HealthOne of Denver, Inc. et al v. UnitedHealth Group Incorporated

Filing 153

ORDER. ORDERED that Defendant UnitedHealth Group Incorporated=s Motion to Exclude Testimony of Plaintiffs Expert Kenneth B. Germain and for Filing Under Seal 56 is GRANTED IN PART AND DENIED IN PART consistent with this Order. The request to prohibit public access to Mr. Germain=s report is also GRANTED. Mr. Germain's report will be restricted to public access at Level One. See D.C.COLO.LCivR 7.2.B by Chief Judge Wiley Y. Daniel on 01/12/12.(jjh, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Chief Judge Wiley Y. Daniel
Civil Action No. 10-cv-01633-WYD-BNB
HEALTHONE OF DENVER, IND., a Colorado corporation;
HCA-HEALTHONE LLC, a Colorado limited liability company,
Plaintiffs,
v.
UNITEDHEALTH GROUP INCORPORATED, a Minnesota corporation,
Defendant.

ORDER

I.

INTRODUCTION
THIS MATTER is before the Court on Defendant UnitedHealth Group

Incorporated=s [AUnitedHealth@] Motion to Exclude Testimony of Plaintiffs= Expert Kenneth
B. Germain and for Filing Under Seal filed June 17, 2011 (ECF No. 56). A response was
filed to the motion on July 11, 2011, a reply was filed on July 28, 2011, and a surreply was
filed on October 24, 2011. The portion of the motion that seeks to restrict public access
to the expert report of Mr. Germain is granted.1

1 While the motion asks that the report be sealed, the Local Rules of this Court were revised effective
December 1, 2011, as to the procedure for restriction of access to documents. Instead of requesting to
seal a document, a party must request that the documents be restricted to public access based on
restriction levels set forth in the Rules. D.C.COLO.LCivR 7.2.B. Since HP is asking that access to the
documents be limited to the parties and the Court, I will assume that HP is seeking a Level One restriction of
Mr. Germain’s expert report.

As to the portion of the motion that seeks to exclude Plaintiffs= expert Kenneth
Germain, UnitedHealth argues that his testimony should be excluded under Fed. R. Evid.
702 as unhelpful, unreliable and prejudicial because Mr. Germain allegedly Aseeks
improperly to draw an inference from UnitedHealth=s assertion of the attorney-client
privilege, to parrot another expert=s testimony, and invade the province of the Court.@
(Mot. to Exclude Testimony 1). Thus, UnitedHealth asserts that his opinions are not
relevant or reliable, and should be excluded as they have been in multiple other cases.
The specific opinions that Mr. Germain seeks to offer according to his March 31,
2011 report (Ex. 1 to Def.=s Motion) are that: (1) UnitedHealth should not have used the
AUnitedHealthOne@ mark because Acompetent legal advice would have informed it@ that
use of the mark would violate Plaintiffs= rights (Germain Report at & 8(a)); (2) the survey
of Basil G. Englis, another of Plaintiffs= experts, is reliable, legitimate, and admissible and
Adeserves much credence@ (Id. at & 8(b)); and (3) the Amodern, federalized, widespread
doctrine of >reverse confusion= applies to this case@ (Id. at & 8(d)). UnitedHealth argues
that: (1) Mr. Germain=s opinion that UnitedHealth should not have used the
AUnitedHealthOne@ mark relies improperly on the fact that UnitedHealth asserted the
attorney-client privilege; (2) Mr. Germain=s opinion regarding the Englis survey is outside
the scope of Mr. Germain=s expertise and introduces improper legal conclusions; and (3)
Mr. Germain=s proposed testimony regarding Areverse confusion@ attempts to usurp the
function of the Court, whose role it is to instruct the jury on the rules of law that apply to the

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case. I find for the reasons discussed below that UnitedHealth=s motion should be
granted in part and denied in part at this juncture of the case.
II.

ANALYSIS
A.

