A Southern District of New York judge Monday denied a motion by Adidas for a new trial in its trademark dispute with fashion company Thom Browne Inc. U.S. District Judge Jed Rakoff held that newly discovered emails, including those sent by company founder and head designer Thom Browne about Adidas, do not warrant a new trial.
Rakoff, who is overseeing Jim Trotter’s retaliation case against the NFL, acknowledged the emails were admissible evidence and thus should have been shared in the pretrial process. However, he didn’t find them particularly damning and didn’t view Thom Browne’s actions as sufficiently blameworthy.
Adidas accuses Thome Browne of infringing its trademarked three-stripe design that consists of three parallel lines. Thom Browne doesn’t use a three-stripe design but for its activewear uses one that features four parallel bars in a pattern of red, white and blue. Whether consumers are confused by the similarity (or dissimilarity) of the two designs goes to the heart of the dispute.
The company’s 58-year-old founder, Browne, is a famed designer. Former First Lady Michelle Obama and LeBron James have worn his clothing, and his company has provided apparel to the Cleveland Cavaliers and other teams.
A jury heard the case in 2023. After an eight-day trial that included testimony from 16 witnesses and more than 400 evidence exhibits, the jury sided with Thom Browne. Adidas appealed to the U.S. Court of Appeals for the Second Circuit, but a couple of months ago the Second Circuit affirmed the jury’s verdict.
While it was pursuing its appeal, Adidas learned that Thom Browne failed to produce four emails during the pretrial discovery process. The emails were located by an Adidas attorney in a separate dispute with Thom Browne in the United Kingdom. Adidas insists these emails show that Thom Browne employees knew the four-bar design “could be confused” with the three-stripe design.
In one of the emails, a Thom Browne account manager wrote, “We try to avoid rows of 4 bar amended on the racks so as to not look like Adidas.”
In another email sent to Browne about creating formalwear and accessories for FC Barcelona, a company executive noted: “I wanted to hear your thoughts on the usage of 4bar for FCB dressing for players. I wanted to raise a flag now from me before other teams start bombarding you with this concern. As Adidas has such a big presence in the sporting world, it is inevitable that our 4bar in white be read as adidas stripes, especially on accessories.”
One email also quotes an FC Barcelona employee who wrote that “any four bars … is too much in the spirit of Adidas.”
Browne, in an email, commented, “[I] thought [a company official] has already said that we shouldn’t use the four bar because of adidas … please confirm with matt and then we can proceed … maybe it would be safer to just make the rwb stripes bigger and proceed…”
Rakoff regarded the emails as hardly smoking guns.
He noted that an FC Barcelona employee believing a design is “too much in the spirit of Adidas” could be “relevant” to the legal analysis, “but it is far from an admission that Thom Browne agreed.”
Rakoff further distinguished the relevant legal standard—likelihood of confusion—with an informal standard of “too much in the spirit of Adidas.”
Likewise, Rakoff reasoned that emails discussing the need for Thom Browne to “not look like Adidas” don’t show consumer confusion, which is an objective standard. They instead reveal the subjective belief of a person regarding possible risk of confusion.
Rakoff also pointed out these emails seem much less important than survey data presented to jurors during the trial. That data, which included a poll of 2,400 consumers in the U.S. and that claimed to identify some degree of consumer confusion for between 14% and 38.6% of those surveyed, represented “much more directly relevant evidence,” Rakoff wrote.
The judge surmised that “if the jury was willing to believe that there was a risk of confusion between the two marks, the views of these actual consumers would presumably have been far more powerful than the views expressed in the four emails.”
Rakoff also stressed the reason for the emails’ exclusion from pretrial discovery. He explained it didn’t reflect bad faith or intentional wrongdoing but instead miscommunication between Thom Browne’s attorneys and their e-discovery vendor. A discussion over how to search for, and classify, emails as sharable or privileged caused a mix-up. The judge stressed that type of reason cuts against the granting of a new trial.
