Tabberone's Hall of Shame - M3Girl Designs ~ lawsuits

Tabberone Logo
Tabberone is pronounced tab ber won
not tay ber own

Tabbers Temptations www.tabberone.com/Trademarks/ Home | Site Index | Disclaimer | Email Me!

"The only thing necessary for the triumph of evil is for good men to do nothing"
Edmund Burke

Last updated - July 26, 2012

3:09-cv-02390-F
M3Girl Designs LLC v. Blue Brownies LLC et al

DAY 4 : Thursday, June 21, 2012

Time 8:36 am Pre-Trial Discussions
Proceedings were briefly delayed as the court reporter was not available. A substitute court reporter was summoned.
Judge Royal Furgeson told Hemingway that Hanor would stipulate to the earnings of Blue Brownies. He also informed all parties that there would be no court the next day, Friday. He wanted the attorneys for both sides to meet Friday to work out the jury instructions.
Hemingway objected to the proposed calling of Josh Kinney as a witness as he was not disclosed in discovery. The judge agreed that the Plaintiffs had not been given enough notice to vette the witness. He said he would not delay the jury trial and asked if Kinney had knowledge of the facts. Hanor said that BottleCapCompany.com sells the components to make the claimed trade dress and that the company had received a cease and desist letter from the Plaintiffs. The judge set aside ruling and said he had already ruled about witnesses and expected both parties to comply. He suggested that during the lunch break Hemingway could depose Kinney with a court reporter present. Hemingway reminded the judge that Hanor said that he expect Kinney's testimony to take about one hour. That did not leave him much time. (Which was a valid point. But so was the time frame where Friday was being eliminated.)
The judge said he was struggling with the trademark dress issue. He wanted to know how the sale of a single bottle cap was part of the claimed trade dress? Hemingway responded that the infringement happened when the bottle cap was worn. And the purpose of the bottle cap was to be worn with the choker necklace. The judge called Hemingway an inventive and creative lawyer. (Is that the same thing as politely calling him a lying sack of shit?) Hemingway said it was the offer for sale by Blue Brownies that was infringing. But the judge was having a problem with the 99% claim. He told Hemingway that he had to produce evidence that he had a trade dress. (What the judge was saying, is that m3 girl designs had to prove trade dress beyond having their witnesses just repeat their mantra, over and over. We can understand that when you do not have the evidence to support your case you have a problem. But after three years, it must be difficult to admit you do not have a case. And since lawyers get paid more for being in court than being in the office, we understand why Hemingway wanted to go to trial.) Hemingway claimed that [the trade dress] was a paired component: the choker necklace and the bottle cap.
The judge stated that he had a large problem with this case. He considered the secondary meaning question and the functionality aspect a large problem. Hemingway replied that there was too much emphasis on the sales issue and not enough on how it was presented in commerce.

Time 9:03 am Christa Dudte Back On The Witness Stand

Did she recall the first cease and desist letter? Yes. There was nothing about trade dress in either of the letters received. Blue Brownies decided to have an attorney respond to the second cease and desist letter. As far as the lawsuit in December 2009, they had been served on the Saturday before Christmas. It pretty much ruined their holidays. 2011 was the first time the Plaintiffs mentioned "trade dress" allegations.

Time 9:07 am Witness Christa Dudte is passed to Plaintiffs for re-cross.

Hemingway started with CSPC testing. Did you do any testing on the bottle caps and jewelry? No. Did you spend one penny on testing? She did not believe that any testing was required. They purchased their materials from reputable sources and assumed they had already been tested. (And actually, since they were using materials that had already been tested, their product had, by default, been tested. Of course, Hemingway was trying to present Blue Brownies as being negligent. Because it served the purposes of his client.) Was she aware of any government regulations concerning testing? Arkansas requires there be no lead in the products. What about government standards? They went to local craft stores to sell their products. Hemingway then asked if she ever received an email from a purchaser who had a complaint.

