Full opinion text
MEMORANDUM AND ORDER JULIE A. ROBINSON, District Judge. Plaintiffs University of Kansas (“KU”) and Kansas Athletics, Inc. (“Kansas Athletics”) filed this action against defendants Larry Sinks, Clark Orth, Larry Sinks Enterprises, Inc. and Victory Sportswear, L.L.C. alleging violations of state and federal trademark laws through the unauthorized and unlicensed sale of KU apparel. The following summary judgment motions are before the Court: (1) Motion for Summary Judgment on Plaintiffs’ Claims (Doc. 130) by KU and Kansas Athletics; (2) Motion for Summary Judgment (Doc. 131) by defendant Clark Orth; (3) Motion for Summary Judgment (Doc. 134) by defendant Larry Sinks; and (4) Motion for Summary Judgment (Doc. 136) by all defendants. In addition, the Court considers the following evidentiary motions in conjunction with the motions for summary judgment: (1) Motion in Limine to Exclude Evidence Concerning Third-Party Use of Plaintiffs’ Marks (Doc. 116); (2) Motion to Strike Declarations of Vander Tuig, Drucker, Temple, Baker, Campbell and Bonilla (Doc. 158); and (3) Motion to Strike Weblog (Doc. 160). As described more fully below, the Court denies the motion to exclude evidence of third-party use, denies the motion to strike the declarations of Vander Tuig and Drucker, grants the motion to strike the declarations of Temple, Baker, Campbell, and Bonilla, and grants in part and denies in part the motion to strike weblog evidence. The Court further denies defendant Sinks’ motion for summary judgment, defendant Orth’s motion for summary judgment and the motion for summary judgment filed by all defendants. Finally, the Court grants in part and denies in part plaintiffs’ motion for partial summary judgment. I. Evidentiary Motions The parties have filed motions asking to Court to rule on the admissibility of certain evidence, or to strike certain evidence submitted in support of summary judgment. The Court addresses them at this time. A. Motion to Strike Declarations of Paul Vander Tuig, Michael Drucker, Stephanie Temple, Karen Baker, Grace Campbell, and Mario Bonilla (Doc. 158) 1. Vander Tuig and Drucker Defendants ask the Court to strike the declarations of Paul Vander Tuig, the Trademark Licensing Director for KU, and Michael Drucker, the Vice President and Associate General Counsel of the Collegiate Licensing Company (“CLC”). Defendants argue that Vander Tuig’s deposition should be stricken because he was not properly designated as a witness under Fed.R.Civ.P. 30(b)(6) and that both Vander Tuig’s and Drucker’s declarations should be stricken because they constitute inadmissible hearsay and lack foundation. Defendants maintain that Vander Tuig, who was not designated by KU as a Rule 30(b)(6) witness, should have been designated as such and that his declaration is now being offered to “patch up holes” left by KU’s designated Rule 30(b)(6) witness, Theresa Gordzica, who is the chief business and financial planning officer for KU. According to defendants, at some point during or after Gordzica’s deposition testimony, “it became apparent that [she] was not the appropriate person for Plaintiffs to designate ... or that she was poorly prepared to address issues set forth in Defendants’ Rule 30(b)(6) notice.” Because defendants issued a Rule 30(b)(6) notice to KU, KU was required to “designate one or more officers, directors, or managing agents, ... and may set forth, for each person designated, the matters on which the person will testify.... The persons so designated shall testify as to matters known or reasonably available to the organization.” Business entities “have a duty to make a conscientious, good-faith effort to designate knowledgeable persons for Rule 30(b)(6) depositions and to prepare them to fully and uneva-sively answer questions about the designated subject matter.” If an entity instead produces a witness who is unable to respond to the items in the deposition notice, it has a duty to provide a substitute. In their motion, defendants question KU’s choice of Gordzica as its Rule 30(b)(6) designee instead of Vander Tuig, who defendants urge was a more suitable corporate representative. In support of this assertion, defendants point to the substantial portion of Vander Tuig’s declaration that is responsive to their Rule 30(b)(6) notice. While defendants make a strong case for why Vander Tuig would have most certainly been a suitable Rule 30(b)(6) designee for KU, they do not make any showing about why Gordzica was not. The Court is unable to find any authority for the contention that a business entity must designate each and every person within the organization who is able to respond to a deposition notice; only that the entity must fulfill its obligation to prepare the chosen designee to fully answer the questions propounded in such notice. Here, while defendants make the coneluso-ry argument that Gordzica was not the best person for KU to designate, they fail to develop an argument about why or how she was not fully prepared to respond to questions or topics set forth in their deposition notice. While it may very well be true that Vander Tuig was highly qualified to respond to defendants’ Rule 30(b)(6) inquiries, the Court is unable to conclude that his entire declaration should be stricken simply because KU decided to rely upon it in its motion for summary judgment rather than Gordzica’s deposition testimony. Accordingly, the Court denies defendants’ motion to strike Vander Tuig’s declaration as a sanction for some violation of Rule 30(b)(6). Defendants maintain that both Vander Tuig’s and Drucker’s declarations should be stricken because they are not based on personal knowledge, or are based on inadmissible hearsay and reference documents for which there is no foundation. Fed.R.Evid. 602 requires that a testifying witness “ha[ve] personal knowledge of the matter” testified to. Also, Fed.R.Civ.P. 56(e) requires that affidavits be made on personal knowledge and “set forth such facts as would be admissible in evidence .... The court may permit affidavits to be supplemented or opposed by depositions, answers to interrogatories, or further affidavits.” “Under the personal knowledge standard, an affidavit is inadmissible if ‘the witness could not have actually perceived or observed that which he testifies to.’ ” Statements of “mere belief in an affidavit must be disregarded.” Defendants urge the declarations at issue here are not based on personal knowledge because of the following preliminary statement made in both: “the facts set forth in this Declaration are based on my personal knowledge, review of corporate records, or interviews with appropriately knowledgeable persons.” But “Rule 56(e)’s requirements of personal knowledge and competence to testify may be inferred if it is clear from the context of the affidavit that the affiant is testifying from personal knowledge.” Here, it is clear from the context of the declarations that both Vander Tuig and Drucker are competent to testify to the matters discussed in their respective declarations. Vander Tuig is the Trademark Licensing Director for KU and Drucker is the Vice President and Associate General Counsel for CLC. The Court finds that personal knowledge of the subject matter attested to can be inferred based on the declarants’ respective positions within KU and CLC. Further, the statements made in both declarations are particular and detailed, which further supports their attestations of personal knowledge. Defendants complain that the attestation clauses in these declarations refer not only to personal knowledge, but also to interviews with others and reviews of corporate documents. Defendants ask how they are to know which source of information formed the basis of each statement in the declarations. In their response, plaintiffs represent that although they reviewed corporate records and spoke to others in preparing the background of issues discussed in the declarations, “each of the facts set forth therein were and are based upon their personal knowledge.” Indeed, plaintiffs have filed supplemental declarations stating as much. The Court is unable to conclude, based on the record, that these declarants’ statements are not based on personal knowledge, as set forth above. The statements made by them are not conclusory statements outside the realm of their knowledge-base given their respective positions within KU and CLC. To the extent that each statement in the declarations is supported by corporate documents, those are authenticated, attached as exhibits and cited properly as such. The Court denies defendants’ motion to strike the Vander Tuig and Drucker declarations. 2. Temple, Baker, Campbell, and Bonilla Defendants also ask the Court to strike the declarations of Temple, Baker, Campbell, and Bonilla, who were employees of the KU Bookstore, or KUstore.com at the time their declarations were made. These declarants all attested to instances of actual confusion among consumers who they encountered through the KU Bookstore or KUstore.com. Plaintiffs did not disclose these declarants or their testimony to defendants under Rule 26 and defendants first learned of these witnesses when they received plaintiffs’ summary judgment motion. Plaintiffs represent that they first became aware of these witnesses on June 4, 2007 — nine days prior to filing their summary judgment motion and do not deny that they disclosed the witnesses to defendants for the first time on June 13, 2007, when they filed their summary judgment motion. Because these witnesses were not properly disclosed under Rule 26, defendants ask the Court to strike the declarations under Rule 37(c)(1), which provides: A party that without substantial justification fails to disclose information required by Rule 26(a) or 26(e)(1), or to amend a prior response to discovery as required by Rule 26(e)(2), is not, unless such failure is harmless, permitted to use as evidence at a trial, at a hearing, or on a motion any witness or information not so disclosed. Whether a violation of Rule 26(a) is “substantially justified” or “harmless” is left to the broad discretion of the Court. The following factors guide this discretion: “ ‘(1) the prejudice or surprise to the party against whom the testimony is offered; (2) the ability of the party to cure the prejudice; (3) the extent to which introducing such testimony would disrupt the trial; and (4) the moving party’s bad faith or willfulness.’ ” Plaintiffs argue that the only possible prejudice suffered by defendants is that they did not have an opportunity to depose these witnesses during discovery. Plaintiffs submit that defendants’ counsel, “never even asked KU to make these witnesses available; and had they done so, KU would have offered them for deposition.” The Court finds this contention disingenuous. It is unclear to the Court how defendants were expected to request these witnesses be made available during discovery when the identities of these witnesses were not disclosed to them until the filing of the summary judgment motions. In fact, defendants did ask Gordzica during her deposition for all evidence that KU had of actual confusion; she replied that “[t]he blog is the evidence of actual confusion.” Also, defendants’ counsel emailed plaintiffs’ counsel on May 21, 2007 to confirm that certain Bates-numbered documents were indeed the “blog” documents Gordzi-ca referred to in her deposition. Plaintiffs’ counsel responded by email that “[w]ith respect to ‘actual’ confusion, these documents are the only KU documents we currently have that reflect ‘actual’ confusion. There also has been testimony in various depositions (including, e.g., Erin Adams and Carrie Sinks) regarding additional instances of actual confusion....” This representation, made less than one month before the summary judgment motion was filed, certainly could not have placed defendants on notice that they needed to request that KU make the actual confusion witnesses available for deposition. Plaintiffs suggest that defendants should have filed a motion for continuance for further discovery under Rule 56(f). Rule 56(f) may be used as “an alternative to a response in opposition to summary judgment under 56(e) and is designed to safeguard against a premature or improvident grant of summary judgment.” While defendants certainly could have filed such a motion, the rules do not contemplate that this is a prerequisite to filing a motion to strike under Rule 37(c)(1). None of the authority cited by plaintiffs supports such a proposition; nor the suggestion that defendants somehow waived a claim of prejudice by not filing a request for a continuance under Rule 56(f). Allowing this new evidence at the summary judgment stage will prejudice defendants. They had no notice of these witnesses until the summary judgment motion was filed. Also, it is clear from defendants’ exhibits that defendants very deliberately attempted to discover the exact evidence plaintiffs relied upon to support their contention of actual confusion among consumers. At no time did plaintiffs indicate that they would rely on testimonial evidence from these Bookstore and KUStore.com employees. In fact, plaintiffs affirmatively represented that the evidence they would rely upon to establish actual confusion was restricted to a weblog and certain deposition testimony. Allowing defendants the opportunity to cure this prejudice would require reopening discovery and probably postponing the trial. Further, plaintiffs have failed to make any attempt to justify their failure to disclose beyond stating that these witnesses were not made known to them prior to June 4, 2007. But the Court agrees with defendants that these employees, whose declarations refer to time periods preceding the close of discovery, could have easily been located by plaintiffs prior to this time. Plaintiffs offer no reason why these witnesses were discovered at such a late date. As such, there has been no showing by plaintiffs that the failure to disclose these witnesses was substantially justified or harmless and the Court finds that the motion to strike the declarations of Temple, Baker, Campbell, and Bonilla should be granted. B. Motion to Strike Lawrence Journal-World, Weblog (Doc. 160) Next, the Court considers defendants’ motion to strike weblog entries as inadmissible hearsay. Plaintiffs rely on certain internet postings to the Lawrence JoumaL-World to support their claims of (1) actual confusion and (2) consumers’ belief that defendants’ products bearing KU’s trademarks and other indicia degrade the goodwill and positive associations of KU and its trademarks. Plaintiffs argue that the internet postings do not violate Fed.R.Evid. 801 or 802 because they were not submitted in order to prove the truth of the matter asserted, but were instead submitted