Expert Witness Profiler

Tag: Likelihood Of Confusion

  • Intellectual Property Expert’s Opinions may Assist the Jury’s Statutory Damages Determination

    Intellectual Property Expert’s Opinions may Assist the Jury’s Statutory Damages Determination

    Plaintiffs manufacture, market, and sell premium, luxury, and sports eyewear products, including Ray-Ban, Oakley, and Costa. Plaintiffs own several trademarks for these various brands in the United States.

    Defendants own and operate the Beach Blvd. Flea Market (the “Flea Market”), in Jacksonville.

    This is a contributory trademark infringement case involving the repeated display and sale of products bearing counterfeits of Plaintiffs registered trademarks by Defendants’ vendors at the Beach Blvd. Flea Market.

    Initially, Defendants enlisted Kal Raustiala to provide an expert report and opinions regarding the legal and factual contours of harm caused by consumer confusion and how such harm is, or is not, likely to arise.

    Subsequently, Plaintiffs moved to exclude Raustiala’s report and testimony in their entirety on the basis that he is unqualified and his opinions (1) contain improper legal conclusions; (2) do not assist the trier of fact; and (3) mislead the jury.

    Specifically, Raustiala offers three primary opinions: (1) this case, unlike many trademark disputes, does not involve “standard point of sale” consumer confusion, (2) harm from post-sale confusion, which requires a special set of circumstances, “exists but is rare,” and can, in some cases, benefit the intellectual property holder, and (3) in this case, there is no evidence that Plaintiffs have been harmed by post-sale confusion. Furthermore, also embedded in his report are several ancillary or supplemental opinions regarding the goals of trademark law and how harm is caused by consumer confusion, the sequence of events necessary for post-sale confusion to occur, the potential outcomes of such confusion, and how harm to exclusivity should not be protected because it is contrary to the aims of trademark law.

    Intellectual Property Expert Witness

    Kal Raustiala has taught intellectual property and international law at UCLA, Harvard, Yale, Columbia, Chicago, Princeton, Melbourne University in Australia, Hebrew University in Israel, and the National University of Singapore, where he was the Yong Shook Lin Visiting Professor of Intellectual Property Law. He holds a JD from Harvard Law School (1999) and a PhD from the University of California, San Diego (1996), and he attended Duke University (1988).

    Raustiala has taught at UCLA Law School since 2000 and has researched and published widely on intellectual property issues in the realm of fashion, apparel, and luxury goods.

    Want to know more about the challenges Kal Raustiala has faced? Get the full details with our Challenge Study report. 

    Discussion by the Court

    Qualifications

    Kal Raustiala possesses substantial academic credentials, including a PhD and Juris Doctor. His expertise in intellectual property law is further demonstrated by his teaching experience at numerous prominent universities and his publications on intellectual property and fashion design, one of which has been cited by the United States Supreme Court.

    Notably, he has authored an article specifically addressing post-sale confusion in the trademark context and has consulted with firms on intellectual property issues. These accomplishments underscore Raustiala’s extensive knowledge, skill, experience, and education in the field. Recognizing that an expert’s qualifications need not perfectly align with the specific subject matter, the Court concluded that Raustiala is a qualified expert witness in this case.

    Legal Conclusions

    The Plaintiffs contend that Raustiala’s expert opinions are fundamentally flawed because they repeatedly present legal conclusions regarding the definition and application of trademark infringement law to the specific facts of this case. In contrast, the Defendants argue that Raustiala’s analysis merely describes the factual progression of events in the real world that can lead to post-sale consumer confusion.

    The Court finds that many of Raustiala’s opinions, specifically those describing different types of consumer confusion and the sequence of real-world events that can cause one particular form of post-sale confusion, do not constitute inadmissible legal conclusions. In particular, concerning Raustiala’s views on point-of-sale confusion and the existence of one method to establish post-sale confusion, the Court determines that Raustiala does not offer testimony on the legal ramifications of specific conduct or instruct the jury on the ultimate verdict.

    However, the Court will exclude any of Raustiala’s opinions that address whether post-sale confusion or harm to exclusivity are or should be recognized as valid legal theories of harm in trademark law, as these constitute impermissible legal testimony.

    Additionally, the Court notes that Raustiala draws comparisons between real-world confusion scenarios and existing case law to promote a specific argument, namely the absence of harm. The Court deems these statements to be the type of arguments properly presented in legal briefs by counsel and will therefore exclude them as inappropriate expert opinion.

    Raustiala Exceeds the Scope of Proper Expert Witness Testimony

    Furthermore, the Court will exclude Raustiala’s assertions that there is no likelihood of confusion in this case, as this impermissibly concludes that the Plaintiffs have failed to meet a legal standard. Likelihood of confusion is a central element in infringement cases, and by stating that the Plaintiffs have not satisfied this element, Raustiala oversteps the permissible bounds of expert witness testimony.

    Given that binding legal precedent establishes post-sale confusion as a basis for finding a likelihood of confusion, the Court will similarly exclude Raustiala’s opinions stating that no post-sale confusion existed or was demonstrated in this particular case.

