BRAND MARKETING GROUP, LLC v. INTERTEK TESTING SERVICES NA, INC. et al

Filing 247

ORDER FINAL JURY INSTRUCTIONS to reflect Plaintiff's elimination of his fraudulent misrepresentation claim. Any and all (new) objections thereto shall be filed by noon on February 28, 2014. Signed by Judge Arthur J. Schwab on 2-25-14. (nam)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
BRAND MARKETING GROUP, LLC doing
business as THERMABLASTER,

12cv1572
ELECTRONICALLY FILED

Plaintiff,
v.
INTERTEK TESTING SERVICES NA, INC.
doing business as INTERTEK TESTING
SERVICES
Defendant.

FINAL JURY INSTRUCTIONS
I. General Instructions
Now that you have heard the evidence and the argument, it is my
duty to instruct you on the law.
We have given you copies of the special Verdict Form on which
you will answer specific questions. Please take a few minutes to read
the Verdict Form, because the instructions I am about to give you will
help you answer those questions.
When you retire to the jury room to deliberate, you may take these
instructions with you, along with your notes, the exhibits that the Court
has admitted into evidence, and the Verdict Form. You should select

one member of the jury as your foreperson. That person will preside
over the deliberations and speak for you here in open Court.
You have two main duties as jurors. The first one is to decide
what the facts are from the evidence that you saw and heard here in
Court. Deciding what the facts are is your job, not mine, and nothing
that I have said or done during this trial was meant to influence your
decision about the facts in any way.
Your second duty is to take the law that I give you, apply it to the
facts, and decide if, under the appropriate burden of proof, the parties
have established their claims. In other words, it is your duty to
determine from the evidence what actually happened in this case,
applying the law as I now explain it.
It is my job to instruct you about the law, and you are bound by the
oath that you took at the beginning of the trial to follow the instructions
that I give you, even if you personally disagree with them. This includes
the instructions that I gave you before and during the trial, and these
instructions. All the instructions are important, and you should consider
them together as a whole; do not disregard or give special attention to
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any one instruction; and do not question the wisdom of any rule of law
or rule of evidence I state. In other words, do not substitute your own
notion or opinion as to what the law is or ought to be.
Perform these duties fairly. Do not let any bias, sympathy or
prejudice that you may feel toward one side or the other influence your
decision in any way.
As jurors, you have a duty to consult with each other and to
deliberate with the intention of reaching a verdict. Each of you must
decide the case for yourself, but only after a full and impartial
consideration of all of the evidence with your fellow jurors. Listen to
each other carefully. In the course of your deliberations, you should feel
free to re-examine your own views and to change your opinion based
upon the evidence. But you should not give up your honest convictions
about the evidence just because of the opinions of your fellow jurors.
Nor should you change your mind just for the purpose of obtaining
enough votes for a verdict.
When you start deliberating, do not talk to the bailiff, to me, or to
anyone but each other about the case. During your deliberations, you
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must not communicate with or provide any information to anyone by
any means about this case. You may not use any electronic device or
media, such as a cell phone, a smart phone like Blackberries, Droids, or
iPhones, or a computer of any kind; the internet, any internet service, or
any text or instant messaging service like Twitter; or any internet chat
room, blog, website, or social networking service such as Facebook,
Twitter, MySpace, LinkedIn, or YouTube, to communicate to anyone
any information about this case or to conduct any research about this
case until I accept your verdict.
If you have any questions or messages for me, you must write
them down on a piece of paper, have the foreperson sign them, and give
them to the bailiff. The bailiff will give them to me, and I will respond
as soon as I can. I may have to talk to the lawyers about what you have
asked, so it may take some time to get back to you.
One more thing about messages: Never write down or tell anyone
how you stand on your votes. For example, do not write down or tell
anyone that a certain number is voting one way or another. Your votes
should stay secret until you are finished.
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Your verdict must represent the considered judgment of each juror.
In order for you as a jury to return a verdict, each juror must agree to the
verdict. Your verdict must be unanimous.
A Verdict Form has been prepared for you. It has a series of
questions for you to answer. You will take this form to the jury room
and when you have reached unanimous agreement as to your verdict,
you will fill it in, date the form, and each of you will sign it. You will
then return to the courtroom and your foreperson will deliver your
verdict to the bailiff. Unless I direct you otherwise, do not reveal your
answers until you are discharged. After you have reached a verdict, you
are not required to talk with anyone about the case unless I order you to
do so.
Once again, I want to remind you that nothing about my
instructions and nothing about the form of verdict is intended to suggest
or convey in any way or manner what I think your verdict should be. It
is your sole and exclusive duty and responsibility to determine the
verdict.

