JOHN A. NORDBERG, U.S. District Judge
Before the court are two motions filed by defendant Nike Securities, L.P. ("Securities"). For the reasons set forth below, both motions are denied.
BACKGROUND
In 1997, plaintiff Nike, Inc. ("Nike") filed a complaint asserting a claim for trademark dilution under § 43(c) of the Federal Trademark Dilution Act of 1995 (the "Dilution Act"). 15 U.S.C. § 1125 (c). The complaint also asserted claims for infringement, unfair competition, and rectification of the Federal trademark register.
Defendant Securities filed a motion for partial summary judgment, seeking to dismiss the federal Dilution Act claim. Securities argued that it began using its marks well before 1996, when the Dilution Act became effective, and therefore it would be unfair to apply the Dilution Act retroactively against it. In a memorandum opinion, this court agreed with this argument and dismissed the federal Dilution Act claim. See Nike, Inc. v. Nike Securities, L.P., 1999 WL 98346 (N.D. Ill. Feb. 19, 1999).
Thereafter, Nike filed an amended complaint, adding various state law dilution claims. Securities then filed a motion for summary judgment on the infringement claims. As to the newly added state dilution claims, Securities filed a motion to bifurcate those claims on the theory that resolution of the infringement claims would make it unnecessary to ever try the dilution claims.
The claims are under the dilution statutes of Illinois, California, Florida, Georgia, Missouri, New York, Pennsylvania, and Texas.
DISCUSSION
I. Motion For Summary Judgment
Securities seeks summary judgment on the "confusion-based" claims for infringement, unfair competition, and Securities' right to register the "Nike" mark. These claims turn on whether there is a likelihood of confusion between each party's use of its marks.
Summary judgment may be granted when the record contains no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). A genuine issue for trial will be found only when "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby Inc., 477 U.S. 242, 248 (1986). It is therefore important that we evaluate the evidence in light of the nonmoving party; in this case, the plaintiff. Id. at 255; Popovits v. Circuit City Stores, Inc., 185 F.3d 726, 731 (7th Cir. 1999).
Each side has submitted lengthy briefs and supporting documents, in which they set forth detailed arguments for their respective positions. After reviewing these arguments carefully, this court approves and adopts the analysis set forth in Nike's response brief (at pp. 11-41), indicating that there are genuine issues of material fact on the question of the likelihood of confusion. Accordingly, the motion for summary judgment is denied.
II. Motion To Bifurcate State Dilution Claims.
Securities also has filed a motion, pursuant to Rule 42(b), to bifurcate the state law dilution claims. Fed.R.Civ.P. 42(b) (a court may order a separate trial of any claim when it is "in furtherance of convenience or to avoid prejudice, or when separate trials will be conducive to expedition and economy"). As the parties note, this is a mailer committed to this court's discretion.
Securities argues that resolution of the infringement claims will render unnecessary any trial on the state dilution claims. The reasoning is as follows. If Nike prevails on the infringement claims, then Nike will be entitled to an injunction and will have no incentive to pursue its state dilution claims. As Securities puts it in its brief there will then be no need to kick a cadaver. If, on the other hand, Securities wins on the infringement claims, then Securities will be entitled to a federal registration of its mark. Under § 43(c)(3) of the Dilution Act, the ownership of a valid registration "shall be a complete bar to an action . . . that is brought . . . under the common law or a statute of a State and that seeks to prevent dilution. . . ." 15 U.S.C. § 1125 (c)(3). Therefore, argues Securities, it will have a complete defense to the state dilution claims. Either way, there will be no need to for a trial on the state dilution claims.
The central issue here is whether Securities should be permitted to rely on a defense contained in the Dilution Act given that this court has already ruled that the Dilution Act should not be applied retroactively against Securities. Securities wants to rely on a defense set forth in subsection (c)(3) of § 43 of the Dilution Act. 15 U.S.C. § 1125 (c)(3). This court previously ruled that subsection (c)(11) of § 43 should not be applied retroactively against Securities. See Nike, 1999 WL 98346; 15 U.S.C. § 1125 (c)(1) providing that the owner of a "famous mark" may seek an injunction against uses that cause dilution of the distinctive quality of that mark). In other words, Securities ask for partial retroactivity.
Securities argues that different parts of the same statute may be treated differently for retroactivity purposes. As support for this general proposition, it relies on comments made by the Supreme Court in Landgraf v. USI Film Products, 511 U.S. 244, 280 (1994), which is the main case this court relied upon in its earlier retroactivity analysis. Even if we accept this general proposition — that different parts of a statute may be treated differently — we still must determine whether it makes sense to do so in this case. Securities has not set forth a compelling reason to do so. It argues that it should be free to avail itself of all defenses available to it at the time the charge is brought and that Nike had no settled expectations or vested rights regarding this defense.
In light of our earlier holding that subsection (c)(1) of the Dilution Act should not be applied retroactively, we think that there should be a presumption in favor of treating subsection (c)(3) in a similar fashion. See generally Landgraf, 511 U.S. at 270 (noting that retroactivity is "a matter on which judges tend to have `sound . . . instinct[s],' and familiar considerations of fair notice, reasonable reliance, and settled expectations offer sound guidance") (citations omitted). Although neither party has discussed the legislative history or structure of the Dilution Act, common sense dictates that these two particular statutory provisions should stand or fall together. Both subsections address the same general issue and are closely linked together. This is evidenced in part by the simple fact that they are both included under the same subheading — "Remedies for dilution of famous marks." In short, without a more compelling reason, we do not think it wise to pick apart — via retroactivity analysis — a statute that we must presume Congress constructed carefully. In addition, basic notions of fairness suggest that it would be unfair to prevent Nike from asserting a Dilution Act claim while at the same time allowing Securities to rely on a Dilution Act defense.
Both sides agree that the Dilution Act does not contain any express direction from Congress regarding retroactivity.
In Landgraf, where the Supreme Court suggested that different parts of a statute need not be treated uniformly for retroactivity purposes, the Supreme Court was analyzing what it described as the "diverse provisions" of the Civil Rights Act of 1991. See 511 U.S. at 280.
In sum, based on our earlier holding that the Dilution Act should not be applied retroactively in this case, we hold that Securities may not rely on § 43(c)(3) as a defense to the state law dilution claims. In light of this holding, there is no good reason to bifurcate the state law dilution claims, as even Securities concedes that these claims will involve some of the same witnesses and evidence as the infringement claims.
CONCLUSION
For the reasons set forth above, this court denies defendant's motion for summary judgment and denies its motion to bifurcate the state law dilution claims.