Weather Underground, Incorporated v. Navigation Catalyst Systems, Incorporated et al

Filing 239

MOTION in Limine to exclude testimony and portions of expert report of Defendants' Expert John Berryhill by Weather Underground, Incorporated. (Schaefer, Enrico)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MICHIGAN
THE WEATHER UNDERGROUND, INC.,
a Michigan corporation,

Case No. 2:09-cv-10756
Hon. Marianne O. Battani

Plaintiff,
vs.
NAVIGATION CATALYST SYSTEMS, INC.,
a Delaware corporation; BASIC FUSION, INC.,
a Delaware corporation; CONNEXUS CORP.,
a Delaware corporation; and FIRSTLOOK, INC.,
a Delaware corporation,
Defendant.

/

Enrico Schaefer (P43506)
Brian A. Hall (P70865)
TRAVERSE LEGAL, PLC
810 Cottageview Drive, Unit G-20
Traverse City, MI 49686
231-932-0411
[e-mail]
[e-mail]
Lead Counsel for Plaintiff

Nicholas J. Stasevich (P41896)
Benjamin K. Steffans (P69712)
BUTZEL LONG, PC
150 West Jefferson, Suite 100
Detroit, MI 48226
[phone]
[e-mail]
[e-mail]
Local Counsel for Defendants

Anthony Patti (P43729)
HOOPER HATHAWAY, P.C.
126 South Main Street
Ann Arbor, MI 48104
734-662-4426
[e-mail]
Co-counsel for Plaintiff

William A. Delgado (admitted pro hac vice)
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Blvd., Ste. 3850
Los Angeles, CA 90017
213-955-9240
[e-mail]
Lead Counsel for Defendants
/

PLAINTIFF’S MOTION IN LIMINE TO EXCLUDE TESTIMONY OF
AND PORTIONS OF THE EXPERT REPORT OF DEFENDANTS’ EXPERT
JOHN BERRYHILL AND BRIEF IN SUPPORT

NOW COME Plaintiff, by and through counsel, TRAVERSE LEGAL, PLC and
HOOPER HATHAWAY, P.C., and hereby submits its Motion in Limine to exclude testimony of
and portions of the expert report of Defendants’ Expert John Berryhill and states as follows:
1.

Plaintiff has sued Defendants under the Anti-Cyberquatting Consumer Protection

Act (“ACPA”). The ACPA requires that the Plaintiff prove by a preponderance of the evidence
that Defendants (1) registered, used, or trafficked in a domain name; (2) that is confusingly
similar to; (3) a trademark in which Plaintiff has rights; and (4) with a bad faith intent to profit
from that mark. 15 U.S.C. §1125(d)(1).
2.

Defendants’ expert, John Berryhill (“Berryhill”) concluded that (1) bulk

registration of domain names in order to publish advertising material does not amount to bad
faith cybersquatting and (2) bulk domain name registrants that utilize a filtering system and
cooperate when trademark owners demand infringing domains does not amount to bad faith
cybersquatting. Expert Report ¶ 11, 29. In doing so, Berryhill offers a legal conclusion about
the threshold issue in the case, which is whether Defendants activity evidences the requisite bad
faith intent to profit from Plaintiff’s trademarks as set forth in 15 U.S.C. §1125(d)(1)(A)(i) in
violation of FRE 704.
3.

Furthermore, pursuant to FRE 403, this Court should not admit testimony by

Berryhill regarding Defendants’ intent or any evidence from his Expert Report about what
evidences bad faith because embraces an ultimate issue reserved for the trier of fact and would
unduly prejudice Plaintiff and mislead the jury.
4.

In addition, Berryhill offers opinions interpreting the ACPA, including its scope,

history, meaning, and application. Thus, again, based upon FRE 704, this Court should exclude
1

paragraphs 12-14 of Berryhill’s Expert Report and preclude any testimony by Berryhill that
instructs the jury as the law of the ACPA, including its scope, history and application.
5.

Counsel exchanged intended motions in limine by e-mail, setting forth the nature

of the motion and its legal basis. No concurrence regarding this motion was obtained.
Respectfully submitted this 24th day of February, 2012.
/s/Enrico Schaefer__________
Enrico Schaefer (P43506)
Brian A. Hall (P70865)
TRAVERSE LEGAL, PLC
810 Cottageview Drive, Unit G-20
Traverse City, MI 49686
231-932-0411
[e-mail]
Lead Counsel for Plaintiff
Anthony P. Patti (P43729)
HOOPER HATHAWAY, PC
126 South Main Street
Ann Arbor, MI 48104
734-662-4426
[e-mail]
Co-Counsel for Plaintiff

2

Table of Contents
Table of Contents ............................................................................................................................. i
Brief in Support............................................................................................................................... ii
Concise Statement of Issues Presented ........................................................................................... ii
Controlling or Most Appropriate Authority for the Relief Sought ................................................ iii
Table of Authorities ....................................................................................................................... iv
I.

Factual Background .............................................................................................................1

II.

Argument .............................................................................................................................1
A.
B.

III.

