1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 STONE BREWING CO., LLC, Case No.: 3:18-cv-00331-BEN-LL
12 Plaintiff, ORDER ON: 13 v. (1) MOTIONS IN LIMINE; (2) MOTION FOR LEAVE TO FILE 14 MILLERCOORS LLC, REPLY; 15 Defendant. (3) MOTIONS TO SEAL
16 [ECF Nos. 379, 383, 424, 428, 431, 433] 17
18 For purposes of this decision, the Court assumes familiarity with the procedural 19 history and many disputed facts of the suit. Only a brief summary follows. 20 I. FACTUAL AND PROCEDURAL BACKGROUND 21 Plaintiff Stone Brewing Company, LLC, (“Stone”) is a San Diego-based brewer 22 that has sold its Stone® beers nationwide for over two decades. Compl., ECF No. 1. 23 Molson Coors is a beer conglomerate that was formed after a series of mergers involving 24 Coors, Miller, and Canadian brewing giant, Molson. In the United States, Molson Coors 25 operates through its subsidiary, Defendant MillerCoors LLC (“MillerCoors”). Among 26 the dozens of brands in MillerCoors’ portfolio, MillerCoors has sold domestic lager 27 brand Keystone since 1989. Id. at 33. 28 The Keystone line of beers consists of Keystone, Keystone Ice, and Keystone 1 Light. Opp’n, ECF No. 44, 1. Since its inception, MillerCoors and its predecessors have 2 sold “Keystone” sub-premium beer in cans with a primary KEYSTONE® mark and 3 prominent imagery of the Colorado Rocky Mountains. Compl., ECF No. 1, 8-9. From 4 1989 through today, Keystone cans have been updated from time to time but have always 5 prominently featured the KEYSTONE® mark. Opp’n, ECF No. 44, 1. In or around 6 April 2017, MillerCoors undertook efforts to ‘refresh’ its KEYSTONE image by 7 introducing an updated can and package design. Compl., ECF No. 1, 10. MillerCoors 8 also began acquiring various independent craft beer breweries like Saint Archer Brewing 9 Company through its craft beer holding entity, Tenth and Blake Beer Company, to 10 expand its holdings and reduce competition. Id. at 9-10. 11 MillerCoors’ ‘refreshed’ can design took “KEYSTONE” and separated “KEY” and 12 “STONE” onto separate lines. Mot., ECF No. 30, 10. Its ‘refreshed’ packaging 13 emphasized “STONE” rather than “KEYSTONE.” Id. Similar advertising campaigns 14 began to feature the redesigned Keystone can often accompanied by slogans or taglines 15 such as the August 2017 campaign “Hunt the STONE.” Id. 16 Since introducing the “refreshed” can and package design, Keystone Light has 17 gone from MillerCoors’ worst to its best-selling beer of the entire Keystone line. Id. at 18 10. At the same time, Stone noticed a discernable drop in its sales as current and 19 potential purchasers were allegedly confused by Keystone’s new can and packaging. Id. 20 at 11-14. 21 Stone moved for summary judgment on its trademark infringement claim, which 22 the Court denied. See Order, ECF No. 360. The Court determined “a triable issue 23 remains on the ‘critical question’ of the degree of similarity of the marks. Id. (citing 24 GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1205 (9th Cir. 2000). The Court also 25 denied Stone’s motion for summary judgment on MillerCoors’ counterclaims for 26 declaratory judgment that MillerCoors has (1) the right to use STONE and STONES to 27 advertise Keystone Beer, (2) not infringed on Stone’s mark based on its right to use that 28 mark, and (3) an “exclusive common law right to use STONE in connection with the sale 1 of beer in the United States.” Order, ECF No. 360, 22. The Court granted Stone’s 2 motion for summary judgment with respect to MillerCoors’ laches counterclaim and 3 affirmative defense. Id. at 26. MillerCoors moved for summary judgment on the issue of 4 willful trademark infringement, Stone’s federal and state trademark dilution claims, and 5 MillerCoors’ laches counterclaim. The Court denied MillerCoors motion on each issue. 6 Id. at 32-40. 7 In preparation for trial, the Parties filed 15 Motions in Limine. Stone’s MIL, ECF 8 No. 383; MillerCoors’ MIL, ECF No. 379. The Court considers each motion in turn. To 9 the extent that an argument is not acknowledged in this Order, it is rejected. 10 II. LEGAL STANDARD 11 Rulings on motions in limine fall entirely within this Court’s discretion. United 12 States v. Bensimon, 172 F.3d 1121, 1127 (9th Cir. 1999) (citing Luce v. United States, 13 469 U.S. 38, 41-42 (1984)). Evidence is excluded on a motion in limine only if the 14 evidence is clearly inadmissible for any purpose. Mathis v. Milgard Manufacturing, Inc., 15 Case No. 16-cv-2914-BEN-JLB, 2019 WL 482490, at *1 (S.D. Cal. 2019). If evidence is 16 not clearly inadmissible, evidentiary rulings should be deferred until trial to allow 17 questions of foundation, relevancy, and prejudice to be resolved in context. See 18 Bensimon, 172 F.3d at 1127 (when ruling on a motion in limine, a trial court lacks access 19 to all the facts from trial testimony). Denial of a motion in limine does not mean that the 20 evidence contemplated by the motion will be admitted at trial. Id. Instead, denial means 21 that the court cannot, or should not, determine whether the evidence in question should be 22 excluded before trial. Id.; see also McSherry v. City of Long Beach, 423 F.3d 1015, 1022 23 (9th Cir. 2005) (rulings on motions in limine are subject to change when trial unfolds). 