In this action, a group of environmental organizations seek to compel Defendant County of San Luis Obispo (“Defendant”) to make changes to how it operates a dam and related infrastructure in the Arroyo Grande Creek (“AG Creek”) watershed.
Plaintiffs claimed that the County’s operations have caused significant harm to the South-Central California Coast Steelhead trout (the “Steelhead”).
The Steelhead is a protected species under the Endangered Species Act (“ESA”). At least two other ESA-listed species inhabit the AG Creek: (1) the tidewater goby (“TWG”); and (2) the California red-legged frog (“CRLF”).
Defendant has presented evidence that juvenile Steelhead are predators of the California red-legged frog (“CRLF”) larvae and the tidewater goby (“TWG”).
Mark R. Jennings, a former USFWS biologist that Defendant has retained as an expert, therefore suggested that measures to increase the AG Creek’s Steelhead population may come at the expense of its CRLF and TWG populations.
Tevin Schmitt, a Watershed Scientist that Plaintiffs offered as an expert acknowledged that the Steelhead is a meso-predator but contended there is no evidence that Steelhead predation is, or could become, a major factor affecting the AG Creek’s CRLF and TWG populations.
Defendant filed a Daubert motion challenging the declaration of Tevin Schmitt. Plaintiffs have also filed objections to the declaration of Dr. Mark R. Jennings.
Watershed Expert Witness
Tevin Schmitt holds a Bachelor of Science in Environmental Science and Resource Management with a minor in Biology from California State University (“CSU”) Channel Islands. He conducted ecological research on Southern California coastal ecosystems, petroleum toxicology research, and water quality analysis projects in the Santa Clara River watershed during his time as a research assistant for CSU Channel Islands.
Mark Russell Jennings, Ph.D earned a Bachelors degree in Fisheries and a Masters in Natural Resources (with emphasis in Fisheries) from Cal Poly Humboldt, and a Ph.D. in Wildlife and Fisheries Science from the University of Arizona. He is a versatile ecologist, with specialties in both herpetology and fisheries biology. For the past 49 years, he has worked extensively with a wide variety of fishes.
In relevant part, Defendant argued that Schmitt lacked professional experience to qualify as an expert on the CRLF and TWG because he “only has an undergraduate minor in biology and no track record of research or publication on either species.”
The Court agreed that Plaintiffs have not presented sufficient evidence to show Schmitt is qualified to opine on how Plaintiffs’ requested relief would impact the CRLF and TWG.
Plaintiffs claimed that Schmitt is qualified to opine on the CRLF and TWG as an experiential expert. In support, Plaintiffs refer the Court to evidence that Schmitt has conducted nocturnal surveys, conducted habitat assessments, and collected acoustic monitoring data for the CRLF in the Santa Clara River Watershed. Plaintiffs also refer the Court to evidence that Schmitt has conducted water quality and habitat monitoring in the Santa Clara River Estuary and Ormond Lagoon to “assess habitat conditions for endangered species, like the TWG, that rely on these coastal lagoon habitats.”
However, Plaintiffs have not directed the Court to evidence, or presented sufficient argument, to explain how this experience would qualify Schmitt to opine on, among other topics, (1) whether an increase to the Steelhead population would adversely affect the AG Creek’s CRLF and TWG populations; (2) the likelihood that increasing water flows could displace CRLF and TWG eggs; (3) how that displacement would impact the CRLF and TWG’s overall population stability; and/or (4) whether the cumulative benefits of an increase in water flows to the CRLF and TWG would outweigh the potential loss of CRLF and TWG eggs.
Therefore, Plaintiffs have not met their burden to show, by a preponderance of the evidence, that Schmitt is qualified to address CRLF and TWG behavior, ecology, and population dynamics, and the Court will not consider Schmitt’s opinions on these topics.
Mark Jennings
Plaintiffs argued that Jennings has not sufficiently explained why the 2007 IDRS flow regime would be less detrimental to the CRLF and TWG than Plaintiffs’ proposed flow regime.
Plaintiffs also argued that Jennings’ opinions are unreliable because he failed to consider certain statements in the County’s 2025 Draft Habitat Conservation Plan (“HCP”) that contradict his opinions.
Based on the Court’s review of the Jennings Declaration, the Court is satisfied that Jennings has sufficiently explained why he believes Plaintiffs’ requested flow regime would harm the CRLF and the TWG. To the extent Jennings’ opinions are inconsistent with statements in the 2025 Draft HCP, Plaintiffs have not presented evidence sufficient for the Court to determine that the statements in the 2025 Draft HCP are accurate and the challenged testimony in the Jennings Declaration is inaccurate.
Held
The Court granted the Defendant’s motion to exclude Tevin Schmitt’s proposed testimony.
The Court overruled Plaintiffs’ objections to the declaration of Dr. Mark Jennings.
Key Takeaway
Schmitt “claims to have field experience with CRLF and species like the TWG” but this experience is insufficient for Schmitt to qualify as an expert on either species because “he does not hold the certifications that are required for him to handle, collect, or otherwise engage with these species in the wild.”
Case Details:
Case Caption:
San Luis Obispo Coastkeeper V. County Of San Luis Obispo
In May 2025, Plaintiff Richard Paul Merrell filed the operative putative class action complaint against Defendant Ralph Lauren Corporation. Plaintiff is visually impaired and legally blind, and he uses screen-reading software to read website content using his computer.
Screen-reading software (or a “screen reader”) allows blind and visually impaired users to access websites using a combination of a keyboard and “software that vocalizes the visual information found on a computer screen.”
Plaintiff alleged that Defendant’s website, including but not limited to https://www.ralphlauren.com/, “is not fully or equally accessible to blind and visually impaired consumers.”
According to Plaintiff, “Defendant’s failure to properly code its website” to be accessible means that he and other class members “have been and are still being denied equal and full access to Defendant’s retail stores and the numerous goods, services, and benefits offered to the public through Defendant’s website in conjunction with Defendant’s brick-and-mortar retail store locations.”
Defendant filed motions to exclude the testimony of Plaintiff’s experts, Dr. Jon A. Krosnick and Dr. William C. Easttom, II. Plaintiff filed a motion to exclude the testimony of Defendant’s expert, Aaron Cannon.
Psychology Expert Witness
Jon Alexander Krosnick is a Stanford professor and a research psychologist at the U.S. Census Bureau with a degree in psychology from Harvard University and an M.A. and Ph.D. in social psychology from the University of Michigan.
He has taught classes and trainings on research methods, received awards for research and psychology, authored or co-authored hundreds of articles and presentations, and otherwise conducted extensive research on survey research methods.
Dr. William Charles Easttom, II has Ph.Ds in technology and computer science, a Doctor of Science in cyber security, and multiple related master’s degrees. He has authored 44 computer science books and dozens of research papers and is an inventor of 27 computer science patents. He is as an adjunct lecturer at Georgetown University and Vanderbilt University.
Easttom has published three books specifically on JavaScript (a coding language for web development), holds a Certified Professional in Accessibility Core Competency certification, and has taken two accessibility courses.
Aaron Cannon has “been working in the field of web and mobile app accessibility for over seventeen years and [has] been developing software for twenty-nine years.” He is a “Certified Professional in Web Accessibility” and holds multiple accessibility-related certificates.
Cannon is totally blind and has been using screen readers since 1988, including JAWS for Windows, NVDA, TalkBack, VoiceOver, and the Orca screen reader. He also co-founded and served as chief accessibility officer for a company that provided accessibility auditing of websites and mobile apps.
Based on his review of the complaint, literature and documentation about methodologies employed in past surveys of blind people, past surveys of visually impaired people, studies of accessibility challenges faced by blind people when using computers, and other information, Krosnick conducted a survey and concluded that “the number of legally blind people living in California who used a screen reader and were prevented from doing business with a physical store due to problems related to accessibility with the Ralph Lauren webpage is 3,243.”
Defendant argued that Krosnick’s testimony should be excluded in full because (1) his opinions are unreliable and not based on sufficient facts or data; (2) his survey results are inadmissible hearsay; and (3) his survey is irrelevant and will not help the trier of fact.
Analysis
First, Defendant argued that Krosnick’s survey did not use a random probability sample and instead “recruited non-representative survey respondents from Facebook groups for visually impaired people.” But Krosnick made clear that he combined a primarily randomized probability sample with some respondents from Facebook groups oriented toward visually impaired people, and that this kind of “blended” probability sample “is a widely accepted practice in contemporary survey science.”
