Habersham Plantation Corporation et al v. Art & Frame Direct, Inc., et al
Filing
192
ORDER granting in part and denying in part 142 Sealed Motion in limine; denying 143 Sealed Motion in limine; denying 144 Motion in Limine; denying 146 Motion in Limine; granting in part and denying in part 148 Motion in Limine; granting 149 Motion in Limine; denying 150 Motion in Limine; granting 151 Motion in Limine. See Order for details. Signed by Judge James I. Cohn on 9/13/2011. (prd)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
CASE NO. 10-61532-CIV-COHN
HABERSHAM PLANTATION CORPORATION,
a Georgia corporation, and HABERSHAM
INVESTMENT PARTNERSHIP, L.P., a
Georgia corporation,
Magistrate Judge Seltzer
Plaintiffs,
v.
ART & FRAME DIRECT, INC., a Florida corporation,
WORLD OF DECOR, INC., et al,
Defendants.
__________________________________________/
ORDER ON MOTIONS IN LIMINE
THIS CAUSE is before the Court upon Defendants’ Sealed Motion in Limine to
Exclude Speculative Testimony Regarding Copying, Willfulness, Lost Sales, and
Confusion [sealed at DE 142], Defendants’ Sealed Motion in Limine to Limit Plaintiffs’
Damages Claim to Alleged Actual Damages [DE sealed at DE 143], Defendants’ Motion
in Limine to Preclude Plaintiffs from Using Physical Pieces of Their Furniture During
Trial [DE 144], Plaintiffs’ Motion in Limine to Exclude Purely Legal Arguments Before
the Jury [DE 146], Plaintiffs’ Motion in Limine to Exclude Improper Inferences [DE 148],
Plaintiffs’ Motion in Limine to Exclude Arguments Related to Authorship or Ownership
of the Valencia Table [DE 149], Plaintiffs’ Motion in Limine to Exclude Out-of-Context
References to Purported Design Elements and the Scope of Their Copyrights [DE 150],
and Plaintiffs’ Motion in Limine to Exclude Evidence Regarding the Purported
Statements, Conduct and Business Card of a “Man in a Suit” Who Purportedly Visited
Defendants’ Showroom in October 2005 [DE 151], and the parties’ responses to each
of the above motions in limine. The Court has carefully considered all of the above and
is otherwise fully advised in the premises.
I. BACKGROUND1
Plaintiffs Habersham Plantation Corporation and Habersham Investment
Partnership, L.P. (collectively “Plaintiffs” or “Habersham”) filed this action against
various Defendants asserting claims for copyright infringement, trademark infringement,
common law trademark infringement, and trade dress violations under the Lanham Act.
The Defendants are companies based in South Florida and Georgia, and are all owned
by the same three related non-party individuals, in different combinations depending
upon the location and name of the particular Defendant. Plaintiffs allege that
Defendants have violated Habersham’s federally-registered copyrights and trademarks
for certain types of furniture and home decor.
Plaintiffs design, manufacture and distribute their own line of furniture products
that utilize elements from classic European furniture. Plaintiffs incorporate into their
designs off the shelf components manufactured by other companies. Plaintiffs have
obtained copyrights for some of their designs and have pending registrations on many
others. Plaintiffs contend that their protected authorship “is in the collective artistry and
expression in the selection, placement, variation and interplay of the various ornamental
elements.” Joint Pretrial Stipulation, Plaintiffs’ Statement at 3. Defendants are in the
business of selling a variety of home furnishings, including indoor and outdoor furniture.
Defendants do not design or manufacture any of the products they offer, but purchase
1
For the full background, please see the Order Granting in Part and Denying in
Part Motion for Summary Judgment at 1-3 [DE 176].
2
their products from suppliers.
After the parties completed discovery, Defendants moved for summary judgment
as to all claims. The Court denied the motion as to the copyright claim, but granted the
motion as to the trademark and trade dress claims in Counts II, III and IV. The Court
also recently issued rulings on several motions to strike experts [DE 183].2 Prior to
resolution of those motions, both sides filed numerous motions in limine.3
II. DISCUSSION
A. Defendants’ Motion in Limine to Exclude Speculative Testimony
Regarding Copying, Willfulness, Lost Sales, and Confusion
Defendants seek to preclude testimony on various significant issues in the case,
asserting that Plaintiffs have disclosed no evidence on these issues. Plaintiffs contend
that Defendants have based this argument upon selective excerpts of questions and
answers made during depositions. The record as a whole, as argued by Plaintiffs,
reveals otherwise. The Court concludes that this motion is overbroad. If Defendants
have objections to specific evidence because of a discovery violation, they can make
2
The Court denied motions to exclude Michael Pakter (Plaintiff’s damages
expert) and Wallace Epperson (Defendants’ furniture industry expert), while it granted
in part the motion to exclude Defendants’ damages expert, Christopher Bokhart. The
Court ruled that Bokhart’s testimony should be limited to his analysis of lost profits or
royalty rates, without allowing him to opine on manufacturing capability, market demand
or substitution of products in the furniture business, which are outside his area of
expertise (but within the expertise of Wallace Epperson). Earlier today, the Court
entered a written order granting in part and denying in part Plaintiffs’ Motion to Exclude
Defendants’ Expert Sherwood Robertson (design expert) [DE 188].
