Fleet Feet, Inc. v. Nike, Inc.
986 F.3d 458
| 4th Cir. | 2021Background
- Fleet Feet, a national running retailer, has used the marks “Running Changes Everything” (since 2009) and “Change Everything” (since 2013) and registered them (2015 and 2020).
- In July 2019 NIKE launched a broad advertising campaign using the tagline “Sport Changes Everything,” running across media and retail channels through the 2020 Super Bowl.
- Fleet Feet sued for trademark infringement and obtained a preliminary injunction barring NIKE from using “Sport Changes Everything” or any designation "confusingly similar" to Fleet Feet’s marks; the court set a $1 million injunction bond.
- NIKE appealed the preliminary injunction and sought a stay; both the district court and this court denied stays. NIKE discontinued the campaign before its scheduled end and represented it would not resume using the tagline.
- The Fourth Circuit held NIKE’s appeal of the preliminary injunction moot because NIKE ceased the challenged campaign and disavowed future use, denied NIKE’s request to vacate the injunction, and remanded for further district-court proceedings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Mootness: Does NIKE’s cessation of the campaign and disavowal of future use render its appeal of the preliminary injunction moot? | The injunction is necessary to stop ongoing and imminent infringement; appeal should be heard. | Ending the campaign and promising not to resume leaves no live controversy; appeal is moot. | Appeal dismissed as moot: campaign end + NIKE’s disavowal foreclose effective appellate relief. |
| Does the injunction’s language banning "confusingly similar" uses keep a live controversy? | The broad language continues to restrain NIKE’s speech and raises a live issue. | The clause merely restates trademark law; NIKE identified no present or intended new slogan, so no actual injury. | Not live: absent any present or planned use of a confusingly similar mark, the claim is speculative and cannot sustain the appeal. |
| Does the injunction bond preserve an appealable controversy? | Bond preserves NIKE’s right to recover for wrongful injunction, keeping dispute live on appeal. | Bond preserves only monetary recovery; it does not keep the injunctive appeal live when the injunctive relief is moot. | Bond does not save the appeal of the preliminary injunction; bond limits the dispute to damages, which must be resolved in the district court. |
| Should the court vacate the preliminary injunction as equity because appeal became moot? | Vacatur is necessary to avoid leaving an unreviewable adverse ruling in place. | Vacatur is unnecessary for a preliminary injunction in ongoing litigation because it has no preclusive effect and the district court will address merits. | Denied: vacatur not warranted; preliminary injunction review will be available in the district court’s final proceedings. |
Key Cases Cited
- Winter v. Nat’l Res. Def. Council, Inc., 555 U.S. 7 (2008) (sets the four-factor standard for preliminary injunctions)
- Univ. of Tex. v. Camenisch, 451 U.S. 390 (1981) (preliminary injunction mootness: bond preserves monetary claims but injunctive appeal may become moot and merge into merits)
- Grupo Mexicano de Desarrollo S.A. v. All. Bond Fund, Inc., 527 U.S. 308 (1999) (exception where a preliminary injunction restrains otherwise lawful conduct independent of merits)
- U.S. Bancorp Mortgage Co. v. Bonner Mall P’ship, 513 U.S. 18 (1994) (vacatur appropriate when mootness frustrates appellate review through no fault of the appellant)
- Munsingwear, Inc. v. X, 340 U.S. 36 (1950) (vacatur and remand when a case becomes moot pending appeal to clear the path for further relitigation)
- City of Erie v. Pap’s A.M., 529 U.S. 277 (2000) (voluntary cessation by a defendant does not automatically render a case moot if recurrence is reasonably possible)