Judge Engelmayer issued an opinion yesterday resolving several motions in limine relating to an upcoming trial concerning the Beastie Boys’ suit accusing the makers of Monster Energy drinks of using Beastie Boys songs in promotional videos without authorization. Judge Engelmayer largely denied the Beastie Boys’ motion to exclude the testimony of Erich Joachimsthaler, a branding expert, who proposed to testify that the videos would not leave viewers with a lasting association between the Beastie Boys and Monster. He found that the testimony was “potentially relevant to the Beastie Boys’ actual damages” because “damages to the Beastie Boys would arguably be little, if any, if viewers would neither remember the Video nor retain from it an association between the Beastie Boys and Monster.” However, Judge Engelmayer was careful to limit the testimony to issues of damages, not liability:
Joachimsthaler’s “likelihood of association” testimony is subject to one legitimate pretrial challenge, in that, as formulated in his report, it might confuse or mislead the jury as to the standard for liability under the Lanham Act, which is “likelihood of confusion.” Monster appears to conflate Joachimsthaler’s concept of “likelihood of association” with the Lanham Act liability standard of “likelihood of confusion,” and depending on the manner of its presentation at trial, the Court has some concern that Joachimsthaler’s testimony could be mistakenly understood as reformulating the liability standard. In fact, the two concepts are logically distinct. “Confusion” refers to a viewer’s reaction upon seeing an advertisement, while “association” relates to the durability of that reaction. An advertisement can be confusing without being memorable; a defendant does not escape liability under the Lanham Act merely because his advertisement is not memorable.
Judge Engelmayer also excluded a portion of the proposed testimony that failed the “laugh test”:
Joachimsthaler also proposes to testify to the Video’s impact on and value to the Monster brand. This is plainly relevant to Monster’s profits, which in turn may be relevant to statutory damages . . . . [O]ne basis for Joachimsthaler’s testimony is plainly unreliable. Joachimsthaler states that he obtained expertise about consumer perceptions of Monster’s brand by “ask[ing] people in my office . . . [who] have an age range from 18 to 55 . . . to help me understand the Monster Energy brand.” This basis for an expert opinion is unreliable and blatantly non-rigorous. In non-legal terms, Joachimsthaler’s attempt to cite his co-workers’ perceptions of a client product as a basis for his expert opinion does not pass the laugh test.
Finally, Judge Engelmayer ruled that damages (as opposed to an injunction) are available under Lanham Act, 15 U.S.C. § 1125(a), only where there is actual confusion or a willful violation. He noted that there was a split in the District on this issue. Judges Marrero and Wood (and the Third Circuit) have concluded that 1999 amendment to the Lanham Act made damages available even absent a willful violation, but Judges Forrest, Castel, Pauley, Stein, Scheindlin, and Cote have come out the other way.