to demonstrate the de-clarants’ mental states. Under the Federal Rules of Evidence, hearsay is “a statement, other than one made by the declarant while testifying at the trial or hearing, offered in evidence to prove the truth of the matter asserted.” With certain exceptions, hearsay evidence is not admissible. Fed.R.Evid. 803, however, provides an exception for statements that demonstrate “the declarant’s then existing state of mind.” Defendants cite cases where courts found internet postings unreliable and refused to consider them as evidence of the truth of the matter asserted. But plaintiffs argue that the Lawrence Journal-World weblog is being submitted as evidence of the declarants’ mental states rather than as truth of the matter asserted, and therefore, such evidence comes within the exception provided in Fed. R.Evid. 803(3) and point to cases admitting internet evidence under similar circumstances. The parties essentially debate whether or not this evidence is being offered to prove the truth of the matter asserted. While the Court agrees that the line is a fíne one, it will consider the weblog evidence to the extent that it is not offered to prove the truth of the matter asserted. For example, plaintiffs offer the following posting in support of their claim of actual confusion: I saw somebody wearing a “Rock Out With Your Hawk Out” shirt last year on TV at AFH. I have never seen on [sic] of these anywhere else. It was a standard KU blue shirt, bearing a strong resemblance to the other KU “novelty” shirts (like the “Muck Fizzou” design). But I wonder now if it was a homemade effort. Does anybody know where to get one? This evidence is not admissible in order to prove that the person the declarant saw on TV was wearing a shirt that bore a strong resemblance to other KU shirts or that the declarant saw someone on TV wearing the referenced shirt. The statement is only admissible to show that the declarant was confused about whether he or she could purchase the referenced shirt and about who produced the shirt. Plaintiffs offer the following statement as an example of how defendants’ products degrade the goodwill and positive association of KU and its trademarks: “Ditto for me. I don’t like those two shirts either. KU can do better than to wear those lame classless shirts.” This statement is not admissible to prove that the shirts are classless; instead, it is admissible to show that this declarant thinks that the T-shirts harm KU’s reputation as having “classy” products. The Court intends to be diligent in only considering the weblog evidence to prove the state of mind of the declarants. Therefore, defendants’ motion to strike is granted in part and denied in part. C. Motion in Limine to Exclude Evidence Concerning Third-Party Use of Plaintiffs’ Marks (Doc. 116) Defendants seek to admit evidence of third-party use of plaintiffs’ trademarks as relevant to the strength of plaintiffs’ marks and whether the marks are famous, for purposes of determining the dilution claims. Plaintiffs ask the Court to exclude the evidence under Fed.R.Evid. 402 because it is not relevant, and under Fed. R.Evid. 403 because its probative value is outweighed by prejudice to plaintiffs. Plaintiffs contend that evidence of third-party use of a trademark is not relevant unless the third party is using the mark on goods similar to those provided by the plaintiffs and defendants in the present case. In general, “ ‘[t]he greater the number of identical or more or less similar marks already in use on different kinds of goods, the less is the likelihood of confusion’ between any two specific uses of the weak mark.” While evidence of third-party use of a mark is admissible, the weight to be given such evidence may be limited when the use of similar marks is not on similar goods. The evidentiary value of showing third-party use should address the “probable impact of the use of those marks on the minds of the target group of consumers.” Plaintiffs also argue that a state registry, as provided by defendants is not relevant to a claim for trademark infringement unless the defendants can show that the businesses are either active or sell goods similar to those in dispute in the present case. In First Sav. Bank, F.S.B. v. First Bank System, Inc., the Tenth Circuit held that third-party registrations of a particular mark were “ ‘relevant to prove that some segment of the composite marks ... has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak.’ ” The Court finds that the business lists and registries are admissible. To the extent that the state registry includes businesses that are inactive, this goes to the weight and not the admissibility of the evidence. Likewise, whether or not consumers actually perceive and recognize the meaning of these marks is an issue of weight and not admissibility. Plaintiffs suggest that evidence of third-party use of the mark by licensees is inadmissible because such evidence is not relevant to claims of unlicensed use of KU’s trademarks. Although this issue was not discussed explicitly in Big Dog Motorcycles, L.L.C. v. Big Dog Holdings, Inc., the court in that case considered evidence of third-party businesses that were licensed to use the plaintiffs mark. The court concluded that evidence of licensed third-party use would only weaken a mark if the defendant could demonstrate that the third-party’s use of the mark was “widespread” enough to “weaken the mark in the minds of apparel consumers.” Plaintiffs come forward with no authority for the proposition that this evidence is not relevant to the issue of the marks’ strength and fame. The Court finds that evidence of licensed third-party evidence is relevant and admissible. Finally, the Court declines to rule at this point on whether the probative value of this evidence outweighs its prejudicial impact under Fed.R.Evid. 403. Instead, plaintiffs may renew the motion on this basis at trial if desired. Plaintiffs’ motion to exclude evidence of third-party use of plaintiffs’ marks is denied. II. Summary Judgment Standard Summary judgment is appropriate “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” A fact is only material under this standard if a dispute over it would affect the outcome of the suit. An issue is only genuine if it “is such that a reasonable jury could return a verdict for the nonmoving party.” The inquiry essentially determines if there is a need for trial, or whether the evidence “is so one-sided that one party must prevail as a matter of law.” The moving party bears the initial burden of providing the court with the basis for the motion and identifying those portions of the record that show the absence of a genuine issue of material fact. “A movant that will not bear the burden of persuasion at trial need not negate the nonmovant’s claim.” The burden may be met by showing that there is no evidence to support the nonmoving party’s case. If this initial burden is met, the nonmovant must then “go beyond the pleadings and ‘set forth specific facts’ that would be admissible in evidence in the event of trial from which a rational trier of fact could find for the nonmovant.” “Where, as here, the parties file cross motions for summary judgment, we are entitled to assume that no evidence needs to be considered other than that filed by the parties, but summary judgment is nevertheless inappropriate if disputes remain as to material