Bruce Kirby, Inc. et al v. LaserPerformance (Europe) Limited et al

Filing 563

ORDER RE REMAINING PENDING MOTIONS IN LIMINE. For the reasons explained in the accompanying ruling, the Court GRANTS in part and DENIES in part and DEFERS in part plaintiffs' motions in limine No. 3, No. 4 (first), No. 5, No. 6, and No. 7 (Doc. # 525 ) and defendants' motion in limine (Doc. # 520 ), as set forth in the attached ruling. It is so ordered. Signed by Judge Jeffrey A. Meyer on 02/05/2020. (Mahler-Haug, A)

Case 3:13-cv-00297-JAM Document 563 Filed 02/05/20 Page 1 of 7

UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT

BRUCE KIRBY, INC. et al.,
Plaintiffs,
No. 3:13-cv-00297 (JAM)
No. 3:17-cv-01158 (JAM) (consol.)

v.
LASERPERFORMANCE (EUROPE)
LIMITED et al.,
Defendants.

ORDER RE REMAINING PENDING MOTIONS IN LIMINE
This case is about a long-running dispute involving Laser sailboats. In 2013, plaintiffs
Bruce Kirby and his namesake company Bruce Kirby, Inc. sued defendants LaserPerformance
(Europe) Ltd. (“LPE”) and Quarter Moon, Inc. (“QMI”). Trial evidence is scheduled to begin
next week on plaintiffs’ claims for violations of the Lanham Act (trademark and false
designation of origin claims) and for common law misappropriation involving the use of the
Bruce Kirby name.
On January 29, 2020, I conducted a hearing on the parties’ respective motions in limine.
Several days ago I issued a ruling as to the most time-sensitive of these motions, Doc. #558, and
now this ruling determines the remaining motions. I presume familiarity with the many prior
rulings I have issued in this case.
Attribution of LaserPerformance LLC’s revenue to QMI
Plaintiffs move in limine to preclude evidence, testimony, or argument that revenues of
LaserPerformance LLC, a non-party that is a subsidiary of QMI, is not attributable to QMI on the
grounds that prior deposition and other testimony given by one of defendants’ Rule 30(b)(6)
witnesses establishes that LaserPerformance LLC’s sales are attributable to QMI. Doc. #525 at
1

Case 3:13-cv-00297-JAM Document 563 Filed 02/05/20 Page 2 of 7

12-13. But, as defendants argue in opposition, it is plaintiffs’ burden to prove at trial what sales,
if any, of Laser sailboats may be legally to attributable to QMI for purposes of establishing
liability. Doc. #532 at 13. It is a fact issue that the Court declines to resolve by way of motion in
limine. Accordingly, I will deny plaintiffs’ motion in limine No. 3 for substantially the reasons
stated in defendants’ opposition.
Termination of 1989 Builder Agreement
Plaintiffs move in limine to preclude evidence, testimony, or argument that the 1989
Builder Agreement was not terminated on the grounds that this position would be in conflict with
the testimony of one of defendants’ Rule 30(b)(6) witnesses who testified in a deposition that the
1989 Builder Agreement was terminated. Doc. #525 at 14-15. Defendants argue that whether the
1989 Builder Agreement is terminated is a question of fact for the jury to decide. Doc. #532 at
14-15. I agree and decline to resolve this fact issue by way of a ruling on a motion in limine. For
substantially the reasons stated by defendants in opposition, I will deny plaintiffs’ motion in
limine No. 4 (first).
Pre-registration evidence related to the prosecution of the BRUCE KIRBY mark
The Kirby plaintiffs move in limine to preclude evidence pertaining to the prosecution of
the BRUCE KIRBY trademark—specifically, a letter from the U.S. Patent and Trademark Office
dated January 5, 2006, Doc. #525 at 16, concerning a “specimen,” which the Court understands
to be an image of a plaque containing the words “designed by Bruce Kirby” based on the
explanation from the counsel for plaintiffs at the hearing on January 29, 2020, see Doc. #260-5.
Plaintiffs argue that a trademark registration is prima facie evidence of its validity, and
that because LPE and QMI have not contested the validity of the trademark, they have waived

