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

Filing 245

MOTION in Limine to exclude testeimony and expert reports of Defendants' Expert Richard Korf 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 THE EXPERT REPORTS OF DEFENDANTS’ EXPERT RICHARD E. KORF
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 the expert reports of Defendants’ Expert Richard E. Korf and states as follows:
1.

Plaintiff has sued Defendants under the Anti-Cybersquatting 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, Richard E. Korf (“Korf”), concluded that Defendants’ system

of automated computer algorithms and manual reviews “indicates to me a good faith effort to
prevent the registration of trademarks, rather than a deliberate attempt to target them.” Expert
Report ¶ 4. In doing so, Korf offers a legal conclusion about the threshold issue in the case,
which is whether Defendants had the requisite bad faith intent to profit from Plaintiff’s
trademarks as set forth in 15 U.S.C. §1125(d)(1)(B).
3.

Allowing testimony by Korf or admitting any evidence from his Expert Report or

Supplemental Expert Report at trial about the good faith, or alternatively lack of bad faith, intent
of the Defendants embraces an ultimate issue reserved for the trier of fact. Accordingly, such
testimony should be excluded from trial under FRE 704.
4.

In addition, Korf offers opinions about the ACPA’s meaning of “confusingly

similar” and the semantics associated with it. Korf’s testimony about an ultimate issue for the
trier of fact should be excluded under FRE 704. Korf is not a trademark lawyer and has no
trademark expertise. Moreover, Korf’s opinions regarding the semantics of a “confusingly
2

similar” determination, as included in his Supplemental Expert Report, do not satisfy FRE 702
and Daubert and thus should be excluded.
5.

Finally, Korf’s opinions are limited to the current version of Defendants’ system

of automated computer algorithms and manual reviews.

However, the current version of

Defendants’ system was not implemented or used at the time Defendants registered the
infringing domain names. Accordingly, Korf’s opinions regarding the current version of the
system, including those set forth in his expert reports, should be excluded as irrelevant under
FRE 401, 402, and alternatively as prejudicial under FRE 403.
6.

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

3

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 ................................................ iv
Index of Authorities .........................................................................................................................v
I.

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

II.

Argument .............................................................................................................................2
A.

Defendant’s Expert Korf’s Legal Conclusions as to the Ultimate Issues
Of Bad Faith and Confusing Similarity Should Be Excluded .................................2
1.

Korf’s Legal Conclusions Regarding Defendants’ Intent Should
Be Excluded .................................................................................................2

2.

Korf’s Legal Conclusions Regarding Whether Defendants’
Domain Names Are Confusingly Similar to Plaintiff’s Trademarks
or Third Party Marks Should Be Excluded..................................................4

B.
C.

Korf’s Opinions and Reports Relate Solely to Defendants’ Current
System and Are Irrelevant Under FRE 401 and 402 .............................................10

D.
III.

Korf’s Opinions Regarding the Semantics in the “Confusingly Similar”
Determination and the ACPA Do Not Meet FRE 702 and Daubert........................8

Alternatively, Korf’s Report and Opinions Should Be Excluded Under
FRE 403 .................................................................................................................11

Conclusion .........................................................................................................................12

i

BRIEF IN SUPPORT
Concise Statement of Issues Presented
1.

Whether the Court should exclude Defendants’ expert Korf’s testimony on an
ultimate issue in the case, namely whether Defendants had a bad faith intent to
profit from Plaintiff’s trademarks, 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 Korf’s testimony on an
ultimate issue in the case, namely whether Defendants’ domains are confusingly
similar to Plaintiff’s or other third party trademarks, under FRE 704 because such
determination is a legal conclusion reserved for the trier of fact?
Plaintiff answers: YES
Defendants answer: NO

3.

Whether the Court should exclude Defendants’ expert Korf’s testimony regarding
the semantics involved with a “confusingly similar” determination under FRE 702
and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993) because
Korf is not an expert in semantics let alone the ACPA?
Plaintiff answers: YES
Defendants answer: NO
ii

4.

Whether the Court should exclude Defendants’ expert Korf’s testimony and
reports under FRE 401 and 402 because his opinions relate to Defendants’ current
system of automated software and manual procedures rather than the system(s)
that was/were at issue at the time Defendants registered the alleged infringing
domain names of Plaintiff?
Plaintiff answers: YES
Defendants answer: NO

5.

