1 - OPINION & ORDER

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

ADIDAS AMERICA, INC. and 

ADIDAS AG,

No. 3:16-cv-00415-HZ

Plaintiffs/ Counter Defendants,

OPINION & ORDER

v.

ATHLETIC PROPULSION LABS, LLC,

Defendant/ Counter Claimant.

Charles H. Hooker, III

R. Charles Henn, Jr. 

Kilpatrick Townsend & Stockton, LLP

1100 Peachtree St., Suite 2800

Atlanta, GA 30309

Stephen M. Feldman

Perkins Coie, LLP

1120 NW Couch St., 10th Floor

Portland, OR 97209

Attorneys for Plaintiff

Case 3:16-cv-00415-HZ Document 40 Filed 07/18/16 Page 1 of 13
2 - OPINION & ORDER

A. Louis Dorny

Richard P. Sybert

Gordon & Rees LLP

1001 SW 5th Ave., Suite 1100

Portland, OR 97204

David W. Cramer

Martin Bischoff Templeton Langslet & Hoffman

888 SW Fifth Ave., Suite 900

Portland, OR 97204

Attorneys for Defendant

HERNÁNDEZ, District Judge:

Plaintiffs adidas America, Inc. and adidas AG (collectively, “adidas”) allege claims of 

trademark infringement, unfair competition, trademark dilution, and deceptive trade practices 

against Defendant Athletic Propulsion Labs, LLC (“APL”). APL moves to transfer venue to the 

Southern District of California. Because the multi-factor analysis which guides the Court’s 

decision to transfer venue is essentially balanced between the parties, the Court defers to adidas’s

choice of venue. Accordingly, APL’s motion is denied. 

BACKGROUND

adidas AG is a German company. Compl. ¶ 4, ECF 1. adidas America, Inc. is a Delaware 

corporation with its principal place of business in Portland, Oregon. Id. at ¶ 5. adidas America 

directs all U.S.-based operations on behalf of adidas AG, including sales, brand marketing, 

product marketing, product design, public relations, distribution, enforcement, and licensing of 

and for adidas-branded merchandise. Id.

APL is a California company with its principal place of business in Beverly Hills, 

California. Id. at ¶ 6. APL is a small company with ten employees and two locations within Los 

Angeles County. Goldston Decl. ¶ 3, ECF 14. All of APL’s products, product ideas, and 

intellectual property are created and developed in southern California. Id. at ¶ 4. 

Case 3:16-cv-00415-HZ Document 40 Filed 07/18/16 Page 2 of 13
3 - OPINION & ORDER

adidas manufactures footwear, among other products. Over sixty years ago, adidas began 

placing three parallel stripes on its athletic shoes. Compl. ¶ 7. This trademarked “Three StripeMark” has come to signify the adidas brand. Id. at ¶¶ 10-11. The essence of adidas’s allegations 

in this case is that APL is designing, manufacturing, marketing, and selling footwear that “bears 

confusingly similar imitations of adidas’s Three-Stripe Mark.” Id. at ¶ 25. Specifically, adidas 

contends that APL has created footwear bearing four stripes in order to trade on the goodwill 

associated with adidas’s Three-Stripe Mark. Id. at ¶ 32. adidas alleges APL’s actions have 

diluted adidas’s Three-Stripe Mark and caused adidas substantial injury. Id. at ¶¶ 35-62. 

adidas brings the following claims against APL: (1) federal trademark infringement, in 

violation of 15 U.S.C.§§ 1114 and 1125(a); (2) federal unfair competition in violation of 15 

U.S.C. § 1125(a); (3) unfair and deceptive trade practices, in violation of the statutes of several 

states1; (4) common law trademark infringement and unfair competition; (5) federal trademark 

dilution, in violation of 15 U.S.C. § 1125(c); and (6) state trademark dilution, in violation of the 

statutes of several states.

