BRIGHTON COLLECTIBLES v. RK TEXAS LEATHER MFG.
`Cite as 923 F.Supp.2d 1245 (S.D.Cal. 2013)
`
`1245
`
`case, e.g. Document 26 HH 60-62, 64, but
`Plaintiff has totally failed to explain how
`these explanations are "necessary to ex­
`plain technical terms or complex matters"
`already in the record.
`[22] Plaintiff is reminded that applica­
`tion of this exception requires, as a thresh­
`old matter, a showing that the existing
`record is so inadequate as to frustrate
`judicial review. Bair v. California State
`Dept. ofTransp., 867 F.Supp.2d 1058, 1067
`(citing Animal Defense
`(N.D.Cal.2012)
`Council V. Model, 840 F.2d 1432, 1437 (9th
`Cir.1988)). Plaintiff has not even attempt­
`ed to explain why the existing record is
`inadequate to permit judicial review of
`NIJ's actions, let alone how the Docu­
`ments offered would cure any inadequacy.
`Plaintiff has failed to meet its burden to
`furnish these explanations.
`Plaintiffs request to supplement the
`record with all 22 disputed Documents un­
`der the "necessary to explain technical
`terms or complex matters" is DENIED.
`
`III. CONCLUSION
`For the reasons set forth above. Plain­
`tiffs motion to supplement the EAR is
`DENIED with the exceptions that the
`EAR shall be supplemented with:
`• Document 8, pm-suant to the consent
`of Defendant;
`• Document 10, a differently redacted
`version of a document already in the
`record; and
`• Document 21 under the relevant fac­
`tors exception.
`In addition, the Court wiU permit Plain­
`tiff to file a very narrow motion for discov­
`ery to uncover whether NIJ considered
`additional data from the Army or DOD.
`Any such motion for discovery, which shall
`not exceed five pages in length, shall be
`filed on or before March 1, 2013, with any
`response, subject to the same page limit,
`due on or before March 8, 2013. The
`motion will be decided on the papers with­
`
`out oral argument. The Parties are ad­
`monished to attempt to stipulate as to the
`nature of any discovery and/or to supple­
`mentation of the EAR with appropriate
`documents. Any such stipulation must be
`filed on or before March 1, 2013 in lieu of a
`motion for discovery.
`Once any such discovery is completed or
`the matter is resolved by stipulation, the
`Parties are instructed to attempt to stipu­
`late to a schedule for resolution of this
`case on the merits pursuant to the supple­
`mented EAR. Normally, APA cases are
`resolved on cross-motions for summary
`judgment, frequently with the defendant
`filing an opening brief, the plaintiff filing a
`single brief encompassing its opposition
`and cross-motion, followed by a reply from
`the defendant, and concluding with a reply
`from the plaintiff. If the Parties believe it
`would be more efficient for Defendant to
`withdraw its pending motion and re-brief
`the merits issues according to such a coor­
`dinated schedule, they are encouraged to
`do so.
`If the Parties cannot agree to a
`schedule, they shall contact the magistrate
`judge to set up a scheduling conference.
`IT IS SO ORDERED.
`
`BRIGHTON COLLECTIBLES,
`INC., Plaintiff,
`V.
`RK TEXAS LEATHER MFG.; K & L
`Imports, Inc.; et al.. Defendants;
`
`and related cross claims.
`Case No. 10-CV^19-GPC (WVG).
`United States District Court,
`S.D. California.
`Feb. 12, 2013.
`Background: Manufacturer of fashion
`accessories and handbags filed
`suit
`
`<1^1 P D
`I
`1 DEPOSITION
`§
`EXHIBIT
`
`1
`
`Summit 6 Exhibit No. 2073
`Google Inc., et al. v. Summit 6 LLC
`IPR2015-00806
`
`

`
`1246
`
`923 FEDERAL SUPPLEMENT, 2d SERIES
`
`against competitor alleging trade dress
`infringement in violation of Lanham Act.
`Defendant moved to exclude expert wit­
`ness testimony, and both sides moved for
`summary judgment.
`Holdings: The District Court, Gonzalo P.
`Curiel, J., held that:
`(1) genuine issue of material fact as to
`whether plaintiffs heart-shaped design
`was functional, so as to play a som-ce-
`identifying role, precluded summary
`judgment on claim of trade dress in­
`fringement;
`(2) genuine issue of material fact as to
`whether design was generic or, in­
`stead, distinctive precluded summary
`judgment on claim of trade dress in­
`fringement;
`(3) genuine issue of material fact as to
`whether plaintiffs design had acquired
`secondary meaning precluded sum­
`mary judgment on claim of trade dress
`infringement;
`(4) proffered testimony of accounting ex­
`pert witness was not based on reliable
`methodology;
`(5) survey conducted to determine likeli­
`hood of confusion as to source of alleg­
`edly
`infringing handbags contained
`flaws which rendered it inadmissible
`for purposes of determining actual
`damages; but
`(6) flaws in Internet suiwey conducted to
`determine whether plaintiffs reputa­
`tion was harmed went to its weight,
`rather than admissibility; and
`(7) genuine issue of material fact as to
`damage to plaintiffs reputation pre­
`cluded summary judgment on issue of
`lost profits.
