Simpson Strong-Tie Company Inc. v. MiTek Inc.

CourtDistrict Court, N.D. California
DecidedJanuary 9, 2023
Docket5:20-cv-06957
StatusUnknown

This text of Simpson Strong-Tie Company Inc. v. MiTek Inc. (Simpson Strong-Tie Company Inc. v. MiTek Inc.) is published on Counsel Stack Legal Research, covering District Court, N.D. California primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Simpson Strong-Tie Company Inc. v. MiTek Inc., (N.D. Cal. 2023).

Opinion

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 SAN JOSE DIVISION 7 8 SIMPSON STRONG-TIE COMPANY Case No. 20-cv-06957-VKD INC., 9 Plaintiff, ORDER RE DAUBERT MOTIONS TO 10 EXCLUDE EXPERT WITNESS v. TESTIMONY 11 MITEK INC., Re: Dkt. Nos. 67, 76 12 Defendant.

14 Plaintiff Simpson Strong-Tie Company Inc. (“Simpson”) asserts the following claims 15 against defendant MiTek Inc. (“MiTek”): (1) false advertising under the Lanham Act, 15 U.S.C. 16 § 1125(a)(1)(B); (2) false advertising under California Business & Professions Code § 17500; (3) 17 passing off under the Lanham Act, 15 U.S.C. § 1125(a)(1)(A); (4) unfair competition under 18 California Business & Professions Code § 17200; and (5) copyright infringement under 17 U.S.C. 19 § 106. Dkt. No. 1. A bench trial is set for February 6, 2023. MiTek moves to exclude evidence 20 from Simpson’s survey expert Rob Wallace. Dkt. No. 76. Simpson moves to exclude evidence 21 from MiTek’s rebuttal expert David Franklyn. Dkt. No. 67. The Court held a hearing on these 22 motions on November 8, 2022. Dkt. Nos. 113, 115. In consideration of the parties’ submissions 23 and oral argument, the Court denies MiTek’s motion in part and grants it in part, and denies 24 Simpson’s motion in part and grants it in part. 25 I. BACKGROUND 26 Simpson manufactures and sells structural connectors for use in building construction. 27 Simpson assigns alphanumeric product names for each of its products. Dkt. No. 78-9 at 32. Each 1 product name has a “part name” consisting of a letter or combination of letters designating the 2 product line, and a “model number” consisting of additional numbers and letters appended to the 3 part name to distinguish between various models of a particular part with different attributes. Dkt. 4 71-48 at 37. Simpson uses its product names on its website and product packaging, as well as in 5 catalogs, publications, and other advertising materials, including its Wood Construction 6 Connectors Catalog. 7 MiTek also manufactures and sells construction products, including structural connectors 8 that compete with Simpson’s. Dkt. No. 78-9 at 32. According to Simpson, MiTek uses product 9 names that are identical or similar to Simpson product names and also uses Simpson’s product 10 names as “reference numbers” for MiTek’s own products. See Dkt. No. 71-9. Simpson 11 challenges these uses of its product names on MiTek’s website and in its mobile phone 12 application, catalogs, labels, and other materials, arguing that MiTek deceives consumers into 13 believing that the companies’ products are equivalent or interchangeable when they are not, or that 14 MiTek’s products are actually Simpson’s products. 15 Simpson retained Mr. Wallace as a survey and brand communications expert. Dkt. No. 84 16 ¶¶ 2-5. Mr. Wallace conducted four surveys and prepared a report explaining his findings. Id. ¶ 2. 