facts.” When examining the underlying facts of the case, the Court is cognizant that all inferences must be viewed in the light most favorable to the nonmoving party and that it may not make credibility determinations nor weigh necessarily may consider only the evidence that would be available to the jury. III. Uncontroverted Facts The following facts are either uncon-troverted or stipulated to. Plaintiff University of Kansas (“KU”) has long been referred to by one of several names: “University of Kansas,” “KU,” or “Kansas.” KU is a general academic institution of higher learning, having its principal campus in Lawrence, Kansas. It was founded in 1865 by the citizens of Lawrence under a charter from the Kansas legislature. The United States Patent and Trademark Office (“USPTO”) has issued trademark registrations to KU for the marks “Kansas,” “KU,” “Jay-hawks,” “Allen Fieldhouse,” “The Phog,” and for various Jayhawk designs. Kansas Athletics does not own any of the marks involved in this case. KU does not own a registered trademark for the name “Hawk,” but from time to time, KU has used the term “Hawks” as a shorthand for “Jayhawks.” The University has been referred to as “KU” or “Kansas” since the 1930s. The Jayhawk is KU’s official mascot and KU’s athletic teams since at least as early as 1887 have been referred to as “the Jay-hawks.” Although the Jayhawk mascot has appeared in various forms since it was adopted, its key features have remained the same for the past eighty years: a blue feathery body, a red head, and a large yellow beak. KU owns State of Kansas registrations for the mark “Kivisto Field.” Kivisto Field is the name of the KU football field at Memorial Stadium and is named after Tom and Julie Kivisto, two KU alumni. KU football games played on Kivisto Field are frequently televised on local and national television networks. KU owns State of Kansas registrations for the marks “Allen Fieldhouse,” “The Phog,” “Late Night in the Phog,” and “Beware of the Phog.” Allen Fieldhouse on the KU campus was dedicated on March 1, 1955 and is named after KU’s famous former basketball coach, Forrest “Phog” Allen. Today, Allen Fieldhouse hosts approximately thirty home basketball games per year for the men’s and women’s teams. KU basketball games in Allen Fieldhouse are frequently broadcast on local and national television networks. Allen Field-house has long been referred to as “The Phog.” A banner bearing the phrase, “Beware of the Phog” hangs prominently in Allen Fieldhouse. Every year, thousands of KU students and fans gather at Allen Fieldhouse to watch the KU men’s basketball team open their season at an event known as “Late Night in the Phog.” KU does not own a registered trademark for the crimson and blue colors, but for more than one hundred hears, KU has used the crimson and blue color scheme as part of its Jayhawk mascot and in connection with its educational and entertainment services, athletics, student life, advertising, events, and website. The media frequently refer to KU as “the crimson-and-blue.” KU does not manufacture apparel, but it licenses its trademarks to hundreds of different persons or entities and its marks appear on a wide variety of competing products with varying levels of quality. KU licenses its marks to businesses in Lawrence as well as nationally. The licensing of KU’s trademarks is managed by cross-claim defendant Collegiate Licensing Company (“CLC”) of Atlanta, Georgia. KU’s licensees are provided with art slicks that are incorporated into all license agreements. The art slicks detail KU indicia, including trademarks, service marks, trade names, designs, logos, seals, and symbols. The license agreements make clear that KU owns and licenses additional trademarks that may not appear on the art slicks. An account representative for CLC routinely reviews KU licensees’ products in the retail marketplace to make sure that they comply with product and licensing standards. KU does not permit the use of offensive language or references to sex or alcohol on officially licensed products. KU monitors authorized uses of its color scheme and has set standards to instruct KU representatives and licensees as to how the crimson and blue color scheme is to be presented. KU’s licensed products are marketed in almost every conceivable type of media, including on the internet. Sales of licensed products bearing KU’s “Kansas” and “KU” marks contributed to the more than $12 million in wholesale sales, and at least $20 million in retail sales of licensed KU products in 2006 alone. For a period of time, defendant Larry Sinks owned Midwest Graphics, Inc. (“Midwest Graphics”), which was a licensee of KU via the Licensing Resource Group and CLC. Midwest Graphics followed the regular licensing procedures of submitting its designs for approval and accounting for royalties. In October 1996, Sinks sold Midwest Graphics and in October 2001, he became the sole owner and only member of Victory Sportswear, L.L.C. (“Victory Sportswear”). In 2002, Sinks sought a license for Victory Sportswear from KU, via CLC, but was denied. In January 2006, Victory Sportswear opened Joe-College.com as a subsidiary, which sells products that bear printed slogans and phrases that relate to college life and to KU in general. The Joe-College.com retail store is located at 745 Massachusetts Street in Lawrence, Kansas — ■ less than five miles from the KU campus. Joe-College.com also sells merchandise through its website and for a period of time sold T-shirts to Jayhawk Food Mart in Lawrence, Kansas. The business does not advertise or market its products except through its website. Through its retail store and online operations, Joe-College.com sells T-shirts for approximately $15 each that vary in color and bear a number of different designs and/or slogans. Joe-College.com does not currently sell any apparel licensed by KU. However, Sinks stocked some licensed merchandise he purchased from Grandstand Sportwear, a licensee of KU, that he displayed along the back wall of the store until at least December 4, 2006. In May 2006, Victory Sportswear sold to defendant Clark Orth the screen printing operation of the company, which has been used to manufacture all of the products distributed by Joe-College.com except for those purchased from Grandstand Sportwear. Orth’s screen printing business contracts with businesses such as Joe-College.com for screen printing services. The Joe-College.com business sells blue T-shirts that display the following verbiage: “Hawks,” “Kansas,” “Jayhawk,” “Kivisto Field,” “Allen Fieldhouse,” and “Beware of the Phog.” The Joe-College.com business also sells T-shirts bearing the colors red and blue. On February 27, 2006, Sinks applied for a federal trademark registration for the “Kivisto Field” mark for use in connection with certain apparel. At that time, Sinks was aware that KU’s football field would be named Kivisto Field. Joe-College.com also sells T-shirts that refer to specific players on the KU basketball team, despite National Collegiate Athletic Association (“NCAA”) Rule 12.5, which prohibits the sale of commercial items bearing the name or likeness of college athletes. Mario Chalmers is a student athlete on the KU basketball team who wears jersey number 15. Joe-College.com sells a blue T-shirt that reads “Super Mario 15” in red and white lettering with an image of a basketball. Russell Robinson is a