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Lifeguard Licensing Corp. v. Kozak

United States District Court, S.D. New York

March 7, 2017




         This is 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 denied.


         The 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).

         Each 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), [1] and because both experts admitted during deposition testimony that the marks are not generic (Pl. Memo. at 26-30).


         A. Legal Standard

         According 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 methods; and
(d) the expert has reliably applied the principles and methods to the facts of the case.

         The 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.

         B. Plaintiffs' Motion

         1. Experts' Admissions

         The 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 summary judgment.”).

         The 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).

         It is 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.[2] (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 ...

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