The Cookie Department, Inc. v. The Hershey Company

Opinion

1 2 3 6 7 THE COOKIE DEPARTMENT, INC., Case No. 20-cv-09324-KAW

8 Plaintiff, PRETRIAL CONFERENCE TENTATIVE RULINGS 9 v.

10 THE HERSHEY COMPANY, et al., 11 Defendants.

12 14 Defendants move to strike Plaintiff’s demand for a jury trial on the ground that Plaintiff’s 15 remaining damages theories sound in equity. (Defs.’ Mot. to Strike, Dkt. No. 115.) The Court is 16 inclined to DENY the motion because Plaintiff’s claim for compensatory damages for corrective 17 advertising is a legal remedy that warrants a jury trial.1 See Adray v. Adry-Mart, 76 F.3d 984, 988 18 (9th Cir. 1995) (“An award of the cost of corrective advertising, like compensatory damage 19 awards in general, is intended to make the plaintiff whole. It does so by allowing the plaintiff to 20 recover the cost of advertising undertaken to restore the value plaintiff’s trademark has lost due to 21 defendant’s infringement.”). An award for damages is distinct from an injunction requiring a 22 defendant to engage in a corrective advertising campaign, as is the case in most of the cases cited 23 by Defendants. 24 The parties should be prepared to discuss if Plaintiff sufficiently disclosed its damages for 25 a corrective advertising campaign, and how Plaintiff intends to calculate these damages. 26 To the extent Defendants seek an opportunity to brief a motion to bifurcate, the Court 27 1 would deny any such motion because it is not economical or efficient to bifurcate the trial into two 2 phases given the overlapping issues as to liability. 4 In determining whether expert testimony is admissible under Federal Rule of Evidence 5 702, the district court is charged with performing “a preliminary assessment of whether the 6 reasoning or methodology underlying the testimony is scientifically valid and whether that 7 reasoning or methodology properly can be applied to the facts in issue.” Daubert v. Merrell Dow 8 Pharms., Inc., 509 U.S. 579, 592-93 (1993). This inquiry is “a flexible one,” and “[i]ts 9 overarching subject is the scientific validity -- and thus the evidentiary relevance and reliability -- 10 of the principles that underlie a proposed submission. The focus, of course, must be solely on 11 principles and methodology, not on the conclusions that they generate.” Id. at 594-95. 12 13 Daubert Motion to Ruling Reason/Explanation 14 Exclude: 15 16 In general, Ms. Harper’s opinion adequately connects her experience to her conclusions as to the Sleekcraft factors. See 17 Marketquest Grp., Inc. v. BIC Corp., No. 11-CV-618-BAS (JLB), 2018 WL 1756116, at *2 (S.D. Cal. Apr. 12, 2018). 18 The Court will exclude Ms. Harper’s opinions as to 19 intellectual property diligence during Defendant Hershey’s 20 Granted in acquisition of Defendant ONE brands because Ms. Harper Rhonda Harper Part; Denied does not demonstrate any expertise in acquisitions and 21 in Part mergers, and her opinion does not connect her experience to this process. Rather, her opinions are generally a recitation of 22 the evidence at issue, such as deposition testimony. Additionally, as discussed below, due diligence does not 23 appear to be relevant to the case. 24 The Court will also exclude Ms. Harper’s opinions as to the 25 legal conclusion of whether there is likelihood of confusion. 26 Amanda Ms. Schlumpf’s opinion adequately explains how her 27 Schlumpf Denied experience with digital marketing encompasses experience opinions with her experience. Defendants’ challenges to Ms. 1 Schlumpf’s methodology are ultimately arguments as to the 2 weight of her opinions. 3 III. MOTION FOR SUMMARY JUDGMENT 4 Defendants move for summary judgment on the cancellation of Plaintiff’s trademark 5 registration for “TOUGH COOKIE,” on the grounds that the registration is invalid due to fraud. 6 (Defs.’ Mot. for Summ. J., Dkt. No. 172.) The Court intends to DENY the motion because 7 Plaintiff has provided adequate evidence to create a genuine dispute of material fact as to whether 8 Plaintiff’s product list was made in good faith (or was a mistake as to vegan cookies). (See 9 Resnikoff Decl. ¶¶ 11-14.) 