Superior Consulting Services, Inc. v. Shaklee Corporation

Filing 311

ORDER granting in part and denying in part 174 Motion in Limine. The Defendant's Motion to Exclude David Dieterle under Daubert (Doc. 174) is GRANTED with respect to web traffic, but DENIED in all other respects. At trial, Dieterle may present the $4,064,939.78 gross sales number to the jury. Signed by Judge Gregory A. Presnell on 5/9/2018. (MAF)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
ORLANDO DIVISION
SUPERIOR CONSULTING SERVICES,
INC.,
Plaintiff,
v.

Case No: 6:16-cv-2001-Orl-31GJK

SHAKLEE CORPORATION and
SHAKLEE U.S., LLC,
Defendants.

ORDER
This matter comes before the Court after an evidentiary hearing on the Defendant’s Motion
to Exclude David Dieterle under Daubert (Doc. 174) and the Plaintiff’s Response (Doc. 241).
I.

Factual Background and Procedural History

Superior owns two Florida fictitious business entities called “Your Future Health” and
“YFH” (collectively “Superior”). Doc. 20 ¶ 5. Eleanor Cullen owns and operates Superior.
Superior's “primary objective is the early detection of disease, through performing certain laboratory
tests, including blood tests, for consumers.” Id. ¶ 7. Superior accomplishes its objective by creating
a profile “customized to a client's unique biochemistry,” called a “Healthprint.” Id. ¶ 11. Superior
has registered the mark “Healthprint” twice with the United States Patent and Trademark Office
(“USPTO”). Registration number 2646571 was obtained on November 5, 2002, and registration
number 2928465 was obtained on March 1, 2005. Doc. 20 ¶¶ 14, 16. The USPTO did not require
proof of a secondary meaning for either mark. Id. ¶ 18. On November 8, 2008, and February 5,
2011, Superior filed declarations of incontestability for the marks.

On June 8, 2016, Shaklee, a corporation that manufactures and distributes nutritional
supplements, beauty products, and household-cleaning products, filed a trademark application with
the USPTO claiming a similar “Healthprint” mark. Shaklee's Healthprint refers to a free, online
survey that consists of twenty-two questions about a client's personal characteristics, habits, and
goals. Doc. 43–8 ¶ 13. Once the client answers all of the questions, he or she is presented with “a
customized set of Shaklee products that fits [his or her] health goals, needs and budget.” Doc. 43–
7, Ex. 1 at 1.
On December 14, 2017, Superior filed its Second Amended Complaint alleging trademark
infringement and violations of the Florida Deceptive and Unfair Trade Practices Act. Doc. 159. On
January 2, 2018, Shaklee filed its Answer, Affirmative Defenses, and Counterclaim. Doc. 166.
On January 12, 2018, Shaklee filed the Motion to Exclude David Dieterle under Daubert.
Doc. 174. On February 2, 2018, Superior filed its Response. Doc. 241. The Court held an evidentiary
hearing on May 3, 2018. Doc. 307.
II.

Legal Standards

Federal Rule of Evidence 702 governs the admission of expert witness testimony. It provides
that:
A witness who is qualified as an expert by knowledge, skill, experience,
training, or education may testify in the form of an opinion or otherwise 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.

-2-

Fed. R. Evid. 702. The proponent of the opinion testimony has the burden of establishing each
precondition to admissibility by a preponderance of the evidence. Rink v. Cheminova, Inc., 400 F.3d
1286, 1292 (11th Cir. 2005).
In Daubert v. Merrill Dow, 509 U.S. 579 (1993), the Supreme Court admonished trial courts
to fulfill a gatekeeping role in the presentation of expert testimony. To guide district courts'
assessments of the reliability of an expert's testimony, the Supreme Court identified four factors that
district courts should consider: (1) whether the expert's methodology has been tested or is capable
of being tested; (2) whether the theory or technique used by the expert has been subjected to peer
review and publication; (3) whether there is a known or potential error rate of the methodology; and
(4) whether the technique has been generally accepted in the relevant scientific community. See id.
at 593–94. At the same time, the Court has emphasized that these factors are not exhaustive and are
intended to be applied in a “flexible” manner. Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137,
141 (1999). District courts are charged with this gatekeeping function “to ensure that speculative,
unreliable expert testimony does not reach the jury” under the mantle of reliability that accompanies
the appellation “expert testimony.” Rink, 400 F.3d at 1291 (quoting McCorvey v. Baxter Healthcare
Corp., 298 F.3d 1253, 1256 (11th Cir. 2002)).
III.

