Intellectual Property Law

Court Strikes Unclean Hands Defense as Not Sufficiently Related to Claims

By Michael Atkins

STL has previously reported on Campagnolo S.R.L. v. Full Speed Ahead, Inc., the Western District case involving the defendant bicycle parts manufacturer’s alleged statements about the qualities of the parties’ respective bicycle cranksets.

The parties filed a number of motions relating to Full Speed Ahead’s affirmative defense of unclean hands, including a motion for protective order seeking to preclude discovery about the defense, a motion to compel discovery about the defense, and two motions for sanctions against Full Speed Ahead for refusing to withdraw the defense.

On June 26, Judge Ricardo Martinez granted the motion to strike and denied the remaining motions as moot. The court found: “FSA’s claims are far too attenuated from the claims raised by Campagnolo to justify their inclusion in this lawsuit. For instance, Campagnolo brings this lawsuit based solely on representations made by FSA regarding Campagnolo’s crankset, a bicycle component that Campagnolo manufactures and develops. Campagnolo specifically contends that in 2008, FSA published several misleading advertisements regarding the stiffness-to-weight ratio of Campagnolo’s crankset in bicycle publications and on the web. Meanwhile, FSA counters that in three of Campagnolo’s own catalogues from 2004 through 2006, Campagnolo falsely advertised the weight of its own crankset. FSA does not allege that Campagnolo made any false claims about FSA’s cranksets. Thus, FSA’s claims do not directly relate to Campagnolo’s allegations, but rather accuse Campagnolo of ‘misconduct in the abstract.’”

The court added that “FSA mistakenly assumes that because the subject matter of the instant dispute is the weight of the parties’ respective cranksets, any and all conduct of Campagnolo with respect to its crankset is fair game. As mentioned above, the unclean hands defense does not stretch that far. Instead, ‘[t]he misconduct which brings the clean hands doctrine into operation must relate directly to the transaction upon which the complaint is made, i.e., it must pertain to the very subject matter involved and affect the equitable relations between the litigants.’ Therefore, in the instant case, FSA’s claims would have to directly relate to Campagnolo’s allegations regarding FSA’s misrepresentations about Campagnolo’s cranksets. This is the subject matter of this lawsuit. General allegations regarding Campagnolo’s prior history regarding its own advertisements are not the subject matter of this lawsuit. These are extraneous claims as Campagnolo’s advertising history does not directly relate to the alleged misrepresentations by FSA about Campagnolo’s cranksets.”

The case cite is Campagnolo S.R.L. v. Full Speed Ahead, Inc., No. 08-1372 (W.D. Wash. June 26, 2009) (Martinez, J.).

Full post as published by Seattle Trademark Lawyer on June 29, 2009 (boomark / email).