Lifeguard Licensing Corp. et al v. kozak et al

Filing 182

OPINION AND ORDER re: 167 MEMORANDUM AND ORDER: In a Memorandum and Order (the "Order"), dated March 7, 2017, Magistrate Judge Francis denied Plaintiffs' and Defendants' cross-motions to preclude each other's experts and their reports. Each of the parties objects to the portion of the Order denying its motion to preclude. For the reasons below, Judge Francis' Order is affirmed. For the reasons stated, the Order denying Plaintiffs' and Defendants' cross-motions to preclude expert evidence is AFFIRMED. (Signed by Judge Lorna G. Schofield on 7/24/2017) (anc) Modified on 7/24/2017 (anc).

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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LIFEGUARD LICENSING CORP., et al.,
:
Plaintiffs,
:
:
-against:
:
ANN ARBOR T-SHIRT COMPANY, LLC, et al., :
Defendants. :
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X

USDC SDNY
DOCUMENT
ELECTRONICALLY FILED
DOC #:
DATE FILED: 07/24/2017

15 Civ. 8459 (LGS)
OPINION AND ORDER

LORNA G. SCHOFIELD, District Judge:
In a Memorandum and Order (the “Order”), dated March 7, 2017, Magistrate Judge
Francis denied Plaintiffs’ and Defendants’ cross-motions to preclude each other’s experts and
their reports. Each of the parties objects to the portion of the Order denying its motion to
preclude. For the reasons below, Judge Francis’ Order is affirmed.
I.

BACKGROUND
Plaintiffs, Lifeguard Licensing Corp. and Popularity Products, LLC, assert trademark

infringement claims under the Lanham Act, 15 U.S.C. § 1051 et seq. Plaintiffs are respectively
the registered owner and licensee of a series of registered word marks, including “Lifeguard”
(the “Mark”), which is used on apparel. Defendants asserted genericness, under 15 U.S.C.
§ 1064(3), as an affirmative defense and counterclaim.
Defendants Ann Arbor T-Shirt Company, LLC, Jerry Kozak and Richard Winowiecki
retained two experts -- Dr. Thomas Maronick and Dr. James Berger -- to design and execute
consumer surveys to assess the genericness of Plaintiffs’ federally registered trademark
“Lifeguard.” Plaintiffs hired Brian M. Sowers to rebut Dr. Maronick’s and Dr. Berger’s expert
reports.

The Order denies Plaintiffs’ motion to preclude Drs. Maronick and Berger, concluding
that each is “qualified to offer opinions on the relevant issue” based on his respective education
and experience. Judge Francis also found that the alleged flaws in methodology affecting the
experts’ surveys do not “destroy all of [the surveys’] relevance” and therefore bear only on the
weight they are to be afforded at summary judgment or trial.
The Order also denied Defendants’ motion to preclude Mr. Sowers. Judge Francis found
that “defendants’ complaints about Mr. Sowers’ education and experience are overblown,
undersupported, or both,” and that his “reports adequately explain his analyses and conclusions,
which is what the Federal Rules of Evidence contemplate.” Judge Francis rejected Defendants’
arguments that Mr. Sowers’ methodology is unreliable because he lacks an understanding of the
concept of primary significance, and that he misidentified the proper survey universe for a
genericness survey, because Defendants did not “establish[] that these alleged defects relate to
his ‘methodology’ or make his reports unreliable.”
Plaintiffs and Defendants now object to the portions of the Order denying their respective
motions to preclude.
II.

LEGAL STANDARD
Under 28 U.S.C. § 636(b)(1)(A) and Federal Rule of Civil Procedure 72(a), a magistrate

judge may adjudicate non-dispositive motions. See also Arista Records, LLC v. Doe 3, 604 F.3d
110, 116 (2d Cir. 2010). A magistrate judge’s order as to a non-dispositive motion may be set
aside only where it is “clearly erroneous or contrary to law.” 28 U.S.C. § 636(b)(1)(A); Fed. R.
Civ. P. 72(a); see also Arista Records, 604 F.3d at 116. “An order is clearly erroneous if the
reviewing court is ‘left with the definite and firm conviction that a mistake has been
committed.’” Frydman v. Verschleiser, No. 14 Civ. 5903, 2017 WL 1155919, at *2 (S.D.N.Y.

