Customs or Counterfeits? Understanding the Ethics and Legality of Custom Sneakers.
Understanding The Laws That Could Apply:
Straight from the USPTO’s website Trademark Infringement is:
Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.
First Sale Doctrine:
In trademark law, the First Sale Doctrine provides that one who purchases a genuine trademark item has the right to sell that item without having to pay any royalty to the trademark owner. In other words, once the trademark owner has placed its product into the marketplace its right to control any further distribution is exhausted.
Brandir International, Inc. v. Cascade Pacific Lumber Co: “if design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements. Conversely, where design elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences, conceptual separability exists.”
Further, when a portion of your clothing, if taken off the clothing, could independently meet the requirements for copyright protection then that portion can be protected by copyright.
The United States copyright law protects "original works of authorship," fixed in a tangible medium including literary, dramatic, musical, artistic, and other intellectual works. This protection is available to both published and unpublished works. Copyright law includes the following types of works:
Pantomimes and choreographic works
Pictorial, graphic, and sculptural works
There is also Trade Dress:
Trade dress is a type of trademark that generally protects characteristics of the visual appearance of a product, its packaging, or even the overall look and feel of a business so long as it signifies the source of the product to consumers.
Christian Louboutin, S.A. v. Yves Saint Laurent Am. Holding, Inc., 2012 WL 3832285 (2d Cir. Sept. 5, 2012), was a case that addresses this directly. Here, a single color was capable of functioning as a trademark. Louboutin’s Red Sole Trademark, although limited to the red lacquered outsole contrasting in color with the adjoining “upper” of the shoe, was valid and enforceable only as modified.
“This case is one of the few appellate court decisions addressing whether a single color is capable of functioning as a trademark, and more specifically how fashion-industry participants may protect the distinctive features of their designs by establishing secondary meaning, even if the distinguishing feature is just one color.” (Finnegan).
Thus, its clear there is some sort of protection available for sneaker companies and their designers.
Application to Custom Sneakers:
Custom sneakers have become a crucial aspect of sneaker culture. Customizers like Methamphibian, SBTG, C2 Customs and El Cappy have made sneakers that have created waves throughout the industry for years. Their designs have become undeniable but for some the question that exists is, “Are custom sneakers any different than fakes?”. The short legal and ethical answer to this questions is yes but if done correctly.
Trademark law’s purpose is to protect the customer from confusing the source of a particular good or service. For example, a brand called Nice that uses a symbol very similar to that of Nike’s check could be extremely confusing to the customer as to the source of the goods. Digging deeper into the current status of custom sneakers, one aspect that continues to thrive are cross brand collaborations and distinctive colorways attached to a particular phrase for different shoes. We have seen Adidas and Bape collaborate for sneakers. We have seen Nike’s Lebron James “South Beach” take on a meaning of it’s own. Here, marks the biggest legal and ethical dilemma in the custom sneaker space, “Can you take a colorway/design and put it on a separate shoe?”
The law is unsettled in answering this question however If you use a pattern very similar to Bape’s distinctive camouflage and put it on a Air Force 1, you are certainly confusing the consumer as to the source of the goods. You are also piggybacking off of the success of another brand to sell your own product which is the essence of what Trademark Law is also trying to protect. Ethically, you will also lose value in your community as unspoken rules certainly exist. You simply don’t do this if you want to be respected.
In addition, their is also dispute in regards to what the first sale doctrine actually protects in the sneaker space. The first sale doctrine usually does not apply when the re-seller, regardless of the product, sells trademarked goods that are materially different than the ones that the Trademark owner put out. Since a materially different product is not genuine, consumers may be confused as to the source of the products. This is the “Material Difference” Exception. There is also the Quality Controls Exception which states that a manufacturer’s product is not considered truly “genuine” unless it is manufactured and distributed under quality controls established by the manufacturer.
Regardless, this body of law is still being developed and custom sneakers are apart of the culture. However, there are rules and there should be procedures and best practices established in your work if you are operating in this arena to ensure compliance, morally and legally, with sneaker brands and the culture itself.
Never use distinctive prints from other brands or collaborations on your custom work.
Create disclaimers on your websites and invoices that explicitly state that you are not associated with the brand of the sneakers you are working off of.
Never combine silhouettes of different shoes to create your own shoe.
Never intentionally misrepresent an affiliation with the manufacturer.
Refrain from naming your shoe design or colorway the same as another popular colorway or shoe design.
Remember, the more likely the confusion as to the source of the goods, the more likely infringement has occurred!