2

Case 3:13-cv-00297-JAM Document 563 Filed 02/05/20 Page 3 of 7

any invalidity argument. Defendants respond that this letter is relevant and “establishes that the
Kirby plaintiffs and their counsel were aware long before they filed this lawsuit that the United
States Patent and Trademark Office already had determined this issue [that the use of the phrase
‘Designed by Bruce Kirby’ did not constitute a viable trademark use] against them.” Doc. #532
at 16-17. Counsel for defendants at the pretrial conference further contended that the letter goes
to the reasonableness of defendants’ view that using the BRUCE KIRBY mark in this manner
was fair use. Ibid.
As an initial matter, I note that in their Joint Trial Memorandum the parties have
stipulated to the fact that the BRUCE KIRBY trademark is owned by plaintiff BKI and the
registration date of the BRUCE KIRBY trademark is November 11, 2008. See Doc. #523-7 at 3.
I therefore agree with plaintiffs that the validity of the BRUCE KIRBY trademark is undisputed
in this case.
There has been no showing that defendants were aware of this 2006 letter from the U.S.
Patent and Trademark Office at any time during the course of the alleged violations at issue in
this case, and defendants have not shown how their awareness of the letter at some later time is
relevant to any issue in this action. Accordingly, in light of the absence of dispute about the
validity of the trademark and in the absence of a showing that the letter is otherwise relevant, I
will grant the Kirby plaintiffs’ motion in limine No. 5 insofar as it seeks to preclude introduction
of or reference to the letter of January 5, 2006, from the U.S. Patent and Trademark Office.
Dismissed counterclaims
Plaintiffs move to preclude the introduction of evidence related to defendants’
counterclaims, which have now been dismissed. Specifically, plaintiffs seek to preclude any
evidence or allegations that Bruce Kirby engaged in wrongful conduct by copyrighting the
3

Case 3:13-cv-00297-JAM Document 563 Filed 02/05/20 Page 4 of 7

construction manual (in violation of confidentiality provisions) as well as by attempting to start
his own sailing class with a new boat known as “the Torch” sailboat. Doc. #525 at 17-18.
Defendants argue that, because plaintiffs claim that the defendants acted willfully, intentionally,
and with callous disregard of the known rights of plaintiffs, defendants should be permitted to
offer evidence of plaintiffs’ own misconduct to defend against those claims. Doc. #32 at 17-18.
The allegations at issue in this lawsuit concern alleged misconduct that occurred up until
2013, and I agree with plaintiffs that this post-2013 evidence relating to now-dismissed
counterclaims is not properly relevant to any of the issues in this action and that any possible
relevance is substantially outweighed by the potential for unfair prejudice and confusion.
Accordingly, I will grant plaintiffs’ motion in limine No. 6 to preclude post-2013 evidence of
Mr. Kirby’s alleged efforts to copyright the Laser construction manual and to create the Torch
class of boats.
Consent defense
Plaintiffs move in limine to preclude defendants from presenting “argument or evidence
to the jury that Kirby consented or acquiesced to LP’s use of the BRUCE KIRBY trademark
and/or Kirby’s name following termination of LP’s authorization to use the same.” Doc. #525 at
18. The reason for this, according to plaintiffs, is that “consent/acquiescence is an affirmative
defense LP waived by not including it in their Answer or raising the defense during the case.”
Ibid. In opposition, defendants do not dispute that acquiescence is an affirmative defense. See
Doc. #532 at 18-20. But defendants argue that lack of consent is an element of plaintiffs’
trademark infringement claim, pointing out that plaintiffs’ own proposed jury instructions state
that they must prove that defendants used the trademark without consent of plaintiffs. See ibid.;

4

Case 3:13-cv-00297-JAM Document 563 Filed 02/05/20 Page 5 of 7

see also Doc. #522-13 at 7.
I agree with plaintiffs that the estoppel-based doctrine of acquiescence is an affirmative
defense, one that the defendants did not plead in their Answer. Doc. #40. But by using the
phrases “consented or acquiesced” and “consent/acquiesced,” plaintiffs stretch their argument to
seek to foreclose the defendants from controverting an element (consent) that plaintiffs bear the
burden to prove. Because defendants have a right to dispute plaintiffs’ evidence, I will not
foreclose them from doing so.
Section 32 of the Lanham Act, under which plaintiffs bring their claim, states that a
trademark infringement claim may lie against “[a]ny person who shall, without the consent of the
registrant, use in commerce any reproduction, counterfeit, copy, or colorable imitation of a
registered mark in connection with the sale, offering for sale, distribution, or advertising of any
goods or services on or in connection with which such use is likely to cause confusion, or to
cause mistake, or to deceive…” 15 U.S.C. § 1114(1)(a). The law of the Second Circuit makes
clear that “without consent” is an element of a trademark infringement claim. See, e.g., ITC Ltd.
v. Punchgini, Inc., 482 F.3d 135, 146 (2d Cir. 2007); Gruner + Jahr USA Pub., a Div. of Gruner
+ Jahr Printing & Pub. Co. v. Meredith Corp., 991 F.2d 1072, 1075 (2d Cir. 1993). And the case
cited by plaintiffs at the pretrial conference, PRL USA Holdings, Inc. v. U.S. Polo Ass’n, Inc.,
520 F.3d 109 (2d Cir. 2008), is not helpful because, if anything, it makes more clear the
distinction between the affirmative defense of acquiescence and the element that a plaintiff must
prove in an infringement claim: lack of consent. See id. at 115 (stating that “acquiescence is an
affirmative defense, which raises issues different from the elements of a claim of
infringement.”).
Accordingly, I will grant plaintiffs’ motion in limine No. 7 insofar as it seeks to preclude
5

