<b>Expert Witnesses:</b> Exclusion of Expert's Survey Results

Exclusion of Expert's Survey Results. The entertainment industry is awash with the exploitation of merchandise products. Experts use different methodologies to prove or disprove allegations of similarities between goods. In a trademark dispute over merchandise apparel sales, the U.S. District Court for the Southern District of New York excluded a plaintiff's expert's report that relied on a “sequential array” survey method to try to show that the defendants' merchandise created a likelihood of consumer confusion. THOIP v. The Walt Disney Co., 08 Civ. 6823(SAS).

THOIP filed an infringement suit under '43(a) of the Lanham Act to protect the company's claimed unregistered trademark rights in “Little Miss,” which THOIP used ' in a series of children's books, TV shows and videos ' in conjunction with a character-trait term (e.g., “Little Miss Bossy”) and individualized cartoon characters for each trait. THOIP also licensed the “Little Miss” characters for merchandise, including t-shirts. THOIP challenged Disney's sale of a line of “Little Miss Disney” and “Miss Disney” t-shirts that also featured trait words and cartoon characters (e.g., “Little Miss Bossy” with a Daisy Duck image). Both parties' t-shirt lines were sold in stores of close proximity, though Disney's distribution was much more limited.

To demonstrate a likelihood of consumer confusion, THOIP's expert witness utilized a survey technique in which participants were first shown a THOIP t-shirt, then an array of both Disney and non-related t-shirts. District Judge Shira A. Scheindlin acknowledged: “No survey is perfect and the limits and flaws of a survey generally go to evidentiary weight and do not warrant exclusion. Exclusion may be justified, however, where a single error or the cumulative errors are so serious that the survey is unreliable or insufficiently probative.” Judge Scheindlin also noted: “Where, as here, a trademark action contemplates a jury trial rather than a bench trial, the court should scrutinize survey evidence with particular care.”

The district judge observed of the parties' apparel: “Obviously, the Little Miss THOIP, Little Miss Disney, and Miss Disney lines are within the same narrow category of goods directed at the same set of consumers. The products are undeniably alike: All are T-shirts bearing a cartoon and a similar phrase of a certain witticism or cheekiness, are fabricated in a common faux-distressed style, and are marketed to and for women and girls.”

In excluding the THOIP expert's report, Judge Scheindlin concluded: “When ascertaining whether a survey methodology sufficiently simulates marketplace conditions, the focal point must be the specific products tested by the survey. THOIP has not shown a reasonable likelihood that consumers would have proximately encountered the specific pairs of shirts tested by [its expert witness].” The court also found that the THIOP expert's report lacked an effective control element to help estimate a degree of survey error, having instead used a Disney character without “other key unprotectable elements of the test shirts, such as a descriptive term.”

The district judge did accept the “monadic” survey methodology used by Disney's expert in which participants were asked about source and association after being shown either a Disney t-shirt, or a control t-shirt that featured Disney characters with different character-trait terms, though without the word “Little Miss” or “Miss.”