Adidas-America, Inc. v. Payless Shoesource, Inc.

REDACTED OPINION AND ORDER

adidas-America, Inc. and adidas-Salomon AG (collectively, “adidas”) filed this *1040 action against Payless Shoesource, Inc. (“Payless”) for trademark and trade dress infringement, dilution, and related federal and state law claims, adidas alleges Pay-less is willfully infringing adidas’ trademark rights by marketing and selling footwear bearing confusingly similar imitations of adidas’ Three-Stripe trademark and Superstar Trade Dress.

Before the court are (1) adidas’ motion for partial summary judgment (doc. 539); (2) Payless’ motion to strike plaintiffs’ demand for jury trial (doc. 545); (3) Payless’ motion for summary judgment on adidas’ claim of willfulness (doc. 547); (4) Payless’ motion for summary judgment dismissing adidas’ federal and state dilution claims (doc. 548); (5) Payless’ motion for summary judgment on adidas’ claim of trademark and trade dress infringement (doc. 550); (6) Payless’ motion for summary judgment on affirmative defense of laches (doc. 551); and Payless’ motion (doc. 651) to strike the Rule 26 reports of Dr. Gerald Ford.

For the reasons set forth below, adidas’ Motion for Partial Summary Judgment (doc. 539) is GRANTED in part, and DENIED in part; Payless’ Motion to Strike adidas’ Demand for Jury Trial (doc. 545) is DENIED; Payless’ Motion for Summary Judgment on adidas’ Claims of Willfulness (doc. 547) is DENIED; Payless’ Motion for Summary Judgment on adidas’ Federal and State Dilution Claims (doc. 548) is GRANTED in part, and DENIED in part; Payless’ Motion for Summary Judgment on adidas’ Trademark and Trade Dress Infringement Claims (doc. 550) is DENIED; and Payless’ Motion for Summary Judgment on the Affirmative Defense of Laches (doc. 551) is DENIED; and Pay-less’ Motion (doc. 651) to Strike Dr. Gerald Ford’s Rule 26 Reports is DENIED.

I. Background

The following relevant facts are taken from the parties’ respective concise statements of material fact and are undisputed.

A. The Parties and Their Products

adidas manufactures and sells athletic and casual footwear. As early as 1952, adidas began placing three parallel bands on athletic shoes, and in 1994, adidas registered the first of several variations of Three-Stripe trademark with the U.S. Patent and Trademark Office. The 1994 Three-Stripe mark consists of three parallel and equidistant double-serrated stripes of contrasting color on the side of the shoe running diagonally from the mid-sole forward to the shoelaces. In 1999, adidas registered a slight variation of the Three-Stripe mark, which consists of three parallel and equidistant straight-edged stripes of contrasting color running diagonally from the mid-sole forward to the laces on the side of the shoe. 1

Among its many different models of shoes, adidas manufactures and sells the Superstar, Country Ripple, Tuscany/adi Racer, Pranja, Copa Mundial, Campus, Samoa, Stan Smith Millennium, and Mei, which are all at issue in this case. Each of the shoes at issue here bear variations of the registered Three-Stripe mark. Some bear three double-serrated stripes, others bear three straight-edged stripes. For the purpose of its trademark claims, adidas does not claim protectable rights in any shoe feature other than its Three-Stripe Mark.

*1041 adidas has used and promoted the Three-Stripe Mark since 1952, and promotes itself as “The Brand With Three Stripes.” adidas has used the mark in connection with its frequent sponsorship of professional sports events and organizations, such as the World Cup soccer tournament, the Boston Marathon, the New York Yankees, University of Notre Dame, the University of California at Los Angeles, the University of Nebraska, and the University of Tennessee, adidas also sponsors numerous professional athletes who wear apparel bearing the Three-Stripe mark. Since introducing the Three-Stripe mark, adidas has spent millions of dollars promoting the mark and products bearing the mark. In recent years, adidas’ annual sales of products bearing the Three-Stripe mark have totaled in the billions of dollars globally, and in the hundreds of millions of dollars within the United States.

