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

dissenting in part and concurring in part.

*270 MEMORANDUM *

Plaintiffs Adidas America, Inc., and Adidas-Salomon AG (collectively “Adidas”) appeal the District Court’s partial summary judgment order in favor of Defendant Payless Shoesource, Inc. (“Payless”). In its Lanham Act action, Adidas alleged that Payless infringed upon Adidas’s trademark by selling footwear bearing confusingly similar imitations of Adidas’s registered Three-Stripe Mark. The District Court held that a 1994 settlement agreement between Adidas and Payless precludes Adidas’s current claims.

We reverse the District Court’s summary judgment order and remand for further proceedings consistent with this disposition.

I.

As a threshold issue, we find we have jurisdiction to consider this appeal under 28 U.S.C. § 1291 . Adidas raised ten claims before the District Court relating to trademark infringement and dilution, unfair competition, breach of contract, and trade dress infringement and dilution. On summary judgment, the District Court dismissed all of the claims, except those related to trade dress, because it concluded that the 1994 settlement agreement between the parties prevented Adidas from bringing any…

I respectfully dissent from Part I of the majority’s disposition. The majority reads Wood v. GCC Bend, LLC 1 too narrowly. There is a significant factual overlap between the issues on appeal in this case and those still pending in the district court and the issue may well give rise to additional appeals based on the further proceedings of the district court. Wood should be the end of this appeal. 2 We should reverse certification and dismiss the appeal.

As to Part II of the disposition pertaining to the merits of the case, I would agree fully with the majority’s disposition, if I thought it appropriate to reach the merits.

. Wood. v. GCC Bend, LLC, 422 F.3d 873 (9th Cir.2005).

. Id. at 880 .