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II. Evidence
What is Evidence
I have mentioned the word “evidence.” The “evidence” in this
case consists of the testimony of witnesses, the documents and other
physical items, if any, received as exhibits, and any facts stipulated by
the parties.
Exhibits
Counsel for Brand and Intertek have agreed to the legal
admissibility of various exhibits. This means that these exhibits meet
the requirements of the rules of evidence and therefore have been
admitted for your consideration. This does not mean that the parties
agree as to the inferences or conclusions that you should or may draw
from any exhibit.
Stipulations of Fact
The parties have agreed, or stipulated, to certain facts as being true
and those stipulations have been placed on the record in this trial. You
must treat any stipulations of fact as having been proved for the
purposes of this case.
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What is Not Evidence
The following things are not evidence:
1. Statements, arguments, questions and comments by the lawyers
are not evidence.
2. Likewise, objections are not evidence. Lawyers have every
right to object when they believe something is improper. You should
not be influenced by the objection. If I sustained an objection to a
question, you must ignore the question and must not try to guess what
the answer might have been.
3. Any testimony that I ordered stricken from the record, or told
you to disregard, is not evidence and you must not consider any such
matter.
4. Anything you saw or heard about this case outside the
courtroom is not evidence. You must decide the case only on the
evidence presented here in the courtroom. Do not let rumors,
suspicions, or anything else that you may see or hear outside of court
influence your decision in any way.

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Evidence, Inferences, and Common Sense
While you may consider only the evidence in the case in arriving at
your verdict, you are permitted to draw such reasonable inferences from
the testimony and exhibits you feel are justified in the light of your
common experience, reason and common sense.
Direct and Circumstantial Evidence
In this regard, you may consider either direct or circumstantial
evidence. “Direct evidence” is the testimony of someone who asserts
actual knowledge of a fact, such as an eyewitness. “Circumstantial
evidence” is proof of a chain of facts and circumstances from which you
may infer that something either did or did not happen. The law makes
no distinction between the weight to be given to either direct or
circumstantial evidence. It requires only that you weigh all of the
evidence and be convinced that the party has met the burden of proof
before you return a verdict for that party.
Bias, Sympathy And Prejudice
You may not allow sympathy or personal feelings to influence
your determination. Your duty is to decide the case solely on the basis
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of the evidence or lack of evidence and the law as I have instructed you,
without bias, prejudice, or sympathy for or against the parties or their
counsel. Both the parties and the public expect that you will carefully
and impartially consider all of the evidence in the case, follow the law as
stated by the court, and reach a just verdict regardless of the
consequences.
Evidence Admitted for a Limited Purpose
In certain instances evidence may be admitted only for a particular
purpose and not generally for all purposes. Whenever evidence was
admitted for a limited purpose, consider it only for that purpose, and no
other purpose.
In this regard, Plaintiff’s exhibit number 20 is not to be considered
for the truth of the matters asserted therein, such as whether a sales
restriction on the Thermablaster heaters was indeed lifted. The
information set forth in the e-mail is only considered to be true to the
extent that Mr. Campo testified to his first-hand knowledge of the
matters contained therein.

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Plaintiff’s exhibit number 21 is not to be considered for the truth of
the matters asserted therein, such as what the ANSI standard states or
means. The information set forth in the e-mail is only considered to be
true to the extent that Mr. Campo testified to his first-hand knowledge of
the matters contained therein.
Jurors’ Notes
Your notes are not evidence in the case and must not take
precedence over your independent recollection of the evidence. Notes
are only an aid to your recollection and are not entitled to greater weight
than your recollection of what the evidence actually is. You should not
disclose any notes taken to anyone other than a fellow juror.
You were not obligated to take notes. If you did not take notes you
should not be influenced by the notes of another juror, but instead should
rely upon your own recollection of the evidence.
III. Credibility of Witnesses / Weight of Testimony in General
In General
You must consider all of the evidence, but this does not mean you
must accept all of the evidence as true or accurate. You are the sole
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judges of the credibility of the witnesses and the weight their testimony
deserves.
You may be guided by the appearance and conduct of the witness,
by the manner in which the witness testifies, by the character of the
testimony given and by evidence or testimony to the contrary.
You should carefully scrutinize all the testimony given, the
circumstances under which each witness has testified, and every matter
in evidence which tends to show whether a witness is worthy of belief.
Consider each witness’ intelligence, motive, state of mind, and
demeanor or manner while on the stand. Consider the witness’ ability to
have observed the matters as to which he or she has testified, and
whether he or she impresses you as having an accurate recollection of
these matters. Consider any business, personal or other relationship a
witness might have with either side of the case; the manner in which
each witness might be affected by the verdict; and the extent to which, if
at all, each witness is either supported or contradicted by other evidence
in the case.

