Intellectual Property Rights - Case study on NIKE

Intellectual Property Rights Case Study on Nike

Presented By: Ankita Raj | Pooja Kushwaha | Rakhi Mukherjee | Sanchita Verma | Tripti Gupta

COPYRIGHT CASE STUDY 1 Nike is fending off copyright infringement charges from a photographer claiming that his picture of Michael Jordan dunking a basketball was the inspiration for Nike’s “Jumpman” logo that adorns its Michael Jordan branded products. Even a small percentage royalty (if Nike were to lose the case) on Nike’s estimated $2.6 billion of Jordan sneakers could be a significant sum.

Photograph of Michael Jorden dunking basketball

Jumpman logo

PATENT CASE STUDY 2 Nike alleges that rival Adidas is infringing on a Nike patent for knit shoe uppers. Nike introduced its first knit running shoe in February 2012. Adidas’ allegedly infringing knit running shoes followed in July 2012.

Adidas appears to have the upper hand on this issue (Nike’s patent has been invalidated) but Nike is appealing the ruling.

Nike knit running shoes

Adidas knit running shoes

CASE STUDY 3 Sportswear maker Nike Inc. sued Adidas-Salomon AG for patent infringement, claiming its German rival ripped off a unique footwear cushioning system named “Shox� cushioning. It is protected by at least 19 patents and is said to maximize the stability of the shoe and to improve performance. The company filed suit claiming that some of Adidas' most popular and expensive shoes infringed the Shox patents. Shox debuted in 1979, and was under development for 16 years and debuted on the feet of NBA star Vince Carter in 2000. Nike and Adidas reached a settlement agreement in that case in August 2007 and agreed to have the suit dismissed.

Nike

Adidas

CASE STUDY 4 NIKE sued a Chinese shoe manufacturer for patent infringement at the court. NIKE claimed that the Chinese footwear manufacturer Bestwinn from Fujian had infringed on at least 20 design patents by producing, using, selling and exporting sneakers identical to those holding NIKE Patent in style and appearance to the United States.

A lawsuit filed by NIKE to the U.S. Federal District Court in Nevada revealed that although NIKE had warned Xiamen Chengda of alleged patent infringement on several occasions, but the latter continued to produce and sell accused infringing shoes, including popular NIKE Flyknit series. From 2013, NIKE commenced sending e-mails to Xiamen Chengda in an attempt to request it to cease the production of infringing sneakers. Currently, NIKE claims on indemnities and petitions for a trial as well as respectfully requests the court to ban Chengda from continuously producing and selling infringing sneakers.

CASE STUDY 5 Nike Inc. has taken aim at Wal-Mart Stores Inc. in a patent suit, accusing the world's largest retailer of selling knockoffs of Nike's Shox line that infringe two patents.Nike Claims Wal-Mart Shoes Infringe 'Shox' Patents. The suit, filed Monday in the U.S. District Court, claims that shoes sold at Wal-Mart include cushioning similar to Nike's Shox shoes, which use technology based on the foam rubber bumpers used in cars to maximize the stability of the shoe and to improve performance. The Shox system is protected by 19 patents and the suit against Wal-Mart alleges infringement of two of them titled “Portion of a shoe midsole�. The suit claims that the infringement was willful and seeks a court order barring infringement, and unspecified damages.

Nike

Wal-Mart

CASE STUDY 6 In 2007, Reebok International Ltd. dismissed the claims of patent infringement brought against Nike Inc. Reebok, filed the suit in the U.S. District Court, claiming that 11 different Nike sneakers marketed under the “Free” product names violate its patent for flexible sole technology. In its suit, Reebok alleged that Nike “willfully and intentionally” developed shoes that infringed on Reebok’s patented technology. But later Reebok withdrew its claims, without prejudice, considering the fact that Nike being the world's biggest sneaker maker would suffer no major hit to its sales regardless of the outcome of the patent case Reebok.

CASE STUDY 7 Nike claims Skechers is selling shoes that infringe on eight Nike design patents issued to the company in the last two years. The "overall appearance of the designs of the Nike patents and the corresponding designs of Skechers' infringing shoes are substantially the same," Nike said in the lawsuit, which was filed in federal court in Portland. Nike wants a judge to order Skechers to stop selling the allegedly infringing products. It also seeks additional remedies, including the profits from sales of the products.

