By Robert E. Freeman
Most of us know that “milk does the body good,” but few among us would’ve thought that a milk-crate pattern on the bottom of our sneakers might help us run faster or jump higher. Apparently, two competing shoe manufacturers believe so. In a complaint recently filed in the Southern District of New York against Nike by Milkcrate Athletics, Milkcrate alleges that Nike’s Zoom LeBron Soldier – a basketball shoe endorsed by superstar LeBron James – prominently features a “milk crate pattern” and the words “milk crate” on its sole, in violation of Milkcrate’s registered mark.
The Zoom LeBron Soldier line of footwear features a cross-hatched pattern on the sole reminiscent of a plastic milk crate. According to Nike, its “milk crate technology” was “inspired by the milk crate [LeBron] used as a hoop when he was a kid in Akron.” The shoe’s name pays homage to James’s repeated success in the playoffs, where, Nike boasts, “the man and the soldier unite and become an army.”
Though perhaps not as well-known as LeBron, the man behind Milkcrate Athletic’s blaze-neon t-shirts and Warhol-inspired headwear is a celebrity with plenty of street cred of his own. As a “young skateboard punk” in East Baltimore, Aaron LaCrate – Milkcrate’s founder and CEO – embraced hand drawing and graffiti. He channeled his love of hip-hop culture into a career, and now DJs and produces music for such artists as Madonna, the Cool Kids and Amanda Blank. Superstars like Jay Z and Rakim have been seen sporting Milkcrate threads, and LaCrate recently teamed with HBO to create a t-shirt line inspired by “The Wire,” which was set in the Baltimore neighborhood in which he grew up.
Milkcrate claims that Nike’s tread and its “milk crate” verbiage run afoul of LaCrate’s own sneaker line, which is manufactured in a joint endeavor with Vans. In its complaint, Milkcrate argues trademark infringement based on theories of consumer confusion and dilution, and asks the court to issue an injunction and to require Nike to pay unspecified damages. And, to the extent that the Zoom Soldier shoe displays the words “milk crate” on its sole, the young and comparatively small design boutique may believe that its suit should be a slam dunk. Milkcrate owns several registered marks, including MILKCRATE, Reg. No. 3,608,409, which specifically covers “basketball sneakers.”
Interestingly, Milkcrate does not explicitly ask the court to enjoin Nike from selling shoes that feature the “milk crate pattern,” but its prayer for relief does request an injunction against the use of any “logo,” “design” or “source designation” connected to Milkcrate.
This may be because cases such as Wal-Mart Stores v. Samara Bros., 529 U.S. 205, 216 (2000), have held that product design – for example, the tread of a shoe – cannot be “inherently distinctive.” As such, Milkcrate would need to prove that the tread design has “secondary meaning” to receive protection – that is, that individual consumers associate the tread design with Milkcrate Athletics. See, e.g., Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 43 (1st Cir. Mass., 2001). Even if Milkcrate argues that its tread design has secondary meaning, Nike may claim that the tread design is “functional” and therefore unprotectable. See, e.g., Traffix Devices v. Mktg. Displays, 532 U.S. 23, 29 (2001). And, if Nike’s attorneys can demonstrate that the shoe’s “milk crate pattern” helps rising stars play better basketball, they may score a win that reverberates in more than one kind of court.
Robert E. Freeman is a Partner in the Corporate Department and a member of the Sports Law Group and Technology, Media & Communications Group at Proskauer.
