1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 STONE BREWING CO., LLC, Case No.: 3:18-cv-00331-BEN-MDD

11 Plaintiff,

ORDER ON MOTION TO EXCLUDE

12 v. TESTIMONY OF SCOTT WHITLEY

AND MATTERS TO BE

13 MILLERCOORS LLC,

DETERMINED BY THE COURT OR

14 Defendant. THE JURY

15 [ECF No. 504] 16 Plaintiff Stone Brewing Co., LLC (“Stone”) moves this Court to exclude testimony 17 from Mr. Scott Whitley, a former employee of Defendant MillerCoors LLC 18 (“MillerCoors”). ECF No. 504. In addition to the motion to exclude, the parties filed 19 trial briefs on issues to be determined by the Court vice issues to be determined by the 20 jury. ECF Nos. 493, 494. The Court addresses each matter below. 21

I. Motion to Exclude Testimony of Scott Whitley

22 In October of 2021, three weeks before trial was originally scheduled to begin, 23 MillerCoors amended its witness list to include Mr. Whitley, a member of the 24 MillerCoors’ sales team in the early 1990’s with knowledge of the marketing and sales of 25 Keystone beer. Pl.’s Mot., ECF No. 504, 6. MillerCoors states Mr. Whitley was not 26 identified as a witness until October of 2021, thus the late addition to the witness list. Id. 27 MillerCoors states that as soon as Mr. Whitley was identified, Stone was notified of the 28 1 change to MillerCoors’ witness list. Def.’s Opp’n., ECF No. 509, 6. In response to 2 Stone’s objections regarding Mr. Whitley’s late addition to the witness list, the Court 3 allowed Stone to depose Mr. Whitley. Id. Stone completed its deposition of Mr. Whitley 4 on November 19, 2021. ECF No. 505, 16. 5 The Federal Rules of Civil Procedure require parties to provide to other parties 6 “the name . . . of each individual likely to have discoverable information—along with the 7 subjects of that information—that the disclosing party may use to support its claims or 8 defenses.” Fed.R.Civ.P. 26(a)(1)(A)(i). And “[a] party who has made a disclosure under 9 Rule 26(a) . . . must supplement or correct its disclosure” in a “timely manner if the party 10 learns that in some material respect the disclosure . . . is incomplete or incorrect, and if 11 the additional or corrective information has not otherwise been made known to the other 12 parties during the discovery process or in writing.” Id. R. 26(e). A party that does not 13 timely identify a witness under Rule 26 may not use that witness to supply evidence at a 14 trial “unless the failure was substantially justified or is harmless.” Id. R. 37(c)(1); see 15 also Yeti by Molly, 259 F.3d at 1105. Indeed, Rule 37(c)(1) is “intended to put teeth into 16 the mandatory . . . disclosure requirements” of Rule 26(a) and (e). 8B Charles Alan 17 Wright & Arthur R. Miller, Federal Practice and Procedure § 2289.1 (3d ed.2014). 18 Among the factors that may properly guide a district court in determining whether a 19 violation of a discovery deadline is justified or harmless are: (1) prejudice or surprise to 20 the party against whom the evidence is offered; (2) the ability of that party to cure the 21 prejudice; (3) the likelihood of disruption of the trial; and (4) bad faith or willfulness 22 involved in not timely disclosing the evidence. Lanard Toys Ltd. v. Novelty, Inc., 375 F. 23 App'x 705, 713 (9th Cir. 2010). 24 This Court does not find that MillerCoors acted in bad faith in its late notice of Mr. 25 Whitley, and any prejudice Stone may have suffered was cured by being able to depose 26 Mr. Whitley. To the extent that Stone argues Mr. Whitley’s deposition opened the door 27 to several other potential witnesses they now seek to depose, this Court offered Stone the 28 option of continuing the trial date to reopen discovery. Stone declined. ECF No. 529, 1 32. Stone has had adequate time to prepare for Mr. Whitley’s testimony and to the extent 2 Stone seeks to question his credibility, cross-examination is appropriate, not exclusion. 3 Stone’s motion to exclude the testimony of Scott Whitley is DENIED. 4 II. Disgorgement of Profits 5 The parties agree that a calculation of disgorgement of MillerCoors’ profits, if 6 necessary, must be done by the Court. See 15 U.S.C. § 1117. Stone, however, asks this 7 Court to put the issue to the jury in an advisory capacity. ECF No. 493, 17. Stone points 8 to the Ninth Circuit’s model jury instruction for this issue and argues that calculation by 9 the jury is appropriate because it “is intertwined with facts, data, and evidence also 10 relevant to the calculation of damages.” Id. Here, though, the Court finds there to be 11 little benefit, but significant burdens, in sending this matter to the jury when the Court 12 would still be required to perform its own de novo calculations. Should a calculation of 13 disgorgement of MillerCoors’ profits be required, the matter will not go to the jury in an 14 advisory capacity. 