Objection The judge said Hemingway could ask the witness if she remembered things.

Did she remember other instances where Blue Brownies failed to ship the correct order?. There may have been. She didn't handle those things.
In 2008, Charlotte Liles found out about m3 girl designs. In 2009, they formed Blue Brownies and started the web site? Yes. Hemingway displayed the web page and directed her attention to the CLICK-IT™ on the screen. Who placed the "TM" there? She did not know. Someone must have thought you had proprietary rights to CLICK-IT? She did not know. When you received the cease and desist letter in February 2009, you made a conscious decision to continue selling the choker bottle cap necklaces? Yes. In May 2009, after you received the second cease and desist letter, you again made a conscious decision to continue selling? Yes. (Hemingway appeared to be trying to orchestrate the testimony.)
The judge interrupted. As he understood the claim, the trade dress consisted of the five elements? If she sells ten bottle caps then you [the Plaintiffs] don't care?
Hemingway - it is the offer in commerce, not just the sales.
Judge - if they are selling bottle caps only, that violates the trade dress?
Hemingway - yes. Offering them together.
Judge - reminds the jury that Charlotte Liles is not involved in the case. Hemingway repeated to Christa Dudte that Charlotte Liles was out of the case. Robert Dudte makes all of the product sold by Blue Brownies? Correct. Hemingway again shows the Blue Brownies web pages. You were offering bottle caps and necklaces together? They were sold separately. But the web site is still up and offering articles for sale? We are not shipping product at this time. And you didn't think to tell anyone on our side of the case that you are not shipping anymore? No one told me I had to.

Objection Argumentative. Sustained.

While being sued, you secretly stopped selling?

Objection Argumentative. Sustained.

Seems to me you could have told somebody. (Hemingway was really stuck on STUPID on this issue.)

Objection Sustained.

Hemingway then talked about an email that said something about the bottle cap magnets being for refrigerators.

Time 9:27 am Witness for Plaintiffs, Dr Ward.

She was to testify about her survey. Hemingway started with her background. She stated that she had a Bachelor of Science degree, a Masters Degree, a PHD and teaches at SMU.
When asked if in her opinion she believed that m3 girl designs had acquired source identifying significance with their trade dress she replied yes.
The judge told the jury that Dr Ward had specialized training and could give opinion testimony. Expert witnesses are treated as any other witness. And like with other witnesses, the jury decides what to believe and what not to believe. It was their job to judge the credibility of the testimony.
Hemingway then asked Dr Ward to focus on the beginning of her relationship with m3 girl designs. She went over when she first met everyone, read the pleadings, read the law and asked detailed questions about the issues. She determined the target market and hired a survey company to conduct the testing and she then compiled the results. She did exhaustive background research looking for other court cases with similar issues. The closest one she found was the NcNeil case [McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC 511 F. 3d 350 - Court of Appeals, 3rd Circuit, 2007], which dealt with a sweetener that was being marketed in similar packaging. She used similar questions as in the McNeil case.
What type of screening was used in the survey? The survey was on-line. The first questions were have you purchased bottle cap jewelry in the last twelve months? Are planning to purchase bottle cap jewelry in the next twelve months? Her target was everyone with experience or knowledge of the product. Survey takers were compensated with an on-line coupon regardless of their answers to the first questions. They had over 700 respondents. Of that number 108 qualified for further questioning.
[The pictures shown were one of a set of of choker necklaces, two of bottle cap magnets, one of a choker necklace on an unidentified model, and one of a choker necklace being modeled by Margo Bradshaw. The list of five manufacturers had m3 girl designs listed third and had Blue Brownies listed last.]
Next they were asked if they had ever seen bottle cap jewelry like the bottle cap jewelry shown? 39 said once, 37 said two or more times and 30 did not know. Did they buy one brand or more than one brand? The majority bought one brand. Who did you purchase the jewelry for? Of the brands listed below, who manufactured the above pictured jewelry? The largest percentage was m3 girl designs, 36% or 39 of the respondents. Who is the model wearing the choker necklace in the pictures? Margo Bradshaw.
The judge informed the jury that expert witness reports never go into evidence.
The next question asked the respondent why they thought the company they picked had manufactured the bottle cap jewelry pictured. There were eight choices and they were to select all that applied. Product attributes, design, marketing. Another question asked them what attributes allowed you to recognize which brand? Each selection had a scale from one to six and all of the responses were considered to be above negative [above three]. Another question asked if the bottle cap design indicated the brand that made the jewelry? Same scale of one to six. The results were significantly above negative.
The gender of those taking the survey? By far female. Age? Most were over 18 which was consistent with a parent buying the bottle cap jewelry.

