J. Michael Keyes

The Dorsey Trademark, Copyright + Advertising team and the IP Litigation team attended the 2026 International Trademark Association Annual Meeting in London. The Dorsey team was represented by seventeen attorneys from Dorsey’s Minneapolis, Denver, Seattle, Dallas, New York, London, Hong Kong, and Beijing offices. We thoroughly enjoyed our time in London and want to share some highlights from the meeting: Dorsey’s Reception – Dorsey’s annual INTA reception took place at the Churchill War Rooms, the remarkable underground headquarters where Winston Churchill and Britain’s wartime leadership coordinated military strategy during World War II. Tucked beneath the streets of Westminster and preserved largely as it was left in 1945, the War Rooms offered guests a rare opportunity to step inside a pivotal piece of history while connecting with colleagues, clients, and friends of the firm. From the historic Cabinet Room to the map-lined operations center and exhibits chronicling Churchill’s leadership, the venue provided an unforgettable backdrop for conversation and networking. The combination of a world-class setting, strong attendance, and an international group of guests made the reception one of the standout social events of INTA week and a memorable way to celebrate Dorsey’s relationships across the global trademark community. Thank you to everyone who joined us at the reception and to the team who made the evening such a success! It was a pleasure to welcome guests to London during such an important week for the global IP community. Dorsey’s LanhamAITM Platform – As trademark practitioners know, consumer surveys testing for a likelihood of confusion are becoming increasingly prominent and important in federal court litigation and in proceedings before the Trademark Trial and Appeal Board. Since 2022 alone, approximately one-third of court decisions addressing consumer surveys and related expert reports criticize or exclude the research. Mike Keyes, consumer survey expert and the head of Dorsey’s Consumer Insights Group, and Connor Hansen, a Partner in Dorsey’s IP Litigation Group, debuted LanhamAITM during the INTA conference. LanhamAITM is an AI-powered platform developed by Dorsey to instantly analyze consumer survey research and deliver a curated analysis of how courts have evaluated similar research. It identifies potential flaws in the survey design, methodology, expert qualifications, and other common pitfalls identified by the courts. The platform has already proven to be a valuable tool for the Dorsey team and we are excited for its potential as we continue to refine and expand its capabilities. Digital Advertising Panel – Dorsey Partner Tiffany Shimada was a speaker on a panel entitled Digital Advertising Under the Microscope: AI Claims, Dark Patterns, and Global Legal Trends. The panel discussed current case law developments around the world, including background and case law progeny of DABUS, and specifically ownership of AI created content through the lens of patent, trademark and copyright laws around the world and how regulatory bodies are influencing the landscape through the confluence of consumer and financial protection laws. Of note was agentic AI and how brands can and should plan for optimization of AI agents in marketing to AI consumers, including machine-readable specs, structured data, and value propositions that resonate with algorithms in addition to human consumers. Regarding risks, the panel addressed scrutiny over AI washing and regulatory responses to AI washing claims. In particular, the panel addressed the U.S. Federal Trade Commission’s aggressive response to false and exaggerated claims of AI saving consumers and businesses money and efficiencies without proper substantiation. Such claims open the advertiser to actionable claims under Section 5 of the FTC for false and misleading advertising. Further, there is heightened risk for consumers of dark patterns, whereby AI optimizes manipulative interfaces at scale, personalizing friction and choice architecture, and drawing additional regulatory scrutiny for advertisers whether they engage directly or indirectly in dark patterns. In recent high-profile cases, dark patterns have led brands to pay high financial damages as well as reputational damage, which is difficult to predict and even harder to overcome once the damage has occurred and consumer impressions have formed. Addressing the more practical aspects of using AI, the panel discussed advertising around the world and risk management for IP professionals coordinating global branding and marketing programs, including review of contractual provisions internally as well as for vendors, partners, and talent who may be utilizing AI in their products and services. Finally, the panel discussed how to manage IP portfolios and technology within existing global legal frameworks by keeping humans at the forefront of the process, documenting contributions as between humans and AI in the creation of IP, and making adequate disclosures—all while considering evolving consumer perceptions and technological developments. The panel was moderated by Jayde Wood, a Partner at Gowling WLG (Canada) LLP. And Tiffany was joined on the panel by speakers Ryan Abbott from the University of Surrey Law School and Enrico Bonadio, Professor of Law, City St. George’s University of London. Law Firm Committee Meeting – Cathy Dahl provides the following update of the Law Firm Committee meeting, held on May 5, 2026, at the Excel London: We had a great turnout for the Law Firm Committee meeting in London! The LFC focuses on the development of member benefits, services and educational programs specifically for law firms, with a particular focus on materials for mid-level associate and management-level IP professions. Key focuses for the LFC include looking forward to the future of law firms and their technological needs, particularly in connection with artificial intelligence, and providing insight and strategies to best position law firms for success. Cathy is part of the Mid-Level Law Firm Professionals Subcommittee and leads the Career Pathways project team. The focus for the project team this term is to continue to develop materials that concentrate on options available to mid-level associates, including non-partnership and partnership tracks in a law firm, in-house legal opportunities, alternative careers in a law firm or complementary thereto, and how to navigate and identify potential opportunities based on individual goals and life circumstances. The overall messaging is that creating a career path should be individually intentional and that law firms must be ready to work with legal talent to create pathways that are both individually rewarding and that also benefit the firm. Refurbishment of Genuine Goods in Korea – Judge Young Gi Kim of the Intellectual Property High Court discussed a recent Korean Supreme Court decision clarifying that refurbishment of genuine goods at the owner’s request for personal use does not constitute trademark infringement, as there is no use of the mark as a source identifier. However, the Court emphasized that this will depend on the facts. Where the refurbishing party plays a leading role, such that the activity goes beyond a personal service and begins to resemble commercial production, infringement may still arise. Relevant factors include control over design, ownership of the finished product, material sourcing and whether the goods enter commercial circulation. The discussion also noted the courts’ increasing willingness to award enhanced damages in cases of willful infringement. Damages and Injunctive Relief in Japan – A judge from the Tokyo District Court, Intellectual Property Division, highlighted recent cases illustrating the Japanese courts’ pragmatic approach to enforcement. In particular, it was noted that where a defendant refuses to produce financial records, courts may rely on the plaintiff’s asserted figures as the basis for assessing damages, and may adjust royalty rates upward in light of bad faith conduct. In a separate Zoom case, the Tokyo District Court awarded damages for an earlier period of infringement but declined injunctive relief. While the marks were found to be similar, the court considered that the defendant’s mark had, over time, particularly during the COVID‑19 pandemic, gained sufficient independent recognition such that the likelihood of confusion had diminished. These examples highlight the Japanese courts’ flexible approach, both in addressing evidential issues and in assessing remedies by reference to evolving market realities.

This post was originally published on the Lanham Act Surveys for Lawyers newsletter. Seven years ago today, Jack Daniel's was no doubt riding high. The U.S. District Court for the District of Arizona gave Jack a big shot in the arm with a trademark infringement and dilution victory over Bad Spaniel's mimicry: VIP Prods., LLC v. Jack Daniel's Props, 291 F. Supp. 3d 891, 907 (D. Ariz. 2018). One of the key pieces of evidence relied upon by the trial court was a consumer survey showing 29% of potential purchasers were "likely to be confused" by Bad Spaniels. Id. In fact, the court gave that survey evidence "prevailing weight" and found trademark infringement in favor of Old. No. 7. Id. Fast forward to just last week. After two stints at the Ninth Circuit and one big trip at the Supreme Court, Jack Daniel's and Bad Spaniel's were back before the trial court on remand. This time, though, the trial court gave the survey evidence "little weight" and rejected Jack Daniel's trademark infringement claim (but not its dilution claim). VIP Prods. LLC v. Jack Daniel's Props. Inc, No. CV-14-02057-PHX-SMM, 2025 U.S. Dist. LEXIS 11866, at *75 (D. Ariz. Jan. 21, 2025). Exact same judge. Exact same survey. Exact opposite conclusion seven years later. Was this some sort of judicial variant of the seven year itch? Not exactly. The answer for the trial court's change of heart is this: Justice Sotomayor's concurring opinion back when this trademark tussle was before the U.S. Supreme Court two years ago. As you may recall, Justice Sotomayor wrote a concurring opinion to address Jack Daniel's consumer survey evidence presented at trial. Jack Daniel's Props. v. VIP Prods. LLC, 599 U.S. 140, 164 (2023). She opined that, "[s]urvey answers may reflect a mistaken belief among some survey respondents that all parodies require permission from the owner of the parodied mark." Id. She observed that some of the answers to the survey in this case apparently illustrated this "potential." Id. (citing two survey respondent answers stating, "I’m sure the dog toy company that made this toy had to get [Jack Daniel’s] permission" and "[t]he bottle is mimicked after the Jack Daniel BBQ sauce. So they would hold the patent therefore you would have to ask permission to use the image”). She then expressed this concern: Allowing such survey results to drive the infringement analysis would risk silencing a great many parodies. Well-heeled brands with the resources to commission surveys would be handed an effective veto over mockery. Id. at 164. On remand, the trial court acknowledged Justice Sotomayor's concerns, and found them persuasive. VIP Prods. LLC, 2025 U.S. Dist. LEXIS 11866, * 74. As a result, the trial court concluded that because this same survey "may not have accounted for the fact that 'Bad Spaniels' is a parody," it received "little weight." Are the concerns expressed by Justice Sotomayor and the trial court justified? There are some pretty compelling legal and factual arguments that the answer is "no." We will address those in our next issue, Jack Daniel's Remand, Part II. Stay tuned! Here you will find: the trial court's original decision, Justice Sotomayor's concurrence, and the trial court's decision on remand.