2

STANDARDS

A motion to transfer venue is governed by 28 U.S.C. § 1404(a), which provides that 

“[f]or the convenience of the parties and witnesses, in the interest of justice, a district court may 

transfer any civil action to any other district or division where the action might have been 

brought[.]” The purpose of the 28 U.S.C. § 1404(a) is to “prevent the waste of time, energy and 

money and to protect litigants, witnesses, and the public against unnecessary inconvenience and 

 

1 The states include California, Colorado, Delaware, Georgia, Hawaii, Illinois, Maine, Minnesota, 

Nebraska, New Mexico, New York, Ohio, and Oklahoma. Compl. ¶ 47. 

2 The states include Oregon, Alabama, Alaska, Arizona, Arkansas, California, Connecticut, Delaware, 

Florida, Georgia, Hawaii, Idaho, Illinois, Iowa, Indiana, Kansas, Louisiana, Maine, Massachusetts, 

Minnesota, Mississippi, Montana, Nebraska, Nevada, New Hampshire, New Jersey, New Mexico, New 

York, Pennsylvania, Rhode Island, Tennessee, Texas, Utah, Washington, West Virginia, and Wyoming. 

Compl. ¶ 62.

Case 3:16-cv-00415-HZ Document 40 Filed 07/18/16 Page 3 of 13
4 - OPINION & ORDER

expense.” Van Dusen v. Barrack, 376 U.S. 612, 616 (1964) (internal citation and quotation 

marks omitted).

A motion to transfer lies within the broad discretion of the district court and must be 

determined on a case-by-case basis. See Jones v. GNC Franchising, Inc., 211 F.3d 495, 498 (9th 

Cir. 2000). However, the burden is on the moving party to demonstrate that the balance of 

conveniences favoring the transfer is high. The defendant must make “a clear showing of facts 

which . . . establish such oppression and vexation of a defendant as to be out of proportion to 

plaintiff’s convenience, which may be shown to be slight or nonexistent.” Dole Food Co. v. 

Watts, 303 F.3d 1104, 1118 (9th Cir. 2002). 

Courts employ a two-step analysis when determining whether transfer is proper. First, a 

court must ask “whether the transferee district was one in which the action might have been 

brought by the plaintiff.” Hoffman v. Blaski, 363 U.S. 335, 343–44 (1960). Second, if the 

moving party has made this threshold showing, courts may consider “individualized, case-bycase consideration[s] of convenience and fairness.” Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 

22, 29 (1988). 

DISCUSSION

APL moves to transfer venue to the Southern District of California. It is undisputed that 

this case could have been brought in that district; therefore, the Court considers the issues of

convenience and fairness.3

The Ninth Circuit has identified a number of public and private interest factors that a 

district court may consider. See Tuazon v. R.J. Reynolds Tobacco Co., 433 F.3d 1163, 1180 (9th 

 

3

In its reply brief, APL raises evidentiary objections to adidas’s submission of the declaration of Charles 

H. Hooker III and its supporting exhibit. See Hooker Decl., ECF 23. The Court did not consider Mr. 

Hooker’s declaration or the supporting exhibit in reaching its decision. Accordingly, there is no need to 

rule on APL’s evidentiary objections. 

Case 3:16-cv-00415-HZ Document 40 Filed 07/18/16 Page 4 of 13
5 - OPINION & ORDER

Cir. 2006) (“Even when an adequate alternative forum exists, we will not disturb the plaintiff's 

original choice of forum unless the private interest and the public interest factors strongly favor 

dismissal.”) (internal quotation marks and citation omitted). This Court may consider: (1) the 

plaintiff’s choice of forum, (2) the parties’ contacts with the forum, (3) convenience to the 

parties, (4) convenience to the witnesses, (5) availability of compulsory process for non-party 

witnesses, (6) ease of access to evidence, (7) differences in the costs of litigation in the two 

forums, (8) familiarity of each forum with the applicable law, (9) local interest in the 

controversy, and (10) the relative court congestion and time of trial in each forum. Jones, 211 

F.3d at 498 (citing Stewart, 487 U.S. at 29–31); Decker Coal Co. v. Commonwealth Edison Co.,

805 F.2d 834, 843 (9th Cir. 1986); Columbia Sportswear N. Am., Inc. v. Seirus Innovative 

Accessories, No. 3:15-CV-00064-HZ, 2015 WL 3986148, at *5 (D. Or. June 29, 2015)4. 