Time 10:17 am 15 minute break

Time 10:22 am
The judge indicated they had received a question from the jury. What percentage of the 108 said the products looked the same? What was the income level of the respondents? From where and when did Diane Bradshaw know Dr Ward?
Time 10:26 am
The jury returned. The judge told them that their questions in the note were appriceated and that the lawyers would get their questions answered.
Hemingway to Dr Ward - did you know anyone involved in this case at all? No. There was no relationship whatsoever. When did you first get involved in this case? Last August [August 2011], the third week. Where did you get your information? Systematic searches on-line, all over. And the survey? It was on-line. By email. The survey company contacts people who may or may not take the survey.
Judge to Dr Ward - you retained a survey company? Yes.
The respondent were from across the country. Age and income? Age was 8 to 54 and income was $60,000 to $69,000.
[I may not have some of the following names correct. But they are close.] What was the percentage of each brand selected? 13 for FooFoo Jewelry, 15 for Loveivey, 39 for m3 girl designs, 35 for Bejegirl or 32%, and 5 for Blue Brownies.
Dr Ward agreed that their [m3 girl designs'] trade dress had achieved distinctiveness. The results were statistically significant (over Blue Brownies). Do you believe it was a fair sampling? Yes. Why? People form opinions over time. Were multiple choices required on the survey? They are more effective.

Time 10:56 am Witness Dr Ward is passed to Defendants for cross.

Rocky Little, co-counsel for the Defendants, conducted the cross examination of the witness.
How much were you paid for your work? $450.00 an hour. How much paperwork was required before the trial? She spent some 7 to 8 hours before the survey. Could you break that down to specifics? She spent 3 hours researching court cases and the McNeil case. She spent 2 to 3 hours with Hemingway and 2 hours on other things.
Exhibit #188, the survey was put on the screen. Question #1, says bottle cap jewelry instead of choker bottle cap necklace? It meant the same thing and she then describes a choker bottle cap necklace using the m3 girl designs trade dress wording. (This is where it became evident to me that Dr Ward had crossed to the Dark Side when she repeated the trade dress mantra.)
Would you say that bottle cap jewelry is a fad? Yes. I would deem it as a fad. Fads do not last long. They have a short product cycle? Yes. I would agree with that.
He then went to the sample pictures. Dr Ward said she had selected all of the pictures. They were all m3 girl designs chokers. The collection of pictures consisted one picture of several choker necklaces, two pictures of bottle caps, a choker necklace on someone's neck, a choker necklace on Marhe Bradshaw, and a bottle cap surrounded by flower petals. She repeated that the trade dress was the entire look and repeated the components of the trade dress. But they had to be worn together for the trade dress. Her impression was that they go together. They were meant to be worn together. (It seemed to me that either she had genuinely bought into the trade dress lie or she was being a loyal mercenary who had been well compensated. No reasonable person could buy the m3 girl designs line about "attachment" and "projection".)
She did agree that there were many bottle caps found on the internet that were being sold without choker necklaces. And that it was Margo Bradshaw shown in the picture wearing the choker necklace. She did not believe that respondents were able to identify Margo.