adidas also claims protected rights in a Superstar Trade Dress, adidas first introduced the Superstar Trade Dress in 1969 and its principle features have not changed since that time. It consists of: (1) three parallel stripes (ie., the Three-Stripe Mark) on the side of the shoe parallel to equidistant small holes; (2) a rubber “shell toe”; (3) a particularly flat sole; and (4) a colored portion on the outer back heel that identifies the shoes as adidas’ brand.

adidas has used and promoted the Superstar Trade Dress since its introduction in 1969. The general public, professional and amateur athletes, hip-hop music artists, and the media commonly associate the Superstar Trade Dress with adidas. The Superstar was widely used by professional basketball players in the 1970s. In the late 1980s, the adidas “shell toe” reemerged as a fashion shoe, made popular by hip-hop music artists such as the Beastie Boys and RunDMC. Since 1999, sales of Superstar shoes have exceeded $711 million, with more than 5 million pair sold in the United States in 2001.

adidas has enforced its rights in both the Three-Stripe mark and the Superstar Trade Dress. Since 1995, adidas has pursued over 325 infringement matters involving the Three-Stripe mark in the United States, filed more than 35 separate lawsuits for infringement of the Three-Stripe mark, and entered into more than 45 settlement agreements with companies selling infringing footwear.

Payless is one of the nations’ largest retailers of discount casual and athletic footwear. Payless operates approximately 4,500 stores in 49 states, and sells more than 200 million pairs of shoes annually. Since at least 1994, Payless has marketed and sold athletic shoes bearing parallel stripes. 2 Though Payless no longer sells footwear bearing three parallel stripes, Payless does sell several models of athletic footwear that bear two or four parallel straight-edged stripes, running diagonally from the mid-sole forward to the laces. Payless does uses stripe designs on shoes not to signify source, but as mere decoration or ornamentation.

*1042 Payless also sells shoes that have a rubber “shell toe,” a flat sole, and a colored portion on the outer back heel. Instead of using three stripes, however, Payless’ “shell toe” shoe bears four parallel straight-edge stripes on the side of the shoe, parallel to equidistant small holes. Payless acknowledges that it uses adidas’ shoes as “inspirations” for its stripe-shoe designs.

None of Payless’ allegedly infringing shoes bear three stripes. Rather, they all bear either two or four parallel stripes running diagonally from the mid-sole to the laces. Payless shoes are sold almost exclusively at Payless retail stores, and adidas shoes are not available at Payless retail stores. Although the parties dispute whether they compete for the same consumers, adidas and Payless do advertise their respective products through at least some of the same media channels.

B. History of the Dispute

In 1994, adidas filed an action alleging Payless willfully infringed adidas’ trademark rights by selling athletic shoes bearing confusingly similar imitations of adidas’ Three-Stripe mark. 3 Pursuant to a subsequent 1994 Settlement Agreement, Payless agreed not to sell athletic shoes bearing “three substantially straight parallel stripes on the side of the shoe running diagonally from the outsole forward to the lacing area,” or “two or four parallel double-serrated stripes of contrasting color running diagonally from the outsole forward to the lacing area.” adidas, in turn, agreed to dismiss the action with prejudice, and to release any claims that it “brought or could have brought” based on Payless’ use of “two or four parallel double-serrated stripes” on footwear. Payless thereafter ceased selling three-striped shoes, as well as shoes with two or four double-serrated stripes, but continued to sell shoes with two or four straight-edged stripes.

In November 2001, adidas filed this action, claiming Payless violated the 1994 Settlement Agreement, and alleging some of Payless’ two- and four-stripe shoe designs infringed adidas’ Three-Stripe mark and Superstar Trade Dress. Payless moved for summary judgment on all of adidas’s trademark claims, arguing that the claims were barred by the parties’ 1994 Settlement Agreement because the 1994 Settlement Agreement only prohibited Payless from selling shoes with serrated stripes and the shoes at issue had straight-edged stripes, adidas contended Payless’ shoes violated the agreement because the shoes were designed to appear to be double-serrated.