3
The Court notes that it is usually difficult to rule on motions in limine pretrial,
outside the context of the particular evidence or testimony sought to be offered at trial.
Any ruling contained herein is subject to be revisited at trial if a party “opens the door”
to additional evidence on a particular matter.
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those objections when such evidence is introduced at trial. The Court will grant this
motion in part as to consumer confusion, given that the Court granted summary
judgment to Defendants on Plaintiffs’ trademark and trade dress claims. Plaintiffs may
still introduce evidence that the products are substantially similar in order to prove their
copyright infringement claims.
B. Defendants’ Motion in Limine to Limit Plaintiffs’ Damages Claim
to Alleged Actual Damages
Defendants argue that Plaintiff did not put forth any evidence of Defendants’
profits. The Copyright Act allows a successful plaintiff to recover both its actual
damages plus the infringer’s profits. 17 U.S.C. § 504(b). Defendants contend that the
report of expert Michael Pakter does not contain sufficient evidence of Defendants’
profits.
In response, Plaintiffs argue that they do not need expert testimony to prove
Defendants’ profits, only fact evidence. Plaintiffs state that it is undisputed from the
admissions made by Defendants in this action that Defendants’ gross revenue from the
sale of the infringing goods is at least $2.2 million. As stated in the prior subsection, if
Defendants have specific objections to evidence not disclosed during discovery, they
can make those objections at trial. The Court will deny this motion in limine.
C. Defendants’ Motion in Limine to Preclude Plaintiffs
from Using Physical Pieces of their Furniture During Trial
Defendants contend that Plaintiffs have only produced during discovery nine
physical pieces of the 19 asserted copyright claims. Defendants also assert that
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Plaintiffs have stated at various times during this litigation that the images it has
submitted of its furniture and Defendants’ allegedly infringing furniture are sufficient for
the trier of fact to compare. In response, Plaintiffs state that they intend for the jury to
see the same furniture examples that were produced during discovery. Based upon
this representation, the Court will deny the present motion. If the pieces were produced
during discovery or otherwise available to Defendants, then Plaintiffs are not precluded
from introducing them into evidence.
D. Plaintiffs’ Motion in Limine to Exclude Purely Legal Arguments Before the Jury
Plaintiffs seek to preclude Defendants from making arguments to the jury
regarding copyrightability, which they contend is a legal issue for the Court to decide. In
response, Defendants correctly point out that there are mixed issues of fact and law that
make up a copyright claim. See Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1541 (11th
Cir. 1996) (“plaintiff must prove that the work. . . is original and that plaintiff complied
with the statutory formalities”); Letterese v. World Inst. Of Scientology, 533 F.3d 1287,
1300 (11th Cir. 2008) (whether the defendant, as a factual matter, copied portions of
plaintiff’s [work]; and whether, as a mixed issue of law and fact, those elements of the
[copyrighted work] that have been copied are protected expression); BUC Int’l Corp. V.
Int’l Yacht Council Ltd., , 489 F.3d 1129, 1151 (11th Cir. 2007).
Consistent with the recent rulings this Court has made in this action regarding the
admissibility of the testimony of Defendants’ expert Robertson, there are factual issues
regarding what is original in Plaintiffs’ copyrights. Therefore, this motion in limine is
denied.
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E. Plaintiffs’ Motion in Limine to Exclude Improper References
Plaintiffs seek to prevent Defendants from arguing or presenting evidence to the
jury regarding the delay that existed between the time Habersham designed certain
pieces of furniture and when Habersham filed copyright registrations, as well as any
errors or omissions in those registrations. Plaintiffs also seek to exclude argument that
Plaintiffs could have sought a design patent to better protect their furniture designs.
In response, Defendants argue that part of the validity issue is factual in nature.
As the Court discussed in its order regarding summary judgment, Defendants are correct
that there are disputed issues of material fact regarding Plaintiff’s knowledge and
scienter regarding the information submitted on the copyright registrations for the
Hatfield Occasional Table, Florentina Bed with Garland, and Valencia Table. See Order
Granting in Part and Denying in Part Motion for Summary Judgment at 5-6 [DE 176].
Therefore, Defendants can present evidence and argument regarding what actually
happened with Plaintiffs’ registrations, as this is relevant evidence to fact issues.
However, the motion in limine is granted as to what actions Habersham “could” have
taken, such as obtaining design patent protection, since this is speculation not relevant
to an issue in this case.