15 III. MillerCoors’ Prior Registration Defense 16 The Court finds MillerCoors’ prior registration defense not relevant to the facts of 17 this case. MillerCoors asserts the defense based on registering KEYSTONE before Stone 18 registered STONE. But these are two separate trademarks. There is no dispute that 19 MillerCoors does not have a prior registration, or any registration, of the STONE or 20 STONES marks. Nor does it appear that Stone is attempting to prevent MillerCoors from 21 using the KEYSTONE trademark. The Court will not consider MillerCoors’ proposed 22 prior registration defense. 23 IV. Waiver Defense 24 MillerCoors avers waiver is a legal issue to be decided by the jury. ECF No. 494, 25 4. Stone argues waiver is an equitable defense appropriate for the Court’s consideration. 26 ECF No. 493, 10. Stone also argues that waiver is not appropriate in this case as this 27 Court rejected MillerCoors’ laches argument on summary judgment. Id. at 9; Order on 28 Mot. Summ. J., ECF No. 360. This Court’s rejection of MillerCoors’ laches defense does 1 not foreclose consideration of waiver. On the issue of waiver being a court or jury 2 matter, though, this Court finds waiver to be an equitable issue appropriate for the 3 Court’s determination. See Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 4 2016 WL 10933024, at *3 (S.D. Cal. Mar. 25, 2016). 5 V. Stone’s Unfair Competition Claim 6 Stone contends its fifth claim for relief for unfair competition is both a common 7 law claim and statutory claim. ECF No. 493, 16. MillerCoors asserts Stone’s unfair 8 competition claim is only statutory and thus should be decided by the Court. ECF 494, 8. 9 The Court agrees with MillerCoors. 10 Stone’s argument relies on Duncan v. Stuetzle (76 F.3d 1480 (9th Cir. 1996)). In 11 Duncan, the Ninth Circuit addressed a jurisdictional issue that partially turned on whether 12 the plaintiff’s unfair competition claim was a federal Lanham Act claim or state unfair 13 competition claim. The court rejected defendant’s argument that plaintiff’s claim must 14 be federal by pointing out that the California statute, like the Lanham Act, allowed for 15 injunctive relief. Id. at 1489-90. The court also noted plaintiff’s pleading included a 16 prayer for compensatory damages that would only be available as a remedy under state 17 common law. Id. Based on these factors, the court found plaintiff’s claim was based on 18 state law on both statutory and common law grounds. Id. Because Stone’s complaint 19 also references “damages in an amount to be proven at trial” (Complaint, ECF No. 1, ¶ 20 95), Stone argues its claim covers both statutory and common law claims. 21 This case is clearly distinguishable from Duncan, however, in that Stone’s 22 complaint references the specific provision of the California statute under which relief is 23 sought. In Duncan, the court was left to guess under what basis relief the plaintiff sought 24 relief. “There are no federal statutes, rules, regulations, or cases cited at any point in the 25 complaint.” Duncan, 76 F.3d at 1486. There are no such ambiguities here. Stone is the 26 master of its complaint. Given the option to cite the basis of its sought-after relief, Stone 27 chose only Section 17200 of the California Business and Professions Code. In paragraph 28 94 of its complaint, Stone asserts MillerCoors’ use of the STONE mark was done in a 1 |}manner that “constitutes unfair competition within the meaning of Cal. Bus. & Prof. Code 2 §17200.” ECF No. 1, 94. Much like in the caption to the claim for relief, Stone could 3 added a reference to California common law; it did not. Stone’s claim that it 4 ||“‘suffered damages in an amount to be proven at trial” (id. at § 95) does not negate the 5 || plain language of the complaint indicating a statutory, and only statutory, claim. 6 As there is only a statutory claim, the Court will make the determination on this 7 purely equitable matter. See Nationwide Biweekly Admin., Inc. v. Superior Ct. of 8 || Alameda Cty., 9 Cal. 5th, 279, 299-301 (2020). 9 IT IS SO ORDERED. "

10 Dated: March 1, 2022 1 ON. ROGER T. BENITEZ United States District Judge 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28