It’s now in the hands of the judge.
Adidas on Thursday filed its response to Thom Browne’s motion to dismiss its request for a new trial in their ongoing dispute over stripes.
Adidas America and Adidas AG sued the designer for trademark infringement for his use of four stripes, seeking damages and profits they alleged the American designer made from selling apparel and footwear with stripes.
In January, an eight-person jury in Manhattan Southern District Court came back with a verdict that found the designer was not liable for damages or profits that it made selling products with four stripes or its trademark grosgrain ribbon.
But last month, Adidas discovered four emails that it characterized as “bad faith” that were not disclosed by Thom Browne during the discovery period for the original trial, the company said in court papers. Those emails, which dated between 2016 and 2019, were from employees who cautioned the designer about using specific stripe designs in his collections because they could potentially create confusion with Adidas. The emails surfaced in August during a separate trademark dispute between the two companies in the U.K.
Earlier this month, Thom Browne argued that three of the four emails in question are about product that was being designed for the Spanish soccer team FC Barcelona, while the fourth concerns a retail store in Asia. As a result, the emails do not reference the accused product at the center of the litigation here and do not warrant a new trial.
In papers filed Thursday, Adidas’ attorneys argued that the bad faith emails “are highly relevant” to the case and still likely to create confusion among consumers in the U.S.
“Thom Browne’s own documents show that the company directly targeted U.S. consumers in marketing the FC Barcelona collaboration,” the papers showed. “Both Thom Browne and its parent company credit the collaboration with increases in website traffic from U.S. consumers and higher sales in the U.S.” And the “global reach of FC Barcelona was a key reason Thom Browne collaborated with the club,” the filing said, citing 315 million fans of the team globally.
The papers also cited that Ermenegildo Zegna, parent of Thom Browne, reported to investors that the designer’s three-year deal with FC Barcelona “brought significant visibility of the brand and its iconic products to a global audience.”
The papers went on to say that the emails reference the use of a four-bar design on suits and accessories, and while those categories were not part of the lawsuit, the employees said they would nonetheless result in confusion when used “in the football context” or “the sporting world.”
As a result, Adidas’ request for a new trial should be granted, the papers said, because if the emails had been presented to the jury, they “likely would have changed the trial’s outcome.”
The Adidas argument said that not turning over the emails, even if it was unintentional, means the brand committed “misconduct that substantially interfered with Adidas’ ability to fully and fairly present its case” and a new trial is warranted.
In response, a spokesperson from Thom Browne, told WWD: “As we laid out in our opposition, the emails in question were not intentionally withheld and have nothing to do with the issues decided by the jury. None of Adidas’ claims come anywhere close to meeting the extremely high burden of disregarding a jury’s verdict.”
The case now returns to the judge who will make a determination. No timetable was offered.
