Louis Vuitton Malletier v. Dooney & Bourke, Inc.
U.S. District Court for the Southern District of New York, December 13, 2007
Judge: Shira A. Scheindlin, U.S. District Judge
ISSUE: This is a mere snapshot within this monumental case that stretched over more than four year and produced 20,000 pages of documents. The issue at stake was an extremely successful line of “multicolore” handbags introduced by the plaintiff in 2003. These Louis Vuitton bags sold for as much as $3,950 and more than 70,000 (representing $300 million at retail) were sold the year they were introduced. The defendant released a handbag similar to the plaintiff’s and sold 500,000 of them at prices ranging from $125 to $350. A long and bitter lawsuit followed that was eventually won by the defendant.
SURVEY EXPERTS: This case was selected for this blog because six experts were brought into the case, and the work of five of those experts was excluded. Several of these experts developed surveys and all the survey evidence that was introduced into this case was excluded. So heavy was the expert overkill in this case that the judge appointed not one but two “Special Masters” to sift through and evaluate the reports from the survey experts.
RESULTS: Almost a clean sweep: Dr. Eugene Eriksen conducted a consumer confusion and dilution survey for the plaintiff. Special Masters recommended exclusion and judge concurred. Dr. Jacob Jacoby also was retained by the plaintiff to conduct a trademark confusion and dilution survey. Special Masters found Dr. Jacoby’s report and testimony …”unreliable,” and judge concurred. Dr. Richard Holub was retained by plaintiff to develop a technical report on the similarity of colors. Special Masters recommended testimony be excluded and judge concurred. Weston Anson was retained by plaintiff to review financial documents and accounting information as well as perform a “dilution study.” Special Masters permitted Anson to testify on financial facts but excluded his testimony on dilution in that it was “outside his area of expertise.” Judge concurred. Dr. Bradford Cornell, defendant’s damages expert, was the sole expert allowed to testify; Dr. Robert Reitter was retained by defendant to conduct a trademark confusion and trademark recognition survey. Special Masters recommended this survey be excluded and judge concurred.
RESOLUTION: The defendant prevailed. The New York Times (December 12, 2004) wrote: “The It Bag (Defendant’s bag) might be a knockoff – but it’s an acceptable knockoff.: While the case stretched on for years after this article, the results never changed.
SUBJECTIVE OPINION: The expert overkill in this case became so severe that the judge opted essentially to wash her hands of trying to understand the work of the survey experts and brought in the two Special Masters who might not have had the expertise to comprehend all the work. Thus, they recommended everything be excluded and the judge agreed.
Wednesday, July 29, 2009
Friday, May 29, 2009
One of the more interesting aspects of market research is the use of surveys to create and refute evidence in intellectual property legal cases — in particular, cases involving trademarks.
As our society becomes more and more service- and brand-oriented, the value of intellectual property focused on such services and brands becomes far more valuable and subject to infringement. Adding to this complexity is the emergence of the Internet with its Websites and search engines. Cyberspace has become a leading delivery system in communicating services and brands. Unlike the offline world, rules, laws and protocols in the cyber environment are evolving as we speak. Because of the need to prove such alleged off-line and on-line service, brand and trademark infringement have actually taken place or are likely to take place, the survey process has evolved into a leading legal tool to prove of disprove these hypothetical infringements.
The use of surveys by intellectual property attorneys is a relatively new phenomenon. Early surveys dealt mainly with real products and focused on pure brand/trademark infringements, trade dress (packaging and product appearance) infringements and the concept of acquired distinctiveness (secondary meaning). Surveys often took the form of mall intercepts, telephone interviews and sometime the pre-recruit form where appropriate targets were contacted in advance and invited to a survey center for interviews. While these forms and protocols continue to be used, the Internet has provided an entire new dimension. Moreover, people are being bombarded in far greater degrees, with unwanted marketing messages in the form of junk mail, Internet spam, telemarketing solicitations and media advertising. Such increasingly high noise levels turn consumers off to participation in research and sharing their opinions. Thus, the process of obtaining information through surveys has become more difficult and challenging.
Adding to this complexity is the increasing use of the “Daubert motion” as a means, more often a ploy, — to attempt to disqualify experts and their findings.
However, despite the constraints and obstacles, I find doing these surveys — creating and critiquing them — to be fascinating and challenging work. To take complex problems dealing with consumers opinions and perceptions and fashion ways to prove or disprove complex hypotheses can be exhilarating.
It is for this reason that I have created this blog. As a lifelong student and 25-year teacher of marketing principles and strategies, I find the study of these surveys, the methodologies of the experts, points and counterpoints of the argumentative process to be both educational and entertaining.
The purpose of this blog is to capture the essence of several rather interesting cases strictly from the ways surveys and survey experts were used by plaintiffs and defendants. My analysis is purely subjective and focused on the survey-related elements of the cases. However, as a former newspaper reporter, I have tried to journalistically present the facts in an objective manner. The format that I will use is:
1. Present the basic issue of the case.
2. Explain how survey experts were used.
3. Report on survey results.
4. Explain rebuttal arguments from adversarial experts.
5. Report on the resolution of the matter.
6. Offer my subjective opinion of the process and results.
As our society becomes more and more service- and brand-oriented, the value of intellectual property focused on such services and brands becomes far more valuable and subject to infringement. Adding to this complexity is the emergence of the Internet with its Websites and search engines. Cyberspace has become a leading delivery system in communicating services and brands. Unlike the offline world, rules, laws and protocols in the cyber environment are evolving as we speak. Because of the need to prove such alleged off-line and on-line service, brand and trademark infringement have actually taken place or are likely to take place, the survey process has evolved into a leading legal tool to prove of disprove these hypothetical infringements.
