# Malletier v. Dooney & Bourke, Inc.

> District Court, S.D. New York · December 13, 2007 · 525 F. Supp. 2d 558

URL: https://www.frixlaw.com/law-library/cases/1692273

## Case

- **Full name:** Louis Vuitton MALLETIER, Plaintiff, v. DOONEY & BOURKE, INC., Defendant
- **Court:** District Court, S.D. New York
- **Decided:** December 13, 2007
- **Citations:** 525 F. Supp. 2d 558; 2007 U.S. Dist. LEXIS 91934; 2007 WL 4530868
- **Precedential status:** Published
- **Opinion:** Opinion by Scheindlin
- **Judges:** Shira A. Scheindlin
- **Cited by:** 111 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/1692273

## How later opinions describe it (automated extraction)

- finding that where an expert’s “asserted ability was based on studying statistics in graduate school 30 years earlier, ... no good faith argument can be made that 30 year-old course study is a sufficient qualification to testify as a statistician” (citing Andrews v. Metro N. C…
- noting that plaintiff has made no effort to "connect a loss of sales in the United States to a loss of reputation on the part of Louis Vuitton and [it] cites no case law to support the proposition that a plaintiff's loss of sales coincident with a defendant’s achieving ‘critic…
- noting that in Burlington Coat Factory, Louis Vuitton claimed trade dress infringement in addition to trademark infringement, and the “calls to mind” language from that opinion refers to the "look” or trade dress of a product, which the parties agree is not at issue in the ins…
- discussing that sample size is one factor affecting reliability and probative value and “is not dispositive on its own”

## Opinion text

OPINION & ORDER
SHIRA A. SCHEINDLIN, District Judge.
I. INTRODUCTION
District courts are tasked with the “spe
*562
cial obligation”
1
of serving as the “gatekeepers” of expert evidence, and must therefore decide which experts may testify and present evidence before the jury.
2
Recognizing that a purported expert’s opinion often carries special weight with the jury even when unwarranted,
3
the Supreme Court has directed district courts .to “ensure that any and all scientific testimony or evidence admitted is not only relevant, but reliable.”
4
Courts are given “broad latitude” in deciding “how to determine reliability” and in making the “ultimate reliability determination”
5
In doing so,, however, courts are reminded that the Federal Rules of Evidence favor the admissibility of expert testimony,
6
and their “role as gatekeeper is not intended to serve as a replacement for the adversary system.”
7
Indeed, “[w]here the expert’s conclusion is drawn from a reliable methodology ... the correctness of that conclusion is still an issue for the finder of fact.”
8
As a result, excluding expert testimony is the exception rather than the rule,
9
particularly since “[vigorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof’ can serve as the means to “attack[ ] shaky but admissible evidence.”
10
In cases arising under the Lanham Act, the Court’s gatekeeper function is of heightened importance because the “pivotal legal question ... virtually demands [expert] survey research ... on [issues such as] consumer perception ....”
11
Indeed, expert survey evidence is used more frequently in trademark law cases than in other areas of law,
12
and courts have been advised to carefully scrutinize survey evidence particularly where a jury rather than a bench trial is contemplated.
13
While errors in a survey’s methodology usually go to the weight accorded to the
*563
conclusions rather than its admissibility,
14
the Second Circuit has made clear that this is “subject, of course, to Rule 403’s more general prohibition against evidence that is less probative than prejudicial or confusing.”
15
Although it is the exception, “there will be occasions when the proffered survey is so flawed as to be completely unhelpful to the trier of fact ....”
16
and “its probative value is substantially outweighed by its prejudicial effect.”
17
As evident from the Report and Recommendation (“R
&
R”) issued by Professor Daniel J. Capra of Fordham University School of Law and Professor Barton Beebe of Cardozo School of Law (collectively, the “Special Masters”), much of the expert testimony proffered by the parties here warrants exclusion. The Special Masters acknowledged that their recommendation to exclude the majority of the expert testimony may seem “drastic.”
18
They justify their conclusions, inter alia, on the ground that while methodological flaws in a survey generally raise questions of weight rather than admissibility, “questions of weight, when sufficiently accumulated, become so serious as to require exclusion.”
19
The Special Masters further noted that the majority of the testimony presented “easy cases” for exclusion, but nevertheless, they aimed to “give each submission a fair reading with an evenhanded application of the law.”
20
Although the parties might regard the R & R to be severe in the scope of its recommended exclusions, the Second Circuit Court of Appeals and the lower courts within this Circuit provide support for the exclusion of survey evidence primarily under Rule 403 but also under Rule 702 where flaws are deemed to cumulatively undermine its relevance and reliability.
21
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Additionally, other courts considering the admissibility of expert survey evidence in trademark suits have reached similar conclusions.
22
Upon review of the R & R, it is beyond cavil that the Special Masters discharged their duty with careful consideration and thoughtful analysis of the parties’ opposing positions, the factual details of the expert reports and testimony at issue, the relevant evidentiary rules, and the case law. The Special Masters considered each expert’s survey on its own terms and while the number of exclusions may seem large, that is more properly attributed to the number of experts proffered by the parties than to over-exclusion by the Special Masters. Subject only to the modifications set forth in this Opinion, the Special Masters’ R & R is adopted and will be published as the Memorandum and Order of the Court.
II. BACKGROUND
23
On March 16, 2007, defendant Dooney & Burke, Inc. (“Dooney & Burke”) filed motions in limine to exclude the testimony and reports of plaintiff Louis Vuitton Mal-letier’s (“Louis Vuitton” or “LV”) experts: Drs. Richard A. Holub, Eugene Ericksen, Jacob Jacoby, and Mr. West Anson. On March 19, 2007, Louis Vuitton filed motions in limine to exclude the testimony and reports of Dooney & Burke’s experts: Drs. Robert N. Reitter and Bradford Cornell.
In light of the volume of the submissions on these motions, the Court appointed the Special Masters pursuant to Federal Rule of Civil Procedure 53(a)(1)(A) and (a)(1)(C) and by Order dated May 18, 2007 (the “May 18 Order”).
24
Pursuant to the May 18 Order, the Special Masters were directed to submit to the Court a collaborative R
&
R on the pending motions no later than thirty days from May 18, 2007.
25
On June 15, 2007, the Special Masters issued an extensive R & R spanning one hundred and ninety-two pages.
On July 5, 2007, Louis Vuitton objected to the R & R on the ground that the Special Masters had erred in excluding in their entirety the testimony and reports of its three survey experts.
26
Louis Vuitton also objected to the exclusion, in part, of the testimony and report of its damages expert. Dooney & Bourke moved to adopt
*565
the R
&
R as to five of the six experts at issue, and conditionally objected to the exclusion of its survey expert’s report and testimony on the level of consumer confusion in late 2006, as well as the exclusion of his trademark dilution study.
27
III. APPLICABLE LAW
A. Federal Rule of Civil Procedure 53
Pursuant to Rule 53(g)(1), “in acting on a [special] master’s order, the court must afford an opportunity [for the parties] to be heard and may receive evidence, and may: adopt or affirm; modify; wholly or partly reject or reverse; or resubmit to the master with instructions.”
28
As set forth in the May 18 Order and consistent with Rule 53(g)(3)-(4), the Court reviews de novo all objections to conclusions of law made or recommended by the Special Masters.
29
All findings of fact made by the Special Masters are reviewed by the Court for clear error.
30
Any rulings made by the Special Masters on procedural matters are to be set aside only if the Court finds an abuse of discretion.
31
B. Admission of Expert Testimony
The proponent of expert evidence must establish admissibility under Rule 104(a) of the Federal Rules of Evidence by a “preponderance of proof.”
32
Rule 702 of the Federal Rules of Evidence states the following requirements for the admission of expert testimony:
If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case.
33
Under Rule 702 and
Daubert,
the trial judge must determine whether the proposed testimony “both rests on a reliable foundation and is relevant to the task at hand.”
34
A district court must act as “a gatekeeper to exclude invalid and unreliable expert testimony.”
35
In doing so, the court’s focus must be on the principles and methodologies underlying the expert’s conclusions, rather than on the conclusions
*566
themselves.
36
Expert testimony may not usurp the role of the court in determining the applicable law.
37
Although an expert “may opine on an issue of fact,” an expert “may not give testimony stating ultimate legal conclusions based on those facts,”
38
Expert testimony is inadmissible when it addresses “lay matters which [the trier of fact] is capable of understanding and deciding without the expert’s help.”
39
In addition, Rule 403 states that relevant evidence “may be excluded if its probative value is substantially outweighed by the danger of unfair prejudice, confusion of the issues, or misleading the jury.”
40
“Expert evidence can be both powerful and quite misleading because of the difficulty in evaluating it. Because of this risk, the judge in weighing possible prejudice against probative force under Rule 403 ... exercises more control over experts than over lay witnesses.”
41
IV. DISCUSSION
As an initial matter, I address Louis Vuitton’s argument that Special Master Beebe’s previously undisclosed interactions with a former Dooney & Bourke attorney, Jeremy Sheff&emdash;who continues to practice with counsel for defendant but is no longer involved with the instant litigation&emdash;warrants his disqualification and the “disregard! ] in its entirety”
42
of the R & R. By letter dated July 6, 2007, Louis Vuitton informed the Court of its “recent[ ] discover[y]”
43
that, in 2006, Special Master Beebe had commented on a draft of Sheff s legal article on trademark law and dilution, but had failed to disclose this prior to his appointment.
44
Louis Vuitton contends that Special Master Beebe’s “prior relationship” with a Dooney & Bourke attorney and their “collaboration on a project specifically regarding trademark law and dilution” constitute material facts that should have been disclosed prior to his appointment.
45
According to Louis Vuitton, Special Master Beebe’s failure to disclose the “relationship” has created an appearance of impropriety that casts doubt on the impartiality of the R
&
R, particularly in light of the R & R’s “heavy weight in Dooney [ & Bourke]’s favor.”
46
Dooney & Bourke acknowledges that Special Master Beebe and Sheff made contact, but disputes the existence of any “relationship” that might warrant disqualification or the wholesale disregard of the R & R.
47
Dooney
&
Bourke states that Sheff “has not had any responsibility” in its representation since May 2005, and was
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not aware of Special Master Beebe’s appointment in this action.
48
Moreover, no Dooney & Bourke attorney was aware that Sheff had contacted Special Master Beebe for comments on a draft law review article in the past, nor did they know that Sheff had later thanked Special Master Beebe in the final version of that article.
49
By letter dated July 11, 2007, Special Master Beebe informed the Court that in August 2006, at Sheffs initiative, the two had briefly corresponded regarding Sheffs legal article on issues of trademark law as well as the legal market for professorships.
50
Special Master Beebe confirms that he has never met or spoken with Sheff, and that his limited review of Sheffs article and the correspondence itself stemmed from his duties as part of Cardozo Law School’s Hiring Committee, as well as his own sense of obligation as “a member of the legal academic community.”
