Bogart LLC v. Ashley Furniture Industries Inc et al
Filing
55
ORDER denying 32 Motion; denying 33 Motion for Summary Judgment. Ordered by Judge Clay D. Land on 08/28/2012.(aaf)
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF GEORGIA
ATHENS DIVISION
BOGART, LLC,
*
Plaintiff,
*
vs.
*
CASE NO. 3:10-CV-39 (CDL)
ASHLEY
FURNITURE
INDUSTRIES, *
INC. (d/b/a ASHLEY FURNITURE),
ASHLEY FURNITURE HOMESTORE, and *
DOES 1 through 10,
*
Defendants.
O R D E R
Plaintiff Bogart, LLC (“Plaintiff”) owns the intellectual
property
rights,
including
trademark
and
publicity
rights,
associated with the late actor Humphrey Bogart and during times
pertinent to this litigation owned the trademarks “Bogart” and
“Humphrey
Bogart.”
Plaintiff
alleges
that
Defendants
(collectively “Ashley”), without permission, used the “Bogart”
mark in connection with the naming, marketing, and sale of a
collection of three pieces of furniture introduced in 2008 and
branded the “Bogart Ocean” collection.
Based on this alleged
wrongful use of the “Bogart” mark, Plaintiff filed the present
action, asserting federal law claims for false designation of
origin, trademark infringement, and trademark dilution under the
Lanham Act, 15 U.S.C. §§ 1114, 1125, and various related state
law claims.
In support of its damages, Plaintiff relies in part
on the expert opinions of Jon Albert (“Albert”) regarding the
fair market value for the use of Humphrey Bogart’s name.
Ashley has filed a Motion for Summary Judgment (ECF No. 33)
that is currently pending before the Court.
Ashley also filed a
Motion to Exclude Opinions and Report of Jon Albert (ECF No.
32).
As discussed below, the Court finds that Albert’s opinions
are sufficiently reliable to be considered in deciding Ashley’s
motion
for
summary
judgment.
Finding
that
genuine
disputes
exist as to the material facts, the Court denies Ashley’s Motion
for Summary Judgment (ECF No. 33), as explained more fully in
the remainder of this order.
SUMMARY JUDGMENT STANDARD
Summary judgment may be granted only “if the movant shows
that there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.”
Civ. P. 56(a).
In determining whether a
genuine
Fed. R.
dispute of
material fact exists to defeat a motion for summary judgment,
the evidence is viewed in the light most favorable to the party
opposing summary judgment, drawing all justifiable inferences in
the opposing party’s favor.
477 U.S. 242, 255 (1986).
Anderson v. Liberty Lobby, Inc.,
A fact is material if it is relevant
or necessary to the outcome of the suit.
Id. at 248.
A factual
dispute is genuine if the evidence would allow a reasonable jury
to return a verdict for the nonmoving party.
2
Id.
FACTUAL BACKGROUND
The evidence, viewed in the light most favorable to the
Plaintiff, reveals the following.
I.
Plaintiff
Agreement
Bogart,
LLC
Id. at 255.
and
the
Thomasville
Licensing
Plaintiff is an intellectual property holding company that
owns
the
trademark
and
publicity
rights
legendary film actor Humphrey Bogart.
of
the
deceased
Pl.’s Mem. in Opp’n to
Defs.’ Mot. for Summ. J. [hereinafter Pl.’s Resp.] Ex. A, Bogart
Decl. ¶¶ 4-7, ECF No. 43-l; Pl.’s Resp. Ex. B, de Klerk Decl. ¶¶
5 & 8, ECF No. 43-4.
federally
Specifically, Plaintiff presently owns the
registered
connection
with
mark
“HUMPHREY
“clothing;
BOGART”
namely,
sweatshirts, hats, coats and pants.”
for
shirts,
use
in
T-shirts,
Defs.’ Reply Br. in Supp.
of Defs.’ Mot. for Summ. J. Ex. K, Trademark Search Results, ECF
No. 50-3.
Plaintiff also owned “the U.S. federally registered
trademark/word
International
mark
Class
‘Bogart’
020
(Serial
(furniture)”
mark cancel on March 4, 2011.
until
No.
75892483)
Plaintiff
de Klerk Decl. ¶¶ 6-7.
let
in
the
Prior to
letting the “Bogart” mark cancel, Plaintiff applied for broader
protection for the “Bogart” mark in April 2010 based on its
actual use being broader than the definition as filed under
furniture class 020.
Id. ¶ 7.
Plaintiff licensed the use of
the “Bogart” trademark and Humphrey Bogart’s publicity rights on
3
more than one hundred occasions to a wide variety of businesses.
Id.
¶
9.
In
each
of
those
licensing
deals,
third-party
licensees paid for the use of Plaintiff’s intellectual property
through
a
advance
royalty
or
rate/percent
guarantee.
Id.
of
¶¶
sales
10-11;
accompanied
Bogart
by
Decl.
an
¶
8.
Plaintiff further policed unauthorized third-party use of its
intellectual property that implied a connection, affiliation, or
endorsement by Humphrey Bogart or Plaintiff.
de Klerk Decl. ¶
11.
Plaintiff entered into a licensing agreement with furniture
retailer
Thomasville
in
2001
to
name
and
brand
a
line
of
furniture, including residential sofas and chairs, ultimately
branded the “Bogart Collection” by Thomasville.
9.
Bogart Decl. ¶
This collection aims to link the furniture with the persona
and lifestyle of Humphrey Bogart.
Id.; Defs.’ Mot. for Summ. J.
Ex. F, Bogart Dep. 43:16-44:24, ECF No. 37-3.
The Thomasville
Bogart Collection was marketed in the national media, including
magazines and national television commercials.
15-17.
Bogart Decl. ¶¶
Thomasville marketed the collection by employing the
authorized
use
combinations:
the
of
the
name
following
“Bogart”;
alone
and
photographs
and
in
various
images
of
Humphrey Bogart; the full name “Humphrey Bogart”; and references
to Humphrey Bogart’s life and career.
Dep. 44:25-45:21, 46:14-49:12.
Bogart Decl. ¶ 18; Bogart
The furniture continues to be
4
sold
at
independently
owned
Thomasville
independent furniture retailers.
“[Under]
stores
and
other
Bogart Decl. ¶¶ 13-14.
the Thomasville Deal, Bogart, Inc. (Plaintiff’s
predecessor-in-interest)
was
to
receive
a
royalty
payment
(ranging from 3% to 3.75%) based on Thomasville’s net sales of
the
Bogart
Collection,
with
Thomasville of $100,000.00.”
annual
guaranteed
Id. ¶ 10.
payments
by
These royalties have
amounted to more than five million dollars between 2003 and the
end of 2011.
Id. ¶ 12.
Plaintiff
has
not
entered
into
agreement with a furniture company.
any
other
licensing
Id. ¶ 9; Bogart Dep. 28:7-
13.
II.
Ashley Furniture and the Bogart Ocean Collection
Ashley
furniture
is
a
privately
throughout
the
owned
United
furniture
States
and
company,
selling
internationally.
Defs.’ Mot. for Summ. J. Ex. A, Lebensburger Decl. ¶ 2, ECF No.
33-2.
Ashley
products,
manufactures
including
the
and
Bogart
sells
Ocean
residential
furniture
furniture
collection
at
issue in this action, through corporate owned and independently
licensed Ashley Furniture HomeStores in the United States and
abroad,
independent
retailers.
18:11,
retailers,
and
independent
internet
Id.; Pl.’s Resp. Ex. D, Lebensburger Dep. 17:21-
147:10-148:3,
237:7-238:21,
ECF
No.
43-6.
competes with Thomasville in the furniture industry.
5
Ashley
Id. at
99:22-100:6.
As
discussed
below,
Ashley
maintains
that
its
Bogart Ocean collection is not intended to refer to Humphrey
Bogart.
A.
Identifier Labels and Product Naming
All
Ashley
reference
and
products
track
have
the
Lebensburger Decl. ¶ 4.
two
identifier
products
for
labels
sale
and
used
to
delivery.
