Nike offered Bape a licensing deal before lawsuit, lawyers say

By Brendan Dunne

6 hours agoBape Stas at the Bape SoHo store opening in January 2005. Picture via Getty

In a writ filed Friday in Southern District Court in New York, Bape’s attorneys shed light on the iconic streetwear brand’s longstanding dispute with Nike over the Bape Sta sneaker. The letter from Bape’s legal team relates to a meeting between Bape and Nike in 2009, where sneaker giant Bape appeared to propose a licensing agreement for the Bape Sta.

The new information about the disagreements between Bape and Nike comes amid a lawsuit instigated by the latter in January alleging Bape’s trademark infringement.

The lawsuit centers around the Bape Sta sneaker, which is based on Nike’s Air Force 1. The shoes share similar uppers and soles, although Bape’s version replaces the Air Force 1’s Swoosh logo with a shooting star. Nike says the Bape Sta violates its Air Force 1 trademarks and wants Bape to stop selling the shoe and its other Nike lookalikes.

Bape’s attorneys are calling for a conference ahead of an expected motion to dismiss Nike’s lawsuit. The letter notifying the court of the pre-claims conference is Bape’s first response to Nike’s allegations.

Bape’s lawyers say Nike’s in-house counsel and vice president of footwear flew to Japan twice in October 2009 to meet with Bape’s leadership and “to object to Bape’s sneaker designs.” Lawyers say Nike proposed an agreement with Bape that would force it to stop selling Bape Stas. According to his legal team, Bape rejected the agreement later that month.

Friday’s filing quotes directly from an email Bape sent to Nike in October 2009.

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“We appreciate your efforts to come to Japan to discuss and present the license agreement in person,” the quoted 2009 email from Bape’s lawyers read. “Upon careful review, we cannot rashly agree to the license , as we do not believe Nike would have any viable or actionable claims against Nowhere/Bape at this late stage, if at all.”

There has long been speculation that Bape evaded a lawsuit from Nike for years because of an agreement between the two, and the reference in the email to a possible licensing deal is the first real indication that Nike may eventually have one contemplated such an agreement.

“We may be missing something,” Bape’s quoted email continues, “so in the interests of mutual cooperation, we would be more than willing to reconsider our position, provided you explicitly explain to us what allegations Nike believes are possible.” Advance against Nowhere/Bape. Once we receive this information, we can review your license offer more fully. I look forward to hearing from you.”

Nike’s lawyers referenced Nike’s 2009 meeting with Bape in their first complaint, saying the streetwear brand scaled back its US business after the meeting.

Nike Brass was already familiar with Bape. A person once close to the sneaker brand’s leadership tells Complex that Mark Parker, who served as Nike’s CEO from 2006 to 2020, met Bape founder Nigo in Japan in the early 2000s.

In the motion for a pre-conference motion, Bape’s attorneys say Nike withdrew from the dispute in 2009 after being specifically asked about the claims it had against Bape.

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“Three years later, in 2012, Nike introduced Bape to its new in-house counsel and indicated that he wanted to further discuss Nike’s concerns about the Bape Sta sneakers,” Bape’s attorneys say. “But Nike’s new in-house counsel never contacted Bape.”

Bape’s legal team says the brand did not hear from Nike’s attorney until the warning letter, which was received ahead of the trademark infringement lawsuit filed in January.

Now Bape wants Nike’s lawsuit dismissed. In the lawsuit, Nike says Bape’s shoes, which are based on popular Nike models such as the Air Force 1, Air Jordan 1 and Dunk, violate those designs’ trade dress, which is a trademark that protects their physical appearance.

Bape’s attorneys say Nike’s complaint does not adequately identify the distinctive elements that make up its trade attire for those shoes. The lawsuit includes trademark registration numbers, drawings, and photos of the accompanying shoes, but Bape argues that’s not enough.

“Nike has no choice but to name the elements of its trade dress or have its lawsuit dismissed,” Bape’s attorneys say.

Nike plans to appeal the layoff request, according to the letter filed on Friday.