Nov. 7 Already v. Nike Oral Argument Recap
Already LLC v. Nike, Inc.: A Post-Argument Discussion
Wednesday, November 7, 2012
Room 603, American University Washington College of Law
For Registration and More Info: https://www.wcl.american.edu/secle/cle_form.cfm
For Live Webcast: click here (webcast available at program start)
Already LLC, doing business as YUMS, designs and produces athletic footwear. Already and Nike produce shoes that look similar. Already received a design patent from the U.S. Patent and Trademark Office for its shoe. Nike received a trademark registration for its design from the same office. Nike sued Already for trademark infringement and trademark dilution seeking a preliminary injunction. Already defended, in part, by asserting a counterclaim challenging the validity of Nike’s trademark and seeking a declaratory judgment of non-infringement. In the midst of discovery, Nike sent Already a “Covenant Not to Sue” asserting the validity of its rights but stating that the cost of litigation was no longer worth bearing with respect to any alleged infringements caused by sale of YUMS current or past shoes.
Nike filed a motion to dismiss the lawsuit, which Already opposed because it wished to obtain cancellation of Nike’s trademark registration and a declaratory judgment. The district court dismissed the lawsuit, the Second Circuit affirmed, and the Supreme Court granted certiorari on the question: “Whether a federal district court is divested of Article III jurisdiction over a party’s challenge to the validity of a federally registered trademark if the registrant promises not to assert its mark against the party’s then-existing commercial activities.” Although this is a question of constitutional law, this issue is highly pertinent in the fields of both trademark and patent law because the scenario is not uncommon.
James Dabney – Fried, Frank, Harris, Shriver & Jacobson LLP, Counsel for Petitioner (also a Professor of Law at Cornell University)
John Duffy – Fried, Frank, Harris, Shriver & Jacobson LLP , Counsel for Petitioner (also a Professor of Law at the University of Virginia)
Jonas Anderson – Assistant Professor of Law, American University Washington College of Law (will comment on the patent perspective)
Amanda Frost – Professor of Law, American University Washington College of Law (will present Nike’s argument and comment on the Article III question)
Christine Haight Farley – Professor of Law, American University Washington College of Law, Moderator and Trademark commentator
The shoes in suit:
Figure from Already’s YUMS shoe design patent registration.
Figure from Nike’s trademark registration.