Nike has no say in how many Vault NFTs bearing its trademarks are released, where the Vault NFTs are released and traded, when the Vault NFTs are released, how the Vault NFTs are released, traded, or redeemed, and at what price the Vault NFTs are sold.

MARKETING-INTERACTIVE has reached out to Nike and StockX for a statement.

The lawsuit comes shortly after Nike’s widely publicised acquisition of RTFKT, a digital art and collectible creative studio in December 2021. Nike added that the acquisition was its demonstration into NFT technology and services, but Nike has been using its famous trademarks in connection with virtual goods and digital applications for years.  “Given Nike’s longstanding use in this space, StockX’s unauthorised and unapproved branding of Vault NFTs with Nike trademarks is all the more likely to confuse consumers, create a false association between the parties, jeopardise the capacity of Nike’s famous marks to identify its own digital goods in the metaverse and beyond,” said the lawsuit.

While the terms of the deal with RTFKT were not disclosed, Nike president and CEO John Donahoe said in a statement that the acquisition would accelerate the brand's digital transformation and allow it to serve athletes and creators at the intersection of sport, creativity, gaming and culture.

Last month, luxury group Hermès filed a trademark lawsuit against US digital creator Mason Rothschild and his digital art project, MetaBirkins. According to multiple media reports including The Guardian, the luxury brand was suing Rothschild for creating virtual versions inspired by its Birkin bags.

As seen on Rothschild's Instagram, he created digital art which was then sold as NFTs and the artworks showed furry Birkin bags which he named "MetaBirkins". Citing the complaint, The Guardian said Hermès has accused Rothschild of "trying to profit from its trademarks", adding that the MetaBirkins brand "simply rips off Hermès' famous Birkin trademark by adding the generic prefix 'meta' to the famous trademark Birkin".

Meanwhile, Rothschild said in an Instagram statement that Hermès' claims were "groundless" and he looks forward to defeating those claims in court and helping to set a precedent. 

(Photo courtesy: 123RF) 

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