51
Special Master Beebe further wrote that he does not recall Sheffs paper, and is not aware of Sheffs current employment situation.
52
Under Rule 53(a)(2), a special master “must not have a relationship to the parties, counsel, action, or court that would require disqualification of a judge under 28 U.S.C. § 455 (“section 455”) unless the parties consent with the court’s approval to appointment ... after disclosure of any potential grounds for disqualification.”
53
Section 455(a) requires a judge’s disqualification “in any proceeding in which his impartiality might reasonably be questioned.”
54
The Second Circuit has stated that section 455(a) “sets out an objective standard for recusal,”
55
that is, “ ‘whether an objective, disinterested observer fully informed of the facts underlying the grounds on which recusal was sought would entertain a significant doubt that justice would be done in the case.’ ”
56
Section 455(b)(1) requires the disqualification of a judge “[wjhere he has personal bias or prejudice concerning a party, or personal knowledge of disputed evidentia-ry facts concerning the proceeding.”
57
Section 455 neither requires the disqualification of Special Master Beebe nor the disregard of the R & R. The Court’s review of the correspondence between Special Master Beebe and Sheff confirms that their “connection” was isolated, brief, and limited to the discussion of Sheffs draft article and the legal market for professorships. The fact that the article’s subject matter is also trademark law and
*568
dilution is unremarkable given that Special Master Beebe specializes in intellectual property law. As such, it follows that his comments in that area of law are frequently solicited. Significantly, at no point in their brief correspondence did Sheff mention the instant litigation, his law firm’s representation of Dooney & Bourke, or his own prior participation in that representation.
58
Considering the facts underlying the request to disqualify Special Master Beebe, no objective observer “would entertain a significant doubt that justice would be done in the case”
59
or that the closely-reasoned and well-supported R & R should be wholesale rejected. Moreover, disqualification is not warranted under section 455(b)(1) as Louis Vuitton has offered absolutely no facts to demonstrate that Special Master Beebe harbors a “personal bias or prejudice concerning a party” or has “personal knowledge of disputed evidentia-ry facts” regarding this action.
60
Indeed, courts in this circuit have held that section 455 does not require disqualification or recusal in far closer cases.
61
While the pre-appointment disclosure of any such interactions are ideal, I am confident that this particular disclosure would not have precluded Special Master Beebe’s appointment had it been disclosed at the outset.
62
For the foregoing reasons, Louis Vuitton’s motion to disqualify Special Master Beebe and to disregard the R
&
R is denied.
A. Plaintiffs Experts
1. Dr. Eugene Ericksen
Dr. Eugene Ericksen “conducted a hybrid consumer confusion and trademark dilution survey for Louis Vuitton between December 6, 2006 and December 31, 2006 ( [the] ‘Ericksen Survey’).”
63
The Special Masters recommended the exclusion of the Ericksen Survey in its entirety under Federal Rules of Evidence 403 and 702 due to the cumulative effect of a number of flaws. These flaws include the use of an improper stimulus, the poor choice of a control bag, the failure to instruct respondents against guessing, the improper classification of respondents, as well as other significant
*569
methodological errors.
64
Moreover, with respect to the trademark dilution component of the Ericksen Survey, the Special Masters found that Dr. Ericksen’s analysis was plagued by the same methodological flaws present in the confusion component, and also “proceeds from a fundamental misunderstanding of the theory of dilution by blurring,”
65
improperly conflating it with consumer confusion.
66
Finding no clear error in the Special Masters’ factual findings and reviewing their legal conclusions de novo, I adopt the Special Masters’ recommendation that Dr. Ericksen’s report and testimony be excluded in their entirety under Rules 702 and 403. The cumulative effect of the flaws outlined in the R & R render the report and testimony unreliable, and any probative value is substantially outweighed by the danger of unfair prejudice and misleading the jury.
2. Dr. Jacob Jacoby
Dr. Jacob Jacoby was retained by Louis Vuitton to conduct a trademark confusion survey (the “Jacoby Confusion Survey”) and a dilution survey (the “Jacoby Dilution Survey”), both of which have been discussed by this Court in a prior opinion.
67
As I have previously noted and as the Special Masters have also found, the “Ja-coby Confusion Survey [Report] does not, in fact, describe the actual survey that was undertaken.”
68
The Special Masters found that the facts strongly suggest'that the Jacoby Confusion Survey was “not reported in an accurate manner and ... was not conducted in an objective manner,”
69
and is therefore not reliable under Rule 702. The Special Masters also found significant flaws in the survey including the improper definition of its universe,
70
the use of a survey question that asked respondents for a legal conclusion,
71
, and the improper classification of certain respondents as confused “based on factors not relevant to the marks at issue.”
72
In addition, the Special Masters found numerous, fundamental deficiencies in the Jacoby Dilution Study such as a lack of fit between the survey’s questions and the law of dilution,
73
the improper coding and classification of several responses to the survey thus resulting in an “overstate[ment] of the number of respondents who were ‘diluted,’ ”
74
and the unexplained inconsistency between the results of Dr. Jacoby’s pilot dilution study, which found “little to no net dilution”
75
and the subsequent survey which found dilution.
Finding no clear error in the Special Masters’ factual findings and reviewing their legal conclusions de novo, I adopt the Special Masters’ recommendation that Dr. Jacoby’s report and testimony be excluded
*570
in their entirety under Rules 702 and 403. In considering the cumulative effect of the numerous flaws identified by the Special Masters, it is clear that Dr. Jacoby’s report and testimony on the issues of both trademark confusion and dilution are unreliable. Moreover, any probative value is substantially outweighed by the danger of unfair prejudice and misleading the jury.
3. Dr. Richard A. Holub
Dr. Richard Holub was retained by Louis Vuitton “to study and compare the use of color in the multicolor handbags of Dooney & Bourke and Louis Vuitton.”
76
Specifically, Louis Vuitton offers Dr. Ho-lub’s testimony “for two purposes: (1) to prove the likelihood of confusion presented by Dooney [ & Bourkej’s multicolor logo; and (2) to prove Dooney [ & Bourkej’s willful intent to copy the Louis Vuitton Multicolore Monogram mark.”
77
The Special Masters recommended that Dr. Ho-lub’s report and testimony be excluded in their entirety.
With respect to the first purpose, the Special Masters concluded that Dr. Ho-lub’s highly technical report and testimony on the similarity of colors between the parties’ handbags would not be helpful to the jury because the jury members can observe for themselves whether Dooney & Bourke’s mark is confusingly similar to Louis Vuitton’s Multicolore Monogram mark.
78
The jury can make that determination without the help of an expert and certainly without the expert’s “digital photography ... technical jargon and colorim-eter approximation.”
79
Finding no clear error in the Special Masters’ factual findings and reviewing their legal conclusions de novo, I adopt the Special Masters’ recommendation that Dr. Holub’s report and testimony should be excluded to the extent they are offered for the purpose of proving the likelihood of confusion.
With respect to Dr. Holub’s report and testimony offered for the purpose of proving intent to copy, the Special Masters noted that this presented a closer question
80
as “Dooney
&
Bourke’s intent is potentially important in this case because, among other things, Louis Vuitton is seeking an accounting of Dooney & Bourke’s profits, and such an accounting is possible only upon a finding of willful intent on Dooney & Bourke’s part.”
81
Further, with respect to damages, if Louis Vuitton can establish that Dooney & Bourke’s actions were intentionally deceptive, that gives rise to a rebuttable presumption of confusion.
82
Indeed, the Special Masters recognized the potential probative value of Dr. Holub’s testimony on the issue of intent, noting “while it is true that Dooney & Bourke would not be liable for using even the same exact colors as Louis Vuitton ..., it is also true that evidence of copying the colors is at least probative of an intent
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to copy the Louis Vuitton mark itself.”
83
Accordingly, the Special Masters stated that “on the question of intent[,] it could be helpful for the jurors to know exactly how much of the pallette was used in each mark, and the exact extent to which the colors used by Dooney & Bourke overlap with the colors used by Louis Vuitton.”
84
“If Dooney & Bourke chose identical or very similar color combinations as were chosen by Louis Vuitton, that fact at least tends to prove an intent to infringe on Louis Vuitton’s mark.”
85
Ultimately, however, the Special Masters concluded the risk is too great that the jury may be influenced by Dr. Holub’s testimony and improperly use it toward resolving the likelihood of confusion issue, even if instructed by the Court to consider it only for the issue of intent.
86
Moreover, according to the Special Masters, the probative value of expert testimony on the overlapping colors, even on the intent issue, is diminished by the fact that the colors are not themselves the mark that Louis Vuitton seeks to protect.
87
Additionally, the similarity between the colors may be supported by inferences other than an intent to copy, such as fashion trends.
88
There is no clear error in the Special Masters’ factual findings. Reviewing their legal conclusions de novo, however, I hold that Dr. Holub’s testimony and report are admissible for the purpose of proving intent. Dr. Holub, however, may only testify to the extent of the overlapping use of colors in the Dooney
&
Bourke and Louis Vuitton multicolored monogram handbags.
89
In doing so, I adopt the Special Masters’ suggestion that, should the Court allow Dr. Holub to testify on intent, he should “not be permitted to testify that his findings
in fact
indicated that Dooney & Bourke intentionally copied Louis Vuitton’s colors.”
90
Although I recognize that there is a risk that the jury “may take [Dr. Holub’s] testimony [on the intent issue] as an instruction on how to decide the question of likelihood of confusion,”
91
that risk can be minimized by a limiting instruction.
92
In fact, although the Special Masters ultimately rejected this approach, they did note that the risk of prejudice and confusion posed by Dr. Holub’s testimony may be “lessened somewhat by a limiting instruction.”
93
This Court has routinely relied upon limiting instructions to “remind[] the jury of its role and of the limits of expert testimony [and] clarify the extent of their consideration of such testimony.”
94
Further, the Second Circuit has recognized a “strong presumption that ju-
*572
ríes follow limiting instructions.”
95
With respect to the factors that the Special Masters found to diminish the testimony’s probative value, including the fact that the mark at issue consists of more than just colors, as well as inferences that may support color overlap other than intent to copy, those are relatively minor and can be addressed on cross-examination and opening and closing statements.
The probative value of Dr. Holub’s report and testimony, limited to the overlap of colors between the Louis Vuitton and Dooney
&
Bourke marks, is not substantially outweighed by the dangers of unfair prejudice or confusing the jury. As a result, I will allow limited testimony by Dr. Holub.
4. Mr. Weston Anson
Mr. Weston Anson was retained by Louis Vuitton to review financial documents and accounting information produced by Dooney & Bourke during the course of discovery and “to prove the amount of net profit that Dooney
&
Bourke derived from its assumed infringement on the Louis Vuitton Multicolore [Monogram] mark; and [] to prove that Louis Vuitton suffered dilution of its Mul-ticolore Monogram mark as a result of Dooney
&
Bourke’s infringement.”
