Opinion
Case No. 6:20-cv-1320-RBD-DAB
2022-09-27
HYDE PARK STORAGE SUITES DAYTONA, LLC; and Hyde Park Storage Suites, Inc., Plaintiffs, v. CROWN PARK STORAGE SUITES, LLC; and Richard A. Loman, Defendants.
Frank R. Jakes, John David Zarate, Jr., Johnson Pope Bokor Ruppel & Burns, LLP, Tampa, FL, Daniel A. Hoffman, Arlington, VA, Edwin A. Sisson, Edwin A. Sisson, Attorney at Law, LLC, Medina, OH, for Plaintiffs. Daniel John Webster, Daniel J. Webster, PA, Daytona Beach, FL, Russell M. Racine, Pro Hac Vice, Cranfill Sumner & Hartzog LLP, Charlotte, NC, for Defendant Crown Park Storage Suites, LLC. Russell M. Racine, Pro Hac Vice, Cranfill Sumner & Hartzog LLP, Charlotte, NC, Reed Russell, Phelps Dunbar, LLP, Tampa, FL, for Defendant Richard A. Loman.
Frank R. Jakes, John David Zarate, Jr., Johnson Pope Bokor Ruppel & Burns, LLP, Tampa, FL, Daniel A. Hoffman, Arlington, VA, Edwin A. Sisson, Edwin A. Sisson, Attorney at Law, LLC, Medina, OH, for Plaintiffs. Daniel John Webster, Daniel J. Webster, PA, Daytona Beach, FL, Russell M. Racine, Pro Hac Vice, Cranfill Sumner & Hartzog LLP, Charlotte, NC, for Defendant Crown Park Storage Suites, LLC. Russell M. Racine, Pro Hac Vice, Cranfill Sumner & Hartzog LLP, Charlotte, NC, Reed Russell, Phelps Dunbar, LLP, Tampa, FL, for Defendant Richard A. Loman. ORDER ROY B. DALTON JR., United States District Judge
Before the Court are:
1. Defendants' Joint Motion for Partial Summary Judgment (Doc. 69 ("Crown Park's SJ"));Crown Park's SJ and Hyde Park's SJ are due to be denied.
2. Defendants' Motion to Exclude Testimony of Plaintiffs' Expert Kimbley Laird Muller, Esq. (Doc. 70 ("Muller Daubert"));
3. Defendants' Motion to Exclude Testimony of Plaintiffs' Expert Dennis J. Hall (Doc. 71 ("Hall Daubert"));
4. Plaintiffs' Motion for Partial Summary Judgment (Doc. 72 ("Hyde Park's SJ"));
5. Plaintiffs' Daubert Motion to Exclude Expert Testimony of Brian P. Fredley (Doc. 78 ("Fredley Daubert"));
6. Defendants' Memorandum of Law in Opposition to Plaintiffs' Motion for Partial Summary Judgment (Doc. 82);
7. Defendants' Memorandum of Law in Opposition to Plaintiffs' Daubert Motion to Exclude Expert Testimony of Brian P. Fredley (Doc. 83);
8. Plaintiffs' Memorandum of Law in Opposition to Defendants' Motion to Exclude Testimony of Plaintiffs' Expert Dennis J. Hall (Doc. 84);
9. Plaintiffs' Memorandum of Law in Opposition to Defendants' Motion to Exclude Testimony of Plaintiffs' Expert Kimbley Laird Muller, Esq. (Doc. 85);
10. Plaintiffs' Memorandum of Law in Opposition to Defendants' Motion for Partial Summary Judgment (Doc. 87);
11. Plaintiffs' Motion to Strike Affidavit of Architect, BPF Design, Inc., in Support of Defendants' Motion for Summary Judgment (Doc. 92 ("Hyde Park's Motion to Strike"));
12. Plaintiffs' Reply to Defendants' Opposition to Plaintiffs' Motion for Partial Summary Judgment (Doc. 93);
13. Defendants' Memorandum of Law in Opposition to Plaintiffs' Motion to Strike Affidavit of Architect, BPF Design, Inc. (Doc. 96); and
14. Defendants' Reply to Plaintiffs' Memorandum of Law in Opposition to Defendants' Motion for Partial Summary Judgment (Doc. 97).
In this trade dress dispute, Kevin Mahl operates climate-controlled storage facilities to house luxury items. These facilities are represented by Plaintiffs Hyde Park Storage Suites Daytona, LLC, and Hyde Park Storage Suites, Inc. In the 2000s, Mahl developed Hyde Park I (which does not have the claimed trade dress), and in 2010 he developed and designed Hyde Park Daytona (which has the trade dress features). In 2013 and 2015, Mahl developed Hyde Park II and III, which are modeled after Hyde Park Daytona. A former Hyde Park Daytona customer, Defendant Richard A. Loman, designed a facility, known as Crown Park. Loman has not built this facility yet, but has advertised to pre-sell the units. Plaintiffs sued Loman and Crown Park, claiming that Loman is infringing on the Hyde Park trade dress. These are the claimed features of the trade dress:
(a) A closed-in structure accessible through a single, gated vehicle entryway with prominent structures positioned on either side evoking a fortress, castle-like feel;And optional features:
(b) The entryway provides ingress and egress to the structure's closed-in secure private community courtyard created by a wall formed by contiguously aligned, independent, large, inwardly facing luxury storage units capable of securely housing expensive recreational vehicles, boats, automobiles, and other treasures;
(c) These contiguous, inward facing storage units form the tall, substantial, and seemingly impenetrable wall surrounding, concealing, and protecting each stored treasure along with the community courtyard from intruders;
(d) The inward facing units have a large overhead door providing access from the inward facing unit to the community courtyard;
(e) A crenel roofline that extends from the prominent structures along the top of the public-facing, exterior facade of the closed-in structure continuing the fortress, castle-like feel;(Doc. 1, ¶¶ 22-23.) The Court finds that genuine issues of material fact preclude a determination of the trade dress's validity.
(f) An interior building containing additional storage units located in the center of the courtyard (a trade dress feature also employed by an affiliate entity Hyde Park III, LLC in its facilities in Cornelius, NC); and
(g) An angled, shaved corner of the contiguous and continuous closed-in structure at which the single gated entry is located with the flanking towers.
See infra notes 15, 23.
BACKGROUND
Mahl, a nonparty, is the designer, developer, owner, and operator of climate-controlled storage facilities whose units are sold like condominiums and house luxury items such as recreational vehicles. (Doc. 73-1, ¶¶ 1, 18; Doc. 88-4, p. 2.) Plaintiffs Hyde Park Storage Suites Daytona, LLC, and Hyde Park Storage Suites, Inc. (collectively, "Hyde Park") are representative facilities.
In the 2000s, Mahl developed Hyde Park I in North Carolina, which he considers a "traditional" storage unit. (Doc. 73-1, ¶¶ 10, 13.) In 2010, Mahl implemented a new layout for Hyde Park Daytona in Florida that embodies the trade dress features he claims today. (Id. ¶ 13.) Mahl advertised for Hyde Park Daytona before construction. (Doc. 89-1, ¶ 19.) Ads included a paid television commercial with NASCAR driver John Andretti. (Id. ¶ 17.) Other ads included pictures with NASCAR driver Robert Yates, magazine advertisements, direct mailing, billboards, and promotions based on events like "Bike Week," which Hyde Park Daytona hosted. (Id. ¶¶ 21-24.) Ultimately, advertising expenses for Hyde Park Daytona totaled $228,911. (Doc. 90-1, ¶ 5.) Hyde Park Daytona consists of inward facing storage units that form a wall surrounding the storage units and a courtyard in the center. (Doc. 73-1, ¶ 13.) There is only one entrance into Hyde Park Daytona, and it is in the corner of the facility, through one gate with two towers on each side. (Id.) Given the structure, the facility has "corner units" that are difficult to sell because they are shaped less efficiently for storage. (Id. ¶¶ 23-26.) Hyde Park Daytona did not sell its first corner unit until seven years after it opened. (Id. ¶ 26.)
