False Marking Affirmative Defenses -- Laches & Unclean Hands Are In, Advice Of Counsel Is Out

The court granted plaintiff's motion to amend its answer to defendant's false marking claim to include laches and unclean hands defenses and rejected defendant's argument that equitable defenses may not be invoked against the government and therefore cannot be invoked against a defendant who stands in the government's shoes. "The Ninth Circuit considered an identical argument in the context of the Clean Air Act and disagreed. . . . Thus, the Court finds that laches and the equitable defense of unclean hands are suitable affirmative defenses against a citizen suit brought under § 292." However, the court denied plaintiff's motion to amend to assert an advice of counsel affirmative defense. "[T]he Federal Circuit [in Pequignot v. Solo Cup Co., 608 F.3d 1356 (Fed. Cir. 2010)] considered advice of counsel not as an affirmative defense, but as part of the 'intent to deceive' analysis. [Plaintiff] notes that the 'advice of counsel defense' contains the word 'defense.' But appending the word 'defense' to a phrase does not an affirmative defense make."

Oakley, Inc. v. Ryders Eyewear, 3-09-cv-02037 (CASD November 23, 2010, Order) (Sammartino, J.)