I. Plaintiff’s choice of forum

The parties’ primary dispute centers on the importance of adidas’s choice of forum. 

While APL acknowledges in its motion to transfer venue that adidas’s choice of forum disfavors 

transfer, APL completely changes tack in its reply, arguing that adidas’s choice of forum “is not 

entitled to great deference” because adidas America lacks standing and adidas AG, a foreign 

corporation, “is the plaintiff that counts.” Def.’s Reply 4, ECF 29. The Court allowed adidas to 

respond to address the standing argument raised for the first time in APL’s reply. See Order, 

June 22, 2016, ECF 34. Subsequently, APL filed an additional response, which this Court 

considered.

The Ninth Circuit Court of Appeals has explained:

 

4 APL also urges the Court to consider “enforceability of a judgment” as a factor. Def.’s Mot. 10, ECF 13. 

However, APL cites no controlling authority that identifies this factor as relevant in a § 1404 analysis. 

The Court declines to analyze this as a separate factor. However, even if it did, the Court’s conclusion to 

deny the motion to transfer would not change.

Case 3:16-cv-00415-HZ Document 40 Filed 07/18/16 Page 5 of 13
6 - OPINION & ORDER

To establish standing to sue for trademark infringement under the Lanham Act, a plaintiff 

must show that he or she is either (1) the owner of a federal mark registration, (2) the 

owner of an unregistered mark, or (3) a nonowner with a cognizable interest in the 

allegedly infringed trademark. See 15 U.S.C. §§ 1114(1), 1125(a); 5 J. Thomas 

McCarthy, McCarthy on Trademarks and Unfair Competition §§ 27:20–21, 32:3, 32:12 

(4th ed. 2008) (noting that standing to sue for trademark infringement under the Lanham 

Act extends to owners of registered and unregistered marks, and nonowners with a

protectable interest in the mark); see also Nat'l Licensing Ass'n, LLC v. Inland Joseph 

Fruit Co., 361 F. Supp. 2d 1244, 1256 (E.D. Wash. 2004) (“[T]o maintain a [claim under 

§ 1125(a)], the plaintiff must show that it has a commercial interest in the allegedly 

misused mark that is ‘likely to be damaged.’” (citing Waits v. Frito–Lay, Inc., 978 F.2d 

1093, 1109 (9th Cir. 1992))).

Halicki Films, LLC v. Sanderson Sales & Mktg., 547 F.3d 1213, 1225-26 (9th Cir. 2008).

APL argues that adidas America lacks standing to sue for federal trademark infringement

because it is merely a non-exclusive licensee of the trademarks whose value is held by adidas 

AG. APL cites various cases for the proposition that “[n]on-exclusive licensees lack standing to 

sue for infringement because they lack the requisite commercial interest in the mark.” Def.’s 

Reply 5, ECF 29. 

APL’s argument fails. APL only addresses adidas’s trademark infringement claim, even 

though adidas brings claims of unfair competition and trademark dilution as well. APL relies on 

cases and principles of patent law and fails to address § 43(a) of the Lanham Act, which permits 

a broader class of plaintiffs standing than § 32(a). Compare 15 U.S.C. § 1125(a) with 15 U.S.C.

§ 1114(1). See also Nat'l Licensing, 361 F. Supp. 2d at 1256 (“Where a plaintiff might lack 

standing under § 32, a plaintiff may yet have standing to bring an action under § 43(a).”); 

Murphy v. Provident Mutual Life Ins. Co., 756 F. Supp. 83, 86 (D. Conn.) (“[T]he question of 

ownership is immaterial to standing under § 43(a), since standing may lie with mere users of 

trademarks.”), aff'd, 923 F.2d 923 (2d Cir. 1990); Silverstar Enters., Inc. v. Aday, 537 F. Supp. 

236, 241 (S.D.N.Y. 1982) (holding that because § 43 is broader than § 32, users of trademarks 

who are not owners of the marks might have standing).

