Honeywell International Inc. v. ICM Controls Corp.
ORDER: (1) Defendant ICM Controls Corp.'s Motion to Exclude Testimony of Mr. Pothier [Dkt. No. 427 ] is GRANTED IN PART AND DENIED IN PART. Pothier's testimony will be limited as stated in the body of the opinion. (2) Plaintiff Honeywell International Inc.'s Motion to Exclude Expert Testimony of Adam Vaczek [Dkt. No. 420 ] is GRANTED IN PART AND DENIED IN PART. Vaczek's testimony will be limited as stated in the body of the opinion. (Written Opinion) Signed by Judge Joan N. Ericksen on January 26, 2017. (CBC)
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
Case No. 11-cv-569 (JNE/TNL)
ICM CONTROLS CORP.,
Before the Court are dueling Daubert motions in this intellectual property case involving
devices used with heating, ventilating, and air conditioning (“HVAC”) systems. Defendant ICM
Controls Corp. (“ICM”) moves to exclude certain testimony of one of Plaintiff Honeywell
International Inc.’s (“Honeywell”) expert witnesses, Richard Pothier [Dkt. No. 427]. Honeywell
moves to exclude certain testimony of an ICM expert witness, Adam Vaczek [Dkt No. 420].
These are not the first Daubert motions to be considered in this case. On August 27,
2014, the Court ruled on five earlier Daubert motions, including another Honeywell motion to
exclude testimony by Vaczek, which the Court granted in part and denied in part. See Dkt. No.
338 (“August 2014 Order”). The Court also ruled on ICM’s motions for partial summary
judgment, finding one of Honeywell’s patents to be invalid and granting the motions as to
Honeywell’s false advertising and trade dress infringement claims. See id. at 2, 17 n. 9, 26, 42;
see also Dkt. No. 359, at 5. After the Court decided those motions, one of Honeywell’s experts,
David Schumacher, unfortunately passed away. See Dkt. No. 360. The Court allowed
Honeywell to substitute Pothier as an expert witness in Schumacher’s stead. See Dkt. Nos. 398,
408. In allowing the substitution, the magistrate judge rejected ICM’s assertions that Pothier
introduced new subject matter and relied on documents that Schumacher had not relied on. The
Court affirmed the magistrate judge’s order. 1 Dkt. No. 408. After the parties exchanged expert
reports—Honeywell offering Pothier’s replacement report, ICM responding with a rebuttal
report by Vaczek, and Pothier replying—and had an opportunity to conduct discovery relating to
these reports, the parties filed the Daubert motions now under consideration.
The standard for the admission of expert testimony is well established. This opinion
builds on the Court’s citation and application of the relevant law in its August 2014 Order. To
reiterate, 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 . . . specialized knowledge will help the trier of fact to understand
the evidence or to determine a fact in issue;
(b) the testimony is based on sufficient facts or data;
(c) the testimony is the product of reliable principles and methods; and
(d) the expert has reliably applied the principles and methods to the facts of the
The magistrate judge declined to rule on ICM’s argument that some of Pothier’s
proposed testimony was irrelevant given what ICM contended was the scope of the remaining
claims. The magistrate judge explicitly chose not to comment on whether Honeywell’s claim
under the Minnesota Deceptive Trade Practices Act (Count XIX) remains alive; nor did the
Court opine on the question. See Dkt. No. 398, at 11; Dkt. No. 408, at 2. The Court granted
summary judgment against Honeywell on its Lanham Act trade dress infringement, false
advertising, and false designation of origin claims (Counts XIII through XVIII). Aug. 27, 2014
Order at 26, 42; Dkt. No. 359, at 5. The Court notes that in ICM’s motion for summary
judgment on Honeywell’s false designation of origin claims, Dkt. No. 243, it briefly argued that
summary judgment should be granted on Count XIX in addition to Count XVIII.
