Louisville Mktg., Inc. v. Jewelry Candles, LLC
| Decision Date | 04 November 2016 |
| Docket Number | CIVIL ACTION NO. 3:15-CV-00084-DJH |
| Parties | LOUISVILLE MARKETING, INC. d/b/a as JEWELRY IN CANDLES Plaintiff/Counterclaim Defendant v. JEWELRY CANDLES, LLC Defendant/Counterclaimant v. P. MICAH BUSE Third-Party Defendant |
| Court | U.S. District Court — Western District of Kentucky |
Plaintiffs Louisville Marketing, Inc., doing business as Jewelry in Candles, and Micah Buse (collectively referred to herein as "LMI") have filed two motions in limine and one motion to strike relating to proposed expert testimony and reports proffered by Defendant Jewelry Candles, LLC ("JC") (DN 30, DN 31, DN 33). JC filed responses (DN 49, DN 50), and LMI has replied (DN 54, DN 55, DN 56). These matters are ripe for adjudication.
Around July of 2012, Osagie Enaiho ("Enaiho") was operating an online business named Jewelry Candles ("JC"), which sells candles and wax tarts that contain concealed jewelry items. (DN 6, at p. 6). Enaiho operated his business as a sole proprietor until about April 30, 2013, when he formed Jewelry Candles, LLC, as a Delaware limited liability company where he served as the sole member and owner. (Id.) Over a month later, JC applied for federal registration of a composite word mark stating "Jewelry JC Candles A Hidden Jewel Inside Every Candle," which the USPTO granted. (Id. at pp. 7-8). JC has also applied for federal registration of "Jewelry Candles" and "Jewelry Candle" as word marks, but these applications remain pending before the USPTO. (Id.).
In January of 2013, Enaiho contacted Louisville Marketing, Inc. ("LMI") through LMI's website seeking information about search engine optimization ("SEO") and search engine marketing ("SEM") services and graphic design services. (Id. at p. 9). LMI's owner, Paul Micah Buse ("Buse"), responded to Enaiho's request and asked for analytic reports and non-public analytics about JC's website. (Id.). Enaiho and Buse continued to communicate through e-mail for several days, discussing JC's business and efforts to protect its intellectual property. Specifically, Buse indicated in an e-mail to Enaiho that he needed to secure his brand by trademarking his product and idea before someone could steal it. (Id. at p. 10). On the same day Buse sent that e-mail, and unbeknownst to Enaiho, Buse registered the domain jewelryincandles.com. (Id.). Several days later, Buse and Enaiho met in person, and Buse disclosed he had no interest in LMI providing marketing services to JC, but, rather, Buse wanted to become partners with Enaiho and obtain an equity stake in JC. (Id. at p. 11). Enaiho declined Buse's offer. (Id.).
A few weeks later, LMI applied to assume the name "Jewelry in Candles" in Kentucky and filed the application with the Kentucky Secretary of State. (Id. at p. 11). JC believes LMI launched a competing online business around May 4, 2013, selling candles containing jewelry items under the trade name "Jewelry in Candles." As a result, JC filed a WIPO Complaint onJanuary 5, 2014, initiating proceedings requesting the transfer of LMI's jewelryincandles.com domain name and alleging that LMI is infringing on its trademark rights.
LMI filed its Complaint with this Court on January 23, 2015, seeking a declaratory judgment that the term "Jewelry in Candles" is a generic term for candle products with jewelry in them, and, as such, LMI is not infringing on JC's styled design mark by making, using, selling, and offering to sell its candles with jewelry inside of them (DN 1, at pp. 6-7). JC filed an answer and counterclaim, alleging trademark infringement, unfair competition and false designation of origin, unfair competition in Kentucky, and requesting injunctive relief (DN 6).
In the instant motions, LMI seeks to exclude the expert testimony and reports of Scott Clark and Dr. John Peloza. (DN 30, DN 31, DN 33).
The admissibility of expert testimony is governed by Federal Rule of Evidence 702, which provides:
In Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993) and its progeny, Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 141, 119 S.Ct. 1167, 143 L.Ed.2d 238 (1999), the Supreme Court charged trial courts with acting as "gatekeepers" to ensure expert testimony admitted pursuant to FRE 702 is relevant and reliable. Daubert also identified a list of non-exhaustive factors to assess expert testimony reliability, including: whether the theory or method in question "can be (and has been) tested," whether it "has been subjected to peer review and publication," whether it has a "known or potential rate of error," and whether the theory or technique enjoys "general acceptance: in the "relevant scientific community." 509 U.S. at 593-94. Daubert's gatekeeping obligation applies not only to "scientific" testimony, but to all expert testimony. Shepherd v. Unumprovident Corp., 381 F. Supp. 2d 608, 610 (E.D. Ky. 2005).