Case 3:16-cv-00415-HZ Document 40 Filed 07/18/16 Page 6 of 13
7 - OPINION & ORDER

The case APL relies on most heavily, adidas AG v. Under Armour, Inc., No. CV 14-130-

GMS, 2015 WL 3764829, at *1 (D. Del. June 15, 2015) only discusses standing in a patent 

infringement lawsuit. The sole case cited by APL that addresses § 43(a) standing in a trademark 

case found that a plaintiff, Visa U.S.A., lacked standing to sue because the license agreement 

between Visa U.S.A. and Visa International “specifically and expressly” forbade the litigation of 

the VISA marks by Visa U.S.A. Visa U.S.A. Inc. v. First Data Corp., No. C 02-01786 JSW, 

2005 WL 6271242, at *5 (N.D. Cal. Aug. 16, 2005). The Court is unaware of any such license 

agreement in this case. Therefore, contrary to APL’s assertion, so long as adidas America can 

show that it has a commercial interest in the allegedly misused mark that is likely to be damaged, 

then adidas America may have standing. Id.

APL also makes much of the fact that adidas America is a non-exclusive licensee. 

However, APL fails to cite any authority for the proposition that a non-exclusive licensee 

necessarily lacks standing under § 43(a). As discussed above, Visa U.S.A. Inc. did not hold that a 

non-exclusive licensee, in the absence of a license agreement forbidding that licensee from 

engaging in litigation, lacked standing. In fact, courts have found trademark licensees to have 

§43(a) standing, even when those licensees are non-exclusive. See, e.g., Shell Co. v. Los Frailes 

Serv. Station, Inc., 596 F. Supp. 2d 193, 203 (D.P.R. 2008), aff'd sub nom. The Shell Co. (Puerto 

Rico) v. Los Frailes Serv. Station, Inc., 605 F.3d 10 (1st Cir. 2010) (“Courts have allowed 

licensees (exclusive or nonexclusive) . . . to bring claims pursuant to section 1125(1).”); 

Quabaug Rubber Co. v. Fabiano Shoe Co., 567 F.2d 154, 159-60 (1st Cir. 1977) (dismissing 

plaintiff’s claims under § 32 because plaintiff was not a “registrant” or “exclusive licensee” but 

allowing plaintiff’s claim to proceed under § 43).

Case 3:16-cv-00415-HZ Document 40 Filed 07/18/16 Page 7 of 13
8 - OPINION & ORDER

In its complaint, adidas asserts that adidas America “directs all U.S.-based operations on 

behalf of adidas AG, including sales, brand marketing, product marketing, product design, public 

relations, distribution, enforcement, and licensing of and for ADIDAS-branded merchandise, 

including goods bearing the distinctive Three-Stripe Mark.” Compl. ¶ 5; see also Vanderhoff 

Decl. ¶ 3, ECF 24. adidas America is a licensee of the Three-Stripe Mark and contends that it 

“has been and continues to be damaged by [APL’s] infringement of the Three-Stripe Mark.” 

Second Vanderhoff Decl. ¶¶ 3-4, ECF 36. The Court finds that, at this stage of the litigation5and 

without any further evidence presented, adidas sufficiently demonstrates that adidas America has 

standing to sue under § 43 of the Lanham Act. 

The Court’s conclusion that adidas America is a proper plaintiff compels the Court to 

give substantial deference to adidas’s choice of the District of Oregon. Piper Aircraft Co. v. 

Reyno, 454 U.S. 235, 255 (1981) (“[T]here is ordinarily a strong presumption in favor of the 

plaintiff's choice of forum, which may be overcome only when the private and public interest 

factors clearly point towards trial in the alternative forum.”); see also Decker Coal, 805 F.2d at 

843 (“The defendant must make a strong showing of inconvenience to warrant upsetting the 

plaintiff's choice of forum.”); Adidas Am., Inc. v. Cougar Sport, Inc., No. 3:15-CV-01856-SI, 

2016 WL 1054581, at *10 (D. Or. Mar. 14, 2016) (holding that because adidas had its United 

States headquarters and principal place of business in Oregon, adidas’s choice of forum was 

given “great weight”). 

II. Cost of litigation and convenience to the parties and witnesses 

Each party argues that most of the witnesses are located in its preferred venue. 