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Inconsistencies or Discrepancies
Consider inconsistencies or discrepancies in the testimony of a
witness or between different witnesses, which may or may not cause you
to discredit such testimony. Two or more persons witnessing an incident
or a transaction may see or hear it differently, and innocent misrecollection, like failure of recollection, is not an uncommon experience.
In weighing the effect of a discrepancy, always consider whether it
pertains to a matter of importance or an unimportant detail, and whether
the discrepancy results from innocent error or intentional falsehood.
After making your own judgment, give the testimony of each
witness the weight you think it deserves. You may, in short, accept or
reject the testimony of any witness in whole or in part.
False In One, False In All
If you find that a witness has lied to you in any material portion of
his or her testimony, you may disregard that witness’ testimony in its
entirety. I say that you may disregard such testimony, not that you must.
However, you should consider whether the untrue part of the testimony

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was the result of a mistake or inadvertence, or was, rather, willful and
stated with a design or intent to deceive.
Not Required to Accept Uncontradicted Testimony
You are not required to accept any testimony, even though the
testimony is not contradicted and the witness is not impeached. You
may decide, because of the witness’ bearing and demeanor, because of
the inherent improbability of his or her testimony, or because of other
reasons sufficient to you, that such testimony is not worthy of belief.
Number of Witnesses Not Important
The weight of the evidence is not determined by the number of
witnesses testifying for either side. You may find that the testimony of a
small number of witnesses as to any fact is more credible than that of a
larger number of witnesses to the contrary. In short, what is most
important is how believable the witnesses were, and how much weight
you think their testimony deserves.
Depositions - Use as Evidence
Certain out-of-Court testimony of witnesses has been presented to
you. Such testimony was given under oath prior to this trial, during
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depositions of the witnesses. This method is permitted in order to
simplify the presentation of the evidence, and you should not regard
evidence presented in this way as any different from any other oral
testimony. You may assess the credibility of witnesses who have
testified by deposition in the same manner as you do witnesses who
testify directly in open Court.
Expert Testimony
The rules of evidence ordinarily do not permit witnesses to testify
as to opinions or conclusions. An exception to this rule exists for "expert
witnesses." An expert witness is a person who, by education and
experience has become expert in some art, science, profession, or
calling. Expert witnesses may state their opinions as to matters in which
they profess to be expert, and may also state their reasons for their
opinions.
You should consider each expert opinion received in evidence in
this case, and give it such weight as you think it deserves. If you should
decide that the opinion of an expert witness is not based upon sufficient
education and experience, or if you should conclude that the reasons
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given in support of the opinion are not sound, or if you feel that it is
outweighed by other evidence, you may disregard the opinion entirely.
All that I have explained to you about impeachment of witnesses also
applies to expert witnesses. If you find the expert’s testimony is less
than credible, you may disregard all or part of that testimony according
to your assessment of its truth.
In general, the opinion of an expert has value only when you
accept the facts upon which it is based. This is true whether the facts are
assumed hypothetically by the expert, or they come from the expert’s
personal knowledge, from some other proper source, or from some
combination of these.
Questions have been asked in which an expert witness was invited
to assume that certain facts were true and give an opinion based upon
that assumption. These are called hypothetical questions. If you find
that any material fact assumed in a particular hypothetical question has
not been established by the evidence, you should disregard the opinion
of the expert given in response to that question. By material fact, we
mean one that was important to the expert in forming his or her opinion
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Similarly, if the expert has made it clear that his/her opinion
is based on the assumption that a particular fact did not exist and, from
the evidence you find that it did exist and that it was material, you
should give no weight to the opinion so expressed.
Burdens of Proof
The burden of proof is on Brand to establish each element of its
claim and the burden of proof is on Intertek to establish each element of
its counterclaims. The burden of proof varies from claim to claim.
Some claims require proof by clear and convincing evidence while other
claims require proof by a preponderance of the evidence. I will now
explain those two burdens of proof.
(1)

