Gucci Am., Inc. v. Guess?, Inc.
| Citation | 831 F.Supp.2d 723,102 U.S.P.Q.2d 1225 |
| Decision Date | 16 November 2011 |
| Docket Number | No. 09 Civ. 4373 (SAS).,09 Civ. 4373 (SAS). |
| Parties | GUCCI AMERICA, INC., Plaintiff, v. GUESS?, INC., Marc Fisher Footwear LLC, the Max Leather Group/Cipriani Accessories, Inc., Sequel AG, J & M Associates L.P., Viva Optique, Inc., Signal Products, Inc., and Swank, Inc., Defendants. |
| Court | U.S. District Court — Southern District of New York |
OPINION TEXT STARTS HERE
Louis S. Ederer, Esq., John Maltbie, Esq., Matthew T. Salzmann, Esq., Arnold & Porter LLP, New York, NY, for Gucci America.
Robert C. Welsh, Esq., O'Melveny & Myers LLP, Los Angeles, CA, for Guess?, Inc., Marc Fisher Footwear LLC, The Max Leather Group/Cipriani Accessories, Inc., Sequel AG, K & M Associates L.P., Viva Optique, Inc., Signal Products, Inc., Swank, Inc.
Andrew J. Frackman, Esq., O'Melveny & Myers LLP, New York, NY, Daniel M. Petrocelli, Esq., O'Melveny & Myers LLP, Los Angeles, CA, for Guess?, Inc.
Darren W. Saunders, Esq., Hiscock & Barclay, LLP, New York, NY, Alpa V. Patel, Esq., Hiscock & Barclay, LLP, Rochester, NY, for Marc Fisher Footwear LLC.
John T. Williams, Esq., Hinkhouse Williams Walsh LLP, Chicago, IL, for The Max Leather Group/Cipriani Accessories, Inc. and Signal Products, Inc.
Kristin Marie Darr, Esq., Steptoe & Johnson, LLP, New York, NY, Michael R. Heimbold, Esq., Steptoe & Johnson, LLP, Los Angeles, CA, for Signal Products, Inc.
Abigail Anne Rubinstein, Esq., Steptoe & Johnson, LLP, Washington, DC, Paul Fields, Esq., Karin Fromson Segall, Esq., Leason Ellis LLP, White Plains, NY, Atul R. Singh, Esq., Darby & Darby, P.C., New York, NY, for Swank, Inc.
I. INTRODUCTION
Gucci America, Inc. (“Gucci”) brings this action against Guess?, Inc., Marc Fisher Footwear LLC, the Max Leather Group/Cipriani Accessories, Inc., Sequel AG, K & M Associates L.P., Viva Optique, Inc., Signal Products, Inc, and Swank, Inc. (collectively, “Guess”), alleging various violations of the Lanham Act,1 as well as related New York state law.2 Currently before the court are cross-motions to exclude expert survey reports. Specifically, Gucci seeks to exclude the surveys conducted by Dr. Myron J. Helfgott and Dr. Carol A. Scott,3 while Guess seeks to exclude the surveys conducted by Dr. Michael Rappeport, Dr. Michael B. Mazis, and Mr. George Mantis.4 At a hearing on August 4, 2011, I excluded the reports of Mr. Mantis, Dr. Rappeport, and Dr. Scott. I also limited the admissibility of Dr. Helfgott's report to the issue of point-of-sale confusion.5 By letter, Gucci requested that I reconsider these rulings.6 For the reasons given below, both motions are now granted in part and denied in part.