student athlete on the KU basketball team who wears jersey number 3. Joe-College.com sells a blue T-shirt that reads “Russell Mania 3” in red and white lettering with an image of a basketball. Brandon Rush is a student athlete on the KU basketball team. Joe-College.com sells a blue T-shirt that reads “I have a crush on B. Rush” in red and white lettering. Defendants also sell unlicensed products that reference Bill Self, the current men’s basketball coach. One example is a blue T-shirt that reads “Hawk Basketball” on the front and “Makiri Noise for Bill’s Boys” on the back. Joe-College.com sells a number of unlicensed products that bear references to sex and alcohol. For example, one blue T-shirt reads “Kansas” on the front and on the back reads, “The reason it’s so windy in Lawrence is because KSU Sucks & Missouri Blows.” Another blue T-shirt reads, “Sex, Alcohol, and Hawk Basketball.” Joe-College.com also sells products that use offensive language. The Joe-College.com retail store currently has more than 100 signs posted that affirmatively disclose the fact that the products for sale are not licensed, approved, sponsored, or authorized by KU, or affiliated or associated with KU in any way. However, as of July 21, 2006, these disclaimers were not present at the store. Sometime after the Complaint in this matter was filed, similar disclaimers were added to the Joe-College.com website. No consumers have ever asked Sinks, or Erin Adams, who is the manager of the Joe-College.com retail store, whether the designs sold there are licensed, approved by, or affiliated with KU. Nor have any consumers ever expressed confusion to Sinks or Adams about the products sold there. However, defendant Sinks’ wife Carrie Sinks testified that she was unsure which products sold at Joe-College.com were licensed and which were not. There are at least 300 business entities using the term “Kansas” that are registered with the Kansas Secretary of State to do business in Kansas and as of December 2006, there were twenty-seven businesses in Lawrence that begin their names with the term “Jayhawk.” In March 2007, KU entered into an agreement with Jay-hawk Food Mart, a convenience store located in Lawrence. The agreement contemplates that Jayhawk Food Mart would pay KU a licensing fee of $20 for authorized use of the “Jayhawk” marks. In a letter dated May 30, 2006, Lew Perkins, Director of Athletics for KU, requested that Sinks discontinue certain T-shirt designs sold by his company, and that he “cease production and sale of any other items that infringe on the University’s trademarks, including the term Kansas, and cease the use of designs that are closely identified with the University.” In that letter, Perkins emphasized the fact that many of the designs sold and produced through the Joe-College.com business were offensive to the University, or disparaged the athletic programs or coaches. This action was subsequently filed by plaintiffs on August 16, 2006. Plaintiffs assert the following claims: (1) Federal trademark infringement under 15 U.S.C. § 1114, (2) federal unfair competition under 15 U.S.C. § 1125(a), (3) federal trademark dilution, (4) trademark infringement under K. S.A. § 81-213, (5) trademark dilution under K. S.A. § 81-214, and (6) common law trademark infringement and unfair competition. Approximately 140 designs utilized by defendants formed the basis of plaintiffs’ claims in this case as of the filing of dispositive motions. IV. Discussion The parties have filed a number of summary judgment motions that the Court now addresses in turn: (1) defendant Orth’s Motion for Summary Judgment (Doc. 131); (2) defendant Sinks’ Motion for Summary Judgment (Doc. 134); and (3) cross-motions for summary judgment filed by plaintiffs and defendants (Docs.130, 136). Defendant Orth Defendant Orth seeks summary judgment on plaintiffs’ Lanham Act claims, arguing that, as a mere printer of the allegedly infringing products at issue in this action, he is an innocent infringer and thus, subject only to equitable relief. Under 15 U.S.C. § 1114(2)(A), liability under the Lanham Act is limited, Where an infringer or violator is engaged solely in the business of printing the mark or violating matter for others and establishes that he or she was an innocent infringer or innocent violator, the owner of the right infringed or person bringing the action under section 1125(a) of this title shall be entitled as against such infringer or violator only to an injunction against future printing. As an initial matter, the parties disagree about whether Orth is engaged only in the business of printing. Plaintiffs urge that his role in manufacturing the shirts at issue is more analogous to that of a manufacturer or wholesaler and so he is not entitled to claim the innocent infringer defense. To support this position, plaintiffs argue that the price Orth charges to Joe-College.com covers both the cost of the T-shirt and any design and printing service, thus he should not be deemed “printer.” The Court understands plaintiffs’ argument to be that because Orth obtains the raw material for the T-shirts, rather than Joe-College.com, he is not engaged solely “in the business of printing the mark.” The Court is not persuaded by this fine distinction, nor do plaintiffs cite any law in support thereof. The Court finds that Orth may be able to claim the innocent infringer defense, as he is in the business of printing, within the meaning of the statute. There is disagreement in the case law about what standard applies in determining whether a person is an innocent in-fringer under this provision. Some courts have determined, citing legislative history to the 1989 amendment to section 32(2) of the Lanham Act, that the same “actual malice” standard applies as in defamation cases. But the Fifth Circuit has rejected this interpretation, arguing that an objec-five reasonableness standard applies. Under an actual malice standard, plaintiffs would have to prove that Orth acted either with knowledge of the infringement, or with reckless disregard as to whether the material infringed the trademark owner’s rights. Under an objective reasonableness standard, Orth would be considered an innocent infringer “only if, regardless of state of mind, [his] conduct is reasonable.” Plaintiffs urge that the objective reasonableness standard should be applied here, while Orth urges an actual malice standard applies. The Court finds that even under a heightened actual malice standard, a reasonable jury could find in favor of plaintiffs and thus, summary judgment is not appropriate. Plaintiffs point to Orth’s deposition testimony, where he admits knowledge of KU’s trademarks for at least the “Kansas” mark and the Jayhawk designs. Plaintiffs also point to Orth’s testimony that certain shirts with the allegedly infringing marks were printed by Victory Sportswear. Finally, plaintiffs point to evidence that Orth used to work under Sinks at Victory Sportswear and had knowledge that Victory Sportswear was not a KU licensee at the time he printed certain allegedly infringing marks on products at issue. This evidence could persuade a reasonable jury that Orth acted with reckless disregard as to whether the T-shirt designs infringed on KU’s marks. Orth argues that he “did not print the marks which were the subject of KU’s questioning regarding Orth’s knowledge,” but fails to point the Court to such