Additionally, APL argues that this Court should consider the financial disparity between the 

 

5 APL has not moved to dismiss adidas America for lack of standing.

Case 3:16-cv-00415-HZ Document 40 Filed 07/18/16 Page 8 of 13
9 - OPINION & ORDER

parties in light of the heavy burden APL will face if it has to pay for its employees to travel to 

trial in Oregon. 

Convenience of witnesses is often the most important factor in determining whether or 

not to transfer a case. Partney Const., Inc. v. Ducks Unlimited, Inc., No. CIV. 08-574-SU, 2008 

WL 4838849, at *3 (D. Or. Nov. 3, 2008) (citation omitted); see also Cougar Sport, 2016 WL 

1054581, at *11 (“The convenience of witnesses, particularly nonparty witnesses important to 

the resolution of the case, is often cited as the most significant factor in a ruling on a motion to 

transfer.”) (citing 15 Charles Alan Wright and Arthur R. Miller, Federal Practice & Procedure § 

3851 (4th ed. 2015)). The “convenience of the witnesses” factor takes into account the 

convenience to both party and non-party witnesses; however, courts give more consideration to 

non-party witnesses, as opposed to witnesses who are employees of a party to the litigation. Id.

The court considers not only the number of witnesses located in the respective districts, but also 

the nature and quality of their testimony, as it relates to the issues in the case. Id.

APL fails to identify any specific witness who will be called to testify. Instead, APL 

relies on the general assertion that all of APL’s employees work and reside in southern 

California. Goldston Decl. ¶ 3, ECF 14. Furthermore, non-party witnesses including employees 

from LA Gear, Skechers, K-Swiss, and Asics, are located in southern California. Id. at ¶ 14. APL 

contends that such non-party witnesses may be called as witnesses related to trademark 

confusion and that, if APL is unable to require them to appear in Oregon, APL would be 

substantially prejudiced. APL argues that only adidas America is located in Oregon and, 

therefore, witnesses for adidas AG will have to travel internationally whether the trial is in 

Oregon or California. 

Case 3:16-cv-00415-HZ Document 40 Filed 07/18/16 Page 9 of 13
10 - OPINION & ORDER

In contrast, adidas identifies eight witnesses who are likely to testify at trial. Vanderhoff 

Decl. ¶¶ 7-14, ECF 24. All of adidas’s witnesses are employed and live in Oregon. Id. adidas 

also points out that APL’s examples of third-party footwear manufacturers represent only a few 

of the many shoe brands headquartered across the United States and do not include companies 

such as Nike and Columbia Sportswear in Oregon. 

In sum, both parties and their witnesses would be inconvenienced if this case is heard in 

the other’s preferred forum. However, this factor weighs slightly in favor of adidas because it is 

able to identify with specificity at least eight likely witnesses and the nature of their testimony. 

Not only does APL fail to identify specific party witnesses, but APL fails to support its 

assertions regarding the importance or likelihood of testimony from hypothetical non-party 

witnesses. APL’s contention that unwilling witnesses are more easily compelled to testify in the 

Central District of California fails due to the same lack of supporting evidence or specificity.

As to the relative financial disparity between the parties, while the Court acknowledges 

that APL appears to have far fewer resources, the Court declines to transfer venue merely to shift 

the financial burden to adidas. See Buckman v. Quantum Energy Partners IV, LP, No. 07-CV1471-BR, 2008 WL 2235234, at *10-11 (D. Or. May 29, 2008), on reh'g, No. 07-CV-1471-BR, 

2009 WL 4825914 (D. Or. Dec. 8, 2009) (“Merely shifting rather than eliminating the 

inconvenience is not a grounds for transfer of venue.”) (citing Decker Coal, 805 F.2d at 843).

APL presents no evidence or argument that the actual costs of litigation would be lower in the 

Central District of California.

III. Remaining factors

The remaining factors are neutral. Both this Court and the Central District of California 

are equally able to adjudicate the claims brought in this case. As APL concedes, adidas’s claims 

Case 3:16-cv-00415-HZ Document 40 Filed 07/18/16 Page 10 of 13
11 - OPINION & ORDER

are primarily based upon federal law. There is only one state law claim brought by adidas that 

invokes California law (along with the law from twelve other states) and not Oregon law. This 

does not tip the scales in favor of one party or the other. 

