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 NIDOA-USA.

“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.”