On May 3, 2024, the Second Circuit affirmed the trial court's judgment favoring Thom Browne, Inc. based on the jury's verdict of noninfringement of adidas's ubiquitous Three-Stripe Mark. Adidas Am., Inc. v. Thom Browne, Inc., 2024 U.S. App. LEXIS 10824 (2d Cir. May 3, 2024). The jury had found Thom Browne, Inc.'s four-stripe mark noninfringing.
In seeking a new trial, adidas argued that denial of a jury instruction regarding the third Polaroid factor (similarity of the products or services), exclusion of one aspect of an expert witness's testimony, and admission of testimony by one of Thom Browne's experts, constituted prejudicial error.
Adidas had alleged that Thom Browne's products did not cause point-of-sale confusion, but initial-interest and post-sale confusion. To reflect its initial-interest and post-sale confusion theory, adidas sought to instruct the jury:
[Y]ou should consider the competitive proximity of the parties' products. In other words, you should compare adidas's Three-Stripe Mark products with the Accused Products and consider how similar the products are, whether they are sold in the same or similar channels, and whether they are promoted through similar advertising media. Products that are similar, or that are sold or advertised in similar channels, are more likely to be confused than those used in connection with unrelated or non-proximate products.
The district court described adidas's proposed instruction as “endless and confusing.” The court instructed the jurors to consider “'whether the accused products and adidas products compete for the same consumers.'” Id., Slip op. at *3.
The Second Circuit affirmed holding the district court's charge proper. Adidas failed to show any error, much less a prejudicial one. The district court instructed the jury multiple times to confine its inquiry to initial-interest and post-sale confusion. The differences between adidas's proposed instruction and the court's instruction were immaterial. Adidas could not articulate “a meaningful distinction between ‘competitive proximity' and ‘competition for the same consumers.'” Id. at *3-4.
Adidas's argument regarding exclusion of expert testimony also fell flat. The district court had required adidas to proffer an expert witness's testimony so the court could assess admissibility. When the expert witness, Mr. D'Arienzo, was called to testify, adidas proffered him for one of three topics discussed in his report, specifically, “how different executions can still [be] recognized from a branding device.'” Slip op. at *4. The district court “found that the methodology he used to reach his conclusions – reviewing the opinions of ‘fashionistas on the web,” App'x 236 – was unreliable and thus excluded his testimony on this topic.
On appeal, adidas challenged the district court's exclusion of D'Arienzo's testimony on another topic addressed in his report, which was not part of the proffer in the district court – how the lines between luxury and sportswear have blurred. Because adidas declined the district court's invitation to make a proffer on that subject, the Second Circuit held adidas waived any objection that could arise from D'Arienzo's silence on that topic. Id., Slip op. at *6.
Adidas also objected to the admission of testimony of JoAnne Arbuckle, one of Thom Browne's experts. The district court precluded Arbuckle from offering expert testimony but permitted her to testify regarding “'the appearance of [adidas's] Three-Stripe Mark as an historical matter in numerous situations.'” Id. (quoting App'x 284). The Second Circuit rejected adidas's objection that Arbuckle's testimony was within the ken of the average juror, because Arbuckle did not testify as an expert, but rather, as a lay witness. Id.
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