Similarly, the factor of relative docket congestion and time to trial is neutral. While each 

side cites statistics purporting to show the congestion of dockets in each district, the pertinent 

issue is whether a trial will be speedier in the Central District of California. See Gates Learjet 

Corp. v. Jensen, 743 F.2d 1325, 1337 (9th Cir. 1984) (“The real issue is not whether a dismissal 

will reduce a court's congestion but whether a trial may be speedier in another court because of 

its less crowded docket.”). The difference in median time from filing to trial between the District 

of Oregon and the Central District of California is not significant. Sybert Decl. Ex. B at 21, ECF 

15 (presenting data demonstrating that the median time in civil cases from filing to trial is 21.1 

months in the Central District of California and 21.8 months in the District of Oregon); see also

Wolfe v. The RV Factory LLC, No. 3:15-CV-02424-SI, 2016 WL 1117425, at *3 (D. Or. Mar. 

22, 2016) (finding a delay of nine months to only weigh “slightly” in the transfer analysis and 

noting that this factor is the most speculative because case-disposition statistics provide only a 

generalized snapshot of court congestion). 

As to APL’s contacts with Oregon, the fact that a small percentage of APL’s sales are 

made to buyers in Oregon does not weigh in either party’s favor for the purposes of resolving 

this motion. See In re TS Tech USA, 551 F.3d at 1321 (Fed. Cir. 2008) (rejecting the argument 

that a forum had a “substantial interest” in having the case tried locally because several vehicles 

with the allegedly infringing headrest element were sold there); Columbia Sportswear, 2015 WL 

3986148, at *5. The Court similarly holds that the “local interest in the controversy” factor is 

Case 3:16-cv-00415-HZ Document 40 Filed 07/18/16 Page 11 of 13
12 - OPINION & ORDER

neutral because both parties are headquartered in their preferred forum and both contribute to 

their respective local economies as employers.

Finally, the Court considers the parties’ arguments as to documents and physical 

evidence and concludes that the factor is neutral. APL urges the Court to transfer this case 

because most of its evidence is located in southern California. All of APL’s products are stored 

in southern California until they are shipped. Goldston Decl. ¶¶ 5-6, ECF 14. APL argues that 

many of its shoes will need to be transported physically to the trial venue and that the cost of 

transport will strain APL’s financial resources. In addition, all of APL’s written materials and 

documents regarding its products were created and are located in southern California. Id. Finally, 

APL argues that if it is necessary to inspect the premises, design facilities, or actual inventory of 

APL, such inspection would take place in Los Angeles County. 

adidas responds that its evidence is located in Oregon. adidas contends it maintains “an 

entire room full of documents and other materials related to adidas’s Three-Stripe Mark” in the 

Portland, Oregon office of its counsel, Perkins Coie. Feldman Decl. ¶ 2, ECF 25. However, 

adidas does not argue that any documents or materials relevant to this particular case are 

necessarily located in this Portland room. 

The Court declines to give this factor much weight in light of technological advances in 

document storage and retrieval and the lack of a clear need for inspection of APL’s premises.

However, the Court carefully considered the parties’ arguments and concludes that the factor is 

neutral. See In re TS Tech USA Corp., 551 F.3d 1315, 1321 (Fed. Cir. 2008) (instructing district 

courts not to render this factor superfluous in light of technological developments). 

///

Case 3:16-cv-00415-HZ Document 40 Filed 07/18/16 Page 12 of 13
13 - OPINION & ORDER

IV. Summary 

Balancing all of the factors above, most of which are neutral, the Court finds that APL 

has failed to make a showing that would overcome the deference awarded to adidas’s choice to 

litigate this matter in its home forum. 

CONCLUSION

For the reasons stated, the Court denies Defendant APL’s motion to change or transfer 

venue [13].

IT IS SO ORDERED.

Dated this ____________day of ________________________, 2016.

 

________________________________________________

MARCO A. HERNÁNDEZ

United States District Judge

Case 3:16-cv-00415-HZ Document 40 Filed 07/18/16 Page 13 of 13