Preponderance of the Evidence

A preponderance of the evidence means such evidence as, when
considered and compared with that opposed to it, has more convincing
force, and produces in your minds the belief that what is sought to be
proved is more likely true than not true. This rule does not require proof
to an absolute certainty, because absolute certainty is seldom if ever
possible.
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When you go into the jury room imagine that you have on the table
the scales of justice on which two trays are hanging evenly in balance.
Now label the right-hand tray “Brand’s tray” and put on to that tray all
the evidence on a particular claim which you feel favors Brand, giving to
that evidence the weight that you believe it is fairly entitled to receive.
Next, place on the left-hand tray, “Intertek’s tray,” all of the evidence in
the case that favors Intertek’s side of that claim; again, giving to that
evidence the weight that you believe Intertek is fairly entitled to receive.
Remember, the weight of the evidence is not the number of
persons testifying against either party; rather, it is the quality of the
testimony given. For example, one person who saw an event and
testified accurately as to what was seen may have the same weight as ten
persons testifying to the same event on the other side.
After considering the weight of the evidence, if you think that the
scales tip, ever so slightly or to the slightest degree, in favor of Brand,
then Brand has sustained its burden of proof by a preponderance of the
evidence and your verdict should be for the Brand and against Intertek
on that claim. For Intertek’s Counterclaims, the scales would have to
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tip, ever so slightly, in favor of Intertek for Intertek to sustain its burden
of proof.
(2)

Clear and Convincing Evidence

Clear and convincing evidence is evidence that produces in your
mind a firm belief or conviction that the allegations sought to be proved
by the evidence are true. Clear and convincing evidence involves a
higher degree of persuasion than is necessary to meet the preponderance
of the evidence standard. But it does not require proof beyond a
reasonable doubt, the standard applied in criminal cases.
Intertek’s Status Does Not Infer Liability
Simply because a defendant is sued does not mean that the
defendant is liable. Anyone can file a lawsuit. The fact that Brand filed
this lawsuit does not, in itself, mean that Intertek has done anything that
the law prohibits. That is for you to decide on the basis of the evidence.
Equality of Parties
You should consider and decide this case as a dispute between
persons of equal standing in the community, of equal worth, and holding
the same or similar stations in life. A corporation is entitled to the same
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fair trial as a private individual. All persons, including corporations
stand equal before the law, and are to be treated as equals.
IV. Applicable Law
In this case, Brand has made one (1) claim, or cause of action,
against Intertek: that Intertek negligently misrepresented itself to Brand.
Intertek denies those allegations. Intertek, on the other hand, has made
the following three (3) counterclaims, or causes of action, against Brand:
(1) Brand infringed the trademark rights of Intertek; (2) Brand made
fraudulent misrepresentations; and (3) Brand fraudulently concealed its
use of Intertek’s ETL mark. Brand denies these allegations. I will now
go through the necessary elements to prove the claim of Brand, and
second, the counterclaims of Intertek in the order you will see them on
the verdict form.
I. Brand’s Claim Against Intertek
1.

Negligent Misrepresentation
A.

Elements of claim -

One who, in the course of its business, profession or employment,
or in any other transaction in which it has a pecuniary interest, supplies
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false information for the guidance of others in its business transactions,
is subject to liability for pecuniary loss caused to others by their
justifiable reliance upon the information, if it fails to exercise reasonable
care or competence in obtaining or communicating the information.
Brand must prove the following four elements by a preponderance
of the evidence, in order to succeed on its negligent misrepresentation
claim: (1) a misrepresentation of a material fact; (2) made under
circumstances in which the misrepresenter ought to have known of its
falsity; (3) with an intent to induce another, here being Brand, to act on
it; and (4) which results in injury to a party acting in justifiable reliance
on the misrepresentation.
Intertek is only liable to Brand for negligent misrepresentation if
Intertek provided the information for the benefit and guidance of Brand,
or knew that Brand would reasonably rely upon the information. In
order to succeed on it claim for negligent misrepresentation, Brand must
establish that it justifiably relied on Intertek.

