Nike Done Playing ‘Whac-a-Mole’ With Bathing Ape: Lawsuit – Sourcing Journal

After a cease-and-desist letter sent in August to an outdated address didn’t produce its desired outcome, Nike filed its latest trademark infringement lawsuit against BAPE on Wednesday in New York’s Southern District Court.

The five-count, 28-page lawsuit asserts that BAPE, a company that was spawned in Japan in 1993, its name a shortened version of A Bathing Ape, has been copying Nike’s design for its iconic Air Force 1 and Air Jordan 1 shoes since 2021.

In the complaint, Nike attorneys indicate they have known BAPE to have a long history of trademark infringement, but only now has it become a big enough problem to warrant a lawsuit.

“BAPE introduced its first infringing footwear in the United States in 2005. But until recently, BAPE’s sale of infringing footwear in the United States was de minimis and inconsistent,” the lawsuit reads. “For fifteen years, the presence of BAPE’s infringing footwear in the United States resembled the famous Whac-A-Mole arcade game: infringing products appeared and then disappeared from the United States market for years.”

In 2011 BAPE was acquired by a Hong Kong fashion conglomerate by the name of I.T. That change, Nike asserts, coincided with BAPE’s increasing trademark chicanery that eventually grew to become a serious problem for its brand and reputation.

What may have been the straw that broke the camel’s back was an apparent partnership between BAPE and major Hollywood studios Marvel and Disney using the shoes Nike contends are clear knockoffs meant to confuse consumers.

The Just Do It brand tapped the firm of Arnold & Porter to draft a notice of violations letter, sent to an address that on “information and belief” is the principal place of business for BAPE of 91 Greene Street in New York’s SoHo district.

That narrow storefront has been occupied since the spring of 2021 by streetwear brand Eric Emanuel, which boasts ‘The Best Shorts in the World!” on its entry. The space was home to the flagship shop for A Bathing Ape from 2004 until early 2021 when BAPE moved to a different SoHo location at 163 Mercer Street.

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The Eric Emanuel streetwear store at 91 Greene Street in the SoHo district of New York. Until the spring of 2021, this was the address for BAPE, when it moved its once flagship location to 163 Mercer, also in SoHo. Matt Hickman/Sourcing Journal

The letter from Arnold & Porter was sent to the USAPE LLC address in Wilmington, Delaware, in care of United Agent Group, Inc. as well as the Greene Street address and it was dated Aug. 24, 2022, more than a year and a half after BAPE moved.

United Agent Group is a trust company that presumably represents numerous businesses taking advantage of Delaware’s favorable tax policies, and it is doubtful there is any BAPE staff present there.

Neither Arnold & Porter, nor BAPE responded to Sourcing Journal questions about the address discrepancy.

In the letter, included as an exhibit to the initial court filing, representatives for Nike ask BAPE to “immediately stop distributing, marketing, promoting or using” all Nike trademarks.

“The Infringing Collaboration Products apply BAPE and third-party branding and images (i.e., Disney and Marvel branding and images) to Nike’s iconic Air Force 1 silhouette, suggesting a false collaboration between Nike, BAPE, Disney, and Marvel that is likely to cause confusion between your company’s product offerings, Disney, Marvel, and Nike,” the letter read. “It is Nike’s prerogative to choose with whom it collaborates and what message its designs convey.”

Neither Disney nor Marvel responded to Sourcing Journal questions asking whether the collaborations with BAPE were sanctioned or whether they were aware the shoes used in the promotions were potentially infringing on Nike’s trademark.

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Images from cease-and-desist letter sent from Nike representatives to BAPE, addressed in the letterhead to its former address in New York.

In the letter, Michael Harris of Arnold & Porter tried to appeal to BAPE’s former identity as a more original and less infringing footwear producer.

“After being purchased by I.T., BAPE’s footwear offerings focused on its Asian audience as its United States presence waned. During this time, we understand that BAPE made efforts to redesign its footwear products to less resemble Nike’s designs,” Harris wrote. “BAPE’s recent re-emergence in the United States market is accompanied by a material change in the volume and severity of its infringement of Nike’s intellectual property. Specifically, we understand that BAPE recently redesigned its footwear products in such a way that the products are nearly identical to (and, in some cases are identical to) Nike’s iconic and protected designs.”

Nike is suing on five counts: trademark infringement, false designation of origin/unfair competition, common law trademark infringement, trademark infringement under New York business law and dilution under New York business law.

Nike sued a pair of YouTube celebrities for modeling footage based on their Dunk series, but also rapper Lil Gnar for his company’s similar actions.

Nike also sued Adidas for infringing on nine of its patents, along with 18 infractions on one shoe alone. Adidas fired back with a countersuit and the footwear giants settled out of court in August.

As a defendant, Nike is still awaiting final appeal on the Nov. 29 ruling of an Oregon Superior Court Judge who ruled the case brought against them with more than 5,000 of its female employees could not stand as a class action. Should that ruling stand, Nike is still opposed by 14 plaintiffs suing for sex discrimination and sexual harassment.

Nike was also sued back in November by onetime NFL standout Odell Beckham Jr. for $20 million for breach of contract.

footwear, sneakers, celebrity