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Mar. 27, 2017) (quoting Easley v. Cromartie, 532 U.S. 234, 242 (2001)). “An order is contrary
to law when it fails to apply or misapplies relevant statutes, case law or rules of procedure.” Id.
(internal quotation marks omitted).
Federal Rule of Evidence 702 governs the admissibility of expert testimony. The Rule
provides that:
[a] witness who is qualified as an expert by knowledge, skill, experience, training, or
education may testify in the form of an opinion or otherwise if [ ] (a) the expert's
scientific, technical, or other specialized knowledge will help the trier of fact to
understand the evidence or to determine a fact in issue; (b) the 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 case.
Courts play a “gatekeeping” role within the Rule 702 framework and are “charged with ‘the task
of ensuring that an expert’s testimony both rests on a reliable foundation and is relevant to the
task at hand.’” Amorgianos v. Nat’l R.R. Passenger Corp., 303 F.3d 256, 265 (2d Cir. 2002)
(quoting Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 597 (1993)). Examination of an
expert’s analysis should be “rigorous,” but “[a] minor flaw in an expert’s reasoning or a slight
modification of an otherwise reliable method will not render an expert’s opinion per se
inadmissible.” Id. at 267.
III.

DISCUSSION
A. Plaintiffs’ Objections to the Order
With respect to Dr. Maronick, Plaintiffs argue that the Order is clearly erroneous for

essentially two reasons: (1) “Dr. Maronick has a fundamental lack of understanding of the
concept of genericness”; and (2) “the universe Dr. Maronick selected for his surveys” is overinclusive. Plaintiffs further argue that the Order is contrary to law because it “misapplies the law
with respect to the definition of genericness.” Regarding Dr. Berger, Plaintiffs argue that the

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Order is clearly erroneous because (1) Dr. Berger’s Thermos survey has no probative value; and
(2) Dr. Berger “incorrectly chose as [the relevant] universe, attendees of ‘public’ beaches and
swimming pools.” None of these arguments is persuasive.
1. Dr. Thomas Maronick
Plaintiffs assert that Dr. Maronick’s survey lacks reliability or probative value because
“Dr. Maronick was unable to decide whether the second survey he commissioned for his 2016
Report was a survey to examine the existence of customer confusion or whether it was a survey
to examine whether the Mark is generic.” However, at his deposition, Dr. Maronick repeatedly
testified that the “focus” of the 2016 study was genericness, and that to the extent he tested
consumer confusion at all, it was to assess the conclusion that consumers do not associate
Plaintiffs’ Mark with any particular brand or company. Dr. Maronick’s testimony is consistent
with his expert report, in which he concluded that Plaintiffs’ Mark is generic, based, in part, on
such consumer confusion data. Neither Dr. Maronick’s expert report nor his deposition
testimony undermines Judge Francis’ conclusion that Dr. Maronick is qualified to opine on
genericness.
Plaintiffs’ contention that the Order was clearly erroneous and contrary to law because
Dr. Maronick tested the wrong population, or “universe,” also fails. As stated in the Order,
“[t]he majority rule is that while technical deficiencies can reduce a survey’s weight, they will
not prevent the survey from being admitted into evidence.” (quoting 6 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition § 32:170 (4th ed. rev. 2017); see also Tiffany
& Co. v. Costco Wholesale Corp., 127 F. Supp. 3d 241, 258–59 (S.D.N.Y. 2015) (finding that
“[w]hile calling into question the soundness of the study by pointing out flaws in its construction
[including that it was administered to the wrong subject population], Costco does not undermine

