What are the potential outcomes of the Adidas vs. Thom Browne lawsuit?

By

Roxanne Robinson

Published
Jan 11, 2023

Thom Browne is a huge sports fan. Even if you missed his testimony admitting this in the Southern District of New York courtroom where the designer (and incoming CFDA chairman) is battling it against the German sportswear behemoth Adidas, it is straightforward if you pay attention to his work.

Basketballs as a men's brogue; ice skate-inspired women's high heels; a latticework football helmet as a hat; and athletic supporters as a designer codpiece have all graced his runways. Not to mention using former Olympic skier Lindsey Vonn as a model on an actual ski-slope runway or staging an Olympic-themed runway film, shot at the Los Angeles Memorial Coliseum. But when it came to his now four-stripe design motif, Adidas quickly made it clear they are not a fan of the American designer's work.

The trial, which kicked off in New York last week, is the cumulation of a more than decade-long debate over what started as Browne's use of a three-stripe motif on his luxury clothing line.

FashionNetwork.com spoke with Jeff Trexler, an attorney and faculty member of the Fashion Law Institute at Fordham Law School. Founded by lawyer Susan Scafidi with support from the CFDA, Fashion Law Institute is a 501(c)(3) nonprofit organization that offers training for the fashion lawyers and designers of the future; provides free legal services for design students and professionals; and shares information and assistance on issues facing the fashion industry. 
 
Trexler shared his view over a phone call on the core of the case, the possible outcomes, and the ramifications of a decision in either favor. According to the law professor, it's rare for a case to go this far.

"Usually, these things are settled after a plaintiff sends a letter demanding a cease in activity. In this case, which failed to be settled out of court after talking for three years, it reached this point. Thom Browne can afford to litigate this. Not a lot can, so it's probably why these things normally settle so quickly out of court," explained Trexler.
 
Trexler sees this case as unique as it demonstrates a new territory for both luxury brands and mass-market sportswear brands, which in the past, previously stayed in their respective lanes.
 
"My favorite anecdote is the scene from Ghostbusters when Egon (a character in the movie) says, 'Don't let the streams cross,' as presumably, everything explodes. But in today's marketplace, you have Thom Browne moving into the sportswear stream, and Adidas is collaborating with luxury brands in that stream. So, Adidas feels like it has reason to defend its territory," he explained.

Thom Browne is owned by the Italian luxury group Zegna.
 
What's at stake dates back to 2007 when the German-owned activewear firm initially demanded Thom Browne stop using a three-stripe motif. He agreed and stopped but eventually began using a four-stripe version. Trexler disputes the idea Adidas is being overly litigious, a reputation they have earned thanks to several high-profile lawsuits, such as Skechers, Juicy Couture, Marc Jacobs, and recently Kanye West for advertising fees to the tune of $275 million.
 
"Adidas is fulfilling the legal imperative to defend its mark. This case illustrates why. Thom Browne first declared they don't defend their stripes which didn't fly in the courts. Now the argument that survived is that, in this particular case, they took too long to defend it. If they didn't defend it, they would lose the trademark," he continued.
 
Trexler said a legal term called 'laches' is key to Browne's defense, which means you take too long to bring the claim forward. The case is the result of four years of unsuccessful talks that resumed in 2018 when Thom Browne filed for a trademark application in the European Union for a striped mark, according to an article in The Fashion Law, a modern media and information company that explores the legal and commercial challenges facing the retail industry unaffiliated with Fashion Law Institute.

The issues resumed in 2018 after Adidas discovered a pair of four-stripe sweatpants in his collection. (It is also standard on Thom Browne cardigan sweaters, skirts, and tailored blazers).

According to Trexler, Browne's defense would be if they were going to take action, Adidas should have done that sooner.

"Thom Browne will say, 'you let us continue in the marketplace for years and then say we can't do it.' The court establishes six years in the marketplace which is why 2012 is crucial to this case. Browne's team will suggest Adidas should have known of this alleged infringement before 2012. Then laches would apply," continued Trexler.

This defense puts the onus on Adidas to have known of Browne's product line. In Trexler's view, the Adidas counter-argument could say they were initially small in scope, and Thom Browne was associated with luxury. Still, even though they should have known he was producing this design, he did it willfully after the previous discussion of agreeing not to use three stripes.

"Adidas would say you can't add a fourth stripe and think you can get away with it. It's brazen, and the courts shouldn't allow this," he surmised.

Browne is arguing Adidas is preventing any stripe usage while they maintain it's the three or four-stripe mark that can be confused as the issue.

If Adidas prevails, it points out a distinct oft-misunderstood aspect of trademark law: that making a small change will create a new product. The late Virgil Abloh was famous for saying if you changed three percent of an object, you created something new. Trexler says it's not that simple.

"Those formulas have been around in copyright discussions for years, but there is no legal basis for this. You won't beat McDonald's by adding a third arch, as you won't fool anyone in the burger realm; people will see this," he offered.

He suggests the jury could say the fourth stripe wasn't fooling anyone and that it was apparent the Thom Browne brand was thriving off the Adidas brand look. A win for Adidas says, 'Don't try this to the market.'
 
Suppose Thom Browne wins, it sends home a small-designer-David-versus-mass-market-Goliath message.

"This is his approach. It's designer luxury and a niche product that occupies a certain territory. This doesn't cause customer confusion. It might work," he further suggested.

Adidas isn't disputing confusion at the point-of-sale if a customer were holding two items in their hands, but they contest that if you see it on a department store floor or someone wearing it on the street, you might confuse it.

"In the U.S., we want to democratize everything. David vs. Goliath, the small designer prevailing against the big corporation is one strategy. The other is that Adidas is a populous brand, which is all of us. Why should the luxury brand get a free ride on it?" he offered.
 
 (In other David vs. Goliath news, it's interesting to note that Gucci and Adidas are enjoying a wave of success for a red three-stripe tracksuit-inspired dress resurrected from an early-stage Adidas fashion collaboration with 90s-era New York streetwear designer Laura Whitcomb of Label. It's unclear if Whitcomb is receiving compensation for her design).
 
The whole affair is a teaching moment for young brands and designers. "It's common for emerging designers to want to do a design thinking it's been changed enough. But down the line, if it takes off and catches the eye of another brand that does this, you might get a demand to cease letter or, worse, get sued. It's inevitable, and no one wants to be involved in this. So, I tell them they need to be thinking several steps ahead," said Trexler.

The Adidas vs. Thom Browne trial began last week and could conclude as soon as this Friday, according to court documents.