One label has a seven digit number
identifying the product. Id.
A separate label contains a non-
numeric product identifier composed of two words, the second of
which
generally
refers
to
the
product’s
product identifier” or “non-numeric label”).
Ashley
proffers
that
the
first
word
color
(“non-numeric
Id.
of
the
non-numeric
label is “typically the name of a city, park, river, or other
publically known term.”
Id.
Plaintiff disputes this fact and
points to evidence that Ashley also uses celebrity figures’ last
names and Hollywood/movie terms as the first word in the nonnumeric product identifier.
Ex.
6,
Email
from
D.
Pl.’s Resp. Ex. M, Adair Dep. Pl.’s
Sanders
to
gibbs.rob@stevensdirect.com
(Nov. 4, 2010), ECF No. 43-15 at 3 [hereinafter Adair Dep. Ex.
6]
(listing
Ashley
products
by
the
two-word
label
names,
including first words which are names known to be last names of
celebrities, including but not limited to Gable, Brando, Carson,
Monroe, and Presley); Pl.’s Resp. Ex. M, Adair Dep. Ex. 7, Email
6
from
R.
DeBord
to
tdebord511@gmail.com
(Jan.
17,
2009)
(including Price List), ECF Nos. 43-15 at 20 to 43-16 at 21.
Ashley does not have licenses for the use of third-party
names
or
brands
Decl. ¶ 3.
associated
with
its
products.
Lebensburger
Ashley also claims that it does not use celebrity
endorsements to sell its products.
Id.
Plaintiff disputes that
assertion and points to evidence that Ashley has used celebrity
endorsements and what appear to be celebrity names to sell its
products.
See,
e.g.,
Pl.’s
Resp.
Ex.
F,
Adair
Dep.
164:5-
167:23, ECF No. 43-8 (discussing Ashley product names); Adair
Dep.
Ex.
6
Ashley
(listing
Ashley
Furniture
fabric
names);
TV
Spot,
http://www.youtube.com/watch?v=jy73lk7Boas
2010).
DeAngelo
Williams
YouTube,
(posted
Sept.
13,
In support of its contention, Plaintiff points to the
following names of Ashley furniture collections:
Brando-Cocoa,
Newman–Oyster,
Presley-Café,
and
Gable-Mocha,
Bogart-Ocean.
Adair Dep. Ex. 6.
B.
The Bogart Ocean Collection
In 2008, Ashley introduced three pieces of furniture using
the
non-numeric
numeric
product
product
identifier
identifiers
Lebensburger Decl. ¶ 5.
8000029,
“Bogart
Ocean”
8000048,
and
and
the
8000049.
These products were always identified
with both words “Bogart” and “Ocean” and never one of those
words alone.
Id.
The Bogart Ocean line was not successful and
7
was discontinued in 2009.
Bogart
Ocean
furniture
Thomasville’s
Humphrey
Id. ¶ 17.
was
Bogart
Ashley asserts that its
distinct
to
Collection
consumers
because
from
the
was
less
it
expensive, of a lower quality, and a different design.
15-16
(stating
“inexpensively
that
the
furniture
overstuffed
upholstery
contemporary in style and design”).
distinction,
pointing
to
collection
Ashley’s
Id. ¶¶
consisted
that
is
of
clearly
Plaintiff disputes this
testimony
that
their
upholstered furniture prices were low to medium, rather than
inexpensive.
Lebensburger Dep. 100:7-22 (stating that Ashley
sells “bedroom sets up to $3,000, from $300 retail” and defining
that price point as “low to medium-high”).
Specifically, the
Bogart Ocean sectional reclining sofa has a suggested retail
price of $1,788.00, and the suggested retail price of the Bogart
Ocean recliner chair is at least $377.98.
de Klerk Decl. Ex.
BB, ECF No. 43-4 at 14-16 (listing retail price of Bogart Ocean
recliner at ZFurniture.Com as $377.98 and listing retail price
of Bogart Ocean sectional as $1,788.00 and recliner as $578.00
at United Furniture Club).
Ashley claims that branding the Bogart Ocean collection had
nothing to do with Humphrey Bogart.
See Defs.’ Mot. for Summ.
J. Ex. B, Adair Decl. ¶ 5, ECF No. 33-4.
Lisa Adair (“Adair”),
who is charged with picking Ashley’s product identifier names,
branded
the
Bogart
Ocean
collection.
8
Id.
¶
2.
Adair
was
familiar
with
Thomasville’s
recalled
seeing
some
of
Humphrey
Bogart
Thomasville’s
Collection
marketing
regarding that collection using the term “Bogart.”
171:4-5, 172:2-14.
and
materials
Adair Dep.
Adair claims that although she did not keep
records of the process used to choose the name of the line, she
believes the name Bogart Ocean was chosen as follows:
I have looked into the matter since this lawsuit was
filed, and I believe that the word “Bogart” in the
Bogart Ocean product was most likely chosen from a
list of city names and was based upon the city Bogart,
Ga.
It is common that the first words in Ashley
product reference labels are city names. At the time
that the Bogart Ocean product was introduced into the
market,
approximately
one-third
of
the
product
reference labels for Ashley products used the name of
a city. Also, there were other furniture collections
introduced at the same Las Vegas furniture market in
2008 when Bogart Ocean was introduced and many of
these used a first name based upon a city name,
including Boston, Rochester, Bridgeport, Bayport,
Rockingham, and Dalton. One of these groups was named
after another city in Georgia (Dalton, Ga) which
proves that a list of city names in Georgia was part
of the information being relied upon when product
reference labels were developed for products at this
furniture market. The word “Ocean” was chosen because
“Ocean” is a creative way to refer to the color blue.
Bogart Ocean was blue colored upholstery.
The selection of the product reference label “Bogart
Ocean” had nothing to do with the actor Humphrey
Bogart.
Adair Decl. ¶¶ 4-5.
Plaintiff
collection
Bogart,
disputes
“Bogart
and,
for
Ashley’s
Ocean”
had
purposes
of
claim
nothing
the
9
to
pending
that
do
naming
the
with
Humphrey
summary
judgment
motion, it maintains that a genuine factual dispute exists as to
this issue.
It argues that the evidence suggests that Ashley
specifically named the Bogart Ocean collection after Humphrey
Bogart to profit and trade on the success of that celebrity
persona
and
Collection.
the
success
of
the
Thomasville
Humphrey
Bogart
Adair equivocates as to the origin of the name and
does not absolutely rule out the Humphrey Bogart connection, but
she simply states that the source of the “Bogart” name was “most
likely” the city of Bogart, Georgia.
See id. ¶ 4; Adair Dep.
76:17-24 – 78:10 (“I went back and reviewed based off this case,
and I looked back to the time in which that group Bogart-Ocean
was
introduced
.
.
.
I
believe
it
is
from
the
city
name,
[Bogart, Georgia,] because at that time I had a third of my
product introduction names that were after cities.”).
Adair
also stated that looking at the groups Ashley was selling at the
time of this litigation, “led [her] to believe it was named
after a city name.
be a street.
169:15-170:9.
Now, is Bogart a street?
It possibly could
I’d have to Google it and see.”
Adair Dep.
Adair also stated, “[W]hy wouldn’t I have named
it Humphrey Bogart? . . . I named it Bogart-Ocean.”
170:13-16.
Id. at
Given Adair’s less than definitive testimony and
Plaintiff’s evidence that contrary to Adair’s testimony, Ashley
has in fact connected other furniture lines to celebrities, the
Court finds that a genuine factual dispute exists as to this
10
issue.
See Pl.’s Resp. Ex. K, Pl.’s Resp. to Defs.’ Statement
of Undisputed Facts ¶ 20, ECF No. 43-13 [hereinafter Pl.’s Resp.
to Defs.’ SUF]; Adair Dep. Ex. 6 (listing the names of furniture
collections, which include names of celebrities).
C.