Whether Count XIX, which relies on the same factual allegations as those claims by
incorporating them by reference, see Am. Compl. ¶¶ 199-200, Dkt. No. 32, remains viable is a
question that has not been reached and was not raised for the Court’s consideration in these
Daubert motions. ICM may file a motion with supporting papers addressing this question within
three weeks of the date of this order. Honeywell’s response, if any, will be due two weeks later.
No reply will be permitted. Each party’s memorandum is limited to 4,500 words.
Fed. R. Evid. 702. Under the United States Supreme Court’s interpretation of Rule 702 in
Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), and its progeny, “[t]here is
no single requirement for admissibility as long as the proffer indicates that the expert evidence is
reliable and relevant.” Unrein v. Timesavers, Inc., 394 F.3d 1008, 1011 (8th Cir. 2005).
The Court will address first the challenges to Pothier’s proffered testimony and then the
challenges to Vaczek’s proffered rebuttal testimony.
A. ICM’s Motion to Exclude Pothier’s Testimony
ICM does not seek to exclude Pothier’s testimony entirely and does not challenge his
qualifications generally. Rather, ICM targets Pothier’s testimony related to Honeywell’s
copyright infringement claims in this case (Counts V through XII), focusing on three topics:
originality of the allegedly infringed materials, substantial similarity between the alleged
infringed and infringing materials, and a causal nexus with regard to damages.
Honeywell’s copyright claims allege that the labels and product manuals that ICM has
included with the sale of certain HVAC-related products infringe Honeywell’s copyrights in its
own labels and manuals used with its competing products. In its August 2014 Order, the Court
set out some of the relevant law in its evaluation of Honeywell’s earlier motion to exclude
Vaczek’s testimony. Because the parties’ arguments with regard to the current Daubert motions
echo many of the same themes, another review of the key copyright law is necessary.
To establish copyright infringement, two elements must be proven: “(1) ownership of a
valid copyright, and (2) copying of constituent elements of the work that are original.” Feist
Publ’ns, Inc. v. Rural Tel. Servs. Co., 499 U.S. 340, 361 (1991); see also Rottlund v. Pinnacle
Corp., 452 F.3d 726, 731 (8th Cir. 2006) (citation omitted). To obtain a valid copyright, a work
must “possess the requisite originality.” See Feist, 499 U.S. at 344, 348. “Original” means
merely that “the work was independently created by the author . . . and that it possesses at least
some minimal degree of creativity.” Id. at 345. But obtaining a copyright in a work does not
serve as an impregnable shield against all copying, because only original elements are
protectable. “The mere fact that a work is copyrighted does not mean that every element of the
work may be protected.” Id. at 348 (emphasis added). Thus, “[o]thers may copy the underlying
facts” in a copyrighted work, “but not the precise words used to present them.” Id. Ideas too can
be copied. Id. at 350; see also Toro Co. v. R & R Prods. Co., 787 F.2d 1208, 1212 (8th Cir.
1986). Because ideas are not copyrightable, the factfinder must “filter out ideas and scènes à
faire” in determining whether the works are substantially similar. Frye v. YMCA Camp Kitaki,
617 F.3d 1005, 1009 n.3 (8th Cir. 2010); see also Hartman v. Hallmark Cards, Inc., 833 F.2d
117, 121 (8th Cir. 1987) (affirming the conclusion that two works were not substantially similar
in expression and “also agree[ing]” that “any remaining apparent similarities are either
noncopyrightable ideas, scènes à faire, or of an insubstantial nature”). Scènes à faire are
“incidents, characters or settings which are as a practical matter indispensable, or at least
standard, in the treatment of a given topic;” in other words, they are “hackneyed elements,”
which “cannot furnish the basis for finding substantial similarity.” Frye, 617 F.3d at 1008
(quoting Taylor Corp. v. Four Seasons Greetings, LLC, 315 F.3d 1039, 1042-43 (8th Cir. 2003)).
A related concept is merger. Under the doctrine of merger, “copyright protection will be denied
to even some expressions of ideas if the idea behind the expression is such that it can be
expressed only in a very limited number of ways.” Toro, 787 F.2d at 1212.
