The ball is back in Adidas’ court as the battle of the stripes between the activewear brand and Thom Browne continues.
Late Thursday, Robert Maldonado of Wolf, Greenfield & Sacks, Thom Browne’s legal team, filed a response to Adidas’ request in mid-October for a new trial over the designer’s use of stripes. The 25-page brief outlined a variety of reasons why the judge should not consider vacating the jury decision, which was reached at the beginning of the year.
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.
Adidas America and Adidas AG had sued the designer, seeking damages of $867,225 — the amount the companies agree they would have received in licensing fees from Thom Browne Inc., if the two had worked together — as well as more than $7 million in profits they alleged the American designer made from selling apparel and footwear with stripes.
But last month Adidas discovered that four emails that it characterized as “bad faith” had surfaced that were not disclosed by Thom Browne during the discovery period for the original trial. Those emails, which dated between 2016 and 2019, were from employees who cautioned the designer about using specific stripe designs in its 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.
In its response on Thursday filed in the U.S. District Court for the Southern District of New York, Thom Browne said that the emails were not intentionally concealed but instead did not surface during computer-generated searches.
“Thom Browne followed the … procedures ordered by the court and used the search strings agreed upon jointly by the parties in connection with its production of some 500,000 pages of documents,” the filing said. “Such processes are not perfect or foolproof, nor is it reasonable to expect them to be, and while it appears that these four e-mails were collected from Thom Browne by its vendor, and indeed were absent from the original U.S. production, Thom Browne did not (nor, to be clear, did its counsel) make any deliberate attempt to conceal the four e-mails.”
In addition, the filing said, 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, Thom Browne said.
“These four e-mails have no bearing on the issues decided by the jury, as they do not address whether American consumers were likely to confuse the three-stripe mark with Thom Browne’s use of four horizontal bars on certain items of apparel accused of infringement,” the papers said. “None of the accused products are referenced in the e-mails, which relate instead to foreign matters.”
As a result, Thom Browne said the emails do not warrant a new trial.
“Adidas does not even come close to meeting the extraordinarily high burden set by the Second Circuit and this district to justify discarding a jury verdict — a remedy that ‘calls for the highest level of judicial restraint’ because ‘interference with [a] verdict is an extraordinary measure’,” the filing said.
In conclusion, the filing said “neither justice nor the public interest would be served by vacating the jury verdict. This circuit gives great weight to the finality of judgments. The integrity of the judicial process would hardly be served by so lightly throwing out the work of the court and a jury heard seven days of testimony from 16 witnesses and considered over 400 exhibits — many of which related far more directly to the issues in dispute. The non-production of the four e-mails did not impair the integrity of the judicial process.”
The filing concluded by saying: “Adidas has failed to meet its high burden for a new trial. Its motion should be denied.”
Adidas attorney Charlie Henn of Kilpatrick Townsend had no comment on the latest filing.
Adidas’ response to this latest lobby is due on Nov. 9.
