1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 NORTHERN DISTRICT OF CALIFORNIA 10 11 AIRWAIR INTERNATIONAL LTD., Case No. 19-cv-07641-SI

12 Plaintiff,

ORDER RE: MOTIONS TO EXCLUDE

13 v. AND CROSS-MOTIONS FOR

SUMMARY JUDGMENT

14 PULL & BEAR ESPANA SA, et al., Re: Dkt. No. 72, 73, 74, 76, 77, 78, 79, 80 15 Defendants.

16

17 18 Before the court are five Motions to Exclude, two Motions for Summary Judgment and a 19 Motion to File Under Seal. Dkt. Nos. 72, 73, 74, 76, 77, 78, 79, 80. On July 1, 2021, the Court 20 heard oral argument on the motions. For the reasons set forth below, the Court DENIES the motions 21 to exclude Bertrand Guillaume, Robert L. Klein, and Susan Schwartz McDonald; GRANTS the 22 motion to exclude David Franklyn; DENIES IN PART and GRANTS IN PART the motion to 23 exclude Caroline de Baëre; DENIES ITX’s motion for summary judgment; DENIES IN PART 24 and GRANTS IN PART AirWair’s motion for summary judgment; and GRANTS the motion to 25 file under seal. 26 27 1 BACKGROUND1 2 Plaintiff AirWair International Ltd. is a wholly-owned subsidiary of United Kingdom 3 company Dr. Martens AirWair Group Ltd. (collectively “AirWair”). Dkt. 22 ¶ 1 (First Amended 4 Complaint (“FAC”)). AirWair is engaged in the design, manufacture, marketing, and sale of Dr. 5 Martens® footwear. Id. AirWair owns the following trade dress registrations: U.S. Trademark No. 6 2,437,750, U.S. Trademark No. 2,437,751, U.S. Trademark No. 2,102,468, U.S. Trademark No. 7 5,067,689, U.S. Trademark No. 5,067,692 (collectively “AirWair Trade Dress”). Id. at ¶ 17. These 8 trade dress registrations generally relate to footwear designs. Id. The ‘750 mark consists of a yellow 9 welt stitch located on the perimeter of footwear. Id. The ‘751 mark consists of the combination of 10 yellow stitching in the welt area and a two-toned grooved sole edge. Id. The ‘468 mark consists of 11 the design of an undersole. Id. The ‘689 mark consists of the design of a sole edge including 12 longitudinal ribbing and a dark color band over a light color. Id. The ‘692 mark consists of 13 longitudinal ribbing and a dark color band over a light color on the outer sole edge, welt stitching, 14 and a tab located at the top back heel of footwear. Id. The ‘689 mark was registered in 2016 without 15 an adverse office action in its prosecution history. Dkt. No. 84-5 at 2. Similarly, the ‘692 mark was 16 also registered in 2016 without an adverse office action in its prosecution history. Dkt. No. 85-1 at 17 2. 18 Defendant ITX, USA, LLC (“ITX”) manufactured, marketed, distributed, and sold on the 19 Pull & Bear website four styles of shoes and boots that AirWair alleges are confusingly similar to 20 and copy AirWair’s Trade Dress to the point of infringement. Id. at ¶ 26-27. The total amount of 21 sales for the four products at issue amounts to less than $3,000. Dkt. No. 80 at 1. Sales of the 22 products ceased approximately two years ago. Id. at 2. In this suit, AirWair brings trademark 23 infringement, trademark dilution, and unfair competition claims under both federal and California 24 state law against defendant ITX. Dkt. No. 22 at ¶¶ 45-71. 25 On May 21, 2021, defendant and plaintiff filed the instant Motions to Exclude, Motions for 26 Summary Judgment, and Motion to Seal. Dkt. No. 72 (AirWair’s Motion to Exclude Susan 27 1 Schwartz McDonald); Dkt. No. 73 (AirWair’s Motion to Exclude Caroline de Baëre); Dkt. No. 74 2 (AirWair’s Partial Motion for Summary Judgment); Dkt. No. 76 (AirWair’s Motion to File Under 3 Seal); Dkt. No. 77 (ITX’s Motion to Exclude David Franklyn); Dkt. No. 78 (ITX’s motion to 4 Exclude Bertrand Guillaume); Dkt. No. 79 (ITX’s Motion to Exclude Robert. L. Klein); and Dkt. 5 No. 80 (ITX’s Motion for Summary Judgment). 6 7 LEGAL STANDARD 8 I. Motion to Exclude 9 “[T]he trial judge must ensure that any and all scientific testimony or evidence admitted is 10 not only relevant, but reliable.” Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 589 (1993). 11 Federal Rule of Evidence 702 permits the introduction of expert testimony only if: (1) “the expert's 12 scientific, technical, or other specialized knowledge will help the trier of fact to understand the 13 evidence or to determine a fact in issue,” (2) “the testimony is based on sufficient facts or data,” (3) 14 “the testimony is the product of reliable principles and methods,” and (4) “the expert has reliably 15 applied the principles and methods to the facts of the case.” Fed. R. Evid. 702. The proponent of 16 the expert testimony has the burden of proving the proposed testimony is admissible. Lust ex rel. 17 Lust v. Merrell Dow Pharms., Inc., 89 F.3d 594, 598 (9th Cir. 1996). “Although the district court 18 must perform a gatekeeping function, a trial court ‘not only has broad latitude in determining 19 whether an expert’s testimony is reliable, but also in deciding how to determine the testimony’s 20 reliability.’” United States v. Gadson, 763 F.3d 1189, 1202 (9th Cir. 2014) (citation omitted); see 21 also Daubert, 509 U.S. at 597. 22 23 II. Motion for Summary Judgment 24 Summary judgment is proper “if the movant shows that there is no genuine dispute as to any 25 material fact and . . . is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). The moving 26 party bears the initial burden of showing no genuine issue of material fact exists. Celotex Corp. v. 27 Catrett, 477 U.S. 317, 323 (1986). The moving party, however, has no burden to disprove matters 1 demonstrate to the Court an absence of evidence to support the non-moving party's case. Id. at 325. 