Use of Product Identifiers, Including “Bogart Ocean”
Ashley also argues that a non-numeric product identifier,
such as “Bogart Ocean,”
is
merely an internal reference
for
Ashley employees to distinguish between products and that such
references are not typically seen by consumers.
Decl. ¶¶ 6-7.
Lebensburger
Plaintiff, however, points to evidence showing
that the product identifiers used by Ashley, including “Bogart
Ocean,” were not only used by Ashley employees to distinguish
between the products, but were also used heavily in advertising,
marketing,
and
display
of
the
products
and
consumers.
collections
to
Pl.’s Resp. to Defs.’ SUF ¶¶ 6 & 11.
For example, Ashley and its independent retailers use price
tags, including some smaller tags attached to the actual pieces
of
furniture
called
“hangtags,”
and
in
certain
stores
more
detailed “Works” tags, to identify products to consumers in the
stores.
Pl.’s Resp. Ex. I, Byers Dep. 98:1-25, ECF No. 43-11;
Lebensburger
Dep.
88:23-89:4.
Ashley’s
corporate
office
forwards or makes available the tag information to the stores,
instructing stores to print new updated price tags, hang tags,
and
works
tags.
Byers
Dep.
101:25-103:9;
11
Lebensburger
Dep.
85:4-11; Pl.’s Resp. Ex. H, Woodcock Dep. 55:11-56:6, 62:1-6,
ECF
No.
43-10.
These
tags
include
the
two
word
identifier, the price, and some numerical sequences.
product
See, e.g.,
Byers Dep. Ex. 10, ECF No. 43-16 at 22 (price tag for “PresleyEspresso” Rocker Recliner); Byers Dep. Ex. 12, ECF No. 43-16 at
24
(works
tag
for
the
“Presley”
collection).
displayed on furniture in the stores.
The
tags
are
See, e.g., Byers Dep. Ex.
13, ECF No. 43-16 at 25 (photograph of in-store display of the
“Presley” works tag and furniture); see also Byers Dep. Exs. 1423, ECF No. 43-17 at 1-10 (tags and in-store displays of tags
for
other
collections);
Pl.’s
Ex.
66,
ECF
No.
43-17
at
22
(same).
Other
product
Ashley
advertisements
identifiers.
also
Advertisements
contained
non-numeric
referencing
Ashley’s
collections by name, for example “Lansbury Autumn,” were also
placed in newspapers in the Ashley HomeStore markets.
e.g.,
Woodcock
Dep.
38:8-39:24,
128:2-11;
Pl.’s
See,
Ex.
65,
Presidents’ Day Event Circular, ECF No. 43-17 at 18; Pl.’s Ex.
71,
65th
Anniversary
Sale
Circular,
ECF
No.
43-17
at
44.
Ashley’s magazine Trend Watch also referenced the collections by
name.
Woodcock Dep. 83:19-84:1; Pl.’s Ex. 67, Feb. 2012 Trend
Watch, ECF No. 43-17 at 27.
was
being
appeared
by
manufactured
name,
and
“Bogart
When the Bogart Ocean collection
sold
Ocean,”
12
by
on
Ashley,
the
the
collection
ashleyfurniture.com
website.
Lebensburger Dep. 150:1-19; see also Lebensburger Dep.
Ex. 27, ECF No. 43-17 at 13 (search results for similarly named
collection
“Presley”).
Print
advertisements
also
explicitly
referred to the Bogart Ocean collection and furniture pieces as
“Bogart-Ocean” and “Bogart Ocean.”
Byers Dep. Ex. 24, “Bogart-
Ocean” Advertisement, ECF No. 43-17 at 11; Byers Dep. Ex. 25,
Living Den Advertisement, ECF No. 43-17 at 12 (including “Bogart
Ocean Reclining Sectional”).
Plaintiff has presented sufficient evidence to establish a
factual dispute as to whether consumers were presented with the
name of the collection, “Bogart Ocean.”
It does appear to be
undisputed, however, that Ashley’s advertising and marketing did
not use the name Humphrey, a picture or likeness of Humphrey
Bogart, the voice, signature, character, or legacy of Humphrey
Bogart, or the reference to Humphrey Bogart’s voice, signature,
character, or legacy.1
use
the
words
It is also undisputed that Ashley did not
“endorsed,”
“sponsored,”
“authorized,”
or
“approved,” or other similar words in conjunction with selling
its Bogart Ocean furniture.
1
Although Plaintiff stated that it was disputing these facts to the
extent of Ashley’s use of Humphrey Bogart’s character and legacy,
Pl.’s Resp. to SUF ¶ 26, this fact is undisputed because Plaintiff did
not point to any evidence of Ashley’s alleged use of Humphrey Bogart’s
character and legacy.
See M.D. Ga. R. 56 (“All material fact
contained in the moving party’s statement which are not specifically
controverted by specific citation to the record shall be deemed to
have been admitted, unless otherwise inappropriate.”).
13
III. Consumer Confusion and the Bogart Ocean Furniture
As
contain
to
consumer
any
evidence
confusion,
of
the
actual
present
consumer
record
confusion
does
not
between
Ashley’s Bogart Ocean collection and Plaintiff’s “Bogart” mark,
the
publicity
rights
of
Humphrey
Humphrey Bogart Collection.
Bogart,
or
the
Thomasville
Defs.’ Mot. for Summ. J. Ex. E, de
Klerk Dep. 69:25-70:21, ECF No. 37-2.
Further, it is undisputed
that Plaintiff has not conducted a consumer survey regarding the
likelihood of confusion between “Bogart Ocean” and Plaintiff’s
trademarks.
Id.
DISCUSSION
I.
Lanham Act Claims
Plaintiff brings claims under the Lanham Act for: (1) false
designation of origin under 15 U.S.C. § 1125(a), Lanham Act §
43(a), which establishes a cause of action for infringement of
qualifying unregistered trademarks; (2) likelihood of confusion
under 15 U.S.C. § 1114, Lanham Act § 32(a), establishing a cause
of
action
for
infringement
of
registered
trademarks;
and
(3) dilution under 15 U.S.C. § 1125(c), Lanham Act § 43(c).
Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992).
Plaintiff’s main allegation in support of its Lanham Act claims
is that “Bogart” is a registered and a common law trade name in
which it has trademark rights and that Ashley is unlawfully
infringing
on
those
rights
by
14
using
the
term
“Bogart”
in
connection with its line of furniture.
Ashley contends that all
of Plaintiff’s Lanham Act claims fail because Plaintiff cannot
show
that
consumers
were
likely
to
confuse
Plaintiff’s
mark
and/or name with its Bogart Ocean collection.
To prevail on a false designation of origin claim under the
Lanham Act, a plaintiff must establish that (1) it had trademark
rights in the mark or name at issue and (2) the defendant has
adopted a mark that is confusingly similar to the plaintiff’s
mark such that a likelihood of consumer confusion existed “as to
the origin, sponsorship, or approval of [the] goods.”
15 U.S.C.
§ 1125(a)(1); Tana v. Dantanna’s, 611 F.3d 767, 773 (11th Cir.
2010).
“The factors relevant to establishing [a likelihood of
confusion with respect to false designation of origin under 15
U.S.C.
§
1125(a)]
are
identical
to
the
factors
relevant
to
establishing a likelihood of confusion with respect to trademark
infringement under 15 U.S.C. § 1114.”
(alteration
in
original)
(internal
Tana, 611 F.3d at 773 n.5
quotation
marks
omitted).
Ashley does not challenge Plaintiff’s ownership of the “Bogart”
mark, but does challenge its establishment of secondary meaning
as required for Plaintiff’s claims of infringement and false
designation of origin.2
Thus, the only remaining issue as to
2
Ashley analyzes the establishment of secondary meaning under its
likelihood of confusion analysis.
Defs.’ Mem. of Law in Supp. of
Defs.’ Mot. for Summ. J. 11 n.4, ECF No. 37. To the extent secondary
meaning is required for trademark protection as the first element of
15
these
claims
is
whether
there
is
a
likelihood
of
confusion
between Plaintiff’s mark and Ashley’s use of “Bogart” in the
name of its furniture collection Bogart Ocean.