`Motions for summary judgment denied
`and motion to exclude granted in part and
`denied in part.
`
`1. Trademarks <5^1062
`The Lanham Act protects not just
`word marks and symbol marks but also
`"trade dress" which is a category that
`originally included only the packaging, or
`dressing, of a product, but has been ex­
`panded to encompass the design of a prod­
`uct. Lanham Act, § 43(a), 15 U.S.C.A.
`§ 1125(a).
`See publication Words and Phras­
`es for other judicial constructions
`and definitions.
`
`2. Trademarks ©=1436
`To prove trade dress infringement, in
`violation of Lanham Act, plaintiff must
`prove: (1) that its claimed trade dress is
`nonfunctional; (2) that its claimed trade
`dress serves as a source-identifying role
`either because it is inherently distinctive
`or has acquired secondary meaning; and
`(3) that defendant's product creates a like­
`lihood of consumer confusion. Lanham
`Act, § 43(a), 15 U.S.C.A. § 1125(a).
`
`3. Trademarks <e>1064
`Under the traditional or utilitarian
`test associated with trade dress, a prod­
`uct's feature is "functional," as required to
`prove trade dress infringement in violation
`of Lanham Act, if it is essential to the use
`or purpose of the article or if it affects the
`cost or quality of the article. Lanham Act,
`§ 43(a)(3), 15 U.S.C.A. § 1125(a)(3).
`See publication Words and Phras­
`es for other judicial constructions
`and definitions.
`
`4. Trademarks <5^1064
`Under the competition theory of func­
`tionality, a feature is "functional," as re­
`quired to prove trade dress infringement
`in violation of Lanham Act, if exclusive use
`of the feature would put competitors at a
`significant non-reputation-related disad­
`vantage. Lanham Act, § 43(a)(3), 15
`U.S.C.A. § 1125(a)(3).
`
`2
`
`Summit 6 Exhibit No. 2073
`Google Inc., et al. v. Summit 6 LLC
`IPR2015-00806
`
`

`
`5. Trademarks <3^1064
`A plaintiff can prove a feature is not
`"functional," for purposes of trade dress
`infringement in violation of Lanham Act,
`by showing that it is merely an ornamen­
`tal, incidental, or arbitrary aspect of the
`product. Lanham Act, § 43(a)(3), 15
`U.S.C.A. § 1125(a)(3).
`
`6. Trademarks "3s=>1064
`In context of determining whether a
`product's feature is functional, for pur­
`poses of trade dress infringement under
`Lanham Act, if a feature contributes to the
`consumer appeal and saleabOity of the
`product, court first applies the utilitarian
`test for functionality before turning to the
`competition test. Lanham Act, § 43(a)(3),
`15 U.S.C.A. § 1125(a)(3).
`
`7. Federal Civil Procedure ®=>2493
`Genuine issue of material fact as to
`whether heart-shaped design used on ac­
`cessories and handbags was functional, so
`as to play a source-identifying role, or
`whether it was merely aesthetically pleas­
`ing, precluded summary judgment in trade
`dress infringement suit under Lanham Act
`between competitors in the women's acces­
`sories business. Lanham Act, § 43(a)(3),
`15 U.S.C.A. § 1125(a)(3).
`
`1247
`
`BRIGHTON COLLECTIBLES v. RK TEXAS LEATHER MFG.
`Cite as 923 F.Supp.2d 1245 (S.D.Cal. 2013)
`10. Trademarks ®=1034
`The Lanham Act does not protect ge­
`neric terms. Lanham Act, § 43(a), 15
`U.S.C.A. § 1125(a).
`11. Trademarks <3=1063
`In Lanham Act trade dress cases, the
`distinctiveness inquiry is whether the defi­
`nition of a product design is overbroad or
`too generalized. Lanham Act, § 43(a), 15
`U.S.C.A. § 1125(a).
`12. Federal Civil Procedure '^=2493
`Genuine issue of material fact as to
`whether heart-shaped design used on ac­
`cessories and handbags was generic, or
`whether it was distinctive enough that cus­
`tomers associated the overall look with
`plaintiffs product, precluded summary
`judgment in trade dress infringement suit
`under Lanham Act between competitors in
`the women's accessories business. Lan­
`ham Act, § 43(a), 15 U.S.C.A. § 1125(a).