On October 8, 2002, Magistrate Judge Jelderks granted Payless’ motion for summary judgment based on the 1994 Settlement Agreement, and dismissed all of adidas’ trademark infringement claims. Judge Jelderks concluded that the 1994 Settlement Agreement only prohibited Payless from selling shoes with stripes that were “actually ‘double-serrated.’ ” He concluded adidas’ trademark infringement claims were barred because the shoes at issue plainly did not have serrated edges. On January 6, 2003, Judge Haggerty adopted Magistrate Judge Jelderks’ Findings and Recommendation.

adidas appealed Judge Haggerty’s decision to the Ninth Circuit. In June 2004, Judge Redden stayed the case pending the Ninth Circuit’s decision on the merits. In January 2006, the Ninth Circuit reversed. In so doing, the court concluded:

A plain reading of the agreement demonstrates that Adidas released only *1043 those claims against Payless that Adidas “brought or could have brought” before the dismissal of the action that was the subject of the settlement. The shoe stripe designs at issue in the present dispute, however, were not produced by Payless until after the 1994 agreement was concluded. Adidas could not have brought a claim against shoes not in existence prior to the execution of the settlement. Therefore, the 1994 settlement agreement does not preclude Adidas’s [sic] present Lanham Act claims against Payless.

Adidas America, Inc. v. Payless Shoe-source, Inc., 166 Fed.Appx. 268, 270-71 (9th Cir.2006).

C. adidas’ Third Amended Complaint

On June 20, 2006, Judge Redden lifted the stay in this case. In August 2006, adidas filed its Third Amended Complaint, adding 231 specific “shoe lots” to the 37 previously at issue. 4 Though adidas objects to 268 different “shoe lots” in this case, most of those accused “lots” are essentially variations of nine distinct styles of footwear that adidas claims Payless is infringing: the Superstar, Country Ripple, Tuscany, adi Racer, Pranja, Copa Mundial, Campus, Samoa, Stan Smith Millennium, and Mei. Although some of the accused shoes bear little or no resemblance to any of the above-mentioned shoe styles, they all share one common characteristic: two or four parallel, equidistant stripes running diagonally from the mid-sole forward to the laces. None of the accused shoes bear three stripes.

adidas alleges Payless’ two- and four-stripe footwear infringes adidas’ Three-Stripe Mark and its Superstar Trade Dress, adidas asserts eleven claims for relief, including: (1) federal trademark infringement of the Three-Stripe Mark in violation of 15 U.S.C. § 1114 (First Claim); (2) federal unfair competition in violation of 15 U.S.C. § 1125(a), as to the Three-Stripe Mark and the Superstar Trade Dress (Second and Third Claims); (3) federal dilution in violation of 15 U.S.C. § 1125(c), as to the Three-Stripe Mark and Superstar Trade Dress (Fourth and Fifth Claims); (4) state trademark dilution and injury to business reputation in violation of O.R.S. § 647.107, and various other states’ laws as to the Three-Stripe Mark and Superstar Trade Dress (Sixth and Seventh Claims); (5) common law infringement and unfair competition as to the Three-Stripe Mark and Superstar Trade Dress (Eighth and Ninth Claims); and (6) unfair and deceptive trade practices as to the Three-Stripe Mark and Superstar Trade Dress (Tenth and Eleventh Claims), adidas seeks injunctive relief, as well as recovery of profits on the basis of unjust enrichment, dilution damages under the Federal Trademark Dilution Act, 15 U.S.C. § 1125(c)(2), enhancement of damages pursuant to 15 U.S.C. § 1117(a), and attorney’s fees and costs.

Payless asserts the affirmative defenses of laches, waiver, estoppel, abandonment, acquiescence, unclean hands, trademark misuse, and contractual estoppel. Payless also asserts the Three-Stripe mark and Superstar Trade Dress are function, and therefore not protectable under the Lanham Act. Payless alleges counterclaims for abandonment and cancellation of the Three-Stripe mark, breach of contract, and unfair competition and deceptive trade *1044 practices in violation of O.R.S. § 646.605 et seq., and various other states’ laws.

adidas now moves for partial summary judgment as to each of Payless’ counterclaims and all but two of Payless’ affirmative defenses. Payless moves for partial summary judgment as to adidas’ claims of infringement, dilution, and willfulness. In addition, Payless moves for summary judgment on its affirmative defense of laches. Based on its motion for summary judgment on the issue of willfulness, Payless also moves to strike adidas’ demand for a jury trial. Finally, Payless moves to strike adidas’ expert report and testimony.