Welcome to the final chapter of our Burger War Trilogy. In our earlier installments, Part I and Part II, we discussed the secondary meaning surveys proffered by both parties in this trade dress dispute. We now turn to In-N-Out’s likelihood of confusion study in this case as it provides the perfect opportunity to discuss a decision that trial counsel and their consumer survey experts routinely grapple with: To Squirt, or Not to Squirt, that is the question. Before discussing that question in the context of this dispute, a slight detour is in order. Broadly speaking, there are two types of generally accepted consumer survey formats when testing for “likelihood of confusion” in trade dress and trademark cases. There is the “Eveready” format, and the “Squirt” format. The Eveready format has been referred to as the “gold standard” when the senior user’s trade dress or trademark is a commercially strong mark. In an Eveready survey design, the senior user’s mark or trade dress is not shown to survey respondents as part of the survey and is assumed to be known to most of the relevant consumers and thus already in mind. Instead, respondents are just shown the (allegedly) offending trademark or trade dress and asked a series of questions regarding who they believe makes or puts out the product or service at issue or who the product or service might be affiliated with. By contrast, the Squirt design shows both parties’ trademarks (either juxtaposed together at once or separately seriatim) and asks a series of questions as to whether the survey respondents believe there is an affiliation or connection between the products or the companies that put them out. Neither format is necessarily a panacea in all cases. Some courts criticize the use of the Eveready format in cases where the senior user’s mark is not commercially strong because it artificially deflates confusion on the theory that not enough respondents are familiar with the senior user’s mark to draw a connection with the junior user’s mark. See e.g., Vineyard House, LLC v. Constellation Brands United States Operations, Inc., 515 F. Supp. 3d 1061, 1072 (N.D. Cal. 2021) (noting the “[w]here the query concerns marks for everyday products, used by vast majority of consumers, such as Apple, Coca-Cola, or EverReady, the short simple survey can provide some insights. That is not, and never was, this case.”); but see Hal Poret’s study in the Trademark Reporter where he concludes that “the research described herein empirically demonstrates that Eveready surveys may be appropriate for senior marks that are not top-of-mind.” The Squirt format can create “demand effects” by suggesting to consumers that there must be a connection between the two companies whose products they have just been shown. A number of courts have suggested that unless the two products are actually sold or marketed in close proximity in the marketplace, a Squirt design should not be used. See e.g., Down the Hatch: Jägermeister Douses Impaired Survey Evidence in Trademark Victory. In the present case, In-N-Out’s expert used the Squirt design in which images of the In-N-Out and Doll N’ Burger restaurants were shown seriatim, and her survey took a bit of grilling from the opposing party for doing so. The primary argument advanced by Doll N’ Burger’s expert (who used an Eveready format for his own defensive likelihood of confusion survey) is that the parties’ goods are not sold in the same geographic markets. Thus, because consumers are not likely to encounter them in close proximity in the marketplace, the Squirt design should not be used, or so went the argument. Notwithstanding these and other alleged deficiencies, the Court ultimately ruled that Plaintiff’s expert’s decision to use Squirt was a “judgment call” and that the wisdom of that call is for the fact finder. Also, the Court observed that Doll N’ Burger’s expert had used a similar Squirt design in a recent case where the two companies “d[id] not serve the same geographic regions.” In non-judicial parlance, what’s good for the goose is good for the gander. Here are some final thoughts on this burger bonanza: Use of either the Squirt or Eveready survey designs should be carefully considered by trial counsel and their experts and the pluses and minuses of both designs should weighed and assessed based on the marketplace context of the dispute. Trial counsel should be mindful of statements being advanced by an expert in your case vs. what the expert may have said or survey designs chosen by the expert in prior cases. Having a thorough, detailed discussion of the rebuttal points being advanced by the expert will be important. Don’t rule out reviewing prior reports and declarations of the expert - although it could be a bit time consuming, it could prove to be illuminating and prepare the expert for anticipated cross-examination or critiques. Lastly, the Court’s decision is a whopper of a Daubert order. The discussion of survey evidence was over 30 pages long. We did not cover all of the issues set forth in the decision in this three-part series. If you are dealing with survey evidence in a trade dress dispute, you should spend a bit of time devouring this decision along with our prior blog posts. You will leave satisfied!

Last week we introduced our readers to the imbroglio featuring the burger behemoth In-N-Out, who accused upstart Doll N’ Burgers of infringing In-N-Out’s registered and unregistered trade dress. Typical of these sorts of savory squabbles, both sides retained consumer survey experts, both experts took broadsides from the opposing party, and the Court was left to assess the damage. In our previous post, we discussed how the Court’s analysis of Plaintiff’s secondary meaning survey provides some useful sustenance. This week’s special features a discussion of Defendant’s secondary meaning survey and how the claimed deficiencies left the Court asking Plaintiff, “Where’s the Beef?” Here’s how the Court disposed of the issues raised regarding Defendant’s secondary meaning survey: No Trade Dress Secondary Meaning Experience. Plaintiff first alleged the Court should bounce Defendant’s expert because he only had experience designing surveys in trademark disputes, not trade dress disputes. The Court quickly (and correctly) rejected this claim because “[w]hile trade dress involves some unique factors, the legal standards utilized are closely aligned, and the consumer survey methodology used for trademark and trade dress are largely interchangeable.” Excluding Other “Indicator of Source” Elements. As we observed in our previous post, when testing for secondary meaning of trade dress, it is customary to obscure the “brand and company name and other source-identifying indicia” so that the expert can isolate the trade dress at issue and measure consumer reactions to it. Accordingly, Defendant’s expert used various pictures of In-N-Out joints, but removed the “source-identifying indicia” from them, including the trademarked palm trees, the In-N-Out logo, and the fluorescent yellow sign. The Court was not persuaded that this was a fundamental flaw (or even a flaw of any kind). It indicated that this design choice was a “judgment call” and that Plaintiff was free to criticize this approach at trial if it desired to do so. Control Images Were Not “Blatantly Improper.” Plaintiff also took aim at Defendant’s expert’s decision regarding the control stimulus. For the control design, Defendant’s expert simply used the same test stimulus images, but swapped in a “blue and grey” color scheme instead of the red and white color scheme of Plaintiff’s alleged trade dress. The Plaintiff argued that the expert’s control images were “so distinctive” that it pushed survey respondents in a totally different direction towards a rival burger joint altogether, White Castle. While the Court questioned whether Defendant’s expert used a control that would “lean towards” Defendant’s desired outcome, it ultimately concluded that the expert’s decision was not “blatantly improper.” No “Freeloader” Phenomenon in the Survey Universe. Lastly, Plaintiff claimed Defendant’s expert’s survey universe was faulty. In defining who qualified for the survey, Defendant’s expert required respondents to be adults who had recently "personally purchased" a burger from a fast-food restaurant. Plaintiff claimed this universe was too narrow because it excluded “freeloaders” (the Court’s word) who would have dined at a burger joint but on someone else’s dime. In rejecting this argument, the Court observed that it was “highly skeptical that the inclusion of the word ‘personally’ caused any material change in the survey's population or led to bias in its results.” All in all, none of these alleged flaws were sufficient to keep Defendant’s expert out. So now you know “the rest of the story” with regards to the secondary meaning surveys in this case. Stay tuned for our final installment where we discuss both parties’ likelihood of confusion studies and whether they will be In-N-Then-Out of Court. One of Defendant’s Expert's "test" stimuli photos that excluded palm trees (from the cup and the fries holder) because they were other “source-identifying indicia.” Two of Defendant’s Expert's "control" stimuli photos that used a “blue and grey” color scheme. While expressing some skepticism over this design choice, the Court noted the decision was not “blatantly improper.”