96
The Special Masters recommended that Mr. Anson’s report and testimony be excluded but for his testimony on the “amount of net profits that Dooney
&
Bourke obtained from the allegedly infringing sales.”
97
Mr. Anson’s method of calculating net profits deducted only those costs directly incurred in the production of the allegedly infringing Dooney & Bourke handbags, but did not deduct a proportionate amount of general expenses such as overhead.
98
Because the deduction of general expenses is required only if defendant can prove the connection between those expenses and the sales of the allegedly infringing items, the Special Masters qualified their recommendation to permit Mr. Anson’s testimony.
99
Specifically, they recommended that Mr. Anson be permitted to testify to his calculation of Dooney & Bourke’s net profits, but only if Dooney & Bourke is unable to connect any general expenses to the sales generating those profits.
100
If, however, Dooney
&
Bourke is able to do so, then Mr. Anson’s testimony must be adjusted to reflect the deduction.
101
The Special Masters found that Mr. An-son’s dilution study does not “fit” with the substantive law of dilution because he “does not purport to connect a loss of sales [by Louis Vuitton] in the United States to a loss of reputation on the part of Louis Vuitton.”
102
The Special Masters further found that Louis Vuitton had failed to cite any case “to support the proposition that a plaintiffs loss of sales coincident with a defendant’s achievefment of a] ‘critical mass’ in the marketplace necessarily implies a loss of reputation.”
103
Moreover, the Special Masters identified a number of flaws in the dilution study. Chief among
*573
those flaws is a lack of fit between the basic premise of the
study
— ie., that Louis Vuitton suffered a loss of sales in the United States resulting from Dooney & Bourke’s marketing efforts — and Louis Vuitton’s oft-expressed position in this liti
gation
— ie., that it does not claim lost profits.
104
The Special Masters also found Mr. Anson’s opinion “that there is a statistically significant difference between sales of [Louis Vuitton’s] handbags in the United States and the rest of the world .... ” to be unreliable under Rule 702 due to his complete reliance on another expert who has not been produced in this action.
105
The Special Masters concluded that Mr. Anson’s testimony on dilution constitutes “nothing but conduit testimony from an expert on a matter outside his field of expertise.”
106
Finding no clear error in the Special Masters’ factual findings and reviewing their legal conclusions de novo, I adopt the Special Masters’ recommendation that Mr. Anson’s report and testimony be admitted in part and excluded in part, as set forth above, under Rules 702 and 403. In light of the number of serious flaws that plague Mr. Anson’s report and testimony, specifically on the issue of dilution, the probative value is substantially outweighed by the prejudicial effect and the serious potential to mislead the jury.
B. Defendant’s Experts
1. Dr. Bradford Cornell
I find no clear error in the Special Masters’ factual findings with respect to Dr. Bradford Cornell’s testimony and report on the issue of Louis Vuitton’s damages and Dooney
&
Bourke’s profits, and come to the same legal conclusions upon a de novo review. For those reasons and because neither party objects to the adoption of the R & R with respect to Dr. Cornell,
107
I adopt the Special Masters’ recommendation and allow his testimony and report subject to the limitations set forth in the R
&
R.
2. Dr. Robert N. Reitter
Dr. Robert N. Reitter was retained by Dooney & Bourke to conduct a trademark confusion survey and trademark recognition survey in 2004.
108
Both surveys have been previously discussed by the Court.
109
In 2006, Dr. Reitter was once again commissioned to conduct a second trademark confusion survey and a dilution survey.
110
The Special Masters recommended that Dr. Reitter’s reports and testimony on all of these surveys be excluded in their entirety.
Dooney & Bourke “does not challenge the Special Masters’ recommendation with respect to the 2004 [trademark confusion survey] or with the efforts to revive it”
111
through the 2006 confusion survey. Rather, Dooney & Bourke objects on the ground that the Special Masters considered the 2006 confusion survey solely as a means to revive the 2004 confusion survey
*574
previously criticized by the Court.
112
As such, Dooney & Bourke contends that the Special Masters failed to regard the 2006 confusion survey, standing alone, “as an independent study that found
de minimis
confusion as of late 2006”
113
— specifically, November and December 2006.
114
Although the Special Masters primarily regarded the 2006 confusion survey as a response to the Court’s criticisms of the 2004 survey, the Special Masters did conduct a careful analysis of the 2006 confusion survey, independent of the 2004 survey. In doing so, the Special Masters identified a number of flaws in the methodology of the 2006 confusion survey and explicitly noted that the 2006 survey “suffers from some of the same methodological flaws that beset the 2004 survey.”
115
These flaws include: inappropriate selection of non-upscale malls for the survey; a low screening standard for respondents; a “far from ideal”
116
sampling method that precluded within-location comparisons among respondents who were exposed to the control bag versus Dooney & Bourke bags with name hangtags versus Dooney
&
Bourke bags without name hangtags;
117
the low number of respondents participating in the survey;
118
and the failure to employ a methodology involving sequential presentation or “line-up” of stimuli which better approximates marketplace conditions.
119
While the Special Masters remarked that each methodological flaw, standing alone, may not mandate exclusion, each flaw diminished the 2006 confusion survey’s reliability and probative value.
120
Although a survey measuring the level of consumer confusion in late 2006 is of some probative value, the cumulative effect of the methodological flaws identified by the Special Masters so diminishes the reliability and probative value of the 2006 confusion survey that its exclusion is warranted under Rules 403 and 702.
With respect to Dr. Reitter’s dilution study conducted in 2006, the Special Masters recommended that it be excluded in its entirety because “as designed, it could provide no reliable indication of whether the [Louis Vuitton] Multicolore mark was diluted.”
121
Finding that Dr. Reitter’s dilution study “ ‘reveals little except that there is a high consumer recognition of the
*575
Louis Vuitton Monogram Multicolore marks’ ” and failed to measure dilution,
122
the Special Masters recommended exclusion under Rules 702 and 403. Specifically, they concluded that Dr. Reitter failed to “preclude the possibility that ... the recognition level of the Louis Vuitton Mul-ticolore [m]ark might have been higher but for the existence in the marketplace of Dooney & Bourke It-Bags.”
123
As such, it was conducted pursuant to “fundamentally flawed”
124
reasoning that rendered it irrelevant to the dilution question and inadmissible. In addition, the Special Masters addressed other flaws that do not, standing alone, require exclusion but “quell[ ] any doubt about [the study’s] exclusion.”
125
These flaws include the improper grouping of handbags in the study, which failed to simulate market conditions,
126
and the failure to utilize follow-up questions to prompt respondents to explain their answers.
127
Taken cumulatively, the methodological flaws identified by the Special Masters and the “fundamentally flawed reasoning”
128
of the Reitter dilution study warrant its exclusion. Dooney
&
Bourke objects to the Special Masters’ recommended exclusion on the ground that “surely it is ‘relevant’ to know how strong the claimed mark is as a source-identifier-”
129
But the study’s conclusion that the Louis Vuitton Multico-lore Monogram mark is still very strong does not address whether it has been diluted — rather, it speaks more to the strength of the mark itself and its fame, neither of which are disputed. To admit it as a “dilution” study poses a real threat of unfair prejudice and of misleading the jury. Rather than “settling] too high a bar for what evidence is ‘relevant,’ ” as Dooney
&
Bourke contends,
130
the Special Masters properly found that the Reitter dilution study “casts no light” on the issue of dilution and amounts to an “ad hoc use of a new theory of testing dilution”
131
that is unreliable. Finding no clear error in the Special Masters’ factual findings and reviewing their legal conclusions de novo, I adopt the Special Masters’ recommendation that Dr. Reitter’s report and testimony, including the 2006 confusion study and the dilution study, be excluded in their entirety.
V. CONCLUSION
For the reasons stated above, plaintiffs motions are granted in part and denied in part, and defendant’s motions are denied. The Clerk of the Court is directed to close the following motions: [Docket Entry Nos. 188, 194, 199, 204, 206]. A teleconference is scheduled for December 21, 2007, at 11:45 a.m.
SO ORDERED.
*576
REPORT AND RECOMMENDATION OF THE SPECIAL MASTERS
Professors BARTON BEEBE and DANIEL CAPRA, Special Masters.
I.Legal Standards for Determining Admissibility of Expert Testimony IC
A. Rule 702 and Daubert. U<) fc-lO
B. Rule 403 . W OO
C. Survey Evidence. OO lo
D. Daubert Hearings. T — f OO
II. The Survey Experts. UN|
A. Dr. Eugene Ericksen. UNI
1. Facts. TO
a. The Ericksen Survey Universe. TO
b. The Ericksen Survey Stimuli. •■ÑP
c. The Ericksen Survey Questions. C*
d. Dr. Ericksen’s Confusion Analysis. ir-
e. Dr. Ericksen’s Blurring Analysis . UJ
2. Discussion. T-1
a. Dr. Ericksen Used an Improper Stimulus. r-1
b. Dr. Ericksen’s Control Was Flawed.
UJ
c. Dr. Ericksen’s Confusion Analysis Is Flawed.
d. Dr. Ericksen’s Blurring Analysis Is Flawed. TO
3. Summary on Admissibility of Testimony, Survey, and Expert Report of Dr. Ericksen .
B. Dr. Jacob Jacoby .
1. The Jacoby Confusion Survey.
2. The Jacoby Dilution Survey.
a. Facts .
i. The Jacoby Dilution Survey Universe.
ii. The Jacoby Dilution Survey Stimuli.
iii. The Jacoby Dilution Survey Questions .
iv. The Jacoby Dilution Survey Dilution Analysis.
v. The Jacoby Dilution Survey Pilot Survey.
b. Discussion.
i. The Jacoby Dilution Survey is Not Relevant to the Issue of Dilution.
ii. The Flaws in the Jacoby Dilution Survey’s Categorization of Results .
iii. The Objectivity of the Jacoby Dilution Survey.
C. Robert N. Reitter.
1. Facts.
a. The 2004 Reitter Confusion Survey.
i. The 2004 Reitter Confusion Survey Universe and Sample
ii. The 2004 Reitter Confusion Survey Stimuli.
iii. The 2004 Reitter Confusion Survey Questions.
iv. The 2004 Reitter Confusion Survey Confusion Analysis ..
b. The 2006 Reitter Confusion Survey.
i. The 2006 Reitter Confusion Survey Universe and Sample
ii. The 2006 Reitter Confusion Survey Stimuli.
iii. The 2006 Reitter Confusion Survey Questions.
iv. The 2006 Reitter Confusion Survey Confusion Analysis ..
c. The 2006 Reitter Dilution Survey.
i. The 2006 Reitter Dilution Survey Universe and Sample..
ii. The 2006 Reitter Dilution Survey Stimuli.
iii. The 2006 Reitter Dilution Survey Questions.
iv. The 2006 Reitter Dilution Survey Dilution Analysis.