As to the second element of infringement, copying may be established by direct evidence
or “by showing that the defendants had access to the copyrighted materials and showing that
substantial similarity of ideas and expression existed between the alleged infringing materials
and the copyrighted materials.” Rottlund, 452 F.3d at 731. Analyzing whether substantial
similarity exists requires two steps. First, “[s]imilarity of ideas is evaluated extrinsically,
focusing on objective similarities in the details of the works.” Id. Expert opinion is appropriate
in this step. Id. Second, if the ideas are substantially similar, then “similarity of expression is
evaluated using an intrinsic test depending on the response of the ordinary, reasonable person to
the forms of expression.” Id. (quoting Hartman, 833 F.2d at 120). “Infringement of expression
occurs only when the total concept and feel of the works in question are substantially similar.”
Hartman, 833 F.2d at 121; see also Mulcahy v. Cheetah Learning LLC, 386 F.3d 849, 853 (8th
Cir. 2004). For this second step, “[e]xpert opinion and analytical dissection are not appropriate
to establish or rebut similarity of expression.” Rottlund, 452 F.3d at 731.
ICM first argues that Pothier is unqualified to render opinions on how many ways there
are to express certain ideas in the labels and manuals for the HVAC-related products at issue and
how a multitude of possible variations proves the originality of Honeywell’s works. See ICM
Br. 8-12, Dkt. No. 430. ICM takes issue with, for example, Pothier’s conclusions from a review
of product literature of other competitors in the industry that “[t]here are original aspects to the
form and content of” Honeywell’s labels and manuals. Stradley Decl. Ex. A ¶ 78, Dkt. No. 431.
Similarly, ICM objects to Pothier’s statement that there are “numerous ways in which to convey
information found in technical literature.” Id. ¶ 84.
ICM aptly points out that the Court faced similar objections by Honeywell to Vaczek’s
testimony. In his initial report, Vaczek included “statements to the effect that there are ‘limited
ways’ to say something, the words used are ‘simple ways to convey the message,’ or the
language uses the ‘most basic words.’” August 2014 Order at 49. The Court noted that Vaczek
lacks experience drafting manuals or labels, and concluded:
While he may have reviewed many such materials, his credentials do not reflect
any special expertise in matters of linguistics. Accordingly, while he may share
his knowledge about the necessity and typicality of particular content, including
whether technical characteristics are generally expressed in a particular manner,
he may not opine on whether there are limited forms of expression for the content
or whether a particular expression is the most basic or simple one.
Id. Like Vaczek, Pothier has extensive experience in the HVAC industry in various roles, but he
lacks experience and expertise in drafting technical documents and is not a linguistics expert.
Therefore, like Vaczek, he will be precluded from offering opinions about whether there are
limited or myriad ways of expressing certain facts or ideas, because he is not qualified as an
expert on that topic. Fed. R. Evid. 702. He may, like Vaczek, testify about whether technical
characteristics are commonly expressed in a particular manner and may review the literature to
provide examples. 2
Second, ICM points to some examples of statements where Pothier appears to recite a
legal standard. ICM Br. 11. For instance, he says that “[f]unctionality is irrelevant to the
questions of authorship and originality.” Stradley Decl. Ex. B ¶ 34, Dkt. No. 431. Similarly, in
discussing the materials he considered, Pothier recites what he understands to be the test for
copyright infringement. Id. Ex. A ¶ 42. The parties are both reminded that “the law is given to
the jury by the court and not introduced as evidence.” August 2014 Order at 51 (quoting United
States v. Gleason, 726 F.2d 385, 388 (8th Cir. 1984)). At trial, the experts should be careful not
to instruct the jury on the law.
Recognizing that expert reports provide notice of the testimony that expert witnesses
“will express,” Fed. R. Civ. P. 26(a)(2)(B)(i), but do not necessarily match up word-for-word to
the witness’s in-court testimony, the Court throughout this Order describes the type of testimony
allowed or to be excluded but does not cite every instance of similar statements made in a report.