Mahl owns and operates a tire company used in every NASCAR race. (Doc. 1, ¶ 2.)
In 2013 and 2015, Mahl built two other storage facilities in North Carolina modeled after Hyde Park Daytona, containing the same pesky corner units (Hyde Park II and III). (Id. ¶¶ 25, 30; Doc. 89-1, ¶ 25.) Marketing expenses for Hyde Park Daytona and Hyde Park II and III totaled $281,854. (Doc. 90-1, ¶ 5.) Here are the Hyde Park facilities, Hyde Park I, Hyde Park Daytona, and Hyde Park II and III (same layout), respectively:
Image materials not available for display. (Doc. 73-1, ¶ 33; Doc. 73-6, Ex. E, p. 2; Doc. 88-8, p. 2; Doc. 88-9, p. 2.)
In 2017, Loman leased a unit at Hyde Park Daytona. (Doc. 75-1, p. 7:19-23.) When he entered the lease, Loman was considering designing his own luxury storage facility, given his difficulty finding an available unit. (Id. at 7:19-8:7.) Settled into his unit at Hyde Park Daytona, Loman looked for a property on which to build his own facility. (Id. at 11:9-17.) In December 2017, Loman obtained Hyde Park Daytona's blueprints from the city and asked general contractors and other parties to estimate the cost to build something similar. (Id. at 12:5-13:13.) Loman sent emails stating that he intended to copy Hyde Park Daytona's design, "layout[,] and structure," and wanted a bigger facility. (Doc. 79-13; Doc. 79-19.)
Loman testified that he brought Hyde Park's blueprints to these consultations for a cost analysis only. (Doc. 75-1, p. 17:1-7.)
Eventually, Loman hired BPF Design, Inc. ("BPF") in 2018 to design his facility and brought only Hyde Park Daytona's blueprints to their meeting. (Doc. 69-2, ¶ 3; Doc. 75-1, p. 16:22-25; Doc. 75-2, p. 9:4-25.) During the meeting, Brian Fredley of BPF sketched a design for a facility he admits is similar to Hyde Park Daytona but with different dimensions. (Doc. 75-2, pp. 9:17-10:11.) Loman hired a general contractor, who called the project the "Hyde park wannabe" and named the project "Hyde Park RV Storage Resort." (Doc. 69-1, pp. 5:1-13, 6:5-16; Doc. 72-3; Doc. 91-2, p. 10.)
Fredley later testified that Loman said he did not want a Mediterranean style like Hyde Park Daytona. (Doc. 75-2, p. 41:1-20.)
With his own blueprints in hand, Loman planned to build his own luxury, climate-controlled storage unit facility, Defendant Crown Park Storage Suites (together with Loman, "Crown Park"). (Doc. 91-1, p. 9:18-22.) Here is the proposed Crown Park facility:
The Crown Park facility is being redesigned. (See Doc. 92-2, p. 4.)
Image materials not available for display. (Doc. 1, ¶ 37.) Crown Park was to be located just shy of a mile from Hyde Park Daytona. (Doc. 89-1, ¶ 32.) Advertising for Crown Park began mid-2018 but the facility has not been built. (See, e.g., Doc. 79-8, pp. 43, 45, 47.) Loman pointed people to Hyde Park Daytona's website as an example of the facility he was building, and once he launched Crown Park's website, he used pictures of his own suite at Hyde Park Daytona and a friend's. (Doc. 79-21; Doc. 91-1, pp. 12:9-15:5.) Loman had a magnetic sign on his truck advertising for Crown Park while parked inside Hyde Park Daytona. (Doc. 91-1, pp. 18:25-20:12 & Ex. 43, p. 37.) During his advertising campaign, Loman met with a Hyde Park Daytona tenant and explained that he was building "something like Hyde Park." (Doc. 91-3, pp. 11:17-12:8, 21:2-14.)
In designing his own website for Crown Park, Loman emailed what looked like a link of Hyde Park Daytona's website to his web designer. (Doc. 79, p. 15; Doc. 79-23.)
As recently as 2020, Loman emailed a copy of Hyde Park Daytona's blueprints to a business partner and the meeting minutes with members of Crown Park states, "we were going to provide a basic shell unit that would present professionally like a Hyde Park." (Doc. 79-17; Doc. 79-24.)
Catching wind of Loman's plans to build Crown Park, in 2020, Hyde Park sued Loman and Crown Park for: trade dress infringement (Count I); false designation of origin (Count II); federal trademark infringement (Count III); violation of the Florida Deceptive and Unfair Trade Practices Act (Count IV); Florida common law unfair competition (Count V); unauthorized publication of photos under Florida law (Count VI); breach of contract (Count VII); and tortious interference with business relationships (Count VIII). (Doc. 1, ¶¶ 43-91.) Crown Park counterclaimed for a declaration that Hyde Park's trade dress is unprotectable (Counterclaim I) and for non-infringement (Counterclaim II). (Doc. 48, ¶¶ 30-46.) Hyde Park now moves for partial summary judgment on the trade dress claims (Count I and Counterclaim I). (Doc. 72, p. 4 & n.2.) And Crown Park moves for partial summary judgment solely on Count I. (Doc. 69, p. 5.) Both parties moved to exclude expert opinions. (See Docs. 70, 71, 78, 92.) With briefing complete (Docs. 82-85, 87, 93, 96, 97), the matter is ripe.
STANDARDS
I. Summary Judgment
Summary judgment is appropriate only "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The Court must view the evidence and all reasonable inferences drawn from the evidence in the light most favorable to the non-movant. Battle v. Bd. of Regents for Ga., 468 F.3d 755, 759 (11th Cir. 2006). On cross-motions, "[t]he Court must consider each motion separately, resolving all reasonable inferences against the party whose motion is under consideration." Koehler v. Waypoint Res. Grp., No. 8:18-cv-2071, 2019 WL 5722117, at *1 (M.D. Fla. Nov. 5, 2019). Then the Court must decide whether there is "sufficient disagreement to require submission to a jury." Hickson Corp. v. N. Crossarm Co., 357 F.3d 1256, 1260 (11th Cir. 2004) (cleaned up).
II. Daubert
Expert testimony may be admitted only if: "(1) the expert is qualified to testify . . . ; (2) the methodology by which the expert reaches his conclusions is sufficiently reliable . . . ; and (3) the testimony assists the trier of fact . . . ." Hendrix ex rel. G.P. v. Evenflo Co., 609 F.3d 1183, 1194 (11th Cir. 2010) (cleaned up); see also Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993). The proponent of the expert must establish the opinion is admissible by a preponderance of the evidence. See Kilpatrick v. Breg, Inc., 613 F.3d 1329, 1335 (11th Cir. 2010).
ANALYSIS
I. SJ Motions
Hyde Park moves for partial summary judgment on the claim of trade dress infringement (Count I) and the counterclaim in which Crown Park seeks a declaratory judgment that the trade dress is not protectable (Counterclaim I). (Doc. 72, p. 4 & n.2.) Crown Park cross-moves for summary judgment only on Count I. (Doc. 69, p. 5.) Genuine issues of material fact preclude resolution of these claims.
