Intellectual Property Expert’s Opinions may Assist the Jury’s Statutory Damages Determination
Posted on April 1, 2025 by Expert Witness Profiler
Plaintiffs manufacture, market, and sell premium, luxury, and sports eyewear products, including Ray-Ban, Oakley, and Costa. Plaintiffs own several trademarks for these various brands in the United States.
Defendants own and operate the Beach Blvd. Flea Market (the “Flea Market”), in Jacksonville.
This is a contributory trademark infringement case involving the repeated display and sale of products bearing counterfeits of Plaintiffs registered trademarks by Defendants’ vendors at the Beach Blvd. Flea Market.
Initially, Defendants enlisted Kal Raustiala to provide an expert report and opinions regarding the legal and factual contours of harm caused by consumer confusion and how such harm is, or is not, likely to arise.
Subsequently, Plaintiffs moved to exclude Raustiala’s report and testimony in their entirety on the basis that he is unqualified and his opinions (1) contain improper legal conclusions; (2) do not assist the trier of fact; and (3) mislead the jury.
Specifically, Raustiala offers three primary opinions: (1) this case, unlike many trademark disputes, does not involve “standard point of sale” consumer confusion, (2) harm from post-sale confusion, which requires a special set of circumstances, “exists but is rare,” and can, in some cases, benefit the intellectual property holder, and (3) in this case, there is no evidence that Plaintiffs have been harmed by post-sale confusion. Furthermore, also embedded in his report are several ancillary or supplemental opinions regarding the goals of trademark law and how harm is caused by consumer confusion, the sequence of events necessary for post-sale confusion to occur, the potential outcomes of such confusion, and how harm to exclusivity should not be protected because it is contrary to the aims of trademark law.
Intellectual Property Expert Witness
Kal Raustiala has taught intellectual property and international law at UCLA, Harvard, Yale, Columbia, Chicago, Princeton, Melbourne University in Australia, Hebrew University in Israel, and the National University of Singapore, where he was the Yong Shook Lin Visiting Professor of Intellectual Property Law. He holds a JD from Harvard Law School (1999) and a PhD from the University of California, San Diego (1996), and he attended Duke University (1988).
Raustiala has taught at UCLA Law School since 2000 and has researched and published widely on intellectual property issues in the realm of fashion, apparel, and luxury goods.
Discussion by the Court
Qualifications
Kal Raustiala possesses substantial academic credentials, including a PhD and Juris Doctor. His expertise in intellectual property law is further demonstrated by his teaching experience at numerous prominent universities and his publications on intellectual property and fashion design, one of which has been cited by the United States Supreme Court.
Notably, he has authored an article specifically addressing post-sale confusion in the trademark context and has consulted with firms on intellectual property issues. These accomplishments underscore Raustiala’s extensive knowledge, skill, experience, and education in the field. Recognizing that an expert’s qualifications need not perfectly align with the specific subject matter, the Court concluded that Raustiala is a qualified expert witness in this case.
Legal Conclusions
The Plaintiffs contend that Raustiala’s expert opinions are fundamentally flawed because they repeatedly present legal conclusions regarding the definition and application of trademark infringement law to the specific facts of this case. In contrast, the Defendants argue that Raustiala’s analysis merely describes the factual progression of events in the real world that can lead to post-sale consumer confusion.
The Court finds that many of Raustiala’s opinions, specifically those describing different types of consumer confusion and the sequence of real-world events that can cause one particular form of post-sale confusion, do not constitute inadmissible legal conclusions. In particular, concerning Raustiala’s views on point-of-sale confusion and the existence of one method to establish post-sale confusion, the Court determines that Raustiala does not offer testimony on the legal ramifications of specific conduct or instruct the jury on the ultimate verdict.
However, the Court will exclude any of Raustiala’s opinions that address whether post-sale confusion or harm to exclusivity are or should be recognized as valid legal theories of harm in trademark law, as these constitute impermissible legal testimony.
Additionally, the Court notes that Raustiala draws comparisons between real-world confusion scenarios and existing case law to promote a specific argument, namely the absence of harm. The Court deems these statements to be the type of arguments properly presented in legal briefs by counsel and will therefore exclude them as inappropriate expert opinion.
Raustiala Exceeds the Scope of Proper Expert Witness Testimony
Furthermore, the Court will exclude Raustiala’s assertions that there is no likelihood of confusion in this case, as this impermissibly concludes that the Plaintiffs have failed to meet a legal standard. Likelihood of confusion is a central element in infringement cases, and by stating that the Plaintiffs have not satisfied this element, Raustiala oversteps the permissible bounds of expert witness testimony.
Given that binding legal precedent establishes post-sale confusion as a basis for finding a likelihood of confusion, the Court will similarly exclude Raustiala’s opinions stating that no post-sale confusion existed or was demonstrated in this particular case.