    Moreover, the Court observes that Raustiala frequently intertwines his opinion that there was no harm with his ultimate conclusion that there was no likelihood of confusion. Consequently, to the extent that Raustiala’s opinions regarding harm to the Plaintiffs are based on and inseparable from his ultimate conclusion on confusion, this testimony is also inadmissible and will be excluded.

    Helpfulness to the Trier of Fact

    The Plaintiffs next argued that Raustiala’s opinions lack relevance and would therefore not assist the jury in deciding a factual issue in the case. Conversely, the Defendants contended that Raustiala’s opinions are relevant to the matter of standing, the Court’s decision regarding the adoption of a presumption of confusion, and the determination of statutory damages.

    The Court will not consider the relevance of Raustiala’s opinions concerning the Court’s decision to adopt a presumption of confusion, as expert testimony is not used to inform the Court on matters of law.

    In other respects, the Defendants asserted that Raustiala’s expert opinions on post-sale confusion and its potential economic consequences would help the jury in assessing the need to deter other potential infringers and in evaluating the Plaintiffs’ lost revenues when determining the appropriate statutory damages.

    However, the Court did not find a clear connection between Raustiala’s opinions on the sequence of events in one type of post-sale confusion and whether it can lead to economic loss, and the calculation of a damages award intended to deter future infringers.

    Nevertheless, the Court found Raustiala’s opinions to be marginally relevant to the Plaintiffs’ lost revenues. Although statutory damages are available due to the difficulty in calculating actual damages, legal precedent indicates that “[s]tatutory damages are not intended to provide a Plaintiff with a windfall recovery; they should bear some relationship to the actual damages suffered.” Therefore, Raustiala’s insights into how post-sale confusion can or cannot result in economic loss may be helpful to the jury in its consideration of actual damages, specifically the Plaintiffs’ lost revenues. Consequently, the Defendants have demonstrated that Raustiala’s remaining opinions could potentially assist the jury in its determination of statutory damages.

    Rule 403

    The Plaintiffs asserted that Raustiala’s opinions would mislead the jury in several key areas by contradicting established legal precedent. Specifically, they argued that his opinions conflict with binding case law regarding the application of the seven-factor test for determining likelihood of confusion, the existence of a presumption of confusion, and the legal principle that post-sale confusion is sufficient to establish liability under the Lanham Act. Furthermore, the Plaintiffs contended that the jury would be improperly led to believe that Raustiala’s opinions on whether the Plaintiffs suffered a loss of economic revenue are definitive in determining both the likelihood of confusion and the appropriateness of statutory damages.

    Regarding the Plaintiffs’ initial argument as it pertains to Raustiala’s remaining opinions, the Court finds no contradiction between Raustiala’s testimony on the real-world progression of one type of post-sale confusion and the established seven factors used to assess likelihood of confusion. Turning to the presumption of confusion, while courts have applied this presumption when trademarks are identical, no binding legal precedent compels this Court to do so.

    As the Court has already determined that Raustiala’s opinions asserting the absence of post-sale confusion in this case are inadmissible legal conclusions, it is unnecessary to further evaluate their admissibility under Rule 403 concerning the potential for prejudice or confusion.

    Finally, concerning the Plaintiffs’ contention that the jury might be misled into believing that the economic consequences of post-sale confusion are determinative of liability, the Court concludes that any such potential for misinterpretation can be adequately addressed through other procedural means, including cross-examination of the witness, the issuance of limiting instructions to the jury during the trial, and comprehensive jury instructions at the close of evidence.

    Held

    The Court granted in part and denied in part the Plaintiffs’ motion in limine to exclude the proffered opinions of Kal Raustiala.

    Key Takeaway:

    The Court partially excluded the expert testimony of Kal Raustiala. Despite his extensive background in intellectual property law, the Court determined that many of his opinions constituted impermissible legal conclusions (Raustiala’s opinions as to whether post-sale confusion or harm to exclusivity have been or should be recognized as legal theories of harm in trademark cases), exceeded the scope of proper expert testimony, and would potentially mislead the jury. However, the Court allowed some of his testimony regarding how post-sale confusion can or cannot result in economic loss because it may help the jury in its consideration of actual damages, and specifically, Plaintiffs’ lost revenues.

    Although there remains a possibility that Raustiala’s expert opinions could lead to some juror confusion or a less efficient use of trial time, the Court does not find that this risk substantially outweighs the probative value of the remaining testimony, especially considering the exclusion of several other aspects of Raustiala’s original opinions.

    Case Details:

    Case Caption: Luxottica Group S.P.A. Et Al V. Beemer & Associates III, Llc
    Docket Number: 3:23cv551
    Court: United States District Court for the Middle District of Florida, Jacksonville Division
    Order Date: March 28, 2025
  • Music Industry Expert Witness’ Testimony on Proximity of Products Admitted

    Music Industry Expert Witness’ Testimony on Proximity of Products Admitted

    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.

    Get the full story on challenges to Bijan Amirkhani’s expert opinions and testimony with an in-depth Challenge Study. 

    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.

    Want to know more about the challenges Gary Casson has faced? Get the full details with our Challenge Study report. 

    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.

    Discover more cases with Jeff Rougvie as an expert witness by ordering his comprehensive Expert Witness Profile report.

    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