Analysis

The Plaintiff seeks disgorgement of profits under Section 1117 of the Lanham Act. Doc. 241
at 16. Under that statute and related case law, the Plaintiff has the burden of introducing evidence
of the Defendant’s gross sales. See Axiom Worldwide, Inc. v. HTRD Grp. Hong Kong Ltd., No. 8:11CV-1468-T-33TBM, 2013 WL 3975675, at *11 (M.D. Fla. July 31, 2013), aff'd sub nom. Axiom
Worldwide, Inc. v. Excite Med. Corp., 591 F. App'x 767 (11th Cir. 2014).1 The Plaintiff proffers the

1

The Defendant argues that this burden extends to showing those particular gross sales that

-3-

testimony of Dieterle to meet its burden. Dieterle performed a Google Analytics survey of Shaklee’s
web traffic and computed online sales to customers who either viewed Shaklee’s Healthprint mark
(in the amount of approximately $8 million) or completed a Healthprint questionnaire (in the amount
of approximately $4 million). Shaklee contends that Dieterle’s method is unreliable, because he
failed to use available information to remove sales of non-related products, such as beauty and
household cleaning products. Doc. 174 at 3.2
While the sale of supplements would be directly related to the alleged infringement, the
Plaintiff contends that customers who viewed or used the Healthprint questionnaire could have been
influenced to buy the other products as well, and that it is reasonable to include these products in
the calculation of gross sales, leading to the calculation of approximately $4 million in relevant
gross sales. In the Court’s opinion, the sale of these other products could be reasonably related to
the alleged infringement. The Defendant will have the opportunity at trial to refute this claim and
contest the Plaintiff’s calculation of gross sales. The Court finds Dieterle’s methodology reliable
with respect to this gross sales calculation.3

are reasonably related to the infringing mark. Cf. Thornton v. J Jargon Co., 580 F. Supp. 2d 1261,
1280 (M.D. Fla. 2008). The Plaintiff argues that the sales need not be reasonably related in a
trademark infringement case where disgorgement of profits is being sought. Doc. 241 at 16. While
it is true that the Plaintiff should show evidence of gross sales that are relevant to the infringing
mark, this contention does not help the Defendant, because the sales calculated by Dieterle are
reasonably related to the alleged infringement.
2

Shaklee concedes Mr. Dieterle’s qualification as an expert in the field, and the relevance
prong of Rule 702 is clearly met.
3

With respect to the other calculation of approximately $8 million, the Court finds that
Dieterle’s methodology is unreliable. Mere viewing of the Healthprint mark was the basis of this
gross sales calculation, and indeed, at the evidentiary hearing, the Plaintiff seemed to concede that
the calculation of approximately $4 million was the appropriate one.

-4-

Shaklee argues that Dieterle’s testimony related to an alleged web traffic surge is unreliable
because it is not an “apples to apples” comparison. Doc. 174 at 3. Shaklee explains that, after its
Healthprint launch, it began tracking different domains through Google Analytics. Doc. 174 at 8-9.
Thus, Shaklee argues, Dieterle’s comparison of pre- and post- August 2016 web traffic involving
Shaklee’s Google Analytics account is not a valid comparison. At the evidentiary hearing, Dieterle
testified that he was unaware of the particular Shaklee domains tracked by Google Analytics before
and after August 2016. A comparison of web traffic from two different time periods that fails to
match the domains being tracked during each time period is an unreliable one. Accordingly, the
Court finds that Dieterle’s methodology is unreliable with respect to the web traffic comparison.
IV.

Conclusion

For the foregoing reasons, the Defendant’s Motion to Exclude David Dieterle under Daubert
(Doc. 174) is GRANTED with respect to web traffic, but DENIED in all other respects. At trial,
Dieterle may present the $4,064,939.78 gross sales number to the jury.
DONE and ORDERED in Chambers, Orlando, Florida on May 9, 2018.

Copies furnished to:
Counsel of Record
Unrepresented Party

-5-