*577
2. Discussion.
a. The Reitter Confusion Surveys.
b. The Flaws in the 2004 Survey.
i. Reading Test.
ii. Ineffective Control Bag .
iii. Coding Errors.
iv. Choice of Malls and Universe of Respondents.
v. The “Permission” Question .
vi. Preliminary Summary on the Admissibility of the 2004 Reitter Confusion Survey. 05 CO
c. Flaws in Methodology of the 2006 Confusion Survey. 05 CO
i. Mall Selection. Oí CO
ii. Sampling Method. 05 CO
iii. Sample Sizes. 05 CO
iv. Eveready Presentation. 05 CO
v. Other Alleged Methodological Flaws in the 2006 Confusion Survey . CO CO
(a) Poor Choice of Control Bag. CO CO
(b) Reading Test. CO CO
(c) Close Viewing Range. CO
d. The Relation Between the 2004 Reitter Confusion Survey and the 2006 Reitter Confusion Survey. 05 CO ^
e. The 2006 Reitter Dilution Survey. 05 CO 05
i. The Relevance of the 2006 Reitter Dilution Survey. 05 CO 05
ii. The 2006 Reitter Dilution Survey Stimuli. 05 CO <1
iii. Reitter’s Failure to Ask the 2006 Dilution Survey Respondents to Explain Their Answers. OO CO CO
3. Summary on Reitter Surveys. 05 CO CO
III. Dr. Richard A. Holub.
A. Facts.
B. Discussion.
1. Opinion offered to prove the likelihood of confusion.
a. Qualifications:...
i. Colorimetry...
ii. Statistical probability.
b. Reliability of conclusions on statistical probability.
c. Proper Subject Matter.
2. Opinion offered to prove intent.
a. Reliability.
b. Proper Subject Matter.
e. Rule 403.
C. Summary on Dr. Holub.
IV. The Damages Experts. 05 cn
A. Weston Anson. 05 cn
1. Facts. 05 cn
2. Discussion. 05 ai
a. Opinion Offered to Prove Dooney & Bourke’s Net Profits. 05 cti
i. Qualifications. 05 cn
ii. Statements in Anson’s Report Concerning the Existence of Infringement and Dilution. 05 or to
iii. Reliability of Methods Used to Determine Dooney & Bourke’s Profits. ^ iO CO
(a) Use of “incremental method” of deducting costs.
lO
CO
(b) Attributing 100 percent of the net profits to the alleged infringement.1. LO co
b. Opinion on Dilution. CO CO
i. Lack of “Fit”/ Problem of Prejudice and Jury Confusion-CO co
*578
ii. Lack of “fit” with the substantive law of dilution.662
iii. Improper reliance on another expert.664
iv. Unreliability of regression analysis .666
3. Summary.669
B. Dr. Bradford Cornell.669
1. Facts.669
2. Discussion.671
a. Qualifications:.672
b. The Challenge to Dr. Cornell’s Four-Factor Test for Assessing Damages.672
c. The Challenge to Cornell’s Statistical Analysis of Louis Vuitton’s United States Sales.675
d. The Challenge to Cornell’s Report as Exceeding the Proper Scope of Expert Testimony.677
e. The Challenge to Cornell’s Use of the “Full Absorption” Method.678
3. Summary.679
V. Conclusion.679
Louis Vuitton Malletier (“Louis Vuitton”) brings this action against Dooney & Bourke, Inc. (“Dooney & Bourke”) alleging trademark infringement, trademark dilution, and unfair competition under the Lanham Act, 15 U.S.C. §§ 1051
et seq.,
and Section 301 of New York General Business Law. In her opinion dated August 27, 2004,
Louis Vuitton Malletier v. Dooney & Bourke, Inc.,
340 F.Supp.2d 415 (S.D.N.Y.2004)
(“Vuitton
/”), Judge Shira A. Scheindlin denied Louis Vuitton’s motion for a preliminary injunction. In its opinion dated June 30, 2006,
Louis Vuitton Malletier v. Dooney & Bourke, Inc.,
454 F.3d 108 (2d Cir.2006)
(“Vuitton
II”), the Second Circuit affirmed in part and vacated and remanded in part Judge Scheind-lin’s ruling in light of the Second Circuit’s opinion in
Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp.,
426 F.3d 532 (2d Cir.2005). In anticipation now of a jury trial, the parties have fully submitted five motions in limine seeking to exclude the reports and testimony of six proposed experts. By Order dated May 18, 2007, Judge Scheindlin appointed the undersigned as Special Masters in this case and directed us to submit a collaborative Report and Recommendation to aid the Court in resolving these motions in limine.
For the reasons given below, we respectfully recommend that (1) Dooney & Bourke’s Motion in Limine to Exclude the Reports, Testimony, and Opinions of Dr. Eugene Ericksen and Dr. Jacob Jacoby be granted in its entirety, (2) Louis Vuitton’s Motion in Limine to Exclude Dooney & Bourke’s Proposed Expert Opinions, Testimony, and Surveys of Dr. Robert N. Reit-ter be granted in its entirety; (3) Dooney & Bourke’s Motion in Limine to Exclude the Report, Testimony, and Opinions of Richard A. Holub be granted in its entirety (4) Dooney & Bourke’s Motion in Li-mine to Preclude the Report, Testimony, and Opinions of Mr. Weston Anson be granted in part and denied in part, and (5) Louis Vuitton’s Motion to Exclude Defendant Dooney & Bourke’s Proposed Expert Testimony of Dr. Bradford Cornell be granted in part and denied in part.
The underlying facts of this case are set forth in
Vuitton I,
340 F.Supp.2d at 424-428 , and
Vuitton II,
454 F.3d at 112-13 , familiarity with which is assumed. In what follows, we use the term “Louis Vuitton Monogram Multicolore Mark” to denote the Louis Vuitton mark consisting of “(1) the interlocking initials [“L” and “V”] interspersed in a repeating pattern with
*579
the registered geometric shapes, (2) used in combination with the thirty-three special Murakami colors, (3) set against a white or black background.”
Vuitton I,
340 F.Supp.2d at 438 .
See also Vuitton II,
454 F.3d at 115 (defining the Louis Vuitton mark at issue as “consisting of a design plus color, that is, the traditional Vuitton Toile pattern design — entwined LV initials with the three already described motifs— displayed in the 33 Murakami colors and printed on a white or black background.”). We use the term “Dooney & Bourke Multicolor Monogram Mark” to denote the pattern of interlocking “D” and “B” initials used by Dooney & Bourke on its It-Bags and imprinted on a white or black background.
We proceed by setting forth the basic legal standards applicable to the admissibility of expert testimony in general and survey evidence in particular. We then move to the motions in limine for each expert. The law governing trademark infringement and dilution claims is interspersed throughout the discussion of the expert testimony.
I. Legal Standards for Determining Admissibility of Expert Testimony
A. Rule 702 and
Daubert
The admissibility of expert testimony is governed by the Federal Rules of Evidence. Federal Rule of Evidence 702 requires that a challenged expert must be qualified to testify on the basis of scientific, technical or other specialized knowledge, on a subject matter that “will assist the jury to understand the evidence or determine a fact in issue.” Thus, expert testimony is excluded under Rule 702 if it addresses “lay matters which the jury is capable of understanding and deciding without the expert’s help.”
United States v. Lumpkin,
192 F.3d 280, 289 (2d Cir.1999). As amended in 2000, Rule 702 further requires that the expert s testimony must be (1) based on sufficient facts or data, (2) the product of reliable principles and methods, (3) reliably applied to the facts of the case. These three reliability-based requirements are intended to codify
Daubert v. Merrell Dow Pharmaceuticals, Inc.
509 U.S. 579 , 113 S.Ct. 2786 , 125 L.Ed.2d 469 (1993), and its progeny.
See
Advisory Committee Note to the 2000 Amendment to Evidence Rule 702. Under
Daubert ,
a court is required to ensure that challenged expert testimony “is not only relevant, but reliable.” 509 U.S. at 589 , 113 S.Ct. 2786 . The Court in
Daubert
charged trial judges with the responsibility of acting as gatekeepers to exclude unreliable expert testimony. Subsequently the Court in
Kumho Tire Co. v. Carmichael,
526 U.S. 137 , 119 S.Ct. 1167 , 143 L.Ed.2d 238 (1999), made clear that the gatekeep-ing function applies not just to scientific expert testimony as discussed in
Daubert ,
but also to testimony based on technical or other specialized knowledge.
Daubert
set forth a non-exclusive list of factors for trial courts to use in assessing the reliability of scientific expert testimony. The specific factors explicated by the
Daubert
Court are (1) whether the expert’s technique or theory can be or has been tested — that is, whether the expert’s theory can be challenged in some objective sense, or whether it is instead simply a subjective, conclusory approach that cannot reasonably be assessed for reliability; (2) whether the technique or theory has been subject to peer review and publication; (3) the known or potential rate of error of the technique or theory when applied and the existence and maintenance of standards and controls that govern the application of the expert’s process; and (4) whether the technique or theory has been generally accepted in the relevant community of experts. 509 U.S. at 592-94 , 113
*580
S.Ct. 2786. The Court in
Kumho
declared that “the factors identified in
Daubert
may or may not be pertinent in assessing reliability, depending on the nature of the issue, the expert’s particular expertise, and the- subject matter of his testimony.”
Kumho,
526 U.S. at 150 , 119 S.Ct. 1167 . The
Kumho
Court emphasized that district courts have wide discretion both in determining the relevant factors to be employed in assessing the reliability of an expert’s testimony, and in determining whether that testimony is in fact reliable.
Id.
at 153 , 119 S.Ct. 1167 .
See also Zuchowicz v. United States,
140 F.3d 381, 386 (2d Cir.1998) (decisions to admit or exclude expert testimony are evaluated under the “highly deferential abuse of discretion standard”). The ultimate inquiry for the district court is “to make certain that an expert, whether basing testimony upon professional studies or personal experience, employs in the courtroom the same level of intellectual rigor that characterizes the practice of an expert in the relevant field.”
Kumho,
526 U.S. at 151 , 119 S.Ct. 1167 .
The proponent of the expert testimony must prove by a preponderance of the evidence that it is reliable.
Daubert,
509 U.S. at 590 , 113 S.Ct. 2786 . Admissibility does not depend on whether the judge agrees with the expert’s conclusion; the focus is instead on the expert’s methodology.
Id.
at 595 , 113 S.Ct. 2786 . Yet as the Court has recognized, “conclusions and methodology are not entirely distinct from one another.”
