CSL Silicones, Inc. v. Midsun Group Inc.

          RULING ON PLAINTIFF'S MOTION TO PRECLUDE DEFENDANT'S PROPOSED EXPERT ON LIKELIHOOD OF CONFUSION [DOC. 166]

          CHARLES S. HAIGHT, JR. SENIOR UNITED STATES DISTRICT JUDGE.

         This case involves allegations of trademark infringement. Plaintiff CSL Silicones, Inc. ("CSL") has moved to exclude the proposed testimony of Carl Fusco, a liability expert for Defendant Midsun Group Inc. ("Midsun"). Fusco was retained by Midsun to conduct a survey and to provide a report regarding market recognition and likelihood of confusion, issues central to this trademark dispute. This Ruling resolves the motion.

         I. BACKGROUND

         CSL brought this action against Midsun in connection with Midsun's alleged improper use of two of CSL's trademarks. CSL alleges that Midsun markets and sells silicone-based coating products under names similar to CSL's chosen names for its own silicone-based coating products, and thus Midsun is in violation of the federal Lanham Act, 15 U.S.C. § 1051 et. seq, and the Connecticut Unfair Trade Practices Act, ("CUTPA"), Conn. Gen. Stat. § 42-110. Midsun has alleged various counterclaims against CSL pursuant to the Lanham Act and CUTPA. The Court previously granted Midsun's motion to dismiss CSL's causes of action, in part, dismissing Count II with prejudice as time-barred under CUTPA. Familiarity with the Court's Ruling is presumed. Cross-motions for partial summary judgment have been filed and will be the subject of a separate Ruling.

         Relevant here, both parties develop and sell silicone-based coating products. One product - associated with the 570 mark for both parties - is used to coat and protect high voltage insulators, such as electrical power lines. See Compl. [Doc. 1] ¶ 7; Counterclaim [Doc. 84] ¶ 7. The other relevant product - associated with the 579 mark for both parties - is used to protect against corrosion of steel products, such as structural steel, bridges, machinery, and metal roofs, among other areas prone to corrosion. See Compl. ¶ 8, Counterclaim ¶ 8.

         II. PENDING MOTION

         Pending before the Court is CSL's motion to preclude the testimony of Midsun's expert, Carl Fusco. CSL argues that Fusco is not qualified to offer the opinions he expresses in his expert report, and further contends that Fusco's opinions are unreliable as they are based on a flawed survey. Doc. 167 at 5. CSL argues that Fusco's opinions would not aid the trier of fact, and pose a danger of unfair prejudice to CSL that outweighs any probative value associated with his opinions. Id. Citing the seminal case on this subject, CSL urges the Court to "exercise its gatekeeping role" to preclude Midsun from relying on Fusco's opinions. Id., citing Daubert v. Merrell Dow Pharmaceuticals, 509 U.S. 579, 594-95 (1993).

         Midsun, for its part, opposes CSL's motion, arguing, inter alia, that Fusco is qualified to testify regarding likelihood of confusion; his testimony is relevant and reliable; his methodology is sound; and the survey conducted "possesses sufficient circumstantial guarantees of trustworthiness." Doc. 178 at 15.

         III. LEGAL STANDARD

         A. Admissibility of Expert Testimony

         "The decision to admit expert testimony is left to the broad discretion of the trial judge and will be overturned only when manifestly erroneous." McCullock v. H.B. Fuller Co., 61 F.3d 1038, 1042 (2d Cir. 1995). See also SR Int'l Bus. Ins. Co. v. World Trade Ctr. Properties, LLC, 467 F.3d 107, 119 (2d Cir. 2006) (with respect to a district court's admission of expert testimony, the Second Circuit will "review a district court's evidentiary rulings under a deferential abuse of discretion standard, and will not disturb such rulings unless they are 'manifestly erroneous.'" (internal citations omitted)). The abuse of discretion standard "applies as much to the trial court's decisions about how to determine reliability as to its ultimate conclusion." Kumho Tire Co. v. Carmichael, 526 U.S. 137, 152 (1999).

         Rule 702 of the Federal Rules of Evidence governs the admissibility of expert testimony. Pursuant to Rule 702, expert testimony is properly admitted where it "will help the trier of fact to understand the evidence or to determine a fact in issue;" "is based on sufficient facts or data;" "is the product of reliable principles and methods;" and where "the expert has reliably applied the principles and methods to the facts of the case." Fed.R.Evid. 702. "The law assigns district courts a 'gatekeeping' role in ensuring that expert testimony satisfies the requirements of Rule 702." United States v. Farhane, 634 F.3d 127, 158 (2d Cir. 2011) (quoting Kumho Tire Co., 526 U.S. at 152). Thus, under the Federal Rules of Evidence, a court "must ensure" that an expert's testimony will be "not only relevant, but reliable." Daubert, 509 U.S. at 589. The proponent of an expert's testimony bears the burden of establishing its admissibility by a preponderance of the evidence. United States v. Williams, 506 F.3d 151, 160 (2d Cir. 2007) (citing Daubert, 509 U.S. at 593 n.10).

