A district judge in New York held that the report of a intellectual property expert witness spoke to straightforward areas of the law where juries did not require assistance.
Plaintiff Medical Depot, Inc. and Defendant Med Way US, Inc. are both manufacturers of medical products, including specially designed medical air mattresses. Medical Depot, Inc. began selling various air mattress models using the descriptors “Med-Aire” and “Med Aire” in 2007. Plaintiff contended that its use of the terms “Med-Aire” and “Med Aire” since 2007 was substantial enough to merit trademark protections, while Defendant argued the opposite.
Defendant alleged that it began selling air mattress medical products using the name “MEDAIR” as early as April 1, 2019. On December 10, 2019, Defendant filed United States Trademark Application Ser. No. 88/721,827, which matured into Registration No. 6,116,976, which covered use of the MEDAIR mark for International Class 10 medical products, namely “air mattresses with pump, for medical purposes.”
Plaintiff argued that Defendant’s use of the MEDAIR mark infringed on Plaintiff’s unregistered “Med-Aire” mark, which Plaintiff argues had gained trademark protection despite its lack of registration with the USPTO. Plaintiff also brought claims for unfair competition and the cancellation of Registration No. 6,116,976.
Motion to exclude
During the course of this action, Plaintiff retained Jeremy N. Sheff to produce the Sheff Report and to provide testimony in regard to the subject matter of the Sheff Report if called to do so during pretrial proceedings.
The Sheff Report purported to opine as to three issues:
- The first is whether [Medical Depot]’s marketing and sales of products under its claimed MED-AIRE trademark establish “use in commerce” under the Lanham Act sufficient to establish priority of right as of July 13, 2018. This is the date currently claimed by Defendant Med Way US, Inc. (“Med Way”) as the date of its first use in commerce of the mark MEDAIR, used on or in connection with the goods and services “air mattresses with pump, for medical purposes” in International Class 10, which is the subject of United States Patent and Trademark Office (USPTO) Trademark Registration No. 6,116,976, Serial No. 88/721,827 (“the ‘976 Registration”).
- The second is whether the use by [Medical Depot] of its claimed MED-AIRE trademark on its products and associated sales materials constitutes “use as a mark” or “trademark use” under the Lanham Act as interpreted by the federal courts and the USPTO.
- The third is whether alternative presentations of [Medical Depot]’s claimed MEDAIRE trademark both with and without a hyphen and with or without an intervening space defeat its claim to priority.
Defendant argued that the Sheff Report is “a legal brief masquerading as an expert report” and moved to exclude the same. Plaintiff argued that any exclusions made to Sheff’s report or testimony should correspondingly apply to Defendant’s expert, Francis Duffin.
Intellectual Property Expert Witnesses
Jeremy N. Sheff is a tenured Professor of Law at St. John’s University School of Law, where he also serves as the Founding Faculty Director of the St. John’s Intellectual Property Law Center. Sheff has taught Trademark Law and other courses at St. John’s University School of Law since 2008. He conducted doctrinal, theoretical, and empirical research on intellectual property law, with a particular focus on trademark law.
Francis Duffin is a Partner in the Corporate Department and Chair of the Trademark Practice Group at Wiggin and Dana LLP. He has extensive experience in domestic and international trademark law and in trade name and domain name matters, stemming from his foundation as a Trademark Examining Attorney with the U.S. Patent and Trademark Office.
Discussion by the Court
The Sheff Report
Defendant challenged only those portions of the Sheff Report and related testimony that: “(a) opine on what constitutes the relevant law and the significance of such law, (b) apply such supposed relevant law to the facts, (c) proffer legal opinions, (d) propound legal conclusions, and (e) offer expert testimony directed to the matters of consumer psychology, marketing, and the commercial impression purportedly created by the Med-Aire phrase on the relevant consuming public of medical air mattress products.”
Med Way US, Inc. characterized those categories of disputed topics as encompassing the entirety of the Sheff Report—noting, for example, that “Sheff admitted at the outset of his report that he was retained solely to opine on the ultimate legal issues in this case”—rendering the Defendant’s challenge as one against the Sheff Report as a whole.
The Defendant argued that Sheff usurped the role of the factfinder and of the Court in his expert report because his testimony as an expert on trademark usage under the Lanham Act concerned a subject that “juries (and factfinders) simply do not require expert assistance to competently assess.” The Defendant contended that the Sheff Report spoke to straightforward areas of the law where juries did not require assistance.
The Court, citing Highland Capital Management, L.P. v. Schneider, 551 F. Supp. 2d 173, 181 (S.D.N.Y. 2008), held that the Sheff Report’s subject matter—use in commerce, trademark usage, and the issue of alternate presentations—were straightforward matters of law that a jury can ably decide without the assistance of an expert.
In other words, the Court excluded the Sheff report because it solely concerned “matters which a jury is capable of understanding and deciding without the expert’s help.”
Sheff’s Testimony
Defendants argued that, in addition to barring the Sheff Report, the Court should preclude Sheff from testifying as to the same questions raised in the Sheff Report. Because the Court found that the subject matter of the Sheff Report solely concerned “lay matters which a jury is capable of understanding and deciding without the expert’s help,” the Court correspondingly found that Sheff may not testify to the same issues raised in the Sheff Report at trial.
The Duffin Report
Plaintiff argued that if the Court excludes Sheff’s testimony and the Sheff Report, the Court should also exclude the corresponding testimony by Defendant’s rebuttal expert, Francis Duffin (“Duffin”). Duffin’s testimony was offered solely to rebut Sheff’s testimony.
Defendant contended in response that the Court should preclude Plaintiff from seeking exclusion of the Duffin Report because Plaintiff first raised this argument in its opposition papers and failed to file a motion in limine to exclude the report by the Court’s November 2, 2023 deadline.
Federal Rule of Civil Procedure 26 defines rebuttal expert testimony as testimony ‘intended solely to contradict or rebut evidence on the same subject matter identified [in the expert testimony offered] by another party.’ ‘[T]he [rebuttal] expert’s testimony should be to ‘explain, repel, counteract or disprove evidence’ presented by the expert to whom he or she is responding.
The Court held that Duffin’s rebuttal report “must also be excluded as irrelevant,” as its sole relevance at trial was to rebut now-excluded expert testimony. That Plaintiff did not file a motion in limine to exclude the Duffin Report does not change this outcome.
Held
The Court excluded the Sheff Report and any testimony by Sheff at trial concerning the subject matters of the Sheff Report. In light of the exclusion of the Sheff Report and related testimony, the Duffin Report is likewise excluded as irrelevant.
Key Takeaways:
- While the expert can make factual conclusions that embrace an ultimate issue that the fact-finder is yet to decide, the expert cannot give testimony stating ultimate legal conclusions.
- An untrained layman is perfectly qualified to assess the strength or distinctiveness of a mark and/or the likelihood of consumer confusion, both of which the Court evaluates from the perspective of the consuming public.
- Defendant hired rebuttal expert Francis Duffin to explain, repel, counteract or disprove evidence’ presented by Jeremy Sheff. In other words, Duffin Report would have no basis for admission without Sheff.
Case Details:
| Case Caption: | Medical Depot, Inc. V. Med Way Us, Inc. |
| Docket Number: | 2:22cv1272 |
| Court: | United States District Court, New York Eastern |
| Order Date: | April 26, 2024 |
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