No matter how good an expert's credentials may be, his opinion must be "supported by more than subjective belief and unsupported speculation." McLean v. Ontario, Ltd., 224 F.3d 797, 800-01 (6th Cir. 2000) (citation omitted); see also Tamraz v. Lincoln Elec., Co., 620 F.3d 665, 671-72 (2010). When the subject matter of an expert's testimony is "within the knowledge or experience of laymen," the testimony is superfluous. Bartak v. Bell-Galyardt & Wells, Inc., 629 F.2d 523, 530 (8th Cir. 1980) (citing Bridger v. Union Ry., 355 F.2d 382, 387 (6th Cir. 1966)).
LMI's first motion in limine seeks to exclude JC from offering the testimony, report, or conclusions of its expert, Scott Clark ("Clark"). (DN 30-1, at p. 1). LMI argues that Clark'sreport must be excluded under Fed. R. Evid. 702 because it is "superfluous, unreliable and speculative" (Id. at p. 3).
As noted above, Rule 702 specifies that a witness may offer expert testimony only if he is "qualified as an expert by knowledge, skill, experience, training, or education." Fed.R.Evid. 702. "The qualification, however, must match up with the subject matter about which the expert is to testify[.]" Elswick v. Nichols, 144 F. Supp. 2d 758, 766 (E.D. Ky. 2001). Rather than assessing the "qualifications of a witness in the abstract," the Court must assess "whether those qualifications provide a foundation for a witness to answer a specific question." Berry v. City of Detroit, 25 F.3d 1342, 1351 (6th Cir. 1994).
LMI argues that Clark is not properly qualified as an expert because he fails to demonstrate he has any specialized knowledge or skill with regard to "psychology and motivation, business ethics or fiduciary duty, or trademarks and the corresponding implications of descriptiveness, genericness, or secondary meaning." (DN 30-1, at p. 6). LMI concedes that Clark "may be an expert in marketing" but states he has not demonstrated any specialized knowledge in arriving at his speculative conclusions. (Id.). JC counters that Clark is not going to testify regarding any of the areas mentioned by LMI and the experience in Clark's resume is more than sufficient to allow his testimony about the remaining matters in the report. (DN 50, at p. 4). LMI's reply emphasizes that Clark lacks expertise with regard to "industry standards" and, thus, his observations of what is usual or unusual in the industry are not supported by any objective standard (DN 54, at p. 6). LMI similarly argues that Clark has demonstrated no particular expertise regarding his dataextrapolation and analysis and does not substantiate his generalized conclusions with any existing data or authority (Id.).
Clark has a Bachelor of Arts in Computer Science, obtained from Southern Illinois University in 1988. (DN 30-2, at p. 3). He has worked for over fifteen years as a senior search engine optimization and search engine advertising consultant at BuzzMaven, Inc., providing solutions for search marketing, social media, and paid search. (Id. at p. 8). Previously Clark has worked as an e-commerce consultant and developer at BuzzMaven (1997-2004), manager of software design teams at Pearson Education (1992-1998), and software engineer at Software Publishing Corporation (1990-1992) and at Kaiser Electronics (1988-1991). (Id.). Clark clearly has experience with digital and search marketing.
The relevant question then is whether Clark's knowledge and skill as an internet marketing expert provide a sufficient foundation for him to address JC's inquiries. JC asked Clark to give his opinions as to: (1) How an experienced internet marketing consultant would have interpreted the information disclosed by Mr. Enaiho to Mr. Buse in January 2013; (2) Mr. Buse's registration of jewelryincandles.com just days after meeting with Mr. Enahio; (3) The significance of the initial registrations of the jewelrycandles.com and jewelryincandles.com domains in 2012 and 2013; and (4) The domain name histories for JewelryCandles.com prior to May 2012 and for JewelryinCandles.com prior to January 2013. (DN 30-2). Clark's fairly extensive experience with digital and search marketing/consulting persuades the Court that he is sufficiently qualified to testify as an expert for the enumerated issues.
Beyond Clark's qualification as an expert, LMI also argues for exclusion of specific portions of Clark's opinion. First LMI takes issue with ...
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