A burger brouhaha involving the Lanham Act is well underway in the Wolverine state. Plaintiff In-N-Out Burgers operates hundreds of fast food joints in the West. Defendant Doll n’ Burger recently opened two locations in Michigan. In-N-Out filed suit in Michigan alleging that Doll n’ Burger is infringing In-N-Out’s registered and unregistered trade dress. Both sides retained consumer survey experts, both sides lobbed multiple critiques at their opponent’s surveys, and both sides sought to “Daubert” the other side’s expert. Doll n’ Burger requested a jury “for all jury-triable claims,” and so the Court might be expected to take a close look at alleged flaws in the respective surveys to avoid admitting evidence that is irrelevant to the issues at hand or that could be more prejudicial to the jury than the purported relevance. Instead, U.S. District Court Judge Robert Cleland criticized the approach taken in the competing exclusion motions, saying he viewed “both sides’ scattershot approach to discrediting the opposing expert with a degree of suspicion.” Reminding the parties that there is no such thing as a “perfect” survey and that most methodological flaws in a survey bear on the weight rather than the admissibility of the survey, Judge Cleland considered the “legion” of reasons raised by the parties for keeping the experts out, and found that these reasons amounted to a mere nothing burger. While neither side’s expert was shown the door, the myriad issues raised by the parties are worthy of a deeper dive. In this multi-part series, we discuss some of the more salient issues associated with both parties’ survey experts. We start with some of the major critiques leveled at In-N-Out’s secondary meaning survey. Not Testing Every Trade Dress Element. Doll n’ Burger challenged In-N-Out’s expert’s decision to include in the survey stimuli images of the trade dress that did not include all 9 elements of the Plaintiff’s trade dress. The Court rejected this claim because “Defendants cite no case law supporting their implicit proposition that a survey cannot test the ‘overall appearance’ of a retail establishment unless every possible element of the trade dress is visible in the test images.” Including Other “Indicator of Source” Elements. When testing for secondary meaning of trade dress, it is customary to obscure the “brand and company name and other source-identifying indicia” so that the expert can isolate the trade dress at issue and measure consumer reactions. Doll n’ Burger alleged Plaintiff violated this rule when she failed to remove certain elements in her test stimuli (such as the In-N-Out “Palm Trees”) that also act as an indicator of source. While the Court agreed with the criticism, it determined this methodological flaw would go to the “weight” of the survey and not its “admissibility.” Plaintiff's Expert's "test" stimulus that included palm trees—a source identifier that arguably should have been removed from the stimulus before testing A Close Call on Survey Universe. The composition of the survey’s universe is “one of the most important factors in assessing the validity of a survey as well as the weight it should receive.” Plaintiff’s expert limited her survey universe to respondents situated in the seven western states where In-N-Out operates. But the wrinkle here is that Plaintiff alleged claims for both registered and unregistered trade dress. Thus, Defendant argued, Plaintiff’s expert could not opine on secondary meaning when her survey respondents were only located in the western part of the U.S. The Court ultimately rejected that claim and concluded that: “Plaintiff has two routes to establishing an enforceable, common law trade dress based on acquired secondary meaning. Plaintiff can demonstrate that the look of In-N-Out's restaurants has ‘acquired secondary meaning among some substantial portion of consumers nationally’ or it can use a narrower survey to help establish secondary meaning in a more limited geographic region and still pursue a claim for infringement if it can show Defendants (1) had ‘knowledge of’ the trade dress and (2) ‘intentionally copied it.’” While none of these alleged flaws were beefy enough to keep Plaintiff’s consumer survey expert on the outside looking in, this decision nonetheless provides valuable insight and analysis on some of the key issues that should be considered when it comes to developing survey evidence in trade dress disputes. In our next installment, we will rustle up some more insights for you when we dive into Doll n’ Burger’s secondary meaning survey.

There are two sure-fire ways to maximize the chances that a consumer survey gets bounced out of federal court: (1) surveying the wrong people; and (2) leading them to a desired “correct” answer. Both of these survey maladies were on display in a dispute pending before the U.S. District Court for the Northern District of California in Kudos Inc. v. Kudoboard, LLC. The Court’s recent Daubert order tells a cautionary tale that trial counsel and their experts should be mindful of as they work together in designing a consumer survey for use in a Lanham Act case. The Dispute Plaintiff operates an internet-based software communication platform that enables users to exchange feedback and recognition with other users and owns registered trademarks for “Kudos” that cover these services. Defendant operates an online greeting card company where consumers can create and send digital or printed greeting cards. Defendant’s service is branded “Kudoboard,” for which Defendant also owns a registered mark covering “a website allowing users to create customized online group greeting cards.” Plaintiff sued for infringement; Defendant asserted a number of affirmative defenses. The Survey Plaintiff offered a consumer survey to show that consumers are likely to be confused by Defendant’s use of “Kudoboard.” But Plaintiff’s survey contained two fatal flaws, both of which independently supported the Court’s decision to exclude the survey from evidence. For starters, Plaintiff selected an “under-inclusive” universe of potential survey respondents. Because Plaintiff alleged claims for forward confusion premised on the theory that consumers of Defendant’s services will believe the services originate with or are affiliated in some way with Plaintiff (as opposed to reverse confusion), the proper survey universe is the purchasers of the Defendant’s services (the junior user in the dispute). Here, Plaintiff’s expert surveyed the wrong respondents. Instead of focusing on purchasers of Defendant’s e-greeting card services, the survey universe (or population) was composed “exclusively” of “current users of employee recognition software” – a universe that focused on the Plaintiff’s customer base. While some of these individuals may have also used Defendant’s e-greeting card services, large swaths of potential users were excluded, including “educators, community groups, and casual users.” Thus, as the Court observed, the survey universe was “under-inclusive in that it excluded otherwise qualified consumers, arguably some of the most likely consumers to have knowledge of the products at issue.” For this reason alone, the Court ruled the survey was inadmissible. Further, according to the Court, the survey deployed some “leading” language before respondents were shown the various webpage stimuli (which included Defendant’s website). After being shown Plaintiff’s website (with the Kudos mark), participants were shown three other websites (one of which was Defendant’s), each with text categorizing the products as “employee recognition software products” or “employee engagement software.” The Court said this “statement constitutes a lead-in that departs from simulated market conditions by substantively describing the products that followed.” For this independent reason, the Court excluded the survey. The Conclusion Here are three key take-aways from this decision: While some flaws in a consumer survey go to the “weight” of that evidence, an improperly defined survey universe or a leading survey instrument can affect the survey’s admissibility in the first instance. Selecting the correct survey universe is an absolute must. Trial counsel and their experts need to lock in on this issue and make sure they are on the same page in terms of whose opinions are relevant based on the legal claims at issue. Any survey stimuli should be presented to respondents without any additional frills or superfluous information that might bias or prime them. There is a meaningful difference between providing respondents with information to help them complete a survey (for example, indicating that they can “zoom in” to make a stimulus larger on the screen), and providing them with substantive information that “plants a seed” as to how they should answer a question or how they should “perceive” the services at issue. If you want the Court (and your client!) to give your survey kudos, make sure you avoid these rather sizable pitfalls along the way.

We previously blogged about Airwair Int’l v. Pull & Bear and how Doc Martens successfully challenged Defendant’s expert who opined on secondary meaning and likelihood of confusion. Now, the shoe is on the other foot. Doc Martens’ expert found himself in the hot seat for offering improper legal conclusions regarding Doc Martens’ trade dress rights. Take a load off and read on so you don’t find yourself getting cold feet the next time you are considering using experts in a trade dress dispute. Doc Martens is the purveyor of the wildly popular clunky-soled combat boots and shoes with yellow stitching simply known as “Docs.” As Rolling Stone magazine recently commented, those who have sported Docs over the years “runs the gamut from Eddie Vedder and Morrissey, to Rancid and Rihanna.” Doc Martens owns several trade dress registrations and sued Pull & Bear Espana SA for allegedly selling several styles of footwear that infringe on Doc Martens’ trade dress. Pull & Bear countersued, claiming that Doc Martens’ trade dress rights were invalid. Between the two sides, they retained a small squadron of experts for the purposes of opining, rebutting, and excluding. Doc Martens offered rebuttal expert testimony from a distinguished law professor who, among other things, opined that Doc Martens’ “registered trade dress is unambiguous, valid, and protectable.” He also opined that the registrations “comport with” certain requirements mandated by the USPTO. The Court excluded this rebuttal opinion because an “expert cannot testify to a matter amounting to a legal conclusion." Whether a given trade dress is “presumptively valid” or “enforceable” are ultimately calls for the court to make, not for an expert witness. Similarly, whether a registration comports with USPTO requirements is also a legal conclusion and not appropriate for expert testimony. In walking a mile in Doc Martens’ shoes, we can see where it was possibly headed with this proffered testimony. Federal Rule of Evidence 704 tells us that “[a]n opinion is not objectionable just because it embraces an ultimate issue.” After all, whether a given trade dress is valid and enforceable is certainly one of the “ultimate issues” in any trade dress infringement case. Thus, we could see how trial counsel could find it alluring to have a well-regarded law professor provide a rebuttal opinion on this important issue. Trial counsel must remember, though, that Federal Rule of Evidence 702 mandates that an expert’s testimony is only admissible in the first instance if it will “help the trier of fact to understand the evidence or to determine a fact in issue.” When an expert ventures into the realm of explaining what the law is or renders a legal opinion, that’s going to be a bridge too far. Just as it was here.

We’ve discussed a number of cases lately where flimsy consumer surveys were tossed out as unreliable under Daubert. This latest installment presents a slightly different twist. It discusses a recent case where the Defendant’s expert opined on the issue of secondary meaning and consumer confusion without a survey at all. As it turns out, Plaintiff’s expert successfully booted this proffered evidence. Read on so that you don’t end up kicking yourself when faced with a similar situation. Today’s case involves Doc Martens, the British footwear brand known for its chunky-soled combat boots that are routinely sported by the likes of Kendall Jenner, Gigi and Bella Hadid, and other Hollywood denizens. Doc Martens owns a number of U.S. trade dress registrations for its boots, and it was none too happy when a company by the name of ITX allegedly sauntered into the marketplace with its own clunky-looking imposters. Doc Martens sued for trade dress infringement, ITX lobbed counterclaims of trade dress invalidity, and the parties were officially off to the races. ITX retained a footwear industry expert to rebut Doc Martens’ infringement claims. Specifically, ITX’s expert offered an opinion that the Doc Martens at issue lacked secondary meaning and that consumers were not likely to be confused by ITX’s boots in any event. In opining on the lack of secondary meaning, ITX’s expert asserted that the Doc Martens footwear designs “are so common in the footwear industry that no one manufacturer has the exclusive right to use the elements.” As the Court noted, though, secondary meaning is based on a number of factors, including exclusivity, length of use, sales, consumer recognition, and other factors. ITX’s expert only offered an opinion on “exclusivity” and was, therefore, based on “mere conjecture.” In opining that consumers would not be confused, ITX’s expert cobbled together a “side-by-side” comparison of the various boots and pointed out the differences among them. The Court rightfully observed that “a side-by-side comparison is improper if that is not the way consumers encounter the product in the market.” Because there was no evidence that these dueling boots were encountered together by consumers in the real marketplace, ITX’s expert opinion got the boot on this issue as well. The moral of this saga is this: if you are attempting to offer evidence of secondary meaning, make sure you consider all the legal elements associated with that endeavor. Moreover, if you are trying to establish a lack of confusion in the marketplace, run—don’t walk—to a competent consumer survey expert for a proper assessment. Fail to heed either of these and you may be kicking yourself.

