Case 0:10-cv-61532-JIC Document 188 Entered on FLSD Docket 09/13/2011 Page 1 of 7
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
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`CASE NO. 10-61532-CIV-COHN
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`Magistrate Judge Seltzer
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`HABERSHAM PLANTATION CORPORATION,
`a Georgia corporation, and HABERSHAM
`INVESTMENT PARTNERSHIP, L.P., a
`Georgia corporation,
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`Plaintiffs,
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`v.
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`ART & FRAME DIRECT, INC., a Florida corporation,
`WORLD OF DECOR, INC., et al,
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`Defendants.
`__________________________________________/
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`ORDER GRANTING IN PART MOTION TO EXCLUDE
`DEFENDANTS’ EXPERT N. SHERWOOD ROBERTSON
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`THIS CAUSE is before the Court upon Plaintiffs’ Motion to Exclude Defendants’
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`Expert N. Sherwood Robertson [DE 94], Defendants’ Response [DE 108], and Plaintiffs’
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`Reply [DE 129]. The Court has carefully considered these filings and attached exhibits,
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`along with the argument of counsel heard at the Calendar Call of September 9, 2011.
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`I. BACKGROUND1
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`Plaintiffs Habersham Plantation Corporation and Habersham Investment
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`Partnership, L.P. (collectively “Plaintiffs” or “Habersham”) filed this action against
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`various Defendants asserting claims for copyright infringement, trademark infringement,
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`common law trademark infringement, and trade dress violations under the Lanham Act.
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`The Defendants are companies based in South Florida and Georgia, and are all owned
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`by the same three related non-party individuals, in different combinations depending
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` For the full background of this case, please see the Order Granting in Part and
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`Denying in Part Motion for Summary Judgment [DE 176].
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`Case 0:10-cv-61532-JIC Document 188 Entered on FLSD Docket 09/13/2011 Page 2 of 7
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`upon the location and name of the particular Defendant. Plaintiffs allege that
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`Defendants have violated Habersham’s federally-registered copyrights and trademarks
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`for certain types of furniture and home decor.
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`Plaintiffs design, manufacture and distribute their own line of furniture products
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`that utilize elements from classic European furniture. Plaintiffs incorporate into their
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`designs off the shelf components manufactured by other companies. Plaintiffs have
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`obtained copyrights for some of their designs and have pending registrations on many
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`others. Plaintiffs contend that their protected authorship “is in the collective artistry and
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`expression in the selection, placement, variation and interplay of the various ornamental
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`elements.” Joint Pretrial Stipulation, Plaintiffs’ Statement at 3. Defendants are in the
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`business of selling a variety of home furnishings, including indoor and outdoor furniture.
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`Defendants do not design or manufacture any of the products they offer, but purchase
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`their products from suppliers.
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`After the parties completed discovery, Defendants moved for summary judgment
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`as to all claims. The Court denied the motion as to the copyright claim, but granted the
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`motion as to the trademark and trade dress claims in Counts II, III and IV. The Court
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`also ruled from the bench at the end of the calendar call (which operated as a motion
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`hearing) regarding several of the other motions to strike experts [DE 183].3
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` In support of its copyright infringement claim, Plaintiffs’ Complaint contains 19
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`specific examples of Defendants’ alleged infringement with side by side pictures of
`Plaintiffs’ and Defendants’ products. Complaint, ¶¶ 32-51.
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` The Court denied motions to exclude Michael Pakter (Plaintiff’s damages
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`expert) and Wallace Epperson (Defendants’ furniture industry expert), while it granted
`in part the motion to exclude Defendants’ damages expert, Christopher Bokhart. The
`Court ruled that Bokhart’s testimony should be limited to his analysis of lost profits or
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`Case 0:10-cv-61532-JIC Document 188 Entered on FLSD Docket 09/13/2011 Page 3 of 7
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`II. MOTION TO EXCLUDE EXPERT ROBERTSON
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`Expert testimony is admissible when:
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`(1) the expert is qualified to testify competently regarding the matters he
`intends to address; (2) the methodology by which the expert reaches his
`conclusion is sufficiently reliable as determined by the sort of inquiry
`mandated in Daubert [ v. Merrill Dow Pharmaceuticals, Inc., 509 U.S. 579
`(1993)]; and (3) the testimony assists the trier of fact, through the
`application of scientific, technical, or specialized expertise, to understand
`the evidence or to determine a fact in issue.
