You Can't "Just Do It": Nike Suit May Impact the Custom Shoe Industry

Who doesn’t love a pair of Nike Air Jordan 1s made out of a Louis Vuitton bag or the Travis Scott AJ1s made with alligator skin leather. Well, Nike doesn’t. The company has filed a complaint in the S.D.N.Y. against popular L.A. based sneaker customizer Dominic Ciambrone, aka “The Shoe Surgeon.” The complaint alleges that The Shoe Surgeon has engaged in widespread trademark infringement through customizing and creating bespoke Nike shoes, selling counterfeits, and offering kits and classes to make fake Nike shoes. Nike says his work misleads consumers, who might wrongly believe his creations are legitimate Nike collaborations.

Nike seeks to recover “the maximum amount of statutory damages for Defendants’ willful counterfeiting of over 30 Nike trademarks, totaling over $60 million, or the profits Defendants generated from counterfeiting, trebled, along with attorneys’ fees.” Nike also seeks to destroy all the infringing shoes.

The Shoe Surgeon is extremely popular among the sneaker community, celebrities, and professional athletes. His Instagram account alone has over 1.1 million followers. In the past, Nike themselves has commissioned The Surgeon on several occasions. Notably in 2018, Nike obtained Ciambrone to create a custom pair of Nike LeBron 15s to commemorate LeBron James reaching 30,000 career points. Ciambrone adorned the Nike LeBron 15 shoes in 24-karat gold and diamonds valued at $100,000. Then again in 2023, Nike had Ciambrone create a pair of custom Nike Lebron 20s to commemorate Lebron surpassing Kareem Abdul-Jabbar as the NBA’s all-time leading scorer.

The complaint states that “these commissions—limited engagements to commemorate the achievements of one of Nike’s signature athletes—did not give Defendants the unfettered right to use Nike’s marks to customize Nike shoes and manufacture fake “Nike” shoes from scratch, yet that’s exactly what Defendants have done.”

Ciambrone started his career in high school painting white Air Force 1s. Since then, his customization ability has evolved to reconstruct shoes with different leathers and fabrics. His custom pairs can range from $3,000-$30,000. Nike feels he has gone too far by “materially altering” the shoes to the point they can no longer be considered an authorized Nike product, yet still feature Nike trademarks. The Surgeon puts his logo onto the shoe, typically on the tongue, in a Nike-style font alongside Nike’s famous Swoosh. This logo is less prominent, and Nike says creates a “false impression that Nike has entered into a collaboration with Defendants on these products.”

The complaint then highlights The Shoe Surgeon’s practice of creating “unauthorized collaborations” without official endorsement or affiliation. Some examples included using Nike’s shoes in his collaborations with Celsius, Wingstop, Ruffles, and eBay. Nike says this is likely to confuse consumers into thinking that Nike themselves are collaborating with these brands. He also often uses patterns or designs made popular by luxury brands such as Dior, Louis Vuitton, and Gucci, who either have separate collaborations with Nike or none at all. This suit comes one month after French fashion brand Goyard filed a trademark infringement suit against The Shoe Surgeon for customizing Nike shoes with a pattern that closely resembles Goyard’s interlocking Ys and dots pattern.

Nike also complains that The Shoe Surgeon Academy teaches students in their 3-4 day classes not only how to deconstruct Nikes for customization, but also how to construct Nike shoes from scratch, which Nike deems are “counterfeit.” Amongst the products offered for sale in the “SRGN Creator Store” is The Shoe Surgeon Starter Bundle for Air Jordan 1 which “includes all the must-have tools and materials to create your own pair of custom AJ1s.”

For determining trademark infringement, the court will look to whether there is a likelihood of confusion among a reasonably prudent purchaser of the products at issue.

Some general factors that are considered are:

1. Strength of the plaintiff's mark

2. Relatedness of the goods or services

3. Similarity of the marks

4. Evidence of actual confusion

5. Marketing channels used

6. Likely degree of purchaser care

7. Defendant's intent in selecting the mark

8. Likelihood of expansion of the product lines

The Shoe Surgeon will likely assert defenses such as fair use, having an implied license to customize shoes based on past collaborations with Nike, and the asserting exhaustion rule. The exhaustion rule means once a trademark holder sells their product, the buyer is free to resell the goods without permission. While I believe The Surgeon has some legitimate arguments for purely customizing already-made Nike shoes, he likely will have a tough time arguing constructing shoes from scratch for commercial sale is not trademark infringement.

Nike says they are not anti-customization, they just want it to be done within “Nike-controlled parameters” such as Nike I.D. After filing the complaint, Nike released a statement saying that they do “not have any issues with the limited, one-of-one customization he’s been doing for us or his clients, when allowed under Nike-sponsored athletes’ contracts. In fact, we value opportunities for our athletes, consumers and partners to express themselves through their own style and creativity.” This translates to Nike being okay with customizing when they give consent.

How this will affect smaller customizers who use Nike shoes as a canvas to paint on and customize is unclear. However, selling a customized shoe that features another brand's logo or trademark, or creating your own Nike shoe from scratch is clearly against Nike’s wishes. Depending on the outcome of this case, shoe customizers may have to be more cautious with their designs, meaning not being able to “Just Do It.”

For those wanting to track the case on Bloomberg Law: Nike Inc. v. S2, Inc. d/b/a The Shoe Surgeon et al., S.D.N.Y., 1:24-cv-05307, complaint filed 7/15/24.

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.