LPD N.Y. v. Adidas Am.

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LPD NEW YORK, LLC, Plaintiff, v. ADIDAS AMERICA, INC., ADIDAS AG, and ADIDAS INTERNATIONAL MARKETING B.V., Defendants.

No. 15-CV-6360 (MKB)

United States District Court, E.D. New York

August 22, 2024

MEMORANDUM & ORDER

MARGO K. BRODIE, UNITED STATES DISTRICT JUDGE:

This case is currently scheduled for jury selection and trial beginning November 4, 2024. (Min. Entry dated Feb. 2, 2024.) The Court now decides whether certain of Plaintiff's counterclaims for defamation as asserted in its Amended Answer to Defendants' counterclaims (“Plaintiff's Defamation Counterclaims”) are before the Court to be tried together with Plaintiff's other claims.^[1] (Pl.'s Mot. to Amend, Correct, or Supplement (“Pl.'s Mot.”), Docket Entry No 261.) Defendants argue that Plaintiff's Defamation Counterclaims are not before the Court, but request that if the counterclaims are allowed to proceed, the Court decide their motion for summary judgment as to these claims. (Defs.' Opp'n to Pl.'s Mot. (“Defs.' Opp'n”), Docket Entry No. 262.)

For the reasons set forth below, the Court finds that Plaintiff's Defamation Counterclaims may proceed, and grants in part and denies in part Defendants' motion for summary judgment as to the counterclaims.

I. Procedural Background

The Court assumes familiarity with the facts of the case as detailed in the Court's September 24, 2022 decision on Defendants' motion for partial summary judgment (the “September 2022 Decision”), (see Sept 2022 Decision 2-12, Docket Entry No. 247), and provides only a summary of the procedural history pertinent to Plaintiff's Defamation Counterclaims.^[2]

In its Amended Answer to Defendants' counterclaims, (see Pl.'s Am. Answer 36-38, 54), Plaintiff asserted counterclaims based on:

(1) a November 22, 2014 email from Paul Jackiewicz, an employee of Adidas' advertising department, to Nick DePaul, a third party, in which Jackiewicz describes Plaintiff as “[s]ome dumbass designer [who] went rogue after a project was scrapped” and states that “they were supposed to take it down,” (Pl.'s 56.1 Resp. ¶ 347; Defs.' 56.1 Resp. ¶ 292; see also Jackiewicz-DePaul Emails 12, annexed to Decl. of Nathan T. Williams (“Williams Decl.”) as Ex. 8, Docket Entry No. 237-1);

(2) statements that Jackiewicz made to unidentified third parties after November 22, 2014, that a marketing video Plaintiff created to promote its alleged collaboration with Defendants (the “Video”), and the collaboration itself (the “Collaboration”), “‘didn't represent [Adidas'] brand,' ‘wasn't something that [Adidas] approved of,' and ‘wasn't something that was in line with [Adidas'] brand content,'” (Pl.'s 56.1 Resp. ¶ 348; Defs.' 56.1 Resp. ¶ 296); and

(3) cease-and-desist letters^[3] that Defendants sent to two of Plaintiff's customers, Eminent, Inc. and De Facto Inc. (the “August 2018 Letters”), (Pl.'s 56.1 Resp. ¶¶ 350, 353; Defs.' 56.1 Resp. ¶ 349). The August 2018 Letters stated that Eminent and De Facto were “advertising, promoting, offering for sale, or selling LPD products bearing the [Adidas] Marks” which were “not authorized by [Adidas].” (Eminent Letter 4; see also De Facto Letter 3-4.) The August 2018 Letters also stated that by “advertising, marketing, promoting, offering for sale, or selling the” products, Eminent and De Facto were “engaging in trademark infringement, dilution, counterfeiting, and unfair competition under federal and state law,” and demanded that they “cease and desist from all use of any mark or designation that is likely to be confused with any of the [Adidas] Marks.” (Eminent Letter 4-5; De Facto Letter 4.)

By Memorandum and Order dated March 31, 2020, the Court struck Plaintiff's Defamation Counterclaims (the “March 2020 Decision”). (Mar. 2020 Decision 1, 14, Docket Entry No. 190.) On April 14, 2020, Plaintiff sought partial reconsideration of the March 2020 Decision. (Pl.'s Mot. for Partial Recons., Docket Entry No. 192.) By Memorandum and Order dated July 23, 2020, the Court: (1) granted Plaintiff's motion for partial reconsideration “as to the portion of the March 2020 Decision striking Plaintiff's [Defamation Counterclaims]”; and (2) on reconsideration, determined that Plaintiff could “amend its pleading” to assert these claims (the “July 2020 Decision”). (July 2020 Decision 12-13, 28, Docket Entry No. 196.) Plaintiff did not file an amended pleading to assert the counterclaims.