II. Summary Judgment Standards

Under Federal Rule of Civil Procedure 56(c), summary judgment is appropriate when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. The moving party must demonstrate an absence of any genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). A fact is material if it could affect the outcome of the suit under the governing substantive law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Once the moving party shows the absence of an issue of material fact, the non-moving party must go beyond the pleadings and designate specific facts showing a genuine issue for trial. Celotex, 477 U.S. at 324, 106 S.Ct. 2548. A scintilla of evidence, or evidence that is merely colorable or not significantly probative, does not present a genuine issue of material fact. United Steelworkers of Am. v. Phelps Dodge Corp., 865 F.2d 1539, 1542 (9th Cir.1989).

In evaluating a motion for summary judgment, the court must view all reasonable inferences in favor of the nonmoving party. Liberty Lobby, 477 U.S. at 255, 106 S.Ct. 2505. Summary judgment is not appropriate where the record would allow a reasonable trier of fact to find for the nonmoving party. United States v. $69,292.00 in U.S. Currency, 62 F.3d 1161, 1166 (9th Cir.1995). Conversely, summary judgment must be entered against a party who fails to make a showing sufficient to establish the existence of an essential element to that party’s case, and on which that party will bear the burden of proof at trial. Celotex, 477 U.S. at 323, 106 S.Ct. 2548. Additionally, “[bjecause of the intensely factual nature of trademark disputes summary judgment is generally disfavored in the trademark arena.” Interstellar Starship Servs., Ltd. v. Epix, Inc., 184 F.3d 1107, 1109 (9th Cir.1999) (citing Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1356 n. 5 (9th Cir. 1985)).

III. Discussion

A. Payless’ Motion to Strike Dr. Ford’s Survey and Testimony

Payless seeks an Order striking both the August 22, 2003 Rule 26 report and the March 15, 2007 Supplemental Rule 26 expert report of Dr. Gerald Ford. Pay-less also seeks an order barring Dr. Ford from testifying at trial. Payless argues Dr. Ford’s likelihood of confusion surveys, which focused on adidas’ Superstar Trade Dress infringement claims, cannot be used to support adidas’ Three-Stripe trademark infringement claims because the accused shoes are “noticeably distinguishable” from one another. Payless further contends that Dr. Ford improperly relied on likelihood of confusion surveys he conducted for adidas in other cases involving potentially infringing third-party uses of two and four-stripe designs. In essence, Pay-less argues that because Dr. Ford did not conduct a likelihood of confusion survey for each of the accused shoes lots at issue, his expert reports must be stricken with respect to all of the unreviewed shoes. I disagree.

*1045 Where actually surveyed products and subsequently accused products share common and prominent features, a trademark infringement plaintiff need not create new likelihood of confusion surveys for each newly accused product. Indeed, Payless concedes that because “[e]ach of [the 37 lots adidas accuses of trade dress infringement] shared common features with one another, ... it [was] arguably proper for Dr. Ford to conduct a single survey on a single shoe that contained these common features.” Payless Mem. in Supp. Of Motion to Strike, at 7 (emphasis added). Notably, all of Payless’ accused shoes, including those which Dr. Ford actually surveyed, share a common and prominent feature (ie., two- or four-parallel, equidistant and diagonal stripes that allegedly infringe the Three-Stripe Mark). Thus, it was “arguably proper for Dr. Ford to conduct a single survey that contained [those] common features.”

Payless’ also contends Dr. Ford’s report must be stricken because his methodology was flawed. Payless argues Dr. Ford improperly (1) used third-party surveys to assess whether Payless’ two- and four-stripe shoes cause consumer confusion, (2) used still photographs as survey stimuli, rather than replicating actual market conditions, (3) failed to isolate adidas’ claimed trade dress, and (4) use of leading questions. Dr. Ford conducted eleven different surveys as to the likelihood of post-sale confusion caused by various brands of footwear with two or four parallel, equidistant stripes running diagonally from the mid-sole forward to the laces. All of the surveys were conducted using the same methodology, and all of the surveyed shoes share common design features (ie., two or four parallel, equidistant stripes). Each of Payless’ objections go to the weight of Dr. Ford’s surveys, rather than their admissibility. Wendt v. Host Intern., Inc., 125 F.3d 806, 814 (9th Cir.1997); see also Prudential Ins. Co. v. Gibraltar Fin. Corp., 694 F.2d 1150, 1156 (9th Cir.1982) (“Technical unreliability goes to the weight accorded a survey, not its admissibility.”). Accordingly, the motion to strike Dr. Ford’s expert reports is denied.

