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.
Friday, May 29, 2009
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..
The ‘Reverse’ Confusion Issue
Kargo Global, Inc. v. Advance Magazine Publishers, Inc.
U.S. District Court for the Southern District of New York
August 6, 2007
Judge: John F. Keenan, U.S. District Judge
ISSUE: Plaintiff Kargo Global, Inc., a distributor of online content for wireless devices, argues that the defendant’s defunct (Conde Nast) magazine, “Cargo,” infringed on the plaintiff and caused damages through the concept of “reverse confusion.” (Cargo was a short-lived men’s shopping magazine that promoted clothes, cars, electronic gadgets and other luxury items.) Also at issue are defendant’s attempts to exclude a report and testimony of survey expert, Dr. Jacob Jacoby and plaintiff’s attempts to exclude report and testimony of defendant’s expert, Dr. Itamar Simonson.
SURVEY EXPERTS. Dr. Jacoby, a professor at New York University, is perhaps the most well know survey expert in America. In this case, Dr. Jacoby directed two Internet surveys, using survey panels. After a rigorous screening process, respondents were shown work product from different media including, “Cargo.” This sophisticated protocol was designed to determine if what was shown came from the same source that produced the magazine. Dr. Simonson, a professor at Stanford University and also a well known intellectual property survey expert, had Opinion Research Center conduct two telephone surveys. Respondents in the first survey were questioned whether they associated “Kargo” with any product. Respondents in the second survey were questioned whether they associated “Powered by Kargo” with any product or service.
RESULTS: Dr. Jacoby’s survey found likelihood of confusion of 17.7 %, which was reduced to 15.5% from “noise” uncovered by a control group. No respondents in either of Dr. Simonson’s surveys found any awareness of either “Kargo” or “Powered by Kargo.”
REBUTTAL ARGUMENTS: The two surveys served to rebut each other’s findings. The court’s opinion made no use of any other adversarial survey experts.
RESOLUTION: The court chose to exclude the findings produced by Dr. Jacoby and dismissed Dr. Simonson’s findings as “moot” since the Jacoby survey was excluded.
No damages were awarded.
SUBJECTIVE OPINION: The concept behind “reverse confusion” is when a well-known new party attempts to hijack the trademark of a lesser-known senior user. Dr. Jacoby should be congratulated for undertaking an extremely creative and sophisticated survey. However, the case foundation appears weak and the survey findings of less than 20% were marginal at best. Judge Keenan didn’t buy any of it and singled out Dr. Jacoby’s work as “so flawed that its probative value is substantially outweighed by its potential for unfair prejudice and likelihood that it will confuse or mislead a jury.”
The Simonson survey, on the other hand, was clean and straightforward — but as it turned out — unnecessary.
U.S. District Court for the Southern District of New York
August 6, 2007
Judge: John F. Keenan, U.S. District Judge
ISSUE: Plaintiff Kargo Global, Inc., a distributor of online content for wireless devices, argues that the defendant’s defunct (Conde Nast) magazine, “Cargo,” infringed on the plaintiff and caused damages through the concept of “reverse confusion.” (Cargo was a short-lived men’s shopping magazine that promoted clothes, cars, electronic gadgets and other luxury items.) Also at issue are defendant’s attempts to exclude a report and testimony of survey expert, Dr. Jacob Jacoby and plaintiff’s attempts to exclude report and testimony of defendant’s expert, Dr. Itamar Simonson.
SURVEY EXPERTS. Dr. Jacoby, a professor at New York University, is perhaps the most well know survey expert in America. In this case, Dr. Jacoby directed two Internet surveys, using survey panels. After a rigorous screening process, respondents were shown work product from different media including, “Cargo.” This sophisticated protocol was designed to determine if what was shown came from the same source that produced the magazine. Dr. Simonson, a professor at Stanford University and also a well known intellectual property survey expert, had Opinion Research Center conduct two telephone surveys. Respondents in the first survey were questioned whether they associated “Kargo” with any product. Respondents in the second survey were questioned whether they associated “Powered by Kargo” with any product or service.
