How did you two meet?
JG: I was interning at Complex while in law school. Complex was my dream job—not only did I get amazing experience there, but I also got to fuse my love for sneakers with work. For my law review note, I wrote about the lack of legal protection for sneaker designs. My note didn’t end up getting published, so outside of my duties as a legal intern, I pitched the idea to Complex’s sneaker editorial department. They ended up loving the idea, so I condensed my article, and Complex published it. I went on to write two other legal articles about the sneaker business; at the time, no one else was really writing about legal areas that applied to sneakers. Kenneth, who was a partner at a law firm at the time, read my articles and reached out to me on LinkedIn as a fellow lawyer, sneakerhead, and Brooklyn Law School alum. We ended up meeting for coffee and pretty much shut the place down—we spoke for hours and hours. Since then, there probably hasn’t been a day that has passed without us talking (mostly about sneakers, of course).
Tell us a bit about your backgrounds.
KA: I grew up in Montclair, New Jersey, and my childhood during the late ’80s and ’90s was heavily influenced by hip-hop, streetwear, and basketball culture. From high school through college, I had aspirations of making it as a hip-hop producer, but I quickly learned that the music biz was tough to break into. A few bad experiences in the rap game landed me at Brooklyn Law School, where I sought to learn how to advocate for artists and other creatives who didn’t have the knowledge or means to understand their legal rights. After school, I practiced in New York law firms, first as an associate, then as a partner, primarily in the areas of employment and IP law. After 15 years of this, I was looking for a career change and something more aligned with my passions. I ended up leaving firm life to work for Kanye West and YEEZY as their general counsel, where I remained for the next two and a half years. My time at YEEZY was incredible. I felt my entire life had come full circle, being in the middle of streetwear and sneakers and working for such a talented creative individual. After YEEZY, I started a fashion licensing and distribution company called 380 Group. Today, I advise early-stage companies on business and legal matters in the sneaker, streetwear, and legal spaces. I am also of counsel to Jayaram Law, where I continue to represent creatives in a variety of interesting matters. They trust me and I can speak their language—that’s key.
JG: Like Kenneth, I grew up obsessed with sneakers, streetwear, hip-hop, and basketball. These things have been with me my entire life and are a big part of who I am. While in college at the University of Central Florida, I started my own sneaker reselling business. Flipping kicks out of my college dorm was a pretty good gig. Not only did I make some good money, but I also got to learn a ton about the business side of the sneaker industry as opposed to being a consumer for my entire life up until that point. After graduating college, I moved from Florida, where I was born and raised, to New York to attend Brooklyn Law School. My goal was to fuse the law with my love and passion for sneakers and entertainment. The suit and tie life was just not for me. I needed to be able to wear my sneakers to work (not to knock formal wear—I love a nice fitted suit with loafers). As mentioned, I interned at Complex while in law school, and I worked there for close to two years. After graduating, I joined Undertone, an ad-tech and media company, where I would become the sole in-house legal counsel. After Undertone, I joined LiveIntent, an ad-tech and marketing company, also as the sole in-house legal counsel, where I continue to handle business and legal matters related to advertising, media, technology, IP, privacy, and marketing. I have also represented various clients in the entertainment, music, and fashion industries.
It sounds like you both were able to take your passion for sneakers and combine that with your legal backgrounds in a unique way.
SL: Yes! We always believed there was a need to change the way business and legal principles were taught to people like us, who were passionate about learning but didn’t relate to boring textbooks and intimidating subject matter. With Sneaker Law, we set out to convey these same entrepreneurial concepts in business and law, but through the engaging and colorful lens of the sneaker industry. We were inspired by Donald Passman and his book All You Need to Know About the Music Business. That business bible is read by anyone looking to learn more about the music industry and is written in plain language that is easy to understand by aspiring moguls, musicians, managers, and students alike. Our book, Sneaker Law, is essentially the same thing for the footwear industry.
Let’s talk about the economics of sneakers, because sneaker sales generate an estimated $79 billion annually. When did sneakers gain in popularity for the consumer?
SL: Sneaker culture has come a long way. It really all began in 1917, when Converse, which was founded in 1908, dropped the All Star (later named the Chuck Taylor All Star). Adidas and Puma were both founded in the late 1940s. Reebok came on the scene in 1958. Years later, in 1964, Nike was established. In 1984, Nike launched the Jordan brand and released the iconic Air Jordan 1 shortly after. Since then, sneaker culture has continued to explode, and the brands previously mentioned—and many other important brands—have released monumental sneakers that have contributed to the almost $100 billion industry. Sneakers are an important part of many people’s daily lives due to functionality and style, but sneakers are also a way of life for many people around the world, and we think that this will only continue to increase.