2 Once the moving party has met its burden, the burden shifts to the nonmoving party to “set 3 forth, by affidavit or as otherwise provided in Rule 56, ‘specific facts showing that there is a genuine 4 issue for trial.’” T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th Cir. 5 1987) (citing Celotex, 477 U.S. at 324). To carry this burden, the non-moving party must “do more 6 than simply show that there is some metaphysical doubt as to the material facts.” Matsushita Elec. 7 Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). “The mere existence of a scintilla 8 of evidence . . . [is] insufficient; there must be evidence on which the jury could reasonably find for 9 the [non-moving party].” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986). 10 In deciding a summary judgment motion, the Court must view the evidence in the light most 11 favorable to the non-moving party and draw all justifiable inferences in its favor. Id. at 255. 12 “Credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences 13 from the facts are jury functions, not those of a judge . . . ruling on a motion for summary judgment.” 14 Id. However, conclusory, speculative testimony is insufficient to raise genuine issues of fact and 15 defeat summary judgment. Thornhill Publ'g Co., Inc. v. GTE Corp., 594 F.2d 730, 738 (9th Cir. 16 1979). The evidence the parties present must be admissible. Fed. R. Civ. P. 56(c)(2). 17 18 DISCUSSION 19 First, the Court considers which, if any, experts should be excluded. Second, the Court 20 considers the motions for summary judgment. 21 22 I. Motions to Exclude 23 A. Plaintiff AirWair International Ltd.’s Motions to Exclude 24 1. Motion to Exclude Testimony of Susan Schwartz McDonald 25 Dr. Susan Schwartz McDonald is the President and CEO of NAXION, “a century-old 26 marketing research and consulting organization that advises companies on product development, 27 brand strategy, and other strategic marketing activities.” Dkt. No. 72-3 at 5 (Mot. to Exclude, Ex. 1 commentary on the survey conducted by AirWair’s expert Mr. Klein. Dkt. No. 72 at 2 (Mot. to 2 Exclude). Dr. McDonald’s replication survey tested the likelihood of confusion between the Pull & 3 Bear “White Platform Boot” and AirWair’s Dr. Martens brand boot by conducting an online survey 4 in which respondents were shown pictures of either the test or control boot and were asked “[w]hat 5 company or brand do you believe sells or puts out this boot, or tell us if you don’t know.” Dkt. No. 6 72-3 at 2 Mot. to Exclude, Ex. B). Dr. McDonald’s survey differed from Mr. Klein’s in four main 7 aspects: (1) Dr. McDonald used a different control boot, (2) situated by itself with a blank 8 background, (3) tested two differently colored soles, black and brown, and (4) additionally added 9 an open ended “Why?” question to the survey – generally asking why consumers gave the answer 10 they did. Id. at 12-15. Dr. McDonald’s survey produced a likelihood of confusion finding of 11 between 3.4% and 17.6% for the brown-soled boot and a likelihood of confusion finding of between 12 1.0% and 15.2% for the black-soled boot. Id. at 17. 13 AirWair seeks to exclude Dr. McDonald from offering her rebuttal replication survey and 14 rebuttal commentary, arguing her opinions are “fundamentally flawed, irrelevant to the case, and 15 outside the scope of proper rebuttal testimony.” Id. at 1. AirWair asserts Dr. McDonald’s survey 16 and opinions are irrelevant and unreliable because her survey tested likelihood of confusion with a 17 materially altered version of plaintiff AirWair’s trade dress. Id. at 7. AirWair further asserts Dr. 18 McDonald’s survey is irrelevant because it does not test post-sale confusion. Id. at 10. Finally, 19 AirWair argues Dr. McDonald’s replication survey is inadmissible as rebuttal evidence because it 20 was not designed to rebut Mr. Klein’s survey. Id. at 14. In response, ITX argues Dr. McDonald’s 21 rebuttal survey and report should not be excluded because (1) the survey and report are admissible 22 as rebuttal evidence, (2) the survey used a proper control stimulus, and (3) the survey properly tested 23 for post-sale confusion. Dkt. No. 88 at 9-13 (Opp’n). 24 Expert testimony is admissible only if it is both relevant and reliable. Kumho Tire Co., Ltd. 25 V. Carmichael, 526 U.S. 137, 141 (1999). “In trademark cases, surveys are to be admitted as long 26 as they are conducted according to accepted principles and are relevant.” Wendt v. Host Int’l, Inc., 27 125 F.3d 806 (9th Cir. 1997). Technical inadequacies in the survey bear on the weight of the 1 Insurance Co. v. Gibralter Financial Corp., 694 F.2d 1150, 1156 (9th Cir. 1982). The majority 2 view is to admit the survey and discount its probative value. Prudential Insurance Co. v. Gibralter 3 Financial Corp., 694 F.2d 1150, 1156 (9th Cir. 1982). 4 Dr. McDonald’s survey is relevant to the issue of likelihood of confusion because it aims to 5 directly measure whether consumers associate a boot made by ITX with one made by AirWair. 6 While the parties may disagree whether the general placement and specific aspects of the boots 7 shown to survey respondents render the survey inadequate, those inadequacies do not warrant 8 inadmissibility of the entire testimony. Rather, these criticisms bear on the weight of the evidence, 9 not its admissibility. See Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Management, 10 Inc., 618 F.3d 1025, 1037-38 (9th Cir. 2010) (concluding the survey was admissible despite 11 shortcomings of the survey including failure to replicate real world conditions, suggestiveness, and 12 counterintuitive results). The weight of a survey is an issue for a jury. Clicks Billiards, Inc. v. 13 Sixshooters, Inc., 251 F.3d 122 (9th Cir. 2001) (concluding vague and general responses to a survey 14 follow-up question were a matter for the jury to decide what weight to accord the survey). Thus, 15 the exclusion of Dr. McDonald’s testimony is unwarranted. 