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Dr. Jacoby’s ultimate methodology (i.e., the use of a consumer survey) . . . .”); Louis Vuitton
Malletier S.A. v. Sunny Merch. Corp., 97 F. Supp. 3d 485, 510 (S.D.N.Y. 2015) (rejecting the
argument that the survey universe was fatally flawed where “there was no guarantee that it
included anyone who would purchase either [plaintiff’s or defendant’s] products” because such
deficiencies bear on the survey’s weight as opposed to admissibility); Rise-N-Shine, LLC v.
Duner-Fenter, No. 14 Civ. 1305, 2015 WL 876470, at *3 (S.D.N.Y. Feb. 28, 2015) (finding that
“[t]o the extent that this universe of respondents is overbroad, it is not so overbroad as to destroy
the relevance of the survey results” and collecting cases). “A survey is only inadmissible if its
flaws destroy all of its relevance.” Victoria’s Secret Stores Brand Mgmt., Inc. v. Sexy Hair
Concepts, LLC, No. 07 Civ. 5804, 2009 WL 959775, at *11 n.9 (S.D.N.Y. Apr. 8, 2009)
(denying a motion to preclude based on alleged methodological flaws in an expert’s survey
because the survey was relevant under Federal Rule of Evidence 401.). The Order’s finding, that
any methodological flaws respecting Dr. Maronick’s survey did not destroy the survey’s
relevance so as to render it without probative value, is not clearly erroneous or contrary to law.
Lastly, Plaintiffs assert that the Order misapplies the law respecting genericness insofar
as it relies on Anvil Brand, Inc. v. Consolidated Foods Corp., 464 F. Supp. 474 (S.D.N.Y. 1978)
and Polo Fashions, Inc. v. Extra Special Products, Inc., 451 F. Supp. 555 (S.D.N.Y. 1978).
Plaintiffs argue that Anvil Brand and Polo Fashions are inapposite because, unlike here, there
was evidence that the marks at issue -- “rugger” and “polo” -- referred to both the sports of rugby
and polo and a type of apparel associated with those sports. Plaintiffs either misstate or
misunderstand the relevance of these cases to Judge Francis’ conclusion that Plaintiffs’ view of
genericness is unnecessarily “cramped.” Rather than implying that Anvil Brand and Polo
Fashions dictate the outcome of the instant litigation, Judge Francis’ Order suggests only that the

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concept of genericness is broad enough to encompass the Mark on certain items of apparel that
are associated with the profession of lifeguarding (even if those items of apparel themselves are
not described as “lifeguards”).
2. Dr. James Berger
Plaintiffs object to the Order as it pertains to Dr. Berger on two grounds: it was clearly
erroneous (1) to find that his Thermos study had probative value, and (2) not to exclude his
Teflon survey, which tested the wrong universe.
Dr. Berger’s Thermos survey asked respondents to look at a photograph of a lifeguard
and state whether they were familiar with his function. The Order found that the study “is
somewhat probative, as a failure of the public to recognize the occupation of a lifeguard would
likely preclude a finding that the label ‘lifeguard’ was generic when applied to clothing a
lifeguard wears.” Plaintiffs argue that this finding is clearly erroneous because, “[i]f Mr.
Berger’s ‘Thermos’ survey is a valid survey, then a survey in which the majority of people who
are shown a picture of an apple identify it as an apple, proves that the Apple trademark . . . is in
fact generic.” This assertion does not follow from the Order’s finding, however, which is not
that Dr. Berger’s Thermos study proves that the Mark is generic, but that the survey is relevant to
and probative of whether the Mark is generic.
Similarly flawed is Plaintiffs’ argument that the Order improperly shifts Defendants’
burden to prove genericness to Plaintiffs. The Order did not relieve Defendants’ of the burden of
persuasion to prove genericness, but instead held that Dr. Berger’s survey was admissible
because its purported design flaws did not “destroy all of its relevance.” (quoting Victoria’s
Secret, 2009 WL 959775, at *11 n.9.

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Plaintiffs’ argument that the Order was clearly erroneous insofar as Dr. Berger tested the
wrong universe is rejected for the same reasons stated with respect to Dr. Maronick.
Because the Order is not clearly erroneous or contrary to law as to Defendants’ experts
Drs. Maronick and Berger, Plaintiffs’ objection to the denial of their motion to preclude
Defendants’ experts is overruled.
B. Defendants’ Objections to the Order
Defendants argue that the Order was clearly erroneous and contrary to law insofar as it
failed to preclude the expert evidence of Brian M. Sowers, Plaintiffs’ expert on genericness.
Specifically, Defendants argue that Judge Francis failed to consider that Mr. Sowers lied about
his education and experience and lacks an understanding of both the “Primary Significance Test”
and basic statistical concepts. These arguments are unavailing, for the reasons below.
Defendants’ assertion that Mr. Sowers’ “deceit” with respect to his curriculum vitae
necessitates preclusion is baseless. Mr. Sowers did not lie about his graduate education; he
received his graduate education from the University of Colorado, as indicated in his curriculum
vitae. Even if Mr. Sowers’ failing to specify on his curriculum vitae that he attended an online
program were to qualify as “deceit,” Defendants have cited no authority to suggest that such
behavior bears on whether Mr. Sowers is qualified to opine on genericness, or to evaluate the
results of Plaintiffs’ experts’ studies. Likewise, Defendants assert that Mr. Sowers’ claim that he
has served as an expert previously is deceitful because Mr. Sowers has never been sworn in to
give expert testimony. That Mr. Sowers has never been asked to testify is of no relevance as to
whether he has served in an expert capacity and does not indicate any deception on his part.
Defendants also take issue with the Order’s characterization of Mr. Sowers’ experience,
specifically, its statement that Mr. Sowers occupied research positions when his curriculum vitae

