1- MOTION FOR JUDGMENT ON THE PLEADINGS AS TO 

DEFENDANTS’ FIFTH AND ELEVENTH AFFIRMATIVE 

DEFENSES

21184-0112/132727939.1

Perkins Coie LLP

1120 N.W. Couch Street, Tenth Floor

Portland, OR 97209-4128

Phone: 503.727.2000

Fax: 503.727.2222

Stephen M. Feldman, OSB No. 932674

SFeldman@perkinscoie.com

PERKINS COIE LLP

1120 N.W. Couch Street, Tenth Floor

Portland, OR 97209-4128

Telephone: 503.727.2000

Facsimile: 503.727.2222

R. Charles Henn Jr. (admitted pro hac vice)

chenn@kilpatricktownsend.com

Charles H. Hooker III (admitted pro hac vice)

chooker@kilpatricktownsend.com

Nichole D. Chollet (admitted pro hac vice)

nchollet@kilpatricktownsend.com

KILPATRICK TOWNSEND & STOCKTON LLP

1100 Peachtree Street, Suite 2800

Atlanta, GA 30309

Telephone: 404.815.6500

Facsimile: 404.815.6555

Attorneys for Plaintiffs

UNITED STATES DISTRICT COURT

DISTRICT OF OREGON

PORTLAND DIVISION

ADIDAS AMERICA, INC., a Delaware 

corporation; ADIDAS AG, a foreign 

entity; ADIDAS INTERNATIONAL 

MARKETING B.V., a foreign entity; 

REEBOK INTERNATIONAL LTD., a 

Massachusetts corporation; and REEBOK 

INTERNATIONAL LIMITED, a foreign 

entity,

Plaintiffs,

v.

TRB ACQUISITIONS LLC, a New York 

limited liability company, CUTIE PIE 

BABY, INC., a New York corporation, 

ELITE PERFORMANCE 

FOOTWEAR, LLC, a New York limited 

liability company, GINA GROUP LLC, a 

New York limited liability company, ONE 

STEP UP, LTD., a New York limited 

No. 3:15-cv-02113-SI

MOTION FOR JUDGMENT ON THE 

PLEADINGS AS TO DEFENDANTS’ 

FIFTH AND ELEVENTH AFFIRMATIVE 

DEFENSES

By Plaintiffs

Pursuant to Fed. R. Civ. P. 12(c)

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1120 N.W. Couch Street, Tenth Floor

Portland, OR 97209-4128

Phone: 503.727.2000

Fax: 503.727.2222

company, SARAMAX APPAREL 

GROUP, INC., a New York corporation, 

UNITED LEGWEAR COMPANY, 

LLC, a New York limited liability 

company, ACTIVE BASICS LLC, a New 

York limited liability company, USPA 

ACCESSORIES, LLC DBA CONCEPT 

ONE, a New York limited liability 

company, IMX, LLC, a New York limited 

liability company, KIDZ CONCEPTS, 

LLC, a New York limited liability 

company, Q4 DESIGNS LLC, a New 

York limited liability company, 

RBX.COM, LLC, a New York limited 

liability company, C.D.B. BRANDS LLC, a New York limited liability company, and 

L.A. KIDZ, INC., a New York 

corporation,

Defendants.

LOCAL RULE 7-1 CERTIFICATION

Pursuant to LR 7-1(a)(1)(A), counsel for plaintiffs adidas America, Inc., adidas AG, and 

adidas International Marketing B.V. (collectively, “adidas”) as well as plaintiffs Reebok 

International Ltd. and Reebok International Limited (collectively, “Reebok” and together with 

adidas, the “Plaintiffs”) certify that their counsel has conferred in good faith with counsel for 

defendant TRB Acquisitions LLC (“TRB”) as well as the TRB licensee defendants (together 

with TRB, the “Defendants”) in an effort to resolve the issues raised by this motion, but that the 

parties have been unable to do so.

MOTION

Pursuant to Federal Rule of Civil Procedure 12(c), Plaintiffs respectfully move for 

judgment on the pleadings as to Defendants’ Fifth Affirmative Defense asserting “unclean 

hands” and Eleventh Affirmative Defense asserting “trademark misuse.” Despite their labels, 

these two affirmative defenses are actually identical “antitrust” defenses based on Plaintiffs’ 

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3- MOTION FOR JUDGMENT ON THE PLEADINGS AS TO 

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DEFENSES

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Perkins Coie LLP

1120 N.W. Couch Street, Tenth Floor

Portland, OR 97209-4128

Phone: 503.727.2000

Fax: 503.727.2222

alleged anticompetitive conduct in enforcing their trademark rights. Indeed, both of the defenses 

are premised upon Plaintiffs’ alleged attempts “to prevent lawful competition in the marketplace 

and misusing their claimed intellectual property to acquire a monopoly in violation of U.S. 

antitrust laws.” (See ECF 81 at 40, 43.) As this Court has previously held, such “antitrust” 

defenses are insufficient as a matter of law. See adidas-America, Inc. v. Payless ShoeSource, 

Inc., 546 F. Supp. 2d 1029, 1079-81 (D. Or. 2008) (hereinafter, “Payless”).