Defendant also contended that Krosnick’s survey had a low response rate, leading questions, self-interest bias, recall bias, and a lack of verification of unreliable answers.
The Court also is not persuaded that the survey involved leading questions or self-interest bias just because it asked participants if they wanted to “help improve the experiences of blind people using the Internet,” and then listed potential problems the respondents may have experienced.
Even if the survey’s wording did implicate some level of bias, this would not be so substantial as to render the survey unreliable.
B. Dr. William C. Easttom, II
Despite his extensive background, Defendant argued that “Easttom is not qualified to opine on website accessibility,” since general education in computer science is not interchangeable with competence in website accessibility. Even if Easttom has a relatively limited amount of experience with website accessibility, he plainly is an expert on website design and computer science, and the Court is not persuaded that his extensive background is insufficient to qualify him as an expert.
Defendant also argued that Easttom’s testimony should be excluded in full because (1) his report relied on the wrong website; (2) his methodology is unreliable; and (3) he impermissibly offers legal conclusions.
Analysis
First, Defendant argued that Easttom failed to test a screen reader version of its website, “despite being prompted to enable accessibility features.”
The fact that Easttom didn’t test an alternative, enhanced version of the website may undercut the weight of his methodology or Plaintiff’s claims against Defendant, but it did not render Easttom’s opinions completely irrelevant or unreliable.
Methodology
Second, Defendant raised various attacks on Easttom’s methodology, including that Easttom (1) did not use two tools he used in another case and (2) makes a “huge inferential leap” that Defendant denied access to its goods and services from the fact that the store locator wasn’t rendered as a clickable website attribute.
First, any questions about the tools used go to weight, rather than admissibility. Second, the Court disagreed that Easttom’s conclusions are that large of an inferential leap, or that they are irrelevant to answering the question of whether Defendant’s website violated the ADA. And to the extent another expert said that visually impaired customers could locate Defendant’s brick-and-mortar stores through its website, that is a battle of the experts to be resolved by the trier of fact.
Legal Conclusions
Third, Defendant argued that Easttom improperly offered legal conclusions. In particular, Defendant took issue with Easttom’s statements suggesting that Ralph Lauren’s website is not ADA compliant.
The Court agreed with Defendant: Easttom’s opinion and testimony that Defendant’s website did not meet ADA compliance requirements, is an improper legal conclusion, and the Court granted the motion as to these opinions.
However, one of the purported “legal” conclusions is actually a conclusion about whether Defendant’s website complies with the Web Content Accessibility Guidelines (“WCAG”), which are “a set of international standards designed to make web content more accessible.” This is not a legal conclusion just because Easttom made reference to tools that are used for scanning ADA compliance.
Fourth, Defendant argued that Easttom “conflates Ralph Lauren’s alleged non-compliance with WCAG 2.1 AA guidelines, and alleged non-compliance with the ADA,” and “there is no authority at all for the proposition that websites must comply with the WCAG guidelines.”
Reliability
Finally, Defendant argued that Easttom improperly used the Internet Wayback Machine to determine if historical versions of Defendant’s website were inaccessible because the Wayback Machine does not necessarily include full JavaScript functionality and may “not allow a user to evaluate [a website’s] full functionality.” These critiques—and critiques about the sample of Wayback Machine pages that were chosen—go to weight and do not fundamentally undermine the reliability of the opinion. This is especially true where, as here, Defendant has offered no reason to believe that these individual webpages had missing JavaScript functionality.
C. Aaron Cannon
Plaintiff first argued that portions of Cannon’s declaration should be excluded as untimely. Plaintiff sought exclusion under Federal Rules of Civil Procedure 26 and 37.
Rule 26
Defendant argued that Cannon disclosed that he had new opinions in his deposition, yet Plaintiff “did not question him about those additional opinions.”
The Court found that Defendant has not shown harmlessness. Defendant’s argument appears to be that Plaintiff’s counsel should have pushed harder at the deposition, ignoring the fact that Cannon evasively and vaguely mentioned he had some unspecified other opinions, but would not explain what they were. This is especially true where Defendant had already asserted that it would not disclose its rebuttal opinions to Easttom’s report, which it did not perceive to be related to class certification. As a result, the Court rejected Defendant’s suggestion that Plaintiff had the same “free rein” to get additional discovery on these untimely opinions as in Defendant’s cited cases.
Defendant’s other arguments regarding a lack of prejudice or surprise are unpersuasive. Defendant summarily stated that Plaintiff only cites a “single distinguishable case” supporting his claims of prejudice, and “Plaintiff has also not identified any additional expenses caused by Defendant’s alleged failure to disclose, because there is none.” This flips the burdens: it is Defendant’s burden to demonstrate harmlessness or substantial justification, and it has not done so. Accordingly, the Court will strike the identified portions of Cannon’s declaration, though those portions would have been irrelevant to the remainder of the Court’s order here.
Rule 702
Plaintiff next argued that Cannon’s testimony should be excluded in full because (1) his opinions are not based on sufficient facts or data; (2) he did not apply a reliable, testable method to the case; (3) his class certification opinions are unhelpful; (4) his opinions offer impermissible legal conclusions; and (5) he is not qualified to offer “socioeconomic and population-level opinions or reliability engineering opinions.”
In particular, Plaintiff first argued that Cannon’s opinion should be excluded because he did not “gather any site-specific facts about Ralph Lauren’s website” and instead “offered generalized assumptions based on experience, which Rule 702(b) does not permit.”
The Court found that Cannon’s opinions about what individualized technical problems may impede a user with a screen reader from accessing a website are adequately based upon his extensive personal knowledge and experience. To the extent Plaintiff believes Cannon’s testing was flawed or didn’t consider enough data or site-specific information, those critiques go to weight, not admissibility.
The same is true for Plaintiff’s arguments that Cannon did not deploy a reliable methodology.
Cannon is applying his extensive experience with accessibility-related software and screen readers to make high-level observations about, for example, the differences in hardware, operating systems, and screen reader software, in order to explain why this Court would have to engage in individualized inquiries about each class members’ experience.
The Court also disagreed that Cannon’s opinions “substitute legal judgment for technical analysis.” The fact that Cannon is identifying individualized issues in a user’s experience with accessibility features—a central part of the predominance inquiry—did not mean that he is impermissibly making legal conclusions.
Held
The Court denied the motion to exclude the testimony of expert Dr. Jon A. Krosnick.
The Court granted in part and denied in part the motion to exclude the testimony of William C. Easttom.
The Court granted in part and denied in part the motion to exclude the testimony of Aaron Cannon.
Key Takeaway
When evaluating specialized or technical expert opinion testimony, the relevant reliability concerns may focus upon personal knowledge or experience.
Plaintiff Grasshopper Gardens, Inc., a lawncare and landscaping services provider, accused PMA Mechanical LLC, a heating, ventilation, and air conditioning (“HVAC”) service provider, of trademark infringement, unfair competition, and false designation of origin.
Plaintiff retained Dr. Eli Seggev to conduct a survey on the likelihood of confusion between the marks at issue in this case (“Seggev Survey” or the “Survey”) and to provide an expert report and testimony. Defendant sought to preclude use of this evidence under Rules 702 and 403 of the Federal Rules of Evidence.
Marketing Expert Witness
Dr. Eli Seggev holds an MBA from the University of Michigan and a PhD in Marketing and Quantitative Methods from the School of Management at Syracuse University. In addition to teaching in graduate business programs at various universities Seggev also founded and managed two marketing research companies, both of which had been acquired by UK-based corporations.
The Seggev Survey used a format referred to as an original “Squirt” survey. Specifically, the Survey is comprised of two parts: a screener portion and the main questionnaire. Moreover, the Survey followed a “Test v. Control” design, “in which the impact of an allegedly infringing stimulus (Test Group) is compared to the impact of a similar stimulus that is free of the allegedly infringing elements (Control Group).”
The “Test” design compared a portion of Plaintiff’s website page without its URL to a portion of Defendant’s website page without its URL, while the “Control” design compared the portion of Plaintiff’s website page to a portion of a completely random website for an HVAC contractor called “Best Contractors” with the URL “besthvac.contractors” included.
Importantly, the images of both Plaintiff’s and Defendant’s portions of websites included the word “grasshopper” while the “Best Contractors” website page did not include the word “grasshopper” or any other similarities to the other website pages. Finally, Seggev testified that he intentionally designed the Survey this way to lead participants towards his own conclusion that the marks at issue “were identical.”