RESULTS: Dr. Jacoby’s survey found likelihood of confusion of 17.7 %, which was reduced to 15.5% from “noise” uncovered by a control group. No respondents in either of Dr. Simonson’s surveys found any awareness of either “Kargo” or “Powered by Kargo.”
REBUTTAL ARGUMENTS: The two surveys served to rebut each other’s findings. The court’s opinion made no use of any other adversarial survey experts.
RESOLUTION: The court chose to exclude the findings produced by Dr. Jacoby and dismissed Dr. Simonson’s findings as “moot” since the Jacoby survey was excluded.
No damages were awarded.
SUBJECTIVE OPINION: The concept behind “reverse confusion” is when a well-known new party attempts to hijack the trademark of a lesser-known senior user. Dr. Jacoby should be congratulated for undertaking an extremely creative and sophisticated survey. However, the case foundation appears weak and the survey findings of less than 20% were marginal at best. Judge Keenan didn’t buy any of it and singled out Dr. Jacoby’s work as “so flawed that its probative value is substantially outweighed by its potential for unfair prejudice and likelihood that it will confuse or mislead a jury.”
The Simonson survey, on the other hand, was clean and straightforward — but as it turned out — unnecessary.
A ‘Sexy’ Subject
Victoria Secrets Stores Brand Management, Inc. v. Sexy Hair Concepts, LLC
U.S. District Court for the Southern District of New York
April 8, 2009
Judge: Gerald E. Lynch, U.S. District Judge
ISSUE: This was an appeal by the plaintiff of a TTAB decision sustaining defendant’s opposition to plaintiff’s application of the trademark SO SEXY for hair care products. Defendant, producer of the SEXY HAIR products line, moved that TTAB decision be affirmed. The real issue is whether “SEXY” is descriptive or suggestive. Plaintiff argues descriptive; defendant argues suggestive.
SURVEY EXPERTS: Dr. Michael Mazis, Ph.D., a professor emeritus in marketing from American University, was retained by the plaintiff to design a survey (presumably a mall intercept survey) to test whether actual customers associate the word, “sexy,” with the defendant. A second plaintiff expert, Gerald L. Ford, partner of the Huntington Beach (CA)-firm of Ford Bubala Associates and an emeritus faculty member of California State University, Long Beach, introduced two additional surveys testing likelihood of confusion. One survey was a mall intercept effort and the other utilized the Internet.
RESULTS: The Mazis survey results showed a 1.6% of those questions associated “sexy” with the defendant. Both Ford surveys indicated no likelihood of confusion.
REBUTTAL ARGUMENTS. Defendant produced no survey experts to critique either Mazis or Ford. However, defendant argues Mazis survey was “flawed” and introduced a “Daubert” motion to exclude it. Defendant also sought to exclude Ford’s findings. The key to the defendant’s argument was “sexy” is suggestive and NOT descriptive.
RESOLUTION: Defendant’s attempts to exclude Mazis and Ford surveys denied. Defendant’s motion for summary judgment denied.
SUBJECTIVE OPINION: The descriptive v. suggestive argument is extremely difficult to prove because of the fine line between the two concepts. Both Mazis and Ford are well known and highly regarded survey experts. Attempts to use Daubert arguments to discredit their work clearly made no sense as articulated by Judge Lynch. The plaintiff, however, took a risk by using two survey experts. In this instance, it did not damage the plaintiff’s case, but when two or more experts are used on the same side, there is always the chance that the other side can play one off against the other.
U.S. District Court for the Southern District of New York
April 8, 2009
Judge: Gerald E. Lynch, U.S. District Judge
ISSUE: This was an appeal by the plaintiff of a TTAB decision sustaining defendant’s opposition to plaintiff’s application of the trademark SO SEXY for hair care products. Defendant, producer of the SEXY HAIR products line, moved that TTAB decision be affirmed. The real issue is whether “SEXY” is descriptive or suggestive. Plaintiff argues descriptive; defendant argues suggestive.