10 IV. MOTION TO QUASH 11 The Court is inclined to deny the motion to quash, but modify the subpoena to allow Ms. 12 Clements to testify virtually. She appears to have relevant testimony that is not duplicative of 13 other witnesses, and this modification would remove the burden associated with travel. 14 V. MOTIONS IN LIMINE 15 Relevant evidence is any evidence that has any tendency to make a fact that is of 16 consequence to the determination of the action more or less probable than it would be without the 17 evidence. Fed. R. Evid. 401. The Court has discretion to “exclude relevant evidence if its 18 probative value is substantially outweighed by a danger of . . . unfair prejudice, confusing the 19 issue, misleading the jury, undue delay, wasting time, or needlessly presenting cumulative 20 evidence.” 21

22 MIL Motion Ruling Reason/Explanation 23 Defendants may not assert reliance on 24 Exclude evidence of legal advice that they did not disclose GRANT IN legal right to use because of the attorney-client privilege. 25 P1 Tough Cookies Only PART; DENY Defendants may rely on other non- IN PART 26 phrase privileged bases so long as they were disclosed. 27 Preclude Defendants Plaintiff fails to demonstrate that CAVU actions of CAVU employee of Defendants. 1 Ventures 2 Evidence of Plaintiff’s motive may go to Preclude references to 3 P3 Plaintiff’s motive DENY the issue of fraud in obtaining the trademark registration. 4 There is no showing that production of 5 the VDR was needed if the responsive Exclude evidence from documents within the VDR were 6 P4 Virtual Diligence DENY produced. There is no showing the 7 Room (“VDR”) VDR was destroyed when Defendants had notice it was relevant to the instant 8 litigation. 9 Exclude corrected financial document 10 P5 and expert opinions DENY Plaintiff does not identify any prejudice. 11 based thereon 12 Plaintiff does not identify authority Exclude evidence supporting exclusion of testimony that is 13 P6 i sn wc oo rn nsi s dt ie sn cot vw ei rt yh DENY inconsistent with interrogatory responses. Can be used for 14 responses impeachment. 15 Experts may not opine as to the ultimate 16 legal conclusion of likelihood of confusion, nor should experts instruct 17 the jury on applicable law. With the exception of Mr. Schoettelkotte, the 18 Exclude expert GRANT Court is unable to rule on the specific 19 P7 testim coo nn cy lu a ss i ot no s l egal (qualified) statements challenged by Plaintiff because the expert reports were not 20 provided in Plaintiff’s motions in limine, nor was a docket number 21 citation provided to otherwise locate them. 22 Plaintiff asserts insurance coverage is 23 relevant to showing due diligence, but 24 Exclude evidence of due diligence is not relevant because D1 insurance GRANT there was no registered trademark at the 25 time due diligence would have been conducted. 26 27 Exclude evidence of DENY Evidence of past enforcement actions D2 Defendants’ past may go to Defendants’ knowledge of the The Court, however, does not intend to 1 allow any evidence of other cases 2 between Plaintiff and Defendants, nor does the Court believe it would be a 3 good use of time to introduce Defendants’ previous enforcement 4 actions. 5 Evidence of post-hoc efforts to amend 6 Exclude evidence of the description of goods are not relevant to the case. The only relevance offered Plaintiff’s efforts to 7 D3 amend the description GRANT by Plaintiff is that Defendants did a similar thing, a collateral issue that has 8 of goods limited relevance and is likely to confuse the jury. 9 Plaintiff does not oppose excluding 10 Exclude evidence of evidence of discovery disputes. Defendants’ alleged 11 D4 failure to produce GRANT Plaintiff’s only example of “missing” documents is the VDR, which the Court documents 12 addressed in Plaintiff’s MIL No. 4. 13 Evidence of Defendant Hershey’s financial statements or specific worth is 14 Exclude evidence of not relevant. This does not preclude 15 D5A Defen fid na an nt cs i’ a o lsv erall GRANT Plaintiff from making general references to Defendant Hershey being a large 16 company with resources. 