         Finally, expert testimony, although deemed admissible pursuant to Rule 702, may be excluded under Federal Rule of Evidence 403. Nimely v. City of New York, 414 F.3d 381, 397 (2d Cir. 2005). Pursuant to Rule 403, the court "may exclude relevant evidence if its probative value is substantially outweighed by a danger of one or more of the following: unfair prejudice, confusing the issues, misleading the jury, undue delay, wasting time, or needlessly presenting cumulative evidence." Fed.R.Evid. 403. Thus, "in acting as a gatekeeper, the court is responsible for 'keep[ing] unreliable and irrelevant information from the jury, ' because of its 'inability to assist in factual determinations, its potential to create confusion, and its lack of probative value.'" Krause v. CSX Transp., 984 F.Supp.2d 62, 76-77 (N.D.N.Y. 2013) (quoting Allison v. McGhan Med. Corp., 184 F.3d 1300, 1311-12 (11 Cir. 1999)).

         B. Expert Qualifications

         Whether an expert is qualified is a threshold question that a court should address and resolve prior to engaging in a Daubert analysis. Washington v. Kellwood Co., 105 F.Supp.3d 293, 304 (S.D.N.Y. 2015); see also Nimely, 414 F.3d at 396 (stating that whether a purported expert witness is qualified is a "threshold question"); Zaremba v. Gen. Motors Corp., 360 F.3d 355, 360 (2d Cir. 2004) (noting that a district court's Daubert analysis was "almost superfluous" in light of a purported expert's "meager qualifications"). Within the Second Circuit, courts have liberally construed expert qualification requirements. "Liberality and flexibility in evaluating qualifications should be the rule [and] the expert should not be required to satisfy an overly narrow test of his own qualifications." Lappe v. American Honda Motor Co., 857 F.Supp. 222, 226 (N.D.N.Y. 1994), aff'd, 101 F.3d 682 (2d Cir. 1996); see also United States v. Brown, 776 F.2d 397, 400 (2d Cir. 1985) ("The words 'qualified as an expert by knowledge, skill, experience, training, or education' must be read in light of the liberalizing purpose of the Rule[.]" (quoting Fed.R.Evid. 702)).

         In general, the analysis requires the court to "examine the totality of the witness's background to determine whether he or she exhibits any one or more of the qualifications listed in Rule 702, " and then to "compare the area in which the witness has superior knowledge, education, experience, or skill with the subject matter of the proffered testimony." Washington, 105 F.Supp. at 304 (quotation marks and citations omitted). One may become qualified as an expert based on practical experience, so that professional education is not a prerequisite. United States v. Angelilli, 660 F.2d 23, 39-40 (2d Cir. 1981), cert. denied, 455 U.S. 945 (1982). "Experts need not conduct studies of their own in order to opine on a topic; a review of other studies and scientific literature can be enough to qualify experts to testify and to make that proposed testimony reliable." In re Mirena IUD Prod. Liab. Litig., 169 F.Supp.3d 396, 412 (S.D.N.Y. 2016) (collecting cases). "[O]f course, 'a district court may properly conclude that witnesses are insufficiently qualified . . . [where] their expertise is too general or too deficient.'" Krause, 984 F.Supp.2d at 74 (quoting Stagl v. Delta, 117 F.3d 76, 81 (2d Cir. 1997)).

         C. Reliability of Expert Testimony

         If it is determined that a witness is qualified to testify as an expert, a trial court must assess whether the proposed testimony is reliable. To assess reliability, the Supreme Court has delineated a non-exhaustive list of factors a court may consider, including "[w]hether a 'theory or technique . . . can be (and has been) tested'; [w]hether it 'has been subjected to peer review and publication'; [w]hether, in respect to a particular technique, there is a high 'known or potential rate of error' and if there are 'standards controlling the technique's operation'; and [w]hether the theory or technique enjoys 'general acceptance' within a 'relevant scientific community.'" Kumho Tire Co., 526 U.S. at 149-50 (quoting Daubert, 509 U.S. at 592-94). This list of factors is "meant to be helpful, not definitive" and the aforementioned factors "do not all necessarily apply even in every instance in which the reliability of scientific testimony is challenged." Id. at 151; see also E.E.O.C. v. Beauty Enterprises, Inc., 361 F.Supp.2d 11, 20 (D. Conn. 2005).

In undertaking this flexible inquiry, the district court must focus on the principles and methodology employed by the expert, without regard to the conclusions the expert has reached or the district court's belief as to the correctness of those conclusions. See Daubert, 509 U.S. at 595. . . . [W]hen an expert opinion is based on data, a methodology, or studies that are simply inadequate to support the conclusions reached, Daubert and Rule 702 mandate the exclusion of that unreliable opinion testimony.

Amorgianos v. Nat'l R.R. Passenger Corp., 303 F.3d 256, 266 (2d Cir. 2002). "Although expert testimony should be excluded if it is speculative or conjectural, or if it is based on assumptions that are so unrealistic and contradictory as to suggest bad faith or to be in essence an apples and oranges comparison, other contentions that the assumptions are unfounded go to the weight, not the admissibility, of the testimony.” Boucher v. U.S. ...