24 III. STONE’S MOTIONS IN LIMINE NOS. 1-6 [ECF No. 383] 25 A. Stone Motion No. 1 – Exclusion of Evidence or Argument that MillerCoors Believed it had the Legal Right to use “Stone” or Relied on 26 any such Belief 27 Stone first requests the Court “preclude MillerCoors from introducing any 28 evidence or argument regarding its purported belief in its supposed common-law rights.” 1 MIL, ECF No. 383, 9. In support, Stone contends that “MillerCoors asserts that it 2 believed it had a common-law right to use the STONES trademark but refused to allow 3 any discovery into the basis for that belief on [attorney-client] privilege grounds.” Id. 4 MillerCoors responds that its reliance on the historic use of STONE and STONES was 5 not the result of legal advice but rather “the understanding of the Keystone brand team 6 regarding MillerCoors’ historical use of STONE and STONES,” and that Stone sought 7 and received descriptions of legal advice concerning this issue during discovery. Opp’n, 8 ECF No. 388, 1-5 (emphasis in original). In sum, Stone’s primary argument is that 9 MillerCoors is attempting to use attorney-client privilege as both sword and shield. MIL, 10 ECF No. 383, 7 (citing Chevron Corp. v. Pennzoil Co., 974 F.2d 1156, 1162 (9th Cir. 11 1992). MillerCoors responds that it is using attorney-client privilege as a shield, but that 12 “there is no corresponding sword [because] MillerCoors is not weaponizing any legal 13 advice.” Opp’n, ECF No. 388, 1. 14 “The privilege which protects attorney-client communications may not be used 15 both as a sword and a shield.” Chevron, 974 F.2d at 1162 (citing United States v. 16 Bilzerian, 926 F.2d 1285, 1292 (2d Cir. 1991)). Under certain circumstances, 17 withholding discovery by citing attorney-client privilege results in preclusion of an 18 advice of counsel defense at trial. See Columbia Pictures Indus. v. Krypton Broad. of 19 Birmingham, Inc., 259 F.3d 1186, 1196 (9th Cir. 2001) (citing William A. Schwarzer, et 20 al., Federal Civil Procedure Before Trial, 11:37 at 11-29 (2000)). For example, where a 21 defendant “puts at issue privileged communications by asserting a good faith belief that it 22 had common law rights, which was based at least in part on advice from its attorneys,” 23 evidence or argument about that belief may be excluded. Spin Master, Ltd. v. Zobmondo 24 Entm't, LLC, Case No. CV 06-3459 ABC PLAX, 2012 WL 8134011, at *3 (C.D. Cal. 25 Mar. 9, 2012). 26 Here, Stone’s Motion in Limine is too broad. It seeks exclusion of Keystone brand 27 team members who may not have relied on the opinion of counsel when formulating the 28 plan for the Keystone refresh, but instead, formulated their plan based on their 1 understanding of Keystone’s historical use of STONE and STONES. This extends the 2 holding in Spin Master too far because it would exclude testimony that is not based on 3 legal advice. See 2012 WL 8134011, at *3. Because the motion is overbroad in its 4 exclusion of testimony that may be relevant, it is DENIED. See, e.g., Fresenius Med. 5 Care Holdings, Inc. v. Baxter, Int’l, Inc., Case No. C 03-1431 SBA(EDL), 2006 WL 6 1646113, at *3 (N.D. Cal. Jun. 12, 2006) (evidence is excluded on a motion in limine 7 only if it is inadmissible for any purpose). To the extent MillerCoors offers testimony at 8 trial that is based on undisclosed opinions of counsel, Stone may, of course, object. 9 B. Stone Motion No. 2 – Reference to Certain Aspects of Private Equity Investments in Stone 10
11 Stone seeks to exclude reference to the (1) identities and nationalities of investors 12 in its company and (2) amounts of money Stone’s founders took out of the company 13 following a recent injection of private equity. Reply, ECF No. 396, 4, n 2. MillerCoors 14 argues Stone is falsely touting itself as being “David to MillerCoors’ Goliath” and that 15 MillerCoors should be able to introduce evidence of substantial foreign investment and 16 question witnesses “about their financial interest in [Stone], their personal financial 17 interest in this lawsuit, and their personal and business interest in accepting investment 18 from private equity.” Opp’n, ECF No. 388, 6. MillerCoors interprets the Motion in 19 Limine too broadly. 20 Under Federal Rule of Evidence 403, evidence may be excluded where its 21 probative value is substantially outweighed by the danger of unfair prejudice or confusion 22 of the issues. Stone does not seek exclusion of the fact that it received private equity 23 investment or that its founders have a current financial stake in Stone, and therefore, the 24 outcome of this litigation. Reply, ECF No. 396, 3-4. Stone simply seeks exclusion of the 25 nationality of those private equity investors and amounts Stone’s founders took out of 26 their business as a result of that investment. Id. The probative value of such evidence is 27 substantially outweighed by the danger the jury will be confused by these issues if such 28 evidence is even relevant under Federal Rule of Evidence 401. See McKiver v. Murphy- 1 Brown LLC, Case No. 7:14-CV-180-BR, 2018 WL 2093071, at *2 (E.D.N.C. Apr. 11, 2 2018) (prohibiting witness from referring to exports as “Chinese” or emphasizing 3 Chinese origin of corporate grandparent to avoid unfair prejudice); Reyes v. Aqua Life 4 Corp., Case No. 10-23548-CIV, 2012 WL 12892213, at *2 (S.D. Fla. Jul. 9, 2012) 5 (granting motion in limine to exclude evidence of wealth, net worth, and income of 6 defendant’s corporate owners). 7 Accordingly, the motion is GRANTED. MillerCoors may not reference the 8 nationality of Stone’s private equity investors or question Stone’s founders about the 9 amount of money they took out of the business following the private equity investment. 10 C. Stone Motion No. 3 – Disclaimer of Actions and Statements of Advertising Agencies 11
