Trademark & Copyright

Robert Maldonado Interviewed by M Le magazine du Monde on Successfully Defending Thom Browne

Jul 20, 2023 6 min read

Robert Maldonado was interviewed by M Le magazine du Monde in an article titled “Fashion on the Stand – Rival Gangs.” Read the full article below.

(originally published by M Le magazine du Monde)

The courts sometimes have to rule on creative disputes. “M” (Le Monde) returns to the case between the giant Adidas and the designer Thom Browne. Subject of the dispute: the use of the stripe pattern.

White shirt, cardigan, Bermuda blazer, tie and high socks: they seem to have come down from the podium. Thom Browne and several members of his team arrive, dressed to the nines, in this uniform that the 57-year-old American designer has imposed since the launch of his brand in 2003. All in gray, of course, his favorite color. “James, my father, a lawyer, only wore gray,” he confided to us in 2020. On January 3, 2023, the designer and his cadre did not however go to a fashion show, but to a New York court. Adidas is suing for the use of a four-stripe pattern on clothing. Amount of claims: 8 million dollars (7.4 million euro). “This type of case, in the United States, is often resolved by a prior financial agreement. But, there, Adidas found itself facing a fashion brand that has the means to pay the very significant cost of such a trial,” underlines Marie-Gabrielle Plasseraud, intellectual property lawyer and professor of cultural law at Sciences Po Paris. Even if the two adversaries do not play in the same category: when, in 2021, the American brand (owned by the Zegna group, listed on Wall Street) achieved 285 million dollars (approximately 263 million euros) in turnover, the German equipment manufacturer was close to 23 million dollars (21 million euros).

The case began in July 2018, when Thom Browne announced that he had entered into a partnership with FC Barcelona: the club's footballers would now be all “TB” dressed outside matches. Adidas' legal teams are choking on discovering certain photos of athletes — including their ambassador Lionel Messi — wearing Thom Browne socks or jackets marked with four horizontal stripes. By what right do we allow ourselves to use such a motif in a sporting context, when they have made the three stripes a recognizable signature for so long? In Playing the Game: The History of Adidas (Prestel, 2018, untranslated), an authoritative book on the history of the equipment manufacturer, we learn that Adidas had fashioned its advertising slogan of "three-stripe brand" from the 1950s. After a tentative reconciliation, which resulted in failure, Adidas finally attacked Thom Browne, on June 21, 2021, reproaching him for "imitating its three-stripe mark in a manner likely to create consumer confusion.” For the giant of sportswear, "this kind of procedure aimed at defending the distinctiveness of their bands is frequent,” recalls Marie Gabrielle Plasseraud. In recent years, Adidas also attacked Marc Jacobs, Sandro, Juicy Couture and Tesla. In the United States alone, between 1995 and 2008, it "launched more than 325 infringement cases, more than 35 dedicated lawsuits and obtained more than 45 settlement agreements,” calculated an Oregon judge in 2008 an in the report of a similar case.

At the trial against Thom Browne, Charles Henn, the lawyer for the Kilpatrick Townsend firm appointed by Adidas, begins by arguing the colossal efforts that the equipment manufacturer is using for its idol motif, citing the figure of "300 million dollars annually" in promotional marketing. Return of investment? Some 3.1 billion in product sales where the three stripes appear. “For Adidas, the three stripes are an icon: like Apple's apple or Shell's shell, there is no need to spell it out for the consumer to recognize them. However, owning an icon, for a multinational company, it is priceless: it is to speak the unspeakable in a graphic, to reach the status of a cult, universal object," analyzes Yorgo Tloupas, graphic designer and designer of logos. In court, Robert Maldonado, the affable counsel from Wolf Greenfield, who defends Thom Browne, pretends to be surprised that today Adidas complains against its client when debriefing off-camera. He recounts how, in 2007, the CEO of the German juggernaut had spoken with his client to dissuade him from using three horizontal stripes. The American had then obediently gone from three to four, leaving the 2010 spring collection. Why then pull out the legislative process now? Charles Henn replies that this argument no longer holds: it is Thom Browne and his team who, over the years, have come to gain a piece of what’s going on in the sports world. Three or four stripes don't matter now... Because how does one not risk “confusion" in the minds of the public when the fashion brand directly associates its image with the players of FC Barcelona or, across the Atlantic, the players of the Cleveland Cavaliers of the NBA?

Charles Henn then distributes a survey to the jury, produced by a private institute from a sample of consumers, that supports the case. Then lists the Thom Browne branded sportswear products available for sale: jackets, t-shirts, tights, sneakers, a capsule collection dedicated to tennis, swimming or skating. Lawyer Robert Maldonado does not have a survey but racks, with fourteen hangers, on which he has clothes from both parties. “I thought it was important that the jury could also see the ready-to-wear clothing in question and judge on the spot,” explains the designer's defender. We thus compare an Adidas and a Thom Browne jogging suit, fifteen times more expensive, and it is sometimes the designer himself who says the prices aloud — “1,000 dollars," "2,400 dollars" — in the face of dumbfounded jurors. "One could clearly see in his work, the quality, the refinement, the effort on the tailor cuts,” assures Robert Maldonado. “A high level of luxury in the face of the mass sportswear offered by Adidas.”

After a week of trial, on January 12, 2023, Thom Browne won. Lawyer Jeff Trexler, deputy director of the Fashion Law Institute (which notably offers training in fashion law) at Fordham University, sees this as a sign that, in this David versus Goliath case, the designer has been able to offer a friendly profile of a multinational company without a face. But, he laments, it was the use of a “populist” defense system that paid off. Robert Maldonado denies having practiced this kind of method, while conceding to have had “the impression that we had told a good story”. Adidas, for its part, keeps its analysis of the verdict: solicited, the brand, which has made a request for appeal, did not wish to comment.

On July 3, Robert Maldonado was in the Garnier Opera House to attend the fashion show celebrating the 20th anniversary of the Thom Browne brand during Paris Fashion Week. While what was applauded were tweed jackets crossed with Lurex threads, platform shoes with bells, bomber coats and white faces of Pierrot, he saw advancing, for his final salute, his star client, shirt, tie, Bermuda shorts, socks pulled up on his calves. With, the highlight of the show, on the left, clearly visible, the sign of victory: the four stripes, won after a hard fight.

This article was originally published by M Le magazine du Monde in French and was translated into English and posted with the permission of Le Monde.