Legal Standard

The court must make two inquiries in connection with whether an expert opinion is
admissible. Ralston v. Smith & Nephew Richards, Inc., 275 F.3d 965, 969 (10th Cir.
2001). AFirst, the court ha[s] to determine whether. . .the expert . . .[i]s qualified by
>knowledge, skill, experience, training, or education= to render an opinion. Id. (quoting
Fed. R .Evid. 702). A key issue is whether the expert testimony will aid the jury in its
determination of the critical issue in the case. Specht v. Jensen, 853 F.2d 805, 807 (10th
Cir. 1988); see also Wilson v. Muckala, 303 F.3d 1207, 1219 (10th Cir. 2002) (AThe
>touchstone= of admissibility of expert testimony is its helpfulness to the trier of fact.@).
AExpert testimony is appropriate when it relates to issues that are beyond the ken of
people of ordinary intelligence.=@ Curtis v. Okla. City Pub. Schs. Bd. of Educ,, 147 F.3d
1200, 1218 (10th Cir. 1998) (quotation omitted). AThe Tenth Circuit takes a liberal
approach to the question of whether proffered expert testimony will assist the jury.
Doubts about whether an expert's testimony will be useful should generally be resolved in
favor of admissibility unless there are strong factors such as time or surprise favoring
exclusions.@ Cook v. Rockwell Int'l Corp., 580 F. Supp. 2d 1071, 1083 (D. Colo. 2006).
Second, if the expert is so qualified, the court has to determine whether the
opinions are Areliable@ under the court=s gatekeeping role as set forth in Daubert v. Merrell

3

Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993). When A[f]aced with a proffer of expert
scientific testimony. . .the trial judge must determine. . ., pursuant to Rule 104(a), whether
the expert is testifying to (1) scientific knowledge that (2) will assist the trier of fact to
understand or determine a fact in issue.@ Id. at 592. AThis entails a preliminary
assessment of whether the reasoning or methodology underlying the testimony is
scientifically valid and of whether that reasoning or methodology properly can be applied
to the facts in issue.@ Id. at 592-93. Factors to consider in making this determination
include: (a) whether the theory or technique of the expert can be and has been tested,
(b) Awhether the theory or technique has been subjected to peer review and publication@;
(c) the known or potential rate of error of the theory or technique; and (d) whether the
theory or technique is "generally accepted". Id. at 593-94. The inquiry is a flexible one
and Amust be solely on the principles and methodology, not on the conclusions the expert
generates.@ Id. at 594-595. If the evidence is Ashaky but admissible@ under the above
standard, "[v]igorous cross-examination, presentation of contrary evidence, and careful
instruction on the burden of proof are the traditional and appropriate means of attacking"
the evidence. Id. at 596.
The Supreme Court expanded this analysis in Kumho Tire Co., Ltd. v Carmichael,
526 U.S. 137 (1999), holding that Daubert=s gatekeeping function also applies to the
testimony of experts who are not scientists, but who have Atechnical@ and Aother
specialized@ knowledge. Id. A[W]here such testimony=s factual basis, data, principles,
methods, or their application are called sufficiently into question, . . . the trial judge must

4

determine whether the testimony has >a reliable basis in the knowledge and experience of
[the relevant discipline].=@ Id. at 149 (quoting Daubert, 509 U.S. at 592). The factors
identified in Daubert may or may not be pertinent in assessing the reliability of these
opinions, depending on the nature of the issue, the expert=s particular expertise, and the
subject of his or her testimony. Id. at 150.
B.

Whether Mr. Germain=s Opinions Should Be Excluded

According to Mr. Germain=s expert report, he is an attorney and has taught
ATrademarks@, Intellectual Property@ and other related classes. (Ex. 1 to Def.=s Mot.,
&1(a).) He states that he has often served in an expert witness capacity in civil cases
involving a wide variety of issues related to the selection, adoption, use, registration,
maintenance and infringement of trade designations of all kinds@ and has Abeen called
upon as a potential expert witness on trademark and unfair competition matters on
dozens of occasions. . . .@ Id., & 1(b).)
While UnitedHealth has raised the applicability of Daubert, Mr. Germain does not
appear to be relying on scientific testimony but on his experience and training in the area
of trademarks and unfair competition. Thus, many of the Daubert factors are not
relevant. Further, his opinion is not improper simply because it is not scientific. Rule
702 authorizes opinion testimony by experts with Aspecialized knowledge@ which can be
acquired through experience and training. United States v. Garza, 566 F.3d 1194, 1199
(10th Cir. 2009).