"Trade dress involves the total image of a product and may include features such as size [or] shape . . . ." John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983). To succeed on a trade dress infringement claim, a plaintiff must show: (1) the trade dress is inherently distinctive or has acquired secondary meaning; (2) the trade dress is non-functional; and (3) the defendant's actions are likely to cause confusion. See J-B Weld Co. v. Gorilla Glue Co., 978 F.3d 778, 788 (11th Cir. 2020). Failing to prove any of these elements dooms the claim. See Dippin' Dots, Inc. v. Frosty Bites Distrib., LLC, 369 F.3d 1197, 1202 (11th Cir. 2004). Hyde Park moves for summary judgment solely on the issues of distinctiveness and functionality, arguing that genuine issues of material fact preclude resolution of the likelihood of confusion element. (Doc. 72, p. 4 & n.2.) Crown Park moves for summary judgment on all three elements. (Doc. 69, p. 5.) The Court takes each element in turn.
Crown Park tries to recast Hyde Park's trade dress as the colors and signs on its facilities (see, e.g., Doc. 69, p. 11), but those are not the trade dress features Hyde Park claims. (See Doc. 1, ¶¶ 22-23.) And Crown Park offers no substantive analysis or authority for finding that the claimed features here are not protectable as a trade dress, other than that they are functional and there is no likelihood of confusion. (See, e.g., Doc. 82, pp. 9, 13; Doc. 97, pp. 2-3.)
A. Distinctiveness
Crown Park argues that: (1) the claimed trade dress is a product design so it must have acquired secondary meaning; and (2) it has not acquired secondary meaning. (Doc. 69, pp. 21-22.) Hyde Park responds that its trade dress is product packaging, protectable by showing inherent distinctiveness. (Doc. 72, pp. 10-12.) The Court finds that Hyde Park's trade dress is properly characterized as a product design, protectable only if it acquired secondary meaning.
In support of its argument, Hyde Park tries to characterize its trade dress as a "service provider," like the restaurant in Two Pesos. (Doc. 72, p. 11.) But the issue of whether the trade dress in that case was inherently distinctive was not before the Court. See Two Pesos, 505 U.S. at 770, 112 S.Ct. 2753.
First, an overview of the law on trade dress distinctiveness is warranted. A trade dress can be characterized either as product design or product packaging. See, e.g., Wal-Mart Stores, Inc. v. Samara Brothers, 529 U.S. 205, 212, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000). The purpose of having a product inside a distinctive packaging "is most often to identify the source of the product." Id. at 212, 120 S.Ct. 1339. In contrast, a product design "almost invariably serves purposes other than source identification." Id. Because product packaging trade dress can be inherently distinctive, it is protectable without a showing of secondary meaning. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). But a product design trade dress can never be inherently distinctive, so it is protectable only upon acquiring secondary meaning. See Samara, 529 U.S. at 216, 120 S.Ct. 1339. So the distinction between product design and packaging is key.
While other district courts in the Eleventh Circuit have interpreted Samara to mean that a plaintiff may only protect an unregistered trade dress upon a showing of secondary meaning, the Court is not convinced that this distinction is correct. See Christrikes Custom Motorcycles, Inc. v. Teutul, No. 6:14-cv-1519, 2016 WL 3406391, at *3 (M.D. Fla. June 21, 2016); Cornell Pump Co. v. Thompson Pump & Mfg. Co., No. 6:17-cv-847, 2018 WL 3827249, at *6 (M.D. Fla. May 18, 2018). The distinction Samara intended to make was between product design and packaging, not whether a trade dress was registered. See Samara, 529 U.S. at 211-12, 120 S.Ct. 1339. The Eleventh Circuit also seems to agree with this interpretation, as they assessed inherent distinctiveness of an unregistered trade dress after the Samara decision. See Miller's Ale House, Inc. v. Boynton Carolina Ale House, LLC, 702 F.3d 1312, 1321 (11th Cir. 2012).
Neither the Supreme Court nor the U.S. Court of Appeals for the Eleventh Circuit have ruled on whether the characterization of a trade dress as product packaging or design is a question of fact or law, but courts tend to decide this issue as a matter of law. See, e.g., Kids' Town at the Falls LLC v. City of Rexburg, 570 F.Supp.3d 911, 923-24 (D. Idaho 2021); H.I.S.C., Inc. v. Franmar Int'l Importers, Ltd., No. 3:16-cv-480, 2018 WL 4945325, at *3-4 (S.D. Cal. Oct. 10, 2018); Asics Am. Corp. v. Lutte Licensing Grp., No. CV-131993, 2014 WL 12577412, at *12 (C.D. Cal. Aug. 19, 2014); Buzz Bee Toys, Inc. v. Swimways Corp., 20 F. Supp. 3d 483, 515-16 (D.N.J. 2014); Ward v. Knox Cnty. Bd. of Educ., 612 F. App'x 269, 276 (6th Cir. 2015); Olem Shoe Corp. v. Wash. Shoe Co., No. 09-23494, 2010 WL 1370823, at *1 (S.D. Fla. Apr. 2, 2010); Adidas-Salomon AG v. Target Corp., 228 F. Supp. 2d 1192, 1207 (D. Or. 2002); Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 41 (1st Cir. 2001). It makes sense that courts have decided this issue as a question of law because the Supreme Court suggested that it was a question of law, though in dicta, by instructing courts to "err on the side of caution" in close cases and "classify ambiguous trade dress as product design" and require secondary meaning. Samara, 529 U.S. at 215, 120 S.Ct. 1339. In interpreting Samara and Two Pesos, courts have found that when the trade dress is inseparable from the product, it is properly characterized as a product design. See H.I.S.C., 2018 WL 4945325, at *3; In re Slokevage, 441 F.3d 957, 961-62 (Fed. Cir. 2006); Cont'l Lab'y Prods., Inc. v. Medax Int'l, Inc., 114 F. Supp. 2d 992, 999 (S.D. Cal. 2000); McKernan v. Burek, 118 F. Supp. 2d 119, 124 (D. Mass. 2000).
The U.S. Court of Appeals for the Federal Circuit has held that the determination of whether a trade dress is a product design or product packaging is a question of fact. See In re Slokevage, 441 F.3d 957, 959 (Fed. Cir. 2006). But this case appears to be an outlier. See generally Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 819 (Fed. Cir. 1992) (stating that decisions by the Federal Circuit are controlling only in aspects unique to patent law; courts are to look to the circuit in which the case sits for trade dress issues); 28 U.S.C. § 1295(a)(1).
See also 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 8:12 (5th ed. 2022).
1. Inherent Distinctiveness
Hyde Park argues that its trade dress is product packaging and thus inherently distinctive because the storage facilities are "stores" that display a product (the storage units). (Doc. 93, p. 3.) Mahl also testified that Hyde Park adopted the trade dress because it was unique enough to be linked to its source. (Doc. 73-1, ¶ 14.) And in practice, the trade dress created undesirable corner units in Hyde Park Daytona that are difficult to sell. (Id. ¶¶ 15-26.) Despite the flaw, Hyde Park II and III were designed and developed with the same defect years later. (Id. ¶ 30.) This evidence and argument support a finding that the trade dress is product packaging, as the layout of the storage facility was structured with source identification in mind, and later facilities sought to uphold this by maintaining the defects rather than making the product (the storage unit) itself more appealing. See generally Samara, 529 U.S. at 212-13, 120 S.Ct. 1339. Further, Hyde Park emphasizes the aerial view and layout of the facility as a key to its trade dress (Doc. 89-1, ¶¶ 24, 31), not the actual storage units themselves. This would again support classifying the trade dress as product packaging, as an aerial view would show how the storage units are housed rather than how they are designed inside.
