clearline v. cooper b-line - jury instructions

7/28/2019 Clearline v. Cooper B-Line - Jury Instructions

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Case 4:11-cv-01420 Document 161-1 Filed in TXSD on 11/13/12 Page 2 of 62

UNITED STATES DISTRICT COURTSOUTHERN DISTRICT OF TEXASHOUSTON DIVISION

CLEARLINE TECHNOLOGIES LTD., * CIVIL ACTION*Plaintiff * NO. 4:11-cv-1420*versus **

COOPER B-LINE, INC., et al. * JURY REQUESTED*Defendants.

* * * * * * * * * * * * * * * * * * * * * *

JURY CHARGE

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GENERAL INSTRUCTIONS

IntroductionMembers ofthe Jury, you have heard the evidence in this case. I will now instruct you onthe law that you must apply. It is your duty to follow the law as I give it to you. On the otherhand, you, the jury, are the judges of the facts. Do not consider any statement that I have madein the course of trial or make in these instructions as an indication that I have any opinion aboutthe facts of this case.After I instruct you on the law, the attorneys will have an opportunity to make theirclosing arguments. Statements and arguments of the attorneys are not evidence and are notinstructions on the law. They are intended only to assist the jury in understanding the evidenceand the parties' contentions.Answer each question from the facts as you find them. Do not decide who you thinkshould win and then answer the questions accordingly. Do not let bias, prejudice, or sympathyplay any part in your deliberations. Your answers and your verdict must be unanimous.

Burden of ProofYou must answer all questions from a preponderance of the evidence. By this is meantthe greater weight and degree of credible evidence before you. In other words, a preponderance

of the evidence just means the amount of evidence that persuades you that a claim is more likelyso than not so. In determining whether any fact has been proved by a preponderance of theevidence in this case, you may, unless otherwise instructed, consider the testimony of allwitnesses, regardless of who may have called them, and all exhibits received in evidence,regardless ofwho may have produced them.Witness Testimony

In determining the weight to give to the testimony of a witness, you should ask yourselfwhether there was evidence tending to prove that the witness testified falsely concerning someimportant fact, or whether there was evidence that at some other time the witness said or didsomething, or failed to say or do something, that was different from the testimony the witnessgave before you during the trial.You should keep in mind, of course, that a simple mistake by a witness does notnecessarily mean that the witness was not telling the truth as he or she remembers it, becausepeople may forget some things or remember other things inaccurately. So, if a witness has madea misstatement, you need to consider whether that misstatement was an intentional falsehood orsimply an innocent lapse of memory; and the significance of that may depend on whether it hasto do with an important fact or with only an unimportant detail.

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EvidenceWhile you should consider only the evidence in this case, you are permitted to draw suchreasonable inferences from the testimony and exhibits as you feel are justified in the light ofcommon experience. In other words, you may make deductions and reach conclusions thatreason and common sense lead you to draw from the facts that have been established by thetestimony and evidence in the case.The testimony of a single witness may be sufficient to prove any fact, even if a greaternumber ofwitnesses may have testified to the contrary, if after considering all the other evidenceyou believe that single witness.There are two types of evidence that you may consider in properly finding the truth as tothe facts in the case. One is direct evidence - such as testimony of an eyewitness. The other isindirect or circumstantial evidence - the proof of a chain of circumstances that indicates theexistence or nonexistence of certain other facts. As a general rule, the law makes no distinctionbetween direct and circumstantial evidence, but simply requires that you find the facts from apreponderance of all the evidence, both direct and circumstantial.Expert WitnessesWhen knowledge of technical subject matter may be helpful to the jury, a person who hasspecial training or experience in that technical field- he is called an expert witness - is permittedto state his opinion on those technical matters. However, you are not required to accept thatopinion. As with any other witness, it is up to you to decide whether to rely upon it.In deciding whether to accept or rely upon the opinion of an expert witness, you mayconsider any bias of the witness, including any bias you may infer from evidence that the expertwitness has been or will be paid for reviewing the case and testifying, or from evidence that hetestifies regularly as an expert witness and his income from such testimony represents asignificant portion ofhis income.Deposition TestimonyDuring the course of trial, ce1iain testimony was presented to you through deposition. Adeposition is the sworn, recorded answers to questions asked a witness in advance of the trial.Under some circumstances, if a witness cannot be present to testify from the witness stand, thatwitness' testimony may be presented, under oath, in the form of a deposition. Some time beforethis trial, attorneys representing the parties in this case questioned this witness under oath. Acourt rep01ier was present and recorded the testimony. This deposition testimony is entitled tothe same consideration and is to be judged by you as to credibility and weighed and otherwiseconsidered by you insofar as possible in the same way as if the witness had been present and hadtestified from the witness stand in court.

