The parties in this case are estranged corporate siblings. Plaintiff Ultra Records LLC is a music recording company. Defendant Ultra International Music Publishing LLC is a music publishing company. (The Court refers to Ultra Records as “Records” and Ultra International Music Publishing as “Publishing.”) Records has sued Publishing for trademark infringement under the Lanham Act, breach of contract, and other claims related to Publishing’s use of the “Ultra” name. For its part, Publishing sought a declaration confirming its right to use that name.
Records sought to exclude the testimony of Bijan Amirkhani and portions of the testimony of Gary Casson. Publishing sought to exclude the testimony of Jeff Rougvie.
Music Industry Expert Witnesses
Bijan Amirkhani began his career over fifteen years ago, initially as a hobby, and then transitioning to a professional producer around 2017, when he received a major placement for an album he helped produce. In the same year, an album he co-produced earned 9X Platinum status and garnered over 1.4 billion streams on Spotify. In addition to these successes, Amirkhani has worked with many recording artists, including such famous ones as Lil Wayne, Kanye, YG, and Sabrina Claudio. Amirkhani also participates in writing camps around the world and interacts with hundreds of recording artists, producers, and songwriters to develop music for various products.
Gary Casson is an attorney and executive who has worked in the music industry for more than 45 years. He has been retained by a number of organizations and major music companies including the RIAA, Sony Music and the Warner Music Group.
Jeff Rougvie is a senior entertainment industry executive with extensive experience in the evaluation, acquisition, monetization and reformatting of IP. He has intimate knowledge of sales, marketing, distribution, and intellectual property law within entertainment and licensing industries.
Discussion by the Court
Bijan Amirkhani
Bijan Amirkhani’s report discusses the differences between record companies and music publishers, the reasons why songwriters sign with publishing companies, the factors songwriters and producers consider when choosing a publishing company, and the likelihood of confusion “if a record company and publishing company have similar names, but are owned by unrelated entities.”
Records objected that Amirkhani does not have the right sort of personal experience to make him an expert on music industry practices. The Court held that Records doesn’t—and can’t—deny that Amirkhani has practical experience in the general field at issue here. Beyond that, whether he has precisely the sort of experience Records thinks he should “go[es] to the weight, not the admissibility, of his testimony.” Amirkhani used this practical experience as the factual basis for his testimony. His testimony is based on the experience he gained in working with “hundreds of songwriters and publishers” and his own personal experience as a songwriter and producer.
However, the Court held that Amirkhani’s opinion that no one would be confused by Records and Publishing having the same name is plainly out of bounds. As Records points out, Amirkhani’s report failed to provide any reliable basis for his assurances about what’s going on inside the heads of other people.
If Amirkhani were testifying as a fact witness based on his personal knowledge, he certainly could have offered testimony about his own confusion (or lack thereof). But it is precisely to smuggle in otherwise inadmissible market-wide testimony—with no basis in evidence from the marketplace—that he’s been presented as an expert. The Court held that Rule 702 doesn’t allow that.
Gary Casson
Casson’s report discusses the functions of a music publisher, the functions of a record label, and differences between the two. Casson also discusses the history of the Ultra name.
Records acknowledges that much of Casson’s testimony is admissible. It objects to just two paragraphs in his report. In each of these paragraphs, Casson stated point-blank that there is no likelihood of confusion for a particular group of music industry customers.
Publishing said that expert testimony about how consumers decide what to purchase doesn’t require survey evidence, so long as the expert doesn’t speak “about confusion when consumers are faced with the marks.” According to Publishing, Casson will only testify that the marks aren’t part of the buying process, not about confusion between the marks.
If that is the limit of Casson’s testimony, then there is no issue. However, the Court held that Casson’s report states directly that there is no likelihood of confusion among songwriters, DSPs, and synch licensees. That’s an opinion about confusion unmoored from a valid survey or other reliable basis in fact. As Records seems to recognize with its surgical objections, the problem with Casson’s testimony is that he ventures beyond a description of consumers’ buying practices to opine on confusion, which he has no basis to do.
Jeff Rougvie
Rougvie discusses the degree of competitive proximity between record companies and publishing companies.
Qualifications
Publishing claims that Rougvie is unqualified, that his testimony is unreliable, and that his opinions are irrelevant to the issues to be tried.
On Rougvie’s qualifications, Publishing’s argument isn’t that Rougvie lacks experience. Publishing instead claimed that Rougvie lacks both recent and the correct type of experience in the music industry. To Publishing’s credit, Rougvie does characterize the music industry as subject to major “technological disruption.” However, just because the industry is consistently changing doesn’t mean, in Court’s opinion, that Rougvie’s four decades in the industry amount to nothing.
Publishing pointed to Rougvie’s lack of knowledge about several major organizations for songwriters as evidence of his ignorance about songwriters specifically. But Rougvie’s decades of experience in the music industry qualifies him to testify; the Court held that Publishing can air its specific gripes concerning the limits of that experience at trial.
Reliability
Second, Publishing objected that Rougvie’s opinions lack a sufficient factual foundation and are misleading. Publishing’s main complaint is that Rougvie failed to investigate the facts underlying his opinions thoroughly. Again, these criticisms are better directed at cross-examination, not exclusion. On the Court’s read of Rougvie’s report, it contains conclusions about record companies and publishing companies based on Rougvie’s personal experience and explanations of why that experience is relevant to those conclusions.
Publishing also points to what it views as unsubstantiated implications of statements in Rougvie’s report, including about the business choices of Taylor Swift and the reason why half of Ultra Records was sold in 2012. But the testimony itself satisfies the Rule 702 bar. Just as Publishing was able to explain those unsupported inferences in its briefing, the Court held that it can expose any weaknesses in Rougvie’s testimony during cross-examination.
Relevance
The Court held that Rougvie’s report discusses the similarities between the services offered by record companies and publishing companies—a key issue in this case. Proximity of products is one of the factors courts use to determine the likelihood of confusion in a trademark-infringement action.
Publishing doesn’t really engage with this response. Instead, it reasserts that Rougvie’s testimony is based on speculation and is misleading. However, the Court rejects these arguments as grounds for exclusion.
Held
- The Court granted in part and denied in part Records’ motion to exclude the expert testimony of Bijan Amirkhani and portions of the expert testimony of Gary Casson.
- The Court denied Publishing’s motion to exclude the expert testimony of Jeff Rougvie.
Key Takeaway:
The Court excluded the likelihood of confusion opinions offered by Amirkhani and Casson because they lacked a reliable basis in fact. Rougvie’s report, however, sheds light on the degree of competitive proximity between record companies and publishing companies. Discussing the similarities between the services offered by record companies and publishing companies is relevant because proximity of products is one of the factors courts use to determine the likelihood of confusion in a trademark-infringement action. Though Publishing claims Rougvie doesn’t have experience in the relevant niche within the music industry, the Court held that Rougvie’s decades of experience in the music industry qualifies him to testify.
Case Details:
| Case Caption: | Ultra Records, Llc V. Ultra International Music Publishing, LLC |
| Docket Number: | 1:22cv9667 |
| Court: | United States District Court, New York Southern |
| Order Date; | November 4, 2024 |
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