Despite the evidence supporting a finding that Hyde Park's trade dress is product packaging, there is also evidence it is a product design. First, though Mahl testified to the contrary (see Doc. 73-1, ¶ 15), the aerial view of the Hyde Park facilities is only prominent in one, maybe two, advertisements Hyde Park provided (see Docs. 88-4 to 88-15), and the frequency in which these advertisements aired is not provided. So the aerial view of the trade dress, which would otherwise support classifying it as product packaging, does not appear to be the central focus by which Hyde Park is having the public identify the source of the facility. See generally Samara, 529 U.S. at 212-13, 120 S.Ct. 1339. Mahl also testified that the feature of inward-facing units forming an impenetrable wall (feature (b)) "create[s] a package of security and safety" (Doc. 69-3, p. 10:18-22), and in the briefing, Hyde Park provides that "[t]he combination of these design features was intended to suggest to consumers a heightened sense of security as well as a sense of community" (Doc. 87, p. 2). This would "render the product itself more useful and appealing" and support a finding that the trade dress is a product design and not packaging. Samara, 529 U.S. at 212, 120 S.Ct. 1339.
One of the documents Hyde Park provided includes a thumbnail of the facility but the picture is not very prominent. (See Doc. 88-11, p. 8.)
The trade dress here could be characterized as the product packaging that encompasses the actual good: the storage units. Or the trade dress, which makes the storage units face inward and creates an outer wall, and makes the storage units have overhead doors, could be characterized as a product design: the design of the storage units or the storage facility. So the Court will follow the Supreme Court's admonishment to "err on the side of caution" in close cases and classify this ambiguous trade dress as product design, "thereby requiring secondary meaning." Samara, 529 U.S. at 215, 120 S.Ct. 1339. Also, Hyde Park's trade dress (the storage facility) is inseparable from its product (storage units), further supporting a finding that the trade dress is product design. See Slokevage, 441 F.3d at 961-62; Cont'l Lab'y, 114 F. Supp. 2d at 999. So, the Court will disregard the arguments about inherent distinctiveness and assess whether the trade dress has acquired secondary meaning.
2. Secondary Meaning
Only Crown Park moved for summary judgment on the issue of secondary meaning. (Doc. 69, p. 23.) It argues that because Hyde Park provided no evidence that the public associates the claimed trade dress features with Hyde Park, Crown Park is entitled to summary judgment. (Id.) The Court disagrees.
To prove secondary meaning, a plaintiff "must show that the primary significance of the product in the minds of the consuming public is not the product itself but the producer." See Brooks Shoe Mfg. Co. v. Suave Shoe Corp., 716 F.2d 854, 857 n.7 (11th Cir. 1983). Whether a trade dress acquired secondary meaning is a question of fact. See id. at 860. Without consumer survey evidence, four factors are considered in assessing secondary meaning: (1) length and manner of use; (2) nature and extent of advertising; (3) the plaintiff's efforts to promote a connection in the public's mind between its name and the product; and (4) the extent of the public's association of plaintiff's name with its services. See Coach House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551, 1560 (11th Cir. 1991). Evidence of advertising is weak if there is no evidence that the public actually associated the mark with the source. Brooks Shoe, 716 F.2d at 860. And proof of intentional copying with intent to confuse is probative evidence of secondary meaning. See id. at 859-60 & n.13.
Here, Hyde Park has used its trade dress for over ten years and argues that it has done so consistently—showing length and manner of use. (Doc. 87, pp. 18-19); see Coach House, 934 F.2d at 1560. As for the second and third factors, Hyde Park engaged in extensive advertisements, including some with celebrities, magazines, direct mailers, and billboards—showing Hyde Park's effort to make a connection in the public's mind between its name and the trade dress. (Doc. 89-1, ¶¶ 17, 19-24); see Coach House, 934 F.2d at 1560. Crown Park counters that despite the advertising, Hyde Park did not show how the advertisements led the public to associate the trade dress with Hyde Park, as it provided no consumer surveys or other evidence. (Doc. 69, p. 23.) While this weakens Hyde Park's advertising evidence, see Brooks Shoe, 716 F.2d at 860, a reasonable jury could find that given the extensive advertisements, and the nature of the advertisements (which included celebrities) (Doc. 89-1, ¶¶ 17, 19-24), consumers do associate the trade dress with Hyde Park. So Crown Park has not met its burden.
Hyde Park provides that ten years of use creates a presumption of secondary meaning. (Doc. 87, p. 19 (citing 15 U.S.C. § 1052(f)).) But the Lanham Act section Hyde Park cites "merely affords a presumption of secondary meaning to a party seeking registration of a descriptive term"; Hyde Park has not shown, or argued, that this presumption applies here. FN Herstal SA v. Clyde Armory Inc., 838 F.3d 1071, 1084 (11th Cir. 2016) (cleaned up). So no presumption arises but this is still evidence of secondary meaning.
Crown Park counters that Hyde Park has not used its trade dress consistently because the two facilities built after Hyde Park Daytona lack the 45° angle entrance. (Doc. 97, p. 7; Doc. 97-1, p. 4:13-20.) But Hyde Park contends that this feature is "optional" to its claimed trade dress. (Doc. 93, p. 2 n.1; see Doc. 1, ¶¶ 22-23.) This argument requires ignoring the optional features to find that Hyde Park has been consistently applying its trade dress. Neither party has addressed the implications of Hyde Park's trade dress having optional features and how it should play into the factual analysis. In a different issue, Hyde Park appears to take a different stance. See infra note 23.
Next, Hyde Park provides evidence of Loman's intentional copying. (Doc. 72, pp. 16-17.) Crown Park argues this evidence is irrelevant because there is no evidence it intentionally copied with the intent to confuse. (Doc. 69, p. 9.) True, Hyde Park did not present direct evidence of intent to confuse. But a reasonable jury may infer that because Loman began the design process with Hyde Park Daytona's blueprints, directed people to Hyde Park Daytona's website as an example of the facility he was building, used pictures of his own suite and a friend's in Hyde Park Daytona in Crown Park's website, and met with a Hyde Park Daytona tenant and explained that he was building "something like Hyde Park," Loman (and so Crown Park) intended to benefit from Hyde Park's reputation and intended to confuse. (See Doc. 75-2, pp. 6:2-12, 9:4-25; Doc. 79-21; Doc. 91-1, pp. 12:25-15:5; Doc. 91-3, pp. 11:17-12:8, 21:2-14); John H., 711 F.2d at 977.
Crown Park failed to meet its burden to show there is no genuine dispute over whether Hyde Park's trade dress acquired secondary meaning. So Crown Park's SJ is due to be denied as to this issue.
B. Functionality
Next, Crown Park argues that all trade dress features are functional because they affect security and are necessary to comply with the local land development code. (Doc. 69, pp. 10-22.) The Court finds that genuine issues of material fact preclude resolution of this element.
Crown Park cites Hampton Inns, Inc. v. Ameritel Inns, Inc., No. 93-459, 1995 WL 762148, at *23 (D. Idaho Oct. 19, 1995), but that case is inapposite as it dealt with the plaintiff failing to present any evidence of non-functionality, which is not the case here.
Under the traditional functionality test, a feature is functional "if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." Dippin' Dots, 369 F.3d at 1203 (cleaned up). Functionality is a question of fact. See John H., 711 F.2d at 982. The ultimate determination of functionality must be made on the overall impression of the trade dress. See Dippin' Dots, 369 F.3d at 1203; AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1538 (11th Cir. 1986). In assessing whether a feature affects the cost or quality of the article under the traditional test, courts look to whether competitors would either incur additional costs or sacrifice product quality by avoiding the trade dress. See, e.g., Mobile Shelter Sys. USA, Inc. v. Grate Pallet Sols., LLC, 845 F. Supp. 2d 1241, 1257 (M.D. Fla. 2012), aff'd in part, 505 F. App'x 928 (11th Cir. 2013) (affirming functionality determination); Dixie Consumer Prods., LLC v. Huhtamaki Ams., Inc., 691 F. Supp. 2d 1372, 1379-80 (N.D. Ga. 2010); Sharn, Inc. v. Wolfe Tory Med., Inc., No. 8:09-cv-706, 2009 WL 3416503, at *5 (M.D. Fla. Oct. 19, 2009).
