IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

SHERMAN DIVISION

USA FOOTBALL, INC.,

Plaintiff,

v.

FFWCT, LLC; USE FLAG, LLC; AND 

TRAVIS BURNETT,

Defendants.

§

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

Civil Action No. 4:23-cv-00516-ALM

USA FOOTBALL, INC.’S, SURREPLY IN OPPOSITION TO

DEFENDANTS’ MOTION FOR PARTIAL SUMMARY JUDGMENT

I. INTRODUCTION

Remarkably, USA Flag does not dispute that it has profited from its infringement of USA 

Football’s marks, or even that USA Football misstated the legal standard for determining its 

damages. In a pivot from its opening brief, USA Flag now concedes that USA Football has been 

clear from the beginning of this case that it is seeking disgorgement of USA Flag’s profits. While 

USA Football does not dispute that it has the burden to prove USA Flag’s profits, it meets that 

burden by pointing to USA Flag’s own financial documents. USA Flag nonetheless requests 

extraordinary relief on the basis that USA Football should have performed a simple addition 

computation based on the face of USA Flag’s own records. The mathematics required to establish 

USA Football’s equitable relief is not USA Football’s burden. 

II. USA FLAG HAS NOT BEEN PREJUDICED OR HARMED. 

Federal Rule of Civil Procedure 37(c) does not require striking disgorgement evidence 

because, as a matter of law, USA Flag has not been harmed. See FED. R. CIV. P. 37(c), 

26(a)(1)(B). The cases cited in USA Football’s Response brief make clear that in a disgorgement 

Case 4:23-cv-00465-ALM Document 84 Filed 07/05/24 Page 1 of 7 PageID #: 3008
2 

of profits case, the evidence of the defendant’s profits should not be excluded based on failure by 

the plaintiff to provide an exact calculation of those profits. This is because defendants, like USA 

Flag, are not prejudiced in such cases. See, e.g., BioTE Med., LLC v. Jacobsen, No. 4:18-CV-866, 

2020 WL 6781516, at *2 (E.D. Tex. Nov. 18, 2020); Good Tech. Corp. v. MobileIron, Inc., No. 

5:12-CV-05826-PSG, 2015 WL 13376731, at *3 (N.D. Cal. July 6, 2015). Like the defendants in 

BioTE Med and Good Tech., USA Flag has always had custody of its own data. 

The case law USA Flag cites to support its claim that Rule 37(c) requires USA Football’s 

damages claim be stricken are not instructive. The Second Circuit case USA Flag cites, Design 

Strategy, Inc. v. Davis, 469 F.3d 284 (2d Cir. 2006), involved a plaintiff that did not produce 

evidence of its own lost profits. Of course, the district court ruled that such evidence could not be 

brought at trial, because the defendants would have had no knowledge of plaintiff’s lost profits. 

Design Strategy, 469 F.3d at 289-90. That is far different from the facts of this case, where USA 

Flag obviously knows what its own profits are. The other opinion USA Flag cites to support its 

claim of prejudice likewise involved a plaintiff who failed to disclose the amount of actual 

damages – lost sales and goodwill – that it was seeking. Vital Pharmaceuticals, Inc. v. Monster 

Energy Co., No. 21-13264, 2022 WL 3083273, at *1 (11th Cir. Aug. 2, 2022). These two cases 

have no bearing on the fact that USA Flag has not been harmed because it already has the 

information it seeks. In fact, in Vital Pharmaceuticals, the defendant assumed the plaintiff would 

seek only disgorgement of the defendant’s profits because that would be “relatively easy to 

prove.” Vital Pharmaceuticals, 2022 WL 3083273, at *2. The law does not support USA Flag’s

argument that in a disgorgement of profits case, like here, the actual computation of the profits to 

be disgorged falls to the plaintiff – here, USA Football. 

