UPDATED 11/20, 4:55 p.m. ET: Following this week's court ruling in the brand's favor, a Nike spokesperson has issued the following statement.
"Nike is pleased with the preliminary injunction order issued. Nike filed this lawsuit to defend and protect its intellectual property and clear up confusion in the marketplace between legitimate customizations and unlawful fakes. By prohibiting the sale of the fake Nike Dunks, yesterday’s order is an important step towards achieving that goal."
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After we broke down the Warren Lotas vs. Nike saga in detail last week, a new development has taken place in the case involving the Beaverton, Oregon brand's preliminary injunction against the up-and-coming designer.
A judge in the United States District Court of the Central District of California has granted most of Nike's requests in the request, which accuses Lotas of profiting from "illegal fakes" of the brand's Dunk sneaker. The ruling also addresses the Swoosh's reply to Lotas' attempt to replace the offending sneakers with a similar model called the Reaper.
Judge Mark Scarsi has ordered that Lotas and "officers, agents, employees, attorneys, and all persons who are in active concert or participation" with the designer are prohibited from fulfilling any of the preorders for the Staple Pigeon OG, Freddy Broccolini Chanclas, and any other imitation colorways. It goes without saying, but Lotas and company are also barred from "promoting, offering to sell, selling, and/or taking additional preorders" for the aforementioned designs.
The court points out that Nike's claims of marketplace confusion hold merit, with examples of Lotas' product being listed on eBay with titles such as SB, Nike SB, and Nike Dunk.
As for the Reaper, it's unclear what exactly the future holds for the replacement model. The court ruled that Lotas is also not allowed to promote the original sneakers as a way to generate sales for his other products, including the Reaper shoe. A doctrine known as initial interest confusion is cited, which concerns matters where defendants use trademarks to "capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion."
"Warren Lotas plans on benefiting from this initial interest in the WL Pigeon and WL Broccolini by now offering the Reaper to customers who preordered the WL Pigeon or WL Broccolini," reads the court order. "It is irrelevant that Warren Lotas has informed these customers that the Reaper is not affiliated with Nike, because the initial interest confusion attached prior to that disclaimer."
Although Lotas has already told Nike he will not fulfill preorders for or sell more pairs of the offending sneakers, now he's legally bound to it. The designer voluntary passed on his opportunity to further dispute the preliminary injunction, arguing that he's done enough by not fulfilling preorders, providing refunds, and stopping advertisements related to the Dunk-like shoes. However, the court says while these actions are promising, Lotas "still has the potential to profit off of the likely infringing conduct" by replacing the original preorders with the Reaper, along with his plans to ship a "commemorative lawsuit shirt, pencil, and bumper sticker.”
Only one portion of Nike's preliminary injunction was denied, a clause which would have required Lotas to hold all money from the preorders in escrow to later refund customers.
A spokesperson from Lotas' team declined to comment.
