Health & Sun Research, Inc. et al v. Designer Skin LLC

Filing 60

ORDER granting in part and denying in part 47 Motion in Limine. See Order for details. Signed by Judge Virginia M. Hernandez Covington on 11/25/2013. (KAK)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
HEALTH & SUN RESEARCH, INC.
d/b/a Kava Kava Intl. and
Vegas Tan,
Plaintiff,
v.

Case No. 8:12-cv-2319-T-33MAP

AUSTRALIAN GOLD, LLC,
Defendant,
________________________________/
AUSTRALIAN GOLD, LLC,
Counter-Plaintiff,
v.
HEALTH & SUN RESEARCH, INC.
d/b/a Kava Kava Intl. and
Vegas Tan,
Counter-Defendant.
______________________________/
ORDER
This matter comes before the Court pursuant to Australian
Gold, LLC’s Motion in Limine (Doc. # 47), which was filed on
September 13, 2013.

Health and Sun Research, Inc. filed a

Response in Opposition to the Motion in Limine (Doc. # 52) on
September 27, 2013.

For the reasons that follow, the Motion

in Limine is granted in part and denied in part.
I.

Discussion
Australian Gold seeks an Order barring Health and Sun

from introducing evidence on six topics at trial: (1) evidence

of “actual confusion;” (2) exemplars of Health and Sun’s
Purple Rain and Royal Flush products; (3) testimony by a
Health and Sun representative on any topics for which Health
and

Sun’s

Rule

30(b)(6),

Fed.

R.

Civ.

P.,

corporate

representative was not knowledgeable; (4) evidence concerning
the distribution of Health and Sun’s products by Ultraviolet
Resources International; (5) lost profits evidence; and (6)
evidence regarding management changes at Australian Gold. The
Court will address each issue below.
1.

Actual Confusion

In response to the Motion in Limine, Health and Sun
“agrees” that it “has not uncovered any evidence of actual
confusion between its asserted Purple Rain and Royal Flush
trademarks and those products subsequently marketed and sold
by Australian Gold under the Purple Reign and Royal Flush
marks.” (Doc. # 52 at 3).

Health and Sun also remarks that

“while there was no evidence of actual confusion adduced
during discovery in the instant case, Health & Sun can still
easily meet its burden to establish a likelihood of confusion
between the respective products.” Id.
Because Health and Sun agrees that it will not present
evidence of actual confusion during the trial, Australian
Gold’s request for an Order barring the introduction of actual
2

confusion evidence is denied as moot.
2.

Exemplars of Purple Rain and Royal Flush

During discovery, Australian Gold requested that Health
and Sun produce “an exemplar of each product sold by Health &
Sun having either of the Purple Rain or Royal Flush marks
affixed thereto.” (Doc. # 47 at 4).

Health and Sun responded

that it would produce the requested items. (Doc. # 47-2 at
10).

However, it is undisputed that Health and Sun never

tendered an exemplar to Australian Gold for either Purple Rain
or Royal Flush.
In response to the Motion in Limine, Health and Sun
indicates: “[d]espite not having any current inventory in its
possession for production to Australian Gold, Health & Sun
submits that it should be permitted to enter such exemplars
into evidence to the extent they can be obtained from a third
party source and authenticated at trial.” (Doc. # 52 at 4).
Health and Sun also maintains that “Australian Gold cannot
claim to be prejudiced by the introduction of authenticated
exemplars wherever they are obtained as Health & Sun produced
numerous photographs of the products from advertisements,
catalog pages, etc. during the course of discovery.” (Id.).
The

record

reflects

that

Australian

Gold

requested

exemplars of the two products at issue during discovery and
3

that Health and Sun did not produce any exemplar of the
products.

To the Court’s knowledge, Australian Gold is still

without a sample of Health and Sun’s Royal Flush or Purple
Rain products.
At this late juncture, Health and Sun contends that it
should be permitted to introduce “authenticated” bottles of
its Royal Flush and Purple Rain products; however, Health and
Sun has not adequately explained why it failed to provide such
“authenticated” products to its adversary during discovery.
In this action, in which Health and Sun claims that
Australian Gold infringed its trademarks, exemplars of the
trademarked products in question are highly relevant.

In

addition, Australian Gold’s request for physical samples of
Purple Rain and Royal Flush was neither unduly burdensome nor
overly broad.

