United States District Court, S.D. New York
LIFEGUARD LICENSING CORP. and POPULARITY PRODUCTS, LLC, Plaintiffs,
JERRY KOZAK, ANN ARBOR T-SHIRT COMPANY, LLC, and RICHARD WINOWIECKI, Defendants.
MEMORANDUM AND ORDER
C. FRANCIS IV UNITED STATES MAGISTRATE JUDGE.
a copyright infringement action in which the relevant marks -
the words "LIFEGUARD" and "LIFE GUARD"
used on t-shirts, swim trunks, and men's underwear -- are
owned by plaintiff Lifeguard Licensing Corp. and licensed to
Popularity Products, LLC. A key issue is whether the marks
are generic and therefore not entitled to protection under
the Lanham Act, 15 U.S.C. §§ 1051-1129. The
defendants, Jerry Kozak, Ann Arbor T-Shirt Company, LLC, and
Richard Winowiecki (collectively, "Ann Arbor"),
retained two experts to provide reports regarding
genericness. The plaintiffs hired one expert to rebut those
reports. Each side seeks to preclude the others' expert
evidence. For the reasons that follow, the motions are
parties plan to rely on their experts in connection with
motions for summary judgment (and presumably at trial). The
defendants' two experts have submitted three reports
based on consumer surveys. James T. Berger's report
relies on two consumer surveys -- a “Teflon”
survey (that is, a survey “in which participants are
given a series of names and asked whether those names are
brand names or common names, in an effort to discern how the
public perceives each name, ” Horizon Mills Corp.
v. QVC, Inc., 161 F.Supp.2d 208, 220 (S.D.N.Y. 2001)
(citing E.I. DuPont de Nemours and Co. v. Yoshida
International, Inc., 393 F.Supp. 502 (E.D.N.Y. 1975))),
and a “Thermos” survey (that is, a survey that
“asks participants how they would identify a particular
product given that it performs certain functions, in an
effort to identify if the name of the product is generic,
” id. (citing American Thermos Products
Co. v. Aladdin Industries, Inc., 207 F.Supp. 9 (D. Conn.
1962))). (Declaration of Thomas P. Heed dated Dec. 12, 2016
(“Heed Preclusion Decl.”), ¶ 4). Dr. Thomas
Maronick authored two reports. The first (the “Maronick
I Report”) was completed in connection with a prior
litigation regarding the same marks at issue here entitled
Lifeguard Licensing Corp. v. GoGo Sports, Inc., No.
10 Civ. 9075 (S.D.N.Y) (“GoGo”); the
second (the “Maronick II Report”) is based on two
surveys performed in connection with this litigation. (Heed
Preclusion Decl., ¶¶ 6-7). The plaintiffs offer two
rebuttal reports -- one for each of the defendants'
experts --authored by Brian M. Sowers. (Heed Preclusion
Decl., ¶¶ 8-9).
side argues that the reports propounded by the other side are
inadmissible pursuant to Daubert v. Merrell Dow
Pharmaceuticals, Inc., 509 U.S. 579 (1993), and
Kumho Tire Co. v. Carmichael, 526 U.S. 137 (1999).
Specifically, the defendants claim that Mr. Sowers is not
sufficiently qualified to testify as an expert
(Defendants' Memorandum of Law in Support of Motion to
Exclude Plaintiffs' Expert Witness Brian Sowers
(“Def. Memo.”) at 16-21), and that his methods
are unreliable (Def. Memo. at 22-23). The plaintiffs contend
that the reports of Mr. Berger and Dr. Maronick are
unreliable because the surveys underlying them were
fundamentally flawed (Plaintiffs' Memorandum of Law
(“Pl. Memo.”) at 12-25),  and because both experts
admitted during deposition testimony that the marks are not
generic (Pl. Memo. at 26-30).
to Rule 702 of the Federal Rules of Evidence, expert
testimony is admissible if:
(a) the expert's scientific, technical, or other
specialized knowledge will help the trier of fact to
understand the evidence or to determine a fact in issue;
(b) the testimony is based on sufficient facts or data;
(c) the testimony is the product of reliable principles and
(d) the expert has reliably applied the principles and
methods to the facts of the case.
proponent of expert opinion testimony must demonstrate
admissibility by a preponderance of proof, see
Daubert, 509 U.S. at 592 n.10, and the district court
serves as a gatekeeper to ensure that an expert is properly
qualified and that his opinion testimony is relevant and
reliable, see id. at 597; Kumho, 526 U.S.