As an initial matter, and as recognized by this Court in Payless, the type of antitrust 

defenses asserted by Defendants here are barred under the Noerr-Pennington doctrine. 

Moreover, even if the defenses were not barred, Defendants have failed to allege a legally 

sufficient antitrust defense. Accordingly, and as explained further in the supporting 

memorandum below, the Court should dismiss Defendants’ Fifth and Eleventh Affirmative 

Defenses set forth in their Answer, Affirmative Defenses, and Counterclaims to the First 

Amended Complaint (ECF 81, the “Answer”).

SUPPORTING MEMORANDUM

I. INTRODUCTION

In their Fifth and Eleventh Affirmative Defenses, Defendants raise “unclean hands” and 

“trademark misuse,” alleging specifically that Plaintiffs are (1) misusing their trademarks to 

assert “frivolous” lawsuits, (2) “exploiting a fact-specific 2008 jury decision that involved the 

use of two and four stripes on footwear [i.e., the jury’s verdict in Payless awarding adidas over 

$300 million] to restrain trade and to stop the use of . . . two and four striped designs on branded 

footwear or apparel in the marketplace,” and (3) conspiring and colluding with the Seduka 

Defendants1 to “knock the RBX brand out of the marketplace.” (ECF 81 at 41, 43-44.) 

 1 Defendants define “Seduka Defendants” on page 41 of their Answer.

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1120 N.W. Couch Street, Tenth Floor

Portland, OR 97209-4128

Phone: 503.727.2000

Fax: 503.727.2222

Despite their obvious familiarity with the Payless case,

2 Defendants ignore this Court’s 

decision in that case holding that affirmative defenses related to a party’s alleged anticompetitive 

behavior in enforcing its trademark rights—defenses virtually identical to those asserted by 

Defendants here—fail as a matter of law. Payless, 546 F. Supp. 2d at 1078-1081 (finding that 

defendant failed to plead a legally viable unclean hands or trademark misuse affirmative defense 

based on alleged anticompetitive conduct). As explained by this Court in Payless,

antitrust/unclean hands and trademark misuse defenses to trademark infringement are “very 

narrow,” and “in almost every reported instance where the antitrust misuse of a trademark has 

been raised as a defense, it has been rejected.” Id. at 1078-79 (quotation marks and citation 

omitted). Defendants’ antitrust defenses should likewise be rejected here.

First, and as noted by this Court in Payless, affirmative defenses premised on the type of 

alleged antitrust activity at issue here are expressly foreclosed by the Noerr-Pennington doctrine, 

which protects the First Amendment right of parties to petition the government for redress of 

their rights. Although the Noerr-Pennington doctrine may be circumvented upon a showing that 

a party has engaged in “sham” litigation, Defendants have not alleged—and indisputably cannot 

show—that Plaintiffs’ (and, more specifically, adidas’s) enforcement of their trademark rights 

constitutes “sham” litigation. Quite the contrary, adidas has a proven track record of 

successfully litigating its rights in its trademarks, including in several actions before this Court. 

See, e.g., adidas America, Inc. v. Skechers USA, Inc., 149 F. Supp. 3d 1222 (D. Or. 2016) 

(granting preliminary injunction based on defendant’s infringement and dilution of adidas’s 

Three-Stripe Mark and Stan Smith Trade Dress); Payless, 2008 WL 4279812 (D. Or. Sept. 12, 

2008) (affirming jury verdict of infringement of adidas’s Three-Stripe Mark and Superstar Trade 

Dress); adidas-Salomon AG v. Target Corp., 228 F. Supp. 2d 1192 (D. Or. 2002) (upholding the 

viability of adidas’s trademark and trade dress infringement claims against four-stripe Superstar 

 2 Notably, the same local counsel representing the Defendants in this case represented 

Payless in the adidas v. Payless case.

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Phone: 503.727.2000

Fax: 503.727.2222

imitations); ACI Int’l, Inc. v. adidas-Salomon AG, 359 F. Supp. 2d 918 (C.D. Cal. 2005) 

(denying motion to dismiss adidas’s infringement claims regarding two-stripe footwear). 

Notably, in nearly all of these prior cases, as well as a number of others, the court determined 

that adidas has viable and enforceable infringement claims against entities marketing and selling 

two- and/or four-stripe imitations of its Three-Stripe Mark.3 

Second, even if their Fifth and Eleventh Affirmative Defenses were not barred under the 

Noerr-Pennington doctrine (which they are), Defendants’ allegations fall far short of those 

required to state a claim for violation of the antitrust laws, under either Section 1 or Section 2 of 

the Sherman Act, and thus fail on this basis as well. Defendants have not sufficiently alleged a 

conspiracy, contract, or agreement in restraint of trade to support a Section 1 claim. Nor have 

Defendants identified a relevant antitrust market, alleged Plaintiffs’ market share in the relevant 

market, or alleged that Plaintiffs’ activities have excluded any competitors from any market. 