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`U.S. v. Frazier, 387 F.3d 1244, 1260 (11 Cir. 2004) (en banc) (quoting City of
`th
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`Tuscaloosa v. Harcros Chemicals, Inc., 158 F.3d 548, 562 (11 Cir. 1998)). Last week,
`th
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`in applying this standard to a civil case, the United States Court of Appeals for the
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`Eleventh Circuit strongly implied that a district court must address all three prongs if an
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`expert is excluded. Rosenfeld v. Oceania Cruises, Inc., – F.3d –, 2011 WL 3903172,
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`*1-3 (11 Cir. Sept. 7, 2011) (reversal of District Court’s exclusion of a floor-safety
`th
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`expert who performed various coefficient-of-friction tests to determine the slip
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`resistance of a vessel’s flooring surfaces where theory of case was that vessel’s choice
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`of tile flooring was unreasonable). The burden on a motion to exclude rests with the
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`proponent of the expert. McClain v. Metabolife Intern., Inc., 401 F.3d 1233, 1238, n.2
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`(11 Cir. 2005).
`th
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`Plaintiffs seek to exclude Defendants’ expert Sherwood Robertson because his
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`opinions are irrelevant, invade the province of the jury, and he is not qualified to opine
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`on Plaintiffs’ design process. Robertson has worked in the furniture industry for over 50
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`royalty rates, without allowing him to opine on manufacturing capability, market demand
`or substitution of products in the furniture business, which are outside his area of
`expertise (but within the expertise of Wallace Epperson).
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`3
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`Case 0:10-cv-61532-JIC Document 188 Entered on FLSD Docket 09/13/2011 Page 4 of 7
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`years in a variety of capacities. Plaintiffs do not challenge his qualifications as a
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`furniture industry expert, though they question the scope of his testimony as explained
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`below.
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`Robertson’s expert report contains three general opinions. Expert Report of N.
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`Sherwood Robertson, Exhibit C to Plaintiffs’ Motion to Exclude [DE 94-3] (hereinafter,
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`“Report”). First, he concludes that Plaintiffs’ and Defendants’ products are not
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`substantially similar in that no furniture buyer, ultimate consumer, or member of the
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`furniture trade would ever confuse Habersham’s products with Defendants’ products.
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`Report at 4-5. Robertson’s report includes a three page side by side chart as to the
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`individual elements present in Plaintiffs’ products and Defendants’ accused products.
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`Exhibit A to Report [DE 95-3]. His conclusion on similarity is the ultimate issue in this
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`case, which a “lay observer” is charged with making. Peter Letterese and Assoc., Inc.
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`v. World Institute of Scientology, 533 F.3d 1287, 1301 (11 Cir. 2008). Plaintiffs
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`contend that this opinion invades the province of the jury, while Defendants argue that
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`no case law exists to exclude expert opinion on similarity.
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`Robertson’s second opinion is that there are few, if any, design elements in
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`Habersham’s designs that are original to the furniture industry. He has also prepared a
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`chart comparing Habersham’s products to other pre-existing products. Exhibit B to
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`Report. Under Rosenfeld, this topic is one on which expert testimony is proper, as such
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` The Eleventh Circuit has also recognized “the intricate role of Rule 403 in an
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`expert testimony admissibility analysis . . . [as the Supreme Court] noted that expert
`testimony could be ‘both powerful and quite misleading because of the difficulty in
`evaluating it.’” Allison v. McGhan Medical Corp.,184 F.3d 1300, 1310 (11 Cir. 1999)
`th
`(quoting Daubert, 509 U.S. at 595).
