In March 2022, Defendants Edition Modern and Denis De La Mésière faced a lawsuit filed by Plaintiffs Jean Royère SAS and Jelena Markovic. Edition Modern, a small business, operated with approximately three full-time employees, including both owners and a few part-time workers. Denis De La Mésière, one of the owners, possessed over 40 years of experience in the furniture industry and immigrated to the United States from France in 1987. Since 2015, Edition Modern had been marketing and selling furniture inspired by Jean Royere, alongside pieces influenced by other modern French designers and items designed by Mésière himself. The Defendants countered by asserting that the Plaintiffs lacked copyright registrations for the works claimed in the case. The works in question comprised lighting products and furniture pieces, all categorized as useful articles, requiring Plaintiffs to demonstrate their separable features capable of existing independently from the utilitarian aspects of the articles.
The Plaintiff Jean Royère SAS and Jelena Markovic filed a motion to exclude testimony of the Defendants’ expert Charles Vranian. The Defendants Edition Modern and Denis de la Meisière had also filed a motion to exclude testimony of the Plaintiffs’ expert Paul Hatch.
Industrial Design Expert Witness
Paul Hatch has over 25 years of experience in product and industrial design. He is currently pursuing his Ph.D. in Learning Sciences from the University of Illinois at Chicago, where he also works as an adjunct faculty member. Hatch also earned a Bachelor’s degree with honors in Design for Industry from the University of Northumbria in the UK. His educational background includes Diploma in general art and design as well. Hatch has served as a CEO of TEAMS Design USA. Hatch has designed numerous furniture pieces across a diverse array of materials and manufacturing methods, including chairs, shelves, cabinets, tables and more.
Management Consulting Expert Witness
Charles J. Vranian has over 35 years of experience in the furniture industry, including 26 years at the renowned furniture company Herman Miller. He holds a Bachelor’s degree in Economics from Michigan State University and completed MBA coursework at Wayne State University. Vranian’s currently serves as a Founder and President of Vranian Business Development LLC, where he focuses on consulting, M&A projects, and patent disputes.Through his extensive work in the furniture industry, including in senior positions at a leading furniture design company, Vranian has developed expertise related to furniture design, development, manufacturing, and intellectual property issues.
Discussions by the Court
The Defendants contended that Paul Hatch, despite having experience in “product design” and “industrial design,” lacked a background in “sculptural” or “purely artistic” design. The claim suggested that Hatch’s assessment of works of art was irrelevant to the case, as he evaluated the “merit” of unrelated artworks to form opinions on the “sculptural features” and “aesthetic qualities” of the designs in question. The assertion emphasized that Hatch’s opinions hinged on an inexpert analysis, including references to certain “visual elements” explored by “many artists” without proper qualification or justification. The argument concluded that Hatch’s improper comparison of artworks and industrial designs should lead to the exclusion of his testimony by the Court.
However, the Court disagreed, citing Rule 702, which allowed expertise based on knowledge, skill, experience, training, or education. The Court emphasized a broad interpretation of expert qualifications and found Hatch’s over twenty-five years of professional experience in furniture and product design sufficient to testify on design-related issues. The Court dismissed the argument that Hatch’s industrial background disqualified him from addressing artistic questions, stating that no binding case law mandated the exclusion of his testimony on that basis.
Plaintiffs filed a motion to exclude Defendants’ Supplement to Rebuttal Expert Report of Charles Vranian, citing untimeliness and prejudice. According to Federal Rule of Civil Procedure 26(a), expert reports had to be disclosed by a specified deadline in the pretrial schedule. Failure to do so may result in exclusion unless the failure was justified or harmless under Rule 37(c)(1). Courts considered factors such as prejudice, the opposing party’s ability to remedy it, trial disruption likelihood, and bad faith or willfulness in determining harmlessness. The burden of proving harmlessness lay with the party facing sanctions. Courts possessed wide latitude in issuing sanctions under Rule 37(c)(1).
In this case, the Court-established pretrial schedule mandated initial expert disclosures by April 28, 2023, rebuttal expert disclosures by May 19, 2023, and set the expert discovery cut-off date for June 2, 2023. Following Plaintiffs’ service of the Expert Report of Paul Hatch on April 28, 2023, Defendants provided their Rebuttal Expert Report of Charles Vranian on May 19, 2023. Plaintiffs deposed Vranian on June 1, 2023. After both parties submitted motions for summary judgment on June 23, 2023, Defendants served a Supplement to Rebuttal Expert Report of Charles Vranian on June 27, 2023.
The Court determined that Defendants’ late submission of supplemental report did not comply with Rule 26(e)(1) and was prejudicial. Rule 26(e) allowed supplementation for correcting inaccuracies or filling gaps with information unavailable during the initial disclosure. The supplemental report, containing over fifty substantive revisions to Vranian’s original report, did not rely on previously unavailable information. The Court rejected Defendants’ characterization of the revisions as “clarifications,” deeming them an attempt to fortify Vranian’s opinions. This was considered inappropriate supplementation. The Court emphasized that the revisions aimed at strengthening opinions were improper. Moreover, Defendants submitted the supplemental report after the expert discovery period closed, without warning and without providing Plaintiffs the opportunity to depose Vranian regarding the changes. Consequently, the Court struck Defendants’ Supplement to Rebuttal Expert Report of Charles Vranian.