The use of surveys by intellectual property attorneys is a relatively new phenomenon. Early surveys dealt mainly with real products and focused on pure brand/trademark infringements, trade dress (packaging and product appearance) infringements and the concept of acquired distinctiveness (secondary meaning). Surveys often took the form of mall intercepts, telephone interviews and sometime the pre-recruit form where appropriate targets were contacted in advance and invited to a survey center for interviews. While these forms and protocols continue to be used, the Internet has provided an entire new dimension. Moreover, people are being bombarded in far greater degrees, with unwanted marketing messages in the form of junk mail, Internet spam, telemarketing solicitations and media advertising. Such increasingly high noise levels turn consumers off to participation in research and sharing their opinions. Thus, the process of obtaining information through surveys has become more difficult and challenging.
Adding to this complexity is the increasing use of the “Daubert motion” as a means, more often a ploy, — to attempt to disqualify experts and their findings.
However, despite the constraints and obstacles, I find doing these surveys — creating and critiquing them — to be fascinating and challenging work. To take complex problems dealing with consumers opinions and perceptions and fashion ways to prove or disprove complex hypotheses can be exhilarating.
It is for this reason that I have created this blog. As a lifelong student and 25-year teacher of marketing principles and strategies, I find the study of these surveys, the methodologies of the experts, points and counterpoints of the argumentative process to be both educational and entertaining.
The purpose of this blog is to capture the essence of several rather interesting cases strictly from the ways surveys and survey experts were used by plaintiffs and defendants. My analysis is purely subjective and focused on the survey-related elements of the cases. However, as a former newspaper reporter, I have tried to journalistically present the facts in an objective manner. The format that I will use is:
1. Present the basic issue of the case.
2. Explain how survey experts were used.
3. Report on survey results.
4. Explain rebuttal arguments from adversarial experts.
5. Report on the resolution of the matter.
6. Offer my subjective opinion of the process and results.
The King of Rears
Anheuser-Busch, Inc. v VIP Products LLC
U.S. District Court for the Eastern District of Missouri, Eastern Division
October 16, 2008
Judge: Thomas C. Mummert III, U.S. Magistrate Judge
ISSUE: Anheuser-Busch, brewer of Budweiser beer, filed suit against VIP Products, a maker of high-quality durable dog toys, over a product called “Buttwiper,” a dog squeeze toy. Plaintiff’s Budweiser brand has also been extended and licensed to producers of various non-beer products including dog collars and leaches. The key issue is that defendant’s product took the form and shape of a Budweiser beer bottle and was intended to be, according to the plaintiff, “a knock-off of a beer bottle label.” Plaintiff sought an injunction to prevent defendant’s product from being sold and also sought damages.
SURVEY EXPERT. George Mantis, president of the Chicago-based Mantis Group and a well-known survey expert, was retained by the plaintiff. He designed and conducted a mall intercept survey (9 venues; 327 interviews). He sought to prove if the defendant’s product, “Buttwiper,” is likely to cause confusion with the plaintiff’s Budweiser brand.
RESULTS: While the numbers were not reported in the case document, it was apparent that respondents in sufficient percentages revealed substantial levels of confusion.
REBUTTAL ARGUMENTS: The defendant didn’t retain anyone to critique the Mantis survey.
RESOLUTION: Court issued an injunction prohibiting the defendant from marketing the “Buttwiper” product. Court, however, did not rule for the plaintiff for damages resulting from alleged dilution or blurring.
SUBJECTIVE OPINION: A superb survey effort by Mantis — outstanding (textbook) example mall intercept protocol with regard to respondent screening process, use of controls, etc..
U.S. District Court for the Eastern District of Missouri, Eastern Division
October 16, 2008
Judge: Thomas C. Mummert III, U.S. Magistrate Judge
ISSUE: Anheuser-Busch, brewer of Budweiser beer, filed suit against VIP Products, a maker of high-quality durable dog toys, over a product called “Buttwiper,” a dog squeeze toy. Plaintiff’s Budweiser brand has also been extended and licensed to producers of various non-beer products including dog collars and leaches. The key issue is that defendant’s product took the form and shape of a Budweiser beer bottle and was intended to be, according to the plaintiff, “a knock-off of a beer bottle label.” Plaintiff sought an injunction to prevent defendant’s product from being sold and also sought damages.
SURVEY EXPERT. George Mantis, president of the Chicago-based Mantis Group and a well-known survey expert, was retained by the plaintiff. He designed and conducted a mall intercept survey (9 venues; 327 interviews). He sought to prove if the defendant’s product, “Buttwiper,” is likely to cause confusion with the plaintiff’s Budweiser brand.
RESULTS: While the numbers were not reported in the case document, it was apparent that respondents in sufficient percentages revealed substantial levels of confusion.
REBUTTAL ARGUMENTS: The defendant didn’t retain anyone to critique the Mantis survey.
RESOLUTION: Court issued an injunction prohibiting the defendant from marketing the “Buttwiper” product. Court, however, did not rule for the plaintiff for damages resulting from alleged dilution or blurring.
SUBJECTIVE OPINION: A superb survey effort by Mantis — outstanding (textbook) example mall intercept protocol with regard to respondent screening process, use of controls, etc..
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