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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