Popular culture has always influenced fashion in some way, and there are different “cultures” within the sneaker industry. Can you tell us how sneaker culture has shaped fashion?
SL: The amazing thing about sneakers is that they cross over into all different areas of culture. In our book, we discuss how marketing and brand collaborations play such an integral role in the way pop culture influences sneakers. Obviously, sports culture has had a huge influence on sneakers, from basketball, running, baseball, football, tennis, and all the athletes that make the sneakers look cooler and more impactful. Skate culture is also a huge part of the sneaker world, with brands like Vans leading the way in style and performance. There have been iconic movie and TV sneaker moments, like in Back to the Future II, Forrest Gump, Space Jam, The Fresh Prince of Bel-Air, and even Batman (did you know Michael Keaton was rocking custom bat-armored Jordan VIs?!).
Today, high fashion and streetwear design is also playing a huge role in how sneakers are seen and consumed. Christian Dior collaborated with Nike on a luxurious Jordan 1, Prada has a sneaker with Adidas that comes with its own leather handbag, and Levi’s has denim-stitched New Balance 990s. Streetwear brands like Supreme, Aimé Leon Dore, Off-White, Fear of God, Bape, Kith, JJJJound, and A Ma Maniere all have their own collaborative sneakers. These are just some examples of a world of culture and fashion frenzy in the sneaker game, and behind each one is a business and legal deal.
We often think of brands influencing consumers, but in certain instances, it is the brand that is influenced by consumers, causing a brand to reinvent itself. Have there been instances when the consumer was the fashion industry’s muse?
SL: Yes, we are seeing this today through sustainability. Due to the harmful effects that sneaker materials could have on the environment, many consumers and organizations have pleaded with sneaker companies to change their manufacturing processes to be more environmentally friendly. Did you know that, on average, more than 300 million pairs of sneakers are thrown away each year, and if discarded in a landfill, it could take up to 40 years for those sneakers to fully decompose? As a result, many sneaker companies have responded to demands for sustainability in proactive and productive ways. There are several brands that have created sneakers using eco-friendly, recyclable, and raw materials. Brands that have employed sustainable practices include Nike, Adidas, Reebok, Allbirds, Veja, and others.
How have branding and celebrity influencers shaped the sneaker and fashion industry that we see today?
SL: The earliest celebrity endorsements were famous athletes like Chuck Taylor (Converse), Stan Smith (Adidas), Walt “Clyde” Frazier (Puma), Michael Jordan (Nike/Jordan Brand), and Andre Agassi (Nike). Today, it’s almost a given that your favorite athlete will either have a sneaker endorsement deal or even their own signature sneaker. Beyond athletes, sneaker companies have always looked to music celebrities as product endorsers, ever since Run-DMC came out on stage in Adidas Superstars (popularly referred to as “Shell Toes”). That trend continues today, and musicians like Kanye West, Travis Scott, Pharrell, Drake, Billie Eilish, and Beyoncé sell some of the coolest and most coveted sneakers in the game. But celebrity influence in sneakers has now ventured even beyond athletes and musicians. Many “alternative” celebrities have their own sneakers, like actor Jonah Hill, gamer and e-sports sensation Ninja, the artist Kaws, and even entrepreneurs and influencers like Gary Vee. Clearly, there’s no limit to who will be instrumental in hyping up the sneaker game.
With a booming sneaker resell market that will reach $6 billion by 2025, some consider sneakers a better investment than a 401(k). Why do you think sneaker resell and investment has become such big business?
