METAL JEANS , INC ., a Nevada corporation v. Metal Sport, Inc .; Does , 1-50

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
M ETAL J EANS , INC ., a Nevada
corporation,
Plaintiff-Appellant,
v.
M ETAL S PORT, INC .; DOES , 1–50,
Defendants-Appellees,
and
ANO VELI S AMUEL TURTIAINEN ,
Defendant.
No. 19-55923
D.C. No.
2:15-cv-08987-
DDP-RAO
OPINION
Appeal from the United States District Court
for the Central District of California
Dean D. Pregerson, District Judge, Presiding
Argued and Submitted August 11, 2020
Pasadena, California
Filed February 16, 2021
Before: Kim McLane Wardlaw and Lawrence VanDyke,
Circuit Judges, and Timothy Hillman,* District Judge.
Opinion by Judge VanDyke
* The Honorable Timothy Hillman, United States District Judge for
the District of Massachusetts, sitting by designation.

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2 M ETAL J EANS V. M ETAL S PORT
SUMMARY**
Trademark
The panel affirmed in part and reversed in part the
district court’s grant of summary judgment in favor of the
defendant and remanded in a trademark infringement action.
Metal Jeans, Inc., an apparel brand and owner of the non-
stylized trademark “METAL,” brought an infringement
claim against Metal Sport, Inc., a powerlifting brand with a
similar but stylized mark. The district court denied both
parties’ motions for summary judgment on the merits but
granted Metal Sport’s separate motion, concluding that
Metal Jeans came before the court with unclean hands. In
doing so, the district court rejected Metal Jeans’ counter-
defense that Metal Sport, too, acted with unclean hands.
The panel held that when reviewing a grant of summary
judgment on an unclean hands defense in a trademark
infringement case, the correct standard of review is abuse of
discretion.
In a separate memorandum disposition, the panel
concluded that district court improperly granted summary
judgment against Metal Jeans.
** This summary constitutes no part of the opinion of the court. It
has been prepared by court staff for the convenience of the reader.

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M ETAL J EANS V. M ETAL S PORT 3
COUNSEL
Stanley M. Gibson (argued) and Lauren E. Babst, Jeffer
Mangels Butler & Mitchell LLP, Los Angeles, California,
for Plaintiff-Appellant.
Yuval H. Marcus (argued), Cameron S. Reuber, and Lori L.
Cooper, Leason Ellis LLP, White Plains, New York, for
Defendants-Appellees.
OPINION
VANDYKE, Circuit Judge:
Metal Jeans, Inc., an apparel brand and owner of the non-
stylized trademark “METAL,” brought an infringement
claim against Metal Sport, Inc., a powerlifting brand with a
similar but stylized mark. Before the district court, both
parties sought summary judgment on whether Metal Sport’s
use of the stylized mark on certain apparel creates a
likelihood of consumer confusion. Metal Sport additionally
sought summary judgment on whether Metal Jeans was
barred from pressing its infringement claim by the equitable
doctrine of unclean hands. The district court denied both
parties’ merits motions because material facts remained in
dispute. But the court granted Metal Sport’s separate
motion, concluding that Metal Jeans came before the court
with unclean hands. In doing so, the district court rejected
Metal Jeans’ counter-defense that Metal Sport, too, acted
with unclean hands. Metal Jeans appealed only the unclean
hands judgment, so we must decide whether the district court
properly granted summary judgment on that basis.

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4 M ETAL J EANS V. M ETAL S PORT
In a separate memorandum disposition filed
simultaneously with this opinion, we conclude that the
district court improperly granted summary judgment against
Metal Jeans. We write here to resolve an issue of first
impression: the standard of review we employ when a
district court concludes that a party has acted with unclean
hands.
I.
Gary Topolewski is the owner of Metal Jeans and the
former president and owner of Topolewski America, Inc.
(“TA”). In 1990,1 Topolewski began selling METAL-
branded clothing and initially marketed these products
through hard-rock music magazines. Over the years, Metal
Jeans has promoted its apparel to a variety of consumer
segments, including motorcyclists, skaters, snowboarders,
lumberjacks, “head-bangers,” and (naturally) those who
“drop[] napalm on the enemy.”
TA obtained the METAL mark for use on jeans, shirts,
and boots in 1999. In 2005, Topolewski told the U.S. Patent
and Trademark Office (“PTO”) that TA had continuously
used the METAL mark on jeans, shirts, and boots since
1999. That turned out to be untrue—as to boots—and in a
separate 2008 proceeding, Topolewski’s false statement led
the PTO to cancel TA’s registration of the METAL mark.
Topolewski immediately reapplied for the mark, but this
time, through Metal Jeans. Metal Jeans obtained the
METAL registration in 2013.
Metal Sport, on the other hand, is the exclusive licensee
of a stylized “METAL” mark featuring a blocky, rough-
1 Metal Sport disputes Topolewski’s alleged first use date.

