Already, LLC v. Nike, Inc.
133 S. Ct. 721
| SCOTUS | 2013Background
- Nike sued Already for infringement of the Air Force 1 trademark and Already counterclaimed that Nike's mark is invalid.
- Nike issued a Covenant Not to Sue in March 2010 promising not to assert trademark or unfair-competition claims based on Already’s current or future colorable imitations.
- Nike moved to dismiss its claims with prejudice and Already’s invalidity counterclaim without prejudice, arguing the covenant moots the case.
- District Court dismissed the counterclaim; the Second Circuit affirmed, crediting the covenant as broad and covering all potential colorable imitations.
- The central issue became whether the covenant rendered the dispute moot under the voluntary-cessation doctrine, and whether there are any remaining Article III injuries.
- The Court ultimately held the case moot, applying the voluntary-cessation test and finding no live controversy or cognizable standing.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does the covenant moot the case under voluntary cessation? | Already contends the covenant is broad but could allow future, not covered infringements. | Nike argues the covenant shows no reasonable expectation of recurrence and thus moots the case. | Yes; the case is moot due to the covenant's breadth and lack of anticipated infringement. |
| Does Already have Article III standing given the covenant? | Already asserts injuries from investor and retailer concerns and ongoing trademark enforcement. | Nike contends there are no live injuries once the covenant is in place. | No; standing fails because no live controversy remains after the covenant. |
| Is remand appropriate to develop the record on covenant scope or business plans? | Remand could allow refinement of the record on scope and future activity. | Remand would be unnecessary as the covenant's breadth is clear and Already offered no plans outside it. | Remand not needed; the record shows mootness with the covenant's breadth. |
| Is the covenant's breadth sufficient to sustain mootness under voluntary cessation? | Covenant may not adequately extinguish anticipated future claims. | Covenant is unconditional, irrevocable, covers all current and colorable imitations, and protects distributors and customers. | Yes; the covenant's breadth suffices to eliminate the likelihood of recurrence. |
| Do alternative injuries save the case from mootness or confer standing? | Investors’ hesitancy and fear of continued trademark enforcement could sustain injury. | Such injuries are not concrete harms if recurrence is not reasonably likely and the covenant protects relevant actors. | No; alternative injuries do not provide standing once recurrence is not reasonably likely. |
Key Cases Cited
- Murphy v. Hunt, 455 U.S. 478 (1982) (mootness when there is no longer a live case or controversy)
- City of Mesquite v. Aladdin's Castle, Inc., 455 U.S. 283 (1982) (voluntary cessation not automatic mootness; burden on defendant to show no recurrence)
- Friends of the Earth, Inc. v. Laidlaw Environmental Services (TOC), Inc., 528 U.S. 167 (2000) (formidable burden on showing no reasonable recurrence of wrongful conduct)
- Deakins v. Monaghan, 484 U.S. 193 (1988) (illustrates voluntary cessation analysis; recurrence must be not reasonably likely)
- Cardinal Chemical Co. v. Morton Int'l, Inc., 508 U.S. 83 (1993) (two grounds in a decree do not moot the other; jurisdiction analysis matters)
- Altvater v. Freeman, 319 U.S. 359 (1943) (live controversy in continuing activity or claims; relevance to mootness and patent context)