In a July 9, 2013 ruling, Judge George B. Daniels held that "there is no explicit rule that advice of counsel is an affirmative defense that must be pled in one's answer pursuant to Fed. R. Cir. P. 8(c) in a trademark case." The plaintiff, Bath & Body Works Brand Management, Inc., had started a declaratory judgment against defendant Summit Entertainment, LLC, the producer and distributor of the popular Twilight movies, for a declaration that Bath & Body's "Twilight Woods" and "Twilight Crush" marks did not infringe Summit's "Twilight" marks. Summit counterclaimed for infringement, and Bath & Body asserted, among other defenses, that its "actions were innocent and non-willful." In answering Summit's third amended complaint, Bath & Body also asserted as an affirmative defense that Summit's "'counterclaims are barred in whole or in part by the doctrine of advice of counsel.'"
Summit moved to strike the advice of counsel defense, contending that its assertion in response to the third amended complaint "was the first time it was put on notice that [Bath & Body] intended to defeat Summit's charge of willfulness by pointing to its reliance on the advice of counsel." In denying the motion, Judge Daniels found as a factual matter that the defense that Bath & Body's "actions were innocent and non-willful" put Summit on notice at the outset of the case that advice of counsel could be at issue, and that Bath & Body's express waiver of the attorney/client privilege on the issue during discovery indisputably informed Summit that advice of counsel was at issue. The Court also ruled as a legal matter:
Advice of counsel is not listed among Rule 8(c)'s non-exhaustive list of 19 affirmative defenses that must be pled or are waived. No trademark treatise lists advice of counsel as an affirmative defense that must be pled in a defendant's answer. Other courts in this Circuit have allowed defendants to raise advice of counsel to defeat willfulness without having to include it as an affirmative defense in their answers. (citations omitted)
Judge Daniels accordingly declined to strike the defense since if it did not have to be pled in the first instance its supposed untimely assertion could not prejudice Summit. The Court also denied Summit's motion for partial summary judgment on the defense, finding sufficient evidence to submit to a jury.