2. Operation of the Seggev Survey
The Survey participants were either shown the “Test” group or the “Control” group, not both. Specifically, Participants randomly selected for the “Test” group were first asked to review “a webpage” and then shown images of both the portion of Plaintiff’s webpage without its URL and the portion of Defendant’s webpage without its URL.
Notably, for this “Test” group, the Survey does not include a question separating the portions of Plaintiff’s website and Defendant’s website, creating the impression that they came from the same website because each of the URLs were removed and the question just prior refers to just “a website.” Alternatively, participants selected for the “Control” group were presumably shown the same portion of Plaintiff’s website without the URL and then asked to review the top portion of another website for Best Contractors with the URL “besthvac.contractors.”
After being shown these images in the “Test” or “Control” groups, participants were then asked whether they thought the websites represented “the same company,” “different companies,” or “don’t know/no opinion.” Participants in both groups were then asked whether they believe that “the two companies are affiliated, connected, or associated with one another or have no opinion.”
3. Results of the Seggev Survey
According to the Seggev Report, participants were classified as confused if they considered the two images to be the “same company” or “companies that are affiliated, connected or associated with each other.” Based on the results of the Survey, Seggev claimed that 68.3% of participants found a likelihood of confusion for the “Test” group. And, the results of the “Control” group showed that 28.1% of participants believed that Plaintiff and Best Contractors were also either the same company or “affiliated, connected or associated with each other.”
Seggev did not vet the results based on household income level or whether the Survey participants were appropriate prospective consumers of Defendant’s services. Additionally, Seggev did not focus on the marketplace in which both parties currently operate; instead, he conducted a nationwide survey.
4. Application
Seggev utilized the original formulation of the Squirt survey, showing participants either (1) portions of images of Plaintiff’s website and Defendant’s website in the Test cell, or (2) portions of images of Plaintiff’s website and “the webpage of a heating and cooling business that did not use the Grasshopper” in the Control group. As illustrated in Seggev’s report, the Survey showed participants both images consecutively. The Court agreed with Defendant that, in showing only two images consecutively, without any other similar trademarks/companies, in artificially close proximately for two non-competing companies, the Survey intentionally signals to participants that there is a connection between the two and thereby artificially inflates the Survey’s estimates of likelihood of confusion.
Courts have found that the Squirt format is intended to replicate market conditions under which the relevant services have marketplace proximity and is therefore most appropriate where the marks are sold to overlapping customers or through overlapping channels of trade, such that consumers would typically encounter one soon after the other. Here, there is no competitive proximity between the parties. During prosecution, Plaintiff’s services were described as “strictly for landscaping” and “broadly categorized as ‘lawn care.’” Defendant, however, provided HVAC services and its business does not overlap with Plaintiff’s in any appreciable manner.
Moreover, there is limited proximity of the marks in the marketplace. Although both companies operate websites that present the services they offer, that is where the proximity ends.
While these flaws alone are likely sufficient to justify the exclusion of Seggev’s report and the Survey, Seggev’s admitted bias in administering the Survey convinced the Court that exclusion is the only appropriate course. As noted above, Seggev testified that he intentionally designed the Survey the way he did to lead participants towards his own conclusion that the marks at issue “were identical.”
Held
The Court granted the Defendant’s motion to exclude the expert testimony of Dr. Eli Seggev.
Since the Plaintiff failed to raise a genuine issue of material fact with respect to likelihood of confusion and the Defendant is entitled to summary judgment on Plaintiff’s claims brought under the Lanham Act, the final judgment was entered in the Defendant’s favor.
Key Takeaway:
Generally, when a party challenges a survey for bias, they are forced to use circumstantial evidence, such as leading questions or the use of images that are clearly intended to direct survey participants to a desired result. While it is generally understood that expert witnesses retained by the respective parties are going to provide their opinion testimony in a manner favorable to the party that retained that expert, such testimony is generally provided under the guise of being unbiased. By Seggev’s own admission, the Survey was injected with his own bias and results oriented, making the Survey inherently unreliable.
Linda Sunderland and Benjamin Binder, amongst others, filed this putative class action against Defendant PharmaCare U.S., Inc., asserting consumer protection and breach of warranty claims based on its Sambucol product, a dietary supplement that is alleged to contain a proprietary extract of black elderberry.
Defendant filed a motion to exclude Plaintiffs’ experts, Dr. J. Michael Dennis (“Dr. Dennis”) and Mr. Colin Weir (“Mr. Weir”). Dennis performed a consumer perception survey, a materiality survey, and opined on damages. Weir helped to design and support Dennis’ methodology on damages.
Survey Research Expert Witness
J. Michael Dennis is the Senior Vice President of the National Opinion Research Center, which is a survey research organization affiliated with the University of Chicago. Also, Dennis has worked in survey research for more than 20 years, has authored more than 60 articles, and has been found qualified by numerous courts to provide expert opinions on consumer surveys.
Colin B. Weir is President at Economics and Technology, Inc., a research and consulting firm specializing in economics, statistics, regulation and public policy. He conducts economic, statistical, and regulatory research and analysis and often testifies as an expert witness before state and federal courts.
Moreover, his experience includes work on a variety of issues, including: “calculating economic harm and damage, and analyzing liquidated damages provisions; lost profits; false claims; diminution in value; merger/antitrust analysis; Early Termination Fees (ETFs); Late Fees; determination of Federal Excise Tax burden; and development of macroeconomic analyses quantifying the economic impact of corporate actions upon the US economy and job markets.”
To begin with, Defendant raised several grounds for why these experts’ opinions should be excluded. First, Defendant argued that Dennis’ consumer perception survey was unreliable, biased, and misleading because the statements used in the survey did not match the Products’ labels (i.e., “this is the unique black elderberry extract” as opposed to “Sambucol is the unique black elderberry extract”). Thus, Defendant argued that the questions posed to survey participants do not match Plaintiffs’ theory of liability.
Second, Defendant argued that Dennis’ materiality survey is similarly unreliable because the design shown to the survey participants was manufactured for the survey and not an image of the actual product or packaging.
Third, Defendant argued that Dennis’ damages model is irrelevant and unreliable because it is based on the tested claim, not the class claims.
Finally, Defendant argued that Dennis’ price premium model is irrelevant because it fails to distinguish between injured and uninjured class members, it is not sufficiently defined, and it is based on a “willingness-to-pay” benchmark rather than measuring an actual price premium.
After reviewing the parties’ arguments and briefing on these issues, the Court agreed with the many district courts in this circuit that the more appropriate place to consider these arguments is on how much weight to give to the competing expert testimony, rather than their admissibility.
Held
The Court denied the Defendant’s motion to exclude the testimony of J. Michael Dennis and Colin Weir.
Key Takeaway:
Many of the arguments for exclusion of the testimony is not on whether the types of surveys are acceptable, but whether certain criteria used in the respective surveys pass muster. However, the Ninth Circuit has stated that as a general matter, “challenges to survey methodology go to the weight given the survey, not its admissibility.”
Defendant Learneo, Inc., a Delaware corporation with a principal place of business in Redwood City, California, operates a website named Course Hero, an online learning platform of course-specific study resources. In particular, this action involves alleged unlawful conduct on Course Hero, where users upload materials, such as study resources, and access materials shared by others.
Consequently, Plaintiff Post University accused Learneo, Inc. of (1) direct copyright infringement, (2) contributory copyright infringement, (3) vicarious copyright infringement, (4) removal of copyright management information (“CMI”) in violation of the Digital Millennium Copyright Act (“DMCA”), (5) trademark infringement in violation of the Lanham Act, (6) false designation of origin in violation of the Lanham Act, (7) violation of the Connecticut Unfair Trade Practices Act (“CUTPA”), (8) unjust enrichment, and (9) common law unfair competition.
In support of its claims, Plaintiff retained Dr. Yoram (Jerry) Wind to conduct, analyze, and opine on prospective consumer confusion.
In response, Defendant filed a motion to exclude the testimony of Wind pursuant to Federal Rules of Evidence 403 and 702.
Marketing Expert Witness
Yoram (Jerry) Wind, PhD. is the Lauder Professor Emeritus and Professor of Marketing at the Wharton School of the University of Pennsylvania, having taught graduate courses relating to executive development and marketing since 1967, and worked as Director for the SEI Center for Advanced Studies in Management.