Time 11:23 am 15 minute break

Judge Royal Furgeson again briefly questioned the trade dress issue. He also questioned the connection between Blue Brownies and Josh Kinney. The jury was brought in.
Time 11:36 am Exhibit #189, a copy of the survey. Exhibit #190, validation of the survey. Little went back to the survey pictures. Picture #2 [one of the bottle caps magnets] could be worn with a necklace that is why it was included. Component parts having none of the trade dress look did not compromise the survey. (She was well rehearsed.) Again, it is the overall look.
Do you see a metal washer? No. Is the magnet part of the trade dress? It is not part of the overall look. Do you know the size of a bottle cap?

Objection The judge said he would give the defense some leeway here.

She did not know the size. Do they come in standard sizes? Did not know. Doesn't FUN-CAP-U-LOUS have the same trade dress as m3 girl designs? It was similar. The magnet - you cannot see it? Could the respondents leave the survey and Google m3 girl designs and then return to the survey? No. p You stated that the answers to the question, have you seen or purchased bottle cap jewelry, were 39, 37 and 27? Yes. Those picking m3 girl designs were 36% Yes. Doesn't that mean that 64% did not pick m3 girl designs? Yes. Blue Brownies was picked by 4.6% and the margin of error for the survey is 5%? That is statistically insignificant. They were not confused by Blue Brownies. So what were they confused by?

Objection Sustained.

5%? Isn't it potentially true that none were confused by Blue Brownies? No. I don't know. She was there for the screening. More respondents thought that the jewelry was made by companies that do not even sell bottle cap jewelry.
Judge - how did you choose the names?
At random. Two she invented. Was Bejegirl real? No. Yet 32.4% selected that name? It is within the margin of error.

Time 12:25 pm Lunch Break To resume at 1:40 pm..

Time 1:40 pm Dr Ward continues as witness.

No statistical difference between the two? 64% of the respondents did not pick m3 girl designs? This question - which of the following attributes allowed you to recognize which brand made this jewelry? [the scale starts with zero "not at all" and runs from to 7 "very much". The attributes included design with 4.1 average, ridges with 3.73 average, colors 4.22 average, art work with 4.18 average, metal with 3.97 average, and choker design with 3.92 average]
An answer (or average) of 4 is considered to be indifferent as it is the middle point. So this 2011 survey of a fad item is supposed to reflect what people thought over two years ago? Was this her belief, Yes. Do you have anything besides zero empirical data to support this? No. [A reminder here that m3 girl designs had to show trade dress, or secondary meaning, existed before February 2009 when Blue Brownies entered into the marketplace.]

Time 2 pm Witness Dr Ward is passed to Plaintiffs for re-cross.

She had stated before that she had spent some 7 hours on the case? There was much more time. Over 50 hours in all. What impact would a copyist have as an unauthorized market entrant?

Objection What basis for this? The judge asked her if she had looked at fad markets? Yes. Abercrombie & Fitch was one. Did Abercrombie & Fitch have trademark or trade dress issues? No, They market luxury items and that is what usually gets counterfeited.
Objection sustained.

The judge then told the jury that a counterfeit means that one does not know the source of the product.
Bottle caps and necklaces are offered together on web sites? Are you aware that you can wear them together? I think they are presented as being user together. They are intended to be worn together.
No further questions. Dr Ward stayed on the stand.

Time 2:10 pm 10 minute break

Jury out. The judge stated that secondary meaning cuts off in January 2009 and that most of the television and advertising was after that date. There was heavy publicity in 2009 and 2010. Does that diminish the survey?
Dr Ward - their impression were built up over time. First impressions are the most defining. Core responses. Those are the major influence.
Jury back.

Time 2:20 pm Witness Josh Kinney taken out of order.

