Honorable Lorna G. Schofield United States District Court Southern District of New York 40 Foley Square New York, New York 10007 Re: Solid 21, Inc. v. Richemont North America, Inc. et al., No. 1:19-cv-01262-LGS Dear Judge Schofield, This firm is counsel to Defendants Richemont North America, Inc., Richemont International S.A., and Montblanc-Simplo GmbH (collectively, “Defendants”) in the above-captioned case.

Pursuant to this Court’s Order (ECF No. 217), today is the deadline for Defendants to submit their motion to strike Plaintiff Solid 21, Inc.’s jury demand.

“Judicial documents are subject at common law to a potent and fundamental presumptive right of public access that predates even the U.S. Constitution.” Mirlis v. Greer, 952 F.3d 51, 58 (2d Cir. 2020).

“The presumption of access is based on the need for federal courts, although independent— indeed, particularly because they are independent—to have a measure of accountability and for the public to have confidence in the administration of justice.” United States v. Amodeo, 71 F.3d 1044, 1048 (2d Cir. 1995).

Given the presumption of access, the Court finds no reason to allow Exhibit B to remain under seal.

ARUN SUBRAMANIAN, United States District Judge: On October 31, 2022, Plaintiff moved to exclude Defendants’ survey expert, Mark Keegan.

No later than September 8, 2023, at 5PM, Defendants are hereby ORDERED to file on ECF a letter, not to exceed three (3) pages, addressing the following questions: 1.

How does Mr. Keegan’s Brand Identification Module—which asked respondents only to identify “brands” in an advertisement—help gauge the extent to which the term “red gold” contributes to a consumer’s purchasing decisions?

Furnish authorities supporting the use, for purposes of apportioning profits, of a survey asking respondents to identify brands in advertisements.

Again, furnish authorities supporting the use of Mr. Keegan’s brand analysis for purposes of Defendants’ fair use defense.

We write on behalf of both parties to request clarification regarding deadlines set in the Court’s recent Order, dated August 30, 2023 (ECF No. 267).

Specifically, we write to clarify the deadline for submission of the parties’ proposed joint pretrial order.

In the Court’s August 14, 2023 Order (ECF No. 265), the Court set the following deadlines for pretrial submissions:  September 12, 2023 – Deadline to submit joint requests to charge, joint voir dire, joint verdict forms, and any memorandum of law; and  September 19, 2023 – Deadline to submit the final pretrial order.

Given that the final pretrial conference is presently scheduled for October 3 (see ECF No. 267), the September 19 deadline is consistent with Your Honor’s individual practices.

Honorable Arun Subramanian September1, 2023 Page 2 Wethank the Court for its time and consideration of this matter.

Defendants’ motion to strike Plaintiff’s jury trial demand (ECF No. 219) is DENIED without prejudice.

Defendants’ motion in limine to exclude revenues related to sales that are not “potentially infringing” (ECF No. 166) is DENIED without prejudice.

Defendants may object to the admissibility of particular evidence that Plaintiff seeks to admit on grounds that it does not pertain to any sale that is potentially infringing as a matter of law based on the Court’s prior rulings.

However, as stated on the record, Ms. O’Steen will not be permitted to offer testimony on the ultimate question of the likelihood of confusion and may address only those Polaroid factors that she analyzed specifically in her expert report.

This is based on Plaintiff’s confirmation that it will follow the guidance provided by the Court on the record as to the permissible bounds of discussion at trial concerning (1) the registration by the U.S. Patent and Trademark office (“PTO”) of the RED GOLD mark and (2) that the trademark is presently enforceable and incontestable.

As stated on the record during the conference held in this matter on August 30, 2023: 1.

Plaintiff is ORDERED to consider making a good-faith settlement demand to Defendants by Thursday, August 31, 2023, at 1:00 PM.

If a demand and offer are made, the parties are ORDERED to meet and confer concerning settlement by Wednesday, September 6, 2023, at 5:00 PM.

The meet and confer must occur in person, via telephone, or via videoconference, should be conducted in good faith, and should last no less than thirty (30) minutes.

Whether or not a demand is made, or a settlement is reached, the parties are ORDERED to file a joint letter updating the Court on the settlement discussions (without disclosing the amounts of any demand or offer) by Thursday, September 7, 2023, at 5:00 PM.

1262 (LGS) – Joint Adjournment Request Dear Judge Subramanian: This firm represents Plaintiff, Solid 21, Inc., in the above referenced action.

Counsel for Defendants consents to this request as well as to either proposal for moving forward set forth below.

While the Parties are amenable to this acceleration, it is not either side’s preference, as the preparation time for oral argument on all open motions would be very short.

This adjournment is preferred by the Parties but comes with its own set of concerns, as the Hearing would then be perilously close to certain pre-trial submission dates.

We appreciate the Court’s attention to this request and can be available for a call to discuss the proposed scenarios at the Court’s earliest convenience.

Additionally, by Monday, August 21, 2023, at 5:00 p.m., the parties are hereby ORDERED to file on ECF a joint letter updating the Court on the status of the case.

A brief statement of the nature of the case and/or the principal defenses thereto; A brief explanation of why jurisdiction and venue lie in this Court.

A statement of whether the parties have discussed the use of alternate dispute resolution mechanisms and indicating whether the parties believe that (a) a settlement conference before a Magistrate Judge; (b) participation in the District’s Mediation Program; and/or (c) retention of a privately retained mediator would be appropriate and, if so, when in the case (e.g., within the next 60 days, after the deposition of plaintiff is completed, after the close of fact discovery, etc.) the use of such a mechanism would be appropriate;

If this case has been settled or otherwise terminated, counsel are not required to submit such letter or to appear, provided that a stipulation of discontinuance, voluntary dismissal, or other proof of termination is filed on the docket prior to the joint letter submission deadline, using the appropriate ECF Filing Event.

Requests for extensions or adjournment may be made only by letter-motion filed on ECF, and must be received at least 48 hours before the deadline or scheduled appearance, absent compelling circumstances.

The request to extend time to oppose is granted until 09/17/2023 on behalf of potential opposer Wooga GmbH.

Trademark/Unfair Competition To prove trademark infringement under the Lanham Act, a plaintiff must demonstrate that “(1) it has a valid mark that is entitled to protection and that (2) the defendant’s actions are likely to cause confusion with that mark.” Tiffany & Co. v. Costco Wholesale Corp., 971 F.3d 74, 84 (2d Cir. 2020) (internal quotations and alterations omitted).

“In assessing similarity, courts look to the overall impression created by the logos and the context in which they are found and consider the totality of factors that could cause confusion among prospective purchasers.” Gruner, 991 F.2d at 1078; accord Flushing Bank v. Green Dot Corp., 138 F. Supp.

“The Lanham Act provides that when a party ‘uses the words constituting [a registered] mark in a purely descriptive sense, this use may qualify as permissible fair use.’” Tiffany & Co., 971 F.3d at 92 (quoting Kelly-Brown v. Winfrey, 717 F.3d 295, 308 (2d Cir. 2013)).

Use “As a Mark” A defendant uses a term “as a mark” when it employs it “as a symbol to attract public attention,” Kelly-Brown, 717 F.3d at 306 (internal quotation marks omitted), or “to identify and distinguish ... goods [or services] ... and to indicate [their] source,” 15 U.S.C. § 1127.

Descriptive sense is often evident “[w]here a mark incorporates a term that is the only reasonably available means of describing a characteristic of another’s goods.” EMI Catalogue P’ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 65 (2d Cir. 2000).