The Court will
address Ashley’s challenge to Plaintiff’s false designation of
origin
and
separately
trademark
infringement
claims
together
and
then
address Ashley’s challenge to Plaintiff’s dilution
claim.
A.
False
Designation
of
Origin
Infringement: Likelihood of Confusion
and
Trademark
Likelihood of confusion is generally a question of fact,
but it can be decided as a matter of law.
Alliance Metals,
Inc. v. Hinely Indus., Inc., 222 F.3d 895, 907 (11th Cir. 2000).
The
Court
applies
the
following
seven
factors
to
evaluate
whether there is a likelihood of confusion:
(1) the strength of the plaintiff's mark; (2) the
similarity between the plaintiff's mark and the
allegedly infringing mark; (3) the similarity between
the products and services offered by the plaintiff and
defendant; (4) the similarity of the sales methods;
(5) the similarity of advertising methods; (6) the
defendant's intent, e.g., does the defendant hope to
gain competitive advantage by associating his product
with the plaintiff's established mark; and (7) actual
confusion.
Id.
Plaintiff claims that Ashley’s use of “Bogart” in naming
its
furniture
likelihood
discussed
of
line
“Bogart
confusion
below,
the
with
Court
Ocean”
creates
Plaintiff’s
finds
that
a
“Bogart”
there
is
sufficient
mark.
sufficient
Plaintiff’s Lanham Act claims, the Court’s analysis of
meaning under the likelihood of confusion section applies.
16
As
secondary
evidence of a likelihood of confusion between Plaintiff’s mark
and Ashley’s use of the term “Bogart” in branding its Bogart
Ocean furniture.
Consequently, Defendants are not entitled to
summary judgment on these claims.
1.
Strength of the Mark
In evaluating the type of mark claimed by Plaintiff, the
Court must classify the mark as strong or weak to determine to
what extent the mark is protected.
Frehling Enters. v. Int’l
Select Grp., Inc., 192 F.3d 1330, 1335 (11th Cir. 1999).
stronger
the
mark,
the
greater
the
scope”
protection to which it is entitled.
Id.
“The weaker the mark,
the less likelihood of confusion.”
There
suggestive,
are
and
four
types
arbitrary.
of
of
“The
trademark
Tana, 611 F.3d at 776.
marks:
Univ.
of
generic,
Ga.
descriptive,
Athletic
Ass’n
v.
Laite, 756 F.2d 1535, 1540 (11th Cir. 1985) (citation omitted).
“Descriptive marks describe a characteristic or quality of an
article
or
because
it
(“Names—both
Frehling,
Plaintiff’s
omitted).
service.”
claimed
is
a
surname.
surnames
and
192
F.3d
“Bogart”
See
first
Tana,
at
mark
611
names—are
1335
is
(citation
descriptive
F.3d
at
774
regarded
as
descriptive terms . . .”) (internal quotation marks omitted).
Descriptive marks are distinctive only when they have acquired
secondary meaning.
Laite, 756 F.2d at 1540.
17
It is undisputed that Plaintiff had the registered mark
“Bogart” until Plaintiff allowed it to lapse in March 2011.
Klerk Decl. ¶¶ 6-7.
de
Registration provides the plaintiff with
the presumption that the mark is “not merely descriptive or
generic,
or,
meaning.
This presumption may, of course, be overcome by proof
of
if
merely
descriptiveness,
or
descriptive,
by
proof
is
of
accorded
secondary
genericness.”
Liquid
Controls Corp. v. Liquid Control Corp., 802 F.2d 934, 936 (7th
Cir.
See
1986)
also
(internal
15
(explaining
mark).
U.S.C.
that
quotation
§
marks
1115(a);
registration
and
citations
Frehling,
increases
Accordingly, prior to the
192
the
omitted).
F.3d
strength
cancellation
at
1336
of
the
of the mark,
Plaintiff’s mark is entitled to a presumption of distinctiveness
that Ashley has the burden of rebutting.
See, e.g., Scientific
Applications, Inc. v. Energy Conservation Corp., 436 F. Supp.
354, 360 (N.D. Ga. 1977).
As stated above, because the “Bogart” mark is descriptive,
its
strength,
meaning
its
distinctiveness,
also
whether “Bogart” has acquired secondary meaning.
at 776.
depends
on
Tana, 611 F.3d
“Secondary meaning is the connection in the consumer’s
mind between the mark and the product’s producer.”
Gift of
Learning Found., Inc. v. TGC, Inc., 329 F.3d 792, 800 (11th Cir.
2003).
To assess secondary meaning, the Court assesses four
factors: “(1) the length and nature of the name’s use, (2) the
18
nature and extent of advertising and promotion of the name, (3)
the efforts of the proprietor to promote a conscious connection
between the name and the business, and (4) the degree of actual
recognition
proprietor’s
by
the
public
product
or
that
the
service.”
name
Tana,
(internal quotation marks omitted).
designates
611
F.3d
at
the
776
The evidence shows that
Plaintiff has used the term “Bogart” in conjunction with the
Thomasville Furniture licensing deal and Thomasville’s Humphrey
Bogart
Collection
since
2001.
Bogart
Decl.
¶¶
9,
13-14.
Thomasville engaged in a costly, national advertising campaign,
including
magazine
ads,
television
commercials,
and
in-store
point of sale materials using the Bogart name and branding of
its furniture line.
Bogart Decl. ¶¶ 15-18; Bogart Dep. 44:25-
45:21, 46:14-49:12.
Ashley argues that the Bogart mark is widely used by third
parties.
In assessing unauthorized third-party usage, which can
decrease
the
strength
of
a
mark,
“[t]he
proper
inquiry
is
whether the unauthorized third-party uses significantly diminish
the public’s perception that the mark identifies items connected
with the owner of the mark.”
Laite, 756 F.2d at 1546 n.27.
The
only federally registered mark Ashley references as evidence of
third-party
use
is
the
BOGART
mark
(U.S.
Registration
No.
1423521) owned by Jacques Bogart International, B.V. and used on
men’s colognes.
Defs.’ Mem. of Law in Supp. of Defs.’ Mot. for
19
Summ. J. 15 n.6, ECF No. 37 [hereinafter Defs.’ Mem.].
Ashley
presents no evidence of actual third-party usage of the “Bogart”
mark that has diminished the public perception of the owner of
the
Bogart
mark.
Rather,
Ashley
makes
generalizations
in
support of third party use, such as: many celebrities have the
name Bogart; Bogart is used in the names of public venues and
private businesses; and Bogart is a common term.
The Court
finds the evidence establishes a genuine factual dispute as to
whether
the
mark
is
sufficiently
distinctive
to
warrant
trademark protection.
2.
Similarity Between Plaintiff’s Mark and Ashley’s
Use of “Bogart”
A factor increasing the likelihood of confusion is a high
degree of similarity of the marks at issue; the more similar the
marks, “the more likely reasonable consumers will mistake the
source of the product that each mark represents.”
F.3d at 1337.
Frehling, 192
The Court compares the Bogart mark with Ashley’s
use of “Bogart Ocean” and “considers the overall impressions
that
the
marks
create,
including
manner in which they are used.”
Ashley
contends
that
the
sound,
appearance,
and
Id.
its
use
of
the
“Bogart”
term
is
markedly different than the use by Plaintiff and Thomasville
because Ashley used the term accompanied by the name, logo, and
trademarks of Ashley, never used “Bogart” without the modifier
20
“Ocean” (Bogart Ocean), and never used the full name “Humphrey
Bogart”
or
“Bogart, LLC.”
The Court finds that
Plaintiff’s
Bogart mark is very similar to Ashley’s Bogart Ocean trade name.
The focus of the marks is the term “Bogart,” and even Ashley
identifies the word “Ocean” as merely the color name of the
collection.