B. Payless’ Motion for Partial Summary Judyment on adidas’ Claims of Willfulness

Payless contends that its “good faith” interpretation of the 1994 Settlement Agreement, in combination with its reliance on the advice of outside counsel precludes the finding of any willful infringement. As such, Payless seeks summary judgment on all of adidas’ damages claims that are dependent on a finding of willfulness, including adidas’ claims seeking: (1) recovery of profits on the basis of unjust enrichment; (2) dilution damages under the Federal Trademark Dilution Act (“FTDA”), 15 U.S.C. § 1125(c)(2) (effective until Oct. 5, 2006); and (3) enhanced damages pursuant to 15 U.S.C. § 1117(a).

1. Legal Standards

As a general rule, a plaintiff must establish that the defendant engaged in willful misconduct to obtain profits under the theory of unjust enrichment. Lindy Pen Co., Inc. v. Bic Pen Corp., 982 F.2d 1400, 1405-06 (9th Cir.1993); see also Maier Brewing Co. v. Fleischmann Distilling Corp., 390 F.2d 117, 123 (9th Cir.1968) (“[T]he District Court reached the correct and proper conclusion when, upon finding that appellants ‘knowingly, willfully and deliberately’ infringed the said trade-mark ... it granted appellees an accounting of appellants’ profits.”). 5 A similar finding of *1046 willful misconduct is required for a plaintiff to recover enhanced profits and damages under 15 U.S.C. § 1117, Nintendo of Am., Inc. v. Dragon Pac. Int’l, 40 F.3d 1007, 1010 (9th Cir.1994), or damages for dilution under the FTDA. See 15 U.S.C. §§ 1125(c)(1) and (2) (Prior to October 6, 2006, where a defendant’s “commercial use” of plaintiffs trademark “causes dilution of the distinctive quality of [the plaintiffs famous] mark,” and the defendant “willfully intended to trade on the owner’s reputation or to cause dilution of the famous mark,” the owner of the famous mark “shall ... be entitled to the remedies set forth in section[ ] 1117(a)....”).

“Willful [misconduct] carries a connotation of deliberate intent to deceive. Courts generally apply forceful labels such as ‘deliberate,’ ‘false,’ ‘misleading,’ or ‘fraudulent’ to conduct that meets this standard.” Lindy Pen, 982 F.2d at 1406 (citing Bandag, Inc. v. Al Bolser’s Tire Stores, Inc., 750 F.2d 903, 918-19 (9th Cir.1984)). The infringement must be “willfully calculated to exploit the advantage of an established mark.” Lindy Pen, 982 F.2d at 1405; see also Danjaq LLC v. Sony Corp., 263 F.3d 942, 957-58 (9th Cir.2001) (“[W]illful” means “conduct that occurs with knowledge that the defendant’s conduct constitutes ... infringement”); Maier Brewing, 390 F.2d at 123 (Willfulness where the defendant is “attempting to gain the value of an established name of another.”); ALPO Petfoods, Inc. v. Ralston Purina Co., 913 F.2d 958, 966 (D.C.Cir.1990) (A finding of willfulness “require[s] a connection between a defendant’s awareness of its competitors and its actions at those competitors’ expense.”). “[T]he primary consideration is whether the infringer, acting in good faith and upon due inquiry, had sound reason to believe that it had the right to act in the manner that was found to be infringing.” SRI Int’l, Inc. v. Advanced Tech. Labs., 127 F.3d 1462, 1464-65 (Fed.Cir.1997). Thus, willful infringement is a question of fact that turns on the defendant’s state of mind, and “is often accompanied by questions of intent, belief, and credibility.” Id. at 1465; see also Ortho Pharm. Corp. v. Smith, 959 F.2d 936, 944 (Fed.Cir.1992) (“Whether infringement is ‘willful’ is by definition a question of the infringer’s intent.”).