17 Each survey exposed respondents to one of four stimuli: a page of MiTek’s catalog, a webpage 18 from MiTek’s website, a MiTek product label, and MiTek’s “Conversion Guide.” Id. The 19 surveys also exposed respondents to Simpson’s product names. Through these surveys, 20 Mr. Wallace attempted to determine: (1) If Simpson’s product names are widely known; (2) if the 21 use of Simpson’s product names on MiTek’s product labels and advertising causes the relevant 22 consuming public to believe that the two companies’ products are equivalent and/or have the same 23 attributes; (3) if the use of Simpson’s product names on MiTek’s product labels and advertising 24 cause the relevant consuming public to believe the sources of these products are the same or 25 affiliated with one another; (4) if the use of Simpson’s product names on MiTek’s product labels 26 and advertising causes the relevant consuming public to believe Simpson endorses MiTek’s 27 reference to Simpson’s product; and (5) if confusion regarding these issues affects the purchasing 1 Wallace presented pre-screened respondents with one of the four stimuli. Id. ¶ 26. Respondents 2 were then asked questions about the stimulus. Id. ¶¶ 28-91. Each test group was comprised of 3 100 respondents. Id. 4 MiTek retained Professor Franklyn as a survey expert solely to review and critique Mr. 5 Wallace’s evidence. Professor Franklyn prepared a report explaining his critique. Dkt. No. 68-2. 6 II. LEGAL STANDARD 7 The parties do not dispute the legal framework the Court must apply. An expert witness 8 may testify to an opinion if “(a) the expert’s scientific, technical, or other specialized knowledge 9 will help the trier of fact to understand the evidence or to determine a fact in issue; (b) the 10 testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles 11 and methods; and (d) the expert has reliably applied the principles and methods to the facts of the 12 case.” Fed. R. Evid. 702. “Rule 702 imposes a ‘basic gatekeeping obligation’ on district courts to 13 ‘ensure that any and all scientific testimony’—including testimony based on ‘technical[ ] or other 14 specialized knowledge’—‘is not only relevant, but reliable.’” Fortune Dynamic, Inc. v. Victoria's 15 Secret Stores Brand Mgmt., Inc., 618 F.3d 1025, 1035–36 (9th Cir. 2010) (quoting Kumho Tire 16 Co. v. Carmichael, 526 U.S. 137, 147 (1999)). 17 The Court’s duty is to evaluate the soundness of the expert’s methodology, not the 18 correctness of the expert’s conclusions. Primiano v. Cook, 598 F.3d 558, 564 (9th Cir. 2010). 19 “Shaky but admissible evidence is to be attacked by cross examination, contrary evidence, and 20 attention to the burden of proof, not exclusion.” Id. With respect to survey evidence, the Ninth 21 Circuit has set a low bar: “Survey evidence should be admitted ‘as long as it is conducted 22 according to accepted principles and is relevant.’” Fortune Dynamic, 618 F.3d at 1036 (quoting 23 Wendt v. Host Int’l, Inc., 125 F.3d 806, 814 (9th Cir. 1997)). “‘[T]echnical inadequacies’ in a 24 survey, ‘including the format of the questions or the manner in which it was taken, bear on the 25 weight of the evidence, not its admissibility.’” Id. (quoting Keith v. Volpe, 858 F.2d 467, 480 (9th 26 Cir. 1988)). Survey evidence may be excluded where its proponent fails to show that the survey 27 was conducted in accordance with accepted survey principles. See M2 Software, Inc. v. Macacy 1 2 III. MITEK’S MOTION TO EXCLUDE WALLACE TESTIMONY 3 MiTek does not challenge Mr. Wallace’s qualifications as an expert. Instead MiTek argues 4 that Mr. Wallace’s testimony should be excluded because his survey evidence is not reliable. Dkt. 5 No. 76. Specifically, MiTek argues that Mr. Wallace used improper and unreliable survey 6 methodology by asking suggestive and leading questions throughout his surveys. MiTek also 7 argues Mr. Wallace used an inadequate universe of survey participants and that he failed to use 8 proper controls in conducting the surveys. “Admissibility of a survey is a threshold question that 9 must be resolved by a judge.” M2 Software, 421 F.3d at 1087 (9th Cir. 2005). 10 A. Survey Methodology 11 MiTek argues that Mr. Wallace failed to use an accepted survey methodology. Dkt. No. 76 12 at 6.

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Bluebook (online)
Simpson Strong-Tie Company Inc. v. MiTek Inc., Counsel Stack Legal Research, https://law.counselstack.com/opinion/simpson-strong-tie-company-inc-v-mitek-inc-cand-2023.