Wind joined the Wharton faculty in January 1967, upon receipt of his doctorate from Stanford University, and was granted Emeritus status in July 2017.
Defendant filed a motion to exclude Wind’s testimony, asserting that: (1) his surveys were fundamentally flawed as they improperly excluded educators during the screening portion, (2) his surveys were unreliable as they relied on unclear and undefined terms, including “document,” “material,” and “owns,” (3) his initial survey used improperly designed controls, (4) his coding results could not be replicated, (5) his understanding of the definition of CMI was incorrect, and (5) his conclusions are based on an unreliable application of his methodology.
A.Wind’s Qualifications
Defendant has not attempted to challenge Wind’s qualifications, nor could it. As part of a career spanning over four decades, Wind has been qualified as a marketing and survey research expert in federal court, where he has conducted and evaluated marketing and consumer research for use in litigation.
The Court therefore found that Wind is qualified to provide expert testimony on consumer confusion as it relates to Plaintiff’s claims against Defendant.
B.Reliability of Wind’s Testimony
1. Defendant’s Allegations that the Surveys Improperly Excluded Educators
Defendant contended that Wind improperly excluded educators from the surveys, as they are one of Defendant’s only two target demographics. According to Defendant, excluding educators compromises the probative value of the survey because it fails to capture the responses from all potential consumers of Course Hero.
Here, the purported testing of the wrong universe, as Defendant suggested, did not indicate that the surveys’ probative value is substantially outweighed by the danger of unfair prejudice, confusion of the issues, or misleading the jury.
Defendant’s sweeping contention that educators must be included in the universe is belied by evidence showing that college educators made up only a fraction of Court Hero’s accountholders in 2021, including statistics that educators make up less than 1% of account holders, and testimony from Defendant’s VP of Marketing stating that “there are a lot more students than there are educators.” Further, Defendant did not seriously dispute Wind’s explanation that it is generally accepted and custom to exclude individuals who works in the same industry as the survey that is being conducted. It is thus appropriate for Defendant to raise its criticisms about the survey’s academia-based exclusion before the jury.
2.Defendant’s Allegations of Ambiguous Terms
Defendant contended that the survey questions using terms like “document,” “material,” and “owns” are ambiguous because almost all of the test stimuli show one document (the Post University material) within another document (the Course Hero webpage), and then ask questions about the “document.”
Defendant asserted that the use of the terms “document” and “material” interchangeably in Wind’s survey make it impossible to discern whether survey respondents understood “document” or “material” in the question to mean the alleged Post University material (green), the Course Hero webpage (red), or something else entirely.
However, it would be too wide a stretch for this Court to conclude that the failure to define “document” and “materials,” which are terms that jurors will have necessarily dealt with throughout their lives, would undermine the probative value of the survey.
Defendant next contended that the term “owns,” as used in Wind’s survey, is improper for being ambiguous and for asking the survey respondents to opine as to a legal question.
However, the survey did not present respondents with the legal issue of copyright ownership; rather, it asked the respondents to provide their impressions about who they believed had “owned” a document. Thus, the term “owns” bore no resemblance to the spectrum of cases cited by Defendant where exclusion was warranted due to an ambiguous term.
3.Defendant’s Allegations of Improper Controls
The Court finds, too, that Defendant’s critiques of Wind’s control stimuli are overstated. Defendant contended that Wind’s initial survey is unreliable as the control stimuli failed to isolate the alleged elements of the Course Hero website underlying any of Plaintiff’s claims, thus making it impossible to determine which elements, if any, contributed to confusion. Further, Defendant argued that Wind’s control stimuli removed an excessive amount of Course Hero website elements and improperly added a sentence, unilaterally drafted by Wind, to the footer of the stimuli, which stated, “Course Hero did not author and does not own this study resource.”
To be clear, consistent with Defendant’s contention, the absence of an effective control could certainly be a factor that damages the reliability of a survey. No such combinations of major flaws are found here. Thus, while a factfinder may not give Wind’s testimony much weight due to his removal of elements of the Course Hero website and addition of the footer, “neither science nor law mandate the [requested] exclusion” here.
4. Defendant’s Allegations of Wind’s Unreliable Coding Methodology
Defendant identified two theories upon which Wind’s coding methodology is unreliable. First, Defendant argued that Wind’s coding instruction did not provide sufficient guidance to produce reliable results, as Wind was unable to reproduce his coders’ classifications based on his own coding instructions. Specifically, Defendant noted that Wind was only able to match his coders’ classifications four out of fourteen times (28.6%) during a deposition. Second, Defendant argued that Wind failed to properly to isolate the alleged CMI, as his understanding of the definition of CMI was incorrect.
While it may be that it was impossible for Defendant to question Wind about 2,250 respondents during a deposition, the Court held that the emphasis on ten purported testimonial errors by Wind did not show that the methodology used was completely unreliable. Defendant did not conduct its own survey showing inconsistent results with Wind’s results and failed to show that it is impossible to reproduce Wind’s coding scheme.
Defendant’s allegation that Wind’s understanding of CMI was overly broad similarly failed to establish that there was unreliable coding methodology. As relevant here, Wind instructed his coders to look for the following categories of information in the “confused” responses to the test stimuli: Course Hero Logo, Course Hero Advertisement, Course Hero Banner Ads, Course Hero Copyright Notice, Course Hero Website / Link, Course Hero Watermark, Course Hero name on document, and Course Hero Other. Thus, Wind’s guidance to his coders is wholly consistent with the plain text of the DMCA, which defines CMI as information “conveyed in connection with” copies of a work, including “other information identifying the work[.]”
5. Defendant’s Allegations of Wind’s Faulty Conclusions
First, Defendant argued that Wind’s opinion as to CMI confusion failed to account for background noise in the control stimulus. Specifically, Defendant argued that several of the control stimuli contained the Course Hero footer watermark, which Plaintiff alleges to be false CMI. But that contention did not show that Wind’s findings are “speculative or conjectural or based on assumptions that are so unrealistic and contradictory as to suggest bad faith or to be in essence an apples and oranges comparison.”
Second, Defendant argued that Wind’s reported measures of trademark confusion are below the level that courts require for experts to opine that there is a likelihood of confusion, i.e., 15%. But Defendant did not offer any binding law for the proposition that an expert must be precluded from testifying if a survey’s overall confusion is less than 15%.
Finally, the Court is not persuaded that the Defendant has shown that Wind’s conclusions are unreliable.
Held
The Court denied the Defendant’s motion to exclude the testimony of Yoram Jerry Wind.
Key Takeaways:
The fact that a survey used a control that could have been ‘stronger’ or ‘better’ may mean it is entitled to less weight, it does not mean that the survey does not provide relevant information.
Defendant showing Wind struggling to make consistent coding determinations as to a handful of responses during a deposition did not meet the threshold to exclude expert testimony: that “there is simply too great an analytical gap between the data and the opinion proffered.”
Plaintiffs Markus Heitkoetter and Rockwell Trading Services, LLC sued Karl Domm for defamation by implication, defamation (libel), deceptive trade practice, intentional interference with prospective business relations, and abuse of process. Both Defendant and Plaintiffs operate channels on www.youtube.com (“Youtube”) where they publish videos about online trading.
Plaintiffs filed a motion to strike the testimony and report of Defendant’s consumer survey expert, Travis Tae Oh, Ph.D.
Marketing Expert Witness
Travis Tae Oh holds a Ph.D. and M.Phil in marketing from Columbia University. He is currently a tenure-track faculty in marketing at Yeshiva University.
His work has been featured in multiple media outlets, such as Vox, The Washington Post, Next Avenue, Stylus. He also regularly writes for Psychology Today. Travis is also a certified wine expert, holding a WSET Diploma. His research primarily examines the underlying psychological processes and meanings of consumer experiences, with a focus on conceptualizing and investigating fun in people’s lives.
Plaintiffs filed a motion to exclude the testimony and consumer survey of Oh, pursuant to Federal Rules of Evidence 702 and 403 on the basis that the consumer survey was “so methodologically flawed” as to render the report and Oh’s testimony unreliable and irrelevant in answering the question of how consumers understood the two allegedly misleading statements made by Plaintiffs.
Though the Plaintiffs complained that Oh wrote the survey without viewing the Youtube video or the web page in which the two allegedly misleading statements appear, they provided no evidence to support a finding that this would automatically render the survey invalid “according to accepted principles.”