General Elec. Co. v. Joiner,
522 U.S. 136, 146 , 118 S.Ct. 512 , 139 L.Ed.2d 508 (1997). When an expert purports to apply principles and methods in accordance with professional standards, and yet reaches a conclusion that other experts in the field would not reach, “the trial court may fairly suspect that the' principles and methods have not been faithfully applied.” Committee Note to 2000 Amendment to Rule 702 (citing
Lust v. Merrell Dow Pharmaceuticals, Inc.,
89 F.3d 594 , 598 (9th Cir.1996)).
B. Rule 403
Rule 403 provides another source for excluding expert testimony. Under Rule 403, evidence “may be excluded if its probative value is substantially outweighed by the danger of unfair prejudice, confusion of the issues, or misleading the jury.” The Court in
Daubert
emphasized that expert testimony “can be both powerful and quite misleading because of the difficulty of evaluating it.” 509 U.S. at 595 , 113 S.Ct. 2786 (quotation omitted). Accordingly, the judge in applying Rule 403 must exercise “more control over experts than over lay witnesses.”
Id.
C. Survey Evidence
Several of the experts challenged in this case are relying on surveys of potential purchasers of the handbags at issue. Survey evidence is generally admissible in cases alleging trademark infringement under the Lanham Act.
See Sobering Corp. v. Pfizer Inc.,
189 F.3d 218, 227-28 (2d Cir.1999) (endorsing the “modem view” that evidence of the state of mind of persons surveyed is not inadmissible as hearsay). To assess the admissibility of survey evidence, the court should consider a number of criteria, including whether:
(1) the proper universe was examined and the representative sample was drawn from that universe; (2) the survey’s methodology and execution were in accordance with generally accepted standards of objective procedure and statistics in the field of such surveys; (3) the questions were leading or suggestive; (4) the data gathered were accurately reported; and (5) persons conducting the survey were recognized experts.
*581
Vuitton I,
340 F.Supp.2d at 433 (citation and alterations omitted).
1
A trademark survey must also approximate marketplace conditions.
Trouble v. Wet Seal,
179 F.Supp.2d 291, 308 (S.D.N.Y.2001) (“Although no survey can construct a perfect replica of ‘real world’ buying patterns, a survey must use a stimulus that, at a minimum, tests for confusion by roughly simulating marketplace conditions.”). “While errors in survey methodology usually go to weight of the evidence, a survey should be excluded under Rule 403, Fed. R.Evid., when its probative value is substantially outweighed by its prejudicial effect or potential to mislead the jury.”
MasterCard Int’l Inc. v. First Nat’l Bank of Omaha,
No. 02 Civ. 3691, 2004 WL 326708 , at *11 (S.D.N.Y. Feb. 23, 2004) (citing
Schering,
189 F.3d at 228 ). Thus, a survey “should be excluded under Rule 403 when it is so flawed in its methodology” that the survey proves little and the jury is very likely to be misled.
Cache, Inc. v. M.Z. Berger & Co.,
2001 WL 38283 at *6 (S.D.N.Y.).
See also Starter Corp. v. Converse, Inc.,
170 F.3d 286, 297 (2d Cir.1999) (“The District Court correctly found ... that a survey may be kept from the jury’s attention entirely by the trial judge if it is irrelevant to the issues.” (citation omitted)). While courts in the Second Circuit rely mainly on Rule 403 to exclude unreliable surveys, we note that Rule 702 is clearly applicable as well, because the result of a survey is essentially expert testimony, and Rule 702 requires that such testimony must be reliable. The bottom line is that if the survey suffers from substantial methodological flaws, it will be excluded under both Rule 403 and Rule 702.
D.
Daubert
Hearings
Courts often hold pretrial evidentiary hearings — known as
Daubert
hearings — to determine whether challenged expert testimony is reliable under Rule 702 and admissible under Rule 403. Whether to hold a
Daubert
hearing is within the discretion of the court.
See
Committee Note to 2000 Amendment to Rule 702 (noting that the Rule “makes no attempt to set forth procedural requirements for exercising the trial court’s gatekeeping function over expert testimony”). The failure to hold a
Daubert
hearing may be an abuse of discretion when the admissibility ruling is tantamount to a ruling on summary judgment and there are substantial disputed issues of fact that are pertinent to the reliability inquiry.
See, e.g., Padillas v. Stork-Gamco, Inc.,
186 F.3d 412, 418 (3d Cir.1999).
But see Oddi v. Ford Motor Co.,
234 F.3d 136, 154 (3d Cir.2000) (no error in failing to hold Daubert hearing before excluding evidence and granting summary judgment; distinguishing
Padillas
as a case involving a thin record under which the court could not have evaluated the expert’s methods).
A
Daubert
hearing is unnecessary when the evidentiary record pertinent to the expert opinions is already well-developed. For example, in
Miller v. Baker Implement Co.,
439 F.3d 407 (8th Cir.2006), the court found that the trial judge did not abuse discretion in excluding the plaintiffs expert testimony without a
Daubert
hearing. It noted that the plaintiff submitted affidavits, a detailed explanation of the proposed expert testimony and a legal memorandum addressing the expert evidence issues. The court noted that while
Daubert
hearings “may be necessary in
*582
some cases, the basic requirement under the law is that parties have an opportunity to be heard before the district court makes its decisions.”
Miller v. Baker Implement,
439 F.3d at 412.
See also Nelson v. Tennessee Gas Pipeline Co.,
243 F.3d 244, 249 (6th Cir.2001)
(Daubert
hearing not required where the record was extensive and the
Daubert
issue was fully briefed by the parties).
In this case, the parties have extensively briefed the issues pertinent to each expert’s testimony. Each of the challenged experts has been subject to a lengthy deposition. Each of the expert’s reports (as well as each of the reports of experts challenging the reliability of some of those reports) has been submitted to the court. It is difficult to think of anything missing from the presentation by the parties that could be pertinent to these in limine motions. Accordingly, we find that a
Daubert
hearing is unnecessary.
II. The Survey Experts
A. Dr. Eugene Ericksen
Dr. Eugene Ericksen conducted a hybrid consumer confusion and trademark dilution survey for Louis Vuitton between December 6, 2006 and December 31, 2006 (“Ericksen Survey”).
2
In essence, the Er-icksen Survey took the form of a mall intercept survey in which 308 respondents were shown one of three videos.
3
In the first and second videos, the same woman was shown carrying a Dooney & Bourke bag bearing the Dooney
&
Bourke Multicolor Pattern imprinted on either a white or black background. In the third video, the woman was shown carrying a Coach bag as a control. After viewing the video, respondents were asked three key questions: (1) “Who do you think makes the handbag you saw on the video?”; (2) “Does the handbag you saw on the video call to mind any other brands?”; (3) “Do you think the maker of the handbag you saw in the video needed to get permission, authorization or licensing from any other company for the use of the multicolored design pattern of this handbag?”
4
Overall, having found no confusion with respect to the Coach control bag, the Ericksen Survey found that 20.2 percent of 104 respondents who saw the first video believed that Louis Vuitton made the bag shown, and that 22.3 percent of the 103 respondents who viewed the second video believed that Louis Vuitton made the bag shown.
5
With respect to dilution, Dr. Er-icksen found that “29.7 and 27.1 percent, respectively, of the qualified handbag consumers considered the white and black multicolored monogram patterns of the Dooney & Bourke handbags to be similar to the white and black Louis Vuitton multicolored monogram trademarks.”
6
We find that the Ericksen Survey used a severely flawed methodology and is unreliable; as such its probative value is substantially outweighed by its prejudicial effect and potential to mislead the jury. Thus it is inadmissible under Rules 403 and 702. We therefore recommend that the Ericksen Survey be excluded in its entirety. We first describe the facts of the
*583
Ericksen Survey in more detail and then explain the reasoning behind our recommendation.
1. Facts
Dr. Ericksen is a Professor of Sociology and Statistics at Temple University. He holds a Ph.D. in Sociology and an M.A. in Mathematical Statistics from the University of Michigan. Dr. Ericksen has published numerous articles on statistical sampling methods and census-taking, among other topics, and has submitted written testimony on the reliability of methods used in the United States Census before United States Senate and House of Representative Committees.
7
Before conducting the survey at issue in this case, Dr. Erick-sen had conducted at least ten trademark confusion surveys.
8
The Ericksen Survey constituted, however, the first time in his career that Dr. Ericksen used a video of a product being tested as the survey stimulus.
9
The Ericksen Survey also constituted the first time in his career that Dr. Ericksen tested on the question of trademark dilution.
10
Despite this possible lack of specialization, we find that Dr. Ericksen is sufficiently qualified to provide expert testimony under Rule 702.
See, e.g., Stagl v. Delta Air Lines, Inc.,
117 F.3d 76 (2d Cir.1997) (error to exclude expert testimony on whether an airport baggage claim area was unsafe due to its design; the witness had a master’s degrees in mechanical engineering and had consulted on the design of a number of public spaces; he was not unqualified simply because he had never designed an airport baggage claim area).
a. The Ericksen Survey Universe
In his report, Dr. Ericksen states that he designed the Ericksen Survey to test for initial interest and post-sale confusion and for dilution by blurring,
11
but not for point-of-sale confusion
12
or dilution by tar-nishment.
13
Dr. Ericksen oversaw the administration of a mall intercept survey conducted in five malls located in the four U.S. Census regions (with two malls being used in the more populous “South” region). To serve as a location for the survey, a mall was required either to have a store in which Louis Vuitton handbags were sold or to have “upscale stores and be located in an area with higher than average income.”
14
The Ericksen Report does not specify how many of the five malls used in the Ericksen Survey contained a freestanding Louis Vuitton store or a store that sold Louis Vuitton handbags at the time of the survey, and Dr. Ericksen was unable to specify the number in his deposition testimony.
15
Each of the malls contained a Coach store.
16
To qualify for the survey, a potential respondent was required to be a female aged sixteen or older who had either bought a handbag valued at $100 or more in the preceding year or planned to buy a handbag valued at $100
*584
or more in the succeeding year.
17
Dr. Ericksen reports that 89.3 percent of the respondents ultimately included in the survey sample qualified under both criteria.
18
b. The Ericksen Survey Stimuli
Upon being qualified for the survey, the survey respondent was taken into an interviewing room and seated three to five feet away from a 19- or 20-inch, standard-definition (i.e., non-high-definition) television screen. The respondent was then randomly assigned the number 1, 2, or 3. Each of these numbers was assigned to respondents at each of the five malls.
19
The respondent was then shown one of three videos according to the number assigned to the respondent.
20
Each of these videos showed the same young dark-haired woman wearing a white coat with a white fur-lined trim around the neck, walking first to thé right and then to the left before a white-painted cinderblock wall with a bag slung over the shoulder facing the camera. The camera was located approximately twenty-five feet from the model; the videographer used a lens which magnified the image by a factor of twelve.
21
In each of the videos, the woman carried a different bag. The parties strenuously dispute the degree to which a respondent could perceive, if at all, the details of each of the bags shown in the videos. We first describe each of the three bags that the woman was actually carrying when she was being videotaped. We then describe the degree to which the videos showed the details of the bags.