Defendants’ Expert Berryhill’s Legal Conclusions as to the Ultimate
Issues of Bad Faith Intent Should Be Excluded.......................................................1
Defendants’ Expert Berryhill’s Testimony Regarding the Law of the
ACPA, Including Historical Developments of Cybersquatting,
Should Be Excluded.................................................................................................3

Conclusion ...........................................................................................................................3

i

BRIEF IN SUPPORT
Concise Statement of Issues Presented
1.

Whether the Court should exclude Defendants’ expert Berryhill’s testimony on an
ultimate issue in the case, namely what constitutes bad faith intent to profit in
violation of the ACPA, under FRE 704 because such determination is a legal
conclusion reserved for the trier of fact?
Plaintiff answers: YES
Defendants answer: NO

2.

Whether the Court should exclude Defendants’ expert Berryhill’s testimony as to
what constitutes bad faith intent to profit in violation of the ACPA under FRE 403
because such determination prejudices the Plaintiff and misleads the trier of fact?
Plaintiff answers: YES
Defendants answer: NO

3.

Whether the Court should exclude Defendants’ expert Berryhill’s testimony
regarding the scope, history, and application of the ACPA under FRE 704 because
such instruction and legal conclusions are reserved for the judge and trier of fact,
respectively?
Plaintiff answers: YES
Defendants answer: NO

ii

Controlling or Most Appropriate Authority for the Relief Sought
FRE 403 .......................................................................................................................................2, 3
FRE 702 ...........................................................................................................................................2
FRE 704 .......................................................................................................................................1, 3

iii

Table of Authorities

Cases
H.C. Smith Investments, L.L.C. v. Outboard Marine Corp., 181 F. Supp. 2d 746, 749
(W.D. Mich. 2002).............................................................................................................. 2
Shahid v. City of Detroit, 889 F.2d 1543 (6th Cir. 1989) ............................................................... 1
U.S. v. Gallon, 257 F.R.D. 141 (E.D. KY 2009) ............................................................................ 2
United States v. Zipkin, 729 F.2d 384, 386-87 (6th Cir. 1984)........................................................ 3
Woods v. Lecureux, 110 F.3d 1215, 1220 (6th Cir. 1997)............................................................... 1
Statutes
15 U.S.C. § 1125(d)(1)(A)(i) .......................................................................................................... 2
Rules
FRE 403 ...................................................................................................................................... 2, 3
FRE 702 .......................................................................................................................................... 2
FRE 704 ...................................................................................................................................... 1, 3

iv

I.

Factual Background
Defendants’ expert, John Berryhill, is an attorney. He issued an Expert Report and was

deposed in this case.
II.

Argument
A.

Defendants’ Expert Berryhill’s Legal Conclusions as to the Ultimate Issues of
Bad Faith Intent Should Be Excluded

FRE 704 is intended to avoid admission of opinions which would merely tell the jury
what result to reach. FRE 704 Notes of Advisory Committee on Proposed Rules. Admittedly an
expert may testify as to ultimate issues in a case, but such testimony must not amount to a legal
conclusion, as it is for the judge alone to instruct the jury on the applicable principles of law at
issue in the case. See Shahid v. City of Detroit, 889 F.2d 1543 (6th Cir. 1989); see also Woods v.
Lecureux, 110 F.3d 1215, 1220 (6th Cir. 1997) (“It is, therefore, apparent that testimony offering
nothing more than a legal conclusion-i.e., testimony that does little more than tell the jury what
result to reach-is properly excludable under the Rules.”).
Defendants’ expert Berryhill provided an Expert Report on September 13, 2010. In that
Expert Report, he concluded as follows:
1.

“it is my opinion that bulk registration of internet domain names for the
purpose of publishing advertising material does not demonstrate a bad faith
intent to profit from trade or service marks.” See Exhibit A, Expert Report ¶
11.

2.

“The behavior of responsible bulk domain registrants, in the continuing
development of trademark filtering techniques and cooperative engagement
with brand owners, in the registration of domain names based purely on
1

obtaining user traffic, does not evince a bad faith intent to profit from trade or
service marks.” See Exhibit A, Expert Report ¶ 29.
Both of these statements amount to legal conclusions.

In particular, Berryhill’s testimony

specifically addresses one of the requisite elements of the ACPA, namely 15 U.S.C. §
1125(d)(1)(A)(i). It also tells the jury which result to reach regarding the ultimate issue in the
case – whether Defendants had a bad faith intent to profit from Plaintiff’s marks. FRE 702 and
the law of this Court requires such legal conclusions be deemed inadmissible. See H.C. Smith
Investments, L.L.C. v. Outboard Marine Corp., 181 F. Supp. 2d 746, 749 (W.D. Mich. 2002)
(holding that courts must “not to allow expert testimony to infringe on its own authority to
instruct as to the law or the jury’s authority to determine ultimate issues such as the intent of a
party.”) (emphasis added).
Berryhill may indeed provide opinions and testimony concerning the practice of bulk
domain name registration and monetization, but offering a legal conclusion that usurps the jury’s
role regarding whether or not it evidences a bad faith intent or constitutes cybersquatting under
the ACPA is entirely improper.