As for the Plaintiffs’ claim that the universe of participants was overbroad, the Court has held that arguments that the universe of survey participants is over-or under-inclusive is a challenge to a survey’s “methodology and design” and “is precisely the kind of claimed deficiency that goes to the weight of the evidence, not its admissibility.”
Held
The Court denied the Plaintiffs’ motion to strike the testimony of Defendant’s expert, Travis Tae Oh, Ph.D.
Key Takeaway:
Survey evidence should be admitted as long as it is conducted according to accepted principles and is relevant. Technical inadequacies in a survey, including the format of the questions or the manner in which it was taken, bear on the weight of the evidence, not its admissibility. Follow-on issues of methodology, survey design, reliability, the experience and reputation of the expert, critique of conclusions, and the like go to the weight of the survey rather than its admissibility.
Case Details:
Case Caption:
Heitkoetter Et Al V. Domm
Docket Number:
1:22cv368
Court Name:
United States District Court for the Eastern District of California
X Social Media LLC (“X Social Media”) and X Corp. both use the letter “X” in association with closely related advertising services. Put simply, X Corp. is a social media company that offers tools and services for advertising and generates the majority of its revenue from ads. X Social Media is an advertising agency that offers services for advertising on social media.
This is a case for trademark infringement and related claims concerning the parties’ respective use of the letter “X” in connection with distinct product and service offerings.
On its rebuttal report deadline, Plaintiff X Social Media served the rebuttal report of David Franklyn. Defendant X Corp. argued that Professor Franklyn advanced a host of “affirmative opinions” that rebutted nothing in either of Defendant’s expert reports.
Intellectual Property Expert Witness
David Franklyn is currently a law professor at Arizona State University, with an appointment in the Sandra Day O’Connor College of Law. He is also the Executive Director of the McCarthy Institute at ASU Law, which is focused on scholarship and research in intellectual property law, with particular emphasis in the areas of trademark law, branding and consumer perceptions related to brands.
Franklyn has published extensively on issues relating to intellectual property law and is editor-in-chief and co-author of McCarthy’s Desk Encyclopedia of Intellectual Property Law.
The Franklyn Surveys included:(1) a reverse-confusion survey and (2) an initial-interest-confusion survey. Defendant argued that the Franklyn Surveys are not responsive to its experts’ opinions and improperly advanced new theories of the case beyond the deadline to submit affirmative expert opinions.
A. Untimely Affirmative Opinions
Defendant argued that the Franklyn Surveys are untimely affirmative opinions required to be served by the affirmative expert report deadline, and not the rebuttal report deadline. Nonetheless, the Court will consider whether the Franklyn Surveys constitute proper rebuttal opinion despite their designation in the Franklyn Report as affirmative opinions.
Furthermore, Defendant argued that the initial-interest-confusion survey was improper because “initial interest confusion” is an entirely new theory that was set forth for the first time in this litigation within the Franklyn Report. In fact, Defendant contended that Plaintiff had only asserted a theory of “reverse confusion” prior to serving the Franklyn Report.
Thus, the Defendant argued that Professor Franklyn’s initial-interest-confusion survey was not plausibly within the scope of proper rebuttal to Defendant’s experts.
The Court found that the Franklyn Surveys constituted untimely affirmative opinions. Basically, the concept of initial-interest confusion was not the subject of Defendant’s experts’ opinions and was introduced for the first time in this litigation within the Franklyn Report. Even if the results of Professor Franklyn’s initial-interest confusion survey could be used to undermine Defendant’s position, the initial-interest confusion survey nevertheless constituted an improper affirmative opinion.
B.Substantially Justified or Harmless
Now that the Court has determined that the Franklyn Surveys are untimely affirmative opinions, the subsequent question is whether Plaintiff may rely on them anyway.
The Defendant contended that permitting the Plaintiff to use the Franklyn Surveys would unfairly prejudice its case. Defendant noted that it exchanged thousands of documents, took many depositions, and selected expert witnesses strategically in response to how Plaintiff litigated its case. Therefore, the Defendant maintained that it would have been unjust to allow the significant affirmative opinions presented in the Franklyn Surveys to be introduced belatedly in a rebuttal report.
Plaintiff did not address Defendant’s claim that Defendant might have materially changed its strategy over the course of the extensive discovery in this case if Defendant had been timely advised of the Franklyn Surveys.
Since the Plaintiff was unable to establish that its failure to timely disclose the Franklyn Surveys was substantially justified or harmless, the Court found that Plaintiff has failed to assuage the concern of potential prejudice to Defendant in this case. Thus, the Court exercised its discretion to preclude the use of the Franklyn Surveys.
Held
The Court granted the motion to strike portions of Plaintiff’s rebuttal report of David J. Franklyn.
Key Takeaway:
In determining whether the failure to disclose under Rule 26 was substantially justified or harmless, courts consider “(1) “the surprise to the party against whom the evidence would be offered; (2) the ability of that party to cure the surprise; (3) the extent to which allowing the evidence would disrupt the trial; (4) the importance of the evidence; and (5) the nondisclosing party’s explanation for its failure to disclose the evidence.
Basically, the burden of establishing that a failure to disclose was substantially justified or harmless rests on the nondisclosing party.
In this trademark dispute, Defendants SuccessfulMatch.com and Successful Match Canada (both, Successful Match) sought to cancel on genericness grounds the registration of trademarks asserted by Plaintiffs Clover8 Investments and Reflex Media, Inc.
As Successful Match puts it, the trademarks in question “are used in connection with seeking a companion in the ‘Sugar Daddy’ and ‘Sugar Baby’ relationship space, online or through an App, which are designed for individuals seeking a specific type of arrangement typically between a young woman and a wealthy man who is often a millionaire.”
Each side retained an expert witness — Hal Poret for Successful Match and Brian Sowers for RMI — to conduct a consumer survey meant to determine whether the disputed marks are generic or not. Each side then attacked the other expert’s survey work as junk science that ought to be excluded from use in this case under Federal Rule of Evidence 702 and Daubert.
The Court convened a concurrent expert evidentiary proceeding to hear directly from Poret and Sowers about why they disagreed and why the other’s survey work might be so deficient as to warrant exclusion.
Poret and Sowers agreed that the top objections were whether (1) the scope of the “universe” of the relevant purchasing public each expert surveyed was appropriate; (2) it was appropriate to use examples tailored to the sugar-dating market in the survey’s “mini-test”; (3) the definitions for “brand” and “generic” used in the surveys were appropriate; and (4) the control terminology for “generic” names used in the surveys were appropriate.
Survey Research Expert Witnesses
Hal Poret is a public opinion researcher with a master’s degree in mathematics and a law degree from Harvard Law School. Since 2004, Poret has personally designed, supervised, and implemented over 350 consumer surveys concerning consumer perception, opinion, and behavior, including surveys relating to false advertising, claim substantiation, and trademark/trade dress matters. He has personally designed numerous studies that have been admitted as evidence in legal proceedings and has testified as an expert in over 50 proceedings before U.S. District Courts, the Trademark Trial and Appeal Board, and NAD.
Brian Sowers is a principal and testifying survey expert at Applied Marketing Science (AMS). He is responsible for the delivery of survey research and expert testimony in civil cases. Sowers also supports affiliated academic experts and economic expert witnesses in matters in which consumer opinions and behaviors are an important determinant of liability and damages.
The parties do not disagree that the genericness inquiry looks to whether the consuming public “uses or understands the term sought to be protected” as a generic name for the “services set forth in the certificate of registration.”
Rather, the dispute is about how to define the consuming public and populate the relevant survey universe, namely whether the proper universe is comprised of consumers of online dating or matchmaking services generally, which would match the description of the services designated in RMI’s registrations, or just consumers of “luxury” dating or “sugar dating” services.
The parties do not agree about the nature of the services offered in connection with the marks. Successful Match says RMI “expanded the scope of [their] services to include a more general universe of consumers” by “mov[ing] away from the sugar daddy dating space . . . and shift[ing] the focus to connecting people in more typical relationships.” RMI says that they offer a “luxury dating service” and nothing suggests they offer “a mainstream or traditional dating site.”