Third, ICM argues that Pothier’s analysis and conclusions about the originality of
Honeywell’s labels and manuals should be excluded because they bear on the ultimate issue of
originality. ICM Br. 11. Expert opinion “embracing an ultimate issue is permissible under
Federal Rules of Evidence 704(a) . . . .” Rottlund, 452 F.3d at 732. But the Court must still
“guard against invading the province of the jury on a question which the jury was entirely
capable of answering without the benefit of expert opinion.” Id. (citation omitted). As stated
above, for copyright purposes, originality has two aspects: independent creation and possessing
some minimal degree of creativity. Feist, 499 U.S. at 345. Pothier may testify on the second of
these aspects. 3 He may, for instance, testify about whether his knowledge and experience with
the HVAC industry, including his familiarity with other competitors’ manuals and labels, leads
him to conclude that the works at issue have creative elements. In this sense, his testimony is the
counterpoint to Vaczek’s testimony that elements of Honeywell’s works are not protectable
under, for example, the merger or scènes à faire doctrines or to the extent that only facts or ideas
are similar. The Court has already ruled that such testimony by Vaczek, which can be found in
Section A of Vaczek’s initial expert report (Dkt. No. 276-1), is admissible. See August 2014
Order at 48-49. Thus, for example, if Vaczek testifies that a certain phrase is, to his knowledge,
universally used in HVAC manuals or labels, Pothier would be allowed to testify that he has seen
different variations in other competitors’ literature.
No one asserts that Pothier can opine on whether Honeywell created its works
independently, so the Court need not decide, as in Rottlund, whether Pothier has any firsthand
knowledge on the topic. See 452 F.3d at 732. Because “original” has two meanings in this legal
context, and Pothier only appears qualified to opine with regard to one of them, he should be
careful with his use of that term.
2. Similarity of Expression
Next, ICM seeks to exclude Pothier’s testimony comparing Honeywell’s labels and
manuals to ICM’s. ICM Br. 12-14. For example, Pothier states that “ICM’s accused manuals
and labels contain large portions of material generated by Honeywell verbatim,” and that having
“performed a side-by-side comparison of the Honeywell manuals and labels and the
corresponding ICM manuals and labels,” his “observations confirm the amount of verbatim
reproduction/similarity.” Stradley Decl. Ex. A ¶¶ 81-82. This type of analysis and conclusion
about the similarity of expression between the works is clearly inappropriate under Eighth
Circuit law. See Rottlund, 452 F.3d at 731; Hartman, 833 F.2d at 120. Whether there is
substantial similarity of expression is for the jury to decide from the viewpoint of the ordinary,
reasonable person. Rottlund, 452 F.3d at 731. Just as Vaczek’s proposed testimony contrasting
various expressive aspects of the works was excluded, August 2014 Order at 47-48, so too
Pothier’s testimony about similarity of expression (including references to what he deems to be
“verbatim” similarity) will be excluded.
3. Damages Nexus
Finally, ICM asserts that Pothier offers opinions related to copyright damages that apply
the wrong legal standard and therefore are unhelpful and irrelevant. ICM Br. 14-26. ICM
objects to testimony about the importance, or even necessity, of including labels and manuals
with the HVAC-related products at issue. For example, Pothier concludes that “[w]ithout the
affixed labels and accompanying literature, there would be no product – it could not be sold at
all.” Stradley Decl. Ex. A ¶ 95. ICM also objects to testimony about how Honeywell uses labels
and manuals to make its products more attractive to the contractors who purchase them. See,
e.g., id. ¶¶ 98-99, 110-11; see generally id. ¶¶ 85-114.
The parties dispute the relevant standard for causation in copyright damages. Assuming
that Honeywell establishes copyright infringement, it will be entitled to recover its damages and
“any profits of the infringer that are attributable to the infringement and are not taken into
account in computing the actual damages.” 17 U.S.C. § 504(b) (2010). The statute further
provides: “In establishing the infringer’s profits, the copyright owner is required to present proof
only of the infringer’s gross revenue, and the infringer is required to prove his or her deductible
expenses and the elements of profit attributable to factors other than the copyrighted work.” Id.