12 Stone contends that MillerCoors “should not be permitted to disclaim 13 responsibility for the statements and actions of the outside marketing agencies it hired to 14 perform much of the work on the Keystone rebrand.” MIL, ECF No. 382, 13. 15 Stone relies on In re ChinaCast Education Corporation Securities Litigation, a 16 Ninth Circuit decision, for the proposition that “the statements, knowledge, and actions of 17 [] agents are imputed to the corporation.” MIL, ECF No. 396, 5 (citing 809 F.3d 471, 18 476 (9th Cir. 2015) (emphasis added)). However, that case only determined that 19 knowledge could be imputed to a corporation, and significantly, the court declined to 20 hold as a matter of law that knowledge was imputed in that particular case. Moreover, 21 the Court agrees with MillerCoors that Stone’s request is overbroad. Stone asks the 22 Court to find “MillerCoors is charged with the work that Mekanism and Soulsight [two 23 advertising agencies] performed for the Keystone rebrand.” Reply, ECF No. 396, 5. 24 However, Stone “ha[s] not identified specific evidence that [it] wish[es] to exclude.” 25 Low v. Trump Univ., LLC, Case No. 10-cv-940-GPC-WVG, 2016 WL 6732110, at *11 26 (S.D. Cal. Nov. 15, 2016). Accordingly, Stone’s motion is DENIED. Stone may, of 27 course, inquire into the relationship between these advertising agencies and MillerCoors 28 during cross-examination to show knowledge should be imputed to MillerCoors. 1 D. Stone Motion No. 4 – Exclusion of Evidence for Stone’s Motive for Filing Suit 2
3 Stone argues that pursuant to Federal Rules of Evidence 402 and 403, MillerCoors 4 should be prohibited from “arguing or introducing evidence regarding its speculative 5 theories on Stone’s motivation for filing suit.” MIL, ECF No. 382, 18. Stone also 6 specifically requests exclusion of MillerCoors’ trial exhibits DX2270, DX2252, and 7 DX2253. MillerCoors argues Stone’s motivation for filing suit may be relevant to 8 MillerCoors’ equitable defenses including estoppel and consent or acquiescence. Opp’n, 9 ECF No. 388, 16. While the Court is loath to allow this case to be engulfed in a sideshow 10 of whether this litigation is a marketing ploy, it denies the motion as overbroad. 11 Evidence regarding an alleged motive in filing suit may be relevant to 12 MillerCoors’ equitable defenses of estoppel and acquiescence. See Illinois Tool Works, 13 Inc. v. MOC Products Co., Inc., 946 F. Supp. 2d 1042, 1048 (S.D. Cal. 2012). “In 14 deciding the equitable defenses, the Court must ‘look at all of the particular facts and 15 circumstances of each case and weigh the equities of the parties.’” Id. (quoting 16 Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1028 (Fed. Cir. 1992) (en 17 banc)). Here, MillerCoors may be able to show relevance of these documents to their 18 equitable defenses, and therefore, the motion is DENIED. Stone may make an 19 appropriate objection at trial if relevancy is not established when MillerCoors seeks to 20 admit such evidence. 21 E. Stone Motion No. 5 – Exclusion of Evidence and Argument from the “Undisclosed Coors Archive” 22
23 Stone argues “MillerCoors should be precluded from presenting any historical 24 Keystone materials from the Coors Archive” because MillerCoors allegedly improperly 25 withheld this evidence during discovery. MIL, ECF No. 382, 23. MillerCoors responds 26 that it “produced hundreds of documents from the Coors Archive in the course of 27 discovery, including in its first production” and complied with an order from Magistrate 28 Judge Lopez granting Stone additional deposition time with MillerCoors’ archivist. 1 Opp’n, ECF No. 288, 24-25, n. 19. The Court granted the Parties leave to provide 2 additional briefing on this Motion in Limine and has considered their arguments set forth 3 therein. See Offer of Proof, ECF No. 423 and Resp. to Offer of Proof, ECF No. 426. 4 Perplexingly, however, only one paragraph of Stone’s Offer of Proof addresses the 5 Coors Archive. ECF No. 423, 5. The remainder of Stone’s Offer of Proof is directed at 6 five other categories of discoverable information MillerCoors allegedly “continues to 7 withhold.” Id. Here, the Court addresses only Stone’s Motion in Limine regarding the 8 Coors Archive. Stone’s Offer of Proof is further addressed in § V of this Order, below. 9 Federal Rule of Civil Procedure 26(a)(1)(ii) requires parties to provide “a copy – or 10 a description by category and location – of all documents, electronically stored 11 information, and tangible things that the disclosing party has in its possession, custody, or 12 control and may use to support its claims and defenses.” These disclosures are 13 mandatory and must be made “without awaiting a discovery request.” Id. “If a party 14 fails to provide information or identify a witness as required by Rule 26(a) or (e), the 15 party is not allowed to use that information or witness to supply evidence . . . at trial.” 