On April 23, 2021, Defendants moved for partial summary judgment on certain of Plaintiff's claims against them, and certain of their counterclaims against Plaintiff. (Defs.' Mot. for Summ. J., Docket Entry No. 214.) In their summary judgment papers, both parties made arguments addressing Plaintiff's Defamation Counterclaims.^[4] In its September 2022 Decision, the Court granted in part and denied in part Defendants' motion for partial summary judgment. (Sept. 2022 Decision 69-70.) The Court also found that because “Plaintiff failed to amend its pleading” regarding Plaintiff's Defamation Counterclaims, they were “not before the Court.” (Id. at 38 n.10.)

On September 29, 2023, the parties filed a Joint Proposed Pretrial Order which, among other things, identified the remaining claims and defenses to be tried (the “JPTO”). (JPTO, Docket Entry No. 255.) In its portion of the JPTO, Plaintiff included its Defamation Counterclaims among its list of claims to be tried. (Id. at 5-6.) In response, Defendants argued that they were not before the Court in light of the September 2022 Decision. (Id. at 7 & n.4.) At a pretrial conference held on February 1, 2024, the parties again raised the status of Plaintiff's Defamation Counterclaims, and the Court directed Plaintiff to file a submission in support of its claim that the counterclaims are “properly before the Court.” (Min. Entry dated Feb. 2, 2024.)

On February 14, 2024, Plaintiff filed a letter motion to “explain why all of the defamation claims stated in [its] operative pleadings remain before this Court.” (Pl.'s Mot. 1.) On February 27, 2024, Defendants opposed the motion, (Defs.' Opp'n), and on March 6, 2024, Plaintiff filed a reply in further support of its motion, (Pl.'s Reply in Supp. of Pl.'s Mot. (“Pl.'s Reply”), Docket Entry No. 264).

II. Discussion

a. Standard of review

Summary judgment is proper only when “there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a); Radwan v. Manuel, 55 F.4th 101, 113 (2d Cir. 2022) (quoting Fed.R.Civ.P. 56(a)). The court must “constru[e] the evidence in the light most favorable to the nonmoving party,” Radwan, 55 F.4th at 113 (alteration in original) (quoting Kuebel v. Black & Decker Inc., 643 F.3d 352, 358 (2d Cir. 2011)), and “resolve all ambiguities and draw all permissible factual inferences in favor of the party against whom summary judgment is sought,” Koral v. Saunders, 36 F.4th 400, 408 (2d Cir. 2022) (quoting Terry v. Ashcroft, 336 F.3d 128, 137 (2d Cir. 2003)). The role of the court “is not to resolve disputed questions of fact but only to determine whether, as to any material issue, a genuine factual dispute exists.” Kee v. City of New York, 12 F.4th 150, 167 (2d Cir. 2021) (quoting Kaytor v. Elec. Boat Corp., 609 F.3d 537, 545 (2d Cir. 2010)). A genuine issue of fact exists when there is sufficient “evidence on which the jury could reasonably find for the [nonmoving party].” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986). The “mere existence of a scintilla of evidence” is not sufficient to defeat summary judgment. Id. The court's function is to decide whether, “after resolving all ambiguities and drawing all inferences in favor of the nonmovant, a reasonable jury could return a verdict for the nonmovant.” Miller v. N.Y. State Police, No. 20-3976, 2022 WL 1133010, at *1 (2d Cir. Apr. 18, 2022) (first citing Anderson, 477 U.S. at 248; and then citing Garcia v. Hartford Police Dep't, 706 F.3d 120, 127, 129 (2d Cir. 2013)).

b. Plaintiff may proceed with its Defamation Counterclaims

The Court finds that Plaintiff's Defamation Counterclaims may proceed because there is no indication that additional discovery is necessary, and the parties appear to agree that the Court can adjudicate the merits of the claim based on the existing summary judgment briefing. (Pl.'s Reply 6 (“Defendants have already moved for summary judgment on [Plaintiff's Defamation Counterclaims]. Therefore, all that is left is for the Court . . . to adjudicate those [c]laims on their merits.”); Def.'s Opp'n 7 (requesting that the Court “immediately assess the merits of [Plaintiff's Defamation Counterclaims] based on the parties' existing summary judgment filings” (emphasis omitted)).) The Court is mindful that allowing the claims to proceed may require Defendants to make adjustments to their trial strategy, but any potential prejudice to Defendants is mitigated by the fact that Defendants have been aware of Plaintiff's Defamation Counterclaims since June of 2019, (see Pl.'s Am. Answer), and it appears that the parties have had the opportunity to engage in discovery and litigate the claims, as evidenced by their summary judgment papers.

Accordingly, the Court allows Plaintiff's Defamation Counterclaims to proceed.

c. Defendants' motion for summary judgment as to Plaintiff's Defamation Counterclaims

Defendants argue that they are entitled to summary judgment on Plaintiff's Defamation Counterclaims because the statements by Jackiewicz and those in the August 2018 Letters were not defamatory. (Defs.' Summ. J. Mem. 36.) In support, Defendants contend that: (1) Jackiewicz's characterization of Plaintiff “going ‘rogue'” was a non-actionable opinion and “was substantially true given [Plaintiff's] deliberate use of nudity in the Video to antagonize [Adidas] and ...