CASE STUDY 8 In 2012 Nike presented the world with a certified game changer – the Flyknit Racer. The basic idea behind the runner was to produce a shoe that had the form fitting qualities of a sock but also static structure of a sneaker. They used a flat knitting machine, creating a single piece upper with a closed selvedge all the way around and the Flywire lacing support structure woven in. Months after Nike’s Flyknit racer released adidas launched their first Primeknit shoe, the adizero Primeknit. Adidas used a particular type of Stoll flat knitting machine that had tensioning set up needle beds. the similarities Nike saw in the adizero Primeknit were and filed a lawsuit against them over the patent infringements. Eventually the case was dismissed because despite all of their efforts, adidas has been able to construct a knitted shoe with the same precise engineering and overall quality of Nike’s Flyknit.

Nike

Adidas

TRADE SECRET CASE STUDY 9 Nike has filed a separate action against Adidas related to three of Nike’s senior product designers who were hired by Adidas late last year. Nike alleges that the three designers possess unreleased product designs and marketing plans. In this case, Nike appears to have the upper hand – having secured a temporary restraining order against the designers – although the designers have filed counterclaims of their own against Nike.

TRADEMARK CASE STUDY 10 Nike won a victory at the U.S. Supreme Court barring a smaller rival from suing to void the company's trademark for its top-selling Air Force 1 sneakers.

The case began in 2009, when Nike claimed in a lawsuit that Already's Sugar and Soulja Boy shoes infringed Nike's trademark on the stitching, eyelet panels and other features of Air Force 1.

After Already countersued to void the trademark, Nike dropped its lawsuit, believing Yums was not a commercial threat, and gave a promise in the form of a covenant not to sue Already.

But Already, based in Arlington, Texas, refused to drop its own case and accused Nike of dropping the original lawsuit to deprive courts of jurisdiction.

CASE STUDY 11 Armour brought Nike to court to sue them for trademark infringement, trademark dilution, and unfair competition under the Lanham Act. Under Armour is seeking equity from Nike for allegedly infringing on Under Armour’s famous “I WILL” campaign used in various markets such as product lines consisting of apparel, footwear, gear, and accessories, also used with services, events, and marketing campaigns throughout digital media. Under Armour (UA) argues that Nike was fully aware of UA’s “I WILL” campaign that was trademarked in November 2000, but started their similar campaign anyway. Nike’s use of the “I WILL” slogan dilutes the distinctiveness of UA’s famous mark and therefore causes confusion for consumers and creates unfair competition.

This case is still open, and a decision has not yet been made.

CASE STUDY 12 In a lawsuit filed in Oregon District Court on Jan. 8, 2014, NIKE has accused Venum Fight of purposely attempting to draw associations between the two brands in an effort to sell merchandise, with charges including (but not limited to) false designation of origin and unfair competition.

NIKE claims it has used and promoted the Venom name throughout the United States in connection with athletic apparel and equipment since at least 2002, while Venum registered its trademark in 2008.

But this is not just a case of similar-sounding names, as NIKE asserts that Venom was also taking advantage of the association by selling NIKE sneakers.

CASE STUDY 13 The Nike Swoosh logo resembles the classic Newport Cigarette logo. The logo was first registered and released by the newport cigarettes which looks like an inverted swoosh or more appropriately said a “spinnaker�. Nike in this case, was late to the party. That through sheer dominance, exerts it's brand awareness to a point where no one would even think to question they were not originators of the 'Swoosh'.

The 'swoosh' is not referred to as the Newport Swoosh. NIKE logo is an amazingly simple piece of art which has got synonymous with brand unlike any other logo. No doubt this mark is a powerful brand icon, it has simplicity and boldness, but it's far from original.

CASE STUDY 14 During the 1996 Olympics in Atlanta, the Discovery Channel displayed a track shoe allegedly worn by U.S. legend Jesse Owens at the 1936 Olympics in Berlin. This shoe had on it a prominent symbol appearing identical to the Nike swoosh. Although, Nike in fact was very late in using the Swoosh as it's own brandmark, Nike has been world’s leading sports brand with the help of its trademark. This mark is a powerful brand icon, it has simplicity and boldness, but it's far from original.

