Nike, Converse reach settlement with ex-employee in sneaker customization case

Nike and Converse have settled a custom-sneaker lawsuit against its former employee Jeffrey Waskowiak and his company KickRich LLC over a case involving trademark infringement, dilution, false designation of origin, and unfair competition.

The brands sued Waskowiak and KickRich on July 19, 2021, in the District of Oregon due to their alleged practice of reselling materially altered Nike and Converse products that they have never approved or authorized.”

According to Nike and Converse, the defendants acquired genuine Nike and Converse footwear and then altered the uppers to create custom footwear products that still display their brand logos.

The plaintiffs alleged that the unauthorized customizations limit their abilities to control their brands, business reputations, and associated goodwill.

The plaintiffs also claimed that the altered footwear falsely affiliated them with other brands, such as Amazon by mashing up an authentic Nike Air Jordan 1 shoe, adding Amazon Prime branding in multiple locations, including next to the signature Nike Swoosh design.

The plaintiffs also claimed that the defendants “make and sell laser cut and digital download ‘shoe patterns' that let others fake several of Nike's iconic and trade-dress protected footwear styles, including the Air Force 1, the Dunk, and the Air Jordan 1”.

Lastly, the plaintiffs alleged that the defendants have created confusion in the marketplace by including the plaintiffs' vintage logos and slogans, as well as references to Waskowiak's prior employment as a Nike footwear developer, which suggests authorization. The plaintiffs not only sought monetary damages but also injunctive relief.

In December, the parties filed a proposed judgment that emphasized Nike and Converse as the “exclusive owners” of several trademarks and trade dress.

The proposal also included a permanent injunction against KickRich for infringing and diluting the trademarks and for using false designations of origin through its practice of promoting, offering for sale, and selling the products.

Interestingly, KickRich may offer and promote customization services of genuine Nike and Converse products, according to the terms of the Parties' settlement agreement.

As the settlement agreement is confidential, it is unknown what KickRich is permitted to do when providing said customization services.