Any one of these pleading deficiencies alone is enough to invalidate a claim under Section 2.

For the reasons previously explained by this Court in Payless, as well as those set forth 

below, Defendants’ antitrust defenses are insufficient as a matter of law, and as a result, the 

Court should grant Plaintiffs judgment on the pleadings as to those defenses.

4

II. ARGUMENT

A. Legal Standard for Motion for Judgment on the Pleadings.

Pursuant to Federal Rule of Civil Procedure 12(c), “[a]fter the pleadings are closed—but 

early enough not to delay trial—a party may move for judgment on the pleadings.” The standard 

for determining a Rule 12(c) motion for judgment on the pleadings is the same standard 

 3 See, e.g., Target, 228 F. Supp. 2d at 1211 (explaining that “[a]lthough three stripes 

obviously do not equal four stripes, the issue is not simply the number of stripes. Instead, the 

issue is whether the total effect of the allegedly infringing design is likely to cause confusion in 

the minds of an ordinary purchaser.”).

4 As discussed below, Defendants’ “unclean hands” defense premised on Plaintiffs’ 

alleged anticompetitive activity of bringing trademark suits is subject to dismissal for additional 

reasons. 

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1120 N.W. Couch Street, Tenth Floor

Portland, OR 97209-4128

Phone: 503.727.2000

Fax: 503.727.2222

“applicable to the corresponding 12(b) motion.” Elliott v. Dep’t of Def., No. C 97-04141 MEJ, 

1998 WL 737999, at *2 (N.D. Cal. Oct. 13, 1998) (quotation marks and citation omitted). 

To survive a Rule 12(c) motion, “the complaint’s factual allegations, together with all reasonable 

inferences, [must] state a plausible claim for relief.” Cafasso v. Gen. Dynamics c4 Sys., Inc., 637 

F.3d 1047, 1054 (9th Cir. 2011) (citing Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)). The 

complaint must contain “well-pleaded facts” which “permit the court to infer more than the mere 

possibility of misconduct[.]” Iqbal, 556 U.S. at 679 (citing Fed. R. Civ. P. 8(a)(2)). 

“A judgment on the pleadings is properly granted when, taking all the allegations in the 

pleading as true, the moving party is entitled to judgment as a matter of law.” Heliotrope Gen., 

Inc. v. Ford Motor Co., 189 F.3d 971, 978–79 (9th Cir. 1999) (quotation marks and citation 

omitted). Importantly, “[w]hat Twombly and Iqbal teach is that where there are other plausible 

explanations, it is not sufficient to speculate in a complaint,” particularly “where the expensive 

process of discovery in an antitrust suit is at stake.”5

 Ciba Vision Corp. v. De Spirito, No. 1:09-

cv-01343-JOF, 2010 WL 553233, at *8 (N.D. Ga. Feb. 10, 2010).

Because Defendants’ defenses related to Plaintiffs’ alleged anticompetitive acts are 

barred by the Noerr-Pennington doctrine and also are unsupported by Defendants’ allegations, 

the Court should grant Plaintiffs’ motion for judgment on the pleadings.

B. Defendants’ Antitrust Defenses are Barred Under Noerr-Pennington.

The thrust of Defendants’ so-called “unclean hands” and “trademark misuse” defenses is 

that Plaintiffs have acted inequitably by allegedly (1) misusing their trademarks to assert 

frivolous lawsuits “to reduce market competition or otherwise satisfy their corporate interests 

and/or the interests of parties to which Plaintiffs have contractual, common interest, or other joint

defense agreements with,” (2) exploiting the Payless jury’s verdict (which found numerous two-

 5 Here, it appears that Defendants have asserted their (fundamentally flawed) antitrust 

defenses merely as a pretext to launch a sweeping, unduly burdensome, and misplaced discovery 

campaign focusing on an entirely speculative notion that there exists some nefarious 

anticompetitive basis for adidas’s decision to enforce its trademark rights.

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Perkins Coie LLP

1120 N.W. Couch Street, Tenth Floor

Portland, OR 97209-4128

Phone: 503.727.2000

Fax: 503.727.2222

and four-stripe designs on footwear to infringe adidas’s Three-Stripe Mark) by seeking to use 

that verdict as a basis to stop other uses of two- and four-stripe designs on footwear and apparel 

in the marketplace, and (3) conspiring with the Seduka Defendants to keep Defendants out of the 

marketplace by asserting lawsuits against them.6 In other words, Defendants contend that 

Plaintiffs have acted inequitably by enforcing rights in their trademarks. 