5

Also and importantly, UnitedHealth does not seek to disqualify Mr. Germain based
on any lack of skill, specialized knowledge, experience, or qualifications, other than with
respect to his lack of expertise in connection with surveys. Indeed, Plaintiffs note that
Mr. Germain=s trademark opinions have been accepted in similar cases as reliable,
qualified and helpful testimony, including a case within this Court which was ultimately
affirmed by the Tenth Circuit. See Vail Associates, Inc. v. Vend-Tel-Co., Ltd., Case No.
1:01-cv-01172 (D. Colo. Jan. 4, 2005), aff=d, 516 F.3d 853, 861-863 (10th Cir. 2008).
While UnitedHealth asserts that Mr. Germain’s opinions have been excluded in a number
of cases, which cases are attached to its motion, those cases were all decided on the
basis of the particular opinions to be delivered in that case. Here also, I will address the
specific opinions of Mr. Germain that UnitedHealth objects to and the admissibility of
same.
Before doing so, however, I address generally the legal parameters for expert
opinions. This should guide the parties in connection with their presentation of expert
testimony, including that of Mr. Germain. ARule 704(a) of the Federal Rules of Evidence
>allows an expert witness to testify in the form of an opinion or inference even if that
opinion or inference embraces an ultimate issue to be determined by the trier of fact.=@
United States v. Bedford, 536 F.3d 1148, 1158 (10th Cir. 2008) (citing A.E. ex rel Evans v.
Indep. Sch. Dist. No. 25, 936 F.2d 472, 476 (10th Cir.1991)). AHowever, an expert may
not simply tell the jury what result it should reach without proving any explanation of the
criteria on which that opinion is based or any means by which the jury can exercise

6

independent judgment.@ United States v. Dazey, 403 F.3d 1147, 1171 (10th Cir. 2005).
AExpert testimony of this sort is sometimes excluded on the ground that it >usurps the
function of the jury in deciding the facts, or interferes with the function of the judge in
instructing the jury on the law.=@ Id.
Further, A[e]xpert witnesses may not testify as to ultimate issues of law governing
the jury's deliberations, because instructing the jury is the function of the trial judge.@
United States Aviation Underwriters, Inc. v. Pilatus Bus. Aircraft, Ltd., 582 F.3d 1131,
1150 (10th Cir. 2009). Expert testimony is also not proper Awhen the purpose of
testimony is to direct the jury=s understanding of the legal standards upon which their
verdict must be based.@ Specht, 853 F.2d at 810. Thus, A[w]hile testimony on ultimate
facts is authorized under Rule 704, . . .testimony on ultimate questions of law is not
favored.@ Id. at 808. AThe basis for this distinction is that testimony on the ultimate
factual questions aids the jury in reaching a verdict; testimony which articulates and
applies the relevant law, however, circumvents the jury's decision-making function by
telling it how to decide the case.@ United States Aviation Underwriters, 582 F.3d at 1150
(citing Specht, 853 F.2d at 808).
While A[a]n >expert may not state legal conclusions drawn by applying the law to
the facts, [a]n expert may. . .refer to the law in expressing his or her opinion.=@ Bedford,
536 F.3d at 1158 (quotation omitted). Indeed, an expert witness Amay properly be called
upon to aid the jury in understanding the facts in evidence even though reference to those
facts is couched in legal terms.@ Specht, 835 F.2d at 809. Such testimony is proper so

7

long as Athe expert does not attempt to define the legal parameters within which the jury
must exercise its fact-finding function.@ Id. Thus, in Specht, the court noted that Athe
question, >Did T have capacity to make a will?= would be excluded, while the question,
>Did T have sufficient mental capacity to know the nature and extent of his property and
the natural object of his bounty to formulate a rational scheme of distribution?= would be
allowed.@ Id. 807-08.
These concepts were further explored in Smith v. Ingersoll-Rand Co., 214 F.3d
1235 (10th Cir. 2000). In that case, the defendant claimed that a forensic expert=s
Aexplanation of hedonic damages constituted impermissible testimony on an ultimate
question of law”, violating the court’s “admonition that >in no instance can a witness be
permitted to define the law of the case.=@ Id. at 1246 (quoting Specht, 853 F.2d at 810).
The Tenth Circuit stated that “[t]his rule is not. . .a per se bar on any expert testimony
which happens to touch on the law; an expert may be >called upon to aid the jury in
understanding the facts in evidence even though reference to those facts is couched in
legal terms.=@ Id (quoting id. at 809).
I now turn to the opinions that are objected to by UnitedHealth.
1. Opinions as to UnitedHealth=s Assertion of the Attorney-Client Privilege
UnitedHealth first asserts that Mr. Germain=s opinion relies improperly on the fact
that UnitedHealth asserted the attorney-client privilege or invades that privilege by
producing an alleged Aadverse inference@. UnitedHealth points to the fact that
Mr. Germain begins his report by inferring that (1) UnitedHealth=s attorney probably gave