SURVEY EXPERTS: Dr. Michael Mazis, Ph.D., a professor emeritus in marketing from American University, was retained by the plaintiff to design a survey (presumably a mall intercept survey) to test whether actual customers associate the word, “sexy,” with the defendant. A second plaintiff expert, Gerald L. Ford, partner of the Huntington Beach (CA)-firm of Ford Bubala Associates and an emeritus faculty member of California State University, Long Beach, introduced two additional surveys testing likelihood of confusion. One survey was a mall intercept effort and the other utilized the Internet.
RESULTS: The Mazis survey results showed a 1.6% of those questions associated “sexy” with the defendant. Both Ford surveys indicated no likelihood of confusion.
REBUTTAL ARGUMENTS. Defendant produced no survey experts to critique either Mazis or Ford. However, defendant argues Mazis survey was “flawed” and introduced a “Daubert” motion to exclude it. Defendant also sought to exclude Ford’s findings. The key to the defendant’s argument was “sexy” is suggestive and NOT descriptive.
RESOLUTION: Defendant’s attempts to exclude Mazis and Ford surveys denied. Defendant’s motion for summary judgment denied.
SUBJECTIVE OPINION: The descriptive v. suggestive argument is extremely difficult to prove because of the fine line between the two concepts. Both Mazis and Ford are well known and highly regarded survey experts. Attempts to use Daubert arguments to discredit their work clearly made no sense as articulated by Judge Lynch. The plaintiff, however, took a risk by using two survey experts. In this instance, it did not damage the plaintiff’s case, but when two or more experts are used on the same side, there is always the chance that the other side can play one off against the other.
Free Speech or Infringement?
Charles Smith v. Wal-Mart Stores, Inc.
U.S. District Court for the Northern District of Georgia, Atlanta Division
March 20, 2008
Judge: Timothy C. Batten, Jr., U.S. District Judge
ISSUE: Plaintiff Charles Smith, a satirist, sought summary judgment against defendant Wal-Mart, who accused Smith of trademark infringement and dilution of Wal-Mart’s brand. The issue in question involves bitingly satirical (noncommercial) graphic and Internet presentations of “Walocaust,” “Wal-Qaeda.” “Freedom Hater Mart,” and “Bentonville Bullies Always.” The retailer also sought summary judgment through a cross-motion.
SURVEY EXPERTS: Dr. Jacob Jacoby was retained by the defendant to conduct two surveys: (1) a mall intercept study and (2) an Internet survey.
RESULTS: Dr. Jacoby reported that his two surveys reflected high levels of consumer confusion and dilution by tarnishment.
REBUTTAL ARGUMENTS: Experts retained by the plaintiff were: Dr. Richard Teach, an emeritus marketing professor and former dean of the Georgia Tech School of Business and Dr. Alan Jay Rosenblatt, a professional in the area of Internet advocacy. Dr. Teach argued that Dr. Jacoby did not have the requisite Internet experience to conduct the Web-based point-of-sale portion of this particular study and that several aspects of Jacoby’s methodology affecting both portions of the study were faulty; thus “too deeply flawed to be considered.” Dr. Rosenblatt pointed out some Internet-related deficiencies in Jacoby’s methodology.
RESOLUTION: Court grated Smith’s motion for summary judgment and denied Wal-Mart’s cross motion. Smith’s parodic work was considered non-commercial. Plaintiff’s Daubert motion to exclude Dr. Jacoby’s research and report was denied. Court also denied defendant’s motions to exclude Dr. Teach and Dr. Goldblatt.
SUBJECTIVE OPINION: Wal-Mart was represented by three attorneys from Quinn, Emanuel, Oruhart, Oliver & Hedges LLP, New York, and two attorneys from Troutman Sanders, Atlanta. Smith was represented by an attorney from the Southern Center for Human Rights, Atlanta, and an attorney from the Public Citizen Litigation Group, Washington, DC. Despite all of Wal-Mart’s legal firepower and the efforts of one of the nation’s foremost survey experts, the rights of free speech and free expression, in the end prevailed.