Alternatively, whether the Court should exclude Defendants’ expert Korf’s
testimony and reports under FRE 403 because the presentation of such
information would be confusing, misleading, prejudicial, and a waste of time?
Plaintiff answers: YES
Defendants answer: NO

iii

Controlling or Most Appropriate Authority for the Relief Sought
FRE 401 .........................................................................................................................................10
FRE 402 .........................................................................................................................................10
FRE 403 .............................................................................................................................3, 4, 7, 11
FRE 702 .....................................................................................................................................8, 10
FRE 704 ...................................................................................................................................2, 3, 7

iv

Index of Authorities
Cases
Berry v. City of Detroit, 25 F.3d 1342, 1353 (6th Cir. 1994) .......................................................... 8
Coca-Cola Co., 382 F.3d at 783 ..................................................................................................... 6
DaimlerChrysler v. Net Inc., 388 F.3d 201, 205-206 (6th Cir. 2004) ............................................. 6
Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 595 (1993)............................... 4, 8
Ford Motor Co. v. Greatdomains.com, Inc., 177 F. Supp. 2d 635, 641 (E.D. Mich. 2001)........... 5
H.C. Smith Investments, L.L.C. v. Outboard Marine Corp., 181 F. Supp. 2d 746, 749
(W.D. Mich. 2002).............................................................................................................. 3
Harrods Ltd. v. Sixty Internet Domain Names, 157 F. Supp. 2d 658, 677 (E.D. Va. 2001) .......... 6
N. Light Tech., Inc. v. N. Lights Club, 236 F.3d 57, 66 n.14 (1st Cir. 2001).................................. 6
Pluck v. BP Oil Pipeline, Co., 640 F.3d 671, 677 (6th Cir. 2011)................................................... 8
Shahid v. City of Detroit, 889 F.2d 1543 (6th Cir. 1989) ............................................................... 2
Smelser v. Norfolk Southern Railway, 105 F.3d 299 (6th Cir. 1997) .............................................. 9
Southern Co. v. Dauben Inc., 324 Fed. Appx. 309, 318 (5th Cir. 2009) ......................................... 6
U.S. v. Gallon, 257 F.R.D. 141, 153-54 (E.D. KY 2009)............................................................... 4
Woods v. Lecureux, 110 F.3d 1215, 1220 (6th Cir. 1997)........................................................... 2, 8
Statutes
15 U.S.C. § 1125(d)(1)(A)(ii)(I)-(II) .............................................................................................. 5
Rules
FRE 401 ........................................................................................................................................ 10

v

FRE 402 ........................................................................................................................................ 10
FRE 403 ........................................................................................................................................ 11
FRE 702 .......................................................................................................................................... 8
FRE 704 Notes of Advisory Committee on Proposed Rules .......................................................... 2

vi

I.

Factual Background
Defendants’ expert, Richard E. Korf, is a computer science professor who was retained to

“provide my opinion on whether Firstlook’s automated and manual filtering systems are
designed to prevent the registration of internet domain names that may be confusingly similar to
or identical to registered trademarks.” See Exhibit A, Expert Report, ¶ 1.2. Korf submitted an
Expert Report on September 10, 2010, submitted a Supplemental Expert Report on November
19, 2010, was deposed on December 8, 2010, and issued a “corrected” Expert Report on
December 10, 2010. His conclusion “is that they have put in place procedures, both automated
and manual, that are designed to avoid cybersquatting.” See Exhibit B, Korf Deposition at pg.
320, lines 18-20.1
The entirety of his opinion is limited to the design goal of the system. See Exhibit B,
Korf Deposition at pg. 127, lines 20-22. He does not offer an opinion as to whether the system
actually prevented cybersquatting (See Exhibit B, Korf Deposition at pg. 127, lines 16-22), the
operation of the system, the reliability of the system, whether bugs or problems existed in the
system, the performance of the system (See Exhibit B, Korf Deposition at pg. 196, lines 4-17),
the effectiveness of the system (See Exhibit B, Korf Deposition at pg. 221, lines 6-7), or the
success of the system (See Exhibit B, Korf Deposition at pg. 321, lines 15-25). He does,
however, opine about the good faith intent of Defendants based solely upon its present system,
whether domain names are confusingly similar to trademarks, and his interpretation of the legal
meaning of confusingly similar.

1

Korf concludes that Defendants’ system is designed to avoid cybersquatting, yet admits that he has not compared
Defendants’ system to any other system. See Exhibit B, Korf Deposition at pg. 267, line 14.

1

II.

Argument
A.