In Video # 1, the woman was carrying a Dooney & Bourke It-Bag bearing the Doo-ney & Bourke Multicolor Monogram Mark imprinted on a white background.
22
This bag was similar in its structural design to the Louis Vuitton “Papillon” bag.
23
As the woman walked to the left, a pink enameled heart hanging by a leather strap from one of the handles of the bag was visible to the camera. (The heart contained a Dooney & Bourke imprint, but as discussed below, the imprint could not be seen in the video). In Video # 2, the woman was carrying a Dooney & Bourke It-Bag bearing the Doo-ney
&
Bourke Multicolor Monogram Mark imprinted on a black background.
24
This bag was somewhat similar in its structural design to the Louis Vuitton “Aurelia” bag,
25
though the Dooney & Bourke bag did not display a central outer pocket. As the woman walked both to the right and to the left, the pink enameled heart was visible to the camera, but the lettering on it was not. In Video # 3, which showed the control bag, the woman carried a “Holiday Patchwork Totebag” produced by Coach, Inc. (“Coach Patchwork Bag”) and featured by Coach in its stores and catalogue at the time that Dr. Ericksen conducted his study. Dooney
&
Bourke asserts, and
*585
Louis Vuitton does not dispute, that the Coach Patchwork Bag is not similar in its patchwork design to any Louis Vuitton bag.
26
The Coach Patchwork Bag was significantly larger than the Dooney & Bourke bags used in Videos # 1 and # 2. The fabric design of the Coach Patchwork Bag consisted of a patchwork of various sewn-together rectangles of leather and other material in green, burgundy, varying shades of brown, and one patch featuring a design akin to zebra stripes. On some of these rectangles was imprinted in a single color a stylized “C” in a repeating pattern.
27
This “C” was significantly larger relative to the rest of the bag than the “D” and “B” on the bags shown in Videos # 1 and # 2. The bag did not otherwise bear any repeating monogram pattern. As the woman walked both to the right and to the left, a small Coach hangtag was visible to the camera.
The parties dispute whether Dr. Erick-sen could have used a different Coach bag, if not a different bag altogether as a control. Dooney & Bourke has submitted into evidence numerous images of handbags produced by third-parties featuring a repeating monogram pattern,
28
some of which featured a multicolored repeating monogram pattern.
29
Louis Vuitton does not dispute that these bags were available to Dr. Ericksen as possible controls. Louis Vuitton does, however, dispute Doo-ney
&
Bourke’s assertion that Coach itself produced a multicolored monogram pattern bag that could have been used as a control. Specifically, Dooney
&
Bourke asserts that Coach produced a 2006 version of the 2007 “Hamptons Weekend Scribble Tote,” both of which versions feature a multicolor monogram pattern on a white background.
30
However, the 2006 version was discontinued by Coach in early 2006.
31
prior to when Dr. Ericksen conducted his survey, and the 2007 version was not available in stores until March 2007.
32
Another issue in dispute is what could be seen by respondents in the videos. We separately viewed each of Videos # 1, # 2 and #3 repeatedly — one of us on a 20-inch standard-definition television and the other on a 20-inch computer screen — and independently found on each viewing that, in Videos # 1 and # 2, the details of the Dooney
&
Bourke bags were blurred beyond comprehension. Specifically, the “D” and “B” are illegible, as is the writing on the pink enameled heart. In fact, it is not clear in Videos # 1 and # 2 what, if any, written design is imprinted on the Dooney & Bourke bags. Instead, all that is perceptible in Videos # 1 and # 2 is a pattern of vaguely-defined colored shapes rendered on a white or black background. It is therefore not surprising that a number
*586
of respondents stated that they were unable to distinguish the initials on the bag shown in Video # 1, in particular.
33
As Louis Vuitton points out, numerous respondents explicitly stated that they were able to perceive the “D” and “B” initials on the bags shown in Videos # 1 and # 2.
34
As Dr. Ericksen admitted, however, his methodology does not make it clear whether these respondents were able to do so because they were already familiar with the overall design of Dooney & Bourke It-Bags.
35
In this connection, it is particularly noteworthy that Dr. Ericksen made a variety of videos prior to choosing the three videos actually used, and that the rejected alternatives included a set of videos, labeled “Close,” that featured close-ups of the bags.
36
We each viewed these “Close” videos and concluded that the “D” and “B” are easily legible. Dr. Ericksen’s explanation for why he did not use these videos is that “only seeing part of a woman is unrealistic ... [and] it overemphasizes the bag.”
37
As for Video #3, showing the Coach Patchwork Bag, the stylized “C” is legible on those patches on which it was imprinted. In the final frames of the video, as the woman walks to the left, the “C” is especially visible and legible. Any writing on the hangtag is not legible. Numerous survey respondents stated that they could read the “C” on the bag.
38
Other respondents stated that they had seen the Coach Patchwork Bag in Coach stores,
39
with one respondent stating that she had seen the bag in a Coach store only twenty minutes prior to her interview.
40
Dr. Ericksen did not explicitly question the control respon
*587
dents about their level of previous exposure to the control bag.
c. The Ericksen Survey Questions
After viewing the videos, the respondents were asked a series of questions. The most relevant questions consisted .of the following, which, for ease of reference, are numbered here as they were numbered on Dr. Ericksen’s questionnaire:
Q2. What did you see on the video?
Q3. Who do you think makes the handbag you saw in the video?
Q3a. What makes you say [that]?
Q4. Does the handbag you saw in the video call to mind any other brands?
Q4a. Which brand or brands?
Q4b. What makes you say [that]?
Q5. Do you think the maker of the handbag you saw in the video makes any other products or brands?
Q5a. Which other products or brands do you think they make?
Q5b. What makes you say [that]?
Q6. Do you think the maker of the handbag you saw in the video needed to get permission, authorization or licensing from any other company for the use of the multicolored design pattern of this handbag?
Q7. Who do you think they needed to get permission, authorization or licensing from for the use of the multicolored design pattern?
Q8. What makes you say [that]?
At no time was the respondent told not to guess or explicitly offered the option to answer “I don’t know.”
d. Dr. Ericksen’s Confusion Analysis
We review here Dr. Ericksen’s coding decisions with respect to consumer confusion in some detail because the parties strenuously dispute whether his coding decisions were proper. With respect to Video # 1, of thé 104 respondents who viewed the video, Dr. Ericksen classified twenty-one as “confused,” i.e., as incorrectly believing that the bag shown in the video was made by Louis Vuitton. Specifically, six respondents volunteered in response to Question 2 that they saw a Louis Vuitton bag — though one of these respondents expressed uncertainty.
41
■ An additional eleven respondents named Louis Vuitton in their answer to Question 3 — though two of these respondents expressed uncertainty.
42
Finally, an additional four respondents answered “yes” to Question 6 and gave Louis Vuitton as their answer to Question 7— though one expressed uncertainty.
43
Looking more closely at these twenty-one respondents’ answers to Questions 3a and 8, nine respondents explained that they named Louis Vuitton at least in part because of the “lettering” or “initials” on the bag.
44
Eight other respondents did not mention the lettering or initials on the bag
*588
but explained that they named Louis Vuitton because of the “design” of the bag, the “color and the pattern” on the bag, or the way the bag “looks.”
45
The responses of the remaining four respondents resist reliable classification.
46
With respect to Video # 2, of the 103 respondents who viewed the video, Dr. Er-icksen classified twenty-three as confused. Specifically, eight respondents volunteered in response to Question 2 that they saw a Louis Vuitton bag — none expressed uncertainty. An additional twelve respondents answered Louis Vuitton to Question 3— one expressed uncertainty.
47
Finally, an additional three respondents answered “yes” to Question 6 and gave Louis Vuitton as their answer to Question 7 — none expressed uncertainty. As with Video # 1, the Video #2 respondents’ verbatim responses to Questions 3 a and 8 show a variety of reasons why the respondents gave the answers they did. Of the twenty-three Video # 2 respondents Dr. Ericksen classified as confused, seven referred at least in part to the “lettering,” “initials,” or “Louis Vuitton patterns” on the bag.
48
Eight other respondents made no reference to the lettering or initials on the bag but rather referred to the “design,” “style,” or “colors and structure” of the bag
49
— with one respondent expressing uncertainty.
50
*589
Eight of the respondents gave responses that resist reliable classification.
51
With respect to Video #3, of the 101 respondents who viewed the video, one respondent speculated that the Coach Patchwork Bag shown “could be anywhere from Dolce & Gabbana to Louis Vuitton.”
52
Dr. Erieksen did not classify this control respondent as confused. No other respondent referenced Louis Vuitton as the producer of the bag. Overall, sixty-five of the 101 respondents identified the bag as made by Coach — with one respondent expressing uncertainty.
53
An additional fifteen respondents also expressed uncertainty as to the maker of the bag.
54
Thus, with no control respondents registering confusion, Dr. Erieksen determined that the level of consumer confusion with respect to the bag shown in Video # 1 was 20.2 percent and the level of consumer confusion with respect to the bag shown in Video # 2 was 22.3 percent.
55
Dr. Erick-sen declared that there is no statistically significant difference between these percentages.
56
e. Dr. Ericksen’s Blurring Analysis
As above with his confusion analysis and for the same reason, we review Dr. Erick-sen’s coding decisions and reasoning with respect to his blurring analysis in detail. With respect to Video # 1 and the 104 respondents who viewed that video, Dr. Erieksen counted the twenty-one respondents he classified as confused as also demonstrating blurring. He reasoned that “a respondent who was confused by the appearance of the Dooney & Bourke handbag demonstrates that there was a blurring of the distinctiveness of the Louis Vuitton trademarks.”
57
Dr. Erieksen counted an additional respondent as demonstrating blurring — but not as being confused
58
— because she responded to the Question 3 that “I couldn’t tell, it kind of looked like Gucci, but maybe it was Louis Vuitton.”
59
Dr. Erieksen reasoned that
*590
this respondent “thought that the bags were similar which therefore blurred the distinctiveness of the Louis Vuitton trademarks.”
60
Finally, Dr. Ericksen classified a further thirteen respondents as demonstrating blurring because they answered “yes” to Question 4 and named Louis Vuitton in answer to Question 4a. Though his reasoning was not explicit on this point, it appears that Dr. Ericksen reasoned that to the extent that the Dooney & Bourke bag shown in Video # 1 “call[s] to mind” the Louis Vuitton brand, it blurs the Louis Vuitton trademark. It is worthwhile to look more closely at the verbatim responses that these thirteen respondents gave to Question 4b. Two of these respondents arguably made specific reference to the repeating monogram pattern on the bag.
61
Eight made no reference to the repeating monogram pattern, but instead said that the Dooney
&
Bourke bag called to mind Louis Vuitton because of similarities in “style,” “shape,” or “colors.”
