The opinion of the court was delivered by: Marilyn L. Huff, District Judge United States District Court
ORDER RE MOTIONS IN LIMINE
On May 12, 2008, the Court held a hearing on the parties' motions in limine. Peter W. Ross and Steven W. Winton appeared for plaintiff Brighton Collectibles, Inc. Christopher R. Ball and Colin T. Kemp represented defendant Ralphs Grocery Company. After considering the briefing by both parties and the arguments presented by counsel at the hearing, the Court summarizes its rulings on the parties' motions in limine as follows:
Plaintiff's Motions in Limine
1. Plaintiff's first motion in limine seeks exclusion of any argument or evidence related to intellectual property infringement allegations and/or lawsuits brought against Plaintiff by parties not involved in this case. (Doc. No. 176.) The Court denies the motion, without prejudice to Plaintiff's ability to contemporaneously object at trial to the admissibility of such evidence.
2. Plaintiff's second motion in limine seeks exclusion of evidence relating to any Brighton product other than those identified by Plaintiff as exhibiting the trade dress asserted by Plaintiff in this case. (Doc. No. 177.) Plaintiff contends that a trade dress plaintiff may define its product line however it chooses, and therefore that evidence of other products is inadmissible under Rules 402 and 403 of the Federal Rules of Evidence. Defendant responds that it should be permitted to put on evidence regarding what constitutes the "Brighton line" of products, since such evidence is relevant to whether Plaintiff possesses a distinctive trade dress. Defendant also contends that evidence regarding other products made by Plaintiff is relevant to whether Plaintiff's asserted trade dress has "secondary meaning."
The Court denies Plaintiff's motion. To establish a protectable trade dress, Plaintiff bears the burden of establishing that the products it asserts against Defendant have acquired "secondary meaning." Wal-Mart v. Samara, 529 U.S. 205, 216 (2000). Secondary meaning exists when, "in the minds of the public, the primary significant of a [trade dress] is to identify the source of the product rather than the product itself." Id. at 211. The Ninth Circuit defines secondary meaning as "the mental association by a substantial segment of consumers and potential consumers between the alleged mark and a single source of the product." Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1985).
"Secondary meaning can be established in many ways, including (but not limited to) direct consumer testimony; survey evidence; exclusivity, manner, and length of use of a [trade dress]; amount and manner of advertising; amount of sales and number of customers; established place in the market; and proof of intentional copying by the defendant." Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc., 198 F.3d 1143, 1151 (9th Cir. 1999). Advertising activities, however, "must involve 'image advertising,' that is the ads must feature in some way the trade dress itself. Otherwise, even evidence of extensive advertising or other promotional efforts would not necessarily indicate that prospective buyers would associate the trade dress with a particular source." First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir. 1987).
The Court concludes that evidence regarding products other than those Plaintiff has identified as bearing the trade dress at issue is relevant to Plaintiff's "manner of advertising," which in turn bears relevance to whether Plaintiff's asserted products have acquired secondary meaning. See Filipino Yellow Pages, 198 F.3d at 1151. The Court concludes that, although Plaintiff is free to define whichever products it chooses as bearing the asserted trade dress, so too is Defendant entitled to present evidence related to other products made by Plaintiff insofar as that evidence is relevant to whether Plaintiff has advertised its trade dress in a manner that has caused it to achieve secondary meaning. Accordingly, the Court denies Plaintiff's motion in limine to exclude such evidence. Plaintiff may object at trial to the admissibility of evidence regarding products not bearing Plaintiff's asserted trade dress.
3. Plaintiff's third motion in limine requests exclusion of all evidence relating to Brighton's yearly revenues or net worth, pursuant to Rules 402 and 403 of the Federal Rules of Evidence. (Doc. No. 178.) Defendant responds that Plaintiff has put its revenues at issue by asserting a claim for approximately $2.5 million in harm to its goodwill. (See Doc. No. 188.)
The Court concludes that evidence of Brighton's yearly revenues is relevant to Plaintiff's claim for lost goodwill. Accordingly, the Court denies Plaintiff's motion on Rule 402 grounds. The Court also declines at this time to exclude the evidence under Rule 403. Plaintiff may object at trial to the admissibility of this evidence.
4. Defendant does not oppose Plaintiff's fourth motion in limine, regarding evidence of settlement discussions. (Doc. Nos. 179, 190.)
The Court therefore grants that motion.
5. Plaintiff's fifth motion in limine*fn1 seeks exclusion at trial of any argument that insufficient evidence exists regarding actual consumer confusion. (Doc. No. 180.) Plaintiff contends that it was denied access to the names and contact information of consumers who purchased from Defendant's stores the Langdon Leather products at issue. During discovery Plaintiff requested that Defendant produce the identities of such consumers. When Defendant refused, Plaintiff filed a motion to compel Defendant to produce the information. (See Doc. No. 101.) On June 20, 2007, the magistrate judge issued an order denying Plaintiff's motion to compel. (Doc. No. 111.) The magistrate judge concluded that "Ralphs' need to protect the information sought outweighs Brighton's need to know at this juncture in the litigation." The magistrate judge's ruling was "without prejudice to Brighton renewing its request at a time when the requisite need may be shown." (Id.) On August 9, 2007, the Court affirmed the magistrate judge's ruling. (Doc. No. 133.) Subsequently, Plaintiff has not attempted to narrow or renew its request for this information.
The Court denies Plaintiff's motion to exclude argument that insufficient evidence exists regarding actual consumer confusion. Plaintiff bears the burden of persuasion on all elements of its trade dress claim, including "that there is a likelihood that the public will be confused by the infringing use." Stephen W. Boney, Inc. v. Boney Services, Inc., 127 F.3d 821, 828 (9th Cir. 1997). The jury may consider all factors the Ninth Circuit has stated are relevant to likelihood of confusion, including whether evidence exists regarding actual confusion. See AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). The Court declines to prohibit Defendant from presenting argument regarding the sufficiency of Plaintiff's evidence. ...