The
addition
of
“Ocean”
significant variation in the marks.
does
not
create
a
See id. (stating that where
a mark entirely encompasses the plaintiff’s mark and merely adds
a descriptive adjective to the dominant portion of the mark,
“the overall impression the marks create is one of striking
similarity-they
meaning.”).
or
are
strikingly
similar
in
sight,
sound,
and
For the same reasons, any addition of “Thomasville”
“Humphrey”
in
Thomasville’s
advertising
of
the
Humphrey
Bogart Collection does not alter the overall impression of the
mark.
See id. (“[A] mark may be surrounded by additional words
of lesser importance and not have its strength diluted.”).
Ashley also asserts that its usage was distinctly different
because it never used “Bogart Ocean” with a reference to the
image,
persona,
or
reputation
of
Humphrey
Bogart
Thomasville did with its Humphrey Bogart Collection.
like
While this
fact may reduce the likelihood of confusion and be a factor
considered by the fact finder in its ultimate verdict, the Court
finds that this evidence does not warrant deciding this issue as
a matter of law.
21
The Court further observes that the manner in which both
“Bogart” and “Bogart Ocean” are used is similar.
Ashley uses
“Bogart Ocean” in branding and advertising home furniture like
Plaintiff
uses
“Bogart”
in
branding
and
advertising
furniture by its licensing agreement with Thomasville.
home
Just as
the Frehling court concluded, this Court concludes that “the
instant comparison reveals the sort of high degree of similarity
between marks that portends a likelihood of consumer confusion.”
Id.
Therefore,
sufficient
this
likelihood
factor
of
weighs
confusion
in
favor
for
of
finding
summary
a
judgment
purposes.
3.
Similarity of Products and Services
The similarity of a product may lead a consumer to conclude
that a single producer is the source of products or that the
goods are endorsed by or emanate from a single source, thus
resulting in a likelihood of consumer confusion.
F.3d at 1338.
the
term
Frehling, 192
There is no dispute that both parties have used
“Bogart”
in
branding
and
selling
home
furniture
directed at a similar set of consumers.
Ashley
first
argues
that
this
factor
weighs
against
a
likelihood of confusion because “[t]he price, design and style
of
these
two
products,
[Ashley’s
Bogart
Ocean
furniture
and
Thomasville’s Humphrey Bogart Collection furniture,] and the way
they were marked, could not have been more different.”
22
Defs.’
Mem.
19.
See
also
Lebensburger
Decl.
¶
16
(stating
that
Thomasville’s collection was “composed of high-end and expensive
wood furniture with a highly customized and unique design . . .
In contrast, the Bogart Ocean sofas . . . were inexpensively
overstuffed upholstery that is clearly contemporary in style and
design.”).
Eleventh
Yet,
Circuit
distinguish
this
in
between
is
the
same
Frehling
where
“custom-made,”
argument
the
rejected
defendants
“more
F.3d at 1338.
the
sought
expensive”
and less expensive “ready-to-assemble” furniture.
by
to
furniture
Frehling, 192
“[T]he test is not whether, the goods could be
distinguished, . . . but whether the goods are so related in the
minds
of
consumers
that
they
get
the
sense
producer is likely to put out both goods.”
that
a
single
Id. (citing E. Remy
Martin & Co. v. Shaw-Ross Int’l Imports, Inc., 756 F.2d 1525,
1530 (11th Cir. 1985)).
Just as in Frehling, here a reasonable
consumer could attribute both products to the same source or
endorser
because
both
sofas, for the home.
marketed
with
unreasonable
products
are
the
for
home
a
collections
are
furniture,
including
Additionally, both lines of furniture are
term
“Bogart.”
consumer
furniture
to
Therefore,
conclude
with
the
that
term
it
is
because
“Bogart”
in
not
both
the
collection name, the two products are produced or endorsed by
the
same
source.
Moreover,
the
fact
that
the
furniture
composition and price points may differ is relevant, but this
23
fact is not dispositive in ruling out a likelihood of confusion,
particularly at the summary judgment stage.
See id. (“While the
compositional differences matter, they are not dispositive; we
focus, rather, on the reasonable belief of the average consumer
as to what the likely source of the goods was.”).
4.
Similarity of Sales Methods
Similarities of the parties’ retail outlets and customers
increase the possibility of a likelihood of consumer confusion.
Id. at 1339.
“This factor takes into consideration where, how,
and to whom the parties’ products are sold.”
Id.
The parties
need not be in direct competition for this factor to indicate a
likelihood of confusion.
Id.
Ashley sells residential furniture products, including the
Bogart
Ocean
collection,
through
corporate
owned
and
independently licensed Ashley Furniture HomeStores in the United
States
and
internet
abroad,
independent
retailers.
148:3, 237:7-238:21.
retailers,
Lebensburger
Dep.
and
independent
17:21-18:11,
147:10-
Similarly, Thomasville’s Humphrey Bogart
Collection furniture is sold at independently owned Thomasville
stores and other independent furniture retailers.
¶¶ 13-14.
competitor
Ashley’s 30(b)(6) designee admitted that Ashley is a
with
Thomasville
in
Lebensburger Dep. 99:22-100:6.
it
appears
Bogart Decl.
clear
that
the
the
furniture
industry.
Because of these similarities,
parties
24
engage
in
similar
sales
methods in the same channels of trade.
in
favor
of
finding
a
likelihood
Thus, this factor weighs
of
consumer
confusion
for
summary judgment purposes.
5.
Similarity of Advertising Media
An examination of each party’s advertising reveals further
similarities.
include
Frehling, 192 F.3d at 1339.
internet
media.
The
marketing,
primary
point-of-sale
difference
Those similarities
signage,
between
their
and
print
advertising
strategies appears to be that Thomasville advertised using a
national television commercial campaign pursuant to Plaintiff’s
licensing
agreement
with
Thomasville,
but
advertise Bogart Ocean in that manner.
sufficient
similarities
in
their
Ashley
did
not
The Court finds that
advertising
strategies
constitute another factor that supports a finding of likelihood
of confusion for summary judgment purposes.
6.
Id. at 1340.
Defendant’s Intent
“If it can be shown that a defendant adopted a plaintiff’s
mark
with
the
intention
of
deriving
a
benefit
from
the
plaintiff’s business reputation, this fact alone may be enough
to justify the inference that there is confusing similarity.”
Frehling, 192 F.3d at 1340.
Ashley claims that “undisputed
evidence shows Ashley’s specific intent NOT to use the full
name, image, likeness and persona of Humphrey Bogart.”
Mem. 20.
Defs.’
Further, Ashley states that it commonly used city
25
names, Bogart, Georgia is a city, and thus Bogart, Georgia is
possibly the origin of the collection name.
78:10, 169:15-170:16.
Adair Dep. 76:17–
Plaintiff challenges Ashley’s assertion
that the Bogart Ocean collection was named after Bogart, Georgia
based
on
(1)
the
branding
employee’s
deposition
testimony
indicating that she only learned Bogart was a city in Georgia
after she researched the term “Bogart” after this lawsuit was
filed and (2) by pointing to ample furniture collections having
celebrity surnames as their identifier before the color term.
Id.; Adair Dep. Ex. 6.
Although the Court finds that a genuine
factual dispute exists as to this issue, the Court treats it as
a
neutral
factor
in
determining
whether
the
likelihood
of
confusion exists for summary judgment purposes.
7.
The
present
confusion.
the
Actual Confusion
most
confusion,
record
contains
no
evidence
of
actual
Although evidence of actual consumer confusion is
persuasive
Tana,
611
evidence
F.3d
in
at
evaluating
779,
likelihood
“evidence
[of
of
actual
confusion] is not a prerequisite,” Frehling, 192 F.3d at 1340.
The seven likelihood of confusion factors are to be balanced.
Id.
at
1342.
While
Ashley
has
demonstrated
that
Plaintiff
failed to conduct any consumer surveys or otherwise demonstrate
actual confusion, the Court observes that “[t]his Circuit . . .
has
moved
away
from
relying
on
26
survey
evidence.