Any such defense is plainly barred by the Noerr-Pennington doctrine. Indeed, in Payless, 

this Court expressly recognized this fundamental principle, stating: “To the extent that [the 

defendant’s] unclean hands/trademark misuse-antitrust defenses are premised upon adidas’ 

aggressive trademark enforcement efforts, those claims are barred under the Noerr-Pennington

doctrine.” 546 F. Supp. 2d at 1078 n.18. See also PODS Enters., Inc. v. ABF Freight Sys., Inc., 

No. 8:11-cv-84-T-33MAP, 2011 WL 4948397, at *7 (S.D. Fla. Oct. 17, 2011) (striking 

affirmative defenses alleging trademark misuse, abuse of process, and antitrust violations 

because those defenses were barred under the Noerr-Pennington doctrine). 

Under the Noerr-Pennington doctrine, “those who petition government for redress are 

generally immune from antitrust liability.” Payless, 546 F. Supp. 2d at 1078 n.18 (citing Prof’l 

Real Estate Investors, Inc. v. Columbia Pictures Indus., Inc., 508 U.S. 49, 56 (1993)). “The 

Supreme Court has described the right to petition as ‘among the most precious of the liberties 

safeguarded by the Bill of Rights’ and ‘intimately connected, both in origin and in purpose, with 

the other First Amendment rights of free speech and free press.’” White v. Lee, 227 F.3d 1214, 

1231 (9th Cir. 2000) (quoting United Mine Workers of Am. v. Illinois State Bar Ass’n, 389 U.S. 

217, 222 (1967)). The Ninth Circuit has held that the act of sending demand letters in advance of 

 6 In their Fifth and Eleventh Affirmative Defenses, Defendants also allege that Plaintiffs 

failed to perform a reasonable pre-suit investigation, asserted cancelled or unenforceable 

trademark registrations in this action, and failed to affirmatively assert in this action TRB’s 

trademark registrations. Because these acts are inextricably intertwined with Plaintiffs’ bringing 

of this lawsuit, they do not provide a sufficient basis for an antitrust defense for the same reasons 

explained in depth below.

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Portland, OR 97209-4128

Phone: 503.727.2000

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potential litigation is also immunized. See Sosa v. DIRECT TV, Inc., 437 F.3d 923, 936-38 (9th 

Cir. 2006). 

The only way that Defendants can circumvent Noerr-Pennington immunity is by 

satisfying the exceedingly narrow “sham” exception to Noerr-Pennington—that is, Defendants 

must prove that the allegedly anticompetitive lawsuits were but “a mere sham to cover what is 

actually nothing more than an attempt to interfere directly with the business relationships of a 

competitor.” E. R.R. Presidents Conf. v. Noerr Motor Freight, Inc., 365 U.S. 127, 144 (1961); 

see also United Mine Workers v. Pennington, 381 U.S. 657, 660-61 (1965). To establish 

actionable “sham” litigation, the claimant must show that the subject suit is: (i) “objectively 

baseless;” and (ii) subjectively brought in bad faith, i.e., “an attempt to interfere directly with the 

business relationships of a competitor, through the use of the governmental process—as opposed 

to the outcome of that process—as an anticompetitive weapon.” Prof’l Real Estate, 508 U.S. at 

60-61 (emphasis in original) (quotation marks and citations omitted). 

The Supreme Court unequivocally has held that if an antitrust claimant cannot satisfy the 

first prong of the test (i.e., that Plaintiffs’ prior trademark litigation was “objectively baseless”), 

then evidence bearing on the second prong is irrelevant as a matter of law. Id. at 57 (“[A]n 

objectively reasonable effort to litigate cannot be sham regardless of subjective intent.”). “If an 

objective litigant could conclude that the suit is reasonably calculated to elicit a favorable outcome, 

the suit is immunized under Noerr, and an antitrust claim premised on the sham exception must 

fail.” Id. at 60. Indeed, if the prior proceeding was not objectively meritless, a complainant is not 

even entitled to discovery on the motivations behind the prior proceeding. Id. at 55-56.

Significantly, the Ninth Circuit has cautioned district courts to “not lightly conclude in any 

Noerr-Pennington case that the litigation in question is objectively baseless, as doing so would 

leave that action without the ordinary protections afforded by the First Amendment, a result [the 

Ninth Circuit] would reach only with great reluctance.” White, 227 F.3d at 1232. To meet the 

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Phone: 503.727.2000

Fax: 503.727.2222

exceptionally high standard of showing that litigation and pre-litigation conduct satisfies the 

“objectively baseless” standard, the underlying claim must offend Rule 11 standards. See Prof’l 

Real Estate, 508 U.S. at 65. Moreover, a successful claim, by its very nature, cannot be 

considered objectively baseless. Id. at 60 n.5. 