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M ETAL J EANS V. M ETAL S PORT 5
edged font. Owned by retired Finnish powerlifter Ano
Turtiainen, the mark is Turtiainen’s own creation. He drew
the stylized mark sometime around 1997 and thereafter
began selling specialized powerlifting apparel, gear, and
accessories featuring his design. Turtiainen registered the
stylized mark in August 2016.
Metal Jeans filed this trademark infringement suit in
2015, alleging that Metal Sport’s use of its stylized mark
creates a likelihood of consumer confusion. Both parties
moved for summary judgment, and on July 9, 2019, the
district court granted Metal Sport’s motion based on the
affirmative defense that Metal Jeans came before the court
with unclean hands. Metal Jeans’ timely appeal followed.
II.
“We review a district court’s grant of summary judgment
in a trademark infringement claim de novo, with all
reasonable inferences drawn in favor of the non-moving
party.” Yellow Cab Co. of Sacramento v. Yellow Cab of Elk
Grove, Inc., 419 F.3d 925, 927 (9th Cir. 2005). “Summary
judgment is appropriate when, viewing the evidence in the
light most favorable to the non-movant, there is no genuine
issue of material fact and the movant is entitled to judgment
as a matter of law.” Frudden v. Pilling, 877 F.3d 821, 828
(9th Cir. 2017). “This court does not weigh the evidence or
determine the truth of the matter, but only determines
whether there is a genuine issue for trial.” Balint v. Carson
City, 180 F.3d 1047, 1054 (9th Cir. 1999). Factual questions
related to the defense of unclean hands “may only be
resolved on summary judgment if the evidence presented by
both sides would permit the trier of fact to come to only one
conclusion.” Japan Telecom, Inc. v. Japan Telecom Am.
Inc., 287 F.3d 866, 871 (9th Cir. 2002).

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6 M ETAL J EANS V. M ETAL S PORT
Here, however, the district court granted summary
judgment solely on Metal Sport’s unclean hands defense, not
on the trademark infringement claim. The parties therefore
predictably disagree as to whether we should review that
decision de novo or for abuse of discretion. We have not
squarely addressed whether, when reviewing a grant of
summary judgment on an unclean hands defense in a
trademark infringement case, abuse of discretion is the
correct standard of review.
The doctrine of unclean hands arises in equity, and we
generally review a district court’s grant of equitable relief
for abuse of discretion. See Williams v. Gaye, 895 F.3d
1106, 1130 (9th Cir. 2018) (citing Traxler v. Multnomah
County, 596 F.3d 1007, 1014 n.4 (9th Cir. 2010)). In two
trademark cases where we reviewed district courts’ unclean
hands decisions at summary judgment, neither specified the
standard of review it was applying. See Japan Telecom,
287 F.3d at 871; Jarrow Formulas, Inc. v. Nutrition Now,
Inc., 304 F.3d 829, 842 (9th Cir. 2002). Our cases have
reviewed district courts’ application of other equitable
doctrines for abuse of discretion. See Seller Agency Council,
Inc. v. Kennedy Ctr. for Real Est. Educ., Inc., 621 F.3d 981,
986 (9th Cir. 2010) (“[T]he application of the equitable
doctrine of acquiescence is … reviewed for abuse of
discretion.”); Pinkette Clothing, Inc. v. Cosmetic Warriors
Ltd., 894 F.3d 1015, 1021 n.2 (9th Cir. 2018) (reviewing a
district court’s application of laches for abuse of discretion).
While Seller Agency Council stated that “[t]he application of
the equitable doctrine of unclean hands is … reviewed for
abuse of [] discretion,” 621 F.3d at 986, it didn’t actually
review the district court’s finding of unclean hands; that case
reviewed only the effect of that finding on the unclean
party’s ability to raise its own equitable defense, id. at 986–
87. Pinkette reviewed a district court’s decision not to apply

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M ETAL J EANS V. M ETAL S PORT 7
unclean hands for abuse of discretion. 894 F.3d at 1029
(citing TransWorld Airlines, Inc. v. Am. Coupon Exch., Inc.,
913 F.2d 676, 694 (9th Cir. 1990) (affirming the district
court’s rejection of the unclean hands defense, “to whose
discretion the matter was committed”)).
We think it a modest and obvious step to extend these
previous holdings to the present situation. Thus, the
appropriate standard of review of a district court’s
determination to grant summary judgment on the affirmative
defense of unclean hands is abuse of discretion. But, even
so, we still “‘review certain aspects of the district court’s
decision,’ such as ‘whether the district court inappropriately
resolved any disputed material facts in reaching its decision,’
under the de novo standard that traditionally governs
summary judgment review.” In re Beaty, 306 F.3d 914, 921
(9th Cir. 2002) (quoting Jarrow Formulas, Inc., 304 F.3d
at 833–34).
As discussed in the simultaneously filed memorandum
disposition, the district court erroneously construed the
evidence and its inferences in the movant’s—rather than the
non-movant’s—favor, and thereby inappropriately resolved
disputed facts. We accordingly AFFIRM IN PART,
REVERSE IN PART, and REMAND for proceedings
consistent with this opinion and the relevant memorandum
disposition.

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