JG: Sneakers have become an asset class. Sneakers are no different than art (we think sneakers are pieces of art themselves anyway) in terms of supply and demand, increases in value, and the ability to buy and resell. Many years ago, I used reselling to pay for college. Nowadays, people have turned reselling into lucrative careers and have made great livings for themselves. Others resell on the side as passive income. Even if you resell here and there, it can be useful outside of the money because it teaches you entrepreneurship and business skills. The resell industry began where you could only sell sneakers on eBay and through Craigslist, and now, the emergence of companies like Stadium Goods, StockX, GOAT, Flight Club, and others have made reselling sneakers an easy and seamless process. There are even companies like Rares that offer users the option to buy fractional shares in vintage and extremely limited sneakers that are fully qualified by the U.S. Securities and Exchange Commission, just like a stock on the stock market. Its most expensive pair of sneakers, the Nike Air YEEZY 1 sample that Kanye wore at the Grammys, is worth $1.8 million—you can invest in and own a part of that sneaker. Overall, the multibillion-dollar resell and alternative sneaker markets show no signs of slowing down, and we think they will continue to boom.
What are some of the seminal IP cases that have shaped sneaker law?
SL: There are three cases that are pretty influential and have really shaped sneaker law: Star Athletica v. Varsity Brands (copyright), Christian Louboutin v. Yves Saint Laurent (trademark and trade dress), and Adidas v. Skechers (trademark and trade dress).
In Star Athletica v. Varsity Brands, the U.S. Supreme Court held that certain artistic features, such as linear patterns on cheerleading uniforms, could be afforded copyright protection if the feature (1) can be perceived as a two- or three-dimensional work of art, separate from the useful article; and (2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article. This decision was a massive win for designers and original clothing manufacturers in terms of its potential reach and has now afforded sneaker designs the same copyright protection, provided the Star Athletica requirements are met.
In Christian Louboutin v. Yves Saint Laurent,the U.S. District Court for the Southern District of New York held that a single color, specifically the well-known red lacquer color used on the bottom of Louboutin’s famous high-heeled shoes, may serve as a legally protected trademark in the fashion industry. Thanks to Louboutin, highly recognizable and distinctive source identifiers, like certain colors, can be protected, especially if they’ve acquired secondary meaning.
Similarly, in Adidas v. Skechers, the Ninth Circuit held that Adidas’s iconic Stan Smith sneaker had acquired secondary meaning, and Skechers’s almost identical sneaker, the Onix, had infringed on the Stan Smith design. Notably, the court found that the similarities between the two sneakers were sufficient to cause a likelihood of confusion, one of the primary factors required to demonstrate trademark infringement.
Most of the highly publicized disputes concerning sneakers settle before they can make a true legal impact—for example, the Lil Nas X Satan Shoes or Nike’s USPS Air Force 1 shoe. Can you tell us a little bit about the disputes in both of these cases?
SL: The Lil Nas X case involved a brand named MSCHF that collaborated with Lil Nas X on a custom Nike Air Max 97, which they called the “Satan Shoes.” The Satan Shoes featured multiple satanic references, including a drop of human blood that was injected into the air bubble of the sneaker. The Satan Shoes were not authorized by Nike, and Nike had no involvement in the project. After MSCHF released the Satan Shoes, there was a lot of negative feedback from the public—people thought that Nike was involved with the sneaker, and as a result, many people threatened to boycott Nike and stop buying its products, and overall, Nike received negative publicity.
As a result, Nike sued MSCHF for various causes of action, including trademark infringement, false designation of origin, and trademark dilution. To prove trademark infringement, Nike would have to demonstrate that there is a likelihood of consumer confusion that Nike was associated with the Satan Shoe. With trademark dilution, there are two main issues: (1) blurring, which refers to when the distinctiveness of a trademark is weakened because of an association with another trademark or name; and (2) tarnishment, which occurs when the reputation of a trademark is harmed through the association with another trademark or name. In either instance, Nike had a strong case against MSCHF. Blurring could have been easily demonstrated because consumers believed Nike was associated with the Satan Shoes, and an unfavorable view of the sneakers could affect the public’s perception of Nike’s generally wholesome brand. Similarly, with tarnishment, Nike could have argued that the human blood and satanic references are unsavory and unwholesome, and any association with MSCHF’s Satan Shoes would dilute Nike’s marks.
The case ended up settling, where MSCHF had to offer to buy back any pairs that were sold to consumers and remove from circulation any other pairs that it had in its possession. Despite the settlement, the case sparked a great debate about the first sale doctrine and the “material difference” threshold, which has been in the news lately as a result of Nike suing various sneaker customizers for trademark infringement and other causes of action. Under the first sale doctrine, an owner and original seller of a trademarked good generally cannot inhibit the subsequent resale of that trademarked good by the original purchaser or any subsequent purchasers. An interesting issue arises when, as with the Satan Shoe, there has been a post-sale, material alteration that might affect the shoe’s product quality and safety, and of course negatively impact the value and distinctiveness of Nike’s trademarks.