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INSTRUCTION NO. 1: TRADE DRESS -PRELIMINARY INSTRUCTION"Trade dress" refers to the design or packaging of a product which serves to identify the

product's source.


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INSTRUCTION NO. 2: TRADE DRESS INFRINGMENT- FUNCTIONALITYYou must ascertain whether two features of the alleged trade dress are functional:,,che

yellow reflective stripe and the yellow on black color scheme. You must assess the functionalityof each feature. However, even if you find that the yellow stripe is functional, you maynonetheless find that the combination of functional features (the yellow stripe on the black color)is not functional.Under the traditional test for functionality, a product feature is functional where it isessential to the use or purpose of a product, or if it affects the cost or quality of the product. Afeature is essential to the use or purpose of a product if it serves any significant function otherthan to distinguish a finn's goods or identify their source.Ifyou find that the product feature is non-functional under the above test, you should also

consider whether it is functional under a second test. This secondary test for non-functionalityfocuses on whether the feature is a competitive necessity. In determining whether a feature is acompetitive necessity, you should consider whether the exclusive use of the product featurewould put competitors at a significant disadvantage not related to reputation

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INSTRUCTION NO. 3: TRADE DRESS INFRINGEMENT- SECONDARY MEANINGIn addition to proving that a product feature is nonfunctional, Clearline also must prove

that this feature had acquired a secondary meaning at the time any alleged infringement byCooper B-Line began. A product feature acquires secondary meaning when it has been used insuch a way that its primary significance in the minds of the public is not the product itself, butthe identification of the product with a single source, regardless of whether consumers know whoor what that source is. In order to find secondary meaning, you must find that Clearline hasestablished, by a preponderance of the evidence, that the public associated the features of theclaimed trade dress with a single source, at the time any alleged infringement by Cooper B-Linebegan.You should consider the following factors in determining whether the product feature hasacquired secondary meaning:(1) The length and manner ofuse of the trade dress;(2) The volume of sales;(3) The amount and manner of advertising;(4) The nature of use ofthe mark or trade dress in newspapers and magazines;(5) Consumer-survey evidence;(6) Direct consumer testimony; and .(7) The defendant's intent in copying the trade dress.

These factors in combination may show that the public considers a product feature to be anindicator of source even if each factor alone would not prove secondary meaning.

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INSTRUCTION NO. 4: TRADE DRESS INFRINGEMENT- LIKELIHOOD OF CONFUSIONIf you find that Clearline has a protectable trade dress, you must then consider whetherCooper E-Line has infringed that trade dress. You should consider whether infringementoccurred for each product feature you found protectable. To prove that the trade dress isinfringed, Clearline must prove that the use of its trade dress creates a likelihood of confusion asto the source, affiliation, or sponsorship of Cooper E-Line's product. Likelihood of confusionmeans more than a mere possibility; Clear ine must demonstrate a probability of confusion.In determining whether there is a likelihood of confusion, you should consider thefollowing factors:(1) The type of trade dress: The type of the mark allegedly infringed refers to thestrength of the mark. Generally, the stronger the mark, the greater the likelihood that consumerswill be confused by competing uses of the mark.(2) Similarity of the protectable trade dress as used on Clearline's C-PORT andCooper E-Line's DURA-ELOK.(3) The similarity of Clearline's C-PORT and Cooper E-Line's DURA-ELOKproducts: although you may consider overall similarity of the C-PORT and the DURA-ELOKwith respect to likelihood of confusion, you are not to consider any similarity between the overallproducts as evidence of protectability because Clearline's trade dress claim is limited only to thereflective yellow stripe and the yellow and black color scheme.(4) The identity of the retail outlets and purchasers: Similarities between thepurchasers of Clearline's and Cooper E-Line's goods increase the likelihood of confusion,mistake or deception.(5) The identity of the advertising media used: Any evidence that Cooper E-Lineused the same or similar advertising or marketing channels increases the likelihood of confusion.(6) Cooper E-Line's intent: If Clearline can show that Cooper E-Line usedClearline's trade dress with the intent to confuse that fact alone may be sufficient to justify afinding of a likelihood of confusion. However, the inquiry focuses on whether Cooper E-Linehad the intent of deriving benefit from the reputation or good will of Clemline. On the otherhand, if the defendant acted in good faith, then intent becomes a nonfactor in the likelihood-ofconfusion analysis. Intent to compete is not tantamount to intent to confuse.(7) Actual confusion: Evidence of actual confusion among purchasers is notnecessary to a finding of a likelihood of confusion, but it may be the best evidence of alikelihood of confusion.