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“Misrepresentation” defined –
A misrepresentation is any assertion by words or conduct that is
not in accordance with the facts.
“Material” defined –
A fact is material if it is one that would be of importance to a
reasonable person in determining a choice of action. A material fact,
however, need not be the sole or even a substantial factor in inducing or
influencing a reasonable person’s decision. A fact is also material if the
person who fails to disclose it knows that the person to whom it is made
is likely to regard it as important even though a reasonable person would
not regard it as important.
“Reliance” defined –
Reliance means a person would not have acted as he did unless he
considered the misrepresentation to be true.
B.

Factual Cause

In order for Brand to recover in this case, Intertek’s negligent
conduct must have been a factual cause in bringing about harm. In order
for Brand to recover in this case, Intertek’s negligent conduct must have
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been a factual cause in bringing about harm. Conduct is a factual cause
of harm when the harm would not have occurred absent the conduct. To
be a factual cause, the conduct must have been an actual, real factor in
causing the harm, even if the result is unusual or unexpected. A factual
cause cannot be an imaginary or fanciful factor having no connection or
only an insignificant connection with the harm.
To be a factual cause, Intertek’s conduct need not be the only
factual cause. The fact that some other causes concur with Intertek’s
negligence in producing an injury does not relieve Intertek from liability
as long as its own negligence is a factual cause of the injury.
C.

Defense - Puffery

Advertising puffery alone on a company website cannot support a
claim for misrepresentation. Representations regarding the quality of
the program amount to mere ‘puffing,’ rather than negligent
misrepresentation.
Puffery is defined as vague and general statements of optimism
understood by reasonable persons as such. In general, the more precise
and concrete the statement, the less likely the statement is to be puffery.
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2.

Damages
A.

Compensatory Damages

If you find that Brand has prevailed in its negligent
misrepresentation action, Brand is entitled to recovery for the loss
caused by the misrepresentation.
Brand is entitled to be fairly and adequately compensated for the
actual monetary loss it has suffered. Actual monetary loss includes:
1. the difference between the value it gave or amount it paid and
the actual, real, or intrinsic value of what it received at the time of the
transaction; and
2. all other monetary loss suffered as a consequence of the
misrepresentation or nondisclosure, including the additional expenses
and losses incurred as a result of the misrepresentation or nondisclosure,
including, the profit Brand has shown to a reasonable certainty that it
would have made.
In an action such as this, the measure of damages is “actual loss”,
and not the benefit, or value, of that bargain. The victim is entitled to all
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pecuniary losses which result as a consequence of its reliance on the
truth of the representations.
The standard for determining future damages is that Brand bears
the burden of proof by a preponderance of the evidence. Under this
criterion, Brand is required to furnish only a reasonable quantity of
information from which you may fairly estimate the amount of damages.
Justice and public policy require that the wrongdoer bear the risk
of uncertainty which his own wrong has created and which prevents the
precise computation of damages. You, the fact-finder, however, still may
not render a verdict based on speculation or guesswork.
You may make a just and reasonable estimate of the damage based
on relevant data, and in such circumstances may act on probable and
inferential, as well as upon direct and positive proof. While you may not
use sheer conjecture as a basis for arriving at a verdict, you may use a
measure of speculation in aiming at a verdict or an award of damages,
and an even greater degree of flexibility is granted in regard to testimony
concerning prospective or future damages, which are at best, not always
easy or certain of ascertainment and are to a large extent based on
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probabilities and uncertainties. Generally, damages need not be proved
with mathematical certainty, but only with reasonable certainty, and
evidence of damages may consist of probabilities and inferences.
It is only required that the proof afford a reasonable basis from
which you can calculate Brand loss.
B.

Punitive Damages

If you find that the conduct of Intertek was outrageous, you may
award punitive damages, as well as any compensatory damages, in order
to punish Intertek for its conduct and to deter Intertek and others from
committing similar acts.
A company’s conduct is “outrageous” when it is malicious,
wanton, willful, or oppressive, or shows reckless indifference to the
interests of others.
If you decide that Brand is entitled to an award of punitive
damages, it is your job to fix the amount of such damages. In doing so,
you may consider any or all of the following factors:
1.

The character of Intertek’s act;

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2.