`13. Trademarks <®=1063
`In context of trade dress infringement
`under Lanham Act, "secondary meaning"
`is a term of art for identification of source.
`Lanham Act, § 43(a), 15 U.S.C.A.
`§ 1125(a).
`See publication Words and Phras­
`es for other judicial constructions
`and definitions.
`14. Trademarks <3^1063
`A trade dress acquires secondary
`meaning, for purposes of protection under
`Lanham Act, when, in the minds of the
`public, the primary significance of the
`trade dress is to identify the source of the
`product rather than the product itself.
`Lanham Act,
`§ 43(a), 15 U.S.C.A.
`§ 1125(a).
`15. Trademarks <3=1063,1631
`Secondary meaning, for purposes of
`trade dress infringement under Lanham
`Act, can be established in many ways,
`including, but not hmited to: (1) direct
`consumer testimony; (2) survey evidence;
`(3) exclusivity, manner and length of use;
`
`8. Trademarks ©^lOBS
`To be protectable under Lanham Act,
`a trade dress must be capable of distin­
`guishing plaintiffs work from the goods of
`others. Lanham Act, § 43(a), 15 U.S.C.A.
`§ 1125(a).
`
`9. Trademarks ®=1611
`Plaintiff has burden of proving that its
`trade dress serves a source-identifying
`role, in order to succeed on trade dress
`infringement claim under Lanham Act.
`Lanham Act,
`§ 43(a), 15 U.S.C.A.
`§ 1125(a).
`
`3
`
`Summit 6 Exhibit No. 2073
`Google Inc., et al. v. Summit 6 LLC
`IPR2015-00806
`
`

`
`1248
`
`923 FEDERAL SUPPLEMENT, 2d SERIES
`
`(4) amount and manner of advertising; (5)
`amount of sales and number of customers;
`(6) established place in the market; and (7)
`proof of intentional copying by defendant.
`Lanham Act, § 43(a), 15 U.S.C.A.
`§ 1125(a).
`16. Federal Civil Procedure @=2493
`Genuine issue of material fact as to
`whether heart-shaped design used on ac­
`cessories and handbags had acquired sec­
`ondary meaning precluded
`summary
`judgment in trade dress infringement suit
`under Lanham Act between competitors
`in
`the women's accessories business.
`Lanham Act, § 43(a), 15 U.S.C.A.
`§ 1125(a).
`17. Evidence ®=508, 555.2
`Trial judge must act as gatekeeper for
`expert testimony by carefully applying fed­
`eral rule of evidence to ensure that special­
`ized and technical evidence is not only
`relevant, but reliable. Fed.Rules Evid.
`Rule 702, 28 U.S.C.App.(2006 Ed.)
`18. Evidence '^545
`Proponent of expert testimony evi­
`dence bears burden of proving its admissi­
`bility under federal rule. Fed.Rules Evid.
`Rule 702, 28 U.S.C.App.(2006 Ed.)
`19. Evidence ©=555.9
`Federal Civil Procedure ©=2545
`Proffered testimony of accounting ex­
`pert witness was not based on reliable
`methodology, as required for admissibility
`on summary judgment on issue of lost
`profits in trade dress infringement suit
`brought by manufacturer of women's ac­
`cessories and handbags against its compet­
`itor; figures were based only on the num­
`ber of defendant's sales, on lower priced
`product, rather than grounded on plain­
`tiffs sales data, and expert had improperly
`equated plaintiffs lost profits on a one-to-
`one scale with defendant's sales. Lanham
`Act, § 43(a), 15 U.S.C.A. § 1125(a); 17
`U.S.C.A. § 504; Fed.Rules Evid.Rule 702,
`28 U.S.C.App.(2006 Ed.)
`
`20. Federal Civil Procedure >^2545
`Survey conducted to determine likeli­
`hood of confusion as to source of allegedly
`infringing handbags contained flaws which
`rendered it inadmissible for purposes of
`determining actual damages, on motion for
`summary judgment in Lanham Act trade
`dress infringement suit between competing
`accessories and handbag manufacturers;
`survey included a line-up of handbags
`which improperly suggested to partici­
`pants that one bag was the "correct" an­
`swer, skewing whether participants were
`actually confused by features in the trade
`dress, and survey failed to use any con­
`trols to test accuracy of results. Lanham
`Act, § 43(a), 15 U.S.C.A. § 1125(a); 17
`U.S.C.A. § 504; Fed.Rules Evid.Rule 702,
`28 U.S.C.App.(2006 Ed.)