The Surveys’ Mini-Tests
Poret and Sowers each conducted a “Teflon survey,” which is a type of consumer survey that is “essentially a mini-course in the generic versus trademark distinction, followed by a test” wherein the survey-taker is asked to categorize various names or phrases as a “brand” name or term or “generic” name or term. Teflon surveys typically include a “mini-test” before the main test to ensure that the respondent properly understands and can apply the “brand”/”generic” distinction.
Sowers’ Mini-Test Questions
Poret criticized Sowers’ questions in the mini-test, which asked respondents to categorize as “brand” or “generic” the terms “Networking Website” and “Sugardaddie.” Poret believes these questions biased the survey results because they would lead to the exclusion of respondents who categorized “Sugardaddie” as generic, and so artificially tilt the results toward those most likely to say that RMI’s asserted marks are a brand.
At the concurrent evidentiary proceeding, Sowers stated that he tailored to the case by requiring respondents to apply the “brand”/”generic” distinction to “Networking Services” and “Sugardaddie,” the latter of which being a mark he thought was “a pretty prominent player in the marketplace” after conducting research on the sugar-dating space.
The thrust of Poret’s critique is that the term Sowers chose to “tailor” his mini-test is “as debatable as what the survey is about in the first place.” The Court held that the shortfall of this criticism is that an objection to the specific words Sowers used in the mini-test goes to “follow-on issues of . . . survey design” and not the threshold question about whether the survey was “conducted according to accepted principles.”
Indeed, at the evidentiary proceeding Poret stated that “it’s not the mere fact of including something in the mini-test that relates to the category that is the fatal flaw. . . . It’s the specifics of [Sugardaddie].” The Ninth Circuit has characterized “leading” or “slanted” questions as “technical inadequacies” that “bear on the weight of the evidence, not its admissibility,” and so the Court concluded that this specific objection to the word Sowers used in the mini-test most closely resembles those sorts of challenges.
Poret’s Common Term And Test Examples
Sowers said the “fatal flaw” in Poret’s survey was that its wording caused respondents to misunderstand the “brand”/”generic” distinction
For his part, Sowers said the “fatal flaw” in Poret’s survey was that its wording caused respondents to misunderstand the “brand”/”generic” distinction, which is said to render the survey irrelevant. Sowers specifically took issue with the prompt at the start of the main test, which told respondents they would need to “answer whether you think that term is . . . a common term that identifies a type of dating, matchmaking, and social introduction mobile app or website.” In Sowers’ view, the definition of a “common term” as a “type” of a dating or matchmaking service would cause respondents to be confused about what a “common” term is as a concept.
Prior to the language to which Sowers objects, respondents were told that “common terms” are “terms that identify a type of product or service. Common terms primarily let the consumer know what the product or service is, not who makes it. These terms primarily identify a type of product or service.
Sowers acknowledged he had no problems with that initial definition, so his objection appears to be directed at the shift from “identify a type of product or service” to “identify a type of [word or phrase for the specific product or service at issue].”
The Court held that this is a minor variation of no apparent import, particularly because respondents were required to read a prior, fuller definition and had to correctly apply the earlier definition before going on to the main test.
Sowers also did not present any evidence of actual confusion among respondents
Poret maintained that several of the main test’s questions were designed to control for potential confusion and that the overall results demonstrated that respondents properly identified brands versus generics. Sowers suggested that the discrepancy between respondents who identified “relationship” as a common term (96%) and “luxury dating service” as a common term (76%) was evidence of confusion. But well more than 50% percent of respondents agreed that “luxury dating service” was common, and a 20% variation in responses is not significant when there is more than majority concurrence.
Sowers also said that the terms Poret used as “common” controls confused respondents about the proper meaning of “generic” or “common.” The Court did not find it persuasive.
Survey respondents were instructed that a common term “let’s the consumer know what the product or service is” and that it “identifies a type of dating, matchmaking, and social introduction mobile app or website.” For each question in the main test, the term in question was capitalized at the top, and right below it the question read: “In the context of dating, matchmaking, and social introduction mobile apps or websites, do you think this is a . . . [(a)] Brand term [(b)] Common term [(c)] Don’t know.”
Since Sowers did not show that the omission of the word “app” or “site” caused respondents to ignore or become confused about the prior definitions, the Court held that it is entirely speculative to say that a respondent considering the word “relationship” would not have understood that they were being asked whether “relationship” referred to a brand or type of dating app (e.g., an app for persons looking for relationships as colloquially understood versus other arrangements) or “singles” was a brand or type of social introduction app for single individuals.
Other Challenges
Each side offered a grab bag of other comments that also do not support exclusion. RMI objected to the survey’s use of the phrases “brand term” and “common term” instead of “brand name” and “common name.” This exalts form over substance. Although “term” and “name” may have somewhat different dictionary meanings, RMI adduced no evidence that respondents using everyday English would have appreciated that subtle difference. In addition, a plethora of federal-court decisions use “term” in the context of genericness, which demonstrates that the two words are functionally interchangeable for present purposes.
Poret’s reasons for selecting his common controls do not demonstrate the survey’s irrelevancy, as RMI suggests. As discussed, the Court held that there is no shortfall that bears on admissibility in Poret’s survey’s definitions, the failure to include trailing words like “site” or “app” do not provide a basis for excluding the survey, and so RMI’s reliance on one or two isolated statements in Poret’s report proves too much in the contexts of the report and the concurrent proceeding.
Lastly, Successful Match’s suggestion that Sowers’ survey is irrelevant because it tests secondary meaning rather than genericness does not carry the day. The Court held that Sowers’ focus on consumers of “sugar dating” services does not warrant exclusion on this record, and the qualification rate alone does not establish irrelevancy. Because Successful Match does not contend that Sowers’s mini-test was actually testing secondary meaning rather than genericness and so should not have been included for that reason, the Court need not address the argument.
Held
The Court denied RMI’s motion to exclude the opinions of Hal Poret and Successful Match’s motion to exclude the opinions of Brian Sowers.
Key Takeaway:
The parties do not agree about the nature of the services offered in connection with the marks. Successful Match says RMI “expanded the scope of [their] services to include a more general universe of consumers” by “mov[ing] away from the sugar daddy dating space . . . and shift[ing] the focus to connecting people in more typical relationships.” RMI says that they offer a “luxury dating service” and nothing suggests they offer “a mainstream or traditional dating site.” In light of this dispute, the Court cannot conclude that either survey’s universe is comprised of respondents whose views would be irrelevant to the bottom-line question of whether the disputed mark, “taken as a whole, signifies to consumers the class of online [matchmaking or dating] services.
As a result, the Court cannot conclude that either expert, in choosing his respective survey universe, failed to reliably apply well-accepted principles in the field.
Case Details:
Case Caption:
Reflex Media, Inc. Et Al V. Successfulmatch.Com Et Al
Plaintiff, Hawaii Foodservice Alliance alleged that Defendant Meadow Gold Dairies Hawaii, LLC (“MGDH”) used phrasing and imagery suggesting that the Meadow Gold brand products are sourced in Hawai`i, and these activities are misleading and deceptive because the Meadow Gold products contain milk and other products that are imported from the continental United States. Defendants Hollandia Dairy, Inc. (“Hollandia”), Heritage Distributing Company dba Ninth Avenue Foods (“Heritage”), and Saputo Cheese USA Inc. fka Saputo Dairy Foods USA, LLC (“Saputo”) (collectively “Supplier Defendants”) supply products to MGDH.
Plaintiff’s designated expert, Thomas J. Maronick submitted surveys which focused on products and intellectual properties (the “Hawai‘i-Themed Images and Phrases”) for which this Court has already ruled in Defendants’ favor. Defendants filed a motion seeking to exclude Maronick’s conclusions regarding consumer perceptions of those products and Hawai‘i-Themed IP.
Marketing Expert Witness
Thomas Joseph Maronick holds a Juris Doctor degree from the University of Baltimore School of Law, with an emphasis on corporate, business and consumer law. He is a member of the Maryland Bar. He also earned a Doctor of Business Administration degree from the University of Kentucky, as well as a Master of Science in Business Administration from the University of Denver, having majored in marketing.
Maronick is an Emeritus Professor of Marketing at Towson University College of Business and Economics, where he taught marketing, strategy, and research courses from 1987 to 2017. He previously held faculty positions teaching marketing at the University of Baltimore School of Business and Virginia Commonwealth University. Additionally, Maronick worked as the Director of the Office of Impact Evaluation at the Federal Trade Commission from 1980 to 1997. Since 1997, Maronick has worked as a marketing consultant and expert witness. He has provided expert services in over 150 cases involving consumer litigation, advertising, trademarks, and survey research.