The nature and extent of the harm to Brand that Intertek

caused or intended to cause; and
3.

The wealth of Intertek insofar as it is relevant in fixing an

amount that will punish it, and deter it and others from like conduct in
the future.
It is not necessary that you award compensatory damages to Brand
in order to assess punitive damages against Intertek, as long as you find
in favor of Brand and against Intertek on the question of liability.
The amount of punitive damages awarded must not be the result of
passion or prejudice against Intertek on the part of the jury. The sole
purpose of punitive damages is to punish Intertek’s outrageous conduct
and to deter Intertek and others from similar acts.
II. Intertek’s Three Counterclaims Against Brand
3.

Trademark Infringement/Lanham Act
A.

Elements of claim

Intertek claims that Brand has infringed Intertek’s trademark. A
trademark is a word, symbol, or combination of words or symbols used
by a company to identify its product, to distinguish its product from
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those manufactured or sold by others, and to indicate the source of its
product.
Intertek claims that Brand infringed Intertek’s ETA trademark by
using the ETA mark on Thermablasters. Brand denies that it is liable for
trademark infringement because it argues that Intertek did not suffer any
harm as a result of the alleged infringement.
Intertek must prove the following four elements by a
preponderance of the evidence, which I have previously explained to
you, in order to succeed on its Lantham Act claim: (1) that Intertek owns
the ETA trademark; (2) that Intertek’s trademark is a valid trademark;
(3) that Brand used the ETA trademark in interstate commerce; and (4)
that Brand used the ETA trademark in a manner that is likely to cause
confusion or mistake as to the approval of Brand’s product.
The parties have stipulated or agreed that Intertek owns the ETA
trademark and that it is a valid trademark.
“Use” Defined
As to the requirement that Brand used the ETA trademark in
interstate commerce, it is sufficient for Intertek to prove that a third27

party used the ETA trademark in interstate commerce if Brand continued
to supply infringing Thermablasters when Brand knew or had reason to
know that doing so would cause the third party to sell infringing
Thermablasters.
“Confusion or Mistake” Defined
As to the requirement that that Brand used the trademark in a
manner that is likely to cause confusion or mistake as to the approval of
Brand’s product, if you find that Brand used the ETA trademark on its
Thermablasters, the law presumes that such use is likely to cause
confusion or mistake as to the approval of Brand’s products. Brand can
rebut this presumption with evidence that the use of the ETA mark was
not likely to cause confusion or mistake as to the approval of Brand’s
product.
B.

Willfulness

If you find that Brand infringed Intertek’s trademark, you must
also determine whether Intertek has proven that, at the time Brand
infringed the trademark, Brand acted willfully. Brand acted willfully if it

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knew that it was infringing Intertek’s trademark or if it acted with
indifference to Intertek NA’s trademark rights.
C.

Damages under Lanham Act

To recover damages on its trademark infringement counterclaim
under the Lanham Act, Intertek must prove two things by a
preponderance of the evidence: (1) Brand’s infringement caused actual
confusion among consumers; and (2) as a result, Intertek sustained
injury.
If you find that Intertek has proven these things, then you must
consider what amount of money to award to Intertek as damages, if any.
Damages consist of the amount of money required to compensate
Intertek for the injury caused by Brand’s infringement. Intertek must
prove its damages by a preponderance of the evidence.
You may consider the following types of damages: (1) Intertek’s
lost profits on lost sales, which consists of the revenue Intertek would
have earned but for Brand’s infringement, less the expenses Intertek
would have sustained in earning those revenues ; (2) Loss of goodwill.
Goodwill is consumer recognition or drawing power of a trademark. In
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determining loss of goodwill, you should compare the value of Intertek’s
goodwill before the infringement with the value of Intertek’s goodwill
after the infringement.
Disgorgement of Profits
In addition to Intertek’s damages, Intertek may recover the profits
Brand gained from the trademark infringement. You may not, however,
include in any award of profits any amount that you took into account in
determining actual damages.
“Profit” Defined
Profit is determined by deducting expenses from gross revenue.
Gross revenue is all of the money Brand received due to its use of the
trademark. Intertek is required only to prove Brand’s gross revenue.
Brand is required to prove any expenses that it argues should be
deducted in determining its profits.
Intertek is entitled to recover Brand’s total profits from its use of
the trademark unless Brand proves that a portion of the profit is due to
factors other than use of the trademark.