Survey evidence in Lanham Act cases can often times be pretty revealing. If you develop it correctly, survey evidence can be a key ingredient to a successful outcome. But if you develop it incorrectly it will show flaws that you and your expert wont want the world to see. This blog post tells the tale of the latter type of survey evidence that contained improper stimuli, a lack of control, and misguided questions. Read on as we discuss the problems that were laid bare in a recent Daubert order issued by the U.S. District Court for the District of Colorado. It all started when a Denver-based strip club, Dandy Dan’s, allegedly used pictures of several women in social media posts to advertise its “gentlemen’s club” establishment. There was only one, small problem with this advertising blitz: none of the women pictured were employed by or otherwise associated with Dandy Dan’s. Oh Dan. These women were models, actresses, and social media stars in their own right, and they did not think what Dan did was all that dandy. In fact, they sued for false endorsement and false advertising under Section 43(a) of the Lanham Act. In order to prove up their claims, Plaintiffs hired an expert to establish that Dandy Dan’s use of the photos “caused or is likely to cause consumer confusion” that the Plaintiffs endorse, sponsor, or are otherwise affiliated with Dandy Dan’s. In doing so, Plaintiffs’ expert went on a bit of a frolic in a number of respects. First, the survey stimuli he used were wholly improper. He started by showing respondents a collection of the ads at issue. Inexplicably, some of the photographs of the women used were not even plaintiffs in the case and included the likes of Carmen Electra, Claudia Sampedro, and Megan Iglesias. He then tried to draw a number of conclusions from the data he gathered from irrelevant stimuli. Injecting irrelevant stimuli into a survey is not going to give any court warm and fuzzy feelings about the proffered evidence. Strike One. Second, the expert did not use a control. The expert’s stated rationale for not doing so was that his research was not testing a “causal proposition.” Practice pointer: In any Lanham Act matter where you are attempting to show the ads in question cause deception, you are testing a causal proposition. In those circumstances, the expert must use a control. The expert’s loosey-goosey approach was not going to cut it. Strike Two. Third, the expert engaged in rather promiscuous use of irrelevant questions. Respondents were asked things such as whether the use of the photos made respondents “more interested in defendant’s club.” Their degree of interest (or non-interest) in Dandy Dan’s is irrelevant as to whether respondents believed the plaintiffs endorsed it. The expert also asked such things as how the ads made respondents “feel” and “what is the first thing that comes to mind” when respondents saw the ads. These touchy feely questions did not get the job done as they were simply irrelevant to the issue at hand. Strike Three. Not surprisingly, the court found these flaws “serious enough and pervasive enough” to warrant the exclusion of the expert’s proffered testimony. The takeaway here is that if your expert provides extra-judicial stimuli, lacks control, and gets too touchy feely, things aren’t headed in the right direction. It may be time to make a course correction lest you find yourself on the receiving end of a Daubert Dandy.

Consumer surveys. Love ’em or hate ’em, they are an evidentiary staple in many Lanham Act disputes. A well designed and executed survey can bolster your case, or can act as a powerful antidote to counteract your opponent’s. Survey evidence is not, legally speaking, strictly necessary. That said, courts routinely—indeed, almost reflexively—treat the absence of a survey as outcome determinative, especially in cases where a party claims an ambiguous advertisement “deceives” consumers. Sometimes litigants want to avoid the time and expense of conducting a consumer survey and instead opt to have an expert fill in that evidentiary hole with an opinion on how he or she “believes” consumers would perceive an advertisement. That is often a bitter pill. A case in point: In re C2r Global Mfg. issued by the United States Bankruptcy Court for the Eastern District of Wisconsin. There, a competitor pursued a Lanham Act claim against a debtor for falsely advertising the effectiveness of its pharmaceutical drug disposal product. According to the Plaintiff, consumers were deceived by the ads in question and, as a result, purchased the debtor’s product instead of Plaintiff’s product. There is a well-developed playbook for proving up these types of garden variety false advertising claims. The proof often includes marketplace research gathered through a consumer survey.  But here, instead of proffering survey evidence to establish how consumers perceived the debtor’s “drug destroyer” ads, the Plaintiff designated an expert to provide his personal opinion on the effect the ads would have on consumers. He opined that, “because consumers read [debtor’s] capacity advertisements to indicate that RX Destroyer products deactivate medication at a lower price-per-pill than the [plaintiff’s] system, consumers choose to purchase [debtor’s products] rather than [plaintiff’s product].” The court correctly excluded this and similar opinions. The problem with this sort of opinion testimony is at least two-fold. First, this expert attempted to opine on how consumers perceived or interpreted the ads in question. That sort of opinion is not within the province of an expert unless he or she has survey data to support it, and Plaintiff had none. Second, the expert purported to opine on how consumers would react after viewing the ad in that they would be more inclined to purchase the debtor’s product than Plaintiff’s. This sort of opinion is something that should be supported by gathering data from actual consumers and testing whether the ads at issue would be “material” to the consumers’ purchasing decisions. This case tells a cautionary tale about the perils of proxy evidence. If you are trying to establish how consumers perceive an advertisement or how they will react to it, counsel and their experts should resist the urge to “go it alone.” Consider designing and implementing a consumer survey to help bridge the evidentiary gap. Otherwise, going rogue when it comes to survey evidence can have costly implications.

Jägermeister: it’s no longer for “pukey frat guys.” Or, at least according to Jägermeister’s recent adversary, that was the sordid reputation Jägermeister wanted to shed in a PR blitz launched in 2016. Instead of being associated with “Jägerbombs” and spring break ragers, Jäger sought a more sophisticated, hip, and “KÜHL” vibe. Billboards, commercials, and digital media were suddenly soaked with ads featuring phrases like “DRINK IT ICE KÜHL,” “ICE KÜHL,” and “RUN TO A KÜHL PLACE.” All was going well until Jäger got popped for alleged trademark infringement and dilution by Alfwear, a Utah-based rugged clothing manufacturer who claimed Jäger was piggy-backing on its wholesome reputation. Alfwear owns a federal registration for “KÜHL” and uses it in connection with a variety of products and on its website. The case proceeded through discovery, and the court ultimately awarded Jägermeister summary judgment due to a number of evidentiary shortcomings with Alfwear’s case. We focus here on the problems with Aflwear’s consumer survey evidence. Survey evidence needs to replicate marketplace conditions to be probative of a consumer’s state of mind. Alfwear’s proffered survey deviated from this principle. The expert’s report was filed under seal, so we don’t have access to the questionnaire and the stimuli. But we can glean what the problems were from the court’s opinion. To show confusion, Alfwear’s expert first showed respondents a screenshot of an Alfwear KÜHL ad on Facebook. The expert then showed respondents one of two Jäger KÜHL ads on Instagram “as each appeared individually side-by-side with the KÜHL Facebook ad.” Based on the data gathered, Alfwear’s expert concluded that Jäger’s ads created “net confusion” rates of over 30%. It appears the court correctly observed that this study design “does not prove actual confusion in the marketplace.” Just because two ads appear on social media platforms does not mean that consumers will view them in close succession or juxtaposed for any extended period of time. Having respondents focus on two ads that both contain the prominent use of “KÜHL” could bias them to draw connections and conclusions that they would not necessarily draw in a real-world context. When designing consumer surveys in Lanham Act cases, experts and their counsel need to avoid creating their own special concoctions. A survey will only be useful if it approximates marketplace conditions. This principle does not call for exactness down to the last detail of recreating the marketplace, but it does require careful attention and consideration. If products are not sold side-by-side in the marketplace, they should not be presented that way in a consumer survey. While a survey design with loose connections to the marketplace may gin up a more “favorable” result, that high will most certainly recede. In this regard, one should think of designing an improper survey as akin to having one too many Jägerbombs: they both may be pleasing in the moment, but may lead to foggy, hazy, and, ultimately, painful results.