Case 4:23-cv-00465-ALM Document 84 Filed 07/05/24 Page 2 of 7 PageID #: 3009
3

Not only does USA Flag’s cry of harm fail based on both applicable case law and logic,

but USA Flag’s Reply brief demonstrates that it knows how to subtract from its profits those that 

allegedly are not attributable to its infringement. Dkt. 76 at 8 (explaining the subtractions from 

USA Flag’s profit documents that USA Flag would make for the disgorgement calculation). USA 

Flag ignores the Advisory Committee Note to Rule 26, which states that a party “would not be 

expected to provide a calculation of damages” when the information about damages is in the 

hands of the other party. Advisory Committee Note to FED. R. CIV. P. 26. That is USA Flag’s 

burden and it clearly has the information it needs to do the calculation.1 See 15 U.S.C. § 1117(a);

Dkt. 70 at 5-6 (citing cases). Even the jury instruction USA Flag cites in its Reply supports USA 

Football’s position. Dkt. 76 at 6; Fifth Circuit Pattern Jury Instruction 14.25 (“Defendant . . . has 

the burden to prove by a preponderance of the evidence any costs or deductions that it believes 

must be deducted to calculate its net profits.”).

III. USA FLAG IS NOT ENTITLED TO A DISCOVERY SANCTION BASED 

ON USA FOOTBALL’S INTERROGATORY RESPONSES.

USA Flag argues in its Reply, for the first time, that because USA Football did not 

supplement its response to USA Flag’s Interrogatory No. 7 after USA Football received scant

financial documents,2 USA Flag is entitled to a discovery sanction for violation of Federal Rule 

1 USA Football does not concede that USA Flag would be able to prove those deductions.

2 USA Flag agreed in discovery to produce “Documents and Communications sufficient to identify 

USA Flag’s annual profits and losses since 2010.” Ex. 1, Declaration of Anne Ricchiuto, Ex. A (Nov. 

16, 2023 Document Request Responses) at 40. However, only FFWCT, Inc. financial documents 

were produced. Dkts. 72-1–72-8. USA Football never received financial information for USA Flag, 

although Burnett testified that it does exist. Ex. 2 [Burnett Dep.] at 373:13-374:5; Ricchiuto Decl., 

Ex. B (April 24, 2024, discovery letter) at 1, Ex. C (April 26, 2024, discovery responses) at 11. (This 

additional information is appropriately submitted on surreply to refute USA Flag’s new reply 

argument that USA Football has all of the information it needs to prove USA Flag’s profits.)

Case 4:23-cv-00465-ALM Document 84 Filed 07/05/24 Page 3 of 7 PageID #: 3010
4

of Civil Procedure 26(e)(1)(A). See Dkt. 76 at 5-6. USA Flag provides no authority for its 

draconian position that dismissing USA Football’s claims for disgorgement is appropriate here.

It is undisputed that USA Football’s interrogatory response states: “USAFB is further 

seeking recovery of all gains, profits, savings and advantages realized by Defendants from the 

use of USA FLAG or any name, word, mark, or designation confusingly similar thereto, evidence 

of which is solely in Defendants’ custody at this time and which USAFB has requested” (Dkt. 70-

2 at 8) (emphasis added), and that at that time, USA Flag had not yet produced any financial 

information. See Dkt. 76 at 5 (financials produced in January and February). USA Football’s 

interrogatory response also made clear its position that USA Flag had the burden at trial to prove

which of its profits are not attributable to its infringement. Dkt. 70-2 at 8. Yet USA Flag never 

requested any further meet and confer regarding the damages issue or sought an order 

compelling additional information, instead waiting until the USA Football Rule 30(b)(6) 

deposition to quiz its designee about damages topics to which USA Football had objected. Ex. 1, 

Ricchiuto Decl., Ex. C (Objections to Rule 30(b)(6) Notice) at 6 (Topic 5), 8 (Topic 12). And 

now USA Flag seeks to have all damages evidence precluded entirely. USA Flag’s Reply brief is 

a belated and poorly-disguised discovery motion and its request should be denied.

This Court has specific procedures in place to deal with discovery disputes. Smith v. State 

Farm Lloyds, Inc., No. 4:21-CV-837, 2023 WL 123502, at *2 (E. D. Tex. Jan. 6, 2023) (citing 

Local Rule CV-7(h) (requiring “meet and confer,” Court conference, and motion)). See id. Even 

then, striking a pleading (such as a demand for the equitable remedy of disgorgement) generally 

requires a showing of “bad faith or willful misconduct,” Gaston v. Wilshire Commercial Capital, 

LLC, 344 F.R.D. 372, 379 (E. D. Tex. 2023) (internal citations omitted), neither of which have 

been shown here. The Fifth Circuit also requires a showing that a party has been “substantially 

Case 4:23-cv-00465-ALM Document 84 Filed 07/05/24 Page 4 of 7 PageID #: 3011
5 

prejudice[d]” by a violation of a discovery order before dismissing a claim. See, e.g., FDIC v. 

