United States District Court, D. Oregon
ADIDAS AMERICA, INC., a Delaware corporation; and ADIDAS AG, a foreign entity, Plaintiffs,
ECCO USA, INC., a New Hampshire corporation; and ECCO SKO A/S, a foreign entity, Defendants.
P. Larsen, Ater Wynne LLP, R. Charles Henn Jr., Charles H.
Hooker III, and Nichole Davis Chollet, Kilpatrick Townsend
& Stockton LLP, Of Attorneys for Plaintiffs.
Kathleen C. Bricken, Garvey Schubert Barer, Mark Sommers,
Finnegan Henderson Farabow Garrett & Dunner LLP, Morgan
E. Smith, Finnegan Henderson Farabow Garrett & Dunner
LLP, Of Attorneys for Defendants.
OPINION AND ORDER
Michael H. Simon United States District Judge.
adidas America, Inc. and adidas AG (collectively,
“Plaintiffs” or “adidas”) bring this
action against Defendants ECCO USA, Inc. and ECCO SKO A/S
(collectively, “Defendants” or
“ECCO”), alleging trademark infringement,
trademark dilution, unfair competition, deceptive trade
practices, and breach of contract. Plaintiffs allege that
Defendants are currently selling footwear that uses
substantially identical imitations of Plaintiffs'
Three-Stripe trademark (the “Three-Stripe Mark”).
Before the Court is Defendants' motion to strike from the
First Amended Complaint a 2010 agreement between the parties
and all references to that agreement. (Defendants also move
to extend time to answer the Complaint until the Court
resolves their motion to strike, which will be allowed.) For
the reasons stated below, Defendants' motion to strike is
Rule 12(f) of the Federal Rules of Civil Procedure, a court
may strike from a pleading “any redundant, immaterial,
impertinent, or scandalous matter.” Fed.R.Civ.P. 12(f).
An “immaterial” matter is “that which has
no essential or important relationship to the claim for
relief … being pleaded.” Fantasy, Inc. v.
Fogerty, 984 F.2d 1524, 1527 (9th Cir. 1993) (quoting C.
Wright, A. Miller, et al., 5C Fed. Prac. & Proc.
Civ. § 1382 (3d ed. 2013)), rev'd on other
grounds, 510 U.S. 517 (1994). “Impertinent”
matters are those “that do not pertain, and are not
necessary, to the issues in question.” Id. The
purpose of a Rule 12(f) motion is to avoid spending time and
money litigating spurious issues. Whittlestone, Inc. v.
Handi-Craft Co., 618 F.3d 970, 973 (9th Cir. 2010);
see also Fantasy, Inc., 984 F.2d at 1527. The
disposition of a motion to strike is within the discretion of
the district court. See Fed. Sav. & Loan Ins. Corp.
v. Gemini Mgmt., 921 F.2d 241, 244 (9th Cir. 1990).
“Motions to strike are disfavored and infrequently
granted.” Legal Aid Servs. of Oregon v. Legal
Servs. Corp., 561 F.Supp.2d 1187, 1189 (D. Or. 2008);
see also Capella Photonics, Inc. v. Cisco Sys.,
Inc., 77 F.Supp.3d 850, 858 (N.D. Cal. 2014)
(“Motions to strike are regarded with disfavor because
of the limited importance of pleadings in federal practice
and because they are often used solely to delay
proceedings.” (Quotation marks and alterations
approximately2010, Plaintiffs became aware that Defendants
were offering for sale and selling footwear bearing two and
four stripes that Plaintiffs allege infringed Plaintiffs'
Three-Stripe Mark. Defendants denied any infringement, and
the parties resolved their dispute by entering into a
settlement agreement (the “2010 Letter
Agreement”) (ECF 32-12). According to the terms of the
2010 Letter Agreement, Defendants acknowledged that adidas is
the owner of the Three-Stripe Mark and that footwear bearing
certain two- and four-stripe designs infringes
Plaintiffs' rights in the Three-Stripe Mark. Defendants
also agreed that, with certain express exceptions, they would
not manufacture, distribute, or sell either of two
specifically enumerated footwear models. The 2010 Letter
Agreement states: “This letter sets out the entire
agreement between the parties in relation to its
subject-matter. No agreement is made between the parties
except for the express terms of this letter, and none shall
be implied.” ECF 32-12, at 2. The 2010 Letter Agreement
further states: “The terms of this letter are governed
by Dutch law, and the Courts of Amsterdam shall have
exclusive jurisdiction to resolve any dispute
between the parties arising out of or in connection with this
letter agreement.” Id. (emphasis added).