Thus,
the
failure
to
adduce
such
evidence
is
not
damaging
to
the
Plaintiff’s case. . . . [T]he lack of survey evidence [is] not
dispositive.”
Frehling, 192 F.3d at 1341 n.5 (internal citation
omitted).
“The role of the court in reviewing a motion for summary
judgment is to determine the ultimate question of whether, in
light of the evidence as a whole, there is sufficient proof of a
likelihood of confusion to warrant a trial of the issue.”
611 F.3d at 775 n.7.
Tana,
Weighing the relevant factors, the Court
finds that Plaintiff has shown that a reasonable consumer could
be confused by the two marks and, therefore, a reasonable jury
could
find
that
the
Bogart
mark
and
identifier are confusingly similar.
Bogart
Ocean
product
The Court concludes that a
genuine factual dispute exists as to the likelihood of confusion
between Plaintiff’s mark and Ashley’s use of “Bogart” in its
Bogart
Ocean
collection,
precluding
warranting a trial of the issue.
summary
Id.
judgment
and
In sum, Ashley is not
entitled to summary judgment on Plaintiff’s false designation of
origin and trademark infringement claims.
B.
Dilution Claim
Plaintiff’s
trademark
dilution
claim
brought
under
15
U.S.C. § 1125(c), does not rely on the likelihood of confusion
analysis.
Although Ashley in its Motion for Summary Judgment
claims
be
to
seeking
summary
27
judgment
as
to
all
claims,
Plaintiff correctly points out that Ashley does not raise any
argument as to Plaintiff’s trademark dilution claim.
In its
Reply
Summary
Brief
in
Support
of
Defendants’
Motion
for
Judgment, Ashley attempts to raise arguments for the first time
seeking summary judgment on this claim.
Reply Br. in Supp. of
Defs.’ Mot. for Summ. J. 11-12, ECF No. 52.
Arguments raised
for the first time in a reply brief are not properly before the
Court.
United States v. Oakley, 744 F.2d 1553, 1556 (11th Cir.
1984); cf. Najjar v. Ashcroft, 257 F.3d 1262, 1283 n.12 (11th
Cir. 2001) (an issue not raised in a party’s initial brief is
deemed abandoned).
Therefore, the Court denies summary judgment
as to Plaintiff’s claim for trademark dilution.
II.
Right of Publicity State Law Claims
Plaintiff also brings claims for misappropriation of the
right
of
publicity
under
Georgia,
California,
and
Washington
state laws, alleging that Ashley’s use of “Bogart” and Humphrey
Bogart’s celebrity identity without Plaintiff’s consent within
the states of Georgia, California, and Washington has caused
Plaintiff to suffer injury.
Compl. ¶¶ 40-61, ECF No. 1.
seeks summary judgment as to these state law claims.
Ashley
Finding
that genuine factual disputes exist as to these claims, the
Court denies Ashley’s motion for summary judgment as to these
claims.
28
The
Court
evaluating
claims.
must
first
Plaintiff’s
The
Nevertheless,
parties’
because
determine
the
misappropriation
briefing
the
is
Court
applicable
of
publicity
deficient
finds
law
on
that
this
no
for
rights
issue.
significant
differences exist between Georgia law on this issue and the law
of California or Washington, the Court applies Georgia law.
Preliminarily, the Court rejects Ashley’s contention that
Georgia common law does not recognize a post-mortem right of
publicity for anyone not a resident of Georgia or domiciled in
the state at the time of his or her death.
Contrary to Ashley’s
interpretation of Martin Luther King, Jr., Center for Social
Change, Inc. v. American Heritage Products, Inc., 250 Ga. 135,
296 S.E.2d 697 (1982), the Georgia Supreme Court, addressing
questions certified from the Eleventh Circuit Court of Appeals,
held “the right of publicity survives the death of its owner and
is inheritable and devisable.”
Id. at 145, 296 S.E.2d at 705.
It did not address whether the owner must be domiciled in the
state of Georgia at the time of death.
Id.
Ashley has pointed
to no other legal authority in support of its argument.
Although
the
claims
for
misappropriation
of
publicity
rights have a statutory origin in California and Washington, the
Georgia common law cause of action appears to have substantially
similar elements as those statutory causes of action.
See id.
at 143, 296 S.E.2d at 704; Wash Rev. Code. § 63.60.050; Cal.
29
Civ.
Code
§
3344.1(a)(1).
misappropriation
must
be
While
“for
under
the
Georgia
financial
law
the
of
the
gain
appropriator,” Martin Luther King, Jr., Center, 250 Ga. at 143,
296 S.E.2d at 704, which does not appear to be a prerequisite
under California or Washington law, the Court finds that this
distinction is immaterial for purposes of deciding the presently
pending
summary
differences
that
judgment
may
motion.
exist
Notwithstanding
between
the
laws
any
of
minor
Georgia,
California, and Washington, it is clear that genuine factual
disputes,
done
including
for
whether
financial
the
gain,
alleged
exist
misappropriation
as
misappropriation of publicity rights claims,
to
was
Plaintiff’s
precluding summary
judgment.3
The
Court
also
rejects
misappropriation
of
duplicative
Plaintiff’s
of
Ashley’s
publicity
right
Lanham
contention
state
Act
law
claim
designation of origin under 15 U.S.C. § 1125(a).
have
separate
goals.
elements
and
distinct
underlying
that
claim
for
a
is
false
These claims
public
policy
Under Georgia law, Plaintiff is not required to put
forth evidence of likelihood of consumer confusion
as it is
required to do under the Lanham Act, 15 U.S.C. § 1125(a).
See
Cabaniss v. Hipsley, 114 Ga. App. 367, 377, 151 S.E.2d 496, 503
3
The parties should be prepared at the final pretrial conference to
address precisely how the jury should be charged on the essential
elements of the state law publicity rights claims, including whether
the law is different depending on where the conduct occurred.
30
(1966) (defining the tort as “consist[ing] of the appropriation,
for
the
defendant’s
plaintiff’s
name
or
benefit,
use
likeness.”);
or
advantage,
Wash
accord
63.60.050; Cal. Civ. Code § 3344.1(a)(1).
of
Code.
Rev.
the
§
Further, right of
publicity claims under state law are uniquely grounded in an
individual’s right to privacy and/or an individual’s property
right to control third-party use of their persona.
Id. at 377,
151 S.E.2d at 504 (“[T]he main distinction between this aspect
of privacy and the other three [privacy torts in Georgia] is the
distinction
feelings,
between
causes
sensibilities
or
of
action
reputation
involving
and
those
injury
to
involving
an
appropriation of rights in the nature of property rights for
commercial exploitation.”); see also Allison v. Vintage Sports
Plaques, 136 F.3d 1443, 1446-47 (11th Cir. 1998) (discussing the
difference between publicity and privacy rights).
Notably, the
Eleventh Circuit has permitted such state law claims to proceed
simultaneously with claims under the Lanham Act for trademark
infringement. E.g., Tana, 611 F.3d at 772, 783 (evaluating both
plaintiff’s appropriation of likeness claim under Georgia law
and plaintiff’s trademark infringement claim under the Lanham
Act).
Noting that damages may ultimately be duplicative as to
the state law and Lanham Act claims, an issue to be determined
at a later date, the Court finds unpersuasive Ashley’s argument
31
that summary judgment should be granted on Plaintiff’s publicity
rights claim because it is duplicative of the Lanham Act claims.
Ashley
also
argues
that
it
made
no
use
of
the
name,
likeness, or persona of Humphrey Bogart such that a claim for
misappropriation of publicity rights could have occurred.
Court
finds
that
the
present
record
demonstrates
a
The
disputed
question of material fact as to whether the term “Bogart” as
used
in
Ashley’s
Bogart
Humphrey
Bogart’s
name
Ocean
collection
and/or
created
was
from
association
an
derived
with
Humphrey Bogart.
