Nike Inc.’s proposed settlement with Shoe Surgeon has set some boundaries on sneaker customization.
The settlement agreement is confidential, including the amount that Shoe Surgeon has agreed to pay Nike.
Court documents do include a proposed consent judgment and permanent injunction that needs to be signed off by the Manhattan federal district judge presiding over the case.
The document includes Shoe Surgeon’s acknowledgment that Nike is the exclusive owner of certain registered trademarks, trademark applications and related common law rights. It also requires the acknowledgment by Shoe Surgeon that the defendant’s accused “customization” includes using materials that Nike did not manufacture or authorize, as well as the agreement that the accused “customization” was also not authorized by Nike.
The permanent injunction bars Shoe Surgeon from any future conduct that could cause confusion with Nike’s products and trademarks, including offering “deconstruction”/”reconstruction” classes or workshops using Nike’s trademarks.
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What is allowed is Shoe Surgeon’s ability to provide limited “one of one” services detailed in the parties’ confidential settlement agreement.
Those details weren’t disclosed in the proposed consent judgment, but it did note that any “one of one” service must include a “clear, conspicuous written disclosure” that Shoe Surgeon’s services are not in any way authorized by Nike, that the proposed changes may impact the performance of genuine Nike shoes, and that the services are for “personal and non-commercial purposes.”
Shoe Surgeon is also required to remove within 30 days all infringing or counterfeit products from its website.
Nike filed its lawsuit against Shoe Surgeon in July 2024, claiming that the shoe customizer was trying to build a “multifaceted retail empire” using Nike’s trademark rights by creating and selling counterfeit Nike shoes, among other claims.
The Los Angeles-based Shoe Surgeon in November denied those claims. The company is known for taking a footwear brand’s known silhouette and then blending in other materials and identifying marks from other brands. And while Shoe Surgeon in its response said it has never made a Nike shoe from scratch, it did state that it works with an authentic Nike shoe bought from Nike and then customizes them.
Last June, Shoe Surgeon was also on the receiving end of a lawsuit filed by French luxury leather goods brand Goyard in a Los Angeles federal district court. That case also involves allegations of trademark infringement.
Nike is known for taking a hard stand against trademark infringers. In 2021, it filed a trademark infringement case against MSCHF, the company that created and sold a number of “Satan Shoes” in collaboration with Lil Nas X. That case was settled later that year.
Nike this month raised prices on select products by $2 to $10 on average, but also noted that the Jordan brand and Nike kids apparel and footwear won’t see any increases. Higher priced footwear shoes will see price increased between $5 and $10.
The athletic apparel and shoe brand is slated to post fourth quarter earnings on Thursday. Many analysts believe that the turnaround strategy at the brand could take a few more quarters to see fruition, mostly due to near-term challenges — including clearing up inventory imbalances — that include the impact from tariff increases.