2. The 1994 Settlement Agreement

In the 1994 Settlement Agreement, adidas agreed to dismiss its claims against Payless and to release any claims that it “brought or could have brought” based on Payless’ use of “two or four parallel double-serrated stripes” on footwear. Payless agreed not to sell shoes “bearing two or four parallel double-serrated stripes of contrasting color running diagonally from the outsole to forward to the lacing area.” Payless argues that based on its interpretation of the agreement, it reasonably believed it could continue to sell shoes with two and four parallel stripes without infringing adidas’ rights, so long as its stripes did not have “double-serrated” edges. Payless argues that its reliance on *1047 the 1994 Settlement Agreement necessarily precludes a finding of willful infringement as a matter of law. I disagree

Payless’ purported reliance on the 1994 Settlement Agreement does not preclude a finding of willfulness because the agreement did not say that if Payless refrains from using double-serrated stripes, its use of parallel stripes can never violate adidas’ trademark rights. As the Ninth Circuit noted, the agreement contains no forward-looking statements that preclude adidas from ever bringing another trademark infringement claim against Payless based on the use of stripes on shoes. The 1994 Settlement Agreement simply prohibited Payless from selling shoes with the specific design features then at issue — namely, double-serrated stripes. It did not authorize Payless to intentionally infringe adidas’ Three-Stripe mark so long as Pay-less avoided using serrated stripes in doing so. In any event, Payless’ supposed reliance on its interpretation of the 1994 Settlement Agreement cannot shield it from liability for conduct that continued (and continues to occur) long after the Ninth Circuit expressly rejected that interpretation. A fact-finder could reasonably find that Payless’ continued reliance on its flawed interpretation of the 1994 Settlement Agreement was unreasonable.

Finally, adidas submitted circumstantial evidence that tends to undermine Payless’ claim that any infringement was, as a matter of law, non-willful. Many of the accused Payless shoes are nearly identical to adidas’ shoes, and Payless acknowledges that adidas’ shoes were the “inspiration” for the some of the accused shoes. See Feldman Deck, Ex. 60 (“What are the current inspirations for these styles? ... adidas ‘clima cool’”); id. Ex. 63 (“These new adidas inspired looks are great ... the Adidas [sic] inspired white 4 stripe low is a top seller.”). Moreover, Payless employees referred to many of the accused shoes by the name of the corresponding adidas model, or simply as adidas “knockoffs.” Id. Ex. 44 (“we need more Nike & adidas ‘running’ knock-offs”); id. Ex. 76 (“an adidas look a like 4-stripe”); id. Ex. 31 (“these orders are for the country ripple jogger”); id. Ex. 55 (“samoa has already been purchased”); id. Ex. 61 (“on the adidas 4-stripe TAM 16701 the factory has been confirmed as follows.... ”). This evidence at least raises genuine issues of material fact as to whether Payless attempted to avoid adidas’ styles after executing the 1994 Settlement Agreement, or instead continued to manufacture adidas imitations. On this record, a jury could reasonably conclude that Payless did not in fact rely on the 1994 Agreement and that its interpretation of the agreement was both unreasonable and willful. Accordingly, the 1994 Settlement Agreement does not entitle Payless to summary judgment on the issue of willfulness.

3. Advice of Counsel

A defendant’s reliance on the advice of counsel is relevant to the question of willfulness. Columbia Pictures Television, Inc. v. Krypton Broad, of Birmingham, 259 F.3d 1186, 1196 (9th Cir. 2001). Generally, obtaining the advice of counsel generally negates a finding of willfulness unless the advice is ignored or is found to be incompetent. Chiron Corp. v. Genentech, Inc. 268 F.Supp.2d 1117, 1121 (E.D.Cal.2002) (citing Comark Comm., Inc. v. Harris Corp., 156 F.3d 1182, 1191 (Fed. Cir.1998)). Before a court will consider the exculpatory value of an opinion of counsel, however, “the legal advice contained therein must be found on the totality of the circumstances to be competent such that the client was reasonable in relying upon it.” Comark, 156 F.3d at 1191. If the opinion is not competent, then it is of little value in showing the good faith belief of the infringer. Id.