The parties’ dispute hinges on the “attributable to” requirement. If the infringement is less than a
wholesale copying of the entirety of a work, as alleged here, must a plaintiff prove that the
defendant profited from the infringing work, or must the plaintiff prove more specifically that the
defendant profited from the infringing portions of the work? The Eighth Circuit addressed this
question in Andreas v. Volkswagen of America, Inc., 336 F.3d 789, 796 (8th Cir. 2003), a case
that each party contends supports its respective position.
In Andreas, a jury found that Audi had infringed the plaintiff’s copyright in a drawing
with text by airing a television commercial for its TT coupe that included similar verbiage and
was substantially similar to the plaintiff’s work. Id. at 791-92. Audi did not contest the
infringement finding but objected to the jury’s award of Audi’s profits from sales of the TT. Id.
at 792. The parties debated what causal connection was required and who carried the burden of
proof, particularly where the defendant’s profits were not directly made from the sale of the
infringing work (the commercial), but rather flowed indirectly from the infringement because the
infringing work promoted the sales of another product (the TT). 4 The appellate court, looking to
An example of direct profits would be the profits from selling an infringing t-shirt
featuring a print of a copyrighted drawing. There, the infringing work, the t-shirt, is itself the
product being sold, unlike an infringing television commercial.
the statute itself, ruled that “[t]he plaintiff has the ‘burden’ to demonstrate a nexus between the
infringement and the indirect profits before apportionment can occur.” Id. at 796 (quoting
Mackie v. Rieser, 296 F.3d 909, 915 (9th Cir. 2002)). It quickly clarified that the plaintiff’s
burden and the nexus requirement were the same “in both direct and indirect profits cases.” Id.
The appellate court continued:
Once that nexus is established in either a direct or indirect profits case, if “an
infringer’s profits are attributable to factors in addition to use of plaintiff’s work,
an apportionment of profits is proper. The burden of proving apportionment (i.e.,
the contribution to profits of elements other than the infringed property), is the
Id. (quoting Frank Music Corp. v. Metro-Goldwyn-Mayer, Inc., 772 F.2d 505, 518 (9th Cir.
1985)). The court’s application of this rule to the facts of Andreas enlightens the parties’ dispute
in this case. The appellate court held that the Andreas plaintiff had met its initial burden by
offering evidence that the infringing work, the commercial, “contributed to sales of” the TT
coupe, the product promoted in the commercial. Id. at 796-97. Evidence that the work
“contributed to” the profits of the TT was sufficient to “shift the burden to Audi of showing
what effect other factors had on its profits.” Id. at 797. In reaching this conclusion, the Eighth
Circuit Court of Appeals cited Frank Music, in which the Ninth Circuit Court of Appeals held
that a plaintiff had “provided sufficient evidence that the infringing use of six minutes[’] worth
of music” in a musical revue intended to draw people to the MGM casino “contributed to
MGM’s gaming profits, making an award proper if ascertainable,” where the plaintiff offered
evidence that “the spectacularly successful production revue” enhanced MGM’s gaming
operations. Id. (citing 772 F.2d at 517).
The Andreas discussion makes clear that, assuming infringement is established, for an
award of § 504(b) profits, Honeywell must first prove a nexus between the infringing work (an
ICM label or manual) and ICM’s profits from the product affiliated with that label or manual
(e.g., ICM’s 1511 interrupted electronic oil primary device). Put another way, Honeywell must
show that the label or manual—like the Audi commercial or the musical revue—“contributed to”
the profits from the affiliated product—like the TT coupe or MGM casino games. See id. ICM’s
contention that Honeywell must show that specific infringing parts of a label or manual
contributed to profits from the affiliated ICM product is belied by the Andreas Court’s analysis.