Maronick concluded “the main message communicated to a significant percentage of consumers . . . is that the milk and dairy products . . . come from Hawaii.”
Defendants sought to exclude Maronick’s testimony because it was irrelevant since his surveys focused on Plaintiff’s claims for which summary judgment had been granted in their favor. Plaintiff contended that the surveys did not heavily focus on the Hawai`i-Themed Images and Phrases, which were no longer part of Plaintiff’s claims.
Maronick’s survey required that the respondents review an image of the story of the Dairymen’s Association that appeared on a side panel and asking them if they noticed the at-issue phrase “Hawaii’s Dairy.” The Court did not find Maronick’s testimony relevant to the remaining claims to the extent that the surveys involved the groups reviewing products containing the Hawai`i-Themed Images and Phrases.
To the extent that Defendants contended that Maronick failed to apply generally-accepted principles and methodologies, the Court held that cross-examination can address these concerns.
Held
The Court granted in part and denied in part the Defendants’ motion to exclude the expert reports and testimony of Thomas J. Maronick.
Key Takeaway:
Federal Rule of Evidence 702 controls the admissibility of Maronick’s opinions. The rule requires that the evidence must assist the fact finder to understand the evidence or to determine a fact in issue; and the witness must be sufficiently qualified to give the opinion.
Case Details:
Case Caption:
Hawaii Foodservice Alliance, Llc V. Meadow Gold Dairies Hawaii, Llc Et Al
Maker’s Mark entered into a Licensing Agreement with Spalding Group gransting an exclusive license to use its trademarks to create and sell cigars seasoned with its bourbon (the “Licensed Cigars”). After renewing the agreement a few times, in 2013, Maker’s Mark notified Spalding that it was terminating the license effective December 31, 2015. Spalding Group had until June 28, 2016, to dispose of its remaining inventory of Licensed Cigars.
Following the termination of the license, Spalding Group began selling a cigar also seasoned with Maker’s Mark bourbon (the “Bourbon Cigar”). Maker’s Mark alleged the packaging of the Bourbon Cigar was intentionally designed to “evoke an association by customers between [t]he Bourbon Cigar on the one hand and Maker’s Mark and the prior Licensed Cigars on the other.”
Maker’s Mark further claimed Spalding Group advertised the Bourbon Cigar in a variety of ways to associate it with Maker’s Mark and the Licensed Cigars, despite Maker’s Mark’s demand that Spalding Group cease and desist.
Maker’s Mark brought this action against Defendants, asserting claims of trademark infringement; false designations, descriptions, and representations; and trademark dilution in violation of the Lanham Act.
It also brought breach of contract, trademark infringement, and false designation and unfair competition claims under Kentucky common law.
Defendants filed a counterclaim alleging various state law claims related to the licensing agreement and seeking to cancel some of Maker’s Mark’s trademark registrations.
To support its trademark infringement claims, Maker’s Mark retained Ran Kivetz (“Dr. Kivetz”), a professor at Columbia University Business School with experience in consumer psychology and surveys. Dr. Kivetz conducted a survey to estimate the likelihood that consumers would mistake the Bourbon Cigars for a Maker’s Mark product.
To rebut Maker’s Mark’s trademark dilution claims, Defendants retained Hal Poret (“Poret”), a public opinion researcher with a master’s degree in mathematics and a law degree from Harvard Law School. Poret conducted surveys to evaluate whether the words “Marker’s Mark” and the red wax design are famous. Defendants later asked Poret to review Kivetz’s likelihood-of-confusion survey and conduct his own.
Neither party challenged the qualifications of the other’s expert; they each argued that the opposing party’s expert’s likelihood-of-confusion surveys were unreliable. Because the challenges were similar, the Court addressed both Daubert challenges together.
Maker’s Mark also retained Michael A. Einhorn (“Dr. Einhorn”) to calculate Defendants’ profits that may be recoverable under 15 U.S.C. § 1117(a). Defendants moved to exclude Einhorn’s testimony regarding the deductions and resulting net profits calculation; they did not challenge his gross profits or royalties calculations, contending that Einhorn was unqualified to calculate Defendants’ deductions and that his testimony was unreliable.
Survey Research Expert Witness
Hal Poret (“Poret”) is a public opinion researcher with a master’s degree in mathematics and a law degree from Harvard Law School. Since 2004, Poret has personally designed, supervised, and implemented over 350 consumer surveys concerning consumer perception, opinion, and behavior, including surveys relating to false advertising, claim substantiation, and trademark/trade dress matters. He has personally designed numerous studies that have been admitted as evidence in legal proceedings and has testified as an expert in over 50 proceedings before U.S. District Courts, the Trademark Trial and Appeal Board, and NAD.
Marketing Expert Witness
Ran Kivetz is the Philip H. Geier Professor of Marketing at Columbia University Business School. He earned a Ph.D. in Business from Stanford University, Graduate School of Business; a Master’s degree in Psychology from the Stanford University Psychology Department; and a Bachelor’s degree from Tel Aviv University with majors in Economics and Psychology. His field of expertise encompasses consumer psychology and behavior; survey methods; marketing management; behavioral economics; human judgment, perception, and decision making; consumer and sales incentives; and branding. Professor Kivetz’s research has won many prestigious awards, including multiple “Best Paper” awards, being a recipient of the New York Times annual “Best Idea” award, and being ranked as the third most prolific scholar in his field during 1982–2006.
Economic Damages Expert Witness
Michael A. Einhorn has a Bachelor of Arts in Economics from Dartmouth College (summa cum laude) and a Ph.D. in Economics from Yale University. Since receiving his Ph.D. in 1981, he has worked as a Member of Technical Staff at Bell Telephone Laboratories, an economist at the United States Department of Justice (Antitrust Division), and a staff economist at Broadcast Music Inc., a collection agency that licenses performance rights in music to major broadcasters, including television networks, local stations, cable companies, and radio stations. He has worked as a testifying expert since 2001. He is also a former professor of economics at Rutgers University (Newark), where he taught courses on macroeconomics, microeconomics, industrial organization, and corporate finance. He is the author of Media, Technology and Copyright: Integrating Law and Economics (2004), which applies economic reasoning to a number of issues in American copyright law with regard to media, entertainment, and technology.
Discussion by the Court
With regard to Defendants’ motion to exclude certain testimony and opinions of Ran Kivetz, the Court analysed Kivetz’s likelihood-of-confusion survey in depth.
Kivetz’s survey was divided into a test group and a control group. The test group participants saw three-dimensional, 360-degree viewable graphics of Defendants’ Bourbon Cigars, first the box, then an individual cigar. The control group participants saw three-dimensional, 360-degree viewable graphics of the box, then an individual cigar, all with the words “Seasoned with Maker’s Mark” on the cigar band replaced with “Seasoned with Bourbon” and the red wax-dipped caps replaced with red plastic caps. Participants could manipulate the images until they were ready, then they proceeded to answer question sets about the product’s source, affiliation, and sponsorship. The first question set was on the product’s source and was open-ended, with participants instructed to write what company they think made the product in a text box below the question (the “source question”), followed by other open-ended questions asking participants to explain their answers. At the beginning of the survey, participants read instructions not to guess and that “don’t know” was an acceptable answer that they could select or type. The other questions asked participants to name companies, products, or brands that the participants thought were affiliated with or sponsored the cigars. Each of those questions had an explicit “don’t know” option, except the open-ended questions asking participants to explain their answers if they provided one. Throughout the survey, an image of the single cigar, either the test or control version depending on the group, remained on the page for participants to view. This image was of the front of the cigar, was not rotatable, and displayed only half of the cigar band, with the test group cigar displaying the words “Seasoned” and “Maker’s,” while “with” and “Mark” on the band and the “ted’s” on the red seal were cut off. Poret conducted likelihood-of-confusion surveys intended to rebut Kivetz’s survey, and it replicated it in all but three ways. First, the participants could view the images, which Poret took from Kivetz’s report, from several angles of the side, top, and bottom, but not a 360-degree view. Second, Poret removed the image of the single cigar from the question pages. Third, Poret provided an express “don’t know” option to the otherwise open-ended source question.
Both the parties filed motions to exclude based on how the opposing party’s expert used images in his likelihood-of-confusion survey and whether it accurately simulated marketplace conditions.