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(8) The degree of care exercised by potential purchasers: Where items are relativelyinexpensive, a buyer may take less care in selecting the item, thereby increasing the risk ofconfusion.The weight to be afforded a given factor may differ from case to case. Similarly, theabsence or presence of any one factor is ordinarily not dispositive. A finding of likelihood ofconfusion need not be supported even by a majority of the factors.

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INSTRUCTION NO. 5: WILLFULNESS AS TO TRADE DRESS INFRINGEMENTIf you find that Cooper B-Line infringed Clearline's trade dress, you must considerwhether Cooper B-Line's conduct was willful. "Willful" means that Cooper B-Line actedvoluntarily and intentionally and with the intent to cause the likelihood of consumer confusion,to cause mistake, or to deceive.

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INSTRUCTION NO. 6: TRADEMARK INFRINGEMENT- PRELIMINARY INSTRUCTIONA "trademark" includes any word, name or symbol or combination thereof used by a

person to identify and distinguish his or her goods from those manufactured or sold by others andto indicate to the public the source of the goods, even if that source is unknown.Here, Clearline claims that Cooper B-Line infringed on a trademark by using Clearline'sregistered C-PORT trademark in meta-tags on the Cooper B-Line website after the businessrelationship between Cooper B-Line and Clearline came to an end. Meta-tags consist of wordsand phrases that are intended to describe the contents of a website. These descriptions areembedded within the website's computer code. Although websites do not display their metatags, Internet search engines utilize meta-tags in various ways, including ranking a webpage thatcontains the search terms within its meta-tags higher in the list of relevant results. Additionally,Clearline claims that Cooper B-Line used Clearline's mark in a tradeshow catalog.On Clearline's claim for trademark infringement, Clearline has the burden of proving bya preponderance of the evidence that Cooper B-Line used C-PORT without the consent ofClearline in a manner that was likely to cause confusion as to the sponsorship, affiliation orsource ofCooper B-Line's DURA-BLOK.

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INSTRUCTION NO.7: TRADEMARK INFRINGEMENT- LIKELIHOOD OF CONFUSIONYou should consider whether Cooper B-Line's use of the C-PORT mark in Cooper B

Line's meta-tags and Cooper B-Line's use of the C-PORT mark in a tradeshow catalog created alikelihood of confusion as to source, affiliation or sponsorship of the parties' products.Likelihood of confusion means more than a mere possibility; Clearline must demonstrate aprobability of confusion.In determining whether there is a likelihood of confusion, you should consider thefollowing factors:(1) The type of trademark: The type of the mark allegedly infringed refers to thestrength of the mark. Generally, the stronger the mark, the greater the likelihood that consumerswill be confused by competing uses of the mark.(2) Similarity of Clearline's C-PORT trademark and the mark allegedly used byCooper B-Line.(3) The similarity of Clearline's C-PORT and Cooper B-Line's DURA-BLOKproducts.(4) The identity of the retail outlets and purchasers: Similarities between thepurchasers of Clearline's and Cooper B-Line's goods increase the likelihood of confusion,mistake or deception.(5) The identity of the advertising media used: The greater the similarity in themanner of adve1iising, the greater the likelihood of confusion.( 6) Cooper B-Line's intent: If Clearline can show that Cooper B-Line usedClearline's trademark with the intent to confuse that fact alone may be sufficient to justify afinding of a likelihood of confusion. However, the inquiry focuses on whether Cooper B-Linehad the intent of deriving benefit from the reputation or good will of Clearline. On the otherhand, if the defendant acted in good faith, then intent becomes a nonfactor in the likelihood-ofconfusion analysis. Intent to compete is not tantamount to intent to confuse.(7) Actual confusion: Evidence of actual confusion among purchasers is notnecessary to a finding of a likelihood of confusion, but it may be the best evidence of alikelihood of confusion. Infringement may be based upon confusion that creates initial consumerinterest, even though no actual sale is finally completed as a result of the confusion.(8) The degree of care exercised by potential purchasers: Where items are relativelyinexpensive, a buyer may take less care in selecting the item, thereby increasing the risk ofconfusion.