17 Evidence goes to Plaintiff’s defense Exclude evidence of against Defendant Hershey’s affirmative 18 D5B Plaintiff’s life stories DENY defense of fraud in obtaining the 19 trademark application. 20 It is unclear Plaintiff is seeking statutory damages or whether disgorged profits 21 Exclude evidence of GRANT IN may be trebled. Corrective advertising D6 abandoned damages PART, DENY may be calculated as a percentage of the 22 theories IN PART advertising amount spent infringing on a 23 plaintiff’s mark. 24 Due diligence is not relevant in this case Exclude evidence of because there was no registered 25 D7 due diligence GRANT trademark at the time due diligence would have been conducted. 26 Exclude evidence of The licensing agreements and 27 D8 Plaintiff’s licensing DENY negotiations go to strength of the mark, negotiations their strength rather than their relevance. 1 It appears evidence of preliminary 2 communications was disclosed prior to the fact discovery cutoff, and the failure 3 to disclose the agreements until after the fact discovery cutoff is justified by the 4 fact that they did not exist until July 2022. 5 6 Exclude evidence of Evidence that Defendants asserted D9 Defendants’ assertion GRANT privilege is not admissible. 7 of privilege 8 The advocate-witness rule prohibits Exclude evidence of Attorney Indrajana from appearing as 9 advice of counsel GRANT IN both a witness and attorney in this case, D10 contained in the PART, DENY but does not prohibit Mr. Resnikoff 10 declaration of IN PART from testifying about the advice he was Attorney Indrajana 11 given by Attorney Indrajana. 13 A. Plaintiff’s Objections 14 With respect to trial exhibits, Plaintiff objects to: (1) any exhibits that would be precluded 15 as a result of the pending motions in limine, (2) exhibits that were not previously produced in 16 discovery, and (3) exhibits related to its witness objections. (Pl.’s Obj. at 1, Dkt. No. 194.) 17 Plaintiff does not identify any of these exhibits, so the objections are overruled without prejudice. 18 As to witnesses, Plaintiff objects to Defendants’ fourteen proposed witnesses who own 19 companies that use the term “tough cookie.” (Pl.’s Obj.’s at 1.) While the Court agrees that the 20 use of “Tough Cookie” or similar marks may be relevant to the strength of the mark, the Court 21 does not intend to allow the introduction of fourteen witnesses to testify about their use of a 22 similar mark. M2 Software, Inc. v. Madacy Entm’t, 421 F.3d 1073, 1088 (9th Cir. 2005) (“Use of 23 similar marks by third-party companies in the relevant industry weakens the mark at issue.”). 24 Defendants shall be prepared to explain why witness testimony is necessary, as opposed to less 25 time-consuming methods. See also id. at 1087-88 (noting that the district court permitted the 26 introduction of “limited evidence of existing third-party marks in the relevant field”) (emphasis 27 added). 1 B. Defendants’ Objections2 2 3 Witness/Evidence Ruling Reason/Explanation 4 Ms. Resnikoff was not disclosed as a witness. 5 Elannah Resnikoff SUSTAIN To the extent Plaintiff intends to call Ms. Resnikoff for “impeachment purposes,” it is 6 unclear what evidence she could impeach. 7 Ms. Scott was not disclosed as a witness. To the extent Plaintiff intends to call Ms. Scott for 8 Renae Scott SUSTAIN “impeachment purposes,” it is unclear what evidence she could impeach. 9 10 Mr. Tarabichi was not disclosed as a witness. It is unclear what relevant testimony could be Bruno Tarabichi SUSTAIN 11 provided by Mr. Tarabichi as he was not the attorney on the relevant trademark application. 12 Ms. Schlumpf may testify as to matters in her 13 Amanda Schlumpf OVERRULE expert report. 14 Exhibit 1 (Tough Cookie There is a factual dispute as to whether the OVERRULE 15 Trademark) Tough Cookie registration is valid. 16 Exhibits 2-6 (Plaintiff’s Plaintiff failed to produce during discovery, and Other Trademark SUSTAIN the existence of other valid trademarks is 17 Registrations) irrelevant. 