`21. Federal Civil Procedure ©=2545
`Flaws contained in survey conducted
`on Internet participants
`to determine
`whether defendant's imitation handbags
`actually harmed plaintiffs reputation by
`utilizing features of plaintiffs trade dress,
`went to weight of the evidence, not to its
`admissibOity, for purposes of establishing
`actual damages in form of goodwill and
`lost profits, on motion for summary judg­
`ment in Lanham Act trade dress infringe­
`ment suit between competing accessories
`and handbag manufacturers. Lanham
`Act, § 43(a), 15 U.S.C.A. § 1125(a); 17
`U.S.C.A. § 504; Fed.Rules Evid.Rule 702,
`28 U.S.C.App.(2006 Ed.)
`22. Federal Civil Procedure '5^2493
`Genuine issue of material fact as to
`whether manufacturer's sales of cheap, low
`quality, imitation handbags which used
`features of competitor's trade dress had
`damaged competitor's
`reputation and
`goodwill precluded summary judgment on
`issue of lost profit damages in Lanham Act
`trade dress infringement suit between
`competing accessories and handbag manu­
`facturers. Lanham Act, § 43(a), 15
`U.S.C.A. § 1125(a); 17 U.S.C.A. § 504.
`
`4
`
`Summit 6 Exhibit No. 2073
`Google Inc., et al. v. Summit 6 LLC
`IPR2015-00806
`
`

`
`BRIGHTON COLLECTIBLES v. RK TEXAS LEATHER MFG.
`Cite as 923 F.Supp.2d 1245 (S.D.Cal. 2013)
`
`1249
`
`Benjamin D. Scheibe, Browne George
`Ross LLP, Los Angeles, CA, Steven W.
`Winton, Winton Law Corporation, San Di­
`ego, CA, for Plaintiff.
`Matthew L. Green, Best Best and
`Krieger LLP, San Diego, CA, for Plain-
`tiffDefendants.
`Keith J. Wesley, Peter W. Ross, Best
`Best and Krieger LLP, Kent M. Walker,
`Lewis, Kohn & FitzwQMam LLP, San Die­
`go, CA, Dan N. MacLemore, Fulbright-
`Winnifor PC, Waco, TX, Chong H. Roh,
`Park Law Fmm, Thomas M. O'Leary, Lec-
`lairryan LLP, William E. Thomson, Jr.,
`Brooks Kushman, PC, Emily L. Rice, Rop­
`ers Majeski Kohn & Bentley, Los Angeles,
`CA, Lawrence E. Heller, Heller tS: Ed­
`wards, Beverly Hills, CA, David Swift,
`Kinsella Weitzman Iser Kump & Aldisert
`LLP, Santa Monica, CA, James F. Mona-
`gle, Timothy J. Halloran, Allen Kuo, Mur­
`phy, Pearson, Bradley & Feeney, San
`Francisco, CA, Chanille Carswell, Mark A.
`Cantor, Brooks Kushman PC, Southfield,
`MI, for Defendants.
`
`ORDER (1) DENYING DEFENDANTS'
`MOTION FOR SUMMARY JUDG­
`MENT ON TRADE DRESS;
`(2)
`GRANTING
`IN PART DEFEN­
`DANTS' MOTION TO EXCLUDE
`DR. WUNDERLICH'S EXPERT
`TESTIMONY; AND (3) GRANTING
`IN PART DEFENDANTS' MOTION
`TO EXCLUDE DR. FRAZIER'S
`EXPERT TESTIMONY; AND (4)
`DENYING DEFENDANTS' MO­
`TION FOR SUMMARY
`JUDG­
`MENT ON LOST PROFITS
`GONZALO P. CURIEL, District Judge.
`Plaintiff Brighton Collectibles,
`Inc.
`("Brighton") manufactures and sells wom-
`
`en's fashion accessories, including hand­
`bags. Brighton filed
`this copyright in­
`fringement action against Defendants RK
`Texas Leather Manufacturing, Inc., Rich­
`ard Ohr, K & L Import, Inc., NHW, Inc.,
`YK Trading, Inc., JC NY, Joy Max Trad­
`ing Inc., and AIF Corporation ("Defen­
`dants"). The Court heard oral argument
`on December 20, 2012. For the reasons
`stated below, the Court denies both sum­
`mary judgment motions, and grants in
`part and denies in part the motions to
`exclude two of Brighton's expert wit­
`nesses.'
`
`I. Defendants' Motion for Summary Ad­
`judication of Trade Dress Claim
`
`[1] The Lanham Act, 15 U.S.C.