Defendants fail to specifically identify a single case brought by any of the Plaintiffs that 

would constitute “sham” litigation. And the only case that Defendants point to that involves

Plaintiffs’ alleged misuse of their trademark rights is the present case. But, as a matter of law, 

this litigation, which is clearly meritorious, is not “objectively baseless.” 7 See Dell, Inc. v. 3K 

Computers, LLC, No. 08-80455-CIV, 2008 WL 6600766, at *2 (S.D. Fla. Oct. 7, 2008) 

(dismissing affirmative defense alleging that plaintiff had violated antitrust laws by asserting suit 

against defendants and explaining that “[a] brief review of the pleadings makes clear that 

plaintiff’s claims are not ‘objectively baseless’”); PODS Enters., 2011 WL 4948397, at *5 (suit 

not objectively baseless where plaintiff owned four registrations for asserted trademarks). 

Indeed, Plaintiffs own numerous incontestable registrations for their trademarks, and TRB 

adopted its marks—which are similar to Plaintiffs’ marks and are being used on goods identical 

to Plaintiffs’ goods—well after Plaintiffs began using and had registered their marks. Thus, 

under any objective measure, Plaintiffs’ claims are in fact very strong.

8

 

Defendants’ ability to claim that any past cases brought by Plaintiffs were “sham” 

litigation is likewise foreclosed. First, Defendants have not alleged that Plaintiffs have a “policy 

of starting legal proceedings without regard to the merits,” as is required to show that Plaintiffs 

have engaged in “sham” litigation. PODS Enters., 2011 WL 4948397, at *5 (quotation marks 

 7 The only case other than the present case that is identified in Defendants’ Answer is the 

Payless case, but Defendants do not allege that the Payless case constituted “sham” litigation. 

Indeed, how could they when the jury found unanimously in favor of adidas and awarded in 

excess of $300 million.

8 Tellingly, Defendants’ own actions demonstrate this this case is not objectively 

baseless, as Defendants did not even file a Rule 12(b)(6) motion contending that Plaintiffs’ 

claims fail as a matter of law, much less did Defendants bring a Rule 11 motion.

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Phone: 503.727.2000

Fax: 503.727.2222

and citation omitted). Second, even a cursory review of Plaintiffs’ past lawsuits shows that 

adidas has experienced overwhelming success in enforcing its trademark rights. adidas has 

obtained a jury verdict of over $300 million,

9 succeeded on a motion for a preliminary 

injunction,10 prevailed on numerous motions for summary judgment,11 obtained default 

judgments against infringers,12 survived motions to dismiss,13 and settled many cases (often for 

thousands of dollars). Notably, in those cases, not a single defendant has thought Plaintiffs’ 

allegations related to their trademark rights were sufficiently meritless to seek Rule 11 sanctions 

against Plaintiffs. Based on this fact alone, Plaintiffs’ prior enforcement actions are protected 

under Noerr-Pennington. 

Because Defendants’ defenses related to Plaintiffs’ alleged anticompetitive behavior are 

clearly foreclosed by the Noerr-Pennington doctrine, those defenses (i.e., the Fifth and Eleventh 

Affirmative Defenses) should be dismissed.

C. Defendants Fail To Sufficiently Allege an Antitrust “Defense.”

Defendants clearly attempt to invoke the antitrust laws, alleging in both their Fifth and 

Eleventh Affirmative Defenses that Plaintiffs are attempting “to acquire a monopoly in violation 

of U.S. antitrust laws” and also are conspiring with the Seduka Defendants to knock Defendants 

out of the market. Even setting aside the Noerr-Pennington immunity to which Plaintiffs are 

entitled, to have any chance of prevailing on this type of antitrust/misuse defense, Defendants 

would have a “heavy” burden of showing that Plaintiffs are violating the antitrust laws by 

enforcing the well-known and incontestable Three-Stripe Mark. See R.J. Reynolds Tobacco Co. 

 9 Payless, 2008 WL 4279812, at *7-8.

10 Skechers USA, Inc., 149 F. Supp. 3d at 1222.

11 E.g., Payless, 529 F. Supp. 2d at 1262; adidas America, Inc. v. Herbalife Int’l, Inc., 

No. CV 09-661-MO, 2011 WL 3359987 (D. Or. Aug. 1, 2011); Target Corp., 228 F. Supp. 2d 

at 1196-97; adidas Am. v. Kmart Corp., No. CV-05-120-ST, 2006 WL 2044857 (D. Or. June 15, 

2006).

12 E.g., adidas America, Inc. v. Soccer and Soccer, Inc., No. CV 13-7148-GW(VBKx), 

2013 WL 11323120 (C.D. Cal. Oct. 25, 2013).

13 E.g., ACI Int’l, Inc., 359 F. Supp. 2d at 924.

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Phone: 503.727.2000

Fax: 503.727.2222

v. Premium Tobacco Stores, Inc., No. 99–C–1174, 2001 WL 747422, at *4 (N.D. Ill. Jun. 29, 

2001). This Defendants cannot do. 

