Intellectual Property Expert Witness’ Untimely Affirmative Opinions Excluded
Posted on May 6, 2025 by Expert Witness Profiler
X Social Media LLC (“X Social Media”) and X Corp. both use the letter “X” in association with closely related advertising services. Put simply, X Corp. is a social media company that offers tools and services for advertising and generates the majority of its revenue from ads. X Social Media is an advertising agency that offers services for advertising on social media.
This is a case for trademark infringement and related claims concerning the parties’ respective use of the letter “X” in connection with distinct product and service offerings.
On its rebuttal report deadline, Plaintiff X Social Media served the rebuttal report of David Franklyn. Defendant X Corp. argued that Professor Franklyn advanced a host of “affirmative opinions” that rebutted nothing in either of Defendant’s expert reports.
Intellectual Property Expert Witness
David Franklyn is currently a law professor at Arizona State University, with an appointment in the Sandra Day O’Connor College of Law. He is also the Executive Director of the McCarthy Institute at ASU Law, which is focused on scholarship and research in intellectual property law, with particular emphasis in the areas of trademark law, branding and consumer perceptions related to brands.
Franklyn has published extensively on issues relating to intellectual property law and is editor-in-chief and co-author of McCarthy’s Desk Encyclopedia of Intellectual Property Law.
Discussion by the Court
The Franklyn Surveys included:(1) a reverse-confusion survey and (2) an initial-interest-confusion survey. Defendant argued that the Franklyn Surveys are not responsive to its experts’ opinions and improperly advanced new theories of the case beyond the deadline to submit affirmative expert opinions.
A. Untimely Affirmative Opinions
Defendant argued that the Franklyn Surveys are untimely affirmative opinions required to be served by the affirmative expert report deadline, and not the rebuttal report deadline. Nonetheless, the Court will consider whether the Franklyn Surveys constitute proper rebuttal opinion despite their designation in the Franklyn Report as affirmative opinions.
Furthermore, Defendant argued that the initial-interest-confusion survey was improper because “initial interest confusion” is an entirely new theory that was set forth for the first time in this litigation within the Franklyn Report. In fact, Defendant contended that Plaintiff had only asserted a theory of “reverse confusion” prior to serving the Franklyn Report.
Thus, the Defendant argued that Professor Franklyn’s initial-interest-confusion survey was not plausibly within the scope of proper rebuttal to Defendant’s experts.
The Court found that the Franklyn Surveys constituted untimely affirmative opinions. Basically, the concept of initial-interest confusion was not the subject of Defendant’s experts’ opinions and was introduced for the first time in this litigation within the Franklyn Report. Even if the results of Professor Franklyn’s initial-interest confusion survey could be used to undermine Defendant’s position, the initial-interest confusion survey nevertheless constituted an improper affirmative opinion.
B. Substantially Justified or Harmless
Now that the Court has determined that the Franklyn Surveys are untimely affirmative opinions, the subsequent question is whether Plaintiff may rely on them anyway.
The Defendant contended that permitting the Plaintiff to use the Franklyn Surveys would unfairly prejudice its case. Defendant noted that it exchanged thousands of documents, took many depositions, and selected expert witnesses strategically in response to how Plaintiff litigated its case. Therefore, the Defendant maintained that it would have been unjust to allow the significant affirmative opinions presented in the Franklyn Surveys to be introduced belatedly in a rebuttal report.
Plaintiff did not address Defendant’s claim that Defendant might have materially changed its strategy over the course of the extensive discovery in this case if Defendant had been timely advised of the Franklyn Surveys.
Since the Plaintiff was unable to establish that its failure to timely disclose the Franklyn Surveys was substantially justified or harmless, the Court found that Plaintiff has failed to assuage the concern of potential prejudice to Defendant in this case. Thus, the Court exercised its discretion to preclude the use of the Franklyn Surveys.
Held
The Court granted the motion to strike portions of Plaintiff’s rebuttal report of
David J. Franklyn.
Key Takeaway:
In determining whether the failure to disclose under Rule 26 was substantially justified or harmless, courts consider “(1) “the surprise to the party against whom the evidence would be offered; (2) the ability of that party to cure the surprise; (3) the extent to which allowing the evidence would disrupt the trial; (4) the importance of the evidence; and (5) the nondisclosing party’s explanation for its failure to disclose the evidence.
Basically, the burden of establishing that a failure to disclose was substantially justified or harmless rests on the nondisclosing party.
Case Details:
| Case Caption: | X Social Media, LLC V. X Corp. |
| Docket Number: | 6:23cv1903 |
| Court Name: | United States District Court, Florida Middle |
| Order Date: | May 05, 2025 |