U.S. District Court for the Northern District of Georgia, Atlanta Division
March 20, 2008
Judge: Timothy C. Batten, Jr., U.S. District Judge
ISSUE: Plaintiff Charles Smith, a satirist, sought summary judgment against defendant Wal-Mart, who accused Smith of trademark infringement and dilution of Wal-Mart’s brand. The issue in question involves bitingly satirical (noncommercial) graphic and Internet presentations of “Walocaust,” “Wal-Qaeda.” “Freedom Hater Mart,” and “Bentonville Bullies Always.” The retailer also sought summary judgment through a cross-motion.
SURVEY EXPERTS: Dr. Jacob Jacoby was retained by the defendant to conduct two surveys: (1) a mall intercept study and (2) an Internet survey.
RESULTS: Dr. Jacoby reported that his two surveys reflected high levels of consumer confusion and dilution by tarnishment.
REBUTTAL ARGUMENTS: Experts retained by the plaintiff were: Dr. Richard Teach, an emeritus marketing professor and former dean of the Georgia Tech School of Business and Dr. Alan Jay Rosenblatt, a professional in the area of Internet advocacy. Dr. Teach argued that Dr. Jacoby did not have the requisite Internet experience to conduct the Web-based point-of-sale portion of this particular study and that several aspects of Jacoby’s methodology affecting both portions of the study were faulty; thus “too deeply flawed to be considered.” Dr. Rosenblatt pointed out some Internet-related deficiencies in Jacoby’s methodology.
RESOLUTION: Court grated Smith’s motion for summary judgment and denied Wal-Mart’s cross motion. Smith’s parodic work was considered non-commercial. Plaintiff’s Daubert motion to exclude Dr. Jacoby’s research and report was denied. Court also denied defendant’s motions to exclude Dr. Teach and Dr. Goldblatt.
SUBJECTIVE OPINION: Wal-Mart was represented by three attorneys from Quinn, Emanuel, Oruhart, Oliver & Hedges LLP, New York, and two attorneys from Troutman Sanders, Atlanta. Smith was represented by an attorney from the Southern Center for Human Rights, Atlanta, and an attorney from the Public Citizen Litigation Group, Washington, DC. Despite all of Wal-Mart’s legal firepower and the efforts of one of the nation’s foremost survey experts, the rights of free speech and free expression, in the end prevailed.
Just Who Is America’s Team?
Dallas Cowboys Football Club, Ltd. and NFL Properties, LLC v. America’s Team Properties, Inc.
U.S. District Court for the Northern District of Texas, Dallas Division
March 30, 2009
Judge: Ed Kinkeade, U.S. District Judge
BASIC ISSUE: The plaintiff seeks an injunction against the defendant from using the America’s Team designation. The plaintiff claims a common law right to the name and assert that America’s Team has attained acquired distinctiveness (secondary meaning) as a source designation for the Dallas Cowboy Football Club. Defendant argues that his company owns the name through acquisition of the America’s Team trademark.
SURVEY EXPERTS: Plaintiff retained Gabriel Gelb, Houston (TX) based senior consultant for the Gelb Consulting Group and a nationally recognized survey expert. Gelb performed an Interest survey, using a consumer panel, to test recognition of the America’s Team name and source. Defendant retained James T. Berger to critique the Gelb report and offer alternative research that essentially made use of the Gelb research protocols but in the form of a mall intercept study.
RESULTS: Gelb’s results and Berger’s results were somewhat similar. Gelb’s results has more recognition as the Cowboys being America’s Team but showed a number of other entities enjoyed the America’s Team designation. Berger’s study showed that the Cowboys along with a variety of other teams were considered to be America’s Team including the Boston Red Sox, Atlanta Braves, New England Patriots, Green Bay Packers, U.S. Olympians and even the New York Police and Fire Departments. The purpose of the Berger survey was simply to attempt to neutralize the Gelb survey.