Graham Crackers—the ubiquitous, rectangular-shaped snack crackers with air holes and perforations—occupy a unique niche in American snack food lore. In the 1830s, the Rev. Sylvester Graham, a Presbyterian minister from Connecticut, became a ferocious advocate of healthy living. Among other things, he invented his “Graham Bread” made from coarsely ground unsifted wheat flour. Apparently, a staple diet of Graham Bread—coupled with vegetarianism and abstention from spirits and tobacco—would do wonders to suppress human carnal desires. Several decades later, NABISCO introduced its “Graham Crackers” to widespread acclaim. The morsel really took off in 1925 when NABISCO added a touch of honey and launched its “Honey Made” line. Today, multiple companies make their own versions of “graham cracker” and consumers are still clamoring for them. According to one estimate, in 2020 alone, more than $450 million dollars’ worth of graham crackers were sold by a handful of the top vendors in the United States. That’s a hell of a cracker. With such a long, storied history, graham crackers couldn’t possibly be the subject of a class action suit for false advertising in 2021, could they? Meet Chandra Campbell, who recently purchased a box of “Honey Graham Crackers” at Whole Foods. Despite the ingredient listed on the packaging, Ms. Campbell was allegedly shocked—shocked!—that her graham crackers were not made from healthy whole wheat “graham” flour. She also thought her crackers were sweetened with actual honey as opposed to some other sweetening agent. Channeling her inner Rev. Graham, she brought hellfire and brimstone. She sued Whole Foods in the U.S. District Court for the Southern District of New York for false advertising on her behalf and on behalf of all other similarly-situated aggrieved consumers. Whole Foods’ response? Pshaw! Whole Foods moved to dismiss the complaint arguing that no reasonable consumer could be deceived by its use of “Honey Graham Crackers.” Judge Gregory Woods denied the motion. He believed that Ms. Campbell had plausibly stated a claim that she and others were deceived. Importantly, he noted that whether a product package misleads consumers is generally not divined by judges. Instead, “[e]vidence such as a consumer survey, not merely judicial introspection, is needed to determine what consumers understand the phrase to mean in the context of this particular product and its packaging.” The important takeaway is that even when a food product has been around for many, many decades, that does not necessarily insulate it from false advertising claims—even if those claims seem implausible based upon the product’s success and longevity in the marketplace. Judge Woods’ decision underscores the importance of consumer surveys to separate the wheat from the chaff in these types of cases. Is Ms. Campbell’s claim legit or will it be a mere graham cracker caper? Consumer survey evidence may ultimately be the path to salvation for Ms. Campbell and the rest of her class action flock.

It is an epic trademark dispute with a lot of bling. Tiffany & Co. vs. Costco. The famed jeweler from the east vs. the titan of warehouse discounts from the west. A jury found that Costco was liable to Tiffany & Co. to the tune of over $21,000,000 for trademark infringement and related claims due to Costco’s use of “Tiffany.” Yesterday, the Second Circuit overturned that sterling verdict and gave Tiffany & Co. a big lump of coal instead. The Court’s decision is an important one regarding descriptive uses of registered trademarks, as well as the trial court’s proper role in wading into the waters of trademark disputes at summary judgment. The setting for this dispute dates back to the late 1800s. That is when Charles Lewis Tiffany first developed a diamond ring designed with “six prongs” that affixed the diamond to the ring. Since that time, numerous advertisements, publications, and many other documents have referred to diamond settings of that style as “Tiffany settings.” Tiffany & Co. owns a small arsenal of federal trademark registrations for the word “Tiffany,” including a registration dating back to 1920 for “jewelry for personal wear.” A number of years ago, Costco began advertising and selling diamond rings to its members using such words as “Tiffany,” “Tiffany set,” or “Tiffany style,” in its point of sale material. Tiffany & Co. did not take a shine to Costco’s use and sued under the Lanham Act and New York law for injunctive relief and damages. After lengthy discovery and motion practice, the trial court granted summary judgment to Tiffany & Co. on its claims for relief. It also rejected Costco’s “fair use” defense that it was only using “Tiffany” to describe the style of “setting” rather than as a source identifier. The case proceeded to trial on damages and Tiffany & Co. received a total verdict of just over $21,000,000. Costco appealed, and won. The Court’s analysis revolved around 3 key pieces of evidence that were considered in the trial court’s summary judgment ruling. First, Tiffany & Co. produced a consumer survey showing consumers were confused. Costco did not commission its own survey, but only attacked the methodology used by Tiffany & Co.’s expert. The trial court found Costco’s lack of a counter-survey meant there was no dispute as to actual confusion. The appellate court disagreed and determined that the jury should have been given an opportunity to weigh in on this competing battle of evidence. Second, although the trial court found Costco’s bad faith undisputed, the appellate court again disagreed. Perhaps Costco was just trying to borrow certain successful features from Tiffany & Co. As the appellate court noted, there is a difference from selling jewelry that “looks like Tiffany’s as opposed to an intent to have its jewelry pass as Tiffany’s.” Finally, the appellate court held that there was competing evidence on the issue of “sophistication” of potential consumers and that the trial court should have let the jury decide that issue too. The case was remanded for a trial on the merits, including Costco’s “fair use” defense that it was only using “Tiffany” in a descriptive sense. Summary judgement is typically tough to get in trademark cases. Tiffany v. Costco is a shiny example of that proposition. This case is also a good reminder about the power of the descriptive use defense to trademark infringement and related claims. Even storied, well-known brands with big bejeweled portfolios aren’t necessarily able to stop all commercial uses of their registered marks.

In the midst of our national pandemic, the Acting Register of Copyrights has issued a notice related to the timing of registration of copyrights. Here’s an explanation of what you need to know and why this may be an important development for your company or clients. Section 710 of the Copyright Act authorizes the Register, on a temporary basis, to “toll, waive, adjust, or modify any timing provision . . . or procedural provision” in the Copyright Act if the Register determines that a national emergency declared by the President “generally disrupts or suspends the ordinary functioning of the copyright system . . . or any component thereof.” In light of this statutory authority, the acting Register, Ms. Maria Strong, issued an order on March 31 that affects timing requirements for registration of copyrights. Under section 412 of the Copyright Act, a copyright owner generally is eligible to be awarded statutory damages in an infringement action only if the work is registered prior to the infringement or within three months of the work’s first publication. The effective date of registration is the date when the Copyright Office receives the application, deposit, and fee. Due to myriad travel restrictions and “stay at home” orders, the Copyright Office noted that some copyright owners of published works may be prevented from completing and submitting copyright applications in a timely manner due to lack of access to physical documents, including deposit copies of copyrighted works, or the inability to deliver materials to a mail carrier. Consequently, the Register issued the following notice that can be accessed here: For copyright applications that can be submitted entirely in electronic form (i.e., those that do not require submission of a physical deposit), the timing provisions are unchanged. If an applicant can submit an application electronically but is unable to submit a required physical deposit, the applicant should upload, together with the application, a declaration or similar statement certifying, under penalty of perjury, that the applicant is unable to submit the physical deposit and would have done so but for the national emergency, and setting forth satisfactory evidence in support. If this requirement is met, and the three-month window for registration after the date of first publication was open as of March 13, 2020, the window will be extended such that the applicant will be eligible for the remedies under section 412, provided that the applicant submits the required deposit within thirty days after the date the disruption has ended, as stated in a public announcement by the Acting Register. Examples of satisfactory evidence include, but are not limited to: a statement that the applicant is subject to a stay-at-home order issued by a state or local government a statement that the applicant is unable to access required physical materials due to closure of the business where they are located If an applicant is unable to submit an application electronically or physically during the disruption, the applicant may submit an application after the Acting Register has announced the end of the disruption, and include a declaration or similar statement certifying, under penalty of perjury, that the applicant was unable to submit an application electronically or physically and would have done so but for the national emergency, and providing satisfactory evidence in support. If this requirement is met, the three-month window under section 412 will be tolled between March 13, 2020, and the date that the disruption has ended. For example, if a work was first published on February 13, 2020, the applicant would have two months following the end of the disruption to register the work in order be eligible for the remedies under section 412. Satisfactory evidence for purposes of this option includes, but is not limited to: a statement that the applicant did not have access to a computer and/or the internet a statement that the applicant was prevented from accessing or sending required physical materials for reasons such as those noted above Where the Acting Register finds satisfactory evidence that the applicant was affected by the national emergency, the Copyright Office will annotate the registration record to reflect that determination. *** The Register also issued an order regarding serving and recording notices of termination that can also be reviewed here. Finally, the Register invited members of the public to contact the Copyright Office directly about other disruptions that may inhibit the public’s “ability to participate in the copyright system.” Should you be confronted with such a situation, you can contact the Copyright Office through its website copyright.gov/help/ or by phone at 202-707-3000. We are wishing all of our readers the best during these difficult times!

Love him or hate him, everyone agrees that NFL Quarterback Tom Brady is terrific, except the USPTO. Earlier this year, Mr. Brady’s company filed to register the trademark “Tom Terrific” for t-shirts and various other collectible items. Yesterday, the USPTO rejected those applications. Why did it throw shade at arguably one of the best slingers in the history of the NFL? Apparently because he is not the “original” Tom Terrific. That distinction belongs to another slinger of sorts. On August 4, the USPTO received a “letter of protest” from a third party claiming that “Tom Terrific” is actually the nickname for Tom Seaver, an MLB Hall of Fame Pitcher who tossed the New York Mets to a World Series victory in 1969. The letter of protest was apparently packed with evidence demonstrating the “Tom Terrific” moniker is currently enjoyed by Seaver. Section 2(a) of the Lanham Act—at least the portion that is still on the books after the Tam and Brunetti decisions from SCOTUS—prohibits any application that “consists of or comprises matter that may falsely suggest a connection with persons, institutions, beliefs, or national symbols.” Based on the evidence in the letter of protest, the USPTO concluded that Brady’s trademark would create a false connection with Seaver because Tom Terrific “points uniquely and unmistakably” to him. Seaver 1, Brady 0. While Tom Terrific 2.0 may be down, he is not out. It is not time for a Hail Mary as the USPTO’s decision is only an initial office action. Team Brady will have plenty of time to amass its own evidence to overcome the rejection. They have until February 22, 2020 to respond. That gives Tom enough time to shoot for one more Super Bowl victory on February 2, and then set his sights on bringing home a trademark victory at the USPTO.

