[Ip-health] Post-Argument Recap - Already v. Nike THANKS

Sean Flynn sflynn at wcl.american.edu
Tue Nov 6 12:20:40 PST 2012

    While our Kirtsaeng event was washed away by the hurricane, we're
back again with another Supreme Court event, live webcast tomorrow . . .





Already LLC v. Nike, Inc.: A Post-Argument Discussion


Wednesday, November 7, 2012


Room 603, American University Washington College of Law

For Registration: https://www.wcl.american.edu/secle/cle_form.cfm

For Live Webcast and More Info:


Already LLC, doing business as YUMS, designs and produces athletic
footwear.  Already and Nike produce shoes alleged to 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 of a rights-owner that does not wish to litigate
the validity of its rights after having asserted them is not uncommon.


James W. Dabney - Fried, Frank, Harris, Shriver & Jacobson LLP, Counsel
for Petitioner (also a Professor of Law at Cornell University)

John F. 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
Christine Haight Farley - Professor of Law, American University
Washington College of Law, Moderator and Trademark commentator


The papers:





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