1. Defendants’ Antitrust Allegations Do Not Support a Section 1 

Defense.

Section 1 of the Sherman Act prohibits “[e]very contract, combination in the form of a 

trust or otherwise, or conspiracy, in restraint of trade or commerce.” 15 U.S.C. § 1. To properly 

plead a Section 1 conspiracy defense, Defendants must allege a “conspiracy,” “contract,” or 

“agreement” in restraint of trade. See Payless, 546 F. Supp. 2d at 1079. Although Defendants 

make passing reference in paragraph 5(a) of their Fifth Affirmative Defense and paragraph 11(a) 

of their Eleventh Affirmative Defense to Plaintiffs attempting to “restrain trade,”14 Defendants 

do not allege that Plaintiffs have conspired or entered into any agreement in furtherance of 

restraining trade. Defendants’ allegations in those paragraphs are thus insufficient to support a 

Section 1 claim. See id. (finding that the defendant failed to properly plead a Section 1 

conspiracy defense). 

Defendants do, admittedly, allege in paragraphs 5(e) and 11(e) of their affirmative 

defenses that Plaintiffs have conspired and colluded with the Seduka Defendants to “knock the 

RBX brand out of the marketplace.”15 But this does not salvage a Section 1 defense for 

Defendants. Indeed, in Payless, the defendant made an analogous argument, specifically arguing 

that “adidas unlawfully conspired with K-Swiss . . . to assist one another in the enforcement of 

their respective rights.” Id. at 1080. This Court rejected the argument that such alleged conduct 

could establish a Section 1 defense, explaining: “As several courts have recognized, such 

conduct, even if it pertains to products bearing trademarks, cannot be all that is required to 

establish the antitrust misuse defense.” Id. (citing Carl Zeiss Stiftung v. V.E.B. Carl Zeiss, Jena,

 14 In their Eleventh Affirmative Defense, Defendants specifically allege that “Plaintiffs 

have used their trademark registrations to improperly and unfairly promote a monopoly and 

restrict competition[.]” 15 Defendants assert similar allegations in paragraphs 246-252 of their counterclaims.

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Portland, OR 97209-4128

Phone: 503.727.2000

Fax: 503.727.2222

298 F. Supp. 1309, 1314-15 (D.C.N.Y. 1969); R.J. Reynolds, 2001 WL 747422, at *4–5). This 

Court in Payless thus held that the defendant’s contention that adidas and K-Swiss had conspired 

“to assist one another in enforcing their rights is insufficient to establish [] the antitrust misuseunclean hands defense.” Id. This Court further explained that “[a]greements that restrict a 

competitor’s ability to use a particular mark cannot have any meaningful exclusionary or 

anticompetitive effect because the competitor remains free to sell its goods using a different 

mark.” Id. at 1081 (citing Clorox Co. v. Sterling Winthrop, Inc., 117 F.3d 50, 56 (2d Cir. 1997)). 

Here, Defendants’ antitrust defenses fare no better under a Section 1 analysis than did the 

failed defense asserted by the defendant in Payless. As discussed above, Defendants allege that 

Plaintiffs have conspired with the Seduka Defendants to “knock the RBX brand out of the 

marketplace.” But, consistent with the holding in Payless, two competitors assisting each other 

to file a lawsuit against another competitor is not a valid basis to support a Section 1 claim or 

defense. Moreover, even assuming that Defendants’ allegations are true, Plaintiffs’ alleged 

conduct is not actionably anticompetitive in that Plaintiffs are not, even as alleged by 

Defendants, seeking to exclude Defendants from any market, but instead are merely seeking to 

restrict Defendants’ use of a particular (infringing) trademark. Defendants remain free to sell 

their goods in any market using any other (non-infringing) mark. 

In light of the above, Defendants’ allegations related to a conspiracy between Plaintiffs 

and the Seduka Defendants are insufficient to establish a violation of Section 1.

2. Defendants Have Not Alleged a Section 2 Violation.

Defendants’ allegations in paragraphs 5(a) and 11(a) that Plaintiffs are attempting to 

create a “monopoly in violation of U.S. antitrust laws” fall generally within the purview of 

Section 2 of the Sherman Act. See Payless, 546 F. Supp. 2d at 1079 (observing that allegations 

that adidas misused trademarks to acquire monopoly on stripe designs “more closely resemble a 

Section 2 attempted monopoly claim than a Section 1 conspiracy claim”). Section 2 bars the 

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13- MOTION FOR JUDGMENT ON THE PLEADINGS AS TO 

DEFENDANTS’ FIFTH AND ELEVENTH AFFIRMATIVE 

DEFENSES

21184-0112/132727939.1

Perkins Coie LLP

1120 N.W. Couch Street, Tenth Floor

Portland, OR 97209-4128

Phone: 503.727.2000

Fax: 503.727.2222

monopolization of, or attempt to or conspiracy to monopolize, any part of the trade or commerce 

of the United States. See 15 U.S.C. § 2. To state a viable claim (or defense) under Section 2, 

Defendants must first define and prove the boundaries of the relevant market and then show that 

Plaintiffs enjoy some degree of market power—either monopoly power or something 

dangerously close to monopoly power—within the relevant market. See, e.g., Spectrum Sports v. 