September 20, 2012, Plaintiffs sent Defendants a letter
stating that Defendants were selling a shoe called the
“Ecco Women's Biom Golf” shoe (the
“Biom” shoe) that, according to Plaintiffs, bore
confusingly similar imitations of Plaintiffs'
Three-Stripe Mark. The Biom shoe was not one of the two
footwear models specifically enumerated in the 2010 Letter
Agreement. The parties entered into another settlement
agreement (the “2013 Letter Agreement”), in which
Defendants agreed to cease production and sale of the Biom
shoe. According to Plaintiffs, the 2013 Letter Agreement
incorporates by reference the entirety of the 2010 Letter
filed this lawsuit on April 20, 2016. In their breach of
contract claim stated in their original complaint, Plaintiffs
alleged that Defendants breached the 2013 Letter Agreement by
manufacturing and selling the shoe models specifically
enumerated in the Complaint. Defendants moved to dismiss
Plaintiffs' breach of contract claim on the basis that
Defendants failed to allege sufficient facts to show breach
of contract because the 2013 Letter Agreement pertained only
to the Biom shoe, and Plaintiffs had not alleged that
Defendants manufactured or sold the Biom show after the
parties entered into the 2013 Letter Agreement. Indeed, it
appears that Plaintiffs base their claims for relief on the
allegation that Defendants are currently offering for sale
and selling certain, specifically-identified footwear-not
including the Biom shoe-that allegedly infringes
Plaintiffs' Three-Stripe trademark. The Court granted
Defendants' motion without prejudice and gave Plaintiffs
leave to replead their claim for breach of contract claim.
subsequently filed a First Amended Complaint
(“FAC”). Plaintiffs now allege that Defendants
breached the 2013 Agreement by selling a four-stripe shoe in
2016 (the “2016 Four-Stripe Shoe”) that is
“substantially and materially identical” to the
move to strike the 2010 Letter Agreement and all references
to it in the FAC. Defendants specifically seek to strike
Paragraphs 27 and 28 of the FAC; reference to the 2010 Letter
Agreement in Paragraphs 29, 30, and 43 of the FAC; Exhibit 11
(the 2010 Letter Agreement) to the FAC; and pages 3-10 of
Exhibit 12 (the 2012 letter from Plaintiffs to Defendants) to
the FAC, as well as any quotations from the 2010 Letter
Agreement that may appear in Exhibit 12. Defendants argue
that the 2010 Agreement is immaterial and impertinent and
that its inclusion in the FAC prejudices Defendants by
confusing and “coloring” the issues. Defendants
focus initially on Plaintiffs' breach of contract claim,
arguing that the 2010 Letter Agreement is irrelevant to that
claim for relief or the defenses being pleaded because its
restrictions do not encompass the 2016 Four-Stripe Shoe.
Defendants further argue that inclusion of the 2010 Letter
Agreement in the FAC prejudices Defendants by confusing the
issues because, under the exclusive jurisdiction provision of
the 2010 Letter Agreement, only the courts in The Netherlands
have the authority to determine whether a breach of the 2010
Agreement has occurred.
respond that, even assuming that the 2010 Letter Agreement is
not relevant to the breach of contract claim, it is relevant
to the other five claims that Plaintiffs have made because it
shows Plaintiffs' trademark enforcement efforts as well
as Defendants' acknowledgement of Plaintiffs' rights
in the Three-Stripe mark, which in turn bears on the issue of
Defendants' intent or lack thereof. Plaintiffs also argue
that the 2010 Letter Agreement is relevant to show that the
2013 Agreement resolved a broader trademark dispute, not just
a dispute over the specific Biom golf shoe. Regarding
prejudice and confusion of the issues, Plaintiffs respond
that striking ...