WASHINGTON — The Supreme Court Wednesday handed down a unanimous decision in favor of Nike Inc. in a trademark dispute over a footwear design with Already LLC, a Dallas-based apparel and footwear company doing business under the brand name Yums.
The justices ruled that an action filed by Already seeking to declare Nike’s trademark on a footwear design invalid was moot because Nike had already signed a covenant not to enforce its trademark against the company’s footwear style.
The Supreme Court case, which was brought by Already, grew out of a trademark infringement lawsuit that Nike filed against Already in 2009. In that case Nike alleged that two of Already’s athletic shoes violated Nike’s Air Force 1 trademark.
Denying those allegations, Already filed a counterclaim against Nike and challenged the validity of Nike’s Air Force 1 trademark.
However, while the suit was pending, Nike reversed course and issued a “covenant not to sue,” promising not to raise any infringement or unfair competition claims against Already’s existing footwear designs or any future designs that constituted a “colorable imitation” of current products, according to the court.
Nike moved to dismiss its claims, as well as Already’s counterclaim, but Already opposed the dismissal of its counterclaim. Already provided affidavits from three potential investors who asserted they would not invest in any new versions of its footwear lines until Nike’s trademark was invalidated. An executive also gave an affidavit that Nike had intimidated retailers into refusing to carry the company’s shoes, the court said.
The District Court dismissed Already’s counterclaim to invalidate Nike’s trademark, concluding that was no longer a controversy because Nike had signed the covenant not to sue, and the Second Circuit Court of Appeals affirmed the lower court’s ruling.
In the majority opinion, Chief Justice John Roberts said the case, like others, had become “moot” because “the issues presented are no longer ‘live’ or the parties lack a legally cognizable interest.”
Roberts said that Nike had met the burden of proving that it would not resume its enforcement activity. “The covenant is unconditional and irrevocable,” Roberts wrote. “It prohibits Nike from filing suit or making any claim or demand; protects both Already and Already’s distributors and customers, and covers not just current or previous designs, but also colorable imitations.”
EXCLUSIVE: @tomford is opening its first-ever beauty store. The boutique, which opens November 20 in London’s Covent Gardens, was designed with the over-the-top glam Ford is known for. Read the full story on WWD.com, link in bio. #wwdbeauty #wwdnews (📷: Simon Wagner) #TomFordBeauty
New York-based DJ @harleyvnewton threw a party to celebrate the holiday collection of her dress and pajama line @hvn at the Ladurée Beverly Hills. It Girls @katebosworth, @rashidajones and more joined in on the fun, which included cocktails, croque monsieur sandwiches and a photo booth. #wwdfashion (📷: Owen Kolasinski/BFA.com)
For the holidays, @Burberry partnered with 20-year-old artist @blondeymccoy on a series of three outdoor murals in downtown Manhattan. The murals are McCoy’s interpretation of a Christmas eve party, the idea of charity and the spirit of family. His third mural, pictured here, is the most personal. The image depicts McCoy’s grandparents and father in London’s Trafalgar Square in the Seventies. “My work often features lots of sentimental objects.” #wwdeye
For spring 2018, designers applied bold colors and cartoonish motifs on everything from sneakers and belts to key chains. See all the top men’s accessories trends on WWD.com. #wwdtrends (📷: George Chinsee; Prop Styling by @rnasti; Market Editor: @luiscampuzano)
The @dior-sponsored @guggenheim international gala pre-party has a history of drawing cool-girl musical acts to serenade the crowd –– and last night was no exception. @haimtheband performed songs both new and old, and lured a star-studded audience with the likes of Rebecca Hall, Kate Mara, Mamoudou Athie and more. #wwdeye (📷: @lexieblacklock)
In a partnership between the @metopera and the @englishnationalopera, “Marnie” was born. The opera, with costumes sponsored by @mrporterlive, is an adaptation of the 1961 thriller by Winston Graham. Arianne Phillips, who created the costumes, is no rookie: She’s styled Madonna for her tours and created costumes for a myriad of films in the past. Read WWD’s interview with Phillips, where she talks about her inspiration for the opera’s costumes on WWD.com #wwdfashion
@barneysnyc took a different approach to their holiday windows this year. Instead of Christmas decor, Barneys tapped @thehaasbrothers to tell a story of positivity, gratitude and inclusivity via heartwarming silliness and humor. “It’s about kids and it’s about coming together and being family and loving each other,” said Simon Haas. #wwdfashion (📷: @joshuascottphoto)
Beauty influencer @kandeejohnson makes her foray into hair care with a collaboration with @ogx_beauty — making it the first time that OGX has teamed up for a product creation. The collab includes shampoos and conditioners in three scents. At 39 and a mom, Johnson is a different profile than the emerging social media stars, but is considered one of the pioneers of the digital beauty influencer world. Read WWD’s interview with her on wwd.com, including the strangest beauty product she’s ever tried #wwdbeauty