Medisim sued BestMed for patent and copyright infringement, unfair competition, false designation of origin, false advertising, deceptive acts and practices, unfair competition, and unjust enrichment. Basically, BestMed replaced Medisim as the supplier of house-branded digital thermometers to Rite Aid. I am ignoring the utility patent aspects of the case. This opinion dealt with motions to exclude various kinds of expert testimony, and the plaintiff’s consumer survey did not survive Daubert.
Warren Keegan, a professor of marketing with an extensive resume, conducted an internet survey in which each respondent (who’d been screened to be likely chain drugstore customers and users of digital thermometers) was shown a picture of a product and directed to “take as much time to look at [it] as you would if you were considering purchasing it.” The test cell saw pictures of Medisim and BestMed thermometers in Rite Aid packaging, while the control cell saw Medisim and a third-party brand digitally altered to look like it was in Rite Aid packaging.
Respondents were asked if they thought the two products were manufactured by the same company, or by different companies; then if they thought the two products were manufactured by companies that were affiliated, connected, or associated with one another. A yes on either was coded as likely confusion. Eighty-three percent of test cell respondents and 52% of control cell respondents showed likely confusion, for a net level of 31%.
Questions about survey reliability generally go to weight rather than admissibility, but surveys can be excluded entirely under Rule 702 when they’re invalid or unreliable, and/or under Rule 403 when they’re likely to be insufficiently probative, unfairly prejudicial, misleading, confusing, or a waste of time.
BestMed argued that Keegan used the wrong universe and an improper control product. In addition, BestMed argued that Keegan biased the respondent pool by telling them that “there is often a relationship between a retail store and its source manufacturers,” while Medisim argued that this instruction merely “correct[ed] for the possibility that some respondents might have been unaware of the potential relationship between the retailer and manufacturer.” The use of a control group is the “gold standard” for dealing with such pre-existing beliefs (or ignorance, I guess). “A carefully crafted instruction may have a similar effect, albeit in a more subjective way.” But where the instruction is given to the control and test cells, its effect will wash out if the control works appropriately, so the court wasn’t convinced that the instruction created improper bias.
The court agreed that the respondent universe was improper. Point-of-sale confusion should be examined by surveying potential purchasers. Screening questions that ensured that respondents were likely to shop at stores that sold the parties’ thermometers were not enough to ensure that they were likely purchasers. I have sympathy for Medisim’s argument that “a digital thermometer is not a major planned purchase ... for which a survey could easily locate individuals who are ‘in the market,’” so shoppers who were also users were a good proxy. But the court held that “a party may not simply excuse itself from surveying the relevant universe of respondents because it is difficult to assemble an appropriate sample of that population. In addition, repeat purchases of digital thermometers are relatively infrequent. (Which also seems to doom secondary meaning for the trade dress; who would ever learn which was which?) Thus, the logical assumption is that current/recent users of digital thermometers are unlikely to buy another within a reasonable timeframe. Without knowing when they bought their devices, there was no way to tell if they were similar to true potential purchasers. Keegan suggested that shopping at the relevant stores provided familiarity with the products, but such stores carry thousands of unrelated products. “Amidst this deluge, there is no basis to equate the knowledge of a person admittedly not shopping for a given product with that of a potential purchaser.” The respondent universe was a “crucial step” in a survey, because even if the proper questions are asked, the results are likely to be irrelevant when they’re asked of the wrong group.
In addition, the control design was flawed. BestMed identified two problems. First, the control didn’t really exist in the marketplace, and had few similarities to either party’s product. Second, because Keegan didn’t specify which features of the Medisim packaging he was testing (that is, what was protectable), it was impossible to tell what generated the reported confusion. A party can seek protection for a product’s overall look, but it still has to articulate which specific elements comprise its trade dress; this is necessary to avoid de facto protection for legally unprotectable styles, themes, or ideas. The court focused on the second problem: Keegan didn’t explain which elements of the packaging (or product) were protectable trade dress, and Medisim just said the control shared “certain characteristics” with the test product. The court found these failures “deeply troubling, and indicative of a serious flaw in the design of Keegan's survey. Furthermore, I am unable to determine whether Keegan's control was appropriate without understanding the scope of the claimed protection.”
Neither flaw would justify excluding the report on its own, but taken together, since each went to a fundamental element of the survey, the combined impact was “too significant to overlook under Daubert and Rule 702.”