Defendants’ Expert Korf’s Legal Conclusions as to the Ultimate Issues of
Bad Faith and Confusing Similarity 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.”).
1.

Korf’s Legal Conclusions Regarding Defendants’ Intent Should Be
Excluded

Korf’s entire opinion is based solely upon the design of the Defendants’ system. Korf
himself admitted that Defendants retained him to offer a legal conclusion as to the intent of
Defendants. “The question was: What was the intent? What was it designed to do?” See Exhibit
B , Korf Deposition at pg. 128, lines 3-4. True to Defendants’ call, a legal conclusion is exactly
what Korf provides, concluding “they have put in place procedures, both automated and manual,
that are designed to avoid cybersquatting.” See Exhibit B, Korf Deposition at pg. 320, lines 1820.
In doing so, he specifically addresses the threshold issue in this case – whether
Defendants had a bad faith intent to profit from Plaintiff’s marks – albeit couched in the term
“designed.” That said, during his deposition, he unequivocally confirmed that his use of the term
2

“design” is the equivalent of intent. He stated: “’Designed’ is a – is a question of intent.” See
Exhibit B, Korf Deposition at pg. 149, line 1. Thus, by Korf’s very own definition, he is
offering the impermissible legal conclusion that Defendants have put in place procedures, both
automated and manual, that are intended to avoid cybersquatting.
Korf further offers his legal conclusion in his Expert Report. In fact, he goes so far as to
say that Defendants acted in “good-faith”:
It is my opinion that Firstlook has developed and implemented a fairly
sophisticated system, including both automated computer algorithms and manual
reviews, that is designed to prevent the registration of trademarks. While no such
system can operate flawlessly, this indicates to me a good-faith effort to prevent
the registration of trademarks, rather than a deliberate attempt to target them.
See Exhibit A, Expert Report, ¶ 4. Korf’s legal conclusion is not limited to his Expert Report.
Korf went on to state during his deposition that it “appeared to me to be a good faith effort to
avoid cybersquatting.” See Exhibit B, Korf Deposition at pg. 267, lines 16-19. These legal
conclusions, which specifically relate to 15 U.S.C. § 1125(d)(1)(A)(i), are of the exact kind FRE
704 and the case law seek to preclude. As such, the entirety of Korf’s reports as it relates to the
legal conclusion that Defendants acted with good faith intent when they designed a system to
avoid cybersquatting, along with any testimony mirroring the same, should be excluded. 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 enforce the requirements of FRE 403 with regard to expert
testimony and “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).

3

Alternatively, at the very least, Korf should be precluded from using the terms good faith,
bad faith, or commenting in any way that provides a legal conclusion as it relates to the
necessary intent element of the ACPA or cybersquatting cause of action. During his deposition,
Korf admits that he should not have used the term “good faith” given its legal connotation in this
case. See Exhibit B, Korf Deposition at pg. 268, lines 1-7. Korf even goes so far as to say: “I’ll
tell you right now I don’t imply a – I don’t mean to imply a legal standard here because I’m –
I’m certainly – I’m not a lawyer, and I’m not certain what a court would consider a good faith
effort in here according to the law.” See Exhibit B, Korf Deposition at pg. 286, lines 16-25. In
light of Korf’s own admissions, and in order to avoid undue prejudice, mislead the jury, or juror
confusion under FRE 4032, any testimony regarding Defendants’ intent to avoid cybersquatting
should be precluded and the portions of his Expert Report, including his conclusion in Paragraph
4, should be excluded from trial and not admissible as evidence.
2.

Korf’s Legal Conclusions Regarding Whether Defendants’ Domain
Names are Confusingly Similar to Plaintiff’s Trademarks or Third
Party Marks Should be Excluded

Korf repeatedly uses the terms “confusingly similar” throughout his Expert Reports and
offers an explanation as to the semantic meaning of the term “confusingly similar” in his
Supplemental Expert Report. See Exhibit A, Expert Report, ¶¶ 1.2, 1.4; See Exhibit C,
Supplemental Expert Report ¶ 3. In addition, throughout his deposition, Korf used the term
“confusingly similar” when referring to a comparison of domain names. See, e.g., Exhibit B,
Korf Deposition at pgs. 133-137, 176-183. Despite admitting use of the term “confusingly
2

See U.S. v. Gallon, 257 F.R.D. 141, 153-54 (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); see also Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 595 (1993) (“the judge in
weighing possible prejudice against probative force under Rule 403 … exercises more control over experts than lay
witnesses.”).