16 Fed. R. Civ. P. 37(c)(1). This sanction is mandatory unless “the part[y’s] failure to 17 disclose the required information is substantially justified or harmless.” Yeti by Molly, 18 Ltd. v. Deckers Outdoor Corp., 259 F.3d 1101, 1106 (9th Cir. 2001) (emphasis added).1 19 Here, MillerCoors cannot show the failure was substantially justified. The Court 20 has already adopted the thoughtful and thorough recommendation of Magistrate Judge 21 Lopez addressing monetary sanctions for this issue wherein she found MillerCoors had 22 “not complied with its discovery obligations with respect to the historical Keystone 23 materials.” Report & Recommendation, ECF No. 283, 9. Magistrate Judge Lopez noted 24 there were serious questions “as to how diligent MillerCoors’ search and corresponding 25
26 27 1 While the Court has separately issued monetary sanctions to MillerCoors arising from this same dispute, see Order, ECF No. 409, those sanctions are independent of the 28 1 production really was.” Id. at 7. 2 The Court thus turns to harmlessness. “Implicit in Rule 37(c)(1) is that the burden 3 is on the party facing sanctions to prove harmlessness.” Yeti by Molly, 259 F.3d at 1107. 4 Stone argues harm has occurred because (1) it was not allowed to inspect the Coors 5 Archive, MIL, ECF No. 382, 26-27, and (2) MillerCoors “has still not made a full and 6 complete production of historical Keystone images that support Stone in this case,” Offer 7 of Proof, ECF No. 423, 5. When Stone previously made this argument in support of its 8 request for an “on-site inspection of the historical items in their locations in the Coors 9 Archive,” Magistrate Judge Lopez found Stone’s “argument that it is entitled to ‘access to 10 the archive itself and the physical arrangement that [the archivist] relied on’ is notably 11 void of any supporting authority.” Order, ECF No. 218, 11-12. The Court agrees that 12 Rule 26 does not contemplate “on-site inspection,” and therefore, this cannot serve as a 13 basis for harm to Stone. Moreover, with respect to the Coors Archive, MillerCoors has 14 represented that its contents have now been fully disclosed, and Stone does not contest 15 this point. As the Court has not yet set a date for trial, it concludes that MillerCoors has 16 shown the failure was harmless. 17 Accordingly, the motion is DENIED. 18 F. Stone Motion No. 6 – Exclusion of Evidence and Argument Inconsistent with Deposition Testimony of Rule 30(b)(6) Witnesses 19
20 Stone argues “MillerCoors should not be permitted to offer evidence or argument 21 that is inconsistent with the deposition testimony of its designated Rule 30(b)(6) 22 witnesses.” MIL, ECF No. 382, 28. Stone supports this contention by stating 23 MillerCoors failed to produce a knowledgeable Rule 30(b)(6) witness and that allowing 24 MillerCoors to now “ambush Stone with new information at trial[] would defeat the 25 entire purpose of the Rule.” Id. at 32. MillerCoors argues that the motion is overbroad 26 and that any inconsistencies with Rule 30(b)(6) depositions can be addressed through 27 cross-examination. Opp’n, ECF No. 388, 26. 28 The Court has addressed similar motions before. See Med. Sales & Consulting 1 Grp. v. Plus Orthopedics USA, Inc., Case No. 08-cv-1595-BEN, 2011 U.S. Dist. LEXIS 2 53766, at *5-6 (S.D. Cal. May 18, 2011) (denying plaintiffs’ motion in limine to exclude 3 certain Rule 30(b)(6) witness testimony on grounds the witness was unprepared). There, 4 the Court found the blanket motion to exclude such testimony was premature because 5 there is not yet “contradictory trial testimony to compare with the witnesses’ deposition 6 testimony.” Id. at 6. The same reasoning applies here. Accordingly, Stone’s motion is 7 DENIED without prejudice. Stone may raise the issue at trial if MillerCoors attempts to 8 offer contradictory Rule 30(b)(6) witness testimony. 9 IV. MILLERCOORS’ MOTIONS IN LIMINE NOS. 1-9 [ECF No. 379] 10 A. MillerCoors Motion No. 1 – Excluding Evidence and Argument of Unused Advertisements Created by Third Parties 11
12 MillerCoors argues the Court should “exclude evidence and argument regarding 13 advertisements proposed by third parties that MillerCoors never adopted or used in 14 commerce.” MIL, ECF No. 379, 1-6. Specifically, MillerCoors seeks exclusion of 15 certain billboard designs developed by a marketing firm for MillerCoors that were never 16 actually published. Id. at 1-2. MillerCoors argues the evidence is irrelevant, content 17 created by third parties cannot be attributed to MillerCoors, and such evidence does not 18 prove MillerCoors’ intent with respect to infringement. Id. at 2-4. Stone responds that 19 such evidence supports its contentions that MillerCoors intended to confuse consumers. 20 Opp’n, ECF No. 390, 4-5. 21 The Court agrees with Stone. Stone’s first claim for relief is for trademark 22 infringement, alleging MillerCoors intentionally copied the STONE® mark. Compl., 23 ECF No. 1, 17-18. This evidence could be relevant to MillerCoors’ intent to infringe the 24 mark and its knowledge that it was doing so, regardless of whether these particular 25 billboards were ever published. Accordingly, the motion is DENIED. See, e.g., 26 Fresenius, 2006 WL 1646113, at *3 (evidence is excluded on a motion in limine only if it 27 is inadmissible for any purpose). 28 1 B. MillerCoors Motion No. 2 – Exclusion of Evidence Regarding Discovery Disputes 2