Courts also assess whether trade dress features are functional under the "competitive necessity test," where the "exclusive use of such a feature would put competitors at a significant non-reputation-related disadvantage." Dippin' Dots, 369 F.3d at 1203 (cleaned up). This test generally applies in cases when aesthetic functionality is at issue. Id. When the trade dress is functional under the traditional test, courts need not assess competitive necessity. Id. The Court is unconvinced that this is a case of aesthetic functionality where the competitive necessity test would apply. Even so, if the Court were to apply the competitive necessity test, there are still genuine disputes of material fact on the functionality issue, as the parties just rehash the same arguments. (See Doc. 69, p. 19; Doc. 72, pp. 24-25, Doc. 73-1, ¶ 29.)
First, Crown Park argues that the trade dress is functional because it maximizes security; specifically, the feature of having an impenetrable wall makes the facility secure so it is essential to the purpose of a storage facility—to safely store items. (Doc. 69, p. 15; Doc. 82, pp. 9-10.) Hyde Park responds that its trade dress features do not affect security, as Mahl testified that the only theft reported in the Hyde Park facilities happened in Hyde Park Daytona, where the trade dress features are present, not in Hyde Park I. (Doc. 72, pp. 23-24; Doc. 73-1, ¶ 31.) And facilities can implement security measures like controlled gate access and cameras, without relying on Hyde Park's trade dress. (Doc. 72, p. 22.) But in its briefing, Hyde Park also provides that the features intended "suggest to consumers a heightened sense of security as well as a sense of community." (Doc. 87, p. 2.) As a reasonable jury could side with either side, summary judgment is inappropriate.
Second, Crown Park argues that the trade dress features are essential to operating a storage facility. (Doc. 69, pp. 13-19. ) Crown Park argues that to comply with the local land development code, competitors would need to infringe on the trade dress. (Id.) Hyde Park responds that just because its trade dress conforms with the code does not mean that other designs could not. (Doc. 93, p. 9.) Hyde Park's expert also testified that the trade dress features increase the cost of construction, so they do not negatively affect the price of the facility. (Doc. 74-1, ¶ 36); see Mobile Shelter, 845 F. Supp. 2d at 1257. And Hyde Park further argues that its trade dress (presumably feature (c)) creates undesirable corner units that are difficult to sell, so applying the trade dress would actually lower the quality of a facility. (Doc. 72, pp. 23-24; Doc. 73-1, ¶¶ 19-23, 26.) But there is a facility with a similar shape as Hyde Park Daytona without the undesirable corner units. (See Doc. 82, p. 8.) So a reasonable jury could conclude that even though features of Hyde Park's trade dress developed undesirable corner units, another facility applying the same feature in a different manner did not have this problem, weakening Hyde Park's evidence that its trade dress lowers the quality of the units. So, summary judgment is inappropriate.
Fredley of BPF testified that two of four required trade dress features are necessary to comply with the development code, but the Court excludes this testimony as improper expert opinion. See infra section II.C.
In a more general aspect, Hyde Park provides a national review of forty-one competing facilities, which shows no competitor had the need to use the trade dress to compete. (Doc. 74-1, ¶ 39; Doc. 73-2, Ex. A, pp. 2-21.) Similarly, Hyde Park argues that Mahl successfully operates Hyde Park I, which does not use the trade dress features. (Doc. 73-1, ¶ 33; Doc. 74-1, ¶¶ 39-40.) But this evidence does not really address Crown Park's concern that the features are necessary to comply with Daytona's land development code, which neither these national facilities nor Hyde Park 1 (located in North Carolina) (see Doc. 73-1, ¶ 13) need to do.
Fredley testified that avoiding the trade dress would increase construction costs (Doc. 69-2, ¶ 8), but again the Court excludes that testimony as improper expert opinion. See infra section II.C.
Third, Crown Park's designer testified that the side entrance into the facilities is the most efficient option given the landscape. (Doc. 69-2, p. 6:1-3.) Hyde Park generally disputes this (see Doc. 87, p. 20) and argues that a single gated entry between two prominent structures (feature (a)) is not essential to the use or purpose of a storage facility because it is not a prominent feature in competing storage facilities. (Doc. 72, p. 21.)
Analyzing Hyde Park's trade dress features and assessing them as a whole, neither party has established the element of functionality absent a genuine dispute of material fact, leaving the question for a jury. See Dippin' Dots, 369 F.3d at 1203. See generally Vital Pharms., Inc. v. Am. Body Bldg. Prod., LLC, No. 6-60633, 2006 WL 3755204, at *3 (S.D. Fla. Dec. 19, 2006) (stating that "[i]t is nearly impossible for a court to follow the Eleventh Circuit's test for trade dress claims without making factual findings").
C. Likelihood of Confusion
Last, only Crown Park moved for summary judgment on the likelihood of confusion element, arguing that no reasonable jury could find that the two facilities were from the same source. (Doc. 69, pp. 6-10.) Again, the Court disagrees.
In assessing likelihood of confusion, courts consider: (1) strength of the trade dress; (2) design similarity; (3) similarity of goods and services; (4) similarity of trade channels and consumers; (5) similarity of advertising media; (6) the defendant's intent; and (7) actual confusion. See Fla. Int'l Univ. Bd. of Trustees v. Fla. Nat'l Univ., Inc., 830 F.3d 1242, 1255 (11th Cir. 2016). Though all factors must be considered and applied holistically, they are not exhaustive. See id. "[E]vidence of actual confusion is the best evidence of a likelihood of confusion." Frehling Enters., Inc. v. Int'l Select Grp., 192 F.3d 1330, 1340 (11th Cir. 1999). Likelihood of confusion is a question of fact. See Yellowfin Yachts, Inc. v. Barker Boatworks, LLC, 898 F.3d 1279, 1289 (11th Cir. 2018).
As to the strength of the trade dress, Crown Park argues that the trade dress is weak because the features are functional, and not "widely used" in all kinds of buildings. (Doc. 69, p. 7.) Hyde Park responds that no defense witness could identify another competitor with the same design. (See, e.g., Doc. 75-3, p. 6:8-23; Doc. 87, p. 10.) Hyde Park also reiterates that it has been using the trade dress consistently for over a decade and replicated it with Hyde Park II and III, and a survey of facilities shows how unique it is. (Doc. 87, p. 10.) Viewed in the light most favorable to Hyde Park, this factor supports finding a likelihood of confusion. See Dippin' Dots, 369 F.3d at 1208 (viewing factors in the light most favorable to the nonmovant).
Hyde Park asserts that its trade dress should be classified as "suggestive," but offers no substantive argument. (See Doc. 87, p. 10); AmBrit, 812 F.2d at 1539 ("[T]rade dress may be classified as generic, descriptive, suggestive, or arbitrary, and the scope of protection increases as the trade dress moves toward the arbitrary end of the spectrum."). And Crown Park, who moved for summary judgment on this element, does not address this. So the record is not sufficiently developed for the Court to classify Hyde Park's trade dress as neither side presented any evidence or argument to this effect. See generally Royal Palm Props., LLC v. Pink Palm Props., LLC, No. 9:17-cv-80476, 2018 WL 1697023, at *4 (S.D. Fla. Apr. 6, 2018) (declining to classify mark on summary judgment because neither side established an appropriate classification).
See supra section I.B.