4

similar” is a legal conclusion, and having Mr. Delgado object to a question regarding whether or
not a domain name is confusingly similar to a trademark, Korf’s reports offer testimony
regarding the ability of Defendants’ system to avoid registering domain names confusingly
similar to trademarks. See Exhibit B, Korf Deposition at pg. 176, lines 12-23. In doing so, Korf
offers a legal conclusion regarding whether a domain name is confusingly similar to a trademark,
as required under the ACPA in 15 U.S.C. § 1125(d)(1)(A)(ii)(I)-(II).
In particular, Korf is offering legal conclusions regarding confusing similarity, as well as
inaccurate and contrary to law opinions regarding confusing similarity. See Exhibit B, Korf
Deposition at pgs. 291-293 (provides analysis for determining confusing similarity between
<qwunderground.com> and WUNDERGROUND). Moreover, Korf offers a legal conclusion
regarding the ability of a computer to make reliable judgments about what would be confusingly
similar to a person. See Exhibit C, Supplemental Expert Report ¶ 3. He even goes so far as to
make legal conclusions regarding whether certain domains are confusingly similar to, or
infringing, trademarks. See Exhibit C, Supplemental Report ¶ 3; Exhibit B, Korf Deposition at
180, lines 12-21; pg. 183; pg. 229, lines 16-18. Korf should be precluded from offering any
testimony that serves as a legal conclusion as to whether Defendants’ domain names are
confusingly similar to Plaintiff’s trademarks or the trademarks of third parties.
It is for the Court, via the jury instructions, to provide the law and allow the jurors to
decide if Defendants’ domain names are confusingly similar to Plaintiff’s trademarks. The law
is clear, “a domain name that incorporates a trademark is 'confusingly similar to' that mark if
'consumers might think that [the domain name] is used, approved, or permitted' by the mark
holder." Ford Motor Co. v. Greatdomains.com, Inc., 177 F. Supp. 2d 635, 641 (E.D. Mich.
5

2001)Error! Bookmark not defined. (quoting Harrods Ltd. v. Sixty Internet Domain Names,
157 F. Supp. 2d 658, 677 (E.D. Va. 2001)). Moreover, courts have consistently "found that slight
differences between domain names and registered marks, such as the addition of minor or
generic words to the disputed domain names are irrelevant." Id. at 641; see also DaimlerChrysler
v. Net Inc., 388 F.3d 201, 205-206 (6th Cir. 2004). Korf is not permitted to provide a legal
conclusion regarding confusing similarity to the jury.
In addition, it is entirely improper for Korf to attempt to educate the jury about the
meaning of the ACPA’s “confusingly similar” requirement, especially where he has not read the
statute and admits to not knowing the legal standard. See Exhibit B, Korf Deposition at pg. 287,
lines 2-3, 13-19. He has displayed a propensity to interject additional factors, such as the
context/content of the website itself, into the determination of confusing similarity. See Exhibit
B, Korf Deposition at pg. 289, lines 15-21; pg. 295, lines 16-18; pg. 299, line 18 to pg. 300, line
20; pg. 316. In fact, his Supplemental Expert Report makes such statements as: “Even a name
which is identical to a trademark may not infringe the trademark if it is used in a different
context” and makes conclusions regarding examples involving Apple and Nike. Such testimony
is improper and contrary to law. See Southern Co. v. Dauben Inc., 324 Fed. Appx. 309, 318 (5th
Cir. 2009) (“the likelihood of confusion test in trademark infringement law is different, and more
comprehensive, than the test for "confusingly similar" under ACPA. See N. Light Tech., Inc. v.
N. Lights Club, 236 F.3d 57, 66 n.14 (1st Cir. 2001) ("[T]he likelihood of confusion test of
trademark infringement is more comprehensive than the identical or confusingly similar
requirement of ACPA, as it requires considering factors beyond the facial similarity of the two
marks." (internal quotation marks omitted)); see also Coca-Cola Co., 382 F.3d at 783 ("The
6

inquiry under the ACPA is thus narrower than the traditional multifactor likelihood of confusion
test for trademark infringement.")). Ultimately, it is up to Defendants, without the impermissible
legal conclusions of Korf, to convince the jury that the bad faith factors under the ACPA weigh
in their favor.
In sum, Korf’s stated use of “confusingly similar” is not in a legal sense consistent with
the ACPA and delves into the standard for trademark infringement (i.e. likelihood of consumer
confusion). See Exhibit B, Korf Deposition at pg. 306, lines 14-25. As such, it should be
excluded under FRE 704. Moreover, given the unfair prejudice and juror confusion that would
assuredly result, FRE 403 warrants that the testimony by Korf regarding how the confusingly
similar determination should be made and what factors into it be excluded. In summary, this
Court should exclude the following:


