Gibson Guitar Corp. v. Paul Reed Smith Guitars, Lp, 3:00-1079.

• Decision Date: 02 July 2004
• Docket Number: No. 3:00-1079.,3:00-1079.
• Citation: 325 F.Supp.2d 841
• Parties: GIBSON GUITAR CORP., Plaintiff, v. PAUL REED SMITH GUITARS, LP, Defendant.
• Court: U.S. District Court — Middle District of Tennessee

325 F.Supp.2d 841

GIBSON GUITAR CORP., Plaintiff, v. PAUL REED SMITH GUITARS, LP, Defendant.

No. 3:00-1079.

United States District Court, M.D. Tennessee, Nashville Division.

July 2, 2004.

COPYRIGHT MATERIAL OMITTED

Edward D. Lanquist, Jr., Waddey & Patterson, Nashville, TN, Jonathan D. Schiller, Kevin R. Anthony, David R. Boyd, Seth Goldberg, Boies, Schiller & Flexner, LLP, Washington, DC, John F. Triggs, Greenberg Traurig, LLP, New York City, David Kessler, Greenberg Traurig, LLP, McLean, VA, for plaintiff.

Alan Dale Johnson, Alfred H. Knight, Willis & Knight, Nashville, TN, Phillip Lester North, A. Gregory Ramos, North, Pursell, Ramos & Jameson, William D. Coston, Kevin B. Collins, Washington, DC, for defendant.

MEMORANDUM

HAYNES, District Judge.

Plaintiff, Gibson Guitar Corporation, filed this action for damages and injunctive relief under the Trademark Act of 1946, the Lanham Act, as amended, 15 U.S.C. §§ 1051 et seq. against Defendant Paul Reed Smith, LP ("PRS"). Gibson asserts claims for trademark infringement, counterfeiting, unfair competition and trademark dilution. Gibson's claims involve its "Les Paul" single cutaway guitar with a body design for which Plaintiff has an incontestable registered trademark. PRS manufactures and sells a PRS "Singlecut" guitar with a design that allegedly infringes on Plaintiff's registered trademark and trade dress. In response to Gibson's complaint, PRS filed a counterclaim (Docket Entry No. 41) seeking a declaration that PRS has not infringed upon any valid trademark or trade dress of Gibson and that Gibson's trademark and trade dress in its Les Paul model guitar are invalid and/or unenforceable.

In earlier proceedings, Gibson moved for partial summary judgment (Docket Entry No. 61) and PRS moved for summary judgment (Docket Entry No. 64). Gibson sought summary judgment only on its claim that the PRS's "Singlecut" guitar infringes on Gibson's trademark registration No. 1,782,606 (hereinafter "606") for its Les Paul single cutaway guitar. Gibson contends, in sum, that the PRS "Singlecut" infringes on the Plaintiff's registered trademark for its Les Paul guitar, and PRS's "Singlecut" will likely cause confusion in the marketplace as to its source of origin, to Gibson's detriment. PRS sought summary judgment on all of Gibson's claims and PRS's counterclaims.

Gibson's federal trademark infringement claim is for violations of the Lanham Act that provides, in pertinent part, as follows:

(1) Any person who shall, without the consent of the registrant —

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive;

* * * * * *

shall be liable in a civil action by the registrant for the remedies hereinafter provided.

15 U.S.C. § 1114(1)(a) (emphasis added).

Based upon a consideration of the eight factor in Landham v. Lewis Galoob Toys, Inc., 227 F.3d 619, 626-27 (6th Cir.2000), the Court concluded that most of these factors favored Gibson's claim for PRS's violation of its incontestable registered trademark for Gibson's Les Paul Guitar. Given this conclusion, the applicable law and undisputed facts, the Court also granted Gibson's motion for partial summary judgment. (Docket Entry No. 144 Memorandum). The Court also concluded PRS's defenses and counterclaims related thereto lacked merit, and denied PRS's motion for summary judgment. With those rulings, the Court did not consider it necessary to address Gibson's other claims of counterfeiting, trademark dilution and unfair competition. Id. at p. 56. The Court gave the parties ninety (90) days to complete any discovery on disgorgement of PRS's profits on the sales of its offending Singlecut guitar. Id. at p. 56, citing WSM, Inc. v. Tennessee Sales Co., 709 F.2d 1084, 1086 (6th Cir.1983).

In a subsequent stipulation, Gibson dismissed with prejudice all of its claims except it infringement claim based upon its 606 incontestable registration mark (Docket Entry No. 139). PRS dismissed all of its counterclaims except those counterclaims pertaining to Gibson's 606 incontestable registered trademark. Id. at p. 2. The parties agreed that the remaining issues are "damages," willfulness and attorney fees on Gibson's 606 trademark. Id.