16 Accordingly, the Court DENIES the motion to exclude Susan Schwartz McDonald. 17 18 2. Motion to Exclude Testimony of Caroline de Baëre 19 Caroline de Baëre has thirty-four years of experience in the footwear industry primarily in 20 the areas of “trend research, footwear design, product development, merchandising, market analysis, 21 product purchasing, and sales management.” Dkt. No. 73-1 at 2 (Mot. to Exclude, Whitworth Dec’l, 22 Ex. A). Ms. de Baëre was retained by ITX to assess the AirWair Trade Dress and used her personal 23 experience and knowledge of footwear to formulate her opinion of the AirWair Trade Dress. Id. at 24 5. Ms. de Baëre concluded that the elements of AirWair’s Trade Dress “are so common in the 25 footwear industry that no one manufacturer has the exclusive right to use the elements” and that 26 ITX’s footwear products do not infringe on AirWair’s Trade Dress. Id. 27 AirWair seeks to exclude Caroline de Baëre from offering her opinion on likelihood of 1 Exclude). AirWair asserts this opinion should be excluded because Ms. de Baëre is not qualified to 2 testify about likelihood of confusion because she is an expert in design and manufacturing of 3 footwear, not an expert in consumer confusion, perception, or behavior. Id. AirWair further argues 4 Ms. de Baëre did not employ a reliable methodology for her opinions because she used a side by 5 side comparison as opposed to viewing the products alone. Id. at 10. Further, AirWair asserts Ms. 6 de Baëre’s opinions on functionality and secondary meaning are unreliable and irrelevant because 7 she does not correctly analyze the trade dress and misapplies the controlling legal standards. Id. at 8 11. AirWair additionally asserts Ms. de Baëre’s opinion with respect to reputational harm should 9 be excluded because she does not provide a factual basis for that opinion. Id. at 21. 10 In response, ITX argues Ms. de Baëre’s testimony is well founded and should not be 11 excluded because she is qualified to testify on the likelihood of confusion, and her reference to side 12 by side product images was proper. Dkt. No. 87 at 5 (Opp’n). ITX asserts Ms. de Baëre’s opinions 13 on functionality and secondary meaning are reliable and relevant, and she properly identified the 14 relevant trade dress and applied the controlling legal standards. Id. at 8. ITX argues Ms. de Baëre 15 correctly analyzed utilitarian functionality and her opinions regarding the secondary meaning of the 16 AirWair trade dress are well founded and should not be excluded. Id. at 9. ITX additionally argues 17 that Ms. de Baëre’s opinion on reputational harm should not be excluded because her report 18 illustrates that AirWair lacks valid trademark rights and therefore could not have suffered 19 reputational harm. Id. at 14-15. 20 Rule 702 of the Federal Rules of Evidence provides that a witness may testify if she is 21 “qualified as an expert by knowledge, skill, experience, training, or education.” Fed. R. Evid. 702. 22 ITX seeks to have Ms. de Baëre, a footwear expert, testify to her opinion on issues of trademark 23 law. Specifically, Ms. de Baëre provides her opinion on the functionality of and secondary meaning 24 acquired by the elements of AirWair’s Trade Dress. Dkt. No. 73-1 at 5-6. Ms. de Baëre further 25 opines on the similarity between the Pull & Bear Footwear and AirWair’s Trade Dress and the 26 likelihood of confusion. Id. at 6. Secondary meaning and likelihood of confusion are issues that go 27 to the heart of trademark law. 1 development and manufacturing, merchandising, market analysis, product purchasing and sales 2 management.” Id. at 1. Ms. de Baëre is clearly an expert in the design and manufacture of footwear 3 and has the required expertise to opine on the manufacturing techniques of footwear including those 4 employed by AirWair. Accordingly, the Court finds Ms. de Baëre’s analysis of functionality is 5 admissible. 6 However, the Court does not find Ms. de Baëre’s testimony regarding secondary meaning 7 to be admissible. Secondary meaning for trade dress means that a significant number of potential 8 customers associate the trade dress with a single source of the product. Inwood Laboratories, Inc. 9 v. Ives Laboratories, Inc., 456 U.S. 844, 851 (1982). “Secondary meaning can be established in 10 many ways, including (but not limited to) direct consumer testimony; survey evidence; exclusivity, 11 manner, and length of use of a mark; amount and manner of advertising; amount of sales and number 12 of customers; established place in the market; and proof of intentional copying by the defendant.” 13 Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns, Inc., 198 F.3d 1143, 1151 (9th Cir. 1999). 14 Ms. de Baëre’s report only analyzes the exclusivity factor. Dkt. No. 73-1 at 27. Further, Ms. de 15 Baëre states “I do not believe any of the factors above have been met by AirWair. Although I reached 16 my conclusions solely based on the above legal standards provided to me by ITX’s counsel.” Id. A 17 lack of secondary meaning can be established in many ways, but mere conjecture is not one of them. 18 Accordingly, the Court finds Ms. de Baëre’s analysis of secondary meaning inadmissible. 