This week, a California jury found that Katy Perry, Capitol Records and a few other players were liable for copyright infringement to the tune of approximately $2,800,000. The offending song is Katy Perry’s runaway smash hit “Dark Horse.” The Plaintiff’s work is a 2008 Christian rap entitled “Joyful Noise” by Flame. A thoughtful comparison and analysis of the songs can be found here. As one can tell, they do bear some similarity in that they both employ a similar “hook” musical phrase involving notes that are played at the same interval. Under existing law, the jury probably got it right. The problem is, the law on music copyright is all wrong. Under our current music copyright regime, one composer can be liable for infringement and damages when that composer copied a short musical phrase. The problem with this formulation is that it completely ignores centuries of how the musical art form flourished and developed in western civilization. From Bach to Beethoven to Billy Joel, they all copied pre-existing musical works to create great works of their own. Classical music is replete with examples of the masters copying from other masters. Handel, Bach, Brahms, Mozart, Rachmaninoff and countless others borrowed musical phrases and ideas from each other without fear of infringement claims. There’s actually something quite “American” about musical copying. Don’t believe me? Check out a prior article I wrote a number of years ago entitled Musical Musings. As detailed therein, colonial ballad-operas used pre-existing musical works set to new lyrics. Some African American spirituals were adopted from Irish-Scotch melodies. Even some of our most beloved patriotic songs are not “original” to America. For example, our national anthem is set to the tune of a British drinking song. “My Country Tis of Thee” is England’s very own “God Save The Queen.” What about the 4th of July staple “America?”Sorry to burst your patriotic bubble, but it too was written on the other side of the Atlantic.“America” is actually set to the tune “God Save The King,” a rather ironic development in musical history! My point is simply this:for the last several decades, our music copyright law has bucked centuries of musical borrowings in our western culture.The Katy Perry Dark Horse verdict is the most recent example of this enduring problem.Unless and until we change to a system where compulsory licenses are used to license short musical phrases and ideas, I’m afraid more horses will be trammeled in the future.

On Friday, while some of us may have been muttering a few bad words as we slogged through our post-holiday inboxes, the Supreme Court was toying with a naughty word of its own:  FUCT.  That’s right.  Late last week the Court agreed to hear a case involving a rejected trademark application for the word “FUCT” for use on clothing.  It’s an interesting case and one that we will be keeping a close eye on in 2019. Here’s the basic gist of the dispute:  Erik Brunetti is an L.A. based artist and clothing designer who launched a streetwear apparel brand under the rather colorful name “FUCT.”  He attempted to register the trademark with the USPTO.  The examiner rejected the application and cited the Lanham Act prohibition regarding registration of “scandalous” trademarks under Section 2(a).  The applicant appealed to the U.S. Court of Appeals for the Federal Circuit.  To virtually no one’s surprise, the Federal Circuit held the “scandalous” prohibition violated the First Amendment under Federal Circuit and Supreme Court precedent, including the unanimous 2017 Supreme Court decision Matal v. Tam that struck down the “disparagement” prohibition also contained in Section 2(a).   The USPTO petitioned for the U.S. Supreme Court to review the decision, and the Court obliged.  WTF?   We will soon find out why the Court is jumping back into the fray of Section 2(a), but we offer a few musings for your consideration: This could signal that the Court wants to clarify or modify the constitutional analysis it previously set forth in Matal v. Tam. Or, it could be that the Supreme Court sees a principled difference between the “disparaging” and “scandalous” provisions within the same statutory section.  Neither possibility seems likely, though.  Matal v. Tam was a unanimous decision from 2017, so it wouldn’t seem as though the Court would be all that interested in examining its decision anew given that the ink is barely dry on it.  Further, many scholars and Lanham Act pundits see no meaningful difference between the two provisions of the Lanham Act.  If one falls, they both fall. If the Court upholds the Federal Circuit decision, we may see a glut of profane and sexually explicit trademark applications filed at the USPTO, which is what the government appears to be concerned about and why it wants the Federal Circuit’s decision reversed. The government’s position seems to be a bit like a solution in search of a problem.  Yes, there may be some that will file vulgar trademark applications.  But trademarks are registerable only if they are used to sell goods or services in commerce.  While vulgar and/or sexually explicit trademarks may appeal to a slice of the overall consuming population, it seems unlikely that such trademarks are going to catch fire and live in mainstream commerce. The government further argues that “international bodies” (such as foreign countries) will look askance at the U.S. for it allowing “scandalous images and terms” being registered as trademarks. Given the current state of play of our geopolitics, offending foreign countries about what’s happening at our U.S. Trademark Office should probably rank pretty far down on the government’s priority list. We will be keeping our eyes (and especially our ears) open.

As it turns out, all that glitters is not gold.  Or at least that’s probably how Led Zeppelin feels after the 9th Circuit overturned a shiny jury verdict in favor of the iconic British rock band.  The dispute involves a copyright infringement claim that Led Zeppelin and its hirsute founders did not originate the opening guitar riff to “Stairway to Heaven.”   Instead, or so goes Plaintiff’s theory, they copied it from an obscure 1970s song called “Taurus,” written by an arguably even more obscure artist known as Randy Craig Wolfe.  The case was ultimately tried to a California jury, and included blockbuster testimony from both Jimmy Page and Robert Plant—two of the  rockin’ co-founders of Zeppelin.   The jury rejected the claim and rendered a verdict that the two songs were not “substantially similar.”  The plaintiff appealed and many thought (myself included) that the stores would all be closed on appeal.  With a word the Plaintiff got what he came for:  reversal. The 9th Circuit overturned the verdict for principally two reasons—both of which relate to the jury instructions on “substantial similarity” and “originality.”   In connection with the extrinsic test for substantial similarity, the 9th Circuit held the trial court failed to instruct the jury that the “selection and arrangement” of unprotectable musical elements (such as the descending chromatic baseline or the arpeggiated chords on top of that baseline) can be protected for purposes of copyright when they are combined in an original way.  Further, the 9th Circuit said the trial court erred when it instructed the jury that “common musical elements, such as descending chromatic scales, arpeggios or short sequences of three notes” are not protected by copyright.  These errors, says the 9th Circuit, were prejudicial to Plaintiff and can only be rectified with a retrial.  Ooh, this makes me wonder. While the 9th Circuit has repeatedly embraced the concept that combining  unprotectable elements can create a protectable work, this does not seem like a worthy reason for reversal in this case.  Why?  Because this specific musical motif that forms the basis of the copyright claim (descending chromatic baseline with arpeggiated chords on top of it) has been around for centuries.  No offense to Plaintiff (or Messrs. Page and Plant for that matter), but this riff is not original to any of them.  An Italian composer named Giovanni Battista Granata uses this same chromatic baseline and arpegiated melody in a work called “Sonata di Chittarra, e Violino, con il suo Basso Continuo.”  It was  written back in the 1600s.  You can hear it here (go to the 35 second mark).  It might just make you wonder, too, whether Plaintiff has a valid claim for copyright infringement. And as we wind on down the road back to retrial, the 9th Circuit provided guidance on a key evidentiary issue: whether the actual sound recording of Taurus embodies the protected work or the sheet music deposited with the Copyright Office.  The trial court ruled—and the 9th Circuit affirmed—that because the underlying unpublished musical work was created under the 1909 Copyright, it is the deposit copy and not the sound recording that defines the scope of protection for Plaintiff. There is definitely a bustle in Led Zeppelin’s hedgerow because of the 9th Circuit's decision to erase the verdict.  But hopefully the jury will listen very hard, and the right decision will come to it at last, as Lady Justice is buying a stairway to retrial.

Last Friday, the 9th Circuit Court of Appeals finally put to bed a copyright dispute that many viewed as nothing short of bananas.   Naruto v. Slater—dubbed the “Monkey Selfie” case—raised the novel (if not bizarre) question of whether a non-human primate has standing to sue for infringement under the U.S. Constitution and the Copyright Act. In case you have been monkeying around and have not kept up on this case, here is a quick snapshot of what happened and how we got here:  Naruto is a “crested macaque,” which as near as I can tell means Naruto is a monkey.  At all times relevant hereto, Naruto lived in a wildlife reserve in Indonesia.  Back in 2011, Wildlife photographer David Slater—with camera in hand—visited Naruto’s island habitat.  Slater left his camera unattended.  It was then snatched up by Naruto who ended up taking a number of “selfies.”  Slater returned to the U.K. and published a book containing the Naruto selfies. We eventually come to find out that Slater did not obtain a copyright assignment or even a license from Naruto! PETA catches wind of this and, as a “next friend” of Naruto, sues Slater on Naruto’s behalf for copyright infringement in the U.S. District Court for the Northern District of California.   Naruto sought injunctive relief, disgorgement of profits, actual damages, and attorneys’ fees.  (Side note:  Naruto was overreaching a bit on the request for attorneys’ fees because he did not register his selfies before the act of alleged infringement by Slater). The trial court found the copyright claim to be too far of a walk in the wild, and dismissed the case.  The 9th Circuit affirmed.  The majority analyzed three issues: (1) whether PETA had standing to bring the case on behalf of Naruto (answer: “no”); (2) whether Naruto himself had Article III standing (answer: “yes”); and (3) whether Naruto had statutory standing under the Copyright Act to bring the claim (answer: “no”).  In addressing this final issue of standing under the Copyright Act, the majority noted there were “several provisions” of the Act regarding copyright transfers from the “author” to “children” that suggested that animals don’t have standing.  There are arguably several other provisions the majority could have cited.  For example, each copyright application needs to be “certified” by the claimant. See 17 U.S.C. § 409.  How exactly would Naruto go about making such a certification?  Moreover, a copyright plaintiff (in certain circumstances) is entitled to elect between statutory damages and actual damages.  See 17 U.S.C. § 504(c). How would we know if Naruto made such an election? In any event, the concurring opinion argued that the whole case was nothing short of a circus and because PETA had no “next friend” standing the case was frivolous and should have been dismissed without any further discussion or analysis. That might have been the end of the matter for the 9th Circuit, but an “unnamed Ninth Circuit judge” requested a rehearing en banc, which was ultimately denied on Friday by a vote of the entire Court.  With that final act, it is now safe to say that “monkey see, monkey sue,” simply will not do at least in the 9th Circuit.   But as George Carlin once said, “Just because you got the monkey off your back doesn’t mean the circus has left town.”  For all we know, the circus just might be headed to Washington D.C.