F. Plaintiffs’ Motion in Limine to Exclude Arguments Related
to Authorship or Ownership of the Valencia Table
Plaintiffs argue that Defendants should be excluded from arguing that Fred Von is
the author of the sculptural elements of the Valencia Table, the making Plaintiffs’
copyright potentially invalid. Fred Von testified at his deposition that while he designed
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the table legs, he did not believe he owned anything, and that the design was Plaintiffs’
“property.” Deposition of Albert von Oelschlaeger at 45, Exhibit K to Plaintiff’s Response
to Statement of Facts [sealed at DE 119-9]. Plaintiffs also contend that Defendants
have no standing to contest an oral assignment, or work for hire agreement, that Von
gave to Plaintiffs.
In response, Defendants argue that material omissions in a copyright registration
application can lead to a finding of invalidity. While this is a correct statement of the law
that the Court discussed in its summary judgment order,4 the Court now concludes as a
matter of law that whether or not Fred Von is a co-author of the Valencia Table design,
Habersham was also an author of the Valencia Table based upon Robert Williams’
work. Moreover, since Fred Von never questioned Plaintiffs’ ownership of the design,
there was no material omission made to the Copyright office as to this particular
registration. The motion in limine is therefore granted.
G. Plaintiffs’ Motion in Limine to Exclude Out-of-Context References to the
Purported Design Elements and the Scope of their Copyrights
Plaintiffs seek to limit Defendants from describing the elements of its furniture
designs in a piece meal fashion because Plaintiff’s copyrights are based upon the
designs as a whole. In response, Defendants argue that the jury must decide whether
the designs have sufficient originality – thus Defendants must be allowed to argue that
there is no originality. While the Court recognizes that Plaintiffs’ basis for originality is
4
See Order Granting in Part and Denying in Part Motion for Summary Judgment
at 6 [DE 176].
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one of compilation and its original arrangement, selection and coordination of preexisting elements, which the Court can explain to the jury in its instructions, Defendants
should not be precluded from arguing that there is no originality. The Court, therefore,
denies this motion in limine.
H. Plaintiffs’ Motion in Limine to Exclude Evidence Regarding the Purported
Statements, Conduct and Business Card of a “Man in a Suit” who purportedly
visited Defendants’ showroom in October 2005
Plaintiffs seek to exclude testimony from Defendants’ employees regarding an
incident in 2005, when a “man in a suit” visited Defendants’ showroom. After looking at
Defendants’ furniture and being approached by an employee of Defendants, the
unidentified man said that he was admiring the furniture, gave the employee a business
card identifying him as working for Habersham, and told her that he would be contacting
Defendants’ owner. Plaintiffs contend that any statements from the man are hearsay,
while Defendants contend they are not being offered for their truth.
Until the man is identified as an agent of Plaintiffs, this testimony regarding what
the man said would be hearsay. Even if he is identified as an agent of Plaintiffs, it is not
clear why this testimony is relevant, though perhaps it tends to show when Plaintiffs
discovered that Defendants were selling infringing goods. See Order Granting in Part
and Denying in Part Motion for Summary Judgment at 15-17 [DE 176]. The Court
concludes that this motion in limine should be granted, though Defendants may proffer
the evidence outside the presence of the jury to allow the Court to determine its
admissibility.
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III. CONCLUSION
Accordingly, it is hereby ORDERED AND ADJUDGED as follows:
1.
Defendants’ Sealed Motion in Limine to Exclude Speculative Testimony
Regarding Copying, Willfulness, Lost Sales, and Confusion [sealed at DE 142] is
hereby GRANTED in part as issues of consumer confusion, and DENIED in all
other respects;
2.
Defendants’ Sealed Motion in Limine to Limit Plaintiffs’ Damages Claim to Alleged
Actual Damages [DE sealed at DE 143] is hereby DENIED;
3.
Defendants’ Motion in Limine to Preclude Plaintiffs from Using Physical Pieces of
Their Furniture During Trial [DE 144] is hereby DENIED;
4.
Plaintiffs’ Motion in Limine to Exclude Purely Legal Arguments Before the Jury
[DE 146] is hereby DENIED;
5.
Plaintiffs’ Motion in Limine to Exclude Improper Inferences [DE 148] is hereby
GRANTED in part as to any discussion of actions Habersham could have taken,
such as obtaining design patent protection, and DENIED in all other respects;
6.
Plaintiffs’ Motion in Limine to Exclude Arguments Related to Authorship or
Ownership of the Valencia Table [DE 149] is hereby GRANTED;
7.
Plaintiffs’ Motion in Limine to Exclude Out-of-Context References to Purported
Design Elements and the Scope of Their Copyrights [DE 150] is hereby DENIED;
8.
Plaintiffs’ Motion in Limine to Exclude Evidence Regarding the Purported
Statements, Conduct and Business Card of a “Man in a Suit” Who Purportedly
Visited Defendants’ Showroom in October 2005 [DE 151] is hereby
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GRANTED.
DONE AND ORDERED in Chambers at Fort Lauderdale, Broward County,
Florida, this 13th day of September, 2011.
Copies to:
All counsel of record
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