19 Further, the Court does not find Ms. de Baëre’s testimony regarding likelihood of confusion 20 to be admissible because Ms. de Baëre utilized a side-by-side comparison. A side-by-side 21 comparison is improper if that is not the way consumers encounter the product in the market. See 22 J.T. McCarthy, McCarthy on Trademarks and Unfair Competition § 23:59 (5th ed.). “It is axiomatic 23 in trademark law that ‘side-by-side’ comparison is not the test.” Levi Struss & Co. v. Blue Bell, Inc., 24 623 F.2d 817, 822 (9th Cir. 1980). The styles of footwear at issue in this suit were allegedly sold 25 only on the Pull & Bear-branded website. Dkt. No. 22 ¶ 27. The alleged infringing products and 26 AirWair’s products were consequently not sold in the same channel of trade. It follows then that a 27 side-by-side comparison is improper because that is not how consumers would encounter the 1 improper and this portion of Ms. de Baëre’s testimony should be excluded. 2 Accordingly, the Court GRANTS in part and DENIES in part the motion to exclude Caroline 3 de Baëre. 4 5 B. Defendant ITX USA, LLC’s Motions to Exclude 6 1. Motion to Exclude Testimony of David Franklyn 7 Mr. David Franklyn holds a J.D. from University of Michigan Law School and is a professor 8 of Law and Business at Golden Gate University, where he teaches courses on intellectual property 9 law as well as marketing and survey design. Dkt. No. 77-1 at 1 (Mot. to Exclude, Bulger Dec’l, Ex. 10 1). Mr. Franklyn was retained by AirWair to opine upon the report of ITX’s expert, Caroline de 11 Baëre. Dkt. 77 at 1 (Mot. to Exclude). Mr. Franklyn concludes Ms. de Baëre’s analysis was flawed 12 for two reasons: (1) she “misrepresents the elements and misunderstands the construction” of 13 AirWair’s Trade Dress, and (2) she “incorrectly presumes that AirWair’s entire trade dress is 14 encompassed in the written description of the registrations.” Dkt. No. 77-1 at 2. Mr. Franklyn 15 further holds the opinion that AirWair’s Trade Dress is “unambiguous, valid, and protectable.” Id. 16 at 3. 17 ITX seeks to exclude Mr. Franklyn on the basis that he cannot testify regarding legal 18 conclusions and that he does not have relevant experience in the footwear industry – indeed, he has 19 none. See generally Dkt. No. 77. In response, AirWair argues Mr. Franklyn is qualified and his 20 opinions about Ms. de Baëre’s report are supported by his experience as a professor of intellectual 21 property law. Dkt. No. 90 at 1 (Opp’n). AirWair further argues Mr. Franklyn’s testimony and report 22 do not provide improper legal conclusions but rather critique de Baëre’s methodology. Dkt. No. 90 23 at 4 (Opp’n). 24 Under Rule 702 of the Federal Rules of Evidence, a “witness who is qualified as an expert 25 by knowledge, skill, experience, training, or education may testify . . . if the expert’s scientific, 26 technical, or other specialized knowledge will help the trier of fact to understand the evidence or to 27 determine a fact in issue.” Fed. R. Evid. 702. Rule 702 imposes a special obligation upon a trial 1 526 U.S. 137 (1999). Mr. Franklyn has extensive experience as an intellectual property law 2 professor. Dkt. No. 77-1 at 1 (Bulger Dec’l, Ex. 1). However, Mr. Franklyn does not have 3 experience regarding fashion and more specifically footwear, which is the subject of the present suit 4 and the expert report to which he is offered to rebut. He does not teach on the subject of fashion law 5 and he does not have experience working or consulting in the fashion industry. 6 “Resolving doubtful questions of law is the distinct and exclusive province of the trial 7 judge.” United States v. Weitzenhoff, 35 F.3d 1275, 1287 (9th Cir. 1993). “Expert testimony is not 8 proper for issues of law.” Crow Tribe of Indians v. Raciot, 87 F.3d 1039, 1045 (9th Cir. 1996). “An 9 expert cannot testify to a matter amounting to a legal conclusion.” U.S. v. Tamman, 782 F.3d 543, 10 552 (9th Cir. 2015). Mr. Franklyn’s expert report contains statements regarding the validity and 11 enforceability of AirWair’s Trade Dress. Dkt. No. 77-1 at 7 (“AirWair’s trade dress is 12 presumptively valid and enforceable.”) Further, Mr. Franklyn’s expert report contains statements 13 regarding the compliance of AirWair’s Trade Dress with USPTO requirements. Id. at 7-8 (“These 14 registrations comport with the USPTO requirements.”) These statements amount to legal 15 conclusion. 16 Accordingly, the Court GRANTS the motion to exclude testimony of David Franklyn. 17 18 2. Motion to Exclude Testimony of Bertrand Guillaume 19 Mr. Bertrand Guillaume has twenty-three years of experience in the footwear industry 20 encompassing “the entire footwear product process, from inception and market research, to 21 merchandising, design, product development, pre-production and production” for a variety of 22 footwear companies. Dkt. No. 78-1 at 1 (Mot. to Exclude, Bulger Dec’l, Ex. 1). Mr. Guillaume 23 was retained by AirWair to provide an expert opinion in response to Caroline de Baëre’s report. Id. 24 at 2. 25 ITX seeks to exclude Mr. Guillaume from offering his opinion that AirWair’s trade dress is 26 not functional and has acquired secondary meaning. See generally Dkt. No. 78 (Mot. to Exclude). 