Hyde Park takes the opposite stance and provides that a review of all features, not just the optional ones, should be considered in determining whether the trade dress is strong. (Doc. 87, p. 10; Doc. 73-1, ¶ 8 & n.1); see supra note 15. Hyde Park cannot have its cake and eat it too. Hyde Park cannot rely on all cited features when doing so would be in its favor (like in showing that no other facility has all the features, including the "optional" ones in this likelihood of confusion analysis) (Doc. 73-1, ¶ 8), but distinguishing between the "required" and the "optional" when beneficial (like in acknowledging that not all three Hyde Park facilities have every feature, as argued in the secondary meaning analysis) (Doc. 87, p. 10; Doc. 92, p. 2 n.1). Crown Park did not squarely address this inconsistency. But multiple factors are assessed in determining that there are genuine issues of material fact on secondary meaning and likelihood of confusion, so this inconsistency is not material at this stage.
As to the design similarity, the parties generally dispute the similarities of their storage facilities by rehashing the same arguments previously addressed. (See Doc. 69, p. 7; Doc. 87, pp. 11-12.) "[T]he similarity of two designs is determined by considering the overall impression" of the trade dress; "it is a subjective eyeball test." J-B Weld, 978 F.3d at 789 (cleaned up). Here is the aerial view of the proposed Crown Park facility and Hyde Park Daytona, respectively:
Image materials not available for display. (Doc. 1, ¶ 37.) Here is a front view of the two facilities, Crown Park, and Hyde Park Daytona, respectively:
Image materials not available for display. (Doc. 69-2, pp. 31-34.) Applying the "subjective eyeball test," the Court cannot conclude that no reasonable jury could find the facilities confusingly similar. See J-B Weld, 978 F.3d at 789-90. A reasonable jury could find that the facilities originated from the same source from the aerial view. Viewed in the light most favorable to Hyde Park as the nonmovant, this factor supports Hyde Park.
As to the similarity of service, Crown Park misinterprets this factor and addresses building similarity—not whether the parties provide similar services. (See Doc. 69, p. 8; Doc. 87, p. 12); Fla. Int'l, 830 F.3d at 1261. Because both parties sell and lease storage units for luxury items, this factor favors Hyde Park.
As to the similarity of trade channels and consumers, Hyde Park notes that Loman actively solicited Hyde Park's tenants by driving around Hyde Park's facility with a sign advertising Crown Park—suggesting the similarity of customers. (Doc. 87, p. 13.) Crown Park concedes this factor weighs against it but argues that sophisticated customers will research the companies first. (Doc. 69, p. 8.) Though Crown Park provides no evidence about the sophistication of consumers storing luxury items, it may be more than casual purchasers, lessening the possibility of confusion. Cf. Yellowfin, 898 F.3d at 1292 (stating that customers searching for high-end expensive boats are less easily confused). So this factor is neutral.
Previously, in the inherent distinctiveness section, Crown Park argued that consumers will likely drive by and see the facility's front entrance, so the aerial view is immaterial. (See Doc. 82, p. 9.) But here, Crown Park takes the opposite approach to consumer sophistication, claiming that the customers here will likely research the companies first. (Doc. 69, p. 8.) So it is unclear what level of so-phistication Crown Park argues its relevant consumers have, though neither approach would be dispositive in the likelihood of confusion analysis.
As to the similarity of advertising media, though Mahl testifies that he is not currently advertising or marketing for Hyde Park (Doc. 69-3, p. 47:15-22), both parties currently maintain websites and Facebook pages and pass out brochures or flyers. (Doc. 89-1, ¶¶ 27-28; Doc. 87, pp. 13-14); see AmBrit, 812 F.2d at 1542 ("If the plaintiff and defendant both use the same advertising media, a finding of likelihood of confusion is more probable."); Ice Cold Auto Air of Clearwater, Inc. v. Cold Air & Accessories, Inc., 828 F. Supp. 925, 937 (M.D. Fla. 1993). So this factor favors Hyde Park.
As to Crown Park's intent, the Court already found there is a genuine issue of material fact as to this issue. See supra section I.A.2; Yellowfin, 898 F.3d at 1292. So this factor is neutral.
Last, as to the actual confusion factor, Hyde Park provides the testimony of a Hyde Park Daytona tenant stating that Crown Park and Hyde Park were "the same thing." (Doc. 87, pp. 16-17.) Hyde Park also notes that Crown Park's facility has not been constructed and the time between when Crown Park began advertising and when Hyde Park sued is short, so the lack of evidence on actual confusion is understandable. (Id.) This latter argument is weak. The Court is not convinced that two years is not enough time by which evidence of actual confusion could develop, unlike in J-B Weld, the case Hyde Park relies on, where the range was possibly months. See 978 F.3d at 794. So this factor favors Crown Park.
Hyde Park also argues that evidence of a professional's confusion, even if the professional is able to differentiate the sources, is evidence of actual confusion, and cites J-B Weld, 978 F.3d at 793. (Doc. 87, p. 17.) But in J-B Weld, the professionals were confused as to whether the products resulted from a collaboration between the two companies. See 978 F.3d at 793. Here, though a general contractor called the Crown Park facility, the "Hyde park wannabe," there is no evidence that he ever thought the parties were collaborating.
Viewing all the evidence and factors holistically, the Court concludes that a reasonable jury could find for Hyde Park on the element of likelihood of confusion as there are factual disputes and, when viewed in favor of the nonmovant, most factors favor Hyde Park. See Yellowfin, 898 F.3d at 1295. Hyde Park also notes that Crown Park's proposed facility is expected to be less than a mile from Hyde Park Daytona, which is additional evidence of likelihood of confusion. (Doc. 72, p. 4 n.4); see Tana v. Dantanna's, 611 F.3d 767, 780 (11th Cir. 2010). So Crown Park's SJ is due to be denied as to this element. See Caliber Auto. Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 941 (11th Cir. 2010).
Given that genuine issues of material fact preclude a determination of the trade dress's validity, the Court denies both Crown Park's and Hyde Park's SJ Motions. Next, the Court assesses the parties' motions dealing with expert opinions.
II. Daubert Motions
A. Muller Daubert
Kimbley Muller, Esq. opines that Hyde Park's trade dress is non-functional and that there is a risk of consumer confusion. (Doc. 70-1, p. 5.) Crown Park seeks to exclude this testimony because it usurps the role of both the judge and the jury. (Doc. 70, p. 1.) The Court agrees. Expert testimony generally does not help the trier of fact "when it offers nothing more than what lawyers for the parties can argue in closing arguments." Cook ex rel. Est. of Tessier v. Sheriff of Monroe Cnty., 402 F.3d 1092, 1111 (11th Cir. 2005). Here, Hyde Park has not differentiated Muller's opinions from what attorneys can argue at trial and her opinions involve improper legal conclusions. (See Doc. 70-1, p. 5); Montgomery v. Aetna Cas. & Sur. Co., 898 F.2d 1537, 1541 (11th Cir. 1990). So Crown Park's Muller Daubert is due to be granted.
Muller also opined as to the inherent distinctiveness of Hyde Park's trade dress, but the Court found that Hyde Park must show secondary meaning instead. See supra section I.A. So this opinion is also due to be excluded as irrelevant.
B. Hall Daubert
Crown Park seeks to exclude the expert testimony of Dennis Hall, an architect who renders many opinions for Hyde Park. (Doc. 71, pp. 1, 8-12; Doc. 71-1, pp. 3-13.) The Court takes each of Crown Park's arguments in turn.
Crown Park also argues for exclusion under Federal Rule of Evidence 403, arguing that Hall's opinions are unhelpful and irrelevant so it will confuse the jury. (Doc. 71, pp. 13-15.) But because the Court finds that most of Hall's opinions are helpful and relevant, and the Court excludes those that are not, it is unconvinced that any opinion should be excluded on the basis of Rule 403.