18 Exhibits 17, 187-94 19 (Defendants’ Sustained to the extent the exhibits were not Interrogatory SUSTAIN disclosed as part of Plaintiff’s discovery 20 Responses, Videos of excerpts. Deposition Testimony) 21 Exhibits 42, 96, 97, 98 Irrelevant and prejudicial under Rule 403. (See (Privilege Log) Defs.’ MIL 9.) 23 Exhibit 76 (Article re Irrelevant and inadmissible hearsay. (See Defs.’ 24 Hershey’s Litigation SUSTAIN MIL 2.) History) 25 Exhibit 90 (E-Mail SUSTAIN Irrelevant. 26 Exchange Between 27 Counsel) 1 2 “[A]n expert’s report is not admissible by the 3 proponent of the evidence, but the witness may testify about the basis for his or her opinions, 4 and on cross-examination any of the material upon which the opinions were based may be 5 admitted for impeachment purposes.” Log Exhibits 93-95, 99, 104 SUSTAIN Cabin Republicans v. United States, No. CV 04- 6 (Expert Reports) 08425-VAP (Ex), 2010 U.S. Dist. LEXIS 7 148637, at *4 (C.D. Cal. July 1, 2010). Further, “[g]enerally, expert reports are inadmissible 8 hearsay,” and Plaintiffs identify no hearsay exception. Salgado v. Iqvia, Inc., 459 F. Supp. 9 3d 1318, 1327 (S.D. Cal. 2020). 10 Exhibit 111 (Plaintiff’s 11 Request to Amend TOUGH COOKIE SUSTAIN Irrelevant. (See Defs.’ MIL 3.) 12 Trademark Registration) 13 Exhibit 112 (December E-mails were not produced during discovery, 14 2020 E-mails re Counter SUSTAIN even though it went to Plaintiff’s damages. 15 SEO Campaign) (Fed. R. Civ. P. 37(c)(1).) 16 Exhibit 114 (April 27, E-mails were produced during discovery. (See 2022 E-mail re Potential OVERRULE Defendants’ MIL 6.) 17 Licensing) 18 Exhibit 124 (E-mails re SUSTAIN Irrelevant. (See Pl.’s MIL 4; Defs.’ MIL 9.) Virtual Data Room) 19 20 Exhibits 135, 136, 139, While not produced in discovery, it appears 140 (Documents re “One Gail Dosik’s former trademark was not at issue OVERRULE 21 Tough Cookie” Business until the motion for summary judgment. It is and Trademark) unclear what harm Defendants will suffer. 22 Exhibits 137, 138 23 Lawsuits filed by Ms. Dosik (who is not a party (Lawsuits filed by One SUSTAIN to this case) are irrelevant. Tough Cookie) 24 25 Exhibits 141, 157, 171 (Current Screenshots of SUSTAIN Unopposed and irrelevant. 26 Plaintiff’s Website, Sale Sheet and Facebook) 27 2022 E-mails re 1 Potential Licensing) 2 Exhibits 158, 159, 160, 3 161, 162, 163, 164, 165, 166, 167, 168, 169, 170 SUSTAIN Unopposed and irrelevant. 4 (Plaintiff’s Prior Facebook Posts) 5 Exhibits 172, 173, 174, 6 175, 176, 177, 178, 179, 7 180, 181, 182, 183 (September 2022 8 Screenshots of ONE SUSTAIN Unopposed and irrelevant. Brands’s Product Pages 9 from ONE Brands website, Amazon, 10 Target, and Walmart, 11 etc. ) 12 Exhibits 184, 185, 186 (Video Reviews of SUSTAIN Unopposed and irrelevant. 13 Plaintiff’s Product) 14 15 C. Discovery Excerpts 16 Defendants also filed objections to Plaintiff’s discovery excerpts. (Dkt. No. 197.) Plaintiff 17 did not file a response. Accordingly, the Court SUSTAINS the objections as unopposed. 19 The Court currently issues an electronic questionnaire, which includes standard juror 20 questions (Attachment A) and up to ten additional case specific questions. The additional 21 questions cannot have subparts or be formatted with an “if yes, . . . .” section. Accordingly, the 22 parties should review the standard juror questions and jointly propose ten case specific questions 23 by October 27, 2022. 24 With respect to the parties’ jointly submitted questions, the Court does not intend to re-ask 25 questions that potential jurors would already have asked in the questionnaire. This does not 26 preclude following up on particular answers. To ensure that voir dire does not take an excessive 27 amount of time, the parties should meet and confer as to which questions they believe most 2 The parties did not file a joint set of jury instructions. Accordingly, the Court ORDERS 3 the parties to file a single set of jury instructions by November 2, 2022, which shall be organized 4 in the order the parties propose they be given. The parties shall meet and confer to resolve their 5 objections to the extent practicable; there is no reason why the parties should be objecting to every 6 single proposed instruction. Each jury instruction shall be typed in full on a separate page and 7 provided in the format below: 8 INSTRUCTION NO. #: 9 Title of Jury Instruction 10 Text of Jury Instruction 11 12 Authority/Source: If modifications are being made to the model rules, the party shall 13 explain each proposed modification other than case-identifying information (i.e., the name of the 14 parties, the mark at issue, etc.). 