3 MillerCoors seeks to “preclude [Stone] from making any argument or introducing 4 any evidence concerning [] pretrial discovery disputes, the parties’ discovery 5 negotiations, and the Court’s discovery orders as irrelevant, confusing, and unduly 6 prejudicial.” MIL, ECF No. 379, 7. Stone responds that it is “entitled to cross-examine 7 MillerCoors’ experts about how gaps in MillerCoors’ documents impacted their 8 opinions” and that alleged discovery misconduct may be evidence of willfulness. Opp’n, 9 ECF No. 390, 8. 10 Other courts in this Circuit have found that evidence of discovery disputes and 11 misconduct “may be probative of willfulness, and as such, a broad limitation is 12 unwarranted” in a motion in limine. See, e.g., Corning Optical Comm. Wireless Ltd. v. 13 Solid, Inc., Case No. 14-cv-03750-PSG, 2015 WL 5569095, at *2 (N.D. Cal. Sep. 22, 14 2015). The Court agrees that the broad limitation is likewise not warranted here because 15 Stone may be able to establish relevance as to particular issues addressed in MillerCoors’ 16 Motion in Limine. Accordingly, the motion is DENIED. However, this ruling does not 17 preclude more specific objections at trial. 18 C. MillerCoors Motion No. 3 – Exclusion of Evidence and Witnesses not Properly Produced or Disclosed in Discovery 19
20 MillerCoors seeks exclusion of 540 documents and five witnesses it alleges Stone 21 “did not disclose or did not timely disclose during discovery.” MIL, ECF No. 379, 9-14. 22 In support, MillerCoors argues that allowing these evidence and exhibits would amount 23 to “trial by ambush.” Id. at 9. Stone responds that it “has acted in good faith to disclose 24 relevant witnesses in this case” and did not fail to disclose any documents. Opp’n, ECF 25 No. 390, 9-12. 26 “The purpose of [Federal Rule of Evidence] 26(a) is to allow the parties to 27 adequately prepare their cases for trial and to avoid unfair surprise.” Kilroy v. L.A. 28 Unified School Dist. Board of Education, Case No. CV 16-9068-DMG (JDE), 2017 WL 1 10544624, at *1 (C.D. Cal. Oct. 5, 2017) (quoting Russell v. Absolute Collection 2 Services, Inc., 763 F.3d 385, 396 (4th Cir. 2014)). Here, fact discovery closed on May 3 31, 2019, and ample time has passed since disclosure to prevent any “unfair surprise” to 4 MillerCoors. Moreover, “[o]rders in limine which exclude broad categories of evidence 5 should rarely be employed.” Sperberg v. Goodyear Tire & Rubber Co., 519 F.2d 708, 6 712 (6th Cir. 1975). The Court declines to do so here. MillerCoors’ motion is DENIED. 7 D. MillerCoors Motion No. 4 – Exclusion of Improper Actual Confusion Evidence 8
9 MillerCoors seeks to preclude Stone “from introducing improper actual confusion 10 evidence or making any argument concerning it at trial.” MIL, ECF No. 379, 14. 11 MillerCoors argues this evidence, which includes social media posts from alleged 12 consumers describing confusion as to a new “Stone Light” beer, is irrelevant, hearsay, 13 and not timely disclosed. Id. Stone opposes, arguing social media evidence is relevant 14 and admissible. Opp’n, ECF No. 390, 13. 15 The Ninth Circuit has held that in trademark cases, witnesses may testify about 16 “telephone calls from confused customers” to show confusion under the state of mind 17 exception to the hearsay rule. Lahoti v. Vericheck, Inc., 636 F.3d 501, 509 (citing Fed. R. 18 Evid. 803(3)). Moreover, MillerCoors errs in stating that the Court has found social 19 media evidence to be per se irrelevant. MIL, ECF No. 14-15 (quoting Order, ECF No. 20 85, 10). Instead, the Court stated that “it is not permitted to weigh evidence” in the 21 context of summary judgment, and that the jury may consider such evidence if the 22 evidence is properly authenticated and otherwise admissible. Order, ECF No. 360, 17- 23 18. MillerCoors citation to LaPorta v. BMW of North America, LLC for the proposition 24 that social media statements are hearsay not subject to any exception is likewise 25 inapposite, as that case dealt with the objective standards of impairment for a vehicle 26 under the Song-Beverly Act. Case No. 17-cv-5145-KS, 2019 WL 988675, at *4 (C.D. 27 Cal. Jan. 24, 2019). 28 Accordingly, the motion is DENIED. The Court will delay ruling on authenticity 1 and hearsay objections regarding social media posts until trial, dependent on the context 2 in which the evidence is offered. 3 E. MillerCoors Motion No. 5 – Exclusion of Expert Testimony Regarding Intent 4