The judge explained to the jury that a witness for the Defendants was being taken out of order to accommodate because of scheduling problems. The judge said it was to the credit of the attorneys that they could come to an agreement concerning this witness out of order. [Both parties had agreed to limit testimony to under one hour.]
Josh Kinney took the witness stand. Charles Hanor began the questioning. You are the owner of BottleCapCo.com? Yes. When did you start this company? In 2009. He sells bottle caps and pretty much all of the components to make them. Exhibit #64, his web site. Do you display bottle cap choker necklaces? Yes. Hanor shows a web page of only blank bottle caps. Minimum order for him is 400,000 bottle caps. He also owns BottleCapInc.com. He sells to stores like Hobby Lobby and has an email list of over 10,000 addresses.
Did you receive a cease and desist letter from m3 girl designs? Yes. He did not cease selling. He is still displaying bottle cap choker necklaces today? Yes.

Time 2:27 pm Witness Josh Kinney passed to Plaintiffs for questioning.

Hemingway has the full page of the BottleCapCo.com web site on the screen. Refers to the chokers. Kinney sells parts and pieces. They are not finished products. He sells the unassembled choker, washer, bottle cap, art work and magnets. Did your wife used to make bottle caps? Yes. Do you still offer finished products on the internet? Not to my knowledge.
Hemingway asked for a little time as he went to the transcript of Kinney's earlier deposition. He asked Kinney to read one passage. Do you still offer finished products on the internet? No was the transcript reply.
BottleCapInc.com is the same except for the washer.

Time 2:45 pm Witness Josh Kinney passed to Defendants for re-cross.

Exhibit #236, a screen shot of Kinney's web site showing chokers. Nothing further.

Time 2:47 pm Expert Witness Dr Reynolds called by Plaintiffs.

Hemingway had Dr Reynolds go over his background. He is now a senior lecturer.
Had he reviewed the revenues received by Blue Brownies for the last three years. Yes. He went over their PayPal account and bank accounts. From 2009 through 2911, their total revenues were $38,840, $23,975 and $5,139 for a total of $67,954. (During the same time period, m3 girl designs made $2.5 million, $1.6 million and $321,000 for a total of over $3.4 million. 50 times more revenue and m3 girl designs claims Blue Brownies was the reason their business was failing? Right.)
Dr Reynolds guesstimated that their tax returns were off by $2,000. Was he confident of that number? Yes.

Time 2:53 pm Expert Witness Dr Reynolds passed to Defendants for cross.

Hanor had one short question for Dr Reynolds.

Time 2:54 pm 10 minute break

Time 3:05 pm Witness Robert Dudte called by Plaintiffs.

He said he became the vice-president of Blue Brownies in 2009. And part owner. The web site was mostly done by Kevin Liles, husband of Charlotte Liles. When he was asked by Hemingway what the "TM" on CLICK-IT™ CAPS meant, he replied that it could mean or does mean they had some rights in the name. He admitted did not fully understand trademark law. What is your understanding of this trademark litigation? They stopped using CLICK-IT after they got the letter.
They also were selling something called "Snazzy Squares". They did not sell many. The necklaces and the bottle cap magnets are offered separately on the web site. But they are intended to be used together? That is up to the purchaser. In the beginning, they originally sold only the choker necklaces and bottle caps. Which you offered in commerce? Yes.
He did not attend the PTA meeting where his wife first saw bottle cap jewelry. Liles first heard of m3 girl designs in December 2008. Hemingway challenged that by asking if Dudte knew that the Dallas Market does not send out fliers in December so she had to have learned of them before that date. He did not know.
And what about Consumer Product Safety Commission [CPSC] testing? They purchased their components from reputable companies so they did not feel there was a need. Robert Dudte stated that the epoxy could not come off.
========================================================================================

To Be Continued

Federal Court Cases
Alphabetically | by Federal Circuit | by Subject | by Court Quotations

Federal Statutes
Copyright Act 17 U.S.C. 5 | Digital Millenium Copyright Act 17 U.S.C. 12 | Lanham Act 15 U.S.C. 22