U.S. District Court Denies Daubert Motion To Exclude SEO Expert Witness In Trademark Case

Court – United States District Court for the District of IdahoJurisdiction – FederalCase Name – Nelson-Ricks Cheese Co. v. Lakeview Cheese Co., LLCCitation – 331 F. Supp. 3d 1131

This case involves two parties that owned and operated various assets that formerly belonged to the defunct business entity, Nelson-Ricks Creamery Company. The dispute pertains specifically to trademark infringement of the wordmark “Nelson-Ricks Creamery Company.” The court ultimately determined that an individual may serve the dual role of both an expert witness and a fact witness in a case.

Facts

Prior to 2012, Nelson-Ricks owned facilities in Salt Lake City, Utah and Rexburg, Idaho. The creamery also owned certain intellectual property including both the “Banquet” and “Nelson-Ricks Creamery” brand names of cheese. In 2012, Lakeview Cheese Co. (the defendant) purchased both the Salt Lake City facility and the Banquet brand from Nelson-Ricks. The sale included the transfer of Creamery’s www.banquetcheese.com website to the defendant. The sale also included a limited license allowing the defendant to make use of the Nelson-Ricks Creamery brand name. In 2014, Nelson-Ricks sold the Rexburg facility and the Nelson-Ricks Creamery brand to NRCC Asset Acquisition LLC, an affiliate of NRCC, the plaintiff.

NRCC claimed this matter centered on the “About Us” webpage from the Creamery’s original www.banquetcheese.com website. The “About Us” webpage detailed the Creamery’s history, story, and the historical affiliation of Nelson-Ricks Creamery Company and the Banquet brand. In 2014, contemporaneously with the Creamery’s sale to NRCC Asset Acquisition, the Creamery terminated the defendant’s limited license agreement to use the mark. As a result, the defendant updated the Creamery’s website to remove the “About Us” webpage, making it no longer accessible via www.banquetcheese.com.

Approximately one year later, the plaintiff obtained trademark registration for “Nelson-Ricks Creamery Company.” One year later, it occurred to the plaintiff that even though the “About Us” webpage was no longer linked to the www.banquetcheese.com website, if manually typed into a web-browser, a person could still access the page containing the trademarked “Nelson-Ricks Creamery Company” mark. The plaintiff sent the defendant a cease and desist letter demanding that the information be changed or taken down. The defendant altered the “About Us” page and removed any reference to Nelson-Ricks Creamery. Thereafter the plaintiff approached the District Court alleging 6 trademark infringement claims against the defendant.

Lakeview moved for summary judgment on all counts. Additionally, in evaluating summary judgment, Lakeview asked the court to exclude from consideration the testimony of two of NRCC’s experts.

The Expert

The plaintiff listed the CEO of NRCC as an expert witness in the case. The CEO had been in the cheese industry for over 40 years and submitted an affidavit regarding customer confusion and damages. The plaintiff also quoted extensively from the CEO’s deposition on these two topics in support of its proposition that the defendant’s infringement caused confusion and thus damages. The court observed that as CEO, the expert would be extensively knowledgeable about both these topics. However, this testimony did not involve any expertize beyond the fact that the expert was the CEO of NRCC. The defendant moved to exclude the expert’s opinion and testimony based upon Federal Rule of Evidence 702, claiming the CEO expert’s testimony was not based upon sufficient facts or data.

Held

The court held that an individual may serve the dual role of both an expert witness and a fact witness in a case. The statements the expert had given were from his perspective as CEO of the plaintiff company. Therefore, the court allowed the expert’s testimony as a fact witness on summary judgment and did not exclude his opinions.

The plaintiff also called another witness who was the President and Owner of Business Research International DBA Bizresearch, a boutique online search-marketing agency. The expert was also the CEO of SMI Analytics DBA Bizwatch, an auditing and reporting the software company. The expert specialized in search engine optimization (SEO), a marketing discipline focused on the visibility of search engine results.

The SEO expert’s ultimate opinion was that there existed a potential for confusion based upon her analysis of visibility. The court observed that mere speculation was insufficient to support an expert opinion. An expert’s opinions and conclusions, which were based on nothing more than speculation, cannot constitute substantial evidence. The court further observed that expert testimony based on mere “subjective belief or unsupported speculation” was inadmissible.

However, the court did not find the basis for the expert’s opinions suspect. However, the results were of little consequence to the motion for summary judgment. Therefore, the court was not inclined to exclude the testimony of the SEO expert.

The defendant’s motion to exclude the testimony of the expert was denied.