Moreover, the Court observes that Raustiala frequently intertwines his opinion that there was no harm with his ultimate conclusion that there was no likelihood of confusion. Consequently, to the extent that Raustiala’s opinions regarding harm to the Plaintiffs are based on and inseparable from his ultimate conclusion on confusion, this testimony is also inadmissible and will be excluded.
Helpfulness to the Trier of Fact
The Plaintiffs next argued that Raustiala’s opinions lack relevance and would therefore not assist the jury in deciding a factual issue in the case. Conversely, the Defendants contended that Raustiala’s opinions are relevant to the matter of standing, the Court’s decision regarding the adoption of a presumption of confusion, and the determination of statutory damages.
The Court will not consider the relevance of Raustiala’s opinions concerning the Court’s decision to adopt a presumption of confusion, as expert testimony is not used to inform the Court on matters of law.
In other respects, the Defendants asserted that Raustiala’s expert opinions on post-sale confusion and its potential economic consequences would help the jury in assessing the need to deter other potential infringers and in evaluating the Plaintiffs’ lost revenues when determining the appropriate statutory damages.
However, the Court did not find a clear connection between Raustiala’s opinions on the sequence of events in one type of post-sale confusion and whether it can lead to economic loss, and the calculation of a damages award intended to deter future infringers.
Nevertheless, the Court found Raustiala’s opinions to be marginally relevant to the Plaintiffs’ lost revenues. Although statutory damages are available due to the difficulty in calculating actual damages, legal precedent indicates that “[s]tatutory damages are not intended to provide a Plaintiff with a windfall recovery; they should bear some relationship to the actual damages suffered.” Therefore, Raustiala’s insights into how post-sale confusion can or cannot result in economic loss may be helpful to the jury in its consideration of actual damages, specifically the Plaintiffs’ lost revenues. Consequently, the Defendants have demonstrated that Raustiala’s remaining opinions could potentially assist the jury in its determination of statutory damages.
Rule 403
The Plaintiffs asserted that Raustiala’s opinions would mislead the jury in several key areas by contradicting established legal precedent. Specifically, they argued that his opinions conflict with binding case law regarding the application of the seven-factor test for determining likelihood of confusion, the existence of a presumption of confusion, and the legal principle that post-sale confusion is sufficient to establish liability under the Lanham Act. Furthermore, the Plaintiffs contended that the jury would be improperly led to believe that Raustiala’s opinions on whether the Plaintiffs suffered a loss of economic revenue are definitive in determining both the likelihood of confusion and the appropriateness of statutory damages.
Regarding the Plaintiffs’ initial argument as it pertains to Raustiala’s remaining opinions, the Court finds no contradiction between Raustiala’s testimony on the real-world progression of one type of post-sale confusion and the established seven factors used to assess likelihood of confusion. Turning to the presumption of confusion, while courts have applied this presumption when trademarks are identical, no binding legal precedent compels this Court to do so.
As the Court has already determined that Raustiala’s opinions asserting the absence of post-sale confusion in this case are inadmissible legal conclusions, it is unnecessary to further evaluate their admissibility under Rule 403 concerning the potential for prejudice or confusion.
Finally, concerning the Plaintiffs’ contention that the jury might be misled into believing that the economic consequences of post-sale confusion are determinative of liability, the Court concludes that any such potential for misinterpretation can be adequately addressed through other procedural means, including cross-examination of the witness, the issuance of limiting instructions to the jury during the trial, and comprehensive jury instructions at the close of evidence.
Held
The Court granted in part and denied in part the Plaintiffs’ motion in limine to exclude the proffered opinions of Kal Raustiala.
Key Takeaway:
The Court partially excluded the expert testimony of Kal Raustiala. Despite his extensive background in intellectual property law, the Court determined that many of his opinions constituted impermissible legal conclusions (Raustiala’s opinions as to whether post-sale confusion or harm to exclusivity have been or should be recognized as legal theories of harm in trademark cases), exceeded the scope of proper expert testimony, and would potentially mislead the jury. However, the Court allowed some of his testimony regarding how post-sale confusion can or cannot result in economic loss because it may help the jury in its consideration of actual damages, and specifically, Plaintiffs’ lost revenues.
Although there remains a possibility that Raustiala’s expert opinions could lead to some juror confusion or a less efficient use of trial time, the Court does not find that this risk substantially outweighs the probative value of the remaining testimony, especially considering the exclusion of several other aspects of Raustiala’s original opinions.
Case Details:
| Case Caption: | Luxottica Group S.P.A. Et Al V. Beemer & Associates III, Llc |
| Docket Number: | 3:23cv551 |
| Court: | United States District Court for the Middle District of Florida, Jacksonville Division |
| Order Date: | March 28, 2025 |