62
The remaining three resist classification — such as the respondent who named Louis Vuitton because, she said, this was the “only flashy brand that I could think of off hand.”
63
In sum, Dr. Ericksen concluded that thirty-five or 33.7 percent of the respondents viewing Video # 1 demonstrated blurring.
With respect to Video # 2 and the 103 respondents who viewed that video, Dr. Ericksen counted the twenty-three respondents he classified as confused as also demonstrating blurring. He did so for the same reasoning given above with respect to Video # 1. Dr. Ericksen classified an additional two respondents as demonstrating blurring — but not confusion — because they named Louis Vuitton in response to Question 3 but otherwise volunteered that they thought the bag shown in the video was a “fake”
64
or a “knock off.”
65
Finally, Dr. Ericksen classified an additional seven respondents as demonstrating blurring because they answered “yes” to Question 4 and named Louis Vuitton in answer to Question 4a. The verbatim responses given by these seven respondents to Question 4b are again revealing. Two respondents arguably made specific reference to the repeating monogram pattern on the bag.
66
The remaining five referred instead to similarities in “look,” “style,” or “design.”
67
In sum, Dr. Ericksen concluded
*591
that thirty-two or 31.1 percent of the respondents viewing Video # 2 demonstrated blurring.
It is not surprising that so many respondents who viewed Videos # 1 and # 2 referred to similarities in “look” or “style.” As Dr. Ericksen explained in his deposition testimony in answer to a question posed to him by Louis Vuitton’s counsel, the blurring component of his study “measured whether or not the look of the Dooney & Bourke handbags called to mind some other brand.” When Louis Vuitton’s counsel then asked what he meant by look, he answered: “Its design. Its style.” When Louis Vuitton’s counsel invited a narrow answer by asking Dr. Ericksen “[a]re you referring to the Louis Vuitton trademark pattern on the bag when you refer to look?”, Dr. Ericksen responded more broadly: “Well, I am simply referring to the overall look of the bag.”
68
With respect to the 101 respondents who viewed the control Video # 3, four stated that the Coach Patchwork Bag called to mind Louis Vuitton. Dr. Ericksen explained in his report that “[i]t seems reasonable that some respondents thought that the bag they saw was some expensive brand, and when asked what brand came to mind simply named a ‘high end’ brand they knew.”
69
In any event, Dr. Ericksen adjusted his estimates of blurring with respect to Videos # 1 and # 2 by subtracting four percent from both of them. As a result, he ultimately estimated that 29.7 percent and 27.1 of the respondents who viewed Videos # 1 and 2, respectively, demonstrated blurring.
70
2.Discussion
Dooney & Bourke argues that the Ericksen surveys, and any testimony about those surveys, is unreliable and not probative because of a number of methodological flaws including:
1. Use of an improper stimulus
2. Poor choice of a control bag
3. The confusion analysis focused on the look of the bag rather than the marks at issue in this case, and also was undermined by flawed questions and the failure to instruct respondents not to guess.
4. The dilution analysis was equally flawed by focusing on the look of the bag, and in addition it is not probative because it did not properly measure dilution as determined by the substantive law.
We turn to each of these contentions, and add a number of other concerns during the course of our analysis.
a. Dr. Ericksen Used an Improper Stimulus
“[A] survey must use the proper stimulus, one that tests for confusion by replicating marketplace conditions.”
Conopco, Inc. v. Cosmair, Inc.,
49 F.Supp.2d 242, 253 (S.D.N.Y.1999). A survey that uses a stimulus that makes no attempt to replicate how the marks are viewed by consumers in real life may be excluded on that ground alone.
See American Footwear Corp. v. General Footwear Co.,
609 F.2d 655 , 661 n. 4 (2d Cir.1979) (survey that failed even to come close to replicating “actual marketing conditions” was properly rejected by district court). A flaw in the choice of stimulus may not on itself warrant exclusion, but it certainly diminishes the reliability and the probative value of the survey and increases the risk of
*592
prejudice and jury confusion, problems which if added to other errors may warrant exclusion.
See Vista Food Exch., Inc. v. Vistar Corp.,
No. 03 Civ. 5203, 2005 WL 2371958 , at *5 (E.D.N.Y. Sept. 27, 2005) (rejecting plaintiffs survey under Rule 403 for,
inter alia,
its use of an altered form of the defendant’s mark, with the result that “the survey failed to replicate actual marketing conditions and improperly skewed the results in favor of responses indicating confusion”);
Sears, Roebuck & Co. v. Menard, Inc.
No. 01 Civ. 9843, 2003 WL 168642 (N.D.Ill. Jan. 24, 2003) (granting defendant’s motion in limine under
Dau-bert
and Rule 403 where,
inter alia,
plaintiffs survey used an altered form of defendant’s advertisement).
In evaluating the propriety of the Erick-sen Survey’s stimulus, “it is useful to be aware of the contours and limits of what [Louis] Vuitton asserts as its trademark.”
Vuitton II,
454 F.3d at 115 . Fortunately, Judge Scheindlin and the Second Circuit have repeatedly and clearly — and quite emphatically — defined these contours and limits. The Louis Vuitton Monogram Mul-ticolore Mark consists of “a design plus color, that is, the traditional Vuitton Toile pattern design — entwined LV initials with the three already described motifs — displayed in the 33 Murakami colors and printed on a white or black background.”
Vuitton II,
454 F.3d at 115 .
See also id.
at 116 (describing the mark at issue as “consisting of styled shapes and letters— the traditional Toile mark combined with the 33 Murakami colors”). Louis Vuitton may not claim exclusive trademark rights in
“all
uses of a multicolored logo against a white or black background because the use of multiple colors, when divorced from the geometric shapes and ‘LV monogram, lack secondary meaning.”
Vuitton I,
340 F.Supp.2d at 440 (emphasis added);
id.
at 421 n. 6 (“There is no proof whatsoever that anyone believes that
all
colorful, monogrammed bags emanate from Louis Vuitton.” (emphasis added));
id.
at 439 . Louis Vuitton “has made numerous statements that this is not a trade dress case,”
id.
at 438 n. 118, and may not claim protection in a “look,”
id.
at 421 .
See also Vuitton II,
454 F.3d at 115 (“Notably, plaintiff does not claim a separate trademark in the colors alone. If it were to claim such a trademark, it would be required to show that the multicolors, set on a white or black background, create a separate and distinct commercial impression, apart from the monogram motif design, and that the colors serve to indicate Vuitton as the source.”) This issue of what is protected — the multicolor logo and not the look — has been fully ventilated in this litigation.
71
In essence, then, Louis Vuitton may not claim trademark rights in
all
designs-plus-colors combination as applied to handbags, but only in its particular “traditional Vuitton Toile” plus Murakami colors combination. A competitor is free to develop its own particular combination of initials and/or designs imprinted in various colors, as Dooney & Bourke and many others have, so long as its particular combination is not so similar to Louis Vuitton’s (in both designs and colors) as to mislead consumers as to the true source of the competitor’s goods. Indeed, because Louis Vuitton does not and cannot claim trademark rights in the Murakami colors alone, a competitor is free to use precisely those colors so long as it displays those colors in imprinted initials and/or designs sufficiently dissimilar to the traditional Vuitton Toile as not to cause consumer confusion.
Cf.
J. Thomas McCarthy, 4
McCarthy on
*593
Trademarks and Unfair Competition
§ 23:52 (4th ed. 2007) (“If defendant has used plaintiffs mark in the same lettering style, color, format, etc., then the likelihood of confusion is increased, whereas if the lettering style is dissimilar, confusion is less likely.”).
The stimulus Dr. Ericksen used in his survey is improper because he did not, in Videos # 1 and # 2, expose the survey respondents both to the colors Dooney & Bourke used to imprint its designs on its It-Bags
and
to the imprinted designs themselves.
See Dreyfus Fund, Inc. v. Royal Bank of Canada,
525 F.Supp. 1108, 1117 (S.D.N.Y.1981) (“It is the impression which the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof which is important”). Instead, Videos # 1 and # 2 show the bag so far away that the interlocking “D” and “B” initials cannot be seen, in a way that appears “blatantly designed to skew the survey’s results.”
Conopco,
49 F.Supp.2d at 255 . As noted, several respondents complained of the blurriness of Video # 1 in particular. Dr. Ericksen could have used the “Close” set of videos, which featured legible images of the “D” and “B” initials, but declined to do so, despite some precedent for the use of close-ups in video stimuli.
See Lois Sportswear, U.S.A. v. Levi Strauss & Co.,
799 F.2d 867, 873 (2d Cir.1986) (admitting but ultimately giving “limited weight” to a survey in which “[t]he videotape [stimulus] allowed one of the back pockets to be seen at a distance of about six feet and was then followed by a zoom shot of the pocket.”) Ultimately, as Dr. Ericksen admitted in describing the purpose of his hybrid confusion-dilution survey, Videos # 1 and # 2 tested, if anything, the degree to which the “overall look” of the Dooney
&
Bourke It-Bags was perceived as similar to the overall look of the Louis Vuitton Murakami bags. But the record in this case could not be clear-
er: Louis Vuitton may not claim trademark rights in a “look.” This is why it is peculiar that in defending Dr. Ericksen’s choice of stimulus, Louis Vuitton cites to
Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp.,
426 F.3d 532 (2d Cir.2005), in which the Second Circuit explained that, in comparing trademarks, “it is the general overall impression that counts.”
Id.
at 538
(quoting Harold F. Ritchie, Inc. v. Chesebrough-Pond’s, Inc.,
281 F.2d 755, 762 (2d Cir.1960)). Yet the respondents to Videos # 1 and # 2 could not perceive a “general overall impression” of the Dooney
&
Bourke Multicolor Monogram Mark because they could not distinguish the initials that form a critical element of that mark — an element that was likely to have disabused the respondents of whatever confusion they may have experienced.
See, e.g., Nabisco, Inc. v. Warner-Lambert Co.,
220 F.3d 43, 46 (2d Cir.2000) (defendant’s “prominent use of its well-known house brand therefore significantly reduces, if not altogether eliminates, the likelihood that consumers will be confused as to the source of the parties’ products”). Louis Vuitton then cites to
Burlington’s
statement that:
Even if a consumer can differentiate between two products, the question is whether, and to what degree, the look of the junior user’s product calls to mind the senior user’s product. It follows that, in the context of the case before us, the handbags need not be identical, but only similar, for there to be a likelihood of confusion.
Burlington,
426 F.3d at 538 n. 3. But in
Burlington,
Louis Vuitton was claiming trade dress infringement in addition to trademark infringement,
id.
at 536 , with the result that the
Burlington
Opinion references both forms of infringement throughout.
