No PI where individual defendant has left allegedly trademark-infringing role

Nigerians in Diaspora Organization Americas v. Key, 2021 WL
811094, No. 19-3015 (RDM) (D.D.C. Mar. 3, 2021)

“NIDOA is a continental nonprofit organization that
advocates for the interests of Nigerians in the Western Hemisphere.”  It alleged that, under the continental
organization’s bylaws, defendant Key’s term in office as the chairperson of the
Board of Directors expired in 2019, but Key and her associates refused to cede
control. Thus, two separate groups claim to be the Board. NIDOA’s theory is
that Key is infringing NIDOA’s trademarks by continuing to act in the name of

“While the dispute between the dueling Boards continues, Key
has now relinquished her position on the holdover Board of Directors and has
thus ceased the activities that arguably infringed the trademarks.” Thus, the
request for preliminary injunction was moot, and NIDOA didn’t show likely
irreparable injury despite evidence that having two competing Boards caused
some confusion and some loss of goodwill and donations for NIDOA and for the
Board elected in 2019. For example, a member messaged one NIDOA person through
WhatsApp to report a $100 donation for a COVID-19 fundraiser, but it turned out
that the money had accidentally been sent to Key’s Board of Directors, when the
member intended to send the money to the Board of Directors elected in 2019. In
another WhatsApp message, a different NIDOA member observed that a press
release from Key was “very[,] very confusing” and complained that the “faction”
within NIDOA “sends a wrong signal to the outside world.”

Key satisfied the stringent standards for mootness due to
voluntary cessation—at least while the case was pending final resolution, as
appropriate for a preliminary injunction. NIDOA was challenging the activities
of the holdover Board, not of Key as an individual; many of the documents that
allegedly infringed its mark didn’t use her name at all or listed her with
other Directors. “[T]here is no basis to find that she will continue to
infringe Plaintiff’s trademarks during the pendency of this action, now that
she is no longer a member of that board.” Nor was the equitable power to enjoin
third parties as successors an interest an exception to the mootness doctrine.
The court would not enjoin third parties “even though the claim for a
preliminary injunction against Key, the only defendant named in the case, is
moot.”  Nor did NIDOA show that the other
Board members were in privity with Key or are acting as her agents. NIDOA
decided whom to sue, and chose only Key, not the entire holdover Board; it
opposed the intervention of the entity representing the holdover Board; it
didn’t seek to add the holdover Board as a party.

However, the court reserved judgment on NIDOA’s damages
claims and permanent injunctive relief.

Even if the claim weren’t moot, NIDOA failed to show
irreparable harm. Apparently uninformed about the TMA’s change in the standard,
the court held that there was no presumption of irreparable harm. Interesting
question: would cessation rebut the presumption if it had been properly
applied? The court concluded: “Ongoing confusion allegedly caused by Key’s past
acts is insufficient to support injunctive relief, in the absence of some
likelihood that Key will take similar actions again in the future.”

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