Ashley’s
state
law
Motion
for
Summary
misappropriation
of
Judgment
right
of
as
to
publicity
Plaintiff’s
claims
is
denied.
III. Other Georgia State Law Claims
Ashley
deceptive
also
trade
seeks
summary
practices
claim
judgment
under
as
the
to
Plaintiff’s
Georgia
Uniform
Deceptive Trade Practices Act, O.C.G.A. §§ 10-1-370 to -375, and
unfair competition claim under Georgia law, O.C.G.A. § 23-2-55.
Ashley’s only argument for summary judgment on these claims is
that
if
Plaintiff’s
Lanham
Act
claims
fail
based
on
the
likelihood of confusion analysis, the state law claims should
also be dismissed.
issue
exists
as
The Court, however, has found that a triable
to
the
likelihood
32
of
confusion
underlying
Plaintiff’s Lanham Act claims for false designation of origin
and trademark infringement.
See supra DISCUSSION I.A.
“Courts may use an analysis of federal infringement claims
as a ‘measuring stick’ in evaluating the merits of state law
claims
of
unfair
competition.”
Planetary
Motion,
Inc.
v.
Techsplosion, Inc., 261 F.3d 1188, 1193 n.4 (11th Cir. 2001);
see also Jellibeans, Inc. v. Skating Clubs of Ga., Inc., 716
F.2d
833,
839
(11th
Cir.
1983)
(“If
we
determine
that
the
district court decided the Lanham Act count properly, we will
also
affirm
its
decision
on
the
Georgia
practices and unfair competition counts.”).
the
Court’s
analysis
of
likelihood
of
deceptive
trade
Therefore, based on
confusion,
supra
DISCUSSION I.A., the Court denies Ashley’s Motion for Summary
Judgment as to Plaintiff’s claims for unfair competition and
deceptive trade practices under Georgia law.
IV.
Damages & Ashley’s Motion to Exclude (ECF No. 32)
Ashley’s remaining argument is that no admissible evidence
has
been
damages
presented
caused
by
to
show
Ashley’s
that
Plaintiff
conduct,
and,
has
suffered
therefore,
any
Ashley
should be granted summary judgment as to any claim for damages.
This argument is tied directly to its Motion to Exclude Opinions
& Report of Jon Albert, ECF No. 32.
During discovery in this action, Plaintiff designated Jon
Albert
(“Albert”)
as
an
expert
33
in
celebrity
licensing
and
endorsements
compliance
valuation,
with
Federal
and
he
Rule
filed
his
Civil
Procedure
of
Expert
Report
in
26(a)(2)(B).
See Pl.’s Resp. Ex. O, Expert Report of Jon Albert, ECF No. 4319 [hereinafter Albert Report].
Ashley maintains that Albert’s
testimony must be excluded under Federal Rule of Evidence 702
and Daubert.
A.
Federal Rule of Evidence 702 and the Daubert Standard
Federal
Rule
of
Evidence
702
governs
the
admission
of
expert testimony in federal court, and 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
data;
testimony
is
based
(c)
the
testimony
is
the
principles and methods; and
on
sufficient
product
of
facts
or
reliable
(d) the expert has reliably applied the principles and
methods to the facts of the case.
Fed. R. Evid. 702.
The trial court must act as a gatekeeper to
ensure the reliability and relevancy of expert testimony; for an
expert's testimony to be admitted, the proffered expert must be
qualified to render a reliable opinion based on sufficient facts
or data and the application of accepted methodologies.
Kumho
Tire Co. v. Carmichael, 526 U.S. 137, 149, 152 (1999); Daubert
34
v. Merrell Dow Pharms., Inc., 509 U.S. 579, 592–93 (1993). The
trial court must “‘make certain that an expert, whether basing
testimony
upon
professional
studies
or
personal
experience,
employs in the courtroom the same level of intellectual rigor
that characterizes the practice of an expert in the relevant
field.’”
Kilpatrick v. Breg, Inc., 613 F.3d 1329, 1335 (11th
Cir. 2010) (quoting Kumho Tire Co., 526 U.S. at 152).
In determining the admissibility of expert testimony under
Rule
702,
the
Court
must
engage
in
a
“rigorous
three-part
inquiry” assessing whether:
(1) the expert is qualified to testify competently
regarding the matters he intends to address; (2) the
methodology
by
which
the
expert
reaches
his
conclusions is sufficiently reliable as determined by
the sort of inquiry mandated in Daubert; and (3) the
testimony assists the trier of fact, through the
application of scientific, technical, or specialized
expertise, to understand the evidence or to determine
a fact in issue.
Hendrix ex rel. G.P. v. Evenflo Co., 609 F.3d 1183, 1194 (11th
Cir. 2010) (quoting United States v. Frazier, 387 F.3d 1244,
1260 (11th Cir. 2004) (en banc)).
“The proponent of the expert
testimony bears the burden of showing, by a preponderance of the
evidence, that the testimony satisfies each prong.”
Id.
Rule 702 provides that a witness “may be qualified as an
expert by virtue of his or her ‘knowledge, skill, experience,
training, or education.’”
Quiet Tech.
DC-8, Inc. v. Hurel-
Dubois UK Ltd., 326 F.3d 1333, 1342 (11th Cir. 2003) (quoting
35
Fed.
R.
Evid.
702).
proffered
expert
generally
look
Accordingly,
is
to
“qualified”
evidence
of
to
in
determining
offer
the
an
whether
opinion,
witness's
a
courts
education
and
experience and ask whether the subject matter of the witness's
proposed
testimony
expertise.”
2001).
is
“sufficiently
within
[the
expert's]
E.g., Maiz v. Virani, 253 F.3d 641, 665 (11th Cir.
It is beyond dispute that experience in a field may
provide a sufficient foundation for expert testimony.
Frazier,
387 F.3d at 1260–61.
To
ascertain
“reliable,”
courts
whether
proposed
expert
testimony
generally
consider
several
factors:
is
“(1)
whether the expert's theory can be and has been tested; (2)
whether
the
theory
has
been
subjected
to
peer
review
and
publication; (3) the known or potential rate of error of the
particular scientific technique; and (4) whether the technique
is generally accepted in the scientific community.”
Kilpatrick,
613 F.3d at 1335 (citing Daubert, 509 U.S. at 593–94).
list,
however,
substantial
is
not
discretion
reliability.”
Hendrix,
exhaustive,
in
609
deciding
F.3d
at
and
district
courts
how
to
an
1194
test
(internal
“This
have
expert's
quotation
marks omitted). The district court's primary focus should be
“‘solely on principles and methodology, not on the conclusions
that they generate.’”
Allison v. McGhan Med. Corp., 184 F.3d
1300, 1312 (11th Cir. 1999) (quoting Daubert, 509 U.S. at 595).
36
For an expert's testimony to “assist” the trier of fact,
“the evidence must have a valid scientific connection to the
disputed facts in the case.”
Id.
A court “may exclude expert
testimony that is imprecise and unspecific, or whose factual
basis is not adequately explained.”
Cook ex rel. Tessier v.
Sheriff of Monroe County, Fla., 402 F.3d 1092, 1111 (11th Cir.
2005)
(internal
quotation
marks
omitted).
Also,
expert
testimony is generally only admissible “if it concerns matters
that are beyond the understanding of the average lay person.”
Id.
(internal
quotation
marks
omitted).
“Proffered
expert
testimony generally will not help the trier of fact when it
offers nothing more than what lawyers for the parties can argue
in closing arguments.”
B.
Id. (internal quotation marks omitted).
Analysis of Jon Albert’s Opinions
Plaintiff intends to offer at trial testimony of Albert, a
celebrity talent and music rights packager, concerning the fair
market
value
for
the
use
of
the
name
of
Humphrey
Bogart,
specifically “Bogart” as used by Ashley Furniture to brand its
Bogart Ocean furniture products.
Albert Report 2.