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`Case 0:10-cv-61532-JIC Document 188 Entered on FLSD Docket 09/13/2011 Page 5 of 7
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`design detail and history of furniture is not readily obvious to a lay observer. However,
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`Plaintiffs contend that because an expert opinion that no originality is present is
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`equivalent to testimony that a design is not copyrightable, such testimony is a legal
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`conclusion that is not proper for this expert to express.
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`Robertson’s third general area of opinion testimony concerns Habersham’s
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`internal processes of design, manufacturing and decisions whether or not to seek a
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`design patent or a copyright. Plaintiffs contend that Robertson is not qualified to know
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`what goes on in the mind of Habersham executives, but rather is attempting to impose
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`industry standards that are not relevant to Habersham’s processes.
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`Defendants argue that expert testimony is appropriate in all of these areas,
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`particularly to oppose or rebut Habersham’s own testimony regarding its designs and
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`what is original. Defendants assert that it is only through expert testimony that
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`Defendants can present a different interpretation than Plaintiffs’ witnesses will testify to
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`regarding their own designs. Plaintiffs contend otherwise, arguing that Plaintiffs’
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`witness, Robert Williams, is a fact witness, while Defendants’ witness Robertson cannot
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`opine in an area where he is not familiar with the underlying facts.
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`The Court will apply Daubert to each of Robertson’s three opinions. Taking first
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`his opinion regarding whether the design elements in Habersham’s designs are original
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`to the furniture industry, the Court concludes that Robertson is qualified based upon his
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`personal experience in the industry, that his methodology of relying upon his personal
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`knowledge of the design and manufacturing process of furniture that looks antique is
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`sufficiently reliable, and that his testimony can assist the jury to understand the history
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`of furniture design and whether particular elements put forth by Plaintiffs are in fact
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`Case 0:10-cv-61532-JIC Document 188 Entered on FLSD Docket 09/13/2011 Page 6 of 7
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`original or not, which is a mixed question of fact and law. As in Rosenfeld, matters of
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`whether design elements of otherwise utilitarian furniture are original or not are beyond
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`the understanding and experience of the average lay citizen, and thus an expert may
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`opine on this issue.
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`As to Robertson’s opinion regarding Habersham’s internal processes of design,
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`manufacturing and decisions whether or not to seek a design patent or a copyright,
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`here Robertson is not qualified to testify competently as to what transpired during
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`Habersham’s internal decision-making process. Robertson is qualified to testify
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`regarding industry standards, which are largely factual matters, but cannot put himself
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`into the minds of Habersham executives by opining on what “Habersham should have
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`done” to protect its expressions.
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`Finally, as to Robertson’s first opinion regarding whether Plaintiffs’ and
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`Defendants’ products are not substantially similar in that no furniture buyer, ultimate
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`consumer, or member of the furniture trade would ever confuse Habersham’s products
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`with Defendants’ products, the Court concludes that such an opinion is the ultimate
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`issue in the case, does not assist the trier of fact but rather substitutes for the trier of
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`fact, and is an issue not beyond the understanding and experience of the average lay
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`citizen. While Robertson is qualified to base his opinion on his personal knowledge of
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`the industry, a jury must decide whether the parties’ products are substantially similar,
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`based upon the evidence presented and the argument of counsel. Under Rule 403 of
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` The Court notes that the consumer confusion issue, an element of the trade
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`dress and trademark claims, is no longer an issue in this case following the Court’s
`ruling on summary judgment.
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`Case 0:10-cv-61532-JIC Document 188 Entered on FLSD Docket 09/13/2011 Page 7 of 7
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`the Federal Rules of Evidence, an expert opinion on this ultimate issue would be far
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`more prejudicial than probative, since a jury will be viewing the products and can make
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`their own similarity decision.
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`III. CONCLUSION
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`Accordingly, it is hereby ORDERED AND ADJUDGED that Plaintiffs’ Motion to
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`Exclude Defendants’ Expert N. Sherwood Robertson [DE 94] is hereby GRANTED in
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`part and DENIED in part, as explained above.
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`DONE AND ORDERED in Chambers at Fort Lauderdale, Broward County,
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`Florida, this 13 day of September, 2011.
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`Copies to:
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`All counsel of record
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