Furthermore, the Court is not persuaded that

Health and Sun’s failure to provide exemplars of the products
was harmless.

The Court can envision a scenario where

providing a photograph of a product, rather than an exemplar
of the actual product, would be justified, such as when the
product

in

valuable.

question

is

massive,

dangerous,

or

extremely

This is not the case with small bottles of tanning

lotion.

4

The Federal Rules of Civil Procedure “strongly favor full
discovery whenever possible.” Farnsworth v. Procter & Gamble
Co., 758 F.2d 1545, 1547 (11th Cir. 1985).

The purpose of

discovery under the Federal Rules of Civil Procedure is to
require the timely disclosure of relevant information to aid
in the ultimate resolution of disputes in a civil action.
United States v. Procter & Gamble Co., 356 U.S. 677, 682
(1958).

These Rules “make a trial less a game of blindman’s

buff and more a fair contest with the basic issues and facts
disclosed to the fullest practicable extent.” Id.

“The

concept of trial by ambush has long ago fallen into desuetude
in both state and federal courts.” Perfect Web Techs. v.
InfoUSA, Inc., No. 07-80286, 2008 U.S. Dist. LEXIS 20761, at
*4-5 (S.D. Fla. Mar. 17, 2008).

The Court grants the Motion

in Limine as to physical exemplars of Health and Sun’s Purple
Rain and Royal Flush products.

Based on its failure to

disclose

of

any

physical

exemplars

its

products

during

discovery, Health and Sun may not introduce exemplars of its
Purple Rain and Royal Flush products during trial.
3.

30(b)(6) Corporate Representative

Australian

Gold

asserts

that

“Health

&

Sun’s

Rule

30(b)(6) corporate designee [Mr. Carollo] was unprepared or
unable to provide knowledgeable answers on a variety of
5

noticed topics.” (Doc. # 47 at 5).
the

following

specific

topics

on

Australian Gold points to
which

Mr.

Carollo

was

allegedly unable to provide informative deposition testimony
and seeks an Order barring Health and Sun from offering
evidence on such topics:
Topic No. 6 Plans, investments, intentions, or
efforts to resume and/or increase sales of ROYAL
FLUSH products during the years 2005 to the
present.
Topic No. 7 Plans, investments, intentions, or
efforts to resume and/or increase sales of PURPLE
RAIN products during the years 2005 to the present.
Topic No. 12 All internet, radio, television and
print advertising Health & Sun has broadcast and/or
published in the United States including or
referring to the PURPLE RAIN or ROYAL FLUSH marks;
including the identification (title, number, or
otherwise) of each advertisement and the date(s)
and location(s) for each such advertisement.
Topic No. 13 The dollar amount of advertising and
promotional expenditures in each different type of
media utilized by Defendant to promote its goods or
services in conjunction with the PURPLE RAIN and
ROYAL FLUSH marks.
(Id. at 6).
Health and Sun agrees that Mr. Carollo did not know the
answers to some of the questions posed during his 30(b)(6)
deposition, but correctly argues that a 30(b)(6) deponent does
not have to be “perfect.”
Enters.,

277

F.R.D.

See QBE Ins. Corp. v. Jorda

676,

690

(S.D.

Fla.

Jan.

30,

2012)(“Absolute perfection is not required of a 30(b)(6)
witness. The mere fact that a designee could not answer every
6

question on a certain topic does not necessarily mean that the
corporation failed to comply with its obligation.”).
The

Court

has

reviewed

Mr.

Carollo’s

testimony

and

determines that his answers to deposition questions were not
so vague and deficient as to warrant an Order barring Health
and Sun from providing evidence on the topics enumerated
above.

However, the Court notes that Health and Sun is bound

to the answers given by Mr. Carollo during his Rule 30(b)(6),
Fed. R. Civ. P., deposition.

As explained in QBE Insurance

Corporation,
When a corporation’s designee legitimately lacks
the ability to answer relevant questions on listed
topics and the corporation cannot better prepare
that witness or obtain an adequate substitute, then
the “we-don’t-know” response can be binding on the
corporation and prohibit it from offering evidence
at trial on those points. Phrased differently, the
lack of knowledge answer is itself an answer which
will bind the corporation at trial.
277 F.R.D. at 690.

In the instance that Health and Sun

attempts to provide testimony or evidence at trial which
differs

from

the

answers

provided

during

Mr.