`§ 1125(a), "gives a producer a cause of
`action for the use by any person of 'any
`word, term, name, symbol, or device, or
`any combination thereof
`which
`is
`likely to cause confusion
`as to the
`origin, sponsorship, or approval of his or
`'" Wal-Mart Stores, Inc. v.
`her goods
`Samara Bros., Inc., 529 U.S. 205, 209, 120
`S.Ct. 1339, 146 L.Ed.2d 182 (2000) (chil­
`dren's clothing). The Lanham Act "has
`been held to embrace not just word marks,
`such as 'Nike,' and symbol marks, such as
`Nike's 'swoosh' symbol, but also 'trade
`dress'—a category that originally including
`only the packaging, or 'dressing,' of a
`product, but in recent years has been ex­
`panded
`to encompass the design of a
`product." Id.
`
`In its second claim, Brighton alleges
`that Defendants infringed its distinctive
`trade dress in the "Brighton" line of fash­
`ion accessories. Brighton describes its
`trade dress as "a sculpted, silver heart,
`
`1. The Court considered all of the arguments
`presented, even those not discussed in this
`Order To the extent that the parties sought
`
`relief that is not expressly granted in this
`Order, the Court denies the motion.
`
`5
`
`Summit 6 Exhibit No. 2073
`Google Inc., et al. v. Summit 6 LLC
`IPR2015-00806
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`

`
`1250
`
`923 FEDERAL SUPPLEMENT, 2d SERIES
`
`used in conjunction with any two or more
`of the following: (i) leather embossed to
`resemble exotic materials such as croco-
`dOe, alligator, snake and lizard; (ii) fili-
`greed, silver ornamentation; (iii) a silver
`heart dangling from a leather strap; (iv)
`cowhide or brocaded fabrics; and/or (v)
`additional sculpted sOver hearts." Second
`Amended Compl. H 36.
`[2] To prove trade dress infringement,
`plaintiff must prove "(1) that its claimed
`trade dress is nonfunctional; (2) that its
`claimed trade dress serves as a source-
`identifying role either because it is inher­
`ently distinctive or has acquired secondary
`meaning; and (3) that the defendant's
`product ... creates a likelihood of consum­
`er confusion." Clicks Billiards, Inc. v.
`Sixshooters, Inc., 251 F.3d 1252, 1258 (9th
`Cir.2001) (footnote omitted).^
`Defendants seek summary adjudication
`on the first and second elements. Sum­
`mary judgment is appropriate when the
`"pleadings, depositions, answers to inter­
`rogatories, and admissions on file, together
`with the affidavits, if any, show that there
`is no genuine issue as to any material fact
`and that the moving party is entitled to
`judgment as a matter of
`law." Fed.
`R.Civ.P. 56(c); Celotex Corp. v. Catrett,
`477 U.S. 817, 322, 106 S.Ct. 2548, 91
`L.Ed.2d 265 (1986).
`
`A. Nonfunctional Requirement and
`Aesthetic Functionality Doctrine
`The first element of a trade dress claim
`is that the product design is "not function­
`al." 15 U.S.C. § 1125(a)(3).
`[3] Over the years, the Supreme Court
`has articulated the functionality standard
`in several ways.
`In 1982, the Supreme
`Court held that "a product feature is func-
`
`2. As to the second element, the Supreme
`Court held that a product's design cannot be
`"inherently distinctive," therefore, plaintiff
`must prove its trade dress has acquired sec­
`
`tional if it is essential to the use or pur­
`pose of the article or if it affects the cost
`or quality of the article." Inwood Labs.,
`Inc. V. Ives Labs., Inc., 456 U.S. 844, 850 n.
`10, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982).
`This is known as the traditional or utilitari­
`an test. Au-Tomotive Gold, Inc. v. Volks­
`wagen of Am., Inc., 457 F.Sd 1062, 1067
`(9th Cir.2006) (" 'utilitarian' functionality
`... relates to the performance of the prod­
`uct in its intended purpose"); Clicks, 251
`F.3d at 1260 ("functionality denotes utili­
`ty").
`[4] In 1995, the Court announced an­
`other test and explained that a feature is
`functional if "exclusive use of the feature
`would put competitors at a significant non-
`reputation-related disadvantage." Quali-
`tex Co. V. Jacobson Prods. Co., Inc., 514
`U.S. 159, 165, 115 S.Ct. 1300, 131 L.Ed.2d
`248 (1995). Under this "competition theo­
`ry of functionality," courts consider wheth­
`er trade dress protection would leave a
`"variety of comparable alternative features
`that competitors may use to compete in
`the market." Maker's Mark Distillery,
`Inc. V. Diageo N. Am., Inc., 679 F.Sd 410,
`418 (6th Cir.2012). "If the feature is not a
`likely impediment to market competition,
`Id.;
`then the feature is nonfunctional."