REBUTTAL. No other survey experts were brought in as rebuttal experts.
RESOLUTION: The court found for the plaintiff and America’s Team Properties was enjoined from using “America’s Team.” Both sides brought motions to exclude the surveys of the other side. The Defendant’s motion to exclude the Gelb survey was denied and the plaintiff’s motion to exclude the Berger survey was denied as moot.
SUBJECTIVE OPINION. The bottom line in this case is the difficulty of getting a ruling against the Dallas Cowboys in a Dallas courtroom. The big loser was the defendant, who declared bankruptcy soon after the conclusion of the trial.
U.S. District Court for the Northern District of Texas, Dallas Division
March 30, 2009
Judge: Ed Kinkeade, U.S. District Judge
BASIC ISSUE: The plaintiff seeks an injunction against the defendant from using the America’s Team designation. The plaintiff claims a common law right to the name and assert that America’s Team has attained acquired distinctiveness (secondary meaning) as a source designation for the Dallas Cowboy Football Club. Defendant argues that his company owns the name through acquisition of the America’s Team trademark.
SURVEY EXPERTS: Plaintiff retained Gabriel Gelb, Houston (TX) based senior consultant for the Gelb Consulting Group and a nationally recognized survey expert. Gelb performed an Interest survey, using a consumer panel, to test recognition of the America’s Team name and source. Defendant retained James T. Berger to critique the Gelb report and offer alternative research that essentially made use of the Gelb research protocols but in the form of a mall intercept study.
RESULTS: Gelb’s results and Berger’s results were somewhat similar. Gelb’s results has more recognition as the Cowboys being America’s Team but showed a number of other entities enjoyed the America’s Team designation. Berger’s study showed that the Cowboys along with a variety of other teams were considered to be America’s Team including the Boston Red Sox, Atlanta Braves, New England Patriots, Green Bay Packers, U.S. Olympians and even the New York Police and Fire Departments. The purpose of the Berger survey was simply to attempt to neutralize the Gelb survey.
REBUTTAL. No other survey experts were brought in as rebuttal experts.
RESOLUTION: The court found for the plaintiff and America’s Team Properties was enjoined from using “America’s Team.” Both sides brought motions to exclude the surveys of the other side. The Defendant’s motion to exclude the Gelb survey was denied and the plaintiff’s motion to exclude the Berger survey was denied as moot.
SUBJECTIVE OPINION. The bottom line in this case is the difficulty of getting a ruling against the Dallas Cowboys in a Dallas courtroom. The big loser was the defendant, who declared bankruptcy soon after the conclusion of the trial.
MUCK FIZZOU
University of Kansas and Kansas Athletics, Inc. v. Larry Sinks, Clark Orth, Larry Sinks Enterprises and Victory Sportswear, L.L.C. (collectively d/b/a Joe-College.com)
United States Court for the District of Kansas
March 19, 2008
Judge: Julie A. Robinson, U.S. District Court Judge
ISSUE: Plaintiff, the University of Kansas (KU), sought to prevent defendants, Joe-College.com) from selling rather edgy and irreverent unlicensed T-shirts on the grounds that such T-shirt violated plaintiff’s licensing and trademark rights and were “offensive” and disparaging to the university. One of the key T-shirts in question was a blue shirt with the letters, ‘MUCK FIZZOU.’ Poking fun of one of Kansas’ top rivals, the University of Missouri.
SURVEY EXPERT: While the burden of proof is with the plaintiff in such cases, the plaintiff offered no survey expert. Instead, the plaintiff offered Dr. Edward Hirt, a fellow of the American Psychological Association. Dr. Hirt’s testimony was used in a similar case involving Texas Tech University. His testimony centered on the psychology and motivations of those who seek to demonstrate allegiance to KU and its athletic teams and methods employed by KU to protect its reputation and public image. The defendant retained Chicago-based James T. Berger, an adjunct professor at Roosevelt University and nationally known survey expert. Berger conducted an Internet survey among students and staff at the university and residents of Lawrence, KS. The survey was based on the ability of respondents to recognize and differentiate licensed and unlicensed products and whether such factors had any effect on buying behavior.