II. BACKGROUNDA. The Gucci Surveys
Gucci has submitted expert reports on two substantive surveys. The first, conducted by Mr. Mantis, deals with post-sale confusion, whereas the second, conducted by Dr. Mazis, deals with association in the context of dilution. Guess argues that both of the surveys are so methodologically unsound that they must be excluded.7
Mr. Mantis conducted a so-called “Eveready” survey,8 and attempted to measure consumer confusion between “a Guess cross-body bag that is beige in color, and bears a repeating diamond-shaped pattern with the letter ‘G’ in the corners of the diamonds, and ... the Guess ‘Quattro G Design’ ... in the center of each diamond” with Gucci's “Diamond Motif Trade Dress.” 9 Respondents were shown photographs of either a test bag or a control bag and then asked about source, connection/affiliation, and approval/sponsorship. 10 The test bag was a Guess “Citizen G” cross-body bag designed for men, which Mr. Mantis modified so that the center brown-red-brown stripe was solid brown. The control bag was the same size and shape as the test bag, but modified to have a blue background, a solid blue center stripe, and the Guess “Quattro G” pattern turned 45 degrees and arranged in horizontal and vertical rows.11
Respondents were told to look at their assigned photographs as if they saw someone wearing the bag in passing.12 After taking the photographs away, the interviewer asked the following questions: (1) “What company do you think makes or puts out the bag shown in the photographs?” (2) “Do you think that the companythat makes or puts out the bag shown in the photographs makes or puts out any other brands?” (3) “Do you think that the company that makes or puts out the bag shown in the photographs is or is not connected to or affiliated with any other company or brand?” and (4) “Do you think that the bag shown in the photographs is or is not made or put out with the approval or sponsorship of any other company or brand?” If respondents gave an answer to any of these questions, the interviewer would ask one of the following questions: (1) “What other company or brand?” or “What other brands do you think are made or put out by that company?” or “With which other company or brand?” (2) “What makes you say that?” (3) “What do you mean by that?” (4) “Anything else?” and finally (5) “What do you mean by that?” 13
Respondents were coded into groups depending on the brands they mentioned when answering substantive questions (1) through (4). Respondents who answered “Gucci” were coded as “confusion responses,” and respondents who answered “Gucci” and something else or “maybe Gucci” were coded as “qualified confusion responses.” Respondents who gave any other brand were coded as “other responses.” 14 Confused respondents were further grouped into two categories—“appearance-related reasons” and “other reasons”—based on the reasons they gave for their confusion.15 Using this system, Mr. Mantis found that 48 of 199 test group respondents, or 24.1 percent, were confused for appearance-related reasons, and that 17 of 201 control group respondents, or 8.5 percent, were confused for appearance-related reasons. Accordingly, Mr. Mantis found that a net total of 15.6 percent of the test group respondents were confused for appearance-related reasons,16 and concluded that “the Guess cross-body bag is likely to cause confusion with Gucci's Diamond Motif Trade Dress.” 17
Guess proffers an affidavit from its own expert, Dr. Shari S. Diamond, to challenge the Mantis Survey.18 Dr. Diamond's affidavit, as well as Gucci's response to it, are considered in Part IV below.
Dr. Mazis also conducted an “Eveready” survey, which he designed solely “to assess the degree of association, if any, between Guess' use of the diamond motif and Gucci.” 19 Respondents were shown photographs of either the test bag or the control bag, and asked what other product or brand came to mind “based on the overall appearance” of that bag. The test bag was an unmodified Guess “Basique Bowler” bag that used the allegedly infringing trade dress. The control bag was the same size and shape as the test bag, with the following differences: the nameplate text was changed from script to block letters; the background color was changed from beige to blue; the dashed lines and “G's” in the corner of the diamonds were removed; and the Quattro G pattern was rotated and arranged in horizontal and vertical lines. 20
Respondents were given two photographs of their assigned bag—one of the front, one of the back—and instructed to look at them “as if you saw someone carrying [the bag].” After being told not to guess, they were asked, “If you have an opinion, does or doesn't any other product or brand come to mind when you look at the overall appearance of this handbag?” Respondents who answered positively were then asked, Finally, for each brand or product mentioned, the respondents were asked 21
Like Mr. Mantis, Dr. Mazis coded respondents into categories depending on whether they gave appearance-related or non-appearance-related explanations for their answers. He found that 42 of 203 respondents in the test group, or 20.7 percent, and that 18 of 206 respondents in the control group, or 8.7 percent, felt Gucci came to mind for “relevant appearance-related reasons.” Accordingly, he concluded that a net of “12 [percent] of respondents associated the Guess Basique Bowler handbag with Gucci, a net result well in excess of association with any other brand,” 22 and that “consumers associate the diamond motif pattern appearing on the Guess Basique Bowler handbag with Gucci.” 23
Guess proffers the above-mentioned affidavit of Dr. Diamond to challenge the Mazis Survey. That affidavit, along with other relevant material, is discussed in Part IV below.
B. The Guess Surveys
Guess offers three surveys designed to measure point-of-sale confusion, two by Dr. Helfgott and another by Dr. Scott. Gucci seeks to exclude all of them as irrelevant to the matter of post-sale confusion.24
Dr. Helfgott conducted two surveys. One survey used the Guess “Osaka” bag as the test bag (“Osaka Survey”), while the other used the Guess “Daisy Logo” bag (“Daisy Logo Survey”). Both were designed to “determine whether the Guess handbags selected were likely to cause consumers to mistakenly believe that the handbags were put out by, in association with, or with the approval of Gucci America.” 25
The purpose of the Osaka Survey was “to determine any potential confusion resulting from the use of Guess's Quattro G Design in combination with brown-beige fabric.” 26 Respondents were shown either a test bag or a control bag and asked about source, association and approval.27 The test bag was an...
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