McQuillan, 506 U.S. 447, 459-60 (1993); Walker Process Equip., Inc. v. Food Mach. & Chem. 

Corp., 382 U.S. 172, 177 (1965). 

At the outset, Defendants’ ill-defined antitrust defenses fail under Section 2 because they 

do not define the relevant market that Plaintiffs allegedly monopolize (or are attempting to 

monopolize), nor do they allege Plaintiffs’ market share in the relevant market (whatever that 

might be). In light of Defendants’ failure to meet these basic requirements, their Section 2 

defense should be dismissed. See In the Matter of Int’l Tel. & Tel. Corp., 104 F.T.C. 280 (F.T.C. 

1984); see also Dial A Car, Inc. v. Transp., Inc., 82 F.3d 484, 487-88 (D.C. Cir. 1996) (affirming 

dismissal of complaint that failed to allege defendant’s market share). 

Moreover, Defendants have not alleged that Plaintiffs’ actions excluded a competitor 

from any market, and the notion that Plaintiffs’ mere enforcement of their trademark rights might 

somehow enable Plaintiffs to acquire a monopoly over some (unspecified) market makes no 

economic sense. The reality is that a trademark, unlike a patent or copyright, provides an 

extremely poor means for excluding competition from the marketplace “[b]ecause a trademark 

merely enables the owner to bar others from use of the mark, as distinguished from competitive 

manufacture and sale of identical goods bearing another mark . . . .” Clorox, 117 F.3d at 56

(quotation marks and citation omitted).

16 The antitrust laws protect competition, not 

competitors. See Brunswick Corp. v. Pueblo Bowl-O-Mat, Inc., 429 U.S. 477, 488 (1977). 

As explained above, the mere act of preventing a competitor from using a particular trademark 

 16 See also Herbert Hovenkamp, Mark D. Janis & Mark A. Lemley, IP & Antitrust: An 

Analysis of Antitrust Principles Applied to Intellectual Property Law § 3.5 at 3-52 (2005). 

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14- MOTION FOR JUDGMENT ON THE PLEADINGS AS TO 

DEFENDANTS’ FIFTH AND ELEVENTH AFFIRMATIVE 

DEFENSES

21184-0112/132727939.1

Perkins Coie LLP

1120 N.W. Couch Street, Tenth Floor

Portland, OR 97209-4128

Phone: 503.727.2000

Fax: 503.727.2222

does not have any significant exclusionary effect, as the competitor may still offer competing 

products under a different mark. See, e.g., Clorox, 117 F.3d at 56.17 Clearly, Plaintiffs’ 

enforcement of their trademark rights has in no way stifled Defendants’ or any third party’s

ability to sell apparel or footwear—only their ability to sell apparel or footwear bearing 

confusingly similar imitations of Plaintiffs’ marks.

Accordingly, Defendants’ attempt to assert affirmative defenses based on Plaintiffs’ 

enforcement of their trademark rights also fails under Section 2.

D. Plaintiffs’ Enforcement of Their Trademark Rights Does Not Constitute 

Unclean Hands.

As indicated above, the focus of Defendants’ “unclean hands” defense is Defendants’ 

allegation that Plaintiffs have misused their trademarks by filing this lawsuit against Defendants 

and bringing lawsuits against third parties. As an initial matter, the defense of unclean hands is 

“generally disfavored.” Kelley Blue Book v. Car-Smarts, Inc., 802 F. Supp. 278, 292 (C.D. Cal. 

1992); U-Haul Int’l, Inc. v. Jartran, Inc., 522 F. Supp. 1238, 1254 (D. Az. 1981). To prevail on 

an unclean hands defense, “the defendant must demonstrate that the plaintiff’s conduct is 

inequitable and that the conduct relates to the subject matter of its claims.” Brother Records, 

Inc. v. Jardine, 318 F.3d 900, 909-10 (9th Cir. 2003); see also Levi Strauss & Co. v. Shilon, 

121 F.3d 1309, 1313 (9th Cir. 1997).

The case law makes clear that Plaintiffs’ filing of trademark litigation is not a basis for 

unclean hands. See, e.g., Liz Claiborne, Inc. v. Mademoiselle Knitwear, Inc., 13 F. Supp. 2d 430, 

445 (S.D.N.Y. 1998) (“Courts and commentators alike have rejected the thesis [defendant] 

advances here—that alleged bad faith in bringing suit can itself be the basis for an unclean hands 

defense to a trademark infringement action.”); see generally J. Thomas McCarthy, MCCARTHY 

ON TRADEMARKS AND UNFAIR COMPETITION (“MCCARTHY”), § 31:51 (2010) (“[T]he allegedly 

 17 See also California Packing Corp. v. Sun-Maid Raisin Growers, 165 F. Supp. 245, 

250-52 (S.D. Cal. 1958); VMG Enters., Inc. v. F. Quesada & Franco, Inc., 788 F. Supp. 648, 658

(D. Puerto Rico 1992); Seven-Up Co. v. No-Cal Corp., 183 U.S.P.Q. 165, 166 (E.D.N.Y. 1974).

