Great Lakes Transportation Holding LLC v. Yellow Cab Service Corporation of Florida, Inc. et al

Filing 98

Order Regarding Proposed Verdict Form Signed by District Judge Avern Cohn. (SCha)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION

GREAT LAKES TRANSPORTATION HOLDING, LLC
d/b/a/ METRO CARS,

Plaintiff,
v.

Case No. 12-10497

YELLOW CAB SERVICE CORPORATION OF
FLORIDA, INC., CULLAN MEATHE, METRO
CAB, LLC, METRO PRO LEASING, LLC, PALM
BEACH METRO TRANSPORTATION, LLC,
METRO TRANSIT, LLC, JACKSONVILLE
METRO TRANSPORTATION, LLC, and
PENINSULA TRANSPORTATION GROUP
ENTERPRISES, LLC,

HON. AVERN COHN

Defendants.
___________________________________/
ORDER REGARDING PROPOSED VERDICT FORM
I. INTRODUCTION
This is a trademark infringement case. Plaintiff offers chauffeured car-for-hire
services and uses the mark METRO CARS on transportation vehicles and other
advertisement materials. Plaintiff owns the mark METRO CARS by way of a purchase of
Metro Group Holding Company, Inc.’s (“Metro Group”) assets at a UCC foreclosure sale
on July 13, 2009. Plaintiff claims that defendants are infringing on the METRO CARS mark
by using the marks “METRO CARS” and “METRO CARSFL” in advertisement materials and
on transportation vehicles in Florida. The basic issues to be tried to a jury are (1) whether
defendants’ use of the METRO CARS and METRO CARSFL marks were pursuant to a valid

license agreement entered into between Metro Group and defendants, and, if so, whether
that agreement was terminated by plaintiff after it purchased Metro Group’s assets; (2) if
defendants’ use of the marks was not governed by a licence, whether defendants obtained
a right to use the marks by other means; (3) if defendants did not have a right to use the
marks, whether their use of the marks infringes on the METRO CARS mark; and (4)
whether plaintiff’s infringement action is barred by certain affirmative defenses.
Pursuant to the Third Amended Pretrial Order (Doc. 91), plaintiff lodged with the
Court a proposed verdict form on the issue of liability. (Doc. 92-1). Defendants filed
objections to plaintiffs proposed verdict form and submitted a draft verdict form. (Doc.93).
Thereafter, plaintiff filed a response to defendants’ objections and objections to defendants’
draft verdict form. (Doc. 94). On May 7, 2013, the Court held a hearing to resolve the
differences.1
II. THE QUESTIONS
A. Plaintiff’s Ownership of The METRO CARS Mark
Defendants say that the verdict form should begin with questions relating to the
plaintiff’s ownership of the METRO CARS mark. Ownership of the mark is not a question
for the jury. Defendants were not parties to the auction at which plaintiff was a party.
Defendants do not have standing to contest the acquisition of the mark by plaintiff.
B. Burden of Proof
Since the burden of proof differs as to several of the questions, each question
should distinguish between preponderance of the evidence and clear and convincing
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Obviously the final verdict form must be reflective of the instructions to the jury on the
law of the case.
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evidence.
C. Affirmative Defenses
Defendants assert certain affirmative defenses to plaintiff’s claim of infringement as
follows:
-

Acquiescence
Laches
Estoppel
Priority of Use
Unclean Hands
Abandonment
Fraud in the Procurement of Assets

Whether or not one or more of these defenses may be asserted by the defendants and
submitted to the jury depends on the law and/or the evidence at trial. It is not yet clear
which defenses, if any, will be raised by the evidence at trial. “A court is not required to
instruct the jury on a defense the theory of which is not even supported by the testimony.
. . .” United States v. Stapleton, 297 F. App’x 413, 423 (6th Cir. 2008) (citation omitted);
see also United States v. Gold Unlimited, Inc., 177 F.3d 472, 482 (6th Cir. 1999) (finding
that the district court did not err in failing to instruct the jury on defendant’s affirmative
defense where, among other things, the defendant failed to prove that a jury instruction was
appropriate based on the evidence proffered at trial); Hurt v. Coyne Cylinder Co., 956 F.2d
1319, 1326 (6th Cir. 1992) (requiring the trial judge, “in light of all the evidence presented
at . . . trial,” to determine “whether enough evidence . . . exists to issue jury instructions on
affirmative defenses.”).
D. Remaining Objections
The parties cannot agree on whether certain words should be incorporated in
particular questions. The parties should work together on a draft verdict form which
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incorporates this order as well as the jury instructions. A copy of the instructions and
verdict form should be lodged with the Court prior to the May 30, 2013 final pretrial
conference. If the parties cannot reach agreement a composite of the verdict form and jury
instructions reflecting the parties’ differences shall be submitted.

SO ORDERED.

S/Avern Cohn
AVERN COHN
UNITED STATES DISTRICT JUDGE

Dated: May 24, 2013

I hereby certify that a copy of the foregoing document was mailed to the attorneys of record
on this date, May 24, 2013, by electronic and/or ordinary mail.

S/Sakne Chami
Case Manager, [phone]

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