*1048 Whether advice is competent, and whether it was reasonable to rely on the advice, depends on several factors, including: (1) the background research performed by the attorney; (2) whether the opinions were written or oral; (3) the objectivity of the opinions; (4) whether the attorneys rendering the opinions were trademark lawyers; (5) whether the opinions were detailed or merely conclusory; and (6) whether material information was withheld from the attorney. Chiron, 268 F.Supp.2d at 1121 (citing Comark, 156 F.3d at 1191; 7 Chisum, Chisum on Patents § 20.03[4][b][v][D], at 20-368 to 20-374 (2002)). 6 The advice of counsel “must be thorough enough, as combined with other factors, to instill a belief in the infringer that a court might reasonably hold the patent is invalid, not infringed, or unenforceable.” Ortho Pharm., 959 F.2d at 944.

It is undisputed that Payless obtained infringement “risk assessments” from outside counsel who specialized in trademark law. There are, however, significant questions as to whether Payless’ counsel actually reviewed each of the shoes at issue in this case and whether the reviews were conducted before the commencement of this lawsuit. For example, Payless acknowledges that it did not obtain any advice as to its allegedly infringing version of the Stan Smith Millennium. As a matter of law, Payless’ advice of counsel defense fails as to Payless’ allegedly infringing versions of that shoe because a party cannot rely on advice that it did not seek or obtain. Payless’ conclusory assertion that its version of the Stan Smith looks nothing like the adidas version does not alter that conclusion.

Furthermore, there are genuine issues of fact as to whether Payless’ counsel actually reviewed each of the shoes at issue. Payless has produced “shoe review” documents for only 40 of the 267 shoe lots in dispute. Of the reviewed shoe lots, five were reviewed only for trade dress concerns, and not trademark concerns. With respect to the unreviewed shoes, it is difficult to see how Payless can rely on advice that it did not actually seek or obtain.

I am not persuaded by Payless’ argument that even though it did not conduct actual reviews of each of the accused shoes, all of its shoes were “effectively” reviewed because once a particular design had been approved, the “approval ... carried over to any other proposed shoe that shared the exact same design pattern.” Payless Reply, at 19. The problem with this argument is that these so-called “effectively” reviewed shoe lots are not exactly the same as the actually reviewed shoe lots. Payless acknowledges that the “effectively” reviewed lots were offered in different colors and materials, and marketed to different customers (i.e., men, women, or children). Furthermore, some of these “effectively” reviewed lots relate back to actual shoe reviews that were conducted prior to the Ninth Circuit’s rejection of Payless’ interpretation of the 1994 Settlement Agreement. Notably, Payless’ attorneys did not alter any infringement “risk assessments” after the Ninth Circuit held that nothing in the agreement precluded adidas from bringing suit for in *1049 fringement based on the use of straightedge stripes.

In addition, many of the shoe reviews upon which Payless purportedly relied were conducted after adidas initiated this lawsuit. Of the shoe reviews submitted by Payless in support of its motion, only four pre-date the filing of this action in 2001. It is difficult to see how Payless could have relied in good faith upon advice that it did not seek or obtain until after adidas filed suit for willful infringement. Cf. Chiron, 268 F.Supp.2d at 1128, n. 4 (quoting O’Malley, et al., Federal Jury Practice & Instructions § 19.08, at 885 (5th ed.2000) (noting that like the advice of counsel defense in the criminal law context, the advice of counsel defense is available in the infringement arena “if, ‘before [acting or fading to act], [the defendant, while acting in good faith and for the purpose of securing advice on the lawfulness of [his] possible future conduct, sought and obtained the advice of an attorney whom [he] considered to be competent, and made a full and accurate report or disclosure to this attorney of all important and material facts of which [he] had knowledge or had the means of knowing, ...”’) (emphasis and alterations in original)). Payless’ failure to obtain advice of counsel before engaging in the conduct at issue undermines its contention that it acted in good faith reliance on the advice of its counsel. It also raises the inference that the opinions were designed simply to bolster Payless’ advice of counsel defense.

