United States District Court, N.D. Indiana, South Bend Division
BARRINGTON MUSIC PRODUCTS, INC.. Plaintiff,
MUSIC ARTS CENTERS, GUITAR CENTER STORES, INC., EASTMAN MUSIC COMPANY, and WOODWIND & BRASSWIND, INC., Defendants.
MEMORANDUM AND ORDER
L. Miller, Jr., Judge United States District Court
matters pend in relation to the trial set to begin on May 16.
Barrington asks for oral argument on two of those matters,
but scheduling oral argument would delay the court's
ruling, and the court believes it has enough information, or
is not likely to gain more information necessary for a
pre-trial ruling. Accordingly, the court denies
Barrington's motion for oral argument [Doc. No. 115].
pretrial conference, when the court addressed
Barrington's motion to have judicial notice taken of the
ownership and validity of the trademark at issue, the
defendants came forth with a factual offer. In light of that
offer, the court invited the parties to submit briefs on the
issue. They have done so.
asks that the court take judicial notice that it (or its
predecessor) registered the VENTO® marks with the USPTO
on August 10, 2010 and submitted combined declarations of use
and inconstestability with the trademark office on August 10,
2016. Based on those facts, which can be accurately and
readily determined from sources whose accuracy cannot
reasonably be challenged, see Fed. R. Evid.
201(b)(2), Barrington asks the court to further notice that
its marks are incontestable under 15 U.S.C. § 1605.
defendants respond that VMB, LLC, and not Barrington,
registered the VENTO® marks. Barrington produced a
document that purports to be an assignment of the marks from
VMB to Barrington on December 31, 2013. In February 2015, VMB
sent a cease-and-desist letter to the defendants. A week
later, the Indiana Secretary of State dissolved VMB. At the
beginning of April 2015, VMB filed the trademark assignment
to Barrington with the USPTO. Dennis Bamber, who the court
understands to have been a principal of both VMB and
Barrington, testified at his deposition that he couldn't
remember exactly when the trademark assignment was signed.
these facts-which Barrington apparently doesn't
dispute-the defendants argue that either VMB couldn't
effectively transfer the marks to Barrington with the April
2015 notice to the USPTO because it had ceased to exist when
the Secretary of State dissolved in February, or VMB assigned
the marks to Barrington in December 2013 and so
misrepresented the marks' ownership when VMB sent the
cease-and-desist letter in February 2015.
defendants' arguments don't appear to have anything
to do with the marks' incontestability, which in turn
defeats the defendants' arguments. The undisputed facts
relating to the filings with the USPTO make the VENTO®
marks incontestable under 15 U.S.C. § 1065, which
amounts to “conclusive evidence of . . . the
registrant's ownership of the mark . . .” subject
to nine specific defenses allowed despite incontestability,
15 U.S.C. § 1115(b), and the defendants don't link
their argument to any of those nine specific defenses.
that, the series of events the defendants relate don't
undermine Barrington's contention that the right to the
marks passed from VMB to Barrington when the assignment was
filed with the USPTO. The defendants assume that once it was
dissolved, VMB couldn't transfer anything. That
overstates the limits on what a dissolved corporation can do
under Indiana law: “A dissolved corporation continues
it corporate existence but may not carry on any business
except that appropriate to wind up and liquidate its business
and affairs, including . . . disposing of it properties that
will not be distributed in kind to its shareholders . . .
.” Ind. Code. § 23-1-45-5-(a)(2). Mr. Bamber's
inability to recall when the assignment was signed
court GRANTS Barrington's request for judicial notice of
the Vento marks' ownership and validity [Doc. No. 99].
seeks to exclude all or part of the testimony of defense
expert Dr. Jeffrey A. Stec. The principal argument relates to
the implied characterization of Dr. Stec as a rebuttal
expert. The scheduling order set a January 31 deadline for
expert disclosures “from a party with the burden of
proof, ” and a March 30 deadline for expert disclosures
“from a party offering a rebuttal expert report . . .
.” The defendants identified Dr. Stec and served his
report on March 30. His report claims only to “review
and critically evaluate” the expert disclosures of
Jeffrey Samuels, who was disclosed as an expert witness for
Barrington. Barrington has decided not to present Mr.
Samuels's opinion, and so contends that Dr. Stec has
nothing to rebut. Barrington also argues that to the extent
some of Dr. Stec's opinions might be offered on some
other theory, those opinions are based on flawed methodology.
court overrules, as a pretrial matter, Barrington's
objections to Dr. Stec's testimony. Barrington might well
be right that its decision not to call Mr. Samuels will make
anything Dr. Stec has to say irrelevant or inadmissible.
Because he wasn't disclosed by January, the court would
be hard-pressed to allow him to offer opinions that are
relevant only to issues on which the defendants bear the
burden of proof. See Fed. R. Civ. P. 37(c)(1). But
expert testimony isn't the only thing an expert can
rebut. The court can't say that even without Mr. Samuels,
Barrington's case in chief won't include evidence for
which an opinion in Dr. Stec's report might be admissible
arguments concerning the admissibility of Dr. Stec's
opinions under Fed.R.Evid. 702 aren't persuasive as
justification for a preemptive pretrial exclusion. First,
Barrington surprisingly implies that Dr. Stec can't offer
opinions based on “self serving” testimony from
Barrington's Rule 30(b)(6). Setting aside the question of
whose interest a witness's testimony is allowed to serve,
see, e.g., United States v. Sklena, 692 F.3d 725,
733 (7th Cir. 2012) (“To say that evidence is
“self-serving” tells us practically nothing: a
great deal of perfectly admissible testimony fits this
description.”), experts can base opinions on
information of a sort others in the field ...