`Disc Golf Ass'n v. Champion Discs, Inc.,
`158 F.Sd 1002, 1008 (9th Cir.1998) (consid­
`ering whether "commercially feasible al­
`ternative configurations exist") (quotations
`and emphasis omitted).
`[5] In 2001, the Supreme Court held
`that a plaintiff can prove a feature is not
`functional "by showing that it is merely an
`ornamental, incidental, or arbitrary as­
`pect" of the product. TrafFix Devices,
`Inc. V. Mktg. Displays, Inc., 532 U.S. 23,
`30, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001).
`
`ondaiy meaning. Wal-Mart Stores, 529 U.S.
`at 216, 120 S.Ct. 1339; Clicks, 251 F.3d at
`1258 n. 1.
`
`6
`
`Summit 6 Exhibit No. 2073
`Google Inc., et al. v. Summit 6 LLC
`IPR2015-00806
`
`

`
`BRIGHTON COLLECTIBLES v. RK TEXAS LEATHER MFG.
`Cite as 923 F.Supp.2ti 1245 (S.D.Cal. 2013)
`
`1251
`
`[6] In the Ninth Circuit, when the fea­
`ture also "contributes to the consumer ap­
`peal and saleability of the product," the
`"aesthetic functionality" doctrine "retains
`limited viability." Au-Tomotive
`some
`Gold, 457 F.Sd at 1070; Vuitton etfils S.A.
`V. J. Young Enters., Inc., 644 F.2d 769 (9th
`Cir.1981). In that situation, the Ninth Cir­
`cuit first applies the utilitarian test (sup­
`plemented by additional factors) before
`turning to the competition test. Au-To-
`motive Gold, 457 F.Sd at 1072 & n. 8
`(citing Disc Golf, 158 F.Sd at 1006-09).
`Defendants invoke the aesthetic func­
`tionality doctrine. Pagliero v. Wallace
`China Co., 198 F.2d SS9 (9th Cu-.1952).
`They argue Brighton cannot meet its bur­
`den of proving that its trade dress is not
`aesthetically functional because its eye-
`pleasing quality does not identify the
`source of the handbags. Defendants con­
`tend customers buy Brighton's products
`simply because they are attractive. The
`elements are aesthetically functional be­
`cause "some people will simply wish to
`purchase a leather purse adorned with sil­
`ver hearts, regardless of who supplies it."
`Br. at 18.
`Defendants also rely on the competition
`theory of functionality. They argue that
`protecting Brighton's monopoly would sig­
`nificantly hinder competition because there
`are virtually no other alternative designs.
`Defendants emphasize that Brighton is
`seeking to prevent others from using a
`rudimentary shape (heart) and common
`fabrics (brocade, leather, crocodile) that
`are basic elements of women's fashion ac­
`cessories. Granting Brighton the exclu­
`sive right to use those characteristics
`"impoverishes other designers' palettes."
`Jay Franco & Sons, Inc. v. Franek, 615
`F.3d 855, 860 (7th Gu-.2010).
`[7] The Court agrees with Brighton
`that summary judgment is not appropriate
`on this record under any of the tests.
`"The issue of functionality has been consis­
`
`tently treated as a question of fact." Vuit­
`ton, 644 F.2d at 775. As with the luggage
`in the Vuitton case, Brighton's handbags
`"carry the same number of items, last just
`as long, and [are] just as seiwiceable" with­
`out the trade dress features. Id. at 776­
`77. The source-identifying role is dis­
`cussed in more detail below but it is suffi­
`cient to note here that the "Brighton look"
`can be "aesthetically pleasing and stOl play
`a source-identifying role." Clicks, 251
`F.3d at 1260. Turning to the competition
`theory, Brighton identified a wide-variety
`of designs made by other manufacturers as
`well as by the Defendants that do not
`infringe even though the handbags contain
`components of Brighton's trade dress.
`Wesley Deck, Exs. 88-90; 0pp. Br. at 17.
`Two sales representative testified that oth­
`er manufacturers sell handbags that do not
`copy the distinctive "Brighton look." Wes­
`ley Deck, Ex. 105 (Bell Depo. at 19-20, 51­
`52, 58, 66, 70, 82-88); id., Ex. 106 (Lom-
`bardi Depo. at 10-13, 48-49).