5 MillerCoors seeks to preclude three of Stone’s expert witnesses, Brandon 6 Hernandez, David Stewart, and Phillip Hampton, from testifying about “their opinions 7 regarding MillerCoors’ alleged intent.” MIL, ECF No. 379, 21. MillerCoors argues that 8 such testimony goes to an ultimate issue of fact – willfulness – that must be decided by 9 the jury. Id. Stone responds that these experts are not testifying to an ultimate issue of 10 fact but rather to industry practices that are relevant to intent and willfulness. Opp’n, 11 ECF No. 390, 17. 12 “[A]n expert witness cannot give an opinion as to her legal conclusion, i.e., an 13 opinion on an ultimate issue of law.” Mukhtar v. Cal. State Univ., Hayward, 299 F.3d 14 1053, 1066 n. 10 (9th Cir. 2002) (emphasis in original). However, experts may opine that 15 a defendant “deviated from industry standards [to support] a finding that they acted in 16 bad faith.” Hangarter v. Provident Life and Acc. Ins. Co., 373 F.3d 998, 1016 (9th Cir. 17 2004). The Parties appear to agree on the law but not the content of the expert testimony. 18 Here, the motion is DENIED because MillerCoors seeks to exclude expert testimony that 19 could permissibly opine on its deviation from industry standards. See Fresenius, 2006 20 WL 1646113, at *3 (evidence is excluded on a motion in limine only if it is inadmissible 21 for any purpose). 22 F. MillerCoors Motion No. 6 – Exclusion of Evidence and Argument Regarding MillerCoors’ 2007 Trademark Application 23
24 MillerCoors argues the Court should exclude “argument or evidence relating to 25 MillerCoors’ 2007 trademark application and related proceedings because such argument 26 or evidence would be likely to confuse the jury and would be unduly prejudicial.” MIL, 27 ECF No. 379, 24 (citing Fed. R. Evid. 402 and 403). Stone argues the application is 28 relevant because it shows evidence of intent and contains admissions by MillerCoors 1 regarding its first purported use of “STONES” for the Keystone brand. Opp’n, ECF No. 2 390, 21. 3 Other courts in this circuit have denied motions in limine in similar cases because 4 evidence of trademark application proceedings has been relevant to likelihood of 5 confusion and statements in the application may contradict other statements in evidence. 6 See, e.g., Moroccanoil, Inc. v. Marc Anthony Cosmetics, Inc., Case No. CV 13-2747- 7 DMG (AGRx), 2014 WL 5797541, at *2 (C.D. Cal. Oct. 7, 2014). In this case, Stone is 8 not arguing the trademark office’s findings are “final” or legally binding, but that 9 MillerCoors’ assertions in that application may contradict claims about how long 10 MillerCoors has used “STONES” with respect to the Keystone brand. Because the 11 evidence may be relevant and otherwise admissible, the motion is DENIED. 12 G. MillerCoors Motion No. 7 – Exclusion of Evidence and Argument Regarding Gross Revenues or Profits and Sales of Other Products 13
14 MillerCoors seeks exclusion of Stone Exhibits PX356 – PX365, PX370, and any 15 argument concerning MillerCoors total revenue or profits. MIL, ECF No. 379, 25. 16 MillerCoors argues the evidence is unfairly prejudicial and represents an attempt to make 17 this case about “craft” versus “big beer.” Id. Stone responds that evidence of revenue 18 and profits from other brands is admissible to show that the Keystone rebranding, rather 19 than other marketing ideas such as the 15-pack of Keystone, drove Keystone’s improved 20 revenue, and thus, would be relevant to Stone’s damages. Opp’n, ECF No. 390, 26. 21 The Court concurs total revenue figures are irrelevant and would likely cause 22 unfair prejudice. See Fed. R. Evid. 402 and 403. However, Stone may be able to 23 demonstrate sales of other products are relevant to determining the effects of the 24 allegedly infringing Keystone refresh. Accordingly, the motion is DENIED without 25 prejudice. MillerCoors may bring specific, appropriate objections to evidence at trial. 26 H. MillerCoors Motion No. 8 – Exclusion of Evidence and Argument Regarding MillerCoors’ Other Business Activities 27
28 MillerCoors seeks exclusion of evidence regarding its decisions to acquire Saint 1 Archer Brewing Company and cease production in Irwindale, California. MIL, ECF No. 2 379, 30. It argues such evidence is irrelevant and would otherwise be unfairly 3 prejudicial. Id. (citing Fed. R. Evid. 401 and 403). Stone argues the evidence 4 MillerCoors ceased production in Irwindale is relevant to the cost associated with the 5 production of Keystone, and therefore, relates to Keystone’s revenues in calculating 6 disgorgement. Opp’n, ECF No. 390, 29. It argues evidence MillerCoors acquired Saint 7 Archer Brewing Company shows MillerCoors was attempting to “appropriate the San 8 Diego craft space.” Id. 9 Any marginal relevance of this evidence is substantially outweighed by the danger 10 of unfair prejudice and potential for confusion of the issues placed before the jury. Other 11 evidence can be used to establish the costs of Keystone’s production, and appropriation 12 of the “San Diego craft space” is not at issue here. Accordingly, the motion is 13 GRANTED. 14 I. MillerCoors Motion No. 9 – Exclusion of Evidence and Argument Concerning Legal Advice 15