The court did not require the plaintiff to show a nexus between the commercial’s objectionable
verbiage and the TT sales. Rather, reflecting the burden-shifting set out in the statute, once the
court found an adequate connection between the commercial and the TT profits based on the
plaintiff’s evidence, it then assigned to Audi the job of proving that factors other than the
infringing verbiage caused its sales: “Audi then bore the burden of establishing that its profit was
attributable to factors other than the infringing words: the other two commercials that did not
contain the infringed words, other parts of the [infringing] commercial, customer loyalty, brand
recognition, etc.” Id. (emphasis added). If Honeywell can make its required showing that a label
or manual contributed to sales of the product it accompanied, ICM would then be free to offer
evidence that profits from the sales of that product actually derived from other causes.
ICM points to the Andreas Court’s assessment of the strength of the evidence connecting
the infringement to the profits from the TT coupe sales. See id. at 795, 796-97. The appellate
court found that “[t]he infringement was the centerpiece of a commercial that essentially showed
nothing but the TT coupe;” “Audi enthusiastically presented the commercial to its dealers as an
important and integral part of its launch of the TT coupe into the U.S. market;” the TT’s sales
“during the period that the commercial aired were above Audi’s projections;” the “three
commercials received high ratings” for “consumer recall;” and Audi paid the advertising agency
that created the commercials a “substantial bonus based on the success of the commercials.” Id.
at 796-97 (emphases added). ICM homes in on the use of the phrase “[t]he infringement was the
centerpiece of a commercial” to argue that the required nexus is between infringing portions of
the defendant’s work and defendant’s profits, but the rest of the Andreas Court’s analysis
contradicts ICM’s focus. The rest of the passage, as the italicized portions show, reveals that the
appellate court was testing the connection between the commercial and the TT profits, not more
finely parsing whether there was a connection between the infringing verbiage in the commercial
and those profits. The court’s conclusion reinforces this broader interpretation of the nexus
requirement: “[The plaintiff] introduced more than mere speculation that the [infringing]
commercial contributed to sales of the TT coupe.” Id. at 796 (emphasis added). 5
ICM relies primarily on Ninth Circuit cases to support its narrower interpretation of the
nexus. It is true that some statements in decisions in that circuit can arguably be read as
requiring the plaintiff to prove a nexus between the infringing portions of a defendant’s work and
the profits. See Mackie v. Rieser, 296 F.3d 909, 916 (9th Cir. 2002) (finding insufficient
evidence “to support a causal relationship between the infringement and the profits generated
As this passage suggests, even though the nexus is required in both direct and indirect
cases, courts appear particularly sensitive in indirect cases to testing the link between the
infringement and the profits of an affiliated item or product line. In other words, they guard
against a plaintiff’s claiming the defendant’s profits from something only feebly connected to the
infringement. For example, in Polar Bear Productions, Inc. v. Timex Corp., 384 F.3d 700 (9th
Cir. 2004), an indirect profits case that ICM cites, the Ninth Circuit Court of Appeals found the
nexus proof inadequate where the plaintiff sought profits from retail purchases of Timex watches
based on a “brand premium” theory. The infringing work in Polar Bear was displayed primarily
at trade shows, and there was no evidence that any retail customers would have seen those
displays; thus, the idea that the infringement contributed to consumer purchases was speculative.
Id. at 715. In another case involving an advertisement for Gap stores that included an
unauthorized depiction of the plaintiff’s copyrighted eyewear, the plaintiff failed to show a nexus
between the advertisement and the profits it sought from the entire corporate parent of the Gap,
including profits for other brands “that were in no way promoted by the advertisement.” Davis v.
