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Never a Dull Day in the 2nd Circuit

November 15, 2011 In Blog, Trademark By Amy Dunayevich

Never a Dull Day in the 2nd Circuit

“Nike was recently rewarded for pulling a potentially risky litigation move: trying to avoid a troublesome DJ/cancellation counterclaim by unilaterally issuing a broad covenant-not-to-sue,” reports SecondaryMeaning blog. “This move is a little like surrendering without knowing for sure if the adversary can shoot you when you raise your hands.”

Nike filed an action alleging Yums infringed on Nike’s marks for its “Air Force 1” shoes.  Yums filed a counterclaim for a DJ of invalidity and a demand that Nike’s registrations be cancelled.

But Nike faught back and sent Yums a covenant not to sue for footwear “based on the appearance of any [of Yum’s] current and/or previous footwear product designs.” Nike then moved to dismiss: (1) its own infringement claims without prejudice under FRCP 41(a)(2) and (2) Yum’s counterclaim without prejudice for lack of a case or controversy under FRCP 12(b)(1).

In the end, the Second Circuit agreed with Nike that a covenant covering future as well as past alleged infringement ends the case or controversy between the parties and the counterclaim was dismissed.

For more information , click here.

 

Thank you to Editor-in-Chief Jacqueline McMahon for the links!

Amy Dunayevich

Amy Dunayevich is a third year student at Fordham University School of Law and is Fordham IPLJ's Technology Editor. Originally from the Detroit suburbs, Amy spent two years in the Peace Corps living in Eastern Europe without running water but with high-speed internet. Amy now lives in Brooklyn with her little black pug Roxanne. Although pursuing a career in the public interest, Amy finds intellectual property law to be extremely relevant, interesting, and important.