15 Submitting Party: 16 Objections (if any): The objecting party must explain with specific detail why the proposed 17 jury instruction is inadequate. 18 19 If the parties have competing instructions, the parties shall so indicate as currently, the 20 Court is unable to determine which instructions the parties believe are duplicative. 21 To assist with the parties’ meet and confer, the Court provides the following guidance on 22 the parties’ objections. 23 A. Plaintiff’s Objections 24 i. Instruction Nos. 1 (Preponderance of the Evidence) and 2 (Clear and 25 Convincing Evidence) 26 Plaintiff objects to these instructions because Plaintiff asserts that it will “cause confusion 27 about what burden is applicable for which claims and defenses.” (Pl.’s Obj. re Jury Instr. at 1.) 1 the instructions on the specific claims will specify which standard applies. 2 ii. Instruction Nos. 3 (Definition and Function of a Trademark) and 4 (How a 3 Trademark is Obtained) 4 Plaintiff objects to Defendants’ modification of “mark” to “trademark.” (Pl.’s Obj. re Jury 5 Instr. at 1.) Defendants agree to use “mark,” as well as in the other instructions to which Plaintiffs 6 object to this modification. (Defs.’ Resp. to Pl.’s Obj. re Jury Instr. at 2.) This highlights the 7 importance of meeting and conferring before presenting unnecessary objections and disputes to 8 the Court. The parties should not be wasting the Court’s limited judicial resources by presenting 9 disputes that they could have resolved on their own. 10 iii. Instruction No. 5 (Likelihood of Confusion) 11 Plaintiff objects to Defendants specifying the trademark at issue and personality tag in the 12 jury instruction (i.e., replacing “plaintiff’s mark” with “TOUGH COOKIE trademark” and 13 replacing “defendant’s use of the mark” with “ONE Brand and Hershey’s use of the Tough 14 Cookies Only personality tag”). (Pl.’s Obj. re Jury Instr. at 1-2.) The Court is unclear why this 15 would cause jurors to inappropriately focus on the tagline. Likewise Plaintiff objects to referring 16 to both ONE Brands and Hershey because this may result in a jury believing Plaintiff has to prove 17 that both ONE Brands and Hershey infringed, rather than either. This appears to be a stretch. 18 As to Plaintiff’s objection as to Defendants’ use of “prove” rather than “demonstrate,” 19 Defendants agree to use “demonstrate.” (Defs.’ Resp. to Pl.’s Obj. re Jury Instr. at 2.) 20 iv. Instruction No. 6 (Trademark Liability) 21 Plaintiff objects to Defendants’ modification of the model jury instruction to exclude as a 22 relevant fact of liability: “infringing plaintiff’s trade name, by using similar corporate, business or 23 professional names in a manner likely to cause confusion about the source of products in the 24 minds of consumers.” (Pl.’s Obj. re Jury Instr. at 2.) The instant case, however, does not involve 25 Defendants’ use of similar corporate, business, or professional names. The alleged infringement is 26 from Defendants’ tagline. 27 v. Instruction Nos. 8, 9, 10 (Infringement re Unregistered Trademarks) 1 Defendants’ summary judgment motion. 2 vi. Instruction No. 11 (Presumed Validity and Ownership – Registered 3 Trademark) 4 Plaintiff contends that if a jury finds that the trademark was fraudulently obtained, the 5 result is that the trademark then becomes contestable and that Defendants must show the 6 trademark was invalid. (Pl.’s Obj. re Jury Instr. at 4.) As Defendants point out, this jury 7 instruction closely tracks the Ninth Circuit’s model jury instruction. (Defs.’ Resp. to Pl.’s Obj. re 8 Jury Instr. at 5.) The parties should meet and confer as to whether separate instructions are 9 warranted regarding how to prove a trademark is invalid if the registration is no longer conclusive 10 (i.e., Pl.’s Proposed Instruction Nos. 9, 13). 11 vii. Instruction No. 12 (Likelihood of Confusion – Factors) 12 Plaintiff objects that Defendants list “irrelevant factors,” but does not identify which 13 factors are irrelevant. (Pl.’s Obj. re Jury Instr. at 5.) The factors listed are the Sleekcraft factors. 14 The Court is unclear why any of these factors are irrelevant, particularly when Plaintiff proposes 15 the same exact factors in its own jury instructions. (See Pl.’s Proposed Instruction No. 14.) 16 viii. Instruction No. 13 (Abandonment) 17 Plaintiff objects that the instruction is misleading because the model instruction “do[es] not 18 provide the nuance and clarity provided in the comments.” (Pl.’s Obj. re Jury Instr. at 5.) The 19 parties should meet and confer on this issue, but the Court is not inclined to find that the model 20 jury instruction is itself “misleading.” 21 ix. Instruction No. 14 (Fraud) 22 Plaintiff objects that the instruction misstates the elements of fraud. (Pl.’s Obj. re Jury 23 Instr. at 5.) The jury instruction appears to closely track Ninth Circuit case law regarding the 24 elements of fraud, but the parties should meet and confer as to whether any further expansion is 25 required, e.g., what constitutes a material statement. 26 x. Instruction No. 15 (Disgorgement of Profits) 27 Plaintiff objects that this instruction fails to cite to model instruction 15.29, which concerns 1 damages, this does not explain why Instruction No. 15 (which concerns disgorgement of profits) 2 must also refer to statutory damages. Rather, it appears that a separate instruction on statutory 3 damages would be warranted. 4 B. Defendants’ Objections 5 i. Instruction No. 9 (Preliminary Instructions – Trademark) 6 First, Defendants object to this instruction regarding the effects of a valid trademark. 7 (Defs.’ Obj. re Jury Instr. at 4.) Defendants contend that they intend to rebut the presumption of 8 validity and ownership, such that the language regarding the ability to overcome the presumption 9 should be maintained. While Plaintiff states that overcoming the presumption is discussed in 10 Instruction No. 13, Plaintiff does not explain why the removal of this language in the instant 11 instruction is necessary. (Pl.’s Resp. to Defs.’ Obj. re Jury Instr. at 1.) 12 Second, Defendants challenge the language explaining the preponderance of the evidence 13 standard. (Defs.’ Obj. re Jury Instr. at 4.) As the Court intends to issue separate jury instructions 14 on the different standards of proof, this language is unnecessary. 15 Finally, the parties should meet and confer as to whether separate instructions for each 16 subpart may be easier for a jury to review. 17 ii. Instruction No. 10 (Trademark Definition) 18 Defendants object to the inclusion of the effect of trademark registration. (Defs.’ Obj. re 19 Jury Instr. at 5.) The parties should meet and confer as to whether this inclusion is necessary 20 given other instructions concerning that matter (e.g., Pl.’s Proposed Instruction No. 13; Defs.’ 21 Proposed Instruction No. 11.) 22 iii. Instruction Nos. 11 (Trademark Liability) and 16 (False Designation of 23 Origin) 24 Defendants object to these instructions to the extent they concern false designation of 25 origin. Defendants argue that Plaintiff did not assert a false designation of origin claim, but 26 Plaintiff’s complaint states that Defendants’ use of the Tough Cookies Only personality tag creates 27 confusion “as to the origin, sponsorship, or approval of the parties’ goods and/or services.” 1 separate cause of action for false designation is required, particularly when Plaintiff alleged that 2 Defendants’ use of the mark “creat[es] the false and misleading impression that the Infringing 3 Product is associated or connected with the TOUGH COOKIE® mark and TCD.” (Compl. ¶ 51.) 