The opinion of the court was delivered by: Marilyn L. Huff, District Judge United States District Court
ORDER RE MOTIONS IN LIMINE
On June 2, 2008, the Court held a hearing on the parties' motions in limine. Peter W. Ross, Steven W. Winton and Keith J. Wesley appeared on behalf of Plaintiff. Peter J. Brann and Alison L. Pivonka appeared for Defendant. 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. 148.) Defendant opposes the motion. (Doc. No. 163.) Plaintiff filed a reply. (Doc. No. 192.) The Court denies the motion, without prejudice to Plaintiff's ability to 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. 149.) 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 evidence of other Brighton products is relevant to whether the products identified by Plaintiff as exhibiting the asserted trade dress in fact bear 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."(Doc. No. 164.) Plaintiff has filed a reply. (Doc. No. 193.)
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 Brighton products 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 and/or whether the products identified by Plaintiff exhibit a distinctive trade dress. Accordingly, the Court denies without prejudice Plaintiff's motion in limine to exclude such evidence. Plaintiff may object at trial to the admissibility of evidence regarding other Brighton 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. 150.) Defendant responds that Brighton's yearly revenues and net worth are factual predicates for any calculation of alleged damage to Plaintiff's goodwill. (Doc. No. 165.) Plaintiff filed a reply. (Doc. No. 194.)
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, but 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. 151, 167.) The Court therefore grants that motion.
Defendant's Motions in Limine
1. Defendant's first motion in limine seeks exclusion of evidence relating to or relying on certain e-mails within Coldwater or with Coldwater's vendors. (Doc. No. 138.) Two of the e-mail chains at issue involve Coldwater employees or vendors and use the term "knock off" or similar phrases. Additional e-mail chains, involving Coldwater and one of its vendors, refer to Brighton's products and request that certain hardware be revised to look more "brighton-y." Defendant argues for exclusion on grounds of relevance, hearsay, and undue prejudice or confusion. (Doc. No. 138.) Plaintiff responds that the e-mails are relevant because they demonstrate willful copying by Defendant of Plaintiff's designs, and that they do not constitute hearsay because they are admissions by a party opponent, see Rule 801(d)(2), or because Plaintiff offers the statements for non-hearsay purposes. (Doc. No. 183.) Defendant has filed a reply. (Doc. No. 184.)
The Court denies Defendant's motion without prejudice. The Court concludes that the e-mails are relevant to intentional copying by Defendant, and therefore denies Defendant's request for exclusion under Rule 401. The Court declines at this time to exclude the e-mails on hearsay or Rule ...