The Gap, Inc., 246 F.3d 152, 161 (2d Cir. 2001). The Andreas Court’s analysis, discussed
above, reflects its testing of this connection between the infringement and the profits, not testing
for a connection between the specific infringing portion of the defendant’s work and its profits.
indirectly from such an infringement” where the infringing “artwork was but one page in a multipage brochure that advertised a series of concerts that were unrelated to the artwork itself”);
Thale v. Apple Inc., No. C-11-03778-YGR, 2013 WL 3245170, at *8 (N.D. Cal. June 26, 2013)
(“[T]he Photo here was integrated into no more than five seconds of a 30-second commercial
where numerous images and various product functions were displayed. There is no evidence
showing that sales resulted from the mere use of the Photo.”). If that is the rule in the Ninth
Circuit, it is not controlling here. The Eighth Circuit Court of Appeals’ interpretation of the
statute, which incorporated analysis of Mackie and earlier Ninth Circuit precedent in Frank
Music, is clear and controlling: Once the plaintiff proves a causal nexus between the infringing
work and gross revenues from a related product, see Andreas, 336 F.3d at 796, the burden shifts
to the defendant to prove that “its profit was attributable to factors other than the infringing
[portion of the work],” including “other parts” of the work, id. at 797. After all, an award of the
infringing defendant’s profits is intended “to prevent the infringer from unfairly benefiting from
a wrongful act,” so it is fair to assign to the infringer the burden of reducing a gross revenue
figure to its actual profits. See Andreas, 336 F.3d at 795 (quoting § 504 legislative history).
If ICM’s interpretation of § 504(b) is unpersuasive, so too is its argument that Pothier’s
testimony relating to Honeywell’s copyright damages must be excluded as based on an incorrect
standard. ICM objects to Pothier’s opinions that product manuals and labels are necessary and
helpful to the sale of the HVAC-related products at issue. ICM first argues that this evidence is
irrelevant because it fails to show that allegedly infringing portions of ICM’s manuals and labels
affected sales of those products. ICM Br. 17-18. As explained above, Honeywell is not required
to prove such a narrow causal nexus. Moreover, ICM’s own expert, Vaczek, is prepared to
testify that the inclusion of manuals is critical to the sales of the related products, see Vaczek
Rebuttal Report at 11, Dkt. No. 426, so it is hard to understand why Pothier’s testimony about
this seemingly uncontroversial point must be excluded as unreliable or unhelpful.
Second, ICM argues that Pothier’s opinions are improper in focusing on how
Honeywell’s manuals and labels affect Honeywell’s product sales. ICM Br. 19-22. Pothier, who
is a sales representative for an HVAC product distributor representing product lines for brands
that include Honeywell, represents that he works with contractors (the ultimate purchasers of
products like those at issue) and is familiar with how they make their purchasing decisions. He
also trains other distributors’ sales staff to “be familiar with” products in the lines that he
represents, presumably teaching them selling points based on his understanding of what drives
contractors’ purchasing decisions. Pothier’s opinions about how manuals and labels affect
product sales in the HVAC market, using Honeywell’s approach and institutional knowledge as
an example, appear relevant to informing the jury about how ICM’s allegedly infringing manuals
and labels affected sales of its products. The opinions also appear “sufficiently grounded to be
helpful to the jury,” because they are based on Pothier’s experiences with contractors and
distributors in this specialized industry. See Unrein v. Timesavers, Inc., 394 F.3d 1008, 1012
(8th Cir. 2005). Excluding Pothier’s opinions on this topic is not merited. Their probative value,
though, remains to be seen. ICM, which has a different view of the market and contractors’
purchasing decisions, might or might not persuade the jury of its contrasting view through
“[v]igorous cross-examination” and “presentation of contrary evidence.” Daubert v. Merrell
Dow Pharm., Inc., 509 U.S. 579, 596 (1993).
Third, ICM contends that Pothier has conceded that manuals and labels do not influence
sales of products like those at issue and that he has no basis to opine that there is a nexus
between the alleged infringement and ICM’s profits from the related products. ICM Br. 22-24.