27 ITX asserts this opinion should be excluded because Mr. Guillaume’s testimony is conclusory in 1 conclusions. Id. at 2. ITX asserts Mr. Guillaume’s testimony fails to satisfy the expert testimony 2 requirements of Daubert and Rule 702 for two reasons. Id. at 3. First, ITX asserts Mr. Guillaume’s 3 opinion on functionality fails to satisfy Rule 702 because his opinion is allegedly not based on any 4 data and he didn’t demonstrate he used any methodology. Id. at 3-4. Second, ITX asserts his opinion 5 regarding secondary meaning is not helpful to the jury because he did not assess secondary meaning 6 factors, his opinion is not based on data, or indeed on any methodology, and merely asserts 7 conclusions. Id. at 4-6. In response, AirWair argues Mr. Guillaume’s testimony as to both 8 functionality and secondary meaning is admissible and satisfies Rule 702 because his testimony is 9 helpful as well as being based on sufficient data and a proper methodology. Dkt. No. 89 at 4 10 (Opp’n). 11 Mr. Guillaume expressly states the methodology he used to assess functionality – “a feature 12 is functional as a matter of law if it is ‘essential to the use or purpose of the article or if it affects the 13 cost or quality of the article.’” Dkt. No. 78-1 at 3. This is the exact test the Supreme Court has 14 articulated as the proper test for assessing functionality of a trademark. See TrafFix Devices, Inc. 15 v. Marketing Displays, Inc., 532 U.S. 23 (2001). 16 Mr. Guillaume then lists the Disc Golf factors as part of his analysis for functionality. Dkt. 17 No. 78-1 at 3. The Ninth Circuit has affirmed the Disc Golf factor test is the appropriate 18 functionality test in cases involving aesthetic trade dress claims for designs or layouts. Millennium 19 Laboratories, Inc. v. Ameritox, Ltd., 817 F.d 1123 (9th Cir. 2016). Mr. Guillaume further states 20 “[t]he crucial question is ‘whether the [] design itself, as the claimed protectable trade dress or mark, 21 plays a functional role in the overall product.’” Dkt. No. 78-1 at 3. Mr. Guillaume takes this 22 methodology directly from Disc Golf Ass’n, Inc., v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th 23 Cir. 1998). Not only does Mr. Guillaume state the methodology which he utilized, his expert report 24 proceeds to analyze each factor. Dkt. No. 78-1 at 5-19. ITX’s first argument, that Mr. Guillaume 25 did not use any methodology to assess functionality, is simply inaccurate. ITX’s second argument 26 that Mr. Guillaume did not base his opinion regarding secondary meaning on any methodology 27 suffers from the same deficiencies as its first argument. 1 3. Motion to Exclude Testimony of Robert L. Klein 2 Mr. Robert L. Klein is the Chairman and Co-Founder of Applied Marketing Science, Inc., a 3 market research and consulting firm. Dkt. No. 79-1 at 1 (Mot. to Exclude, Bulger Dec’l, Ex. 1). Mr. 4 Klein has extensive survey and market research experience dating back to 1970. Id. Mr. Klein was 5 retained by AirWair to conduct a likelihood of confusion survey comparing the Pull & Bear “White 6 Platform Boots” and the AirWair “Jadon” boots. Id. at 2. Mr. Klein’s survey found 41.4% of 7 respondents identified the Pull & Bear “White Platform Boots” as AirWair boots, 26.1% identified 8 the control boots as AirWair boots, resulting in a net confusion rate of 15.2%. 9 ITX seeks to exclude Robert L. Klein from offering his expert report and likelihood of 10 confusion survey for four reasons: (1) he did not understand the trade dress, resulting in unreliable 11 testimony, (2) he used an improper control, (3) he provided no methodologically sound basis for his 12 conclusion, and (4) he failed to replicate real world conditions. See generally Dkt. No. 79 (Mot. to 13 Exclude). In response, AirWair argues Mr. Klein has extensive survey experience and conducted 14 an Eveready study. Dkt. No. 93 at 7 (Opp’n). 15 “In trademark cases, surveys are to be admitted as long as they are conducted according to 16 accepted principles and are relevant.” Wendt v. Host Int’l, Inc., 125 F.3d 806 (9th Cir. 1997). “[A]s 17 long as they are conducted according to accepted principles . . . survey evidence should ordinarily 18 be found sufficiently reliable under Daubert.” Southland Sod Farms v. Stover Seed Co., 108 F.3d 19 1134 n.8 (9th Cir. 1997). 20 Mr. Klein’s study was “designed and conducted with generally accepted principles of survey 21 research, as set forth in the Federal Judicial Center’s Manual for Complex Litigation.” Dkt. No. 79- 22 1 at 3. Mr. Klein conducted an Eveready survey in which respondents were shown a single product 23 and asked in an open-ended format what company or brand they believe sells or puts out the product. 24 Id. at 5. This format is consistent with a proper Eveready survey. See J.T. McCarthy, McCarthy on 25 Trademarks and Unfair Competition § 32:174 (5th ed.). The Court concludes the survey conducted 26 by Mr. Klein conforms to accepted principles and is relevant. Although the parties disagree as to 27 the adequacy of the control image, that is merely a technical inadequacy. Technical inadequacies 1 480 (9th Cir. 1988) (citing Prudential Insurance co. v. Gibralter Financial Corp., 694 F.2d 1150, 2 1156 (9th Cir. 1982). Therefore, total exclusion of Mr. Klein’s testimony is unwarranted. 3 Accordingly, the Court DENIES the motion to exclude testimony of Robert L. Klein. 