Plaintiffs sought the Court’s exclusion of Vranian’s testimony concerning copyright protection, contending that he did not apply the correct legal standard established in Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405, 137 S. Ct. 1002, 197 L. Ed. 2d 354 (2017). Additionally, Plaintiffs argued that Vranian lacked the necessary background and experience to qualify as an expert on this specific topic.
In 2017, the Supreme Court in the case of Star Athletica, L.L.C. v. Varsity Brands, Inc. established a two-part test for determining copyright protection concerning elements incorporated into the design of a useful article. The statute provides that a “pictorial, graphic, or sculptural featur[e]” incorporated into the “design of a useful article” is eligible for copyright protection if it is (1) identified separately from the utilitarian aspects and (2) capable of existing independently of those utilitarian aspects. Meeting the first criterion was relatively straightforward, requiring the recognition of a two- or three-dimensional element with pictorial, graphic, or sculptural qualities within the useful article. However, the second criterion, independent existence, was more challenging. It necessitated a determination that the identified feature could exist distinctly from the utilitarian functions of the article.
In essence, a component of a useful article’s design could obtain copyright protection if, when isolated from the article, it could be considered a pictorial, graphic, or sculptural work independently or when placed within another tangible medium.
During Vranian’s deposition, he explicitly stated his disagreement with the legal standards established in Star Athletica regarding copyright protection. Despite repeated questioning about the test for copyrightability, Vranian consistently expressed his disagreement with the established standards. The Plaintiff argued that instead of applying the correct legal standard, Vranian formulated his own tests for copyrightability. One such test was based on the “Furniture Customer Buying Process” outlined in his original report. Vranian suggested that when an interior designer is involved, the primary selection driver is the function of the pieces, and the design is intentionally holistic. He asserted that the selected piece’s elements are inseparable, constituting component parts of an overall holistic design for the client.
The Plaintiff objected strongly to Vranian’s creation of multiple ad hoc tests for copyright protection. Vranian devised various unconventional tests, including the “slight-modification test,” which suggested that copyright protection wouldn’t apply even if modifications allowed for separate imagining of the article’s features as a standalone sculptural work. He also introduced the “difficult-to-see-on-a-dark-floor test,” proposing that products not visible on a dark floor were ineligible for copyright protection. Furthermore, he introduced the “seating-and-table-product test,” excluding seating and table products from copyright protection based solely on his subjective experience that function precedes form for such items. Vranian also proposed the “fundamental-geometric-shape test,” stating that copyright protection wouldn’t extend to design features comprising basic shapes. Finally, he suggested the “furniture-pieces-with-useful-functions test,” asserting that furniture pieces, due to their functional nature, weren’t eligible for copyright protection, disregarding the potential separability of certain design features as sculptural works in their own right.
Vranian’s “supplement” was found to showcase numerous revisions attempting to align with the test established in Star Athletica. However, this highlighted his evident failure to adhere to the correct legal standard. Among the 57 substantial revisions made to the original report, about thirty replaced earlier conclusions regarding copyrightability, which Vranian had evidently misconstrued, with new language and analyses that mimicked and attempted to apply the legal standards delineated in Star Athletica.
The Court concurred with Plaintiffs, determining that Vranian lacked the qualifications to provide expert testimony on design issues. His background primarily involved business development roles. While he worked at Ford Motor Company in accounting and finance for ten years, and later spent twenty-six years at Herman Miller in product management and marketing roles, he never specifically served as a product designer. Although his general background at a furniture company made him qualified to speak on less design-intensive matters, the Court found that specific knowledge and experience in product design were essential for analyses under Star Athletica. Vranian’s demonstrated inability to correctly apply the key Star Athletica standard, as well as his reliance on an unsupported functionality test, indicated his lack of qualification. Additionally, the Court expressed concerns about the risk of juror confusion due to the improper legal tests underlying Vranian’s opinions on separability and independent existence.
Held
The Court denied Defendants’ Motion to Exclude the testimony of Plaintiffs’ expert Paul Hatch. However, Plaintiffs’ Motion to Exclude the testimony of Defendants’ expert Charles Vranian was granted in part. Vranian’s opinions on separability and independent existence were excluded, along with his supplemental report in its entirety. The Court allowed Vranian’s testimony solely on the issue of originality, with further limitations restricting it to the opinions contained in his original expert report. The Court has not arrived on an outcome for this case since the remaining issues involved in this case still await resolution.
Key Takeaways
In the legal proceedings between Plaintiffs Jean Royère SAS and Jelena Markovic and Defendants Edition Modern and Denis De La Mésière, the expert testimony played a crucial role. Plaintiffs relied on the expertise of Paul Hatch, whose extensive background in product and industrial design was deemed sufficient by the Court, rejecting the Defendants’ motion to exclude his testimony. However, Defendants faced challenges with their expert, Charles Vranian. The Court limited Vranian’s testimony, excluding his opinions on separability and independent existence, citing his lack of specific qualifications and failure to apply the correct legal standard. The Court also struck Defendants’ late-filed supplemental report for Vranian, emphasizing the importance of timely and proper disclosure in adherence to the legal procedures. These decisions underscored the significance of expert witnesses in intellectual property cases and the need for their qualifications and methodologies to align with legal standards.
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