United States: When Can You Moot A Lawsuit That You Brought Yourself?

Last Updated: June 13 2013
Article by Judith R. Blakeway

As a general rule, courts decide cases or controversies; they do not render advisory opinions in the absence of a real dispute. Of course, a defendant cannot automatically moot a case simply by ending its unlawful conduct once sued. Otherwise, a defendant could engage in unlawful conduct, stop when sued to have the case declared moot, and then pick up where he left off. To address this concern, the "voluntary cessation doctrine" provides that a defendant claiming that its voluntary compliance moots a case bears the burden of showing that the alleged wrongful behavior could not reasonably be expected to recur.

The Supreme Court recently had occasion to apply the doctrine in the case of Already, LLC v. Nike, Inc., 133 S.Ct. 721 (Jan. 9, 2013). In that case, Nike sued Already for trademark infringement for illegally copying its "Air Force 1" shoes. Already counterclaimed that Nike's mark was invalid and asked a federal judge to cancel it.

Nike soon concluded that the counterclaim was a greater threat to its brand than sales of Already's similar shoes. So it sent Already a "covenant not to sue" promising that Nike would not raise against Already or any affiliated entity any trademark or unfair competition claim based on Already's existing footwear designs or any "colorable imitations". Nike then moved to dismiss its claims with prejudice and to dismiss Already's invalidity counterclaim without prejudice because the controversy was "mooted" by Nike's covenant. The district court dismissed the entire case. The Second Circuit affirmed.

The Supreme Court formulated the question as "whether a covenant not to enforce a trademark against a competitor's existing products and any future colorable imitations moots the competitor's action to have the trademark declared invalid?" The Court held that Nike's covenant had that effect for two reasons. First, the breadth of the covenant sufficed to meet the burden imposed by the voluntary cessation test because it was unconditional, irrevocable, prohibited Nike from making any claim or any demand, reached beyond Already to protect Already's distributors and customers, and covered not just current or previous designs, but any colorable imitations. Second, Already had not produced any evidence that it intended to produce a new design of shoes that might run afoul of the trademark and be outside Nike's promise not to sue, or as Justice Roberts said: "If such a shoe exists, the parties have not pointed to it, there is no evidence that Already has dreamt of it, and we cannot conceive of it. It sits, as far as we can tell, on a shelf between Dorothy's ruby slippers and Perseus's winged sandals."

Given the covenant's broad language and Already's failure to assert any intent to design or market a shoe that would expose it to infringement liability, the Court concluded the case was moot because the challenged conduct could not reasonably be expected to recur.

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