When Warren Lotas got hit with a cease and desist followed by a lawsuit for similar designs resonating too close of the Pigeon Dunk and other sneakers, Nike claimed the creations “are not legitimate customizations, they are illegal fakes.” However, with DIY and custom sneaker design becoming popular artistry in the sneaker world, sneaker customizers such as The Shoe Surgeon, Kickstradamus, and DeMarco Custom Sneakers have built businesses around their creations. However, a fine line crosses between customization and infringement, as with cases like Warren Lotas, Lil Nas X and MSFCHFS, and Ari Menthol 10’s.
Globalization and technology welcome the inevitable frontier that allows any shoe model to become copied. Sites like Alibaba have made it easy to access blanks or infringe highly inspired modified models of your favorite sneakers. Some have used these models to create their own sneakers through customization. They also have created their own lines, or falsely claim deals and collaborations with sneaker companies.
The thin line between customs and counterfeits has accounted for some of the most interesting copy infringement cases. For example, the viral marketing incentives around Lil Nas X’s “Satan Shoes” with creative collective MSCHF. These infamous sneakers garnered mass media attention and a ball of Twitter trending topics. Big sneaker brands employ counsel to protect their marks, copyrights, and other intellectual properties. However, what companies and individuals can take to safeguard their intellectual property and designs is a cease and desist.
By definition, a cease and desist letter is a common method used to resolve a dispute between two or more parties. However, it is not legally binding and isn’t filed in court.
Instead, this letter will be sent to the individual or business to ask them to stop an activity infringing on their rights. A cease and desist letter is also commonly referred to as a “stop harassment letter” or a “demand letter.” This letter is usually sent before an injunction or lawsuit as a warning. To avoid going to court and accumulating litigation costs, cease and desist letters are one of the cheapest and quickest ways to resolve a matter.
A cease and desist letter also serves as evidence that they’ve given notice to the other party for their alleged infringement. If the other party chooses to continue their behavior after receiving the notice, a stronger legal claim can be made against them.
While a letter comes off as a warning, a cease and desist order is legally binding to the court. Known as an “injunction” or “restraining order,” the order is official and issued by a government agency or a court. A cease and desist order communicates to a person or company to stop engaging in illegal activities, or they will face penalties such as fines or jail time.
A cease and desist letter and order are negotiation tactics giving a warning sign before further legal action occurs.
I would say 90% of these cease and desist letters are settled before they make it to court. And they're either resolved amicably or forcefully outside of the courts. - Kenneth Anand
You want to respond to it, because if you ignore it — it can get worst. Ignoring it is not the way to go. - Jared Goldstein
In the newest module in Sneaker Essentials, Sneaker Law co-authors Kenneth Anand and Jared Goldstein break down intellectual property and considerations of sneaker deals. Explore Sneaker Essentials, a course powered by Yellowbrick alongside FIT and Complex by visiting yellowbrick.co/sneakers.
Disclaimer: This blog post is provided for informational purposes only, and should not be construed as legal advice on any subject matter. The contents of post contain general information and may not reflect current legal developments or address your situation.