ICM highlights statements in Pothier’s deposition testimony to the effect that contractors select
products based on their functions and not “based on a manual itself.” He states elsewhere,
however, that the product could not and would not be sold if a manual and a label were not
included, and suggests that contractors may, all else being equal, prefer brands that they know
include high quality product literature with their products. Pothier’s opinions on the causal
nexus for copyright damages appear to have an adequate basis to be of some assistance to the
jury, so the Court will not exclude them. See Synergetics, Inc. v. Hurst, 477 F.3d 949, 955 (8th
Cir. 2007). The jury is capable of evaluating the strength of the testimony and Pothier’s basis for
his opinions. “As a general rule, the factual basis of an expert opinion goes to the credibility of
the testimony, not the admissibility, and it is up to the opposing party to examine the factual
basis for the opinion in cross-examination.” Id. (quoting Bonner v. ISP Tech., Inc., 259 F.3d
924, 929 (8th Cir. 2001)).
B. Honeywell’s Motion to Exclude Vaczek’s Rebuttal Testimony
Honeywell moves to preclude Vaczek from offering the opinions expressed in Section 6
of his rebuttal to Pothier’s substitute report: “Response to Pothier’s Opinions Regarding
‘Originality of the Manuals and Labels at Issue.’” Honeywell Br. 9, Dkt. No. 423; Honeywell
Reply Br. 3, Dkt. No. 445. As its title makes clear, as do its various references to “disagreeing”
with Pothier’s statements, Vaczek’s Section 6 responds to the section of Pothier’s report about
the originality of Honeywell’s labels and manuals. The Court’s rulings on the admissibility of
Pothier’s opinions on originality, see Section A.1, supra, apply equally to Vaczek’s responses.
Thus, Vaczek may not opine about whether there are limited or myriad ways of expressing
certain facts or ideas, but he may offer some testimony that goes to originality—for example,
that certain elements of Honeywell’s works are commonly used in the industry’s product
literature with which he is familiar. This guidance applies to any such opinions, whether they are
noticed in Section 6 or other areas of the rebuttal report.
In its reply brief, Honeywell also asks the Court to admonish Vaczek about his use of the
phrases like “generic,” “common industry terms,” and “functional” to describe expressions in
Honeywell’s labels and manuals, asserting that his use of these words could confuse the jury
about the standard for copyright originality. Honeywell Reply Br. 10-11; see also Honeywell Br.
2. The Court does not view phrases like “generic” or “common industry term” as objectionable;
they appear relevant to ICM’s scènes à faire and merger arguments. The use of the phrase
“functional” merits more discussion. With regard to copyright protection, that a given work is
fact-based or functional does not necessarily preclude protection in its expression or its original
selection or arrangement of facts. See Feist, 499 U.S. at 349; 4-13 Nimmer on Copyright §
13.03[B][b] (2016) (“Frequently, particularly in functional and nonfiction works, a plaintiff’s
work consists of some original material and some uncopyrightable material.”). To the extent that
Vaczek uses the term “functional” in connection with his opinions on originality, depending on
the context, it could be confusing, but the Court can effectively address any potential confusion
at trial through jury instructions. See August 2014 Order at 49 (ruling similarly with regard to
Honeywell’s objections to Vaczek’s use of the phrase “unique”). As for the use of the term in
other contexts, like the examples that Honeywell cites in Vazcek’s rebuttal report sections
concerning the damages nexus, the Court is confident that the jury will be able to follow the
context clues and will not be confused into thinking that he is opining on originality. Again, jury
instructions can clarify any potential confusion that may come up at trial.
Based on the files, records, and proceedings herein, and for the reasons stated above, IT
IS ORDERED THAT:
1. Defendant ICM Controls Corp.’s Motion to Exclude Testimony of Mr. Pothier [Dkt.
No. 427] is GRANTED IN PART AND DENIED IN PART. Pothier’s testimony will
be limited as stated in the body of the opinion above.
2. Plaintiff Honeywell International Inc.’s Motion to Exclude Expert Testimony of
Adam Vaczek [Dkt. No. 420] is GRANTED IN PART AND DENIED IN PART.
Vaczek’s testimony will be limited as stated in the body of the opinion above.
Dated: January 26, 2017
s/ Joan N. Ericksen
JOAN N. ERICKSEN
United States District Judge
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