1. Unqualified
First, Crown Park argues that Hall is not qualified to opine on trade dress, or functionality specifically, because he is not a lawyer. (Doc. 71, pp. 8-9.) The Court disagrees. Experts are often expected to consider binding legal precedent in arriving at their opinions and this practice bolsters their methodology. See Hi Ltd. P'ship v. Winghouse of Fla., Inc., No. 6:03-cv-116, 2004 WL 5486964, at *7 (M.D. Fla. Oct. 5, 2004); e.g. Spiral Direct, Inc. v. Basic Sports Apparel, Inc., No. 6:15-cv-641, 2017 WL 11457208, at *2 (M.D. Fla. Apr. 13, 2017). Here, Hall is a licensed architect with extensive experience, and he is trained in architectural design. (Doc. 71-1, pp. 4-5.) Hall describes the standards used in a construction book he partially wrote, UniFormat, to classify functional and non-functional features of a building. (See id. at 4-8, 25-30.) Hall explains the architectural process by which buildings are designed to develop from merely functional features, like features every building must have, to design features, those that incorporate material, size, shape, and color to create a unique structure. (See id. at 5.) He is not rendering an opinion on legal concepts. The Court also notes that Hall correctly states the traditional test for assessing functionality: whether the trade dress features are essential to the use or purpose of the item or affect costs. (See id. at 6); Dippin' Dots, 369 F.3d at 1203. So Crown Park's Hall Daubert is due to be denied as to this argument.
This is what distinguishes Hall from Muller as an expert who can opine on functionality. Hall is able to provide architectural insight and opinions distinct from what a lawyer, like Muller, or laypeople, like the jury, could provide.
2. Unhelpful
Further, Crown Park seeks to exclude Hall's opinion that all the trade dress elements have been met as it is unhelpful. (Doc. 70, pp. 11-12; see Doc. 71-1, pp. 13-14.) The Court agrees. An expert may opine on an ultimate issue of fact but may not tell the jury what result to reach. See Montgomery, 898 F.2d at 1541. And the Court must be the jury's "only source of law." Commodores Ent. Corp. v. McClary, 879 F.3d 1114, 1128-29 (11th Cir. 2018) (cleaned up). Here, the validity of Hyde Park's trade dress is in dispute. (See Doc. 48, ¶¶ 30-40.) So because Hall is merely telling the jury "what result to reach," this opinion is due to be excluded. Montgomery, 898 F.2d at 1541.
Next, Crown Park seeks to exclude Hall's opinion about the functionality of the trade dress features as unhelpful. (Doc. 71, p. 10.) Courts have allowed experts to opine as to functionality. See, e.g., Lanard Toys Ltd. v. Toys "R" Us-Delaware, Inc., No. 3:15-cv-849, 2019 WL 1304290, at *8 (M.D. Fla. Mar. 21, 2019), aff'd sub nom. Lanard Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337 (Fed. Cir. 2020). Here, after conducting a national internet survey of storage facilities, Hall assessed the features and concluded that none employed the same features as Hyde Park's trade dress and the features are not essential to using storage facilities. (Doc. 71-1, pp. 6-7.) And Hall opined that employing the trade dress may increase construction costs and explains his reasoning. (Id. at 6.) This testimony will assist the trier of fact in deciphering the features of Hyde Park's trade dress to determine functionality. And Hall may opine as to whether elements of Hyde Park's trade dress are functional, even though these are the ultimate issues of fact, but not whether the element of functionality is met because this is telling the jury what result to reach. See Montgomery, 898 F.2d at 1541; Fed. R. Evid. 704(a) ("An opinion is not objectionable just because it embraces an ultimate issue."). So Crown Park's Hall Daubert is due to be denied as to this argument.
Further, Crown Park seeks to exclude Hall's testimony on the similarities between the facilities as unhelpful. (Doc. 71, p. 11; Doc. 71-1, pp. 8-13.) Experts may opine about the similarities between designs, but not whether those designs are substantially similar. See, e.g., Buccellati Holding Italia SPA v. Laura Buccellati LLC, No. 13-21297, 2014 WL 11901585, at *7 (S.D. Fla. Apr. 14, 2014); Jeff Benton Homes v. Ala. Heritage Homes, Inc., 929 F. Supp. 2d 1231, 1244 (N.D. Ala. 2013). Here, Hall engages in a comprehensive analysis that will help the jury compare the two facilities and so Hall may opine as to the similarities between the facilities. (Doc. 71-1, pp. 8-12.) But Hall may not opine as to whether they are substantially or confusingly similar. See Buccellati, 2014 WL 11901585, at *7. So any opinion that the facilities are substantially or confusingly similar is due to be excluded. Otherwise, Crown Park's Daubert is due to be denied as to this argument.
3. Irrelevant or Unreliable
Last, Hall rendered a couple of opinions due to be excluded as either irrelevant, unreliable, one he was not qualified to give, or a combination of all. "The proponent of the expert testimony bears the burden of showing . . . that the testimony satisfies each prong." See Hendrix, 609 F.3d at 1194.
To begin, Hall opined that Hyde Park's design concept was the intellectual property of its creator and was specifically designed to address the needs of car enthusiasts. (Doc. 71-1, pp. 3-4.) This opinion is due to be excluded for two reasons. First, Hyde Park did not identify the methodology Hall used to reach this conclusion. (See Doc. 70, p. 8; Doc. 84); Hendrix, 609 F.3d at 1194. Nor did Hyde Park show how Hall, an architect, is qualified to render such an opinion. For these same reasons, Hall cannot opine about Mahl's intention behind designing Hyde Park's trade dress. (Doc. 71-1, p. 13); see Habersham Plantation Corp. v. Art & Frame Direct, Inc., No. 10-61532, 2011 WL 4055376, at *3 (S.D. Fla. Sept. 13, 2011). Hyde Park provided no discussion on these opinions and why they should be admissible, so they are due to be excluded.
Similarly, Hall concluded that "consumers recognize the Hyde Park Trade Dress as signifying a particular provider" and Hyde Park intended the facility to identify it as a Hyde Park facility (Doc. 71-1, pp. 7-8, 13), but neither Hall nor Hyde Park provide any methodology or basis on which Hall based these opinions. And Hall testified that he spoke with Mahl about confusion stemming from the similarities of the facilities. (Doc. 71, p. 11; Doc. 71-1, p. 13.) This is not even an opinion; Hyde Park can present evidence of confusion via fact witnesses. These statements and opinions are also due to be excluded. See Hendrix, 609 F.3d at 1194.
Finally, Hall opined as to the inherent distinctiveness of Hyde Park's trade dress (Doc. 71-1, pp. 5-8), but the Court found that Hyde Park must show secondary meaning instead. See supra section I.A. So this opinion is due to be excluded as irrelevant.
C. Hyde Park's Fredley Daubert and Motion to Strike
On the last motion to exclude expert opinion, some background may be helpful. Fredley is the president of BPF, the company Crown Park hired to prepare the architectural drawings for its facilities. (Doc. 78, p. 2.) Crown Park disclosed Fredley as a hybrid witness and provided a disclosure under Federal Rule of Civil Procedure 26(a)(2)(C). (Doc. 92-2, p. 2.) Later, Crown Park filed Fredley's affidavit supporting its summary judgment motion. (See Doc. 69-2.) Hyde Park seeks to exclude Fredley's expert testimony and strike his affidavit. (Doc. 78, pp. 8, 11; Doc. 92, pp. 6-8.) The Court takes each motion in turn.
1. Daubert Motion
First, Hyde Park seeks to exclude Fredley's expert testimony because he is not a hybrid witness, so the disclosure was insufficient under Rule 26(a)(2)(B). (Doc. 78, pp. 8, 11.) The Court agrees.