Case 3:13-cv-00297-JAM Document 563 Filed 02/05/20 Page 6 of 7

defendants from advancing the affirmative defense of acquiescence but I will deny it insofar as it
seeks to preclude defendants from disputing plaintiffs’ evidence of lack of consent.
Post-April 2013 evidence
Defendants move in limine to preclude plaintiffs from introducing evidence of conduct
after April 23, 2013, specifically evidence involving the now-settled 2017 lawsuit between the
parties involving the Kirby fishing boat. Doc. #520. In opposition, plaintiffs argue that evidence
concerning the 2017 lawsuit is probative of defendants’ willfulness in infringing the BRUCE
KIRBY trademark, Doc. #530 at 2-4, and at the pretrial conference, counsel for plaintiffs argued
that the 2017 lawsuit demonstrates that defendants engaged in a pattern of infringing behavior.
I will grant defendants’ motion on the ground that plaintiffs have not shown that
defendants’ alleged misconduct in 2017 with respect to the use of the Kirby name for a fishing
boat is relevant to the misconduct at issue in this action that occurred in 2013 and earlier. Any
relevance is substantially outweighed by the potential for unfair prejudice and confusion that
would result from injecting the allegations from the Kirby fishing boat lawsuit into this sailboat
lawsuit.
I am concerned as well that evidence of the 2017 lawsuit would be improper propensity
evidence. Rule 404 provides in part that “[e]vidence of a crime, wrong, or other act is not
admissible to prove a person’s character in order to show that on a particular occasion the person
acted in accordance with the character.” Fed. R. Evid. 404(b). Although the Second Circuit,
“follows the ‘inclusionary’ approach, which admits all ‘other act’ evidence that does not serve
the sole purpose of showing the defendant’s bad character and that is neither overly prejudicial
under Rule 403 nor irrelevant under Rule 402,” United States v. Moran-Toala, 726 F.3d 334, 345
(2d Cir. 2013), the primary purpose proffered by plaintiffs as to why evidence of 2017 lawsuit
6

Case 3:13-cv-00297-JAM Document 563 Filed 02/05/20 Page 7 of 7

should be admitted as relevant is that it is probative of defendants’ state of mind. It is very
difficult to see how defendants’ state of mind in 2017 reflects on their state of mind years earlier
during the allegedly infringing conduct at issue in this case.
Plaintiffs also point to the parties’ settlement agreement of 2017 Kirby fishing boat
lawsuit, which states “[plaintiffs] may introduce into evidence at trial in the 2013 Action,
collectively or separately, Defendants’ admissions to the Requests for Admission below [on the
following list of topics], each of which may be used for any purpose allowable under the Federal
Rules of Evidence.” Doc. #520-1 at 2-3 (Ex. A). Because this stipulation is conditioned on the
evidence being allowable in the first instance under the Federal Rules of Evidence, the terms of
the settlement agreement do not compel the admission of this evidence at trial.
All in all, I will grant defendants’ motion in limine to the extent that it seeks to preclude
evidence of the 2017 lawsuit that the parties settled. But I will otherwise defer ruling on the
admissibility of any other post-2013 evidence pending the parties’ specific identification of such
evidence and the grounds of admissibility.
CONCLUSION
For the foregoing reasons, the Court GRANTS in part and DENIES in part and DEFERS
in part plaintiffs’ motions in limine No. 3, No. 4 (first), No. 5, No. 6, and No. 7 (Doc. #525) and
defendants’ motion in limine (Doc. #520), as set forth in this ruling.
It is so ordered.
Dated at New Haven this 5th day of February 2020.
/s/Jeffrey Alker Meyer
Jeffrey Alker Meyer
United States District Judge

7