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indicated that he occupied managerial positions. Even assuming that the Order misstated
Mr. Sowers’ job titles, it fairly characterized his work experience as Mr. Sowers described it in
his expert report and at his deposition. For many years, during which he occupied both
managerial and non-managerial roles at a variety of companies, Mr. Sowers designed and
executed surveys, collected and analyzed survey data, and reported survey results. His relevant
experience includes designing and executing surveys, including genericness surveys -- beginning
in 2011 -- specifically for litigation purposes. That Mr. Sowers “worked under the direction of
experts . . . in designing genericness surveys” from 2011 to 2014 does not diminish the relevance
or value of this experience. Although Mr. Sowers did not design or execute a genericness survey
prior to 2011, his experience conducting qualitative and quantitative market research (including
survey-based research) is a relevant qualification. To the extent that Defendants believe
Mr. Sowers’ education and experience undermine his credibility or diminish his persuasiveness,
they may make such arguments at summary judgment or trial.
Defendants argue that Mr. Sowers must be precluded for multiple other reasons, none of
which is persuasive. Defendants argue that the Order is clearly erroneous because “it does not
address the fact that Mr. Sowers said, in sworn testimony, that he could not understand the plain
meaning of the words in the Primary Significance Test.” (Emphasis in original.) Under the
Primary Significance Test, “a plaintiff seeking to establish a valid trademark ‘must show that the
primary significance of the term in the minds of the consuming public is not the product but the
producer.’” Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 144 (2d Cir. 1997)
(quoting Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111, 118 (1938)). 15 U.S.C. § 1064(3),
which codifies the Primary Significance Test further provides: “The primary significance of the
registered mark to the relevant public rather than purchaser motivation shall be the test for

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determining whether the registered mark has become the generic name of goods or services on or
in connection with which it has been used.” Although Mr. Sowers testified that “some language”
in § 1064(3) is “unclear,” his testimony does not suggest a lack of understanding of the
underlying concept of genericness. Defendants fail to explain how Mr. Sowers’ testimony about
the Primary Significance Test compromised any of his analyses. Moreover, Mr. Sowers’
testimony that the relevant universe would include “at least” those who might rely on the Mark
to make a purchasing decision is consistent with § 1064(3) insofar as Mr. Sowers did not suggest
that a finding of genericness depends on purchaser motivation rather than the Mark’s primary
significance to the relevant public.
Defendants also assert that “the Berger Reply and the Maronick Reply are replete with
instances of Sowers incorrectly using statistical terms or concepts”; however, Defendants
identify only one instance of such an error, and offer no explanation as to why this or any other
alleged error undermines the reliability of his reports. Similarly, Defendants argue that that the
Order fails to consider that “Sowers cut-and-pasted approximately 40% of his material between
the Berger Reply and the Maronick Reply.” But Defendants do not explain why Mr. Sowers’
analysis is wrong, or why his applying the same analysis in response to both expert reports
renders that analysis unreliable. Also, Defendants’ 40% calculation is misleading: it includes
Mr. Sowers’ introduction and a description of his qualifications, a description of this litigation
and the scope of his assignment, and explanations of various survey design principles.
Because the Order is not clearly erroneous or contrary to law as to Plaintiffs’ expert
Mr. Sowers, that portion of the Order is affirmed.

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IV.

CONCLUSION
For the reasons stated, the Order denying Plaintiffs’ and Defendants’ cross-motions to

preclude expert evidence is AFFIRMED.
Dated: July 24, 2017
New York, New York

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