8

UnitedHealth Abad news@ and warned against using the AUnitedHealthOne@ mark
(Germain Report at && 10(b), 12); (2) UnitedHealth=s attorney chose not to put that Abad
news@ in writing (id. at & 10); (3) UnitedHealth then ignored its attorney=s advice in favor of
Aa >Full speed ahead: damn the torpedoes!= attitude@ (id. at & 12); and (4) UnitedHealth=s
attorney or someone else Amade a record of the factual and legal reason(s) seen as
justifying@ UnitedHealth=s decision to ignore its attorney=s advice. Id. UnitedHealth
asserts that Mr. Germain predicates these inferences on the fact that UnitedHealth has
claimed privilege for confidential communications with its counsel and has not asserted
an advice-of-counsel defense.
In response, Plaintiffs attach a redline draft of the report that was proposed to
UnitedHealth to address its objections to Mr. Germain=s opinions. In that redline draft,
Plaintiffs deleted almost all of what UnitedHealth found objectionable. Plaintiffs argue
that UnitedHealth did not meaningfully confer with Plaintiffs as required by
D.C.COLO.LCivR 7.1, both before filing the motion and after the motion was filed when
Plaintiffs tendered the redlined draft of the expert report to UnitedHealth in an attempt to
ameliorate its concerns about Mr. Germain=s testimony. While it does appear that
UnitedHealth did not confer with Plaintiffs to the maximum extent possible, I decline to
deny its motion on that basis since there was at least some effort to meet and confer.
Instead, I address the redline draft of the expert report that I will assume contains
what Mr. Germain will not testify to at trial based on Plaintiffs= representation in its
response brief. From my review of that report, it does not appear that Mr. Germain will

9

testify about or invoke any adverse inference about the fact that UnitedHealth has chosen
not to assert reliance on counsel advice as a defense. Indeed, almost every opinion
objected to by UnitedHealth about Mr. Germain improperly using the attorney-client
privilege against UnitedHealth has been withdrawn from Mr. Germain=s report. To the
extent that Mr. Germain may, however, still seek to testify as to issues arising from the
attorney-client privilege or advice of counsel, I find this testimony is improper and grant
UnitedHealth=s motion to exclude testimony on this issue for the reasons stated in
UnitedHealth’s motion.
Plaintiffs assert now that Mr. Germain will testify as an expert about the contents of
the Search Report and the meaning thereof, and that his testimony will be helpful to the
trier of fact. Plaintiffs further state that Mr. Germain=s analysis of the Search Report
requires specialized knowledge, consumes numerous hours of research and review and
in no way makes any conclusions as to the ultimate issue in this case, contrary to
UnitedHealth=s argument. I agree with Plaintiffs that it appears Mr. Germain=s expert
trademark testimony about the Search Report (as outlined in the redline draft of his
report) may be of assistance to the trier of fact.
Plaintiffs state that the Search Report consists of hundreds of pages of references
to both registered and common-law marks, canceled registrations, failed applications,
domain names, and business names. They contend that his testimony about the
meaning of the Search Report would be helpful to the jury to understand the marks
already in the marketplace or intended to be in the marketplace at the time UnitedHealth

10

adopted its Marks and, therefore, what knowledge UnitedHealth had or should have had
given the contents of the Search Report when it made its decision to adopt the Marks at
issue. UnitedHealth has not stated any valid reason why this testimony should be
excluded, and I that this testimony appears to be proper. See Children=s Med. Center v.
Columbia Hosp., No. 3-04-2436-BD, 2006 WL 616000, at *5 (N.D. Tex. March 10, 2006)
(denying challenge to trademark law professor=s opinion on the strength of a mark based
on the results of a trademark search report obtained by the plaintiffs because A[a]n expert
may base an opinion on facts or data of a type reasonably relied upon by experts in the
particular field in forming opinions or inferences upon the subject@ and the expert stated
that search reports are Agenerally relied upon by trademark practitioners when advising
clients as to the availability of marks for use and registration@); see also Larsen v. Ortega,
816 F. Supp. 97 (D. Conn. 1992) (court found that expert testimony was proper as to his
factual investigation regarding other companies that used the disputed mark, stating that
A[t]here is little doubt that expert testimony on the strength of a plaintiff=s trademark or on
the degree of similarity within a discreet industry is proper@)).2 Thus, UnitedHealth’s
motion to exclude is denied as to these issues.
However, I find that Mr. Germain may not opine about the results of his research as
they apply to the ultimate issue of trademark infringement. See Children=s Med. Center,
2006 WL 616000 at *6 n. 4; Bay State Bank v. Baystate Fin. Servs., No. 03-40273-FDS,

2

I reject UnitedHealth=s assertion in its reply that Mr. Germain=s opinions from his review of the
search report are mere ipse dixit.