Hi, Readers!  It’s theTMCA.com here, checking in to see how we’re doing.  See, we try hard to make our posts on trademarks, copyrights, and advertising law entertaining and informative for you.  We know that there are a million places for you to get your legal updates, and we work hard to make you glad you chose to come here for yours. In 2017, you rewarded our hard work by landing theTMCA.com a spot on the Web 100, the American Bar Association Law Journal's list of the top law blogs, podcasts, and tweeters.  We were thrilled!  Let’s face it, almost all recognition is nice, but this recognition was extra nice because it resulted purely through the nominations made by YOU, our loyal readers.  That’s why we are secretly still beaming with pride. But do you still like us? Are we still satisfying your cravings for IP legal news delivered with a twist of humor? If the answer is “Yes!”, would you consider helping us make the list again by nominating us for the 2018 Web 100? If the answer is “Meh…”, please please please contact us and tell us what we can do better.  We do this for you, and we want to do it right. Thank you all so much for your support. Sincerely, Your TMCA.com Blogging Team

TheTMCA.com blog has had a busy first half of 2018 with a total of 62 posts so far this year. Thank you to our loyal readership, which keeps growing. In case you missed them, here are our top 8 posts of 2018 so far, with topics including the new GDPR privacy law, the Trump brand loss in a trademark license battle, music copyright issues and the large number of works entering the public domain next year. What's up with WHOIS? The GDPR May Limit or Prevent Access to Domain Name Registration Info Trump Brand Loses Trademark Licensing Dispute – Rules of Contract Law Prevail "Sleevey Wonders" are "Arm Tight" in California Lawsuit Tune Up: Initial Lessons from Gibson's Most Recent Trade Dress Lawsuit Adnan Syed Won a New Trial (Again), But the Serial Podcast Lost its Own Appeal Large Number of Works Set to Enter the Public Domain in 2019 Extra Foam, Please: Common Sense Prevails and Court Finds that Starbucks Lattes Contain Foam Did The 9th Circuit "Blur the Lines" in its Latest Music Copyright Case?

Starting this weekend, roughly 10,000 legal professionals from across the globe will begin converging on the great City of Seattle for the 2018 Annual Meeting of the International Trademark Association.  There are so many fun, interesting, and exciting things to do in the Pacific Northwest.  But let’s face it, unless you have boundless energy and lots of extra time on your hands, you probably won’t be able to take in most of what the Emerald City and its surrounding environs have to offer.   So, we’ve compiled a list of of our Top 10 favorite close by attractions that you might want to check out—all of which are accessible within a short walk from the Convention Center or after a brief journey using your favorite ridesharing service. #10.  Fugetaboutit.  Sure, other metropolitan areas are far better known for Italian fare than Seattle, but Vito’s is an Italian gem in the Emerald City.  It’s been open since the 1950s (yes some of that décor looks like it could be the original).  Excellent musical acts play nightly starting Wednesday through Sunday.   Vito’s is just a few blocks south of the Convention Center.   Email reservations@vitosseattle.com or call 206-397-4053. #9.  Pike Place Market.  This is Seattle’s original farmers market established in 1907.  It’s about a 6 block walk from the Convention Center.  It is ground zero for shops, fresh seafood, and iconic restaurants.  While there, check out a couple of our favorite spots including Beecher’s Hand Made Cheese Café,   and the Original Starbucks, which opened its doors in 1971. #8.  Books & Architecture?  If you are a bibliophile and a connoisseur of interesting architecture, take a short stroll down to Seattle’s downtown Central Library. It was designed by Dutch architect Rem Koolhaas in a joint venture with Seattle-based LMN Architects.  It opens at 10:00 am daily (12:00 p.m. on Sundays). # 7. Skyview Observatory.  If you haven’t experienced Seattle from 902 feet above the ground, head down to Seattle’s tallest building—the Columbia Center—and head up to floor 73 for 360 degree sweeping views of Seattle, Bellevue, Mt. Rainier, the Puget Sound, and much more.  The Skyview Observatory is the highest observatory in the Northwest and well worth the 10 minute walk from the Convention Center.  It’s open daily from 10 am-8 p.m. # 6.  Smith Tower.  If tall modern buildings like the Columbia Center give you vertigo, perhaps you want to check out the Smith Tower just down the street.  It is after all Seattle’s first skyscraper and, at one time, was the tallest building west of the mighty Mississippi River.  Head up to the observatory and take in the sights at the speakeasy-inspired bar on the 35th floor.  Weekday happy hour from 4-6 p.m. and late happy hour from 9-11 p.m. #5. Pioneer Square.  If you make your way to Smith Tower, you will officially be in Pioneer Square, Seattle’s Original Neighborhood founded in 1852.  Dozens of shops, restaurants, and other attractions await you.  Check out this helpful map on things to do and see while you are in the Square.  One of our particular favorite dining spots is the recently “re-opened” 13 Coins.  Great food, live entertainment on weekends, and, hey, its conveniently opened 24 hours a day for all of you INTA early birds and night owls. #4.  The Underground Tour.  Ok, it may sound weird, but go spend 75 minutes on this guided walking tour of entombed storefronts and sidewalks from when Seattle was rebuilt on top of itself after the great fire of 1889.  Call 206-682-4646, visit the ticket counter at 614 First Avenue in Pioneer Place Park, Pioneer Square, or click here for ordering tickets online. #3.  The Seattle Great Wheel.  From Pioneer Square you can walk down to the waterfront and take a spin on Seattle’s Ferris wheel.  Maybe it’s not quite the London Eye, but it is a fun, touristy place to go on Seattle’s waterfront.  It’s open until 10 pm Sunday-Thursday, and until 12 am on Fridays and Saturdays. #2.  Elliot’s Oyster House and the Edgewater Hotel.  If you’ve worked up an appetite after being whirled about on the Great Wheel, you are steps away from two restaurant staples on the waterfront.  Elliot’s Oyster House is a great place for seafood, and the aptly-named Edgewater Hotel (the only hotel on Seattle’s waterfront), offers great lounge and dining options as well. #1.  Seattle Center.  This is your stop for all sorts of entertainment and diversion in Seattle.  From the world famous (and highly recommended) Museum of Pop Culture (MoPOP), to the Space Needle built for the 1962 World’s Fair, there is plenty to see and do @ the Center.  For quick, easy access to the Seattle Center, you can hop on the Seattle Monorail, which is just a few blocks away from the Convention Center. Safe travels and enjoy INTA 2018!    

As we entered the first full day of the equinox yesterday, a split panel of the Ninth Circuit Court of Appeals handed the heirs of Marvin Gaye a decisive victory that will no doubt leave them with a spring in their steps.  The Court affirmed the jury verdict and multi-million dollar damage award in the Gayes’ copyright infringement suit against Pharrell Williams and Robin Thicke.   If you were hoping the Ninth Circuit would take this opportunity to wade deeply into the swirling waters of music copyright protection and infringement, the majority decision will leave you thirsting for more.  If you're looking for a fiery dissent that sings to a different tune, you will not be disappointed.  If you’re looking for a takeaway or two from this 80+ page decision, look no further than the rest of this blog post. Here are the key facts:  Marvin Gaye’s family owns the copyright in the song “Got to Give It Up.”  In 2012, Pharrell Williams and Robin Thicke (along with a cast of others) wrote and published the song “Blurred Lines,” which ended up being the best-selling single on the planet in 2013.  Gaye’s family claimed infringement, Thicke & Co. denied it, and litigation ensued.  The infringement issue was ultimately decided by the jury, and it sided with the Gayes.  The end result was a multi-million dollar damage award in their favor.  A mash-up/comparison of the two songs can be found here. On appeal, Williams and Thicke asked the Ninth Circuit to overturn the jury verdict arguing that as a matter of law, the similarities between the two songs do not constitute infringement.  Instead, they argued, the similarities simply related to the “style” or “genre” of the two songs, as opposed to any “protectable” expression owned by the Gayes.  Had the majority entertained the argument advanced by Thicke, it would have required the Court to grapple with the finer nuances of music copyright, which the majority refused to do.  Instead, it affirmed the jury’s verdict by concluding that the Gayes were entitled to “broad” protection for the work and that “there is no one magical combination of factors that will automatically substantiate a musical infringement suit.”   The majority essentially deferred to the jury’s findings and upheld the infringement verdict against Williams and Thicke. The dissenting opinion, authored by Judge Jacqueline Nguyen, is not just some waning coda at the end of the majority opinion—it’s a magnum opus copyright tour de force.  Her opening motif starts as follows: The majority allows the Gayes to accomplish what no one has before: copyright a musical style. “Blurred Lines” and “Got to Give It Up” are not objectively similar. They differ in melody, harmony, and rhythm. Yet by refusing to compare the two works, the majority establishes a dangerous precedent that strikes a devastating blow to future musicians and composers everywhere. Thereafter, this same theme is played in variations.  Judge Nguyen gives a masterclass on the law of music copyright.  She dives into the thicket of past precedent and a variety of musical concepts such as the signature phrase, pitch and rhythm, and discusses melismas, word painting, and parlandos.   After her exhaustive analysis, she ultimately concludes that the songs simply share a similar “groove,” which is not protected by copyright. It’s not clear what Williams and Thicke intend to do at this point.  With Judge Nguyen’s harmonious dissent playing so forcefully in the background, though, they do not "Got To Give It Up" just yet.  