The Nike and U.S. Postal Service (USPS) dispute involved an instance where the tables turned, and Nike was the one targeted for infringement. Nike designed an Air Force 1 sneaker that looked similar to the USPS shipment packaging and labels. Once USPS saw this, it released a public statement claiming that it had no involvement in the sneaker and that Nike was using its IP on the sneaker without approval. The sneaker’s release date was subsequently delayed, and it looked like Nike could be involved in another lawsuit. Within a few weeks, however, it was reported that Nike and USPS agreed to a licensing deal, and as a result, the originally designed sneaker ended up being released.
Are the current IP laws sufficient to protect an industry that relies so heavily upon the uniqueness of design?
SL: When it comes to sneaker designs, there are three different potential IP protections: trademarks, patents, and copyrights. With trademarks, sneaker brands can obtain trademarks for brand names, logos, symbols, phrases, product lines, and possibly for elements of sneakers themselves or the silhouettes themselves through trade dress. For patents, ornamental and aesthetic features of a sneaker can be protected through design patents (for example, Adidas and Yeezy have a design patent for the Yeezy 350 v2), and new and innovative technologies can be protected through utility patents (for example, Nike has a utility patent for its autolace technology). In terms of copyrights, sneakers haven’t traditionally been able to receive copyright protection. However, due to Star Athletica, we’ve seen sneaker brands successfully obtain copyright protection in their sneaker designs—Adidas and Yeezy were afforded copyright protection for the Yeezy 350 v1 and v2. As a result, although not perfect and still developing, IP laws are able to protect many sneaker designs.
The counterargument is whether creatives, who customize their fashion, have enough freedom to do so without fear of retribution from brands. Is there sufficient protection for them and their creativity?
SL: Traditionally, we’ve seen sneaker customizers able to do their thing without much retribution from brands. But recently, Nike has sued multiple sneaker customizers for trademark infringement, among other causes of action. As mentioned earlier, this is where the first sale doctrine is going to be heavily debated. We will see how it all pans out!
Kenneth, you head the legal team defending John Geiger and his GF-01’s against a trade dress infringement lawsuit by Nike, which claims the sneaker infringes the Air Force 1. Can you break that case down for us a bit?
KA: Sure. There are actually two cases brought by Nike here. The first one is for infringement against La La Land, a sneaker manufacturer, for manufacturing the Warren Lotas sneakers, which Nike alleges infringes on its Nike Swoosh trademark and Nike Dunk trade dress. The second case is for infringement against my client, John Geiger Collection, for selling the GF-01, which Nike believes infringes upon its Air Force 1 trade dress.
Trade dress is the form or manner of display in which a product or service is offered to the market. Trade dress includes the product’s total image and overall appearance, as well as the elements that make it up. This includes the size, shape, color, color combinations, texture, graphics, configuration, decor, or architecture of the product. It can include the packaging or, in some cases, even the product design itself.
To win its case, Nike will have to demonstrate that its Air Force 1 trade dress is protectable, and that there is a likelihood of confusion between its product and the one it alleges is infringing, the GF-01. There’s no doubt that the Air Force 1 is an iconic sneaker, but trade dress protection has to consider the article as a whole and is extremely difficult to prove. Nike is essentially claiming that the Air Force 1 silhouette is so recognizable that even if John Geiger used his own logo, made several design changes, incorporated premium materials, completely changed the packaging, and utilized different distribution channels (all of which he did), he still should not be allowed to sell his sneaker.
I think Nike is going too far and a decision in its favor will create a chilling effect on the industry’s ability to create. More and more independent sneaker brands are popping up, and anything that can be done to level the playing field within the boundaries of the law, I’m all for it. It’s going to be an exciting case for sure!
What are your thoughts on newcomers to the sneaker business or fast casual brands entering the market, when brands like Nike or Yeezy are seeking to close out competition through the enforcement of various IP rights?
SL: As long as brands are creative and not knocking off other brands’ designs, there shouldn’t be a fear of retribution from brands enforcing their IP rights. When you take a Converse Chuck Taylor and try to call it your own, Converse is going to come after you as it did against 31 different brands. There’s a big difference between inspiration and duplication. It is perfectly fine to be inspired by another brand’s designs, but one needs to be careful not to infringe on IP during the process.