4 5 II. Motions for Summary Judgment 6 A. Defendant ITX USA, LLC’s Motion for Summary Judgment (Dkt. No. 80) 7 ITX now moves for summary judgment on all six causes of action in the FAC, arguing 8 AirWair’s trade dress is unprotectable as a matter of law. ITX argues (1) the trade dress is generic, 9 vague, and overbroad, (2) the trade dress is functional, and (3) the trade dress has not acquired 10 secondary meaning. See generally Dkt. No. 80 (Mot. for Summary Judgment). AirWair notes, and 11 ITX does not dispute, that two of AirWair’s marks (the ‘750 and ‘751 marks) are incontestable, 12 requiring denial of that portion of the ITX motion. AirWair further argues that ITX has not met its 13 burden of proving the ‘689 or ‘692 marks are generic, functional, and have not acquired secondary 14 meaning. See generally Dkt. No. 92 (Opp’n). The Court has determined that the ITX motion must 15 be denied because of the existence of numerous disputes of material fact. 16 Because of the “intensely factual nature of trademark disputes,” summary judgment is 17 generally disfavored in trademark cases and should be granted “sparingly.” Rearden LLC v. 18 Rearden Commerce, Inc., 683 F.3d 1190, 1202 (9th Cir.2012) quoting Interstellar Starship Servs., 19 Ltd. v. Epix Inc., 184 F.3d 1107, 1109 (9th Cir.1999). Despite this disfavor, “summary judgment 20 may be entered when no genuine issue of material fact exists.” Surfvivor Media, Inc. v. Survivor 21 Productions, 406 F.3d 625, 629–30 (9th Cir. 2005) citing Thane Int'l, Inc. v. Trek Bicycle Corp., 22 305 F.3d 894, 901–02 (9th Cir. 2002). 23 The crux of ITX’s argument turns on whether AirWair’s trade dress is valid. Registration 24 on the principal register is “prima facie evidence of the validity of the registered mark” and entitles 25 the plaintiff to a “strong presumption” that the mark is a protectable mark. 15 U.S.C. §§ 1115(a), 26 1057(b). To the extent a mark has become incontestable under § 1065, the registration is conclusive 27 evidence of the validity of the registered mark. 15 U.S.C. § 1115(b). 1 ‘689 and ‘692 registrations are merely generic combat boots. ITX argues that each individual 2 element of the ‘689 and ‘692 registrations is generic, vague, and overbroad. See generally Dkt. No. 3 80. ITX’s argument hinges on a piecemeal dissection of the trade dress. Id. However, this argument 4 is not allowable in the Ninth Circuit. “The theory that one can sever the different elements of a 5 design and analyze them separately to determine whether the mark as a whole is protectable is 6 contrary to the law of the Ninth Circuit.” Monster, Inc. v. Dolby Laboratories Licensing Corp., 920 7 F. Supp. 2d 1066, 1079 (N.D. Cal. 2013). It is not simply the individual elements of the mark that 8 must be considered, but rather the mark in its entirety. GoTo.com, Inc., v. Walt Disney Co., 202 9 F.3d 1199, 1207 (9th Cir. 2000). “Under the anti-dissection rule, the validity and distinctiveness of 10 a composite trademark is determined viewing the trademark as a whole, as it appears in the 11 marketplace.” Official Airline Guides, Inc. v. Gross, 6 F.3d 1385, 1392 (9th Cir. 1993). “Trade 12 dress is the composite tapestry of visual effects.” Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 13 1252, 1259 (9th Cir. 2001). “Courts have repeatedly cautioned that, in trademark – and especially 14 trade dress – cases, the mark must be examined as a whole, not by its individual constituent parts.” 15 Id. “Simply dissecting [the] trademark into its design features and attributing to each a proven or 16 commonly known utility is not, without more, conclusive that the design, considered as a whole, is 17 de jure functional and not registerable.” In re Teledyne Industries, Inc., 696 F.2d 968, 971 (Fed. 18 Cir. 1982). 19 Here, ITX merely deconstructs the various features of the ‘692 and ‘689 registrations and 20 argues that each is generic and overbroad. Dkt. No. 80 at 16-19. Whether each element on its own 21 is distinctive is irrelevant to the analysis; it is the mark as a whole which must be analyzed. ITX 22 fails to proffer evidence that the ‘689 and ‘692 registrations as a whole are generic, vague, and 23 overbroad. Accordingly, the Court finds the piecemeal analysis inadequate. 24 ITX also asserts the ‘689 and ‘692 registrations are functional. Dkt. No. 80 at 20. “In general 25 terms, a product feature is functional, and cannot serve as a trademark if it is essential to the use or 26 purpose of the article or if it affects the cost or quality of the article.” TrafFix Devices, Inc. v. Mktg. 27 Displays, Inc., 532 U.S. 23, (2001) (internal citations omitted). “[A] functional feature is one the 1 Id. (internal quotations omitted). The Ninth Circuit has articulated a four factor test for 2 functionality: “(1) whether the design yields a utilitarian advantage, (2) whether alternative designs 3 are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether 4 the particular design results from a comparatively simple or inexpensive method of manufacture.” 5 Disc Golf Ass’n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir. 1998). “No one factor 6 is dispositive; all should be weighed collectively.” Id. In evaluating functionality, it is crucial to 7 focus not on the individual elements, but rather “on the overall visual impression that the 8 combination and arrangement of those elements create.” Clicks Billiards, Inc. v. Sixshooters, Inc., 9 251 F.3d 1252, 1259 (9th Cir. 2001). ITX again relies upon a piecemeal dissection of the elements 10 that constitute the ‘689 and ‘692 registrations in its argument that the trade dress is functional. Dkt. 11 No. 80 at 20-25. ITX focuses on the functionality of the welt stitching and sole edge but fails to 12 demonstrate how the trade dress as a whole is functional. 