Paragraph 4 of his Expert Report regarding design of Defendants’ system to avoid
registration of “confusingly similar” domain names;



Paragraph 3 of his Supplemental Expert Report regarding the role of semantics of
“confusingly similar”;



Paragraph 5 of his Supplemental Expert Report regarding determinations as to what
constitutes “confusingly similar” domain names;



Any and all testimony by him offering an opinion as to whether a particular domain is
“confusingly similar” to, infringes on, or cybersquats on a trademark should be
excluded. See, e.g., Exhibit B, Korf Deposition at pgs. 304-305 (concluding that
niceshoes.com is not confusingly similar to Nike Shoes); see also Exhibit B, Korf
Deposition at pgs. 314-316 (discussing what constitutes infringement); see also See
7

Exhibit B, Korf Deposition at pg. 320, lines 18-20 (“My opinion is that they have put
in place procedures, both automated and manual, that are designed to avoid
cybersquatting.”).
B.

Korf’s Opinion Regarding the Semantics in the “Confusingly Similar”
Determination and the ACPA Do Not Meet FRE 702 and Daubert

Korf’s Supplemental Expert Report offers a section entitled “The Role of Semantics in
“Confusingly Similar.” See Exhibit C, Supplemental Expert Report ¶ 3. He concludes that
“judgments about what is confusingly similar are complex judgments based on the meanings of
words and the contexts in which they are used.” In addition, he attempts to define,3 offers
commentary regarding the “confusingly similar” determination and opines that it cannot be
completely automated and requires human judgment. Id. These opinions are meant to bootstrap
his ultimate conclusion that Defendants’ system was designed to prevent cybersquatting.
However, his opinions fail to meet the requirements for admissibility under FRE 702 and
Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993).
Korf fails to satisfy the first requirement under FRE 702 and Daubert, “whether the
proposed expert is qualified by knowledge, skill, experience, education, or training.” See Pluck
v. BP Oil Pipeline, Co., 640 F.3d 671, 677 (6th Cir. 2011). His craft is computer science, both in
education and experience. He is not an English major or English professor. He has no stated
experience in the philosophy of language or the study of the meaning of words. Put simply, Korf
lacks the requisite expertise to offer any expert opinion regarding semantics. Lacking further is

3

See Berry v. City of Detroit, 25 F.3d 1342, 1353 (6th Cir. 1994) (overturning verdict where expert witness defined
term “deliberate indifference”); see also Woods v. Lecureux, 110 F.3d 1215, 1220 (6th Cir. 1997) (upholding district
court’s ruling prohibiting expert witness from defining the term “deliberate indifference”).

8

his expertise in semantics as it relates to the “confusingly similar” language present in the
ACPA, which he has not even read. See Exhibit B, Korf Deposition at pg. 287, lines 2-3.
Moreover, not only are Korf’s legal conclusions regarding what the ACPA’s confusing
similarity language impermissible, as set forth above, but his theory on semantics is not relevant
and will not assist the trier of fact to understand the evidence or to determine a fact in issue. The
jury is entitled to determine whether or not a domain is confusingly similar to a trademark based
upon the jury instructions to be provided by this Court and its own knowledge, without Korf’s
unreliable, unsupported, and legal conclusions. Allowing Defendants to introduce this portion of
Korf’s report or elicit testimony regarding the meaning of “confusing similarity” and how that
meaning factors into whether Defendants’ system was designed to prevent cybersquatting
invades the province of the jury, and thus it should be excluded.
In light of the above, it warrants little attention to the remaining Daubert factors.
Nevertheless, Korf has not provided any facts or data to support his testimony regarding the
meaning of words, has not identified any reliable principles or methods, and has not adhered to
or applied any such principles or methods in a reliable way. Most telling, the fifth factor
considered by many courts, including the Sixth Circuit, confirms that Korf’s opinions regarding
semantics should be excluded for they were developed expressly for the purposes of testifying
rather than out of research concluded independent of this litigation. See Smelser v. Norfolk
Southern Railway, 105 F.3d 299 (6th Cir. 1997). Put simply, Korf is serving as Defendants’
mouthpiece in hopes of confusing the jury regarding the meaning of, test for, and legal principles
applicable to a “confusing similarity” determination under the ACPA. See Exhibit B, Korf
Deposition at pg. 86. For the reasons set forth above, Paragraph 3 of Korf’s Supplemental
9

Expert Report and any testimony related thereto should be excluded under FRE 702 and
Daubert.
C.