evidence. It is undisputed that Sinks sold the screen printing portion of Victory Sportswear to Orth in May 2006 and that since then, Victory Sportswear has printed all of the products sold at Joe-College.com except for the few licensed products it purchased from a different printing company through early December 2006. As such, a genuine issue of material fact exists about whether Orth acted with knowledge of the alleged infringement, or acted with reckless disregard thereof when he printed the products at issue in this case from May 2006 on. Defendant Sinks Defendant Sinks moves separately for summary judgment, arguing that he is not a proper party to this action, as he can not be held individually liable for the actions of Victory Sportswear, a limited liability company. Plaintiffs argue that Sinks is subject to individual liability based on his personal participation in the alleged infringement of KU’s marks, and based on his status as the sole owner of Victory Sportswear and its subsidiary, Joe-College.com. While Sinks is correct that the Kansas Revised Limited Liability Company Act generally provides that an LLC’s corporate liabilities in tort are solely those of the LLC and that no member or manager may be liable solely based on their status as a member or manager, it does not foreclose individual liability by a member who commits a tort. The other basis for member liability is if the Court “pierces the corporate veil” in the instance of an individual “who uses a corporation merely as an instrumentality to conduct his own personal business.” Corporate officer liability in a patent infringement case has been explained as follows: In general, a corporate officer is personally liable for his tortious acts, just as any individual may be liable for a civil wrong. This general rule “does not depend on the same grounds as ‘piercing the corporate veil,’ that is, inadequate capitalization, use of the corporate form for fraudulent purposes, or failure to comply with the formalities of corporate organization.” When personal wrongdoing is not supported by legitimate corporate activity, the courts have assigned personal liability for wrongful actions even when taken on behalf of the corporation. However, this liability has been qualified, in extensive jurisprudence, by the distinction between commercial torts committed in the course of the officer’s employment, and negligent and other culpable wrongful acts. Thus, when a person in a control position causes the corporation to commit a civil wrong, imposition of personal liability requires consideration of the nature of the wrong, the culpability of the act, and whether the person acted in his/her personal interest or that of the corporation. Plaintiffs maintain that Sinks may be held personally liable, separate and apart from any theory based on piercing the corporate veil. The Court agrees. It is undisputed that Sinks is the sole owner of Victory Sportswear and its subsidiary, Joe-College.com. Plaintiffs have pointed the Court to evidence that Sinks creates and approves of the designs placed on all the products sold in the Joe-College.com store, stating that “[s]ome people have called me the Picasso of T-shirts-” Plaintiffs have also pointed the Court to evidence that Sinks previously owned a company that was a licensee of KU, and was denied a license by KU after forming Victory Sportswear in 2002. This evidence, in addition to the cease and desist letter sent by Perkins to Sinks directly, is enough evidence to persuade a reasonable jury that Sinks actively, and knowingly caused the alleged trademark infringement of KU’s marks. Therefore, summary judgment to Sinks on this basis is denied. Cross Motions for Summary Judgment The parties have filed cross motions for summary judgment on all of the substantive claims and affirmative defenses in this case. The Court addresses these claims in the following order: (1) trademark infringement under the Lanham Act, (2) unfair competition under the Lanham Act, (3) trademark dilution under the Lanham Act, and (4) defendants’ affirmative defenses. The Court initially addresses defendants’ arguments about the scope of the Lanham Act. Application of Lanham Act to Plaintiffs’ Marks Defendants begin their cross motion for summary judgment by arguing that plaintiffs essentially seek “a monopoly over anything blue, or which bears terms referencing KU or any of KU’s rivals.” They further argue that plaintiffs’ marks are not protectable because they do not identify the source of the products or relate to the quality of the products. At bottom, defendants’ challenge the distinctiveness of plaintiffs’ color schemes, logos, and designs, and thus, their protectability. The Lanham Act defines a trademark as “any word, name, symbol, or device, or any combination thereof ... to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” “ A mark must be capable of distinguishing the products [or services] it marks from those of others.’ ” There are five categories of marks with respect to protection: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, and (5) fanciful. The Tenth Circuit has explained: The trademark protection afforded each type of mark is related to how closely the mark identifies the source of the product. “Because a generic mark refers to a general class of goods, it does not indicate the particular source of an item. Consequently, such a mark receives no legal protection and may not be registered alone as a trademark.” 711 F.2d at 939. At the other end of the spectrum, suggestive and fanciful marks may be registered without proof that they identify the source of the product. Id. Descriptive terms fall in the middle on the continuum. “Because a descriptive term is one which a competitor would likely need to use in describing his product, the term does not indicate that a product comes from a single source. Therefore, a trademark that is descriptive may be registered only if it has acquired a secondary meaning by becoming ‘distinctive of the applicant’s goods in commerce.’ ” Id. at 939-40. First, plaintiffs urge that the marks “KU,” “Kansas,” “Jayhawks,” and the Jayhawk designs are “incontestable,” by statute. 15 U.S.C. § 1065 provides that a registrant’s continuous use of a mark for five consecutive years after the date of registration is “incontestable,” subject to certain provisions. While it appears that the “KU” and “Kansas” marks and the Jayhawk design marks are incontestable under § 1065, the “Jayhawk” mark is not, as it has not been in use for five consecutive years subsequent to the date of federal registration in 2006. “An ‘incontestable’ mark cannot be challenged as lacking secondary meaning; such marks are conclusively presumed to be nonde-scriptive or to have acquired secondary meaning.” Because the “KU” and “Kansas” marks and the Jayhawk design marks are accorded this presumption, the Court finds them protectable as a matter of law. The distinctiveness presumption does not apply to the remaining marks. The categorization of a mark is a factual question. The factfinder is “to determine, based on the evidence before it, what the perception of the purchasing public is.” Rather than analyze the marks in this case according their categorization, both parties focus their arguments on whether plaintiffs’ marks are related to the source or quality of the products. Based on the statement of uncontroverted facts, it appears