By Virinchi Sindhwani, JD Candidate L’23
Iconic Los Angeles-based designer Warren Lotas has made a name for himself in the fashion industry. Over the past few years, Lotas has exploded onto the streetwear scene and into the wardrobe of "hypebeasts,” NBA players, and fashion icons alike. For years, Lotas has been known for his customized Nike Dunk Low-inspired sneakers, paying homage to the classic shoe while referencing famous horror movie characters, such as Jason Vorhees and Freddy Krueger.
Last month, Lotas revealed that he had teamed up with Nike collaborator Jeff Staple to release another version of the Dunk Low silhouette, this time to reinterpret the famous—and highly expensive—Nike Dunk SB Low Staple NYC Pigeon. Lotas did not receive permission from Nike before the collaboration and release.
On October 14th, 2020, Nike filed a new “trademark and anti-dilution” lawsuit against Lotas in the Central District Court of California, asserting that Nike had not authorized the reintroduction of the sneaker.
Nike has submitted claims of trademark infringement and dilution, unfair competition, and false designation of origin. The company is seeking monetary damages, as well as immediate and permanent injunctive relief to prevent the release of these sneakers, hoping to enjoin Lotas and his company from appropriating Nike in the future.
Nike stated that it “protects its iconic sneaker designs, and its intellectual property in those designs, by rooting-out bad actors that undermine the DNA of sneaker culture by promoting and selling fakes.” Nike asserted, “Warren Lotas is one those bad actors,” and is “currently promoting and selling fakes of coveted Nike Dunks,” which were first released “over 30 years ago, [and which are] now recognized as one of the most iconic and influential sneakers of all time.”
Nike went on to claim that “there is already confusion in the marketplace regarding whether they are legitimate customizations or illegal fakes,” as indicated by commentary on social media. Hardly a coincidence, such alleged confusion about the nature of the lookalike sneakers has been “intentionally created” by Warren Lotas, per Nike, which argues that Lotas “is attempting to capitalize on it.”
Nike contends that Lotas is violating federal trademark law by using Nike’s registered DUNK word mark, Nike’s registered Dunk trade dress, and a mark that is confusingly similar to Nike’s famous Swoosh design to promote and sell his shoes. According to the company, this use is “likely to confuse, mislead, or deceive customers, purchasers, and members of the general public as to the origin, source, sponsorship, or affiliation of [Lotas] or [his] infringing products with Nike or Nike’s products,” and, “is likely to cause such people to believe in error that [his] infringing products have been authorized, sponsored, approved, endorsed, or licensed by Nike or that [Warren Lotas] is in some way affiliated with Nike”.
Nike claims it has filed suit “to protect its intellectual property and to clear the confusion in the marketplace by setting the record straight—not a single component of Warren Lotas’s fake sneakers comes from an original Nike Dunk,” and more than that, “Warren Lotas’s ‘Dunk’ sneakers are not legitimate customizations, they are illegal fakes.”
On Instagram, Lotas fired back against Nike, stating, “We believe they are using this lawsuit to suffocate small brands, customizers, and artists, not just WL. Even if you hate us, you need to understand the precedent this will set for creating as the little guy.”
Nike has filed a continuation of its lawsuit, attacking a replacement shoe Lotas had offered his customers. The case remains pending.