Earlier this year, Nike filed a lawsuit against popular L.A. based sneaker customizer Dominic Ciambrone—better known as The Shoe Surgeon—alleging trademark infringement, counterfeiting, and unauthorized customization. Now, The Shoe Surgeon is fighting back with a 100-page response, asserting fourteen affirmative defenses and multiple counterclaims against Nike—including defamation and unjust enrichment.
After Nike's initial complaint was filed, The Shoe Surgeon released a statement on social media stating “It’s a dream to collaborate with legendary brands. Especially with the brand who’s messages for us to believe in something.” The Surgeon then expressed his confusion that “Nike has chosen litigation over a discussion.”
Nike responded with a statement of their own:
“Our goal is to make sure consumers are not misled and have access to authentic NIKE, Inc. products that are authorized and created according to our high standards with the performance benefits they expect. It is unfortunate that after many attempts to resolve this matter privately, we’ve had to take legal action against the Shoe Surgeon for counterfeiting, mass customization and trademark infringement. In order to safeguard our brand and IP, and aligned with Nike’s commitment to protect the consumer from counterfeit Nike product, we are left with no choice but to seek a legal solution to address how the Shoe Surgeon is constructing counterfeit “Nike” footwear from scratch and selling it as officially branded product.”
In his response, The Shoe Surgeon argues that his use of Nike shoes for customization qualifies as non-commercial use and therefore serves as a defense against infringement. He states that his work is artistic, offering a service for individuals seeking customized shoes for their own personal use and enjoyment. However, this defense appears weak, as The Shoe Surgeon's entire business model seems inherently commercial—selling customized sneakers.
The Surgeon’s stronger defense lies in fair use and the first sale doctrine, which limits a trademark owner’s control over a product after its initial sale. In May 2022, the Ninth Circuit further clarified the first sale doctrine in Bluetooth SIG Inc. v. FCA US LLC, holding that the first sale doctrine defense applies in instances in which a trademarked product or a component is incorporated into a new end product so long as the seller adequately discloses to the public how the trademark product was used or modified in the new product. The court determined that the ultimate resolution of a case invoking the first sale doctrine defense will depend on an analysis of whether a purchasing consumer would likely be confused about the source(s) of the product.
The other defenses The Shoe Surgeon asserts are as follows:
● Unjust Enrichment
● Implied License
● Trade Dress Invalidity – Functionality
● Estoppel and Laches
● Statute of Limitations
● Failure to Mitigate
● Consent/Acquiescence/Waiver
● Good Faith (asserted twice)
● Lack of Personal Jurisdiction
● Improper Venue/Inconvenient Forum
In his countersuit, The Shoe Surgeon accuses Nike of defamation, claiming that Nike knowingly made false statements that damaged his reputation and business. The key statement at issue is Nike’s claim that:
“The Shoe Surgeon is constructing counterfeit Nike footwear from scratch and selling it as officially branded product. Further, The Shoe Surgeon is teaching others to create counterfeit Nike sneakers.”
The Shoe Surgeon argues this statement is false and misleading, as he never creates Nike shoes “from scratch.” Instead, he claims that all of his work begins with authentic Nike shoes, which he then customizes into art—not a counterfeit Nike product.
Supporting his claim, The Shoe Surgeon points to a 2022 letter from Nike, which outlined how deconstructing and reconstructing a Nike shoe could be considered counterfeiting under Nike’s policies. However, he argues that the letter never accused him of making fake Nike products from scratch. His counterclaim asserts that Nike’s statement was not only false but also made with malice, intending to harm his business and relationships within the sneaker industry.
Beyond reputational damage, The Shoe Surgeon alleges that Nike’s statements caused financial harm by deterring potential business partners. He claims he had multiple near-final deals with partners who backed out after hearing Nike’s allegations, costing him significant revenue and opportunities.
The second counterclaim, unjust enrichment, centers on Nike allegedly profiting from The Shoe Surgeon’s work without properly compensating him. The Shoe Surgeon claims that Nike engaged him for multiple projects, including a Travis Scott collaboration and a custom LeBron James sneaker project, while failing to properly compensate him. He alleges that Nike strung him along with promises of future deals and payments that never materialized.
A key part of The Shoe Surgeon’s argument is that Nike has benefited from his expertise for years—even hiring him to teach customization classes. He points to a 2017 masterclass for Nike’s Jordan Brand division staff, where he led a workshop on customizing Jordan 13 sneakers, which he claims is no different than the classes he offers to the general public. According to The Shoe Surgeon, Nike took what they learned from him and later built their own competing customization programs, such as Nike By You.
The Shoe Surgeon further argues that Nike’s position on customization has been inconsistent. He highlights the fact that Nike allowed him to create high-profile custom sneakers in the past but is now trying to crack down on customization under the guise of brand protection, but only after leveraging his creativity and expertise for their own gain.
Nike, however, is pushing back. On January 23, 2025, Nike moved to dismiss the defamation claim, arguing that its statements are protected under absolute privilege because they are a fair and accurate summary of its legal complaint. Nike asserts that its use of terms like counterfeit and from scratch is directly tied to its legal argument and, therefore, cannot be considered defamatory.
The broader implications of this case remain uncertain. Nike maintains that it supports customization within its parameters, but not unauthorized mass customization. Meanwhile, The Shoe Surgeon’s countersuit raises significant legal questions about customization rights, fair use, and the first sale doctrine. Depending on the outcome, sneaker customizers may need to navigate stricter legal boundaries—or risk litigation.
Andrew Gagnon is a rising 3L at the University of Kansas School of Law where he is a representative in the Student Bar Association and President of the Sports Law Society. He can be found on Twitter @A_Gagnon34 and LinkedIn as Andrew Gagnon.