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4.

Fraudulent Misrepresentation
A.

Elements of claim –

Intertek must prove the following six elements by clear and
convincing evidence, in order to succeed on its fraudulent
misrepresentation counterclaim: (1) a representation; (2) which is
material to the transaction; (3) made falsely, with knowledge of its
falsity or recklessness as to whether it is true or false; (4) with the intent
of misleading another; (5) justifiable reliance; and (6) resulting injury.
“Misrepresentation” defined –
A misrepresentation is any any assertion by words or conduct that
is not in accordance with the facts.
“Material” defined –
A fact is material if it is one that would be of importance to a
reasonable person in determining a choice of action. A material fact,
however, need not be the sole or even a substantial factor in inducing or
influencing a reasonable person’s decision. A fact is also material if the
person who fails to disclose it knows that the person to whom it is made

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is likely to regard it as important even though a reasonable person would
not regard it as important.
“Reliance” defined –
Reliance means a person would not have acted as he did unless he
considered the misrepresentation to be true.
“Fraud” defined –
Fraud consists of anything calculated to deceive, whether by single
act or combination, or by suppression of truth, or suggestion of what is
false, whether it be by direct falsehood or by innuendo, by speech or
silence, word of mouth, or look or gesture. Fraud may occur by false or
misleading allegations or by concealment of that which should have
been disclosed, which deceives or is intended to deceive another to act
upon it to his detriment.
B.

Factual Cause

In order for Intertek to recover in this case, Brand’s fraudulent
conduct must have been a factual cause, in bringing about harm.
Conduct is a factual cause of harm when the harm would not have
occurred absent the conduct. To be a factual cause, the conduct must
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have been an actual, real factor in causing the harm, even if the result is
unusual or unexpected. A factual cause cannot be an imaginary or
fanciful factor having no connection or only an insignificant connection
with the harm.
To be a factual cause, Brand’s conduct need not be the only factual
cause. The fact that some other causes concur with Brand’s fraud in
producing an injury does not relieve Brand from liability as long as its
own fraud is a factual cause of the injury.
C.

Damages for Fraudulent Misrepresentation

1.

Compensatory Damages

If you find that Intertek has prevailed in its fraudulent
misrepresentations action, Intertek is entitled to recovery for the loss
caused by the misrepresentation.
Intertek is entitled to be fairly and adequately compensated for the
actual monetary loss it has suffered. Actual monetary loss includes:
1. the difference between the value it gave or amount it paid and
the actual, real, or intrinsic value of what it received at the time of the
transaction; and
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2. all other monetary loss suffered as a consequence of the
concealment, including the additional expenses and losses incurred as a
result of the concealment.
I have previously explained to you how such determinations
should be made and you should follow the same instructions with
respect to Intertek’s counterclaim as with Brand’s claim.
2.

Punitive Damages

If you find that the conduct of Brand was outrageous, you may
award punitive damages, as well as any compensatory damages, in order
to punish Brand for its conduct and to deter Brand and others from
committing similar acts. I have previously explained the considerations
in awarding punitive damages and you should follow the same
instructions with respect to Intertek’s counterclaim as with Brand’s
claim.
5.

Fraudulent Concealment
A.

Elements of claim –

Intertek must prove the following five elements by clear and
convincing evidence, which I have previously explained to you, in order
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to succeed on its fraudulent concealment claim: (1) a concealment; (2)
which is material to the transaction; (3) with the intent of misleading
another; (4) justifiable reliance; and (5) resulting injury.
“Concealment” Defined
Brand concealed a fact that it knew, if, by conduct, or by written or
oral words, or by a combination of conduct and words, it created a false
impression of the actual fact in the mind of Intertek by either (1)
covering up the truth or (2) by preventing Intertek from discovering the
actual fact for itself.
I have previously defined the terms material, reliance, and fraud at
pages 31-32 and you should use those definitions when deciding if
Intertek has met its burden of proof with respect to its fraudulent
concealment claim.
B.

Factual Cause

In order for Intertek to recover in this case, Brand’s fraudulent
conduct must have been a factual cause, which I have previously defined
at pages 32-33, in bringing about harm.

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C.

Damages for Fraudulent Concealment

1.