that plaintiffs also assert protection for the remaining marks, “Jayhawks,” “Allen Fieldhouse,” “The Phog,” “Hawk(s),” “Kivisto Field,” “Late Night in the Phog,” “Beware of the Phog,” and the crimson and blue color scheme in conjunction with other indicia of KU. Yet, after setting forth the factual basis for these marks in their statement of uncontrovert-ed facts, plaintiffs do not articulate how these marks should be categorized for purposes of determining protectability, strength, or fame. Defendants initially argue that because KU does not manufacture any goods, it does not control a “singular level of quality.” They also argue that consumers are unable to discern the source of the product, i.e., who manufactured it. In Qualitex Co. v. Jacobson Products Co. the Supreme Court explained, “trademark law .... quickly and easily assures a potential customer that this item — the item with this mark — is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past.” But it is unnecessary for the marks to be actually manufactured by plaintiffs in order to be protected; instead, widespread use by officially licensed entities is sufficient. Indeed, “[o]ne of the ways that the law extends the benefits of trademarks and protects incentives to develop them is by allowing trademark owners to license the use of their marks to distributors and franchisees.” Defendants’ argument would render any trademark licensed, rather than manufactured by the licensor, unprotected. Moreover, defendants’ argument that the trademarks fail to serve as quality-identifiers is misplaced. Defendants suggest that KU’s marks do not assure a consumer that he is purchasing a product with a guaranteed level of quality. But the law does not require this. Instead, it “affords the trademark holder with the right to control the quality of the goods manufactured and sold under its trademark. The actual quality of the goods is irrelevant; it is the control of the quality that a trademark holder is entitled to maintain.” It is undisputed that KU’s marks have been in use for long periods of time to reference either the University, the athletic teams, or the places where football and basketball games are played at KU. Plaintiffs’ expert, Dr. Hirt, also opines that highly identified KU students, fans, and alumni are motivated to purchase “school-identifying apparel” to show their affiliation with KU. It is also undisputed that at least some of the marks generate millions of dollars in sales revenue and that they enjoy unsolicited media coverage, locally and nationally. The Court finds these facts are sufficient to create a genuine issue of material fact about whether the marks that do not enjoy incontestable status have acquired secondary meaning or are inherently distinctive and are, thus, protected under the Lanham Act. However, as the Court emphasizes throughout this opinion, the distinctiveness acquired by plaintiffs for its marks, does not dictate a finding of liability against defendants for every blue or red shirt it produces with a possible reference to KU on it. As described more fully below, plaintiffs’ claims require the Court to conduct numerous fact-intensive inquiries. In conducting these analyses, the Court is dependent upon the parties, and the plaintiffs in particular, to point it toward specific evidence of infringement, unfair competition, or dilution of particular trademarks. This is part and parcel of plaintiffs’ overall burden of proof in this matter. The Court does not find that plaintiffs’ marks are amenable to generalization. To the extent that plaintiffs fail to point the Court to the specific marks or types of marks used by defendants that infringe upon specific marks owned by KU, they fail to meet the high burden placed on a moving party who also carries the ultimate burden of proof at trial. A. Trademark Infringement The Lanham Act prohibits the unauthorized use in commerce of a counterfeit or imitation of a registered mark “likely to cause confusion in the marketplace concerning the source of the different products.” In determining whether a likelihood of confusion exists, the Court considers the following nonexhaustive list of factors: (1) the degree of similarity between the marks; (2) the intent of the alleged in-fringer in adopting its mark; (3) evidence of actual confusion; (4) similarity of products and manner of marketing; (5) the degree of care likely to be exercised by purchasers; and (6) the strength or weakness of the marks. These factors are interrelated and no one factor is dispositive. In this circuit, likelihood of confusion is a question of fact but one amenable to summary judgment in appropriate cases. In addition to these enumerated factors, the Court will consider the impact of the disclaimers posted at the Joe-College.com retail store and on the website. “[T]he key inquiry is whether the consumer is ‘likely to be deceived or confused by the similarity of the marks.’ ” Plaintiffs allege that the following marks are infringing: “Kansas,” “KU,” “Jayhawks,” the Jayhawk designs, “the Phog,” “Hawks,” and use of the crimson and blue scheme in combination with other indicia. Similarity of the Marks The Tenth Circuit has advised that “[i]n both confusion of source and confusion of sponsorship cases, the similarity of the marks factor constitutes the heart of our analysis.” Similarity between marks is tested on the levels of sight, sound, and meaning.The Court examines these factors “in the context of the marks as a whole as they are encountered by consumers in the marketplace.” The Court is not to engage in a side-by-side comparison. Instead, the Court should determine “whether the alleged infringing mark will be confusing to the public when singly presented.” Further, the Court should “give the similarities of the marks more weight than the differences,” “especially when the competing marks are used in virtually identical products packaged in a similar manner.” This factor is also important because “one’s adoption of a mark similar to a preexisting mark not only bears independently upon the likelihood of confusion, but also may support an inference that one intended to draw upon the reputation of the preexisting mark.” While the Court is cognizant that it is not to conduct a side-by-side comparison of the marks at issue, its task of analyzing this factor is complicated by the failure of the parties to specifically compare the marks in their summary judgment briefs. KU alleges that over 150 of defendants’ shirt designs are infringing, yet provides the Court with a limited discussion of how the specific marks or designs, or categories of marks or designs, compare. Some shirts are alleged to contain identical marks to federally registered trademarks, while other shirts are allegedly infringing based on the combination of various registered and unregistered marks. Additionally, KU has submitted hundreds of exhibits of officially licensed products that the Court is apparently expected to cull through in order to determine the similarities and differences. While the Court maintains that these shirt designs are not amenable to generalization, it nonetheless conducts a separate analysis with regard to a small amount of shirts singled out by KU that are substantially similar in design to certain KU marks and are substantially different than the remaining shirt designs at issue. 