Carollo’s

deposition, Australian Gold should bring the matter to the
Court’s

attention.

Health

and

Sun

is

reminded:

“The

conclusion that the corporation is bound at trial by a
legitimate

lack

of

knowledge

7

response

at

the

30(b)(6)

deposition is, for all practical purposes a variation on the
rule and philosophy against trial by ambush.” Id.
Thus, the Court declines to enter an Order placing a
complete bar on Health and Sun’s ability to offer testimony on
topics 6, 7, 12, and 13 described above.

However, Health and

Sun is bound by the answers provided by Mr. Carollo during his
30(b)(6) deposition.
4.

Ultraviolet Resources

Australian Gold seeks an Order barring Health and Sun
from

offering

evidence

about

Ultraviolet

Resources

International, which is a distributor of Health and Sun’s
products.

Australian Gold explains that Health and Sun did

not identify Ultraviolet Resources or its agent, Mr. Hayes, in
Health and Sun’s Rule 26, Fed. R. Civ. P., initial disclosures
or in its interrogatory responses.

Australian Gold indicates

that the only notice it received about Ultraviolet Resources
came on June 28, 2013, three weeks before the July 19, 2013,
discovery deadline, when Health and Sun produced to Australian
Gold an email communication from Mr. Hayes. (Doc. # 47-5).
In response to Australian Gold’s assertion that evidence
about Ultraviolet Resources should be barred, Health and Sun
argues that when it prepared its initial disclosures, it was

8

not aware that it would offer Mr. Hayes or Ultraviolet
Resources’s representatives as potential witnesses. (Doc. # 52
at 11).
claim

Health and Sun also argues that Australian Gold can

neither

surprise

nor

prejudice

as

to

Ultraviolet

Resources because information about Ultraviolet Resources was
disclosed during discovery.

Furthermore, as to the specific

email communication from Mr. Hayes in question, Health and Sun
indicates that it sent the email communication directly to
Australian Gold on the same day that Health and Sun received
the email communication. (Id.).
Rule 37(c), Fed. R. Civ. P., provides that “if a party
fails to provide information or identify a witness as required
by Rule 26(a) or (e), the party is not allowed to use that
information or witness to supply evidence on a motion, at a
hearing, or at a trial, unless the failure was substantially
justified or is harmless.”

As explained in Mitchell v. Ford

Motor Co., 318 F. App’x 821, 824 (11th Cir. 2009), “[t]he
burden

of

establishing

that

a

failure

to

disclose

was

substantially justified or harmless rests on the nondisclosing
party.”

Furthermore, “in determining whether the failure to

disclose was justified or harmless, [the Court] consider[s]
the non-disclosing party’s explanation for its failure to

9

disclose, the importance of the information, and any prejudice
to the opposing party if the information had been admitted.”
Lips v. City of Hollywood, 350 F. App’x 328, 340 (11th Cir.
2009).
It is undisputed that Health and Sun failed to include
Ultraviolet Resources on its initial disclosures.

However,

Health and Sun alerted Australian Gold about Ultraviolet
Resources prior to the discovery deadline.
Mr.

Carollo

provided

testimony

On June 26, 2013,

identifying

Ultraviolet

Resources as a distributor. (Doc. # 48-1 at 22:22-23:1).
addition,

Health

and

Sun

forwarded

the

Hayes

In

email

communication to Australian Gold on June 28, 2013, the same
day that Health and Sun received the email communication.
Health and Sun asserts that “Australian Gold had ample notice
of

the

information

distribution

of

regarding

Purple

Rain

[Ultraviolet
and

could

Resources’s]

have

additional discovery had they chosen to do so.

conducted

Instead, they

opted to forego investigating this information in hopes they
could later rely on allegations of prejudice after the close
of discovery.” (Doc. # 52 at 12-13).
The Court determines that Health and Sun’s failure to
disclose Ultraviolet Resources is excusable under the facts

10

presented because Health and Sun provided information to
Australian Gold about Ultraviolet Resources during the course
of discovery. See, e.g., Little v. Groome Transp. of Ga.,
Inc., No. 1:07-cv-455-JOF, 2008 U.S. Dist. LEXIS 83701, at
*13-14 (N.D. Ga. Sept. 15, 2008)(finding that “there could be
no

unfair

surprise

in

the

production

of

.