INDUSTRIAL DESIGN CASE STUDY 15 Nike filed complaints against two footwear companies for infringement of IP and design. Nike said the companies, Air Max Import and Export Inc. and Romeo and Juliette, have produced shoes that are uncomfortably close in appearance to Nike shoes. Nike filed complaint saying that the defendants have willfully infringed numerous footwear related NIKE design patterns, seeking injunction against further infringements and an award of treble damages, attorneys’ fees, and costs.

Nike

Air Max Import and Export China

CASE STUDY 16

Nike filed a lawsuit outlining that the infringed designs included the Women's Flex Appeal, the Men's Flex Advantage, the Skechers' Burst, the Girl's Skech Appeal and the Boy's Flex Advantage shoes.

The 14-page lawsuit (which also included a 168-page exhibit document) was filed in Oregon's U.S. District Court. Nike detailed that Skechers' infringed upon its signature Flyknit design and Boost labels.

CASE STUDY 17 In 2014, Converse -a Nike-owned brand, sued other companies, including Skechers, for infringing upon its classic Chuck Taylor design. In 2015, a Chief Judge of the International Trade Commission validated Converse's intellectual property rights to the Chuck Taylor All Star shoes.

CASE STUDY 18 In 2000, Jiaxing Yinxing Garments Ltd. (Jiaxing Yinxing) and Zhejiang Animal Products Ltd. (Zhejiang Animal) were entrusted by Cidesport Company of Spain to manufacture clothes bearing the trademark of "NIKE" in China for export to Spain, where Cidesport Company was the proprietor of the "NIKE" mark. Nike International Ltd. (Nike) initiated an infringement lawsuit before the Shenzhen Intermediate Court based on its registered trademark right regarding "NIKE" in China. In December 2002, the Shenzhen Intermediate Court held that the acts of OEM manufacturers involved the use of the "NIKE" mark in China and the acts of the three defendants (Jiaxing Yinxing, Zhejiang Animal and Cidesport Company) infringed upon Nike's trademark right in China. The Court ordered the three defendants to cease infringing acts immediately and compensate Nike's losses for around US$50,000.

CASE STUDY 19 Nike has sued CrossFit CityPlace in West Palm Beach over CrossFit’s one-arm handstand logo.Nike opposes CrossFit CityPlace’s effort to trademark its logo because it believes the logo is too similar to “jump-man.” Nike says the CityPlace CrossFit logo will create confusion with the public, causing the sneaker maker “grave and irreparable damage.”The Nike lawsuit is astonishing to CrossFit owner Matt Brewster and his lawyers, Michael Pike and Daniel Lustig, who all say the images are not the least bit similar.

CASE STUDY 20 US based SportBrain started off 2013 by suing Nike, claiming Nike has infringed their patent US 7454002, having previously sued Adidas and Fitbit over the same patent.

US7454002 has some lengthy claims, but at the risk of oversimplification, the first of these claims covers: 1.)counting the number of steps taken by a user 2.)sending the step data to a network server via a wireless communication device providing a website 3.)comparing the step data to the same data from other users, and posting these comparison SportBrain "is informed and believes that [Nike] ships, distributes, offers for sale, sells, and/or advertises several devices, such as the Nike FuelBand, that infringe the ’002 patent,” the complaint says. "Nike has specifically intended that its customers use the accused products in such a way that infringes the ’002 patent by providing instructions to its customers on how to use the accused products in such a way that would induce infringement.”. The suits is currently pending in Texas federal court.

CASE STUDY 21 The extra little baby Swoosh within the NIKE swoop depicted above does not help the fake Swoosh from being likely to be confused with a real Swoosh. No, the change from NIKE to HIKE, especially alongside the swoop, does not prevent LIKELIHOOD OF CONFUSION either. This is prima facie trademark infringement.

This isn’t a counterfeit. It’s obviously willful infringement, and the defendant is liable for attorney's’ fees based on such flat-footed willfulness even under the old-fashioned infringement standard.

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