16 MillerCoors seeks exclusion of “[a]ny mention [of] MillerCoors’ decision to seek 17 or not to seek legal advice, withholding of such legal advice, and the existence or non- 18 existence of any opinion of counsel.” MIL, ECF No. 379, 32. In support, MillerCoors 19 argues such evidence would be “irrelevant, confusing to the jury, and unfairly 20 prejudicial.” Id. Stone alleges “MillerCoors intends to argue at trial that it never 21 considered the STONE® mark when it developed and waged its infringing ‘Own the 22 Stone’ campaign.” Opp’n, ECF No. 390, 30. Stone asserts that MillerCoors’ privilege 23 log demonstrates MillerCoors sought legal advice about potential infringement during the 24 Keystone refresh. Id. 25 The Court cannot “honor the shield of the attorney-client privilege and then allow 26 [the opposing party] to use it as a sword to prove its case.” McKesson Info. Solutions, 27 Inc. v. Bridge Medical, Inc., 434 F. Supp. 2d 810, 812 (E.D. Cal. 2006). Here, 28 MillerCoors has stated it “will not rely on advice of counsel to support its claims and 1 defenses in this case.” MIL, ECF No. 379, 31. Moreover, the Court has already held that 2 Stone may object at trial to the extent evidence is based on the undisclosed opinions of 3 counsel. See, supra, § III(A). Accordingly, the motion is GRANTED. Stone may not 4 make argument or introduce evidence concerning legal advice MillerCoors received 5 about the Keystone refresh. 6 V. STONE’S OFFER OF PROOF AND MOTION FOR LEAVE TO FILE REPLY [ECF No. 431] 7
8 On October 21, 2020, the Court held a Status Conference in this case at which 9 Stone sought leave from the Court to submit an Offer of Proof “to demonstrate that [] 10 documents that were later discovered in the possession of third parties were requested 11 from Molson Coors,” and MillerCoors’ represented that it had produced those 12 documents. Status Conference Tr., ECF No. 415, 9:6-9. Stone argued some of these 13 documents related to the Coors Archive addressed above, see, supra, § III(E), but others 14 related to “massive quantities of literally databases of information that were never 15 searched for or produced.” Id. at 10:1-4. The Court granted Stone’s request to file an 16 Offer of Proof on Stone’s Motion in Limine # 5, id. at 25:6-10; see also Minute Order, 17 ECF No. 410, but also ordered the Parties to take certain actions that the Parties appear to 18 have ignored. 19 As mentioned above, only one paragraph of Stone’s Offer of Proof addresses the 20 Coors Archive, which is the subject of its Motion in Limine # 5. See ECF No. 423, 5. 21 The remainder of the Offer of Proof addresses alleged withholding of documents 22 pertaining to (1) MillerCoors’ 2019 Keystone Renter Strategy; (2) the Communications 23 Advantage database; (3) a database of social media, radio, and other advertising; (4) 24 economy strategy documents; and (5) “Space Planning” documents. Id. at 1-5. Stone 25 does not request a specific remedy. See id. at 5 (“Stone MIL 5 focuses on excluding the 26 selectively-produced [Coors] Archive, but an effective remedy must ensure a fair trial not 27 impacted by withheld documents and objections that leverage [MillerCoors’] discovery 28 misconduct.”). MillerCoors responds that “all of the categories of documents [sought by 1 Stone in its Offer of Proof] have been included in prior, settled discovery disputes,” and 2 Stone’s requests were outside the Parties’ agreed upon electronically stored information 3 protocol. Opp’n, ECF No. 426, 1-2. 4 At the Status Conference, the Court ordered the Parties to (1) meet and confer in- 5 person; (2) exchange lists of their intended witnesses, the substance of the witnesses’ 6 testimony, and the documents they will be using to support that testimony within 45 days; 7 and (3) stipulate which of the documents described above MillerCoors will agree can 8 come into evidence. Status Conf. Tr., ECF No. 415, 23:22-25:5. Though the Parties met 9 and conferred in-person, there is no indication they have exchanged the lists described 10 above or drafted an appropriate stipulation. Instead, three days after their meet-and- 11 confer, Stone filed its Offer of Proof only minimally addressing its Motion in Limine # 5. 12 Offer of Proof, ECF No. 423. After MillerCoors responded to the Offer of Proof, Stone 13 filed an Ex Parte Motion for Leave to File Reply in Support of Offer of Proof Re. 14 Withheld Evidence / MIL # 5. ECF No. 431.2 During this time, the 45-day deadline for 15 the exchange of witness lists and a stipulation on evidence expired without any indication 16 the Parties have complied with the Court’s other directives to the Parties at the Status 17 Conference. Accordingly, the Court finds the Parties have failed to adhere to its order 18 issued during the Status Conference and is considering imposing sanctions. See Fed. R. 19 Civ. P. 16(f) (“On motion or on its own, the Court may issue any just orders, including 20 those authorized by Rule 37(b)(2)(A)(ii)-(vii), if a party or its attorney . . . fails to obey a 21 scheduling or other pretrial order.”). 22