Based on
Albert’s review of the case, knowledge, training, skill, and
experience as a celebrity packager, Albert values Ashley’s use
of
Humphrey
Bogart’s
name
“Bogart”
at
a
royalty
rate
of
guaranteed one million dollars per year as a guarantee against
just over three percent of sales.
37
Pl.’s Resp. in Opp’n to
Defs.’ Mot. to Exclude Ops. & Report fo [sic] Jon Albert Ex. Q
Part 1, Albert Dep. 99:21-24, ECF No. 44-3.
Ashley does not challenge the qualifications of Albert, who
has worked in the celebrity talent and music rights packaging
business for thirty-five years negotiating agreements between
advertisers and celebrities both living and via their estates
and advising advertisers as to the cost of acquiring the name,
likeness, or services of celebrities for use in advertising,
endorsement, commercials, or other promotional ventures.
Report
1.
Ashley
testimony,
asserting
recognized
method
asserts
that:
in
a
Daubert
(1)
reaching
challenge
Albert
his
fails
to
to
Albert
Albert’s
employ
conclusions
and
a
his
conclusions are unverifiable; (2) Albert does not explain how he
reached his opinion, so no one else can test the conclusion; and
(3) Albert’s opinions are unreliable and therefore not helpful
to a jury.
1.
Albert’s Method and Evaluation
Albert asserted that scientific or formulaic “methods” do
not work in the entertainment industry, but valuations of the
use of a celebrity name and/or persona are based on what a
person
is
worth
entertainment
based
industry,
on
and
their
talent,
precedential
perception
agreements.
in
the
Pl.’s
Resp. to Mot. to Exclude Ex. Q Part 2, Albert Dep. 40:8-22,
43:2-10,
ECF
No.
44-2.
To
conduct
38
such
valuations,
Albert
relies on his experience and heavily on precedent as to what is
paid to a particular talent, in this case the owner of Humphrey
Bogart’s publicity rights, and conducts a hypothetical licensing
negotiation.
Id. at 53:22-54:8.
Albert based his opinion on
his experience working in the field of celebrity endorsement
negotiations and packing for thirty-five years.
Pl.’s Resp. to
Mot. to Exclude Ex. Q Part 3, Albert Dep. 73:19-74:16, ECF No.
44-3.
In reaching his conclusion as to the reasonable value of
what it would have cost Ashley to purchase the rights to use
“Bogart”
as
persona,
Albert
including
the
licensing
the
part
of
drew
Humphrey
on
general
“Bogart”
Thomasville Furniture.
Bogart’s
thousands
history
mark,
and
of
name
and
celebrity
agreements,
Plaintiff’s
of
licensing
agreements
Plaintiff’s
agreement
with
Id. at 59:1-60:6, ECF Nos. 44-2 & 44-3.
Drawing on these agreements, he found the Thomasville agreement
“precedential”
and
also
conducted
a
hypothetical
royalty
negotiation between Ashley and Plaintiff to reach his conclusion
as to the fair market value Ashley would have paid for rights to
the “Bogart” mark.
44-3.
Id. at 51:1-8, 59:25-60:6, ECF Nos. 44-2 &
In this hypothetical negotiation, Albert considered what
Ashley would have paid to use the “Bogart” mark and the amount
of usage (“how much media they buy”), basing his analysis on
full and complete use in print, internet, and point of sale
39
materials.
Id.
at
64:15-66:5,
ECF
No.
44-3.
He
further
explained that whether the full name “Humphrey Bogart” was used
or
just
the
“Bogart”
mark,
the
value
would
be
the
same
in
negotiations because the name Bogart is the key part in the
negotiations
rights.
to
which
Ashley
Id. at 68:3-22.
hypothetically
would
be
seeking
Additionally, his negotiations took
into account that in valuing the use of a celebrity name like
Bogart, one cannot separate “Bogart” from film and his celebrity
persona.
Id. at 73:19-74:16.
2.
Analysis of Ashley’s Challenge
Ashley asserts that Albert’s means of reaching a valuation
of the cost for Ashley to use the “Bogart” mark and Humphrey
Bogart’s name, which it contests it did not do, is problematic
because it does not entail any scientific calculus, factors to
be reviewed, or a method that can be repeated and tested.
In
response, Plaintiff contends that Albert’s methodology involved
using
his
experience
in
celebrity
licensing
and
endorsement
deals and evaluating comparable uses, including the most similar
deal available to him, the Thomasville license for the use of
the “Humphrey Bogart” mark.
The Court rejects Ashley’s inflexible approach which would
never permit expert testimony on the issue of damages in cases
such as the present one.
As noted by the Courts, in assessing
the second Daubert prong, this inquiry is a “flexible one” and
40
no “definitive checklist or test” exists.
Rink v. Cheminova,
Inc., 400 F.3d 1286, 1292 (11th Cir. 2005) (internal quotation
marks omitted).
Experience in a field may serve as sufficient
foundation for expert testimony.
Frazier, 387 F.3d at 1260-61.
Here, Albert seeks to testify based on his more than thirty
years
of
experience
in
celebrity
licensing
valuation
to
establish the fair market value Ashley would have had to pay
Plaintiff for a license to use the “Bogart” mark.
Moreover, he
points to concrete evidence supporting his opinions, including
evidence of how others in the market place have placed a value
on these intellectual property rights.
a
figure
out
sufficiently
of
the
reliable
air.
to
be
The
He does not simply pull
Court
admitted.
finds
his
Moreover,
opinions
while
not
directly applicable to this situation, the Court finds that the
approach
outlined
in
Georgia-Pacific
Corp.
v.
U.S.
Plywood
Corp., 318 F. Supp. 1116, 1121 (S.D.N.Y. 1970), for patent cases
is consistent with the approach taken here.
The Court rejects
Ashley’s contention to the contrary.
Ashley
also
asserts
assist the trier of fact.
that
Albert’s
testimony
would
not
It is clear that evaluating the value
of such intellectual property rights is outside the average lay
person’s knowledge and understanding.
would
certainly
aid
the
trier
issues.
41
of
An expert in this area
fact
in
evaluating
these
For
all
of
these
reasons,
Ashley’s
motion
to
exclude
Albert’s testimony (ECF No. 32) is denied.
C.
Summary Judgment as to Damages Claims
Having rejected Ashley’s motion to exclude the testimony of
Plaintiff’s
Ashley’s
damages
expert,
contention
that
the
no
Court
evidence
likewise
exists
supporting Plaintiff’s claim for damages.
genuine
factual
damages.
disputes
exist
on
the
must
in
reject
the
record
The Court finds that
issue
of
compensatory
Accordingly, Ashley’s motion for summary judgment on
this ground is denied.
Ashley
also
argues
that
it
is
entitled
to
summary
judgment as to punitive and exemplary damages.
Punitive damages
are
a
generally
reserved
for
consideration
by
jury.
E.g.,
Christopher Inv. Props., Inc. v. Cox, 219 Ga. App. 440, 444, 465
S.E.2d 680, 684 (1995), overruled on other grounds by Amend v.
485 Prop., 280 Ga. 327, 627 S.E.2d 565 (2006).
concluded
that
there
are
genuine
factual
The Court has
disputes
as
to
Plaintiff’s Lanham Act and state law claims, including whether
Ashley purposefully chose the name Bogart Ocean because of its
connection to the Thomasville Bogart Collection.
the
Court
concludes
that
based
on
the
Accordingly,
analysis
of
the
substantive claims, genuine issues of material fact exist as to
Ashley’s intent and willfulness in using the term “Bogart” for
the purposes of punitive damages.
42
For these reasons, the Court
likewise
denies
Ashley’s
motion
for
summary
judgment
as
to
Plaintiff’s claim for punitive damages.
CONCLUSION
For the forgoing reasons, the Court denies Ashley’s Motion
for Summary Judgment (ECF No. 33) and Ashley’s Motion to Exclude
Plaintiff’s expert Jon Albert (ECF No. 32).
IT IS SO ORDERED, this 28th day of August, 2012.
S/Clay D. Land
CLAY D. LAND
UNITED STATES DISTRICT JUDGE
43
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