at 147-48; Fed.R.Evid. 702 advisory committee's note to
2000 amendments. An expert may be qualified based on his
“knowledge, skill, experience, training, or
education.” Fed.R.Evid. 702. Expert opinion testimony
must be both relevant -- that is, it must tend to make the
existence of any fact that is of consequence to the
determination of the action more or less probable -- and
reliable. Amorgianos v. National Railroad Passenger
Corp., 303 F.3d 256, 265 (2d Cir. 2002). Expert
testimony is considered reliable if: (1) the testimony is
based on sufficient facts or data; (2) the expert's
technique or methodology in reaching the conclusion is
reliable; and (3) the expert has applied the methodology
reliably to the facts of the case. Fed.R.Evid. 702;
Daubert, 509 U.S. at 589; Kumho, 526 U.S.
at 149. However, no one factor is determinative, and district
courts have broad discretion in deciding the admissibility of
expert testimony. See United States v. Farhane, 634
F.3d 127, 158 (2d Cir. 2011); Fed.R.Evid. 702 advisory
committee's note to 2000 amendments.
plaintiffs assert that each of the defendants' experts
admitted during his deposition that the “Lifeguard
Marks . . . are not generic with respect to apparel or
clothing.” (Pl. Memo. at 27). This, they contend,
requires preclusion of the expert reports because “[i]t
is well settled case-law [sic] in the Second Circuit that an
Affidavit provided in support of a summary judgment motion
(and by extension, trial testimony as well) that
contradicts prior deposition testimony must be
disregarded.” (Pl. Memo. at 26); see, e.g.,
Mack v. United States, 814 F.2d 120, 124 (2d Cir.
1987) (“It is well settled in this circuit that a
party's affidavit which contradicts his own prior
deposition testimony should be disregarded on a motion for
rule to which the defendants allude is known as the
“sham affidavit” doctrine, see, e.g.,
RBFC One, LLC v. Zeeks, Inc., 367 F.Supp.2d 604, 616
(S.D.N.Y 2005), or the “sham issue of fact”
doctrine, see, e.g., In re Fosamax Products
Liability Litigation, 707 F.3d 189, 193 (2d Cir. 2013).
It holds that “a party may not create an issue of fact
by submitting an affidavit in opposition to a summary
judgment motion that, by omission or addition, contradicts
the affiant's previous deposition testimony.”
Kennedy v. City of New York, 570 F. App'x 83, 84
(2d Cir. 2014) (quoting Hayes v. N.Y.C. Department of
Corrections, 84 F.3d 614, 619 (2d Cir. 1996)). The
doctrine is designed to vindicate “the utility of
summary judgment as a procedure for screening out sham issues
of fact, ” Perma Research & Development Co. v.
Singer Co., 410 F.2d 572, 578 (2d Cir. 1969), and
champions testimony subject to cross-examination (such as
deposition testimony) over other statements because of its
heightened reliability, see Jimenez v. All American
Rathskeller, 503 F.3d 247, 253 (3d Cir. 2007) (citing
Perma Research, 410 F.2d at 578).
far from clear that the doctrine is applicable in these
circumstances. First, the purported “sham
affidavits” here are expert reports that were submitted
prior to each authors' deposition and about which each
was cross-examined. (Heed Preclusion Decl., ¶¶ 4,
6-7; Deposition of James T. Berger dated Oct. 6, 2016
(“Berger Dep.”), attached as Exh. A to
Declaration of Gerald Grunsfeld dated Jan. 3, 2017
(“Grunsfeld Decl.”); Deposition of Thomas
Maronick dated Sept. 27, 2016 (“Maronick Dep.”),
attached as Exh. B to Grunsfeld Decl.); see Zikianda v.
County of Albany, No. 12 CV 1194, 2015 WL 5510956, at
*57 n.24 (N.D.N.Y. Sept. 15, 2015) (“The experts'
depositions occurred after they authored reports and it is
unclear that the doctrine would apply under those
circumstances.”). Second, the expert reports pre-date
the filing of any motion for summary judgment. (Heed
Preclusion Decl., ¶¶ 4, 6-7). The Second Circuit
has repeatedly reasoned that the doctrine prevents
consideration of contradictory statements, not subject to
cross-examination, submitted in response to a motion
for summary judgment. See, e.g., In re
Fosamax, 707 F.3d at 194 (“[The sham issue of
fact] doctrine applies to stop [the non-moving party] from
manufacturing a factual dispute by submitting testimony from
an expert whom she tendered, where the relevant
contradictions . . . are ...