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The weight to be afforded a given factor may differ from case to case. Similarly, theabsence or presence of any one factor is ordinarily not dispositive. A finding of likelihood ofconfusion need not be supported even by a majority of the factors.

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INSTRUCTION NO. 8: WILLFULNESS AS TO TRADEMARK INFRINGEMENTIf you find that Cooper B-Line infringed Clearline's trademark, you must consider

whether Cooper B-Line's conduct was willful. "Willful" means that Cooper B-Line actedvoluntarily and intentionally and with the intent to cause the likelihood of consumer confusion,to cause mistake or to deceive.

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INSTRUCTION NO. 9: DAMAGES- PRELIMINARY INSTRUCTIONIf you find that Cooper B-Line is liable for trade dress or trademark infringement, then

you should consider the amount of money to award to Clearline, if any. This may includedamages that Clearline sustained because of Cooper B-Line's infringement, and profits thatCooper B-Line made because of its infringement.Even though I am instructing you on Clearline's lost profits and an accounting of CooperB-Line's profits, this should not be taken to mean that I believe that Cooper B-Line is liable forthe claims brought or that such damages are appropriate. These are issues for you to resolveunder the instructions I have given you. I am instructing you on damages only so that you willhave guidance should you decide that Clearline is entitled to recover.

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INSTRUCTION NO. 10: DAMAGES- CLEARLINE'S LOST PROFITSIf you find that Cooper B-Line is liable for trade dress or trademark infringement, then

you should consider whether or not to award lost profits to Clearline.The purpose of compensatory damages is to make the party whole-that is, tocompensate the party for the damage it has suffered. You may award compensatory damagesonly for injuries that Clearline proves were proximately caused by Cooper E-Line'sinfringement. "Proximate cause" means a cause that was a substantial factor in bringing aboutan event, and without which cause such event would not have occurred. In order to be aproximate cause, the act or omission complained ofmust be such that a person using the degree

of care required of him would have foreseen that the event, or some similar event, mightreasonably result therefrom. There may be more than one proximate cause ofan event.

The damages that you award must be fair compensation for all ofClearline' s damages, nomore and no less. Compensatory damages are not allowed as a punishment and cannot beimposed or increased to penalize a pmiy. You should not award compensatory damages forspeculative injuries, but only for those injuries which the party has actually suffered or isreasonably likely to suffer in the future. If you decide to award compensatory damages, youshould be guided by dispassionate common sense. Computing damages may be difficult, but youmust not let that difficulty lead you to engage in arbitrary guesswork. On the other hand, the lawdoes not require that a party prove the amount of its losses with mathematical precision, but onlywith as much definiteness and accuracy as the circumstances permit.You must use sound discretion in fixing an award of damages, drawing reasonable

inferences where you find them appropriate from the facts and circumstances in evidence. Onceagain, the fact that I am instructing you as to the proper measure of damages should not beconstrued as intimating any view of the Court as to which party is entitled to prevail in this case.Instructions as to the measure of damages are given for your guidance in the event you find theevidence on liability in favor of Clearline. Lost profits must be determined with reasonablecertainty, and Clearline's proof of its lost profits, if any, must be non-speculative andcorroborated.