11

2007 WL 6064455, at *2 (D. Mass. March 23, 2007). To the extent he was planning to
testify as to this ultimate issue, UnitedHealth=s motion to exclude is granted.
2. Opinions About the Englis Survey
UnitedHealth argues that Mr. Germain=s report analyzes a consumer survey
conducted by another expert, Basil Englis. It asserts that Mr. Germain does not claim to
be an expert on consumer surveys and does not describe any consumer survey that he
has conducted, instead referring only to his general Aexperience reviewing surveys.@
(Germain Report at && 1(a), 13(b)). Nonetheless, Mr. Germain opines about the
Asubstantial reliability@ and Alegal legitimacy@ of the Englis survey as well as that the
results of the survey are Aadmissible.@ (Id. at & 8(b)).
UnitedHealth argues that although Mr. Germain concludes that the survey is Afair@
and Ain accord with the prevailing legal standards,@ (Germain Report at & 13), he provides
no analysis of the survey=s methodology to explain those conclusions. Further,
Mr. Germain has no expertise in consumer surveys. Accordingly, UnitedHealth argues
that Mr. Germain=s opinions regarding the Englis survey, including its Asubstantial
reliability@ and Alegal legitimacy@, are outside the scope of his expertise and introduce
improper legal conclusions. UnitedHealth further argues that Mr. Germain=s testimony
regarding the survey is unhelpful to the factfinder because it is cumulative and adds
nothing to Mr. Englis= opinion, and is merely an attempt to parrot and bolster the opinions
of Mr. Englis.

12

I agree with UnitedHealth that testimony by Mr. Germain that attempts to bolster
the legitimacy of the survey or merely parrot the results of a survey conducted by another
person would be improper. See Dura Auto. Sys. Of Indiana, Inc. v. CTS Corp., 285 F.3d
609, 613 (7th Cir. 2002) (Ait is common in technical fields for an expert to base an opinion
in part on what a different expert believes on the basis of expert knowledge not
possessed by the first expert; and it is apparent from the wording of Rule 703 that there is
no general requirement that the other expert testify as well@ but an expert may not merely
parrot what the other expert said, vouch for that expert, or become that expert=s
Aspokesman@.) Plaintiffs assert, however, that they will not present such testimony.
Instead, Plaintiffs argue that citations to the survey are solely for the purpose of
providing a proper foundation for Mr. Germain=s opinion as required by Fed. R. Civ. P.
26(a)(2)(B). Plaintiffs further assert that Mr. Germain simply seeks to establish that the
survey is a legally sufficient foundation on which he may base his opinions regarding
reverse confusion, addressed below. I find that testimony from Mr. Germain about the
survey may be proper if Mr. Germain can establish a proper foundation for the survey
under the Federal Rules of Evidence and can show that the survey is the type of data
reasonably relied upon by experts in his field in forming opinions or inferences upon the
subject pursuant to Fed. R. Evid. 703. This may well depend on whether or not
Mr. Germain has any familiarity with the methods or reasoning used by Mr. Englis in his
survey and what his experience is with surveys. See TK-7 Corp. v. Estate of Barbouti,
993 F.2d 722, 732 (10th Cir.1993). I am unable to determine this from Mr. Germain=s