As TheTMCA.com wraps up a successful 2017 (we were named one of the ABA's top 50 blogs! and Law.com profiled one of our editors) we want to thank our clients, friends and readers who support our blog. In case you missed them, here are our top 10 most viewed posts of 2017, from the Federal Trade Commission’s guidance on social media posts, to new TTAB and USPTO rules, and Seussisms to guide you through fair use. TOP 10 MOST VIEWED POSTS OF 2017 Phish Snared in Trademark Office’s Net Due to Phan Products Change is Coming: New Rules for TTAB Opposition and Cancellation Proceedings Fair Use on The Loose For The Great Dr. Seuss! Who Owns That Trademark – The Manufacturer or the Exclusive Distributor? New Federal Law Protects Consumers’ Right to Post Negative Online Reviews Dear Influencers: It’s the FTC, Again – FTC Issues 21 Follow-up Warning Letters Sued for Retweeting – Yes, That Just Happened Dear Influencers: #FullDisclosure we use Instagram too. Love, The FTC – Warning letters provide guidance to influencers, celebrities and brand owners Launched July 8, 2017: New USPTO Rules to Clear “Deadwood” in the Federal Trademark Registry Another IP Lesson from Bikini Bottom: What “The Krusty Krab” Teaches Us About Trademark Protection for Fictional Places We wish you a happy and prosperous 2018!

  You know of this lawsuit, we’ve blogged on it twice, It’s time for a check-in, to see who’s naughty and nice. The Plaintiff as you know is the heir of Dr. Seuss, And fussing and fuming about an alleged unfair use. The work that’s at issue is one that you know, It’s a book of acclaim called “Oh, The Places You’ll Go!” The Defendant was sued a year ago this November, A federal court skirmish we will forever remember. The Seuss complaint built on legal mortar and bricks, It took aim at the Defendant called ComicMix. The accused work was a copy, purloined as you know, And given the title “Oh, The Places You’ll Boldly Go!” Why choose this title?  Did Defendant not check? It’s actually a mashup of Dr. Seuss and Star Trek. But Defendant didn’t whimper or slink off into the night, Instead it said, “Hey Dr. Seuss, We’re ready to fight!” So fight did Defendant with great passion and devotion, And responded to the complaint with a 12(b)(6) motion. The court almost seemed ready to find Boldly was fair, But last summer ruled that the evidence was a tad bit too bare. Fair use was denied at that stage of the proceeding, And the case carried on with an amended pleading. The new complaint was loaded and packed quite a wallop, Copyright claims and a trademark dollop. The Defendant unfazed by Plaintiff’s new legal potion, Dashed off to court with a second 12(b) motion. Would it prevail?  Would it score a fair use goal? Sadly for Defendant, it scored a big lump of coal. The court rejected the motion, to Plaintiff’s great glee, No present for Defendant under the Christmas Tree. So this skirmish continues there is no end in sight, Lanham Act claims mixed with copyright. We will keep updates coming, TheTMCA will be here, Happy Holidays to all and a Happy New Year!

It isn’t all that often that copyright decisions get handed down by the federal district court in the great state of Idaho, so the recent decision in James Castle Collection v. Scholastic, Inc. caught our attention.  The Court’s fair use analysis caught our attention too, particularly the first factor that analyzes the “purpose and character of the use” by the Defendant.  Before we get there, though, here’s a brief background of the relevant facts: James Castle was born in 1899.  He grew up and lived in Idaho until his death in 1977.  Castle was deaf from birth and never learned how to communicate orally or in writing.  Yet, he became a prolific (and self-taught) artist, renowned for creating his works from any number of resources such as discarded papers, soot, and saliva, to name just a few.  His works have been showcased at major museums, including the Philadelphia Museum of Art (of Rocky Balboa fame), the Museo Nacional in Madrid, and the Smithsonian American Art Museum.  Castle’s works are owned and maintained by the James Castle Collection and Archive. Enter Defendant Allen Say, an author and illustrator who wrote and illustrated a children’s book entitled “Silent Days, Silent Dreams.” Silent Days is story written from the perspective of Castle’s fictional nephew.  It contains copies of 28 of Castle’s original art works, and more than 100 other works created by Say that were intended to “mimic” Castle’s “unschooled style.” The James Castle Collection did not take kindly to Silent Days and sued to enjoin the release of the work.  The Court denied the TRO motion, finding at this early stage that fair use prevailed. The bulk of the Court’s analysis focused on the first factor, the “purpose and character of the use."  wThis factor was found to weigh “heavily” in favor of fair use due to the "transformative" nature of Defendant's use.  Why is that?  Because according to the Court, the author attempted to “see the young Castle’s silent world through his eyes.”  In this regard, the Court stated that “the book draws on facts but also included speculation based on reasonable inferences from facts (he was bullied by classmates for being deaf and mute) or just pure speculation (he was slapped by his father and locked in an attic by his parents).”  In sum, the Court found that the author “created a version of Castle as a self-taught artist who was isolated by his disabilities and driven by his artistic passion, ultimately finding salvation in his art from a harsh world.” The Court’s fair use analysis is a bit curious.  It relied pretty heavily on the Billy Graham Archives case where the 2nd Circuit found it was fair use to use “thumbnail images” of posters from Grateful Dead concerts in order to explain the significance of those posters in a much larger anthology on the history of the Grateful Dead.  But Silent Days appears to be largely a fictionalized version of James Castle’s life—an “imagined biography” as the Defendant Say called it.  And, the prominent use of 28 original sketches seems fundamentally different than using thumbnail images of posters for historical context.  The larger issue, though, is whether a fictionalized work of this type should be viewed as sufficiently “transformative” under the first fair use factor. If so, "imagined biographies" of Andy Warhol, Salvador Dali, and Pablo Picasso—complete with reproductions of their famous works—could be in the offing.  That would probably go over with the estates of these artists like a giant sack of famous potatoes.

In trademark infringement cases, consumer survey evidence can be a powerful tool.  It can also badly malfunction, as Black & Decker recently experienced.  In Black & Decker v. Positec USA, the trial court demolished a $54 million jury verdict because Plaintiff’s case was  constructed upon a hopelessly flawed consumer survey.  The trial court’s post-trial ruling should act as a cautionary tale to trial counsel and consumer survey experts alike: If you venture from survey designs that are tried & true, you may be feeling black & blue. This was a garden variety trademark and trade dress infringement dispute.   Black & Decker (B&D) sued Positec for selling power tools and accessories that used B&D’s “yellow and black” trade dress.  As is customary in these types of disputes, B&D retained an expert to conduct consumer surveys, including a “likelihood of confusion” survey that was considered by the jury.  The survey participants were shown a photograph of two rows of boxed power tools, which according to Plaintiffs, was taken at Home Depot.  All of the products depicted in the photo were Plaintiff's DeWalt products, except one, which was a Rockwell product sold by Defendants.  Participants were asked if they believed that all the products were put out by the same company.  47% answered that question in the affirmative.  This was the only “evidence” of confusion offered by Plaintiff at trial, which apparently was effective as the jury returned a verdict of $54 million in favor of B&D. The Defendant moved for a new trial and the trial court granted it due to the significant flaws in the survey.  Here is what doomed the survey and, ultimately, the verdict: Lack of causation.  A properly-designed likelihood of confusion survey tests whether the the trademark or trade dress at issue causes confusion.  Curiously, B&D’s expert said his survey was not designed to test “causality.”  Rather, it was “observational.”  As the expert explained, his survey showed, “[t]he confusion [that] was caused by the tendency to overlook the obvious”—in other words, the “idea of putting the same packages together and somebody just thinking that they’re the same without looking carefully at them.”  It is not clear (at least not to me) what distinction the expert was making here.  Regardless, an expert needs to be able to testify that the allegedly infringing trademark or trade dress has caused confusion.  That's the whole point of why consumer surveys are offered in the first place. The expert did not replicate marketplace conditions.  In any survey, it is important to show the respondents the goods in a manner that bears some relationship to how consumers would encounter them in the marketplace.  The survey expert did not do so here.  Instead, he “staged” the placement of these tools together in the photograph without being able to establish that the consumer would encounter them in this side-by-side manner.  The survey stimulus is a central aspect of a survey’s validity. The expert and counsel need to nail this down and make sure the selection of the stimulus is as close to bulletproof as possible. No other evidence of actual confusion.  B&D’s only evidence of confusion was the expert's survey.  Because that was thrown out, and there was no other evidence of actual confusion, the court found that “there is a high probability that [the expert's] flawed testimony unfairly influenced the jury’s verdict.” This case is a good reminder of a few bedrock principles regarding consumer surveys in Lanham Act cases.  First, counsel needs to drill down with the expert and make sure that he or she understands that a survey tests causality relative to the claims at issue in the case.  Second, don’t build your survey on sand.  The expert should follow established methodologies that have been approved and blessed by the courts.  Finally, make sure that careful attention is paid to the survey stimulus.  The expert needs to be very clear on why the stimulus was chosen and how it represents a reasonable approximation (under the circumstances) of marketplace conditions. Survey design choices aren’t always black & white, but straying too far from established methods could leave counsel, expert, and client feeling rather blue.