1. Substantially Similar Designs The Court first addresses defendants’ shirt designs that contain substantially similar marks as certain KU marks found on officially licensed products. According to defendants, these T-shirts were only available for sale prior to the initiation of this lawsuit. Examples specifically cited by plaintiffs include two shirts that bear the word “Kansas” on the front in white block lettering; one is crimson and one is blue. A third T-shirt is blue with the KU logo on the front. The fourth is blue with the words “HAWK KUTIE” on the front. The Court finds that the similarities of these shirts to officially licensed KU products are overwhelming and weigh heavily in favor of a finding of likelihood of confusion. Both “Kansas” shirts bear KU’s colors and have similar block lettering as those that are officially licensed. While defendants are correct that the lettering is not identical, no reasonable jury could conclude that the lettering is not substantially similar. Defendants provide no explanation as to how a consumer, encountering these T-shirts in the marketplace, would identify the subtle difference in font and associate this difference with whether the products are licensed or not. The KU shirt is a plain blue T-shirt bearing the “KU” mark in the same font as other officially licensed KU materials. KU routinely uses this particular font in conjunction with its “KU,” marks — with a line from the “K” sweeping underneath the “UA comparison of the “Hawk KUTIE” shirt with an officially licensed shirt that says “KUTIE” is likewise extremely similar except for the absence of “Hawk.” But of course, defendants shirt adds to, rather than takes away from KU’s officially licensed design that contains the KU mark in its distinctive font. None of these shirts bear the Joe-College.com logo and all of them are highly similar to officially licensed products when comparing their overall look, sound, and meaning. The Court finds no genuine issue of material fact that these T-shirts, when singly presented to consumers, contain similar marks and that this factor weighs heavily in favor of a finding that a likelihood of confusion exists as to these specific shirts. 2. Remaining Shirts There are a number of similarities between defendants’ remaining shirts and shirts that are officially licensed by KU. It is beyond dispute that “the meaning” of defendants’ shirts is to reference KU. References to Kansas, the Jayhawk, Hawks, individual athletes and coaches, the KU football field and fieldhouse, and KU’s rivals all seek to tap into support of the University and its athletic teams, even if the marks used are not independently registered marks of KU. The deposition testimony of both Orth and Adams and Dr. Hirt’s report support this conclusion, as well as a plain reading of the shirts themselves. The words on some of the remaining the shirts are identical: some bear the word “Kansas” on the front of a crimson or blue shirt, which is identical in scheme to some officially licensed shirts, as previously discussed. The colors and lettering of “Kansas” on these shirts are again, substantially similar to those of officially licensed shirts. But all of the remaining shirts that contain the mark “Kansas” on the front contain additional language on the back. KU fails to point the Court to officially licensed materials that are similar in look, sound or meaning to the multitude of messages on the backs of these shirts, which contribute to the overall presentation of the marks. Many of defendants’ shirts bear the mark “Hawk” or “Hawks” or reference Kivisto Field, Allen Fieldhouse or “The Phog.” KU argues that marks such as these, in conjunction with the crimson and blue color scheme, render the shirts similar enough to officially licensed products to cause confusion in the marketplace. KU urges that “[i]t is simply inconceivable that someone seeing a royal blue shirt in Lawrence, Kansas with the phrase ‘Hawk Basketball’ emblazoned on it would not consider it to be a shirt referencing KU’s basketball program.” KU also relies on the fact that the media refer to KU at times as “the crimson-and-blue” or “hawks.” While these shirts may reference KU, it is not the focus of analysis on this factor. Instead, the Court is to evaluate similarity of the marks based on sight, sound, and meaning. Comparing the T-shirt examples provided by KU in its memorandum in support of summary judgment, the Court is unable to conclude that all of the shirts are similar or different as a matter of law. It seems clear that each of these shirts should be evaluated separately, or at least analyzed in categories. For example, the “Beware of the Phog” shirt in Doc. 144, Tab 2, Ex. A contains similarities in sight, sound and meaning to the shirt referenced in Doc. 143 Tab 1, Ex. L. Both incorporate the phrase “Beware of the Phog,” a well known reference to the banner that has hung for decades in Allen Fieldhouse. The phrase is also printed in similar white lettering and both are printed on blue T-shirts. The officially licensed shirt, though, does contain two Jayhawk designs, while the defendants’ shirt does not. The defendants’ mark contains the Joe-College.com logo. In contrast to this example, the shirts compared by KU on page 23 of the memorandum provide for a different analysis, as the defendants’ shirts use the word “Jayhawk,” and “Hawk,” but in two of the three examples, also use offensive language that does not appear on any licensed product. In this instance, a reasonable jury could conclude either (1) that these phrases are not the dominant aspect of the shirts, and therefore, do not assuage confusion, or (2) that these phrases actually distinguish the shirts from those officially licensed from KU, and thus weigh against a finding of likelihood of confusion. Notably, a reasonable jury could reach different conclusions about each of defendants’ T-shirt designs. The Court declines to conduct a separate analysis for each T-shirt at issue on its own, absent some guidance by plaintiffs beyond mere generalizations. Defendants point out that all of the allegedly infringing shirts contain the Joe-College.com logo, which KU licensees’ shirts do not have. It is true that the Joe-College.com logo appears on these remaining shirts, though it is arguably not prominently displayed.The Court is unable to conclude that this, standing alone, is sufficient to find that the shirts are not similar as a matter of law. More importantly, the overall look, sound, and meaning of the shirts is also different than the licensed shirts in that they reference either sex or alcohol, use irreverent language, make insulting references to rival universities such as Kansas State University or the University of Missouri, or reference individual players and coaches of the KU athletic teams in contravention of an NCAA rule. KU cannot deny that these are important differences in the overall presentation of the marks to consumers and it is undisputed that these references are neither condoned by KU nor used on officially licensed products. There are both similarities and differences between these remaining marks, and the Court is cognizant that it must give more weight to the similarities since the marks are being used in identical products that are used in the same manner (i.e. as T-shirts worn to show support for KU). Even taking this into account, the Court is unable to conclude as a matter of law that the mark