A blog about patent, copyright and trademark law in the U.S. District Court
for the Southern District of New York

Court Granted Defendant’s Motion In Limine and Plaintiff’s Motion To Amend The Complaint, and Denied Plaintiff’s Motion To Preclude Expert Testimony in Connection with Plaintiff’s Copyright Infringement Claims.

In a March 18, 2014 Opinion and Order, Judge Paul A. Engelmayer: (1) granted defendant Monster Energy Company’s motion in limine; (2) granted the plaintiff Beastie Boys’ motion for leave to file its proposed Amended Complaint; and (3) denied the Beastie Boys’ motion to preclude certain expert testimony in the plaintiff’s copyright infringement and Lanham Act action.

Defendants sought to exclude videos other than the allegedly infringing video at issue. In considering the motion in limine, court found that the plaintiff offered little more than the ostensibly infringing videos in support of its argument that the defendant’s conduct in this case was willful. The court reasoned that the jury, told only of the fact of these other alleged violations of the plaintiff’s rights, would be given no reliable means whatsoever to assess whether the defendant acted willfully in connection with the video at issue. Accordingly, defendant’s motion in limine to preclude the plaintiff from presenting evidence the alleging infringing videos at trial was granted.

The plaintiff also requested leave to amend the Complaint to add copyright claims based on defendant’s allegedly unauthorized use of a fifth plaintiff song, “Pass the Mic.” Under Federal Rule of Civil Procedure 15(a)(2), “[a] court should freely give leave [to amend] when justice so requires.” However, “[w]here, as here, a scheduling order governs amendments to the complaint . . . the lenient standard under Rule 15(a) . . . must be balanced against the requirement under Rule 16(b) that the Court’s scheduling order ‘shall not be modified except upon a showing of good cause.’” The Second Circuit instructs that, in determining good cause, a district court’s “primary consideration is whether the moving party can demonstrate diligence. It is not, however, the only consideration. The district court, in the exercise of its discretion under Rule 16(b), also may consider other relevant factors including, in particular, whether allowing the amendment of the pleading at this stage of the litigation will prejudice defendants.” A district court’s decision to grant or deny leave to amend is “an exercise of its broad discretion concerning the pleadings.” The Court concluded that good cause existed under Rule 16 for amending the Complaint to include the plaintiff’s copyright claims pertaining to “Pass the Mic.”

Having determined that Plaintiffs had shown good cause for their proposed amendment under Rule 16(b), the Court addressed the factors set forth in Rule 15(a). Rule 15(a) provides that “a party may amend the party’s pleading only by leave of court . . . and leave shall be freely given when justice so requires.” Fed. R. Civ. P. 15(a). The defendant argued that it would be futile to allow the plaintiff to plead infringement of the two “Pass the Mic” sound recording copyrights because the plaintiff did not own that copyright at the time the lawsuit was filed. Instead, the defendant argued, the plaintiff acquired an interest in the sound recording for “Pass the Mic” only after it filed the Complaint, as a result of an assignment agreement, meaning the plaintiff did not have standing to bring this claim as of the date the Complaint was filed. Unpersuaded by the defendant’s argument, the court granted the plaintiff leave to file an amended complaint.

Defendant intended to offer expert testimony from Erich Joachimsthaler concerning (1) “the likelihood of a consumer association between the defendant’s brand and the plaintiff as a result of watching” the Video; and (2) the impact on, and the value of the Video to, the defendant’s brand. Joachimsthaler was an expert in branding. The plaintiff did not dispute his expertise. Instead, the plaintiff questioned his methodology and the relevance and potential prejudice of his testimony under Federal Rules of Evidence 401 and 403.

Joachimsthaler’s Report opined that the video did not transfer any association between the plaintiff and defendant into consumers’ long-term memory, because the video was not itself memorable, nor part of a sustained advertising campaign that would tend to associate the plaintiff with the defendant. This testimony rested on a reliable foundation: academic research concerning the circumstances under which consumers remember advertisements. The plaintiff asserted that this research was too general to shed much light on this particular video, and that Joachimsthaler failed to consider certain relevant facts, but these concerns went to the persuasiveness and credibility of Joachimsthaler’s testimony. The court ruled that such concerns were best tested by “[v]igorous cross- examination [and] presentation of contrary evidence,” not by its wholesale preclusion.

The court held that Joachimsthaler’s testimony was relevant and admissible as to damages, and the Court allowed him to testify as to damages. It would not, however, allow Joachimsthaler to testify as to the “likelihood of confusion,” because his report contained nothing relevant to the Lanham Act liability standard, and did not purport to address that issue.

The court also held that Joachimsthaler’s testimony with respect to the impact and value of the video to defendant’s brand, which relied upon his conversation with coworkers, was plainly unreliable. Joachimsthaler stated that he obtained expertise about consumer perceptions of the defendant’s brand by “ask[ing] people in my office . . . [who] have an age range from 18 to 55 . . . to help me understand the Monster Energy brand.” The court held that this basis was unreliable and blatantly non-rigorous. In fact, the court stated that Joachimsthaler’s attempt to cite his co-workers’ perceptions of a client product as a basis for his expert opinion did not pass the laugh test. Accordingly, the court also precluded Joachimsthaler from offering any expert testimony that recited or relied at all, upon his conversations with co-workers.
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