By Tanner Dean Simkins
In the wake of a broken partnership, years of dispute, many counterclaims, and the partial summary judgment in FieldTurf USA, et al., v. TenCate Thiolon Middle East, LLC, et al., a settlement between the parties has finally been reached. Although financial details and other specifics of the settlement were not announced, a joint release states that FieldTurf and TenCate are pleased to “focus efforts on moving their businesses forward.”
The players
As self-described in a recent release, “TenCate is the leading global provider of components and technology for artificial turf for sports and landscaping applications” and “FieldTurf is part of Tarkett Sports, a Division of the Tarkett Group. Tarkett Sports is the largest entity in the sports and landscape surfacing industries.”
The issue
In 2003, FieldTurf purchased the exclusive rights to the monofilament fiber product, Evolution, which was then made by the predecessor company to TenCate. FieldTurf intended to utilize the Evolution fiber technology in its construction of artificial sports turfs surface systems. Despite a lengthy warranty guaranteeing the quality of Evolution, the artificial turf fields that used the fiber saw a premature decrease in durability. FieldTurf claimed this was primarily due to the degradation of the Evolution filament. In 2010, displeased of the third-party product, FieldTurf launched a similar filament product, Revolution, to directly compete with TenCate’s Evolution.
The claims
In 2011, TenCate terminated the exclusive supply agreement with FieldTurf. Soon after, FieldTurf filed a lawsuit against TenCate in the District Court for defects in the Evolution product, breach of contract, breach of warranty, and fraud.
The counterclaims
TenCate sought more than $100 million in damages from FieldTurf based on a number of counterclaims that included libel, slander, false advertising, and breach of contract. TenCate claimed that FieldTurf’s Revolution fiber and its tagline, “It’s not evolution, it’s Revolution,” infringed directly against the Evolution trademark as well as disparaged against TenCate’s brand equity. “Our competitive advantage is a direct result of our significant investments in the quality and reputation of our company and its products during many years. We will claim the reputation of TenCate Grass and our products,” said Group Director Guido Vliegen at the time.
The response
FieldTurf responded to these counterclaims by commencing formal litigation. “The counterclaims made by TenCate Grass are without merit, and in our opinion were asserted in an attempt to divert attention away from the real issue. This is a dispute about whether some of the fiber TenCate supplied to FieldTurf has performed as promised to us and to our customers,” said FieldTurf President Eric Daliere.
“Beyond the animosity TenCate is probably feeling for being sued for failing to honor its warranty and other legal obligations, we believe TenCate’s counterclaims are driven in part by the changing competitive dynamic of the synthetic turf marketplace. FieldTurf has gone from a large customer to a competitor to TenCate. It appears that TenCate is attempting to litigate a competitive position, rather than win in the marketplace,” said Daliere.
The result
Earlier this month, TenCate and FieldTurf settled the lawsuits filed against each other. The settlement was reached during jury trial in the federal district court in Atlanta. Given the FieldTurf v. TenCate holdings that TenCate was liable for fraud, TenCate’s false advertising claim lacked prudential standing and Lanham Act support, and that FieldTurf’s Revolution trademark did not infringe on TenCate’s Evolution trademark, it is safe to say that FieldTurf had the upper hand during the settlement negotiation process.