Before the Court is Gibson's motion in limine to exclude portions of the report of PRS's expert, Gary Wingo. (Docket Entry No. 146). Gibson contends, in sum, that the purchaser and dealer surveys in Wingo's report and his related narrative address the issue of likelihood of confusion that was previously determined by the Court and is irrelevant to the issue of remedies.

PRS responds, in essence, that Wingo's report includes surveys that are relevant to its apportionment defense to Gibson's damages claim. As stated by PRS, "the major issue to be decided at this stage of the case is given that no reasonable person would be confused at the time of purchase of the PRS Singlecut, what effect, if any did the initial interest confusion involving Gibson's two dimensional body shape have with respect to the sale of PRS guitars, and any profits earned by PRS." (Docket Entry No. 152, Defendant PRS's opposition to Gibson's motion in limine at p. 2).

In addition, at the final pretrial conference and in its pretrial brief, (Docket Entry No. 155), PRS asserts its right to a jury trial on Gibson's damages claim and cites expert testimony and other proposed proof on other similarly shaped guitars in the market. In PRS's view, this proof is necessary to determine the apportionment of damages and the appropriateness of injunctive relief as well as a stay of injunctive relief.

This Memorandum address Gibson's motion in limine and the above stated issues raised in PRS's pretrial brief.

A. Gibson' Motion in Limine

1. Review of the Wingo Report

Gary Wingo, PRS's expert, has a Bachelor of Science degree in Mechanical Engineering from West Point and a Masters in Science from the Sloan School of Management, Massachusetts Institute of Technology (Docket Entry No. 155, Attachment B, Exhibit thereto). Wingo is a Certified Professional Engineer in the state of Virginia. Id.

Wingo had presented papers at various conferences. Id. at pp. 1-2. Wingo's unpublished masters thesis was "Venture Capital Decision Making in Technology Based Enterprises." Id. at p. 2. Wingo's publications are on the subjects of Business Failure and the Law," an article; "the C-Stone Utilities Copr. Software for the Convenience Store Industry"; "Making Better Investment Decisions Copr."; "Maximizing Investor Returns in the Convenience Store Industry Copr."; and "Impact on Defense Industrial Capability of Changes in Procurement and Tax Policy Copr.." Id. at p. 2.

Wingo, is currently vice-president with Analysis Research Planning Corporation ("ARPC"). Id. As an expert, Wingo has previously provided or prepared analyses, including statistical analysis of claims involving hiring of illegal aliens, product failure, tort, wrongful death and insurance claims, violations of tax-deferred claims as well as class action refund claims, and quantification of lost profits in business interruption disputes. Wingo spent five (5) years in market research and market studies. Wingo's latter experiences also include business strategy, planning and market research with a computer distributor.

The challenged portions of Wingo's report involve his "two market research surveys to ascertain: (1) whether any confusion existed in the market place at any time in the bargaining process between the PRS Singlecut and the Gibson Les Paul; and (2) if confusion existed, whether it could be traced to the actual purchase of the Singlecut (R) guitar." (Docket Entry No. 155, Attachment B at p. 2). For his survey, Wingo contacted "162 owners of PRS Single cut guitars" and "PRS's top ten dealers." Id. Those surveys are reflected in Attachments eight (8) through 12 to his report.

There are other exhibits in this binder on the PRS registered marks, an affidavit filed with the Trademark Office, Gibson's opposition to PRS's trademark application, correspondence and a settlement agreement between Gibson and PRS. Id. at Exhibits H through L.

B. Conclusions of Law

The pertinent Federal Rules of Evidence on the admission of expert testimony provide as follows:

Rule 702. Testimony by Experts

If scientific, technical, or other special knowledge will assist the trier of fact to understand the evidence or to determine the fact at issue, the witness qualified as an expert by knowledge, skill, experienced training or education, may testify thereto in the form of an opinion or otherwise.

Rule 703. Bases of Opinion Testimony by Experts

The facts or data in the particular case upon which an expert bases an opinion or inference may be those perceived by or made known to the expert at or before the hearing. If of a type reasonably relied upon by experts in the particular field in forming opinions or inferences upon the subject, the facts or data need not be admissible in evidence in order for the opinion or inference to be admitted.

Rule 403. Exclusion of Relevant Evidence on Grounds of Prejudice, Confusion or Waste of Time.

Although relevant, evidence may be excluded if its probative value is substantially outweighed by the danger of unfair prejudice, confusion, waste of time, or needless presentation of cumulative evidence.

Fed.R.Evid. 403, 702, 703.

"To qualify as an expert under Rule 702, a witness must first establish his expertise by reference to `knowledge, skill, experience, training, or education.'" Pride v. BIC Corp., 218 F.3d 566, 577 (6th Cir.2000). While a person may be qualified as an expert, his testimony may still be inadmissible if the methodology "employed by the expert in analyzing the data obtained in the visual inspection,...