`
`B. Source-Identifying Role
`[8, 9] A trade dress must be "capable
`of distinguishing the [plaintiffs] work from
`the goods of others." Kendall-Jackson
`Winery, Ltd. v. E. & J. Gallo Winery, 150
`F.3d 1042, 1047 (9th Cir.1998). Plaintiff
`has the burden of proving that the trade
`dress "serves a source-identifying role" be­
`cause it is either distinctive or has ac­
`quired a secondary meaning. Clicks, 251
`F.Sd at 1258. Defendants charge that
`Brighton cannot estabhsh this element by
`either standard; therefore, asks for sum­
`mary judgment.
`
`1. Genericness versus Distinctiveness
`[10,11] The Lanham Act does not pro­
`terms. Filipino Yellow
`tect generic
`Pages, Inc. v. Asian Jrl. Publ'ns, Inc., 198
`F.3d 1143, 1147 (9th Cir.1999). In trade
`dress cases, the distinctiveness inquiry is
`
`7
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`Summit 6 Exhibit No. 2073
`Google Inc., et al. v. Summit 6 LLC
`IPR2015-00806
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`

`
`1252
`
`923 FEDERAL SUPPLEMENT, 2d SERIES
`
`whether the "definition of a product design
`is overbroad or too generalized." Jejfrey
`Milstein, Inc. v. Greger, Lawlor, Roth,
`Inc., 58 F.Sd 27, 82 (2d Cir.1995); Big
`Island Candies, Inc. v. Cookie Comer, 269
`F.Supp.2d 1236, 1248 (D.Haw.2008).
`
`Defendants argue Brighton's trade dress
`definition cannot survive summary judg­
`ment because it is generic, overbroad, and
`vague. Defendants criticize the reach of
`Brighton's definition because it combines a
`sculpted silver heart ornament with any
`two or more of five other elements (such
`as embossed leather or brocade fabrics or
`a dangling sOver heart). This "pick-and-
`choose" definition results in a "staggering"
`26 combinations. Br. at 21. "[T]he mar­
`ketplace is left wondering what are the
`specific types of elements that are off lim­
`its." Id. Defendants bolster this argument
`with expert testimony that silver heart
`ornaments and the named materials have
`been "the most rudimentary" and "essen­
`tial building blocks" of women's fashion
`accessories for centuries. Heller Deck,
`Ex. H (Nunes Report). Defendants re­
`peat theii" argument that they can envision
`a very narrow range of leather handbags
`with a heart that would not infringe Brigh­
`ton's trade dress. Brief at 16-17. Defen­
`dants' expert drew several designs that
`would infringe the trade dress but Defen­
`dants contend that none of them look-alike.
`They argue this exercise in imagination
`shows that Brighton's definition is over­
`broad.
`
`[12] The Court holds that there are
`factual issues as to whether Brighton's
`trade dress is generic because Brighton
`offers testimony from two independent
`sales representatives that the Brighton
`"look" is distinctive and that customers
`associate the overall look with Brighton.
`E.g., Wesley Deck, Exs. 105 & 106 (Bell
`and Lombardi Depos.).
`
`2. Secondary or Acquired Meaning
`Defendants also argue they are entitled
`to summary judgment because Brighton
`does not have evidence that its trade dress
`has a "secondary" or "acquired" meaning.
`[13-15] Secondary meaning is "a term
`of art for identification of source." Clicks,
`251 F.8d at 1262. A trade dress acquires
`secondary meaning "when, in the minds of
`the public, the primary significance of [the
`trade dress] is to identify the source of the
`product rather than the product itself."
`Wal-Mart Stores, 529 U.S. at 211, 120
`S.Ct. 1889. "Secondary meaning can be
`established in many ways, including (but
`not limited to) direct consumer testimony;
`survey evidence; exclusivity, manner and
`length of use ..., 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,
`198 F.8d at 1151.
`[16] The Com't finds that Brighton has
`come forward with evidence that raises a
`material question of fact as to whether its
`trade dress has acqumed secondary mean­
`ing. Clicks, 251 F.8d at 1262. Industry
`participants, including Bidghton employees
`and neutral sales representatives, testified
`they recognize a Brighton bag when they
`see one. Br. at 28 (collecting citations).
`Brighton submitted examples of ads that
`marketed the image of its trade dress.
`First Brands Corp. v. Fred Meyer, Inc.,
`809 F.2d 1878, 1888 (9th Cii-.1987). Brigh­
`ton submitted evidence that it owns 160
`stores, sells its handbags at 5,000 other
`stores, has sold its line for almost 20 years,
`and has wholesale sales exceeding $100
`million. Clamp Mfg. Co. Inc. v. Enco Mfg.
