Michelle Mancino Marsh 

Partner 

212.484.3977 DIRECT

212.484.3990 FAX

michelle.marsh@arentfox.com 

Arent Fox LLP / Attorneys at Law

Los Angeles, CA / New York, NY / San Francisco, CA / Washington, DC

www.arentfox.com

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May 23, 2016 

VIA ELECTRONIC MAIL 

R. Charles Henn Jr., Esq. 

Kilpatrick Townsend & Stockton LLP 

1100 Peachtree Street, Suite 2800 

Atlanta, GA 30309 

Re: Adidas America, Inc., et al, v. TRB Acquisitions, LLC 

Dear Charlie, 

We are writing in response to your May 12, 2016 letter addressing our two telephonic 

meet-and-confers. 

“Disputed Marks” and “Disputed Products” 

Your letter in support of your argument that adidas is entitled to take broad and 

unfettered discovery in this action about the use of two and four stripes is unpersuasive for 

several separate and independent reasons. Among the reasons undermining your position is that 

no U.S. court has ever endorsed adidas’ position that the scope of protection for its marks covers 

two or four stripes on anything other than footwear, and even in that context is narrowed to the 

facts of those cases; the use of two and four stripes, bands and piping on athletic clothing is 

simply ubiquitous, and adidas has no basis to stop such widespread usage or challenge any 

company employing them; and, most importantly, adidas has failed to claim in this action that 

the use of two and four stripes on clothing or footwear by TRB and its licensees infringes on any 

of its rights. Accordingly, such discovery would be wholly irrelevant and disproportional to the 

needs of the case. 

In addition, regardless of the resolution of the issue with respect to the number of stripes, 

we believe it is essential to arrive at an agreed-upon definition of “substantially parallel” stripes 

and “stripes.” Included in your image chart emailed to us on May 10, 2016 with the statement 

that “[r]epresentative examples of RBX-branded products bearing disputed stripe designs are 

attached (in the PDF entitled “TRB 2- and 4-stripe footwear and apparel”)” are the following 

images: 

Exhibit K - Page 1 of 4

Case 3:15-cv-02113-SI Document 132-11 Filed 10/11/16 Page 1 of 4
R. Charles Henn Jr., Esq. 

May 23, 2016 

Page 2 

These shoes obviously do not have “parallel or substantially parallel stripes.” Your contention 

that they do only serves to highlight that not only do we disagree on the scope of appropriateness 

of the number of stripes identified in your requests, but it appears that we also disagree on the 

more foundational question of what a stripe is in the first place. To that end, a stripe is generally 

defined as “a long narrow band or strip, typically of the same width throughout its length, 

differing in color or texture from the surface on either side of it.” None of these images meet this 

definition. To the extent you disagree, please clearly identify for us the specific features in these 

products that you allege to be stripes pursuant to the common definition for this term. 

Alternatively, please provide a new term(s) for use in place of “stripe” that better encompasses 

what you seek discovery on for our review and consideration, along with an explanation of the 

similarity between the items you are seeking and the adidas products at issue in this litigation. 

In the absence of supporting material from you, adidas’ discovery requests directed at the 

use of two and four stripes, as well as designs that cannot fairly be characterized as containing 

stripes, have no possible relevance to its claims, and it would be improper to force non-parties to 

incur the time and expense of producing discovery materials having no bearing on this litigation. 

Accordingly, we once again request that you withdraw your demand that the subpoenaed nonparties produce such material. Our objections to your defined terms cover specific requests that 

Exhibit K - Page 2 of 4

Case 3:15-cv-02113-SI Document 132-11 Filed 10/11/16 Page 2 of 4
R. Charles Henn Jr., Esq. 

May 23, 2016 

Page 3 

are otherwise acceptable. So, for example, while we are pleased with your limitation of Request 

Nos. 8, 9 and 10, our agreement is based on our view of the proper scope of the defined terms 

you employ in those Requests. 

Last, while we are not objecting to Request Nos. 4, 11-14, 16, 18, 21, 23-24, 29-30, 37-

38, and 40 and Topics 3-6, 8, 14-16, 21-23, 26, 29-30, our position is subject to our agreement 

that duplicative records need not be produced and is also subject to the global issues we have 

identified in this letter. 

Specific Document Requests In Dispute 

Requests 5 & 6: We maintain our objection as to these requests, particularly as they relate 

to negotiations over royalty rates. Please present any authority supporting your position that such 

material is discoverable as it relates to a “reasonable royalty” theory. 

Request 26: If we are able to agree on the below limitation with respect to Request 27a, it 

is our understanding that you will withdraw this Request. 

Request 27a: While we appreciate your new version of Request 27, 27a should be further 

modified to require production of documents concerning Plaintiffs’ Marks only in connection 

with RBX-branded products. 

Request 28: If we are able to agree on the above limitation with respect to Request 27a, it 

is our understanding that you will withdraw this Request. 

Requests 31 and & 32: If we are able to agree on the above limitation with respect to 

Request 27a, it is our understanding that you will withdraw these Requests. If you are unwilling 

to withdraw these Requests, they should be modified to be limited to those documents that also 

refer to RBX-branded products. 

Requests 33-35: These Requests should be limited in the same fashion as Requests 31 

and 32. 

Request 36: We are in discussions with the subpoenaed parties about this Request and 

expect to be able to convey our position to you in a few days. 

Request 39: This request has all of the hallmarks of a fishing expedition. It would 

capture, for example, bad faith claims asserted by others that were rightly contested or ignored. It 

would also cover instances where it was less expensive to contest a purported claim rather than 

litigate over its merits. 

Exhibit K - Page 3 of 4

Case 3:15-cv-02113-SI Document 132-11 Filed 10/11/16 Page 3 of 4
Exhibit K - Page 4 of 4

Case 3:15-cv-02113-SI Document 132-11 Filed 10/11/16 Page 4 of 4