23 2 To justify ex parte relief, “the evidence must show that the moving party’s cause 24 will be irreparably prejudiced if the underlying motion is heard according to regular 25 noticed motion procedures.” Mission Power Eng’g Co. v. Cont’l Cas. Co., 883 F. Supp. 488, 492 (C.D. Cal. 1995). The Court notes that it already granted Stone’s request to file 26 an Offer of Proof on this matter. Minute Order, ECF No. 410. Further briefing would 27 only be redundant. Moreover, Stone fails to allege in its Ex Parte Motion sufficient grounds to show “irreparable prejudice.” See Mission Power, 883 F. Supp. at 492. 28 1 The Parties are, therefore, ordered to file an updated Pretrial Order. See Civ. L. R. 2 16.1(f)(g). Stone’s counsel shall provide MillerCoors’ counsel a draft Pretrial Order by 3 January 28, 2021. After meeting and conferring, the Parties are ordered to lodge an 4 updated Pretrial Order by Friday, February 12, 2021. The Pretrial Order shall comply 5 with Local Rule 16.1. This will assist the Court in expeditiously moving this case to trial 6 while narrowing and defining the nature of the ongoing discovery dispute, and the 7 Parties’ efforts should be aided by the Court’s resolution of their Motions in Limine. 8 VI. MOTIONS TO SEAL [ECF Nos. 424, 428, 433] 9 Concurrent with the Parties’ briefing on Stone’s Offer of Proof and Motion for 10 Leave to File Reply in Support of Offer of Proof, the Parties moved to file under seal 11 portions of their briefs, declarations, and supporting exhibits. 12 The portions of the briefs, declarations, and exhibits sought to be sealed contain, 13 reference, or discuss commercially sensitive and proprietary business data. These 14 documents have been previously designated “Confidential,” “Confidential – Attorneys’ 15 Eyes Only,” or “Privileged” pursuant to the Protective Order issued in this case. See ECF 16 No. 54. Specifically, these exhibits contain business information including detailed 17 business strategy and detailed agreements with third parties. 18 “[C]ompelling reasons sufficient to outweigh the public’s interest in disclosure and 19 justify sealing court records exist when such court files might . . . become a vehicle for 20 improper purposes, such as the use of records to . . . release trade secrets.” Kamakana v. 21 City & Cnty. of Honolulu, 447 F.3d 1172, 1179 (9th Cir. 2006). A “trade secret may 22 consist of any formula, pattern, device or compilation of information which is used in 23 one’s business, and which gives him an opportunity to obtain an advantage over 24 competitors who do not know or use it.” The Court can seal proprietary information to 25 protect a business from potential harm. See Obesity Research Institute, LLC v. Fiber 26 Research International, LLC, No. 15-CV-00595-BAS-MDD, 2017 WL 6270268, at *2 27 (S.D. Cal. Dec. 8, 2017) (granting motion to file documents containing proprietary 28 business information under seal). 1 Accordingly, the motions to seal are GRANTED. Redacted versions of the 2 aforementioned documents have been filed on the public docket. The Clerk is directed to 3 file unredacted versions of the documents and exhibits lodged at Docket Numbers 425, 4 429, and 434 under seal. 5 VII. CONCLUSION 6 In summary, the Court rules as follows: 7 1. The Court DENIES Plaintiff’s Motion in Limine # 1 – Exclusion of 8 Evidence or Argument that MillerCoors Believed it had the Legal Right to use “Stone” or 9 Relied on any such Belief. 10 2. The Court GRANTS Plaintiff’s Motion in Limine # 2 – Reference to 11 Certain Aspects of Private Equity Investments in Stone. 12 3. The Court DENIES Plaintiff’s Motion in Limine # 3 – Disclaimer of 13 Actions and Statements of Advertising Agencies. 14 4. The Court DENIES Plaintiff’s Motion in Limine # 4 – Exclusion of 15 Evidence for Stone’s Motive for Filing Suit. 16 5. The Court DENIES Plaintiff’s Motion in Limine # 5 – Exclusion of 17 Evidence and Argument from the “Undisclosed Coors Archive.” 18 6. The Court DENIES Plaintiff’s Motion in Limine # 6 – Exclusion of 19 Evidence and Argument Inconsistent with Deposition Testimony of Rule 30(b)(6) 20 Witnesses. 21 7. The Court DENIES Defendant’s Motion in Limine # 1 – Excluding 22 Evidence and Argument of Unused Advertisements Created by Third Parties. 23 8. The Court DENIES Defendant’s Motion in Limine # 2 – Exclusion of 24 Evidence Regarding Discovery Disputes. 25 9. The Court DENIES Defendant’s Motion in Limine # 3 – Exclusion of 26 Evidence and Witnesses not Properly Produced or Disclosed in Discovery. 27 10. The Court DENIES Defendant’s Motion in Limine # 4 – Exclusion of 28 Improper Actual Confusion Evidence. 1 11. The Court DENIES Defendant’s Motion in Limine # 5 — Exclusion of 2 Expert Testimony Regarding Intent. 3 12. The Court DENIES Defendant’s Motion in Limine # 6 — Exclusion of 4 || Evidence and Argument Regarding MillerCoors’ 2007 Trademark Application. 5 13. The Court DENIES Defendant’s Motion in Limine #7 — Exclusion of 6 || Evidence and Argument Regarding Gross Revenues or Profits and Sales of Other 7 || Products. 8 14. The Court GRANTS Defendant’s Motion in Limine # 8 — Exclusion of 9 || Evidence and Argument Regarding MillerCoors’ Other Business Activities. 10 15. The Court GRANTS Defendant’s Motion in Limine # 9 — Exclusion of 11 Evidence and Argument Concerning Legal Advice. 12 16. The Court GRANTS the Parties’ motions to seal. ECF Nos. 424, 428, 433. 13 In addition, the Parties are ordered to submit an updated Pretrial Order meeting the 14 ||requirements of Local Rule 16.1()(6) by February 12, 2021. Plaintiff shall provide a 15 || draft of the Pretrial Order to Defendant by January 28, 2021. 16 IT ISSO ORDERED. . 17 18 || DATED: January 7, 2021 lyin, 19 Hon. Roger T. Benitez United States District Court 20 21 22 23 24 25 26 27 28 20