Compensatory Damages

If you find that Intertek has prevailed in its fraudulent concealment
action, Intertek is entitled to recovery for the loss caused by the
concealment or misrepresentation.
Intertek is entitled to be fairly and adequately compensated for the
actual monetary loss it has suffered. Actual monetary loss includes:
1. the difference between the value it gave or amount it paid and
the actual, real, or intrinsic value of what it received at the time of the
transaction; and
2. all other monetary loss suffered as a consequence of the
concealment, including the additional expenses and losses incurred as a
result of the concealment.
I have previously explained to you how such determinations
should be made and you should follow the same instructions with
respect to Intertek’s counterclaim as with Brand’s claim.

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2.

Punitive Damages

If you find that the conduct of Brand was outrageous, you may
award punitive damages, as well as any compensatory damages, in order
to punish Brand for its conduct and to deter Brand and others from
committing similar acts. I have previously explained the considerations
in awarding punitive damages and you should follow the same
instructions found at pages 25-26 with respect to Intertek’s counterclaim
as with Brand’s claim.
V. Process of Jury Deliberation
Your verdict must represent the considered judgment of each juror.
In order to return a verdict, it is necessary that each juror agree. In other
words, your verdict must be unanimous.
It is your duty as jurors to consult with one another and to
deliberate with a view to reaching an agreement, if you can do so,
without violation to individual judgment. Each of you must decide the
case for yourself, but only after an impartial consideration of all the
evidence in the case with your fellow jurors.
In the course of your deliberations, do not hesitate to re-examine
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your own views, and change your opinion, if convinced it is erroneous.
But do not surrender your honest conviction as to the weight or effect of
the evidence, solely because of the opinion of your fellow jurors, or for
the mere purpose of returning a verdict.
Remember, at all times you are not partisans. You are judges -judges of the facts. Your sole interest is to seek the truth from the
evidence in the case.
Upon retiring to the jury room you should first select one of your
number to act as your foreperson who will preside over your
deliberations and will be your spokesperson here in court. You can make
this selection and conduct your deliberations in whatever manner you
think best, but I offer some suggestions that other juries have found
helpful to allow full participation by all jurors and to arrive at a verdict
that satisfies everyone.
The foreperson should encourage open communication,
cooperation and participation by all jurors, and be willing and able to
facilitate discussions when disagreements and disputes arise.
The foreperson should let each of you speak and be heard before
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expressing her or his views.
The foreperson should never attempt to promote or permit anyone
else to promote his or her personal opinions by coercion or bullying.
The foreperson should make sure that deliberations are not rushed.
Some people are better at facilitating than others, and if it becomes clear
that someone else would be a more effective foreperson, you might want
to consider selecting a different person, with no hard feelings.
You also may think it wise to select a secretary to record votes,
which should probably be cast by secret ballot, and to keep track of
whether everyone has spoken.
Some juries think it will be useful to take a preliminary vote before
discussions are started, however, such an early vote often proves
counter-productive for several reasons, including that it tends to “lockin” a particular point of view before alternative points of view are
covered.
You should listen carefully and attentively to each other, and hear
what each other person is saying before responding. Don’t interrupt and
don’t monopolize the discussion. Speak one at a time. Be patient and
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respectful of other opinions, and don’t take it personally if someone
disagrees with you.
A verdict form has been prepared for you, and you have reviewed
a copy. You will take the original verdict form to the jury room and
when you have reached a unanimous agreement as to your verdict, you
will each sign it, have your foreperson date it, and then signal the bailiff
that you are prepared to return to the courtroom.
You will also be provided with copies of these instructions for
your use during deliberations. If, during your deliberations, you should
desire to communicate with the court, please reduce your message or
question to writing signed by the foreperson, and pass the note to the
bailiff who will bring it to my attention. After consulting with the
lawyers, I will then respond as promptly as possible, either in writing or
by having you returned to the courtroom so that I can address you orally.
I caution you, however, with regard to any message or question you
might send, that you should never state or specify your numerical
division at the time.
It is proper to add the caution that nothing said in these instructions
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and nothing in the Verdict Form prepared for your convenience is meant
to suggest or hint in any way what verdict I think you should find.
What the verdict shall be is your sole and exclusive duty and
responsibility. You will note from the oath about to be taken by the
bailiff that she too, as well as all other persons, are forbidden to
communicate in any way or manner with any member of the jury on any
subject touching the merits of the case.
[swear Bailiff(s) and send jury out]

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