13 “[A] product’s overall appearance is necessarily functional if everything about it is 14 functional, not merely if anything about it is functional.” Blumenthal Distributing, Inc. v. Herman 15 Miller, Inc., 963 F.3d 859, 867 (9th Cir. 2020) (italics in original). In Blumenthal, the Court found 16 that every chair’s appearance is affected by having a backrest, which serves the utilitarian function 17 of providing back support. Id. However, the Court stated that that does not mean that every chair’s 18 overall appearance is functional as a matter of law. Id. Similarly, every shoe’s appearance is 19 affected by having features such as a sole and heel tab which serve the utilitarian function of 20 protecting one’s foot from both the ground and enabling ease of use, respectively. However, that 21 does not mean that every shoe’s overall appearance is functional as a matter of law. These features 22 have functional aspects because a shoe itself, and the elements which constitute a shoe, are de facto 23 functional. De facto functionality means that the design of a product has a function. Valu 24 Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1274 (Fed. Cir. 2002). However, de facto 25 functionality does not necessarily defeat registrability. Id. Accordingly, in the present matter, the 26 asserted functionality of some of the elements which constitute AirWair’s Trade Dress does not 27 necessarily render the overall appearance of the footwear functional. 1 Dkt. No. 80 at 25. Because product-design trade dress can never be inherently distinctive, a 2 product’s design is distinctive, and therefore protectable, only upon a showing of secondary 3 meaning. Wal-Mart Stores, Inc., v. Samara Bros., Inc., 529 U.S. 205 (2000). “A product’s trade 4 dress attains secondary meaning when the purchasing public associates the dress with a single 5 producer or source rather than just the product itself.” First Brands Corp. v. Fred Meyer, Inc., 809 6 F.2d 1378, 1383 (9th Cir. 1987). “If the plaintiff establishes that a mark has been properly 7 registered, the burden shifts to the defendant to show by a preponderance of the evidence that the 8 mark is not protectable.” Zobmondo Entertainment, LLC v. Falls Media, LLC, 602 F.3d 1108, 1114 9 (9th Cir. 2010) (internal citations omitted). 10 AirWair has established that the AirWair Trade Dress has been properly registered. Dkt. 11 No. 22, Ex. 1-5 (FAC). Further, AirWair has established prima facie evidence of secondary meaning 12 through the registrations alone. AirWair claimed acquired distinctiveness under Section 2(f) of the 13 Lanham Act in the applications for both the ‘689 and ‘692 registrations. Id. “[T]he presumption of 14 validity that attaches to a Section 2(f) registration includes a presumption that the registered mark 15 has acquired distinctiveness.” Cold War Museum, Inc. v. Cold War Air Museum, Inc., 86 F.3d 1352, 16 1356 (Fed. Cir. 2009). To rebut this presumption, a party seeking to invalidate a Section 2(f) 17 registration must produce sufficient evidence for the trier of fact to conclude that the party has 18 rebutted the mark’s presumption of acquired distinctiveness by a preponderance of the evidence. 19 Id. ITX clearly bears the burden to produce evidence that the AirWair Trade Dress lacks secondary 20 meaning, but ITX has not met this burden. Instead ITX insists that “Plaintiffs have no evidence of 21 secondary meaning.” Dkt. No. 80 at 25. The absence of evidence is not evidence of absence. ITX 22 does not provide concrete evidence that the ‘689 and ‘692 registrations do not have secondary 23 meaning. 24 Accordingly, the Court DENIES ITX’s motion for summary judgment. 25 26 B. Plaintiff AirWair’s Motion for Summary Judgment (Dkt. No. 74) 27 AirWair moves for partial summary judgment on the ground that no triable issue of material 1 generally Dkt. No. 74 (Mot. for Summary Judgment). Specifically, AirWair moves on the first 2 counterclaim (declaration of invalidity), the third counterclaim (cancellation of marks), the fifth 3 affirmative defense (invalidity), the third affirmative defense (equitable defenses), and the fourth 4 affirmative defense (fair use). Id. 5 ITX argues AirWair is not entitled to summary judgment because (1) ITX has rebutted any 6 presumption of validity for AirWair’s ‘689 and ‘692 registrations, (2) AirWair’s arguments 7 regarding its yellow welt stitching are irrelevant, (3) AirWair’s trade dress is functional, (4) 8 AirWair’s trade dress is generic, and (5) AirWair’s trade dress lacks secondary meaning. Dkt. No. 9 91 at 1 (Opp’n). 10 11 1. Invalidity Claims 12 The Court will first address the claims that AirWair refers to as the “invalidity claims” – the 13 first counterclaim (declaration of invalidity), the third counterclaim (cancellation of marks), the fifth 14 affirmative defense (invalidity). AirWair’s motion for summary judgment on these claims will be 15 denied because there are multiple contested issues of material fact. 16 These claims all rest upon the argument that AirWair’s trade dress is invalid because the 17 trade dress is functional and generic. Validity is a threshold issue. KP Permanent Make-Up, Inc. 18 v. Lasting Impression I, Inc., 408 F.3 596, 604 (2005). “The plaintiff in an infringement action with 19 a registered trademark is given the prima facie or presumptive advantage on the issue of validity, 20 thus shifting the burden of production to the defendant to prove otherwise.” Id. (internal citations 21 omitted). 22 ITX has presented some evidence to undermine the presumption that AirWair’s Trade Dress 23 is valid, in an effort to demonstrate that “AirWair’s alleged trade dress is generic, functional, and 24 lacks secondary meaning.” Dkt. No. 91 at 12. In particular, ITX’s expert Caroline de Baere opines 25 that AirWair’s trade dress is functional, which, if accepted by the trier of fact, would preclude 26 validity. 