13

report or the briefing and find that this is an issue better left for trial. Thus, I deny the
motion to exclude all testimony regarding the survey, deferring resolution of this issue
until trial.
3. Opinions About Reverse Confusion
Finally, UnitedHealth asserts that Mr. Germain=s report presents opinions as to the
law that he contends should apply in this case. In particular, UnitedHealth points to
Mr. Germain=s opinion that reverse confusion is the law in Colorado and his explanation
and advocacy for this law. (Germain Report at & 8(d)). Mr. Germain asserts in his
opinion that A...forward and reverse confusion are not mutually exclusive; indeed they
both can occur at the same time@ and that A[a] plaintiff alleging trademark infringement
can prove actionable >likelihood of confusion= by forward and/or reverse confusion
evidence. (Id. at && 18(a) and 17(d)). Mr. Germain then concludes that there was a
likelihood of confusion because UnitedHealth=s advertising efforts were Avery likely to
produce reverse confusion between >UnitedHealthOne= and >HealthOne.=@ (Id. at
& 19(a)). UnitedHealth argues that Mr. Germain does not provide or cite to any evidence
of confusion, and that his testimony regarding Areverse confusion@ attempts to usurp the
function of the Court, whose role it is to instruct the jury on the rules of law.
Plaintiffs argue in response that Mr. Germain=s testimony on reverse confusion will
not state the law applicable to this case or opine on the ultimate issues. The ultimate
issue here is whether there is a likelihood of confusion between the HealthONE marks
and the UnitedHealthOne marks. Mr. Germain is opining on one factor in the likelihood

14

of confusion analysis, specifically, the actual confusion factor and how the doctrine of
reverse confusion can explain the results of the Mind/Share Survey. Plaintiffs further
assert that even if Mr. Germain=s opinions embraced an ultimate issue, Rule 704 permits
such testimony. Mr. Germain does not attempt to define the legal parameters within
which the jury must exercise its fact-finding function. Instead, according to Plaintiffs, his
opinion focuses on the role reverse confusion plays in the level of actual confusion shown
in the control group of the Mind/Share survey. Any stating of the law concerning reverse
confusion is merely foundational information for his opinions. Plaintiffs further point out
that as Plaintiffs= trademark claim is not based on the doctrine of reverse confusion, there
is no danger of Mr. Germain opining or instructing about any rule of law in the jury
instructions. Finally, Plaintiffs assert that even if he did opine about any rule of law, the
Court could eliminate any concern about that testimony by simply instructing the jury to
disregard any of Mr. Germain=s testimony inconsistent with its instructions.
I find that this issue should be deferred until trial where I can hear this evidence in
context. I note, however, that so long as Mr. Germain does not attempt to tell the jury
what the law is or define the law in the instructions, Mr. Germain=s testimony on this issue
may be proper. Courts routinely admit expert testimony from intellectual property
attorneys in trademark cases. See Olympia Group, Inc. v. Coopers Industries, Inc., No.
5:01-CV-423, 2003 WL 25767444, at *1 (E.D.N.C. April 17, 2003); Sam=s Wine & Liquors,
Inc. v. Wal-Mart Stores, Inc., No. 92 C 5170, 1994 WL 529331, at *8 (N.D. Ill. Sep. 27,
1994). Guidance from a trademark expert regarding the individual likelihood of

15

confusion factors or any survey results upon which to analyze those factors may be
appropriate and critically helpful to the trier of fact, providing a proper foundation is laid
and the expert has the experience necessary to opine as to these issues.
As set forth in a leading treatise:
Expert testimony on the factual factors that go into the ultimate finding on
the confusion issue is generally quite proper and helpful to both judge and
jury. . . .The expert testimony of expert witnesses is generally allowed on
[the likelihood of confusion factors] and other factors which are used to
analyze whether the designation is a valid trademark or if there is a
likelihood of confusion.
4 J. Thomas McCarthy, McCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
' 23:2.75 (AMCCARTHY@). Furthermore, McCARTHY advises that trademark attorneys
can be helpful in the jury=s understanding of unfamiliar and Aperhaps counter intuitive@
trademark concepts. Id.
Indeed, McCARTHY cites a case within this Circuit where Mr. Germain=s testimony
was allowed to assist the jury on several of the factors relevant to likelihood of confusion
in a trademark case as set forth in Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964,
972 (10th Cir. 2002). The case in which Mr. Germain testified, captioned Vail
Associates, Inc. v. Vend-Tel-Co., Ltd., Case No. 1:01-cv-01172 (D. Colo. Jan. 4, 2005),
was ultimately affirmed by the Tenth Circuit, 516 F.3d 853, 861-863 (10th Cir. 2008).
Vail Associates centered on the alleged trademark infringement of the plaintiff=s
mark VAIL by the defendant=s mark 1-800-SKI-VAIL. The defendant called on
Mr. Germain to testify as to four of the six Sally Beauty factors: strength of the mark;

