In the summer 2019 during commercial breaks for the Major League Baseball All-Star Game, Nike rolled out a powerful three-part campaign aimed at encouraging youth sports. In three video segments, Nike featured the stories of teen mother and soccer player Nayeli Rivera, Chicago-native Maynor De Leon, who set out to lose 500 pounds, and runner Justin Gallegos, who dreamt of running a half marathon in two hours despite being plagued with cerebral palsy. The message of the inspirational campaign: “Sport Changes Everything.”
Less than two months after Nike debuted the campaign, one that cost it a whopping $16 million to make and that Nike planned to run through 2020, Fleet Feet accused Nike of running afoul of its federally protected trademarks “Change Everything” and “Running Changes Everything,” arguing that Nike’s national campaign was trampling on the marks it has used since 2012.
When Nike refused to abandon its use of the allegedly still-infringing mark, which Fleet Feet says is the “cornerstone of its brand,” the retailer filed suit, asking a federal court to stop Nike from making use of the trademark-protected phrase and pay an array of monetary damages in a sum to be determined at trial.
In a 51-page decision issued in December 2019, U. S. District Judge Catherine Eagles awarded Fleet Feet a preliminary injunction on the basis that it has shown that it is likely to succeed on its trademark claims. The judge found that “Fleet Feet’s distinctive ‘Change Everything’ and ‘Running Changes Everything’ marks have relatively low commercial strength, Fleet Feet’s substantial advertising expenditures are a drop in the bucket compared to Nike’s spending, and Nike’s advertising campaign using the ‘Sport Changes Everything’ phrase is likely to swamp Fleet Feet’s marks in the market and to cause consumers to link Fleet Feet’s marks with Nike.”
Despite Nike’s arguments that Fleet Feet improperly “delayed in seeking a preliminary injunction” and that it “presented no evidence its revenue has begun to decline or that its franchisees are leaving due to the [Sports Changes Everything] campaign” (to which the court stated that “this form of harm takes time to rise to the surface”), the judge sided with Fleet Feet, noting that “Nike had the option to perform a trademark search in advance—or, if it did one, to respond differently—to ensure its planned campaign would appropriately respect other companies’ marks and would not be subject to court action.”
Judge Eagles held that Nike is “immediately enjoined and prohibited on a nationwide basis from any use whatsoever of the phrase ‘Sport Changes Everything,’ or any other designation confusingly similar to the Running Changes Everything and Change Everything marks owned by Fleet Feet, in any form of … advertising, marketing, promotion, offering for sale, sale, or distribution of athletic shirts, athletic training programs and events, retail sporting goods store services and goods, and related goods and services.”
Nike has filed a notice of appeal, alerting the court that intends to appeal the decision to the U.S. Court of Appeals for the Fourth Circuit.
The campaign video segments:
The case is Fleet Feet, Inc. v. Nike, Inc., 1:19-CV-885 (M.D.N.C.).
Source: https://www.thefashionlaw.com/