Defendants argued that repeatedly showing participants the single cigar turned Kivetz’s survey into a “reading test,” where they would answer based on the words “Seasoned” and “Maker’s” visible in the repeated image instead of the Ted’s Cigars branding they saw on the cigar box or the branding that was not visible on the single cigar because of the angle. Kivetz’s survey was accused of creating demand effects, or suggesting a “correct” answer to the participants, by leaving an image of the single cigar for participants to view as they answered questions.
Maker’s Mark responded that Poret’s first likelihood-of-confusion survey was an unreliable “memory test” where participants were not continually exposed to the product while they evaluated it like they would have been in the marketplace. Maker’s Mark demanded exclusion of Poret’s survey since the memory test was based on blurry images from limited angles that did not show “Maker’s Mark.”
The Court held that such challenges amounted to little more than professional disagreement about methodology, which concerned the weight and not the admissibility of the surveys considering neither Maker’s Mark nor Defendants cited any authority suggesting either method was uniformly unreliable and instead each cited articles supporting its expert’s method, which indicated that the disagreement existed within the field and the choice was within the expert’s discretion.
Further, the parties’ more specific concerns about the images appeared unfounded. Defendants argued that 33% of Kivetz’s respondents wrote that “Seasoned Maker’s” produced the cigar because it was all that was visible on the individual cigar image, which showed that Kivetz’s survey inflated the level of confusion. Kivetz, however, did not include the “Seasoned Maker’s” responses as evidence of confusion in his calculations. Maker’s Mark argued that because Poret’s survey did not use 360-degree viewable images, participants could not see the words “Maker’s Mark,” but participants could rotate the individual cigar and see “Maker’s” in one image then “er’s Mark” in the next. Defendants similarly asserted that Kivetz’s survey was flawed because no Ted’s Cigars branding was visible in the single cigar image which remained on the page during the survey, but Maker’s Mark’s name was not visible on the cigar either, only “Seasoned” and “Maker’s”. Moreover, before entering the question portion, participants examined the cigar box and single cigar from 360 degrees for at least 30 seconds each until indicating that they could clearly see the images. Respondents who could not clearly see the image were removed from the survey. Accordingly, the Court found that none of these concerns warranted exclusion and the parties were allowed to explain to the factfinder how each expert used images and whether, in their views, those images accurately replicated marketplace conditions and produced accurate results.
One of the other reasons the parties moved to exclude the other’s likelihood-of-confusion surveys was whether or not the initial source question included a “don’t know” answer option. Defendants insisted on the unreliability of Kivetz’s survey because it did not include a “don’t know” answer option for the source question like it did for the other questions. Maker’s Mark conversely argued that an explicit “don’t know” option was inappropriate for an open-ended question, so Poret’s survey, which had an explicit “don’t know” option, artificially increased the number of participants who selected it, thus erroneously reducing the net confusion rate.
The Court noted that Diamond’s article appeared to be discussing a “don’t know” option in the context of closed-ended questions, so Poret’s survey may have been less accurate, but his choice did not mean the entire survey was so informally designed and conducted that it failed key tests of professionalism and reliability. Henceforth, the Court refused to exclude not only Kivetz’s likelihood-of-confusion survey but also Poret’s rebuttal survey.
Poret conducted a second likelihood-of-confusion survey that tested whether the red wax seal itself and not the “Seasoned with Maker’s Mark” label on the Bourbon Cigars was likely to cause confusion. The second survey again replicated the Kivetz Survey with some exceptions: the images were viewable from several angles but not 360 degrees, and the control cigars and the test cigars kept the “Seasoned with Maker’s Mark” band instead of a “Seasoned with Bourbon” band. Maker’s Mark contended that the survey should be excluded because controls must not be infringing and because the survey results could not explain whether participants were confused by the band or the wax seal. The purpose of avoiding infringing or allegedly infringing controls was to be able to tell whether any reported confusion was the result of actual confusion or the flawed control and the fact that the parties highly disputed whether the use of “Maker’s Mark” on the cigar band was likely to cause confusion made it all the more crucial. Defendants did not adequately respond to this concern with Poret’s survey, noting that “Maker’s Mark” on the cigar band may have been non-infringing or a fair use, actively ignoring the fact that even an allegedly infringing element was problematic in the process besides waiving the fair use defense. They cited only Poret’s explanation that his purpose was to isolate the red wax element. The Court noted that Defendants did not carry their burden to prove that Poret’s wax confusion survey was reliable.
Coming to Defendants’ motion to exclude certain opinions and testimony of Michael A. Einhorn, it was noted that Einhorn submitted a report and two supplemental reports in which he calculated Defendants’ gross revenue and deducted Defendants’ costs to arrive at their net profits from the sale of the Bourbon Cigar, besides calculating what royalties would have been due under the licensing agreement. Defendants targeted Einhorn’s testimony regarding the deductions and resulting net profits calculation instead of his gross profits or royalties calculations. Defendants stated that Einhorn was no expert in cost accounting and highlighted his lack of relevant experience in accounting.
The Court, citing Mannino v. Int’l Mfg. Co., 650 F.2d 846, 851 (6th Cir. 1981), held that Einhorn met the minimal qualifications requirement based on his Ph.D. in economics from Yale University as well as decades of experience calculating damages in intellectual property cases. Even though much of his experience has been related to copyright, trademark damages estimations were well-represented on his resume.
When Defendant argued that Einhorn was not qualified to perform the specific calculations in this case, which involved determining which of Defendants’ costs should be deducted from the gross profits to reach the net profits, the Court noted that Einhorn has been admitted to testify regarding essentially the same calculation in copyright cases. The Court deemed Einhorn qualified to express opinions regarding Defendants’ net profits.
Defendants objected to Einhorn’s use of the “incremental approach” in his calculations as opposed to their expert’s use of the “full absorption” approach. The incremental approach subtracts only direct production costs from a Defendant’s gross profits, while the full absorption approach also subtracts the proportion of overhead costs attributable to the product.
While some courts have adopted one method or the other, the Sixth Circuit appears to have not. In a patent case, the Sixth Circuit declined to adopt a uniform rule about whether overhead costs should be deducted from profits because it depends on the facts of each case. The Court observed that trademark remedies authority suggested that the incremental approach is an acceptable method. The Court declined Defendant’s request to exclude Einhorn’s testimony on that basis.
Defendants moved to seal their motion to exclude Einhorn and the attached Exhibits 1-5, 8, and Maker’s Mark moved to seal its response to the motion and Exhibit 1, which included Einhorn’s report and supplemental reports. The documents contained Defendants’ profit margins, sales data, and other financial information. The Court denied the motions filed by both parties.
Held
The Court issued the following rulings:
1. Defendants’ motion to exclude certain testimony and opinions of Ran Kivetz was denied.
2. Plaintiff’s motion to exclude certain expert testimony of Hal Poret was granted in part and denied in part.
3. Defendants’ motion to exclude certain opinions and testimony of Michael A. Einhorn was denied.
4. Defendants’ motion for leave to file under seal was denied.
5. Plaintiff’s motion for leave to file under seal was denied.
The Court has not arrived on an outcome for this case since the remaining issues involved in this case still await resolution.
Key Takeaways:
The Court emphasized that challenges to expert testimony often revolve around methodological differences rather than the admissibility of the evidence itself. Disagreements within the field are common and do not necessarily render expert testimony unreliable.
Regarding the use of images in likelihood-of-confusion surveys, concerns about methodology and the simulation of marketplace conditions were raised by both parties. However, the Court determined that these concerns did not warrant exclusion of the surveys, allowing the parties to present their arguments about the validity of the methodology to the factfinder.
The absence of a “don’t know” option in certain survey questions was debated, with one party arguing that its inclusion artificially affected the results. The Court noted that the survey in question did not fail key tests of professionalism and reliability and refused to exclude the surveys based solely on this issue.
Expert qualifications were also scrutinized, particularly regarding calculations of net profits. Despite challenges to the expert’s qualifications and methodology, the Court deemed the expert sufficiently qualified based on relevant experience and education.
Differences in calculation methods, such as the incremental approach versus the full absorption approach, were considered by the Court. While some courts may have preferences for certain methods, the Court in this case declined to adopt a uniform rule, emphasizing that the appropriateness of a method depends on the specific circumstances of each case.
Case Details:
Case Caption:
Maker’s Mark Distillery, Pbc V. Spalding Group, Inc. Et Al