Korf’s Opinions and Report Relate Solely to Defendants’ Current System
and are Irrelevant Under FRE 401 and 402

Korf’s entire analysis and opinion is based upon Defendants’ system as it currently exists.
See Exhibit B, Korf Deposition at pg. 74, lines 21-25; pg. 143, 14-25; pg. 144, 12-14. Korf
confirms he has no opinions as it relates to prior versions of Defendants’ system, be it automated
or manual. See Exhibit B, Korf Deposition at pg. 283, lines 2-4. However, Defendants’ current
system, which includes additional automated software and additional manual reviewers, is not at
issue. Instead, Defendants’ system as it existed at each point in time (including when no system
was in place) it registered the alleged infringing domains of Plaintiff is at issue in order to
provide relevant evidence regarding Defendants’ bad faith intent.
Of the known infringing domain names at issue in this lawsuit, the first was registered by
Defendants on or about 2004. Korf has no opinion related to Defendants’ system at this time,
thus any facts relating to the current automated procedures and manual procedures are of no
consequence to determining the outcome of this matter. As such, consistent with FRE 401 and
FRE 402, Korf’s entire reports and opinions related to Defendants’ current system are irrelevant
and not admissible.
In fact, Korf has no foundation as to when Defendants’ particular system was
implemented. See Exhibit B, Korf Deposition at pg. 151, lines 5-11.

10

D.

Alternatively, Korf’s Report and Opinions Should be Excluded Under FRE
403

Alternatively, even if the Court were to find that Korf’s reports and testimony regarding
Defendants’ current system were relevant, it should nevertheless exclude the reports and
testimony under FRE 403, because the probative value of evidence regarding a system not used
“is substantially outweighed by the danger of unfair prejudice, confusion of the issues, or
misleading the jury, or by consideration of undue delay, [and] waste of time ….” FRE 403.
Allowing such testimony would be like allowing an expert to opine about the safety of a
2012 automobile when the one at issue was from 2002 and lacked the same safety mechanisms
(such anti-lock breaks, side air bags, and lane change alerts).

Plaintiff would be unfairly

prejudiced by risking that the jury would confuse Defendants’ current system with what was
available in 2004, for example. The jury will likely mistakenly believe that additional automated
and manual procedures now present evidenced good faith on Defendants’ behalf, though such
additional automated and manual procedures were not in fact used in 2004. Furthermore, the
jury would be misled as to the adequacy of Defendants’ system 4 and confused as to what it is to
consider in determining Defendants’ bad faith intent.
In addition, the Court’s valuable time would be wasted by the presentation of Korf’s legal
conclusions regarding the design/intent of Defendants’ current systems. Given that Korf, as
noted above, has no opinions regarding anything beyond mere design, rather than actual
performance, of Defendants’ system, such testimony would only further delay trial. Ultimately,

4

This assumes the adequacy of Defendants’ system is relevant to a bad faith determination, which Plaintiff
maintains it is not.

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the impermissible, irrelevant, and legal conclusions of Korf warrant exclusion under FRE 403 in
order to avoid prejudice to Plaintiff.
III.

Conclusion
For the reasons stated above, the Court should exclude:
1.

any and all testimony, including that present in Korf’s Expert Report (¶ 4) and
Supplemental Expert Report, relating to Defendants’ intent as an inadmissible
legal conclusion under FRE 704;

2.

any and all testimony, including that present in Korf’s Expert Report (¶ 4) and
Supplemental Expert Report (¶¶ 3,5), relating to the determination of what
constitutes “confusingly similar” under the ACPA as an inadmissible legal
conclusion under FRE 704;

3.

any and all testimony, including that present in Korf’s Expert Report and
Supplemental Expert Report (¶ 3), relating to the semantics involved in and
meaning of “confusingly similar” as inadmissible under FRE 702 and Daubert;

4.

any and all testimony, including Korf’s entire Expert Report and Supplemental
Expert Report, relating solely to Defendants’ current system of automated and
manual procedures designed to avoid cybersquatting as immaterial and irrelevant
under FRE 401 and 402, or alternatively due to prejudice, confusion, waste of
time, and other reasons under FRE 403.

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 Expert Reports of
Defendants’ Expert Richard E. Korf.
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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

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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

14