4 “Courts have recognized that a false designation and false association claim are essentially 5 synonymous.” Zamfir v. Casperlabs, LLC, 528 F. Supp. 3d 1136, 1143 n.5 (S.D. Cal. 2021). 6 iv. Instruction No. 14 (Likelihood of Confusion) 7 Defendants object to Plaintiff’s proposed addition to the jury instruction’s description of 8 “Consumer’s Degree of Care,” to include information about less sophisticated buyers and cheaper 9 goods. (Defs.’ Obj. re Jury Instr. at 5.) The Court finds that this addition to the model jury 10 instruction seems inappropriate, particularly when the model jury instruction already discusses 11 sophistication and cost of the goods. 12 v. Instruction No. 15 (Trademark Infringement – Strength of Trademark) 13 First, Defendants object to Plaintiff’s language stating that the TOUGH COOKIE 14 trademark is a federally registered trademark. (Defs.’ Obj. re Jury Instr. at 5.) The parties should 15 meet and confer as to this issue, given that the Court intends to deny Defendants’ summary 16 judgment motion. 17 Second, Defendants challenge the portion or the jury instruction that states: “TCD 18 contends that Hershey’s and ONE BRANDS’ use of the phrase ‘TOUGH COOKIES ONLY’ on 19 ONE Chocolate Chip Cookie Dough Flavored Protein Bar’s packaging and related marketing and 20 advertising infringes TCD’s trademark because it is likely to cause confusion.” (Defs.’ Obj. re 21 Jury Instr. at 6.) Defendants contend that this is inappropriate because Plaintiff has no survey 22 evidence that Defendants’ packaging, marketing, or advertising caused confusion. (Id.) This, 23 however, seems a straightforward description of Plaintiff’s claim; it does not suggest Plaintiff has 24 (or can) proven its claim. 25 Finally, Defendants argue that Plaintiff removed language from the model jury instruction 26 about the relative weakness of suggestive marks. It is unclear why this removal is appropriate, and 27 Plaintiff does not explain. 1 vi. Instruction No. 18 (Willfulness) 2 Defendants object to an instruction on willfulness on the ground that there is no factual 3 support for willfulness. (Defs.’ Obj. re Jury Instr. at 2.) This appears to be an issue for trial; the 4 parties can revisit this issue towards the close of trial to determine if this issue is properly before 5 the jury. 6 vii. Instruction Nos. 19 (Notice), 20 (Actual Damages), 21 (Diminution in Value) 7 Defendants object to these instructions on the same grounds as Motion in Limine No. 6. 8 The parties should meet and confer on this, given the Court’s ruling. 10 Having reviewed the parties’ proposed verdict forms, the Court is inclined to use a 11 variation of the following questions from the parties’ proposals (in proposed order): 12 1. (Defs.’ Proposed Question No. 1) Has TCD proved by a preponderance of the evidence 13 that TOUGH COOKIE is a valid, protectable trademark that is used in commerce, 14 indicates the source of TCD’s goods, and distinguishes those goods from the goods of 15 others? 16 2. (Defs.’ Proposed Question No. 7) Has ONE Brands and Hershey proved by clear and 17 convincing evidence that TCD abandoned the TOUGH COOKIE trademark? 18 3. (Defs.’ Proposed Question No. 8) Has ONE Brands and Hershey proven by clear and 19 convincing evidence that TCD committed fraud in obtaining the TOUGH COOKIE 20 registration by knowingly making a materially false representation to the United States 21 Patent and Trademark Office (“USPTO”) at the time of its application with the intent 22 of deceiving the USPTO? 23 4. (Pl.’s Proposed Question No. 1) Did TCD prove by a preponderance of the evidence 24 that ONE Brands’ and Hershey’s use of “TOUGH COOKIES ONLY” to sell ONE 25 Chocolate Chip Cookie Dough Flavored Protein Bars infringed TCD’s TOUGH 26 COOKIE trademark? 27 5. (Pl.’s Proposed Question No. 2) Did TCD prove by a preponderance of the evidence 1 Chocolate Chip Cookie Dough Flavored Protein Bars was unlawful, unfair, or 2 fraudulent under California law? 3 6. (Pl.’s Proposed Damages Question) If you answered yes to Nos. 4 or 5, what is the 4 amount of TCD’s damages, if any? 5 7. (Def.’s Proposed Question No. 10) If you answered yes to Nos. 4 or 5, specify the 6 amount of ONE Brands’ and Hershey’s profits TCD has proven by preponderance of 7 the evidence were from the sale of ONE Brands’ Chocolate Chip Cookie Dough 8 Protein Bar and attributable to the use of the infringing phrase. 