There are also genuine issues of material fact as to whether the advice obtained by Payless was objective, and whether Payless’ counsel considered all relevant information in forming their opinions. For example, Payless’ counsel made little or no effort to determine whether its use of stripes actually caused consumer confusion, or infringed upon adidas’ trademark. There is no evidence that Payless’ attorneys considered the fact that Payless’ shoes were “inspired” by adidas’ shoes— that is, Payless’ intent in selling the accused shoes. There is little evidence that Payless’ attorneys considered the degree of care exercised by the average purchaser, the relatedness of the parties’ goods, the similarity of the marks, or the similarity of the trade or marketing channels of the respective products. In other words, there is little evidence that Payless’ attorneys considered any of the likelihood of confusion factors that the Ninth Circuit has expressly instructed courts to consider in evaluating infringement claims. See Dr. Seuss Enterprises, L.P. v. Penguin Books USA Inc., 109 F.3d 1394, 1404 (9th Cir. 1997) (“The eight-factor Sleekcraft test is used in the Ninth Circuit to analyze the likelihood of confusion in all trademark infringement cases ....”) (emphasis added). As previously noted, Payless’ counsel did not alter any of the infringement “risk assessments” after the Ninth Circuit rejected Payless’ interpretation of the 1994 Settlement Agreement.

Under these circumstances, a jury could reasonably find that Payless’ attorneys lacked important information and rendered judgments about the likelihood of confusion and the risk of infringement without considering all of the facts that should inform such an analysis. Because the opinions were not based on all material information, a jury could also reasonably find that the opinions were not competent, and thus, Payless’ reliance on those opinions was unreasonable. 7

*1050 Perhaps the most telling characteristic of the opinion letters proffered by Payless, is the conclusory and superficial nature of the opinions themselves. In many cases, the entire substance of Payless’ counsel’s “detailed” advice consists of a single phrase or sentence. See e.g., Horace Decl. Ex. B, p. 1 (“XXX XXX”; regarding Campus); id. Ex. C, p. 1 (“XXX XX XX XXXX XXXX XX XXXXXXX XX XX XXXX XX XXX X XXXX XXX XX XXXXXX”; regarding Copa); id., Ex. D, p. 14 (“XXXXXXXX XXXXXX XXXXXXXXXX XXX XX XXXX XXXXX XXX XXXXX XXX XXXXXXXX XXXXXX XXXXX”; regarding 4-Stripe Country Ripple); id., Ex. J, p. 1 (“XXX XXXXXXXX”; regarding men’s Tuscany); id., Ex. K, p. 1 (“XXX XXXXXXXX”; regarding kids Tuscanny); id., Ex. N, p. 1 (“XXXX XX XXXXXXX XXXX XXX XXX XXXXXX XXXX XXXXXXX XXX XX XXXXXXXX XXXX XXX XXXX XX XX XXXXXXX XXXXXX XXXXXX XXX XXXXXXX XXXX XXXX XXXXXXXX”; regarding Samoa); id., Ex. Q, p. 1-2 (“XX XXXXXXXXX XXXXXX XXXXX”; “XXX XXXXX XXXXX XXXX XXXXX XX XXXXXXXXX XX XXXXXXXX XXXXXX XXXXXXXX XXX X XX XXX XXXXXX XXX”; “XXX XXXXX XXX XXXX XXXXXXX XXXXXXX”; regarding four-stripe Superstar) (emphasis in original). 8 These conclusory and unsupported opinion letters are devoid of any legal or factual analysis explaining the conclusion reached.

Notably, Payless neither cites, nor is the court aware of any case in which a defendant’s reliance on the kind of opinion letters proffered here entitled that defendant to summary judgment on the issue of willfulness. In Chiron Corp. v. Genentech, Inc., 268 F.Supp.2d 1117 (E.D.Cal.2002), the primary case upon which Payless relies, the court denied a defendant’s motion for summary judgment on the advice of counsel defense despite the fact that the defendant obtained a “fifty-six page letter [that was] thorough, detailed, cite[d] relevant case law, and was drafted by patent attorneys.” Chiron,