27 Whether a mark is generic is a question of fact. Stuhlbarg Intern. Sales Co., Inc. v. John 1 Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1273 (Fed. Cir. 2002). However, 15 2 U.S.C. § 1119 provides that “in any action involving a registered mark the court may determine the 3 right to registration, order the cancelation of registrations, in whole or in part, restore canceled 4 registrations, and otherwise rectify the register with respect to the registrations of any party to the 5 action.” “[D]istrict courts can cancel registrations during infringement litigation, just as they can 6 adjudicate infringement in suits seeking judicial review or registration decisions.” B & B Hardware, 7 Inc., v. Hargis Industries, Inc., 575 U.S. 138, 155 (2015). “[A]ny ground that would have prevented 8 registration in the first place qualifies as a valid ground for cancellation.” Pinkette Clothing, Inc. v. 9 Cosmetic Warriors Limited, 894 F.3d 1015, 1021 (9th Cir. 2018) (internal quotations omitted); see 10 15 U.S.C. § 1064(1). “Federal courts may cancel registrations based on the same grounds that would 11 be applied by the U.S. Patent and Trademark Office.” Petroliam Nasional Berhad v. GoDaddy.com, 12 Inc., 897 F. Supp. 2d 856, 870 (N.D. Cal. 2012). 13 ITX seeks cancellation, arguing the ‘689 and ‘692 registrations are generic and functional. 14 See generally Dkt. No. 80. However, genuine issues of fact remain regarding the genericness and 15 functionality of the ‘689 and ‘692 registrations. Accordingly, this Court must deny AirWair’s 16 motion for summary judgment on ITX’s first counterclaim (declaration of invalidity), third 17 counterclaim (cancellation of marks) and fifth affirmative defense (invalidity). 18 19 2. Affirmative Defenses 20 AirWair moved for summary judgment on ITX’s third and fourth affirmative defenses 21 Subsequently ITX dismissed portions of the third affirmative defense (estoppel, laches and statute 22 of limitations), rendering the motion moot as to them.. As to the fourth affirmative defense, fair 23 use, ITX did not address the question in its opposing papers and AirWair’s motion on that defense 24 will be granted. 25 ITX apparently still pursues its unclean hands equitable defenses, arguing that “ITX has 26 adduced evidence that AirWair committed fraud in obtaining its registrations for the alleged trade 27 dress.” Dkt. No. 91 at 23 (Opp’n). However, these claims are unsupported as a matter of fact and 1 Fraud in the procurement of a trademark registration may be raised as an affirmative defense 2 to a charge of infringement of a registered mark. 15 U.S.C. § 1115 (b)(1). The Ninth Circuit requires 3 clear and convincing evidence for the elements of fraud on the United States Patent and Trademark 4 Office. OTR Wheel Engineering, Inc. v. West Worldwide Services, Inc., 897 F.3d 1008, 1020 (9th 5 Cir. 2018). There is no room for speculation, inference or surmise. In re Bose Corp., 580 F.3d 6 1240, 1243 (Fed. Cir. 2009). 7 ITX suggests that refusals of prior trade dress applications indicate AirWair “deceptively 8 mislead the USPTO into registering” the ‘689 and ‘692 marks. Dkt. No. 80 at 15. The evidence 9 ITX presents to substantiate this claim of fraud consists of two trademark application refusals from 10 1994 and one trademark application refusal from 2007. Dkt. No. 80 at 10-13 (Mot. for Summary 11 Judgment). A trademark examiner’s determination of different marks’ ability to function as a 12 trademark from twenty-seven and fourteen years ago is irrelevant and unpersuasive. Secondary 13 meaning determinations made by a trademark examiner twenty-seven years prior, are not 14 determinative of the current secondary meaning acquired by AirWair’s Trade Dress. An examiner 15 clearly determined that the ‘692 and ‘689 marks had enough secondary meaning to afford them 16 registration in 2016. Marks registered on the Principal Register shall be prima facie evidence of the 17 validity of the registered mark. 15 U.S.C. § 1115 (a). Further, “the presumption of validity that 18 attaches to a Section 2(f) registration includes a presumption that the registered mark has acquired 19 distinctiveness.” Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1356 (Fed. 20 Cir. 2009). Accordingly, the Court finds that there is no genuine issue of material fact regarding 21 ITX’s unclean hands affirmative defense. 22 The Court finds there are genuine issues of material fact in this suit regarding the first 23 counterclaim (declaration of invalidity), the third counterclaim (cancellation of marks), and the fifth 24 affirmative defense (invalidity). The Court finds that there is no genuine issue of material fact 25 regarding ITX’s equitable affirmative defenses or fair use. Accordingly, AirWair’s partial motion 26 for summary judgment is GRANTED in part and DENIED in part. 27 1 CONCLUSION? 2 For the foregoing reasons and for good cause shown, the Court hereby DENIES the motions 3 to exclude Bertrand Guillaume, Robert L. Klein, and Susan Schwartz McDonald, GRANTS the 4 motion to exclude David Franklyn, DENIES IN PART and GRANTS IN PART the motion to 5 || exclude Caroline de Baére, DENIES ITX’s motion for summary judgment, DENIES IN PART and 6 || GRANTS IN PART AirWair’s motion for summary judgment, and GRANTS the motion to file 7 under seal. 8 9 IT IS SO ORDERED. 10 || Dated: July 12, 2021 Site WU tee 11

SUSAN ILLSTON

12 United States District Judge

15 16 & = 17

Z 18

19 20 21 22 23 24 25 26 27 28 > Airwair’s motion to seal is GRANTED. Dkt. No. 72