"Hybrid witnesses are non-retained expert witnesses who can provide both fact and opinion testimony that is grounded in their scientific, technical, or specialized knowledge." In re 3M Combat Arms Earplug Prods. Liab. Litig., No. 3:19-md-2885, 2021 WL 765019, at *3 (N.D. Fla. Feb. 28, 2021). "In distinguishing between those experts who must provide written reports and those who [do not], the Federal Rules instruct us to look, not at what the expert examines, but only at what he is (i.e., hired or not hired)." Torres v. Wal-Mart Stores E., L.P., 555 F. Supp. 3d 1276, 1291 (S.D. Fla. 2021). A party who violates Rule 26(a)(2)(B) may avoid exclusion by showing that its failure is substantially justified or harmless. See Warner v. Ventures Health Care of Gainesville, Inc., No. 5:00-cv-308, 2001 WL 36098008, at *2 (M.D. Fla. Aug. 1, 2001).
Crown Park hired Fredley to create plans for Crown Park's facility before this suit. (See Doc. 83, pp. 5, 11.) Fredley testified that when Crown Park's facility was still in the designing stages, he created a table showing the differences between Crown Park and Hyde Park, which he calls a "matrix." (Doc. 92-1, p. 73:13-24.) This matrix was created for a lawsuit before this one. (Id.) After Hyde Park sued, Fredley met with Fred Treadway, a managing member of Crown Park, to discuss remaining issues with the Crown Park facility; Treadway sent Fredley a copy of the current lawsuit. (Id. at 81:1-18.) Treadway asked Fredley to update the matrix. (Id. at 81:14-18.) After this conversation, Fredley sent Treadway a contract memorializing their agreement that Fredley would, among other things, "[r]evise building facades and plans to address comments in law suit" and participate in "phone conferences, meetings, or communications . . . to finalize project and law suit issues" at an hourly rate. (Id. at 82:5-11 & Ex. 22, p. 229.) Fredley ultimately updated the matrix and billed for it. (Id. at 87:10-12.) Further, Fredley's disclosure mentions he seeks to rebut the opinions offered by Hall, Hyde Park's retained expert. (See Doc. 92-2, p. 1.) In light of his involvement, Fredley is not a hybrid witness. See Torres, 555 F. Supp. 3d at 1291. Though Fredley is undeniably a fact witness given his involvement in Crown Park facility's design, he was also clearly retained to assist Crown Park in this lawsuit. (See Doc. 91-1, p. 82:5-11 & Ex. 22, p. 229.) His affidavit, filed in support of Crown Park's SJ, teems with expert opinions (see Doc. 69-2), consistent with his billing for his involvement, such that an expert report under Rule 26(a)(2)(B) was required. See Marco Island Cable, Inc. v. Comcast Cablevision of S., Inc., No. 2:04-cv-26, 2006 WL 1722341, at *2 (M.D. Fla. June 22, 2006). So Fredley should have provided a detailed expert report as Rule 26(a)(2)(B) requires.
Crown Park has also not shown how Fredley's typical work involves determining the functionality and inherent distinctiveness of storage facility trade dresses. This appears to be beyond the scope of his normal role, further supporting a finding that Fredley is a retained expert. See, e.g., SB Holdings I, LLC v. Indian Harbor Ins. Co., No. 20-14729, 2021 WL 3825166, at *3 & n.6 (11th Cir. Aug. 27, 2021).
Further, Crown Park made no argument that its failure to comply with Rule 26(a)(2)(B) was substantially justified or harmless. See Warner, 2001 WL 36098008, at *2. Discovery is over. (See Doc. 32.) Hyde Park had deposed Fredley when Crown Park filed his affidavit and Fredley's deposition was as BPF's corporate representative, not as an expert with extensive opinions. See Fed. R. Civ. P. 37(e); Kondragunta v. Ace Doran Hauling & Rigging Co., No. 1:11-cv-1094, 2013 WL 1189493, at *7 (N.D. Ga. Mar. 21, 2013); Pediatric Nephrology, 2017 WL 5665346, at *5 (S.D. Fla. Nov. 6, 2017). See generally Reese v. Herbert, 527 F.3d 1253, 1265 (11th Cir. 2008) ("Rule 26 is intended to provide opposing parties reasonable opportunity to prepare for effective cross examination and [ ] arrange for expert testimony from other witnesses." (cleaned up)). So, Hyde Park's Fredley Daubert is due to be granted.
2. Motion to Strike
Hyde Park supplemented its Motion to Strike by providing an email Crown Park produced on October 12, 2021. (Doc. 94.) Crown Park did not address this in its response and the purpose or significance of the email is unclear. So to the extent that Hyde Park sought to strike this email or any portion of it, the Motion to Strike is due to be denied without prejudice, awaiting further context at trial.
Next, Hyde Park moves to strike Fredley's affidavit because it provided new opinions, so Hyde Park could not address them at Fredley's deposition. (Doc. 92, pp. 6-8.) In light of the grant of the Fredley Daubert, the Motion to Strike is also due to be granted in part as to Fredley's expert opinions, which includes opinions in paragraphs eight and ten through fourteen, any opinion related to his retainment, and any other testimony other than his design process. (See Doc. 69-2, ¶¶ 8, 10-14.) Fredley may testify as a fact witness regarding the Daytona Beach Land Development Code but only as far as it affected his original design or controlled his options. (See id. ¶ 7.) Other than how he formed his designs before litigation, Fredley may not opine as to the legal implications of the Code or what the Code would permit.
Even if Fredley were a hybrid witness, his opinions would still be excluded. Hybrid witnesses must provide a written disclosure with "a summary of the facts and opinions," and those opinions must comply with Daubert. See 3M, 2021 WL 765019, at *3. Fredley's disclosure did not summarize all the facts and opinions, as the affidavit includes new opinions. (Compare Doc. 92-2 with Doc. 69-2); see, e.g., Pediatric Nephrology Assocs. of S. Fla. v. Variety Child.'s Hosp., No. 1:16-cv-24138, 2017 WL 5665346, at *5 (S.D. Fla. Nov. 6, 2017). Further, Crown Park did not address any methodology in its response, much less show that it is "sufficiently reliable." (See Doc. 83); Hendrix, 609 F.3d at 1194. See generally Hi Ltd., 2004 WL 5486964, at *4 (excluding opinion after finding no indication of methodology). So Fredley's opinions would be excluded regardless.
CONCLUSION
Accordingly, it is ORDERED AND ADJUDGED:
1. Crown Park's SJ (Doc. 69) is DENIED.
2. Crown Park's Muller Daubert (Doc. 70) is GRANTED.
3. Crown Park's Hall Daubert (Doc. 71) is GRANTED IN PART AND DENIED IN PART:
a. The Motion is GRANTED in that Hall may not opine as to whether Hyde Park's trade dress is valid and Hyde Park's intellectual property, whether the facilities are substantially or confusingly similar, whether the trade dress is inherently distinctive, whether the trade dress is functional as whole, Mahl's intentions in designing the trade dress, or how consumers view the trade dress, and he may not comment on his conversation with Mahl regarding market confusion.
b. In all other respects, the Motion is DENIED.
4. Hyde Park's SJ (Doc. 72) is DENIED.
5. Hyde Park's Fredley Daubert (Doc. 78) is GRANTED.
6. Hyde Park's Motion to Strike (Doc. 92) is GRANTED. Fredley's affidavit is STRICKEN insofar as it offers expert opinions, which includes opinions in paragraphs eight and ten through fourteen. (See Doc. 69-2, ¶¶ 8, 10-14.)
DONE AND ORDERED in Chambers in Orlando, Florida, on September 27, 2022.