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Whether a witness is qualified as an expert is a threshold question that precedes the court's relevance and reliability inquiries. Rule 702 states that a witness may be "qualified as an expert by knowledge, skill, experience, training, or education. Accordingly, even if a proposed expert lacks formal training in a given area, he may still have practical experience or specialized knowledge that qualifies him to give opinion testimony. However, if the witness is relying solely or primarily on experience, then he must explain how that experience leads to the conclusion reached, why that experience is a sufficient basis for the opinion, and how that experience is reliably applied to the facts. Where a witness's expertise is too general or too deficient, the Court may properly conclude that he is insufficiently qualified.
In this trademark lawsuit, two fashion companies go toe-to-toe over the right to affix a metal plate to the toe of luxury men's sneakers. Plaintiff LVL XIII Brands, Inc. is a company that manufactures, markets, and sells men's luxury athletic footwear. Plaintiff brings this action against defendants Louis Vuitton Malletier S.A. and Louis Vuitton North America, Inc. (collectively, LV). Plaintiff claimed that defendants, through its marketing and sale of the On the Road Sneaker, infringed plaintiff’s trademark rights in a metal toe plate which was featured on all shoes in plaintiff’s first sneaker collection. Plaintiff filed a complaint against defendant and sought damages and an injunction barring the defendants from selling footwear bearing the allegedly infringing toe plate. In response, defendants brought counterclaims for a declaratory judgment, that plaintiff has no exclusive right in the shape of a rectangular metal toe plate and that an injunction requiring plaintiff to disclaim the non-distinctive elements of the TP. Plaintiff retained Charles E. Colman to provide an expert report and testimony on the issues of inherent distinctiveness and secondary meaning with regard to the TP. Defendants moved to preclude the report and testimony of plaintiff’s expert witness. Plaintiff filed an opposition thereto and also moved to preclude the testimony of defendant’s expert witness which the defendant opposed the same.
Should the defendant’s motion to preclude the report and testimony of plaintiff’s expert witness be granted?
Yes. On this issue, the Court ruled in favor of the defendants.
The court held that although plaintiff’s expert witness’ experience and education may qualify him as an expert in certain areas of fashion history and intellectual property law, plaintiff has not shown how such expertise qualifies him to testify as to the central, and largely empirical, issue addressed in his report: whether the TP acquired secondary meaning. Under these circumstances, the Court is not persuaded that plaintiff’ expert witness can offer opinion testimony as to whether the TP achieved secondary meaning that is anything other than conjecture. The Court, therefore, held that he was not qualified to offer expert testimony on this issue. In sum, the Court held that plaintiff’s expert witness’ report and testimony were inadmissible for at least three independent reasons: first, the expert witness was not qualified to offer the proffered testimony; second, his opinions were unhelpful and unreliable because they did not fit the facts of this case. Lastly, he did not use a reliable methodology. The Court, therefore, granted defendant’s motion to preclude plaintiff’s expert witness report and testimony in its entirety.