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INSTRUCTION NO. 11: DAMAGES- COOPER B-LINE'S PROFITSIn addition to compensatory damages for its own lost profits, the law permits Clearline to

seek any profits earned by Cooper B-Line that are attributable to the infringement. However, anaward ofCooper B-Line's profits is not automatic, and should be awarded only to the extent thatyou find it is fair to do so. You may not include in any award of Cooper B-Line's profits anyamount that you took into account in determining Clearline's lost profits. An award of CooperB-Line's profits, if any, is meant to be compensation and not a penalty.To determine whether to award Clearline Cooper B-Line's profits, you should considerthe following factors:1. whether Cooper B-Line had the intent to confuse or deceive;2. whether sales have been diverted from Clearline;3. the adequacy ofother remedies;4. any unreasonable delay by Clearline in asserting its rights;5. the public interest in making the conduct unprofitable;6. whether this is a case of "palming off." "Palming off' occurs when a party sellsits goods under the name of a competitor.Although willful infringement is an. important factor which must be considered whendetermining whether an accounting of profits is appropriate, you need not find that Cooper B- Line willfully infringed Clearline's trade mark or trade dress.If you decide an award of Cooper B-Line's profits is warranted, profit is determined by

deducting all allowable expenses from gross revenue. Gross revenue is all of Cooper B-Line'sreceipts from using Clearline's trade dress in the sale of its infringing rooftop support products.Clearline has the burden of proving Cooper B-Line's gross revenue by a preponderance of theevidence. Cooper B-Line has the burden of proving the expenses by a preponderance of theevidence. Cooper B-Line also has the burden of proving sales, if any, that were not attributableto the infringement.

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INSTRUCTION NO. 12: INSTRUCTIONS FOR DELIBERATIONThese instructions are given to you as a whole, and you are not to single out oneinstruction alone as stating the law, but must consider the instructions as a whole. You haveheard all of the evidence in the case and you have heard the argument of counsel.You must perfmm your duties as jurors without bias or prejudice as to any party. The lawdoes not permit you to be controlled by sympathy, prejudice, or public opinion. All partiesexpect that you will carefully and impartially consider all the evidence, follow the law as it isnow being given to you, and reach a just verdict, regardless of the consequences.It is your sworn duty as jurors to discuss the case with one another in an effort to reachagreement if you can do so. Each of you must decide the case for yourself, but only after fullconsideration of the evidence with the other members of the jury. While you are discussing thecase, do not hesitate to re-examine your own opinion and change your mind if you becomeconvinced that you are wrong. However, do not give up your honest beliefs solely because theothers think differently or merely to finish the case.Remember that in a very real way you are the judges-judges of the facts. Your onlyinterest is to seek the truth from the evidence in the case. You should consider and decide thiscase as a dispute between persons of equal standing in the community, of equal worth, andholding the same or similar stations in life. A corporation is entitled to the same fair trial as aprivate individual. All persons, including corporations and other organizations, stand equalbefore the law and are to be treated as equals.When you retire to the jury room to deliberate on your verdict," you may take this chargewith you as well as exhibits which the Court has admitted into evidence. Select your Forepersonand conduct your deliberations. If you recess during your deliberations, follow all of theinstructions that the Court has given you regarding your conduct during the trial. After you havereached your unanimous verdict, your Foreperson is to fill in the form with your answers to thequestions. Do not reveal your answers until such time as you are discharged, unless otherwisedirected by me. You must never disclose to anyone, not even to me, your numerical division onany question.Any notes that you have taken during this trial are only aids to memory. If your memoryshould differ from your notes, then you should rely on your memory and not on the notes. The

notes are not evidence. A juror who has not taken notes should rely on his or her independentrecollection of the evidence and should not be unduly influenced by the notes of other jurors.Notes are not entitled to any greater weight than the recollection or impression of each jurorabout the testimony.If you want to communicate with me at any time, please give a written message orquestion to the Court Security Officer, who will bring it to me. I will then respond as promptly aspossible either in writing or by having you brought into the courtroom so that I can address you

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orally. I will always first disclose to the attorneys your question and my response before I answeryour question.After you have reached a verdict, you are not required to talk with anyone about the caseunless the Court orders otherwise. You may now retire to the jury room to deliberate.

SIGNED in Houston, Texas on this the 4th day of October, 2012.

KEITH P. ELLISONU.S. DISTRICT JUDGE

clearline v. cooper b-line - jury instructions

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