16

similarity of the marks; intent of the defendant; and the degree of care. Vail Assocs., 516
F.3d at 861-63. Not only did the district court seemingly rely on Mr. Germain=s opinion in
its order finding for the defendant on all claims, but the Tenth Circuit extensively relied on
and quoted approvingly whole portions of Mr. Germain=s testimony and opinions in
affirming the district court=s opinion. See id. (AGermain=s testimony that [the defendant]
did not appear to intend to infringe upon [the [plaintiff]'s mark or utilize [the plaintiff]s=
reputation was equally critical;@ AIn this case, Germain's testimony as to the similarities
between the two marks at issue is entirely consistent with our analysis of the marks in
Sally Beauty@). While the Tenth Circuit did not address any challenges to Mr. Germain=s
testimony, as noted by UnitedHealth, it also did not find such evidence to be improper.
Other courts have also allowed an expert to testify as to factors relevant to
likelihood of confusion so long as the expert does not state the ultimate legal conclusion
about likelihood of confusion or the verdict the jury should reach with respect to trademark
infringement. See Scurmont LLC v. Firehouse Rest. Group, Inc., No. 4:09-cv-00618,
2011 WL 2670575, at *8 (D.S.C. July 8, 2011); Roederer v. J. Garcia Carrion, S.A., 2010
WL 489529, at *3 (D. Minn. Feb. 4, 2010); Sam=s Wine & Liquors, 1994 WL 529331, at
*8-9; YKK Corp. v. Jungwoo Zipper Co., 213 F. Supp. 2d 1195, 1203 (C.D. Cal. 2002).
Further, in Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co., 561 F.2d 1365, 1371
(10th Cir. 1977), the Tenth Circuit noted that the district court was within its discretion in
accepting expert testimony from a trademark attorney where the jury was instructed to
ignore any testimony contrary to court's instructions.

17

I also note that the Tenth Circuit has allowed experts to explain the law in certain
circumstances. For example, in Smith v. v. Ingersoll-Rand Company, the Tenth Circuit
found that the district court did not err in allowing an expert to explain his interpretation of
the meaning of hedonic damages where the district court determined that such testimony
was relevant. 214 F.3d at 1245-46. The expert Adid not attempt to apply the facts of the
case >to the criteria he proffered to the jury; the jury remained free to exercise its
fact-finding function.=@ Id. The court found that the expert=s Atestimony on hedonic
damages no more defined the law of the case than did his testimony regarding the
computation of other types of damages@ where Ahe described in great detail the factors
the jury could consider in calculating. . . lost future earnings@. Id.
In another case, the Tenth Circuit found that A>[e]xpert testimony by an IRS agent
which expresses an opinion as to the proper tax consequences of a transaction is
admissible evidence,= . . . so long as the expert does not >directly embrace the ultimate
question of whether [the defendants] did in fact intend to evade income taxes,= . . . .@
Bedford, 536 F.3d at 1158 (quotations omitted). See also United States v. Dazey, 403
F.3d 1147, 1172 (10th Cir. 2005); Okland Oil Co. v. Conoco, Inc., 144 F.3d 1308, 1328
(10th Cir. 1998).
From the foregoing, I agree with Plaintiffs that consideration of the concept of
reverse confusion in connection with Mr. Germain’s discussion of the actual confusion
factor may be helpful if this issue is found to be relevant. However, the admissibility of
this testimony will turn on many factors, including not only relevance but a balancing of

18

the probative value over any prejudice that could result to the jury under Fed. R. Evid.
403, the extent to which Mr. Germain is qualified to render testimony on this issue in
regards to the survey, and the extent to which the testimony may improperly invade the
province of the Court regarding instructing on the law. This will, in turn, depend on the
particular questions asked of Mr. Germain. Accordingly, a ruling on this issue at this
stage of the case is premature, and UnitedHealth’s motion to exclude Mr. Germain’s
testimony is denied as to this argument..
III.

CONCLUSION
Based upon the foregoing, it is
ORDERED that Defendant UnitedHealth Group Incorporated=s Motion to Exclude

Testimony of Plaintiffs= Expert Kenneth B. Germain and for Filing Under Seal filed June
17, 2011 (ECF No. 56) is GRANTED IN PART AND DENIED IN PART consistent with
this Order. The request to prohibit public access to Mr. Germain=s report is also
GRANTED. Mr. Germain’s report will be restricted to public access at Level One. See
D.C.COLO.LCivR 7.2.B.
Dated: January 12, 2012
BY THE COURT:

s/ Wiley Y. Daniel
Wiley Y. Daniel
Chief United States District Judge

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