As such, Paragraphs 11 and 29 as it relates to the legal

conclusion that Defendants did not act in bad faith, along with any testimony mirroring the same,
should be excluded.
Furthermore, in order to avoid undue prejudice or juror confusion under FRE 403, any
testimony regarding what constitutes bad faith intent should be excluded from trial and not
admissible as evidence. See U.S. v. Gallon, 257 F.R.D. 141 (E.D. KY 2009) (holding that
expert’s, who was a lawyer, opinions regarding Defendants’ alleged good faith reliance on the
Judge’s Orders were misleading, and thus inadmissible under FRE 403). This is supported by
2

the fact that Berryhill has no opinion as to whether or not Defendants engaged in bad faith
cybersquatting in this particular case under these particular facts. See Exhibit B, Berryhill
Deposition at pg. 128, lines 19-25. Berryhill’s expert testimony regarding what constitutes bad
faith cybersquatting is too prejudicial to Plaintiff, misleading and confusing to the jury, and thus
inadmissible under FRE 403.
B.

Defendants’ Expert Berryhill’s Testimony Regarding the Law of the ACPA,
Including Historical Developments of Cybersquatting, Should Be Excluded

Berryhill provides testimony in his expert report entitled “Historical Development of
Cybersquatting.” See Exhibit A, Expert Report, Section IV.A., paragraphs 12-14. He recites
both case law and the legislative history related to the ACPA. In doing so, his Expert Report
reads more like a legal brief. He also interprets the ACPA throughout his deposition.
Following United States v. Zipkin, which held that allowing introduction of testimony by
a bankruptcy judge testifying as an expert regarding the Bankruptcy Act was a prejudicial error,
this Court should not allow Berryhill to testify regarding the ACPA. United States v. Zipkin, 729
F.2d 384, 386-87 (6th Cir. 1984). The legal knowledge of Your Honor, as supplemented by the
jury instructions, would make any instruction on the ACPA by Berryhill “superfluous.” See id.
Thus, again, based upon FRE 704, this Court should exclude paragraphs 12-14 of Berryhill’s
Expert Report and preclude any testimony by Berryhill that instructs the jury as to the law of the
ACPA, including its history and application.
III.

Conclusion
For the reasons stated above, the Court should exclude:

3

1.

any and all testimony, including that present in Berryhill’s Expert Report (¶¶ 11,
29) regarding what constitutes bad faith intent as an inadmissible legal conclusion
under FRE 704;

2.

any and all testimony, including that present in Berryhill’s Expert Report (¶¶ 11,
29) regarding what constitutes bad faith intent as unduly prejudicial to Plaintiff
and in order to avoid any misleading of the jury under FRE 403;

3.

any and all testimony, including that present in Berryhill’s Expert Report (¶¶ 1214) regarding the scope, history, and application of the ACPA under FRE 704.

WHEREFORE, for all of the above-stated reasons, this Honorable Court is respectfully
asked to grant Plaintiff’s Motion in Limine to Exclude Testimony of and Certain Portion of the
Expert Report of Defendants’ Expert John Berryhill.
Respectfully submitted this 24th day of February, 2012.
/s/Enrico Schaefer__________
Enrico Schaefer (P43506)
Brian A. Hall (P70865)
TRAVERSE LEGAL, PLC
810 Cottageview Drive, Unit G-20
Traverse City, MI 49686
231-932-0411
[e-mail]
Lead Counsel for Plaintiff
Anthony P. Patti (P43729)
HOOPER HATHAWAY, PC
126 South Main Street
Ann Arbor, MI 48104
734-662-4426
[e-mail]
Co-Counsel for Plaintiff

4

CERTIFICATE OF SERVICE
I hereby certify that on the 24th day of February, 2012, I electronically filed the foregoing
paper with the Court using the ECF system which will send notification of such filing to the
following:
Enrico Schaefer (P43506)
Brian A. Hall (P70865)
TRAVERSE LEGAL, PLC
810 Cottageview Drive, Unit G-20
Traverse City, MI 49686
231-932-0411
[e-mail]
[e-mail]
Lead Counsel for Plaintiff

Nicholas J. Stasevich (P41896)
Benjamin K. Steffans (P69712)
BUTZEL LONG, PC
150 West Jefferson, Suite 100
Detroit, MI 48226
[phone]
[e-mail]
[e-mail]
Local Counsel for Defendants

Anthony Patti (P43729)
HOOPER HATHAWAY, P.C.
126 South Main Street
Ann Arbor, MI 48104
734-662-4426
[e-mail]
Co-counsel for Plaintiff

William A. Delgado (admitted pro hac vice)
WILLENKEN WILSON LOH & LIEB LLP
707 Wilshire Blvd., Ste. 3850
Los Angeles, CA 90017
213-955-9240
[e-mail]
Lead Counsel for Defendants
/s/Enrico Schaefer
Enrico Schaefer (P43506)
Brian A. Hall (P70865)
TRAVERSE LEGAL, PLC
810 Cottageview Drive, Unit G-20
Traverse City, MI 49686
231-932-0411
[e-mail]
Lead Counsel for Plaintiff

5