.

.

[the]

declaration” of a witness not listed on an initial disclosure
because the identity of the witness was made known during
discovery).
However, Australian Gold asserts that, although it was
made aware of the information about Ultraviolet Resources
approximately three weeks prior to the close of discovery, it
did not have sufficient time to conduct meaningful discovery
prior

to

the

discovery

deadline.

Rather

than

imposing

discovery sanctions against Health and Sun under Rule 37, Fed.
R. Civ. P., as requested by Australian Gold, the Court will
ameliorate

any

prejudice

Australian

Gold

sustained

by

reopening discovery for 30 days for the limited purpose of
allowing Australian Gold to seek expedited discovery from
Ultraviolet Resources regarding Health and Sun.

Accordingly,

the Motion in Limine is denied without prejudice as to
Ultraviolet Resources and the email communication from Mr.

11

Hayes.
5.

Lost Profits

Australian Gold asserts that Health and Sun has “no
evidence to satisfy the criteria to even present a lost
profits claim.” (Doc. # 47 at 11).

Among other things,

Australian Gold indicates that Health and Sun’s expert, Gary
Raines, provided a deficient expert report and that Health and
Sun “admitted that it did not know of any sales lost to
Australian Gold’s products.” (Id.).
Health and Sun points out that its expert addresses the
issue of lost profits and “[b]ased on his review of the record
evidence, Mr. Raines opined that Health & Sun suffered actual
damages in an amount equal to the number of infringing units
sold by Australian Gold multiplied by Health & Sun’s average
profit per unit of its Purple Rain and Royal Flush products.”
(Doc. # 52 at 13).

Australian Gold previously sought to

exclude Mr. Raines’s expert testimony (Doc. # 44), and this
Court denied the request to exclude Mr. Raines’s testimony
without prejudice. (Doc. # 57).

The Court declines to

foreclose Health and Sun’s avenue to lost profits damages
based on two paragraphs of argument buried in Australian
Gold’s voluminous Motion in Limine.

12

The Motion in Limine is

thus denied as to Health and Sun’s demand for lost profits.
6.

Management Changes at Australian Gold

Australian Gold seeks an Order barring reference to
“legal disputes among investors in Australian Gold and its
related companies [that] have resulted in certain changes in
its management and personnel.” (Doc. # 47 at 12).

Australian

Gold seeks an Order specifically prohibiting Health and Sun
from mentioning John Menard, Stephen Hilbert, Tomisue Hilbert,
Eric Webber, Lisa Trudeau, and Scott Matthews.

Australian

Gold also notes that, as to Mr. Matthews, Health and Sun
should be limited to explaining that Mr. Matthews “is no
longer with the company.” (Id.).
The final issue presented in the Motion in Limine appears
to be moot.

Health and Sun indicates:

While Health & Sun largely agrees with Australian
Gold that the disputes amongst these individuals
are unrelated to the instant case, it would agree
to exclude references to John Menard, Stephen
Hilbert, Tomisue Hilbert and Lisa Trudeau at trial
with the caveat that if these individuals or the
subject disputes come up during Australian Gold’s
cross examination of any Health & Sun witnesses or
during Australian Gold’s case-in-chief, Health &
Sun should be allowed to further inquire as to
those issues raised during such testimony. Finally,
with regard to Scott Matthews, Health & Sun is
agreeable to making reference to Mr. Matthews “no
longer being with the company” as Australian Gold
proposes.

13

(Doc. # 52 at 13-14).1

Taking into consideration Health and

Sun’s response to the Motion in Limine as to the management
changes at Australian Gold and other issues, the Court finds
the issue to be moot.
Accordingly, it is
ORDERED, ADJUDGED, and DECREED:
Australian Gold, LLC’s Motion in Limine (Doc. # 47) is
GRANTED IN PART AND DENIED IN PART

consistent with the

foregoing.
DONE and ORDERED in Chambers in Tampa, Florida, this 25th
day of November, 2013.

Copies:

All Counsel of Record

1

Health and Sun does not mention Eric Webber in its
Response in Opposition to the Motion in Limine. The Court
presumes that Health and Sun’s omission of Mr. Webber in its
analysis is due to a scrivener’s error. However, in the
instance that Health and Sun takes a different position as to
Mr. Webber, Health and Sun should advise the Court prior to
the scheduled pretrial conference.
14