`Co., Inc., 870 F.2d 512, 517 (9th Cii-.1989);
`Br. at 28-24 (collecting citations). The
`Court also credits Brighton's argument
`that the similarity of the allegedly infring­
`ing designs suggests Defendants intention­
`ally copied Brighton's trade dress. Clicks,
`
`8
`
`Summit 6 Exhibit No. 2073
`Google Inc., et al. v. Summit 6 LLC
`IPR2015-00806
`
`

`
`BRIGHTON COLLECTIBLES v. RK TEXAS LEATHER MFG.
`Cite as 923 F.Supp.2d 1243 (S.D.Cal. 2013)
`
`1253
`
`251 F.Sd at 1264; Br. at 24 (collecting
`citations). This evidence bears on the rel­
`evant factors and defeats the summary
`judgment motion.
`
`II. Daubert Motions to Exclude Expert
`Witnesses
`[17] The trial judge must act as the
`gatekeeper for expert testimony by care­
`fully applying Federal Rule of Evidence
`702 to ensure specialized and technical evi­
`dence is "not only relevant, but reliable."
`Daubert v. Merrell Dow Pharms. Inc., 509
`U.S. 579, 589 & n. 7, 113 S.Ct. 2786, 125
`L.Ed.2d 469 (1993); accord Kumho Tire
`Co. Ltd. V. Carmichael, 526 U.S. 137, 147,
`119 S.Ct. 1167, 143 L.Ed.2d 238 (1999)
`{Daubert imposed a special "gatekeeping
`obligation" on trial judge).
`An expert witness may testify "if (1) the
`testimony is based upon sufficient facts or
`data, (2) the testimony is the product of
`reliable principles and methods, and (3)
`the witness has applied the principles and
`methods reliably to the facts of the case."
`Fed.R.Evid. 702.
`[18] The proponent of the evidence
`bears the burden of proving the expert's
`testimony satisfies Rule 702. Cooper v.
`Broum, 510 E.3d 870, 880 (9th Cir.2007).
`
`A. Plaintiffs Accounting Expert Wit­
`ness Robert Wunderlich
`Defendants move to exclude Dr. Robert
`Wunderhch's expert testimony on Brigh-
`
`ton's actual damages. In particular. De­
`fendants focus on the expert's assumption
`that one infringing sale correlates with one
`lost transaction in which the Brighton cus­
`tomer would have purchased 2.06 authentic
`items (including handbags, wallets, jewel­
`ry, and watches).
`In brief. Defendants
`contend Wunderhch's opinion is (1) not
`relevant because it is not tied to the facts;
`(2) unrehable because he did not use a
`scientific methodology that can be rephcat-
`ed by others, but instead offers an ipse
`dixit conclusion; and (3) unhelpful because
`Wunderhch's impermissible assumptions
`are non-committal and evasive. Defen­
`dants claim Brighton seeks a windfaU be­
`cause Wunderhch's math awards Brighton
`$115 milhon in lost sales even though De­
`fendants collectively had sales of only $8
`mhhon. After careful consideration, the
`Court agrees with Defendants that the lost
`profits part of Wunderhch's opinion is not
`admissible.^
`The current copyright statute aUows a
`plaintiff to recover "either (1) the copy­
`right owner's actual damages and addi­
`tional profits of the infringer" * or instead
`(2) statutory damages. 17 U.S.C. § 504
`(emphasis added). Brighton seeks to re­
`cover damages under the fii'st measure,
`which has
`two distinct elements:
`(1)
`Brighton's "actual damages," including lost
`profits and damage to goodwih; and (2)
`Defendants' profits from the sales of in­
`fringing products.
`
`3. District courts presiding over prior Brigh­
`ton trials have reached conflicting decisions
`about whether to admit similar expert testi­
`mony on actual damages. Brighton Collect­
`ibles, Inc. V. Coldwater Creek, Inc., 2010 WL
`3718859, 2010 U.S. Dist. LEXIS 98224 (Case
`No. 08-CV-2307-H) (Order filed Sept. 20,
`2010); Monagle Dec!., Exs. L, 0, & R. And
`while a judge's questions during argument
`are simply food for thought, a Ninth Circuit
`panel pointedly criticized Wunderhch's theory
`in a prior appeal. Swift Supp. Decl., Ex. B at
`38, 40-43, 45-48.
`
`4. The statute prevents double recovery in that
`it allows plaintiff' to recover both (1) its actual
`damages and (2) defendant's wrongful gains
`only to the extent that "any profits of the
`infringer . .. are not taken into account in
`computing the actual damages." 17 U.S.C.
`§ 504(h). As to defendant's wrongful gain,
`the statute requires the copyright owner "to
`present proof only of the infringer's gross
`revenue." Id. The burden then shifts to de­
`fendant to establish deductions for other fac­
`tors. Id.
`
`9
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`Summit 6 Exhibit No. 2073
`Google Inc., et al. v. Summit 6 L