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15- MOTION FOR JUDGMENT ON THE PLEADINGS AS TO 

DEFENDANTS’ FIFTH AND ELEVENTH AFFIRMATIVE 

DEFENSES

21184-0112/132727939.1

Perkins Coie LLP

1120 N.W. Couch Street, Tenth Floor

Portland, OR 97209-4128

Phone: 503.727.2000

Fax: 503.727.2222

unfair filing of a trademark infringement lawsuit cannot itself constitute a basis for an unclean 

hands defense to that lawsuit.”) (citing cases). Similarly, courts have held that allegations 

relating to the violation of antitrust laws cannot support an unclean hands defense in a trademark 

case. See PODS Enters., 2011 WL 4948397, at *7 (holding the defendant’s “allegations in 

support of its affirmative defense of unclean hands are intertwined with” its allegations of 

trademark misuse and violations of antitrust law in sending cease-and-desist letters and filing 

suit, and “because those activities [were] not specifically related to the trademark itself, [the 

defendant had] not properly asserted an unclean hands defense”); Coca–Cola Co. v. Howard 

Johnson Co., 386 F. Supp. 330, 335 (N.D. Ga. 1974) (“Merely because a plaintiff has violated 

the antitrust laws . . . does not result in ‘unclean hands’ on plaintiff’s part.”). Thus, here, 

Defendants’ allegations that Plaintiffs have acted with unclean hands by bringing suit and 

violating the antitrust laws are insufficient as a matter of law.

Moreover, allowing Defendants to proceed on their unclean hands defense defies 

common sense. It is well established that aggressive enforcement of trademark rights alone 

cannot form the basis of an unclean hands defense, and thus litigation against third parties is 

insufficient to support an unclean hands defense. Indeed, a trademark owner is obligated to 

enforce its rights aggressively or risk losing those rights. As noted in a leading trademark 

treatise, trademark law “not only encourages but requires one to be vigilant on pain of losing 

exclusive rights.” MCCARTHY, § 11:9. 

If the conduct Defendants complain of—i.e., enforcement of trademark rights through 

litigation—constituted unclean hands, then every trademark owner would face an impossible 

choice between policing its mark and facing an unclean hands defense or allowing unpoliced use 

to weaken the mark. See Esquire v. Esquire Slipper Mfg. Co., 243 F.2d 540, 545 (1st Cir. 1956). 

Plaintiffs affirmatively have chosen to enforce their marks, and contrary to Defendants’ baseless 

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16- MOTION FOR JUDGMENT ON THE PLEADINGS AS TO 

DEFENDANTS’ FIFTH AND ELEVENTH AFFIRMATIVE 

DEFENSES

21184-0112/132727939.1

Perkins Coie LLP

1120 N.W. Couch Street, Tenth Floor

Portland, OR 97209-4128

Phone: 503.727.2000

Fax: 503.727.2222

assertions that Plaintiffs have brought frivolous lawsuits, Plaintiffs have succeeded in numerous 

litigations related to their marks, as explained above.

Defendants’ unclean hands defense therefore is insufficient for these additional reasons 

as well.

III. CONCLUSION

For all of the foregoing reasons, Plaintiffs respectfully request judgment on the pleadings 

as to Defendants’ Fifth and Eleventh Affirmative Defenses.

DATED: September 16, 2016 PERKINS COIE LLP

By: /s/ Stephen M. Feldman

Stephen M. Feldman, OSB No. 932674

SFeldman@perkinscoie.com

1120 N.W. Couch Street, Tenth Floor

Portland, OR 97209-4128

Telephone: 503.727.2000

Facsimile: 503.727.2222

R. Charles Henn Jr. (admitted pro hac vice)

chenn@kilpatricktownsend.com

Charles H. Hooker III (admitted pro hac vice)

chooker@kilpatricktownsend.com

Nichole D. Chollet (admitted pro hac vice)

nchollet@kilpatricktownsend.com

KILPATRICK TOWNSEND & STOCKTON LLP

1100 Peachtree Street, Suite 2800

Atlanta, GA 30309

Telephone: 404.815.6500

Facsimile: 404.815.6555

Attorneys for Plaintiffs

Case 3:15-cv-02113-SI Document 109 Filed 09/16/16 Page 16 of 16