RESULTS: The Berger survey produced overwhelming results showing people at the university and in the community were able to distinguish between licensed and unlicensed products and were able to recognize the source of such products.
REBUTTAL: While Berger critiqued the Hirt report, there was no rebuttal expert per se brought in by the plaintiff. However, plaintiff attorney Jerre B. Swann, an Atlanta-based partner of plaintiff’s law firm, Kilpatrick Stockton, attacked the Berger survey in deposition and the plaintiff filed a Daubert motion to exclude Berger’s survey results and testimony. Swann is well know as an expert on survey research and has written several articles and has appeared in panel discussions on the subject. Defendants also filed a Daubert Motion against Dr. Hirt.
RESOLUTION: The jury came back with a verdict that excluded some of the T-Shirts sold at Joe-College yet allowed most of those to continue to be sold including the infamous MUCK FIZZOU. The Daubert motion against Berger was denied. The Daubert motion against Hirt was approved in part and denied in part.
SUBJECTIVE OPINION: Joe College was able to stay in business and get a chance to recover its legal-fee loses, but the big loser in this case was Larry Sinks, owner of Joe College. He expended enormous resources to defend this action – so even as a winner, he ended up the big loser.
United States Court for the District of Kansas
March 19, 2008
Judge: Julie A. Robinson, U.S. District Court Judge
ISSUE: Plaintiff, the University of Kansas (KU), sought to prevent defendants, Joe-College.com) from selling rather edgy and irreverent unlicensed T-shirts on the grounds that such T-shirt violated plaintiff’s licensing and trademark rights and were “offensive” and disparaging to the university. One of the key T-shirts in question was a blue shirt with the letters, ‘MUCK FIZZOU.’ Poking fun of one of Kansas’ top rivals, the University of Missouri.
SURVEY EXPERT: While the burden of proof is with the plaintiff in such cases, the plaintiff offered no survey expert. Instead, the plaintiff offered Dr. Edward Hirt, a fellow of the American Psychological Association. Dr. Hirt’s testimony was used in a similar case involving Texas Tech University. His testimony centered on the psychology and motivations of those who seek to demonstrate allegiance to KU and its athletic teams and methods employed by KU to protect its reputation and public image. The defendant retained Chicago-based James T. Berger, an adjunct professor at Roosevelt University and nationally known survey expert. Berger conducted an Internet survey among students and staff at the university and residents of Lawrence, KS. The survey was based on the ability of respondents to recognize and differentiate licensed and unlicensed products and whether such factors had any effect on buying behavior.
RESULTS: The Berger survey produced overwhelming results showing people at the university and in the community were able to distinguish between licensed and unlicensed products and were able to recognize the source of such products.
REBUTTAL: While Berger critiqued the Hirt report, there was no rebuttal expert per se brought in by the plaintiff. However, plaintiff attorney Jerre B. Swann, an Atlanta-based partner of plaintiff’s law firm, Kilpatrick Stockton, attacked the Berger survey in deposition and the plaintiff filed a Daubert motion to exclude Berger’s survey results and testimony. Swann is well know as an expert on survey research and has written several articles and has appeared in panel discussions on the subject. Defendants also filed a Daubert Motion against Dr. Hirt.
RESOLUTION: The jury came back with a verdict that excluded some of the T-Shirts sold at Joe-College yet allowed most of those to continue to be sold including the infamous MUCK FIZZOU. The Daubert motion against Berger was denied. The Daubert motion against Hirt was approved in part and denied in part.
SUBJECTIVE OPINION: Joe College was able to stay in business and get a chance to recover its legal-fee loses, but the big loser in this case was Larry Sinks, owner of Joe College. He expended enormous resources to defend this action – so even as a winner, he ended up the big loser.
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