Connor, 20 F.3d 1376, 1380 (5th Cir. 1994) (articulating four factors that must be met before 

issuing the “draconian remedy” of dismissal) (internal citations omitted). As discussed above and 

in USA Football’s Response brief, USA Flag has not been prejudiced. 

IV. USA FOOTBALL DOES NOT OWE USA FLAG ANY DAMAGES 

COMPUTATIONS. 

Finally, USA Flag asserts that USA Football has not provided computations of other 

damages it may be seeking. Dkt. 76 at 10. USA Football does not seek any damages that demand 

a computation before trial. Besides disgorgement of profits and injunction, USA Football will 

show at trial that it is entitled to enhanced damages and attorney’s fees based on USA Flag’s 

willful and intentional trademark infringement (‘516 Dkt. 1 ¶¶ 54, 64, 87), punitive damages due 

to USA Flag’s malice, fraud, gross negligence, or oppressiveness (id. ¶ 75), and statutory treble 

damages, costs of this action, and attorney’s fees under the Indiana Crime Victim’s Relief Act. 

(Id. ¶ 106). None of these amounts can be determined before the final disgorgement of profits 

number is determined. 

V. CONCLUSION

USA Flag’s approach to the damages issue tracks that of its response to USA Football’s 

motion for summary judgment on infringement: rather than confronting or refuting the merits of 

its infringing and damaging conduct, USA Flag asks the Court to simply disregard undisputed 

evidence supporting USA Football’s claims under the guise of a discovery rule violation. There 

is adequate evidence in the record to support USA Football’s claim for damages and USA Flag’s 

Motion should be denied. 

 Respectfully submitted,

/s/ Anne Ricchiuto 

Case 4:23-cv-00465-ALM Document 84 Filed 07/05/24 Page 5 of 7 PageID #: 3012
6

Amie N. Peele (pro hac)

Indiana Bar No. 19523-29

Anne Ricchiuto (pro hac)

Indiana Bar No. 25760-49

Kelly Thompson (pro hac)

Indiana Bar No. 21846-49

Ashley Hodges (pro hac)

Oklahoma Bar No. 31082

apeele@peelelawgroup.com

aricchiuto@peelelawgroup.com

kthompson@peelelawgroup.com

ahodges@peelelawgroup.com

PEELE LAW GROUP, PC

49 Boone Village, Box 299

Zionsville, IN 46077

(202) 964-4500 (Ph)

(202) 964-4502 (Fax)

Louis T. Perry (pro hac)

Indiana Bar No. 25736-49

louis.perry@faegredrinker.com

FAEGRE DRINKER BIDDLE & REATH 

300 N. Meridian St., Ste. 2500

Indianapolis, IN 46204

(317) 237-0300 (Ph)

(317) 237-1000 (Fax)

David Gomez (pro hac)

Minnesota Bar No. 0401234

david.gomez@faegredrinker.com

FAEGRE DRINKER BIDDLE & REATH 

2200 Wells Fargo Center

90 S. Seventh Street

Minneapolis, MN 55402

(612) 766-7000 (Ph)

(612) 766-1600 (Fax)

Justin Opitz

State Bar No. 24051140

jopitz@mcguirewoods.com

MCGUIREWOODS LLP

2000 McKinney Avenue, Ste. 1400

Dallas, Texas 75201

(214) 932-6400 (Ph)

(214) 932-6499 (Fax)

Case 4:23-cv-00465-ALM Document 84 Filed 07/05/24 Page 6 of 7 PageID #: 3013
7 

Attorneys for USA Football, Inc. 

 

 

CERTIFICATE OF SERVICE 

The undersigned hereby certifies that on July 5, 2024, a true and accurate copy of the foregoing 

was served upon counsel of record for FFWCT, USA Flag, and Travis Burnett via ECF. 

Mark D. Nielsen 

Bryan Haynes 

Taylor Harris

Scheef & Stone

2600 Network Blvd., Suite 400 

Frisco, Texas 75034 

(214) 472-2100 Telephone 

(214) 472-2150 Fax 

/s/ Anne Ricchiuto

Case 4:23-cv-00465-ALM Document 84 Filed 07/05/24 Page 7 of 7 PageID #: 3014