9 This is not the final proposed language; the Court will require the parties to meet and 10 confer and jointly prepare a final verdict form for the Court’s review by November 3, 2022. 11 Additionally, the Court notes that Plaintiff’s questions regarding punitive damages are 12 improper. The Ninth Circuit has found that “punitive damages are not available under the Lanham 13 Act.” Duncan v. Stuetzle, 76 F.3d 1480, 1490 (9th Cir. 1996). Likewise, the California Supreme 14 Court has made clear that California’s Unfair Competition Law does not permit recovery of 15 punitive damages. Clark v. Superior Court, 50 Cal. 4th 605, 610 (2010). In any case, Plaintiff did 16 not request punitive damages in its complaint. 18 The Court intends to impose time limits on each party at trial. Each party is therefore 19 DIRECTED to submit (1) the projected duration of the direct examination of each of its witnesses 20 listed in the Joint Pretrial Conference, Dkt. No. 151; (2) the anticipated duration of the cross- 21 examination of each of the other party's disclosed witnesses; and (3) the total number of hours 22 projected (i.e., the sum of categories (1) and (2)). These estimates should be realistic, not 23 padded. The parties should be prepared to discuss these estimates during the pretrial conference. 24 The Court may shorten the allotted time as it deems appropriate, particularly if the parties continue 25 to focus on collateral issues. 26 The parties should be prepared to discuss options for the public to stream or listen in on the 27 trial, such as by Zoom webinar or other means. The parties should also be prepared to discuss 1 courtroom technology, such as cameras, a projector screen, and a projector. The parties should 2 || also be prepared to come to the Court before the trial to test technology. 3 The parties should be prepared to discuss what procedures are necessary for handling 4 sealed information. The Court notes, however, that many of the proposed redactions are 5 || overbroad and unnecessary, and that the Court intends to deny a substantial portion of the pending 6 || motions to file under seal. 8 In light of the ongoing pandemic, the undersigned is committed to keeping the parties, 9 counsel, witnesses, and court staff as safe as possible. The parties should be prepared to discuss 10 || the ability to pivot to a hybrid Zoom trial should there be a positive COVID-19 case or exposure. 11 Currently, universal masking in the courthouse is no longer required, but the parties should 12 || be prepared to discuss other COVID-related issues, including the vaccination status of counsel, the 5 13 |] parties, and witnesses, and what other precautions may be taken to keep everyone safe. The Court 14 || is inclined to require those who are not fully vaccinated and have received at least one booster to 3 15 remain masked for the duration of the trial, but it is open to permitting those who show proof of 16 || full vaccination to forego masking unless either of the parties object. Notwithstanding, the Court 3 17 may impose a mask mandate on all present without regard to vaccination status should the number 18 of community cases rise or if there is a change in guidance from local public health agencies. 19 Finally, all persons entering the courthouse are required to review the Northern District’s 20 || “COVID-19 Pre-screening Questionnaire,” available online at Attps./Avww.cand.uscourts. gov/wp- 21 content/uploads/clerks-office/CAND-COVID-19-Pre-Screening-Questionnaire_8-2-2021.pdf. 22 || Anyone experiencing any symptoms, including fever or cold-like symptoms, is not permitted to 23 enter the courthouse. If this happens, the parties are directed to notify the courtroom deputy at 24 || kawcrd@cand.uscourts.gov. 26 Dated: October 25, 2022

28 United States Magistrate Judge