See, e.g., id.
at 538
(quoting Fun-Damental Too, Ltd. v. Gemmy In
*594
dus. Corp.,
111 F.3d 998, 1004 (2d Cir.1997) (“[W]e must ask whether they create the same general overall impression such that a consumer who has seen plaintiffs trade dress would, upon later seeing defendant’s trade dress alone, be confused.” (alterations omitted))). And, of course, the
Burlington
language that Louis Vuitton quotes refers to the “look,” i.e., the trade dress, of a product.
Louis Vuitton falls back on the theories of initial interest and post-sale confusion to defend the lack of visibility of the logos in Videos # 1 and # 2, and Dr. Ericksen writes in his report that he did not intend to test for point-of-sale confusion. Louis Vuitton argues that, from some distance, consumers will not be able to distinguish the “D” and “B” initials, but will instead perceive a blur of colors and outlined designs, and thus, that from that distance, consumers may believe that a Dooney & Bourke It-Bag was made by Louis Vuitton. To be sure, there is some tension between, on the one hand, the “precision,”
Vuitton I,
340 F.Supp.2d at 438 , with which the record has defined the trademark at issue and, on the other, Louis Vuitton’s claims of initial interest and post-sale confusion. But Louis Vuitton seeks to take advantage of the theories underlying initial interest and post-sale confusion indirectly to assert rights in a “look.” To the extent that Louis Vuitton asserts that consumers are confused initially or in the post-sale context by the look of a multicolored bag from a distance (when the initials or designs on the bag are obscured), this confusion is being caused by the look of the bag, in which, again, Louis Vuitton has disavowed any trademark rights. Accepting Louis Vuitton’s argument would lead to the absurd premise that its Multi-colore Monogram trademark would be infringed by any bag with relatively the same color and shape of the Louis Vuitton handbag when viewed from a few blocks away — even a bag without any monograms at all. That is obviously an unacceptable result, making it critical to remember that Louis Vuitton may not in this action claim trademark rights in a “look.”
Louis Vuitton also defends Dr. Erick-sen’s choice of stimulus on the ground that if Dr. Ericksen had used a legible close-up of the Dooney & Bourke Multicolor Monogram Mark, then his survey “would not be a real world test. Rather, it would have been merely an irrelevant reading test of the type previously rejected by this Court”
72
in the context of the 2004 confusion survey conducted by Robert N. Reit-ter.
See Vuitton I,
340 F.Supp.2d at 445 . However, in that survey, a “heart shaped brass name sign” bearing the name “Doo-ney
&
Bourke” in full was prominently featured on the bag during the respondent’s initial, close-up viewing of the bag.
See id.
at 446 . Here, by contrast, a legible close-up of the Dooney & Bourke Multicolor Monogram Mark would have exposed respondents to a monogram that is at the heart of this case. This would not constitute the kind of reading test that courts traditionally reject.
Compare Franklin Resources Inc. v. Franklin Credit Mgt. Corp.,
988 F.Supp. 322, 335 (S.D.N.Y.1997) (“[I]n the court’s view, this survey tested the participants’ ability to read [the name ‘Franklin’] and little else.”)
with Conopco, Inc. v. Cosmair, Inc.,
49 F.Supp.2d 242, 254-55 (S.D.N.Y.1999) (surveys where respondents look at the mark are “helpful” when “the source of the alleged confusion is not just a name, word or phrase”).
*595
In sum, we find that the videos viewed by the respondents did not even come close to replicating the conditions under which the Dooney & Bourke Multicolor Monogram logo might be confused by consumers with the Louis Vuitton Multicolore Monogram logo. The error in methodology is especially troubling because, as stated above, Dr. Ericksen had prepared but did not show respondents a video in which the Dooney & Bourke lettering could have been seen. We believe that use of the improper stimulus renders the survey so fundamentally unreliable that the flaw is enough on its own to justify exclusion under Rules 702 and 403. At the very least, the flawed choice of stimulus significantly diminishes the reliability and probative value of the survey; and when that flaw is combined with other flaws in the methodology discussed immediately below, the survey is without doubt inadmissible.
b. Dr. Ericksen’s Control Was Flawed
A control stimulus is used in trademark surveys to “sufficiently account for factors legally irrelevant to the requisite confusion,”
Cumberland Packing Corp. v. Monsanto Co.,
32 F.Supp.2d 561, 574-75 (E.D.N.Y.1999), such as the “background noise,”
id.
at 574 , generated by the “[b]e-fuddlement” that “is part of the human condition.”
Reed-Union Corp. v. Turtle Wax, Inc.,
77 F.3d 909, 912 (7th Cir.1996) (“No matter how clear the markings, no matter how different the names, no matter how distinctive the bottles, some confusion is inevitable.”). “Many courts have required control questions in order to filter out” this background confusion.
Ironclad, L.P. v. Poly-America, Inc.,
No. 3:98 Civ. 2600, 2000 WL 1400762 at *8 (N.D.Tex. July 28, 2000). “A control product is one that is a non-infringing product which is similar to the products at issue.”
Nabisco v. Warner-Lambert Co.,
32 F.Supp.2d 690, 700 (S.D.N.Y.1999) (citation omitted); Shari Seidman Diamond,
Reference Guide on Survey Research,
in REFERENCE MANUAL ON SCIENTIFIC EVIDENCE at 258 (Federal Judicial Center 2000) (“In designing a control group study, the expert should select a stimulus for the control group that shares as many characteristics with the experimental stimulus as possible, with the key exception of the characteristic whose influence is being assessed.”). The use of an improper control may produce “an artificially low estimate of the normal degree of confusion affecting the purchase of products” bearing the mark at issue.
Reed-Union,
77 F.3d at 912 .
See also Cumberland,
32 F.Supp.2d at 575 (“Given the inadequacy of the controls, one cannot determine from the data the extent of the relevant type of confusion by indirectly approximating the background noise.”).
Despite the availability of numerous handbags produced by third-parties featuring a repeating monogram pattern, some of them multicolored, Dr. Ericksen chose as his control stimulus a bag quite dissimilar in shape and pattern to the bags shown in Videos # 1 and #2. A control stimulus closer in design to the Louis Vuitton Monogram Multicolore Mark would have gone far towards isolating the amount of confusion attributable to the similarities in Dooney & Bourke’s and Louis Vuitton’s marks, rather than to the similarities in the “look” of their bags. Instead, Dr. Ericksen chose a control stimulus that had little in common with the bags at issue in this case and what it did have in common quite likely resulted in the underreporting of background “noise.” While the Coach Patchwork Bag was multicolored in nature, it did not feature a multicolored logo pattern covering the bag. Instead, certain patches on the Coach Patchwork Bag, one of which was clearly
*596
visible in the final frames of the control video, bore a logo pattern consisting of a relatively large and legible “C” imprinted in essentially a single dark color on a light background. It is telling that while the Dooney & Bourke Multicolor Monogram Mark was not visible in Videos # 1 and #2, the Coach “C” was legible in Video #3.
The flawed choice of control bag is probably not on its own dispositive of the admissibility of the survey. The Coach bag was not a very good “noise” reducer, but it seems to have been better than no control at all.
See
Shari Seidman Diamond,
Reference Guide on Survey Research,
in MANUAL ON SCIENTIFIC EVIDENCE 2d at 258 (Federal Judicial Center 2000) (“[A] survey with an imperfect control group generally provides better information than a survey with no control group at all, but the choice of the specific control group requires some care and should influence the weight that a survey receives”).
However, while the poor choice of control is not dispositive of inadmissibility, both Rule 702 and 403 require the court to look at the cumulative effect of all of the flaws in a survey.
See Mastercard Int’l Inc. v. First Nat’l Bank of Omaha, Inc.,
No. 02 Civ. 3691, 2004 WL 326708 , at *10, 2004 U.S. Dist. Lexis 2485, at *30 (S.D.N.Y. Feb 23, 2004) (assessing the cumulative impact of flaws in survey methodology and concluding that the “flaws in the Survey diminish its relevance in predicting actual confusion ... such that the potential for the Survey’s results to prejudice unfairly, to confuse, and to mislead the jury substantially outweighs any limited relevance”). Thus the poor choice of bag is an important factor cutting toward exclusion of the 2004 survey — especially when added to the problematic stimulus, which made no attempt to allow respondents to view the lettering on the Dooney & Bourke bag.
c. Dr. Ericksen’s Confusion Analysis Is Flawed
“In order to prove actual confusion, the confusion must stem from the mark in question,”
General Motors Corp. v. Lanard Toys, Inc.
468 F.3d 405, 414 (6th Cir.2006), in this case, the Dooney
&
Bourke Multicolor Monogram Mark. Confusion caused by stimuli irrelevant to the trademark at issue should be disregarded.
See Malaco Leaf, AB v. Promotion In Motion, Inc.,
287 F.Supp.2d 355, 375 (S.D.N.Y.2003) (criticizing plaintiffs survey for attributing “the balance of the reported confusion (8%) to other indicia of confusion which are irrelevant to this Court’s trade dress analysis, including,
inter alia,
consumers’ belief that both products are the ‘same type of candy.’ ”);
Cumberland Packing Corp. v. Monsanto Co.,
32 F.Supp.2d 561, 573-75 (E.D.N.Y.1999) (determining that numerous survey respondents’ verbatim responses showed that these respondents’ confusion was caused by factors not relevant to the trade dress at issue). Furthermore, consumer confusion surveys should be designed to discourage guessing.
See Conopco, Inc. v. Cosmair, Inc.,
49 F.Supp.2d 242, 255 (criticizing survey that “was designed to exacerbate confusion by encouraging participants to guess”);
Cumberland,
32 F.Supp.2d at 575 (surveys flawed for not discouraging guessing); Jacob Jacoby,
A Critique of Rappeport’s “Litigation Surveys
— Social
‘Science’
As
Evidence,”
92
Trademark Rep.
1480 , 1486 (2002) (“[Hjighly credible and substantiated empirical evidence exists to reveal that the absence of an explicit [“Don’t Know”] response category can substantially affect survey findings, often in the order of 20 percentage points or more.”).
Cf. Schieffelin & Co. v. Jack Co. of Boca, Inc.,
850 F.Supp. 232, 240 (S.D.N.Y.1994) (“Also excluded from the 47 percent figure were an
*597
additional two respondents who mentioned DOM PÉRIGNON in a manner suggesting that they were guessing.”).
Dr. Ericksen failed to limit his confusion analysis to the confusion, if any, that was caused specifically by the Dooney & Bourke Multicolor Monogram Mark — despite the clear record in this case that Louis Vuitton may not claim trademark rights in the “look” of the Murakami bags. With respect to Video # 1, of the 21 respondents whom Dr. Ericksen classified as confused, at least eight explained that they named Louis Vuitton in response to Questions 3a or 7 because of similarities in design, colors, or overall look. With respect to Video #2, of the twenty-three respondents classified as confused, at least eight referred to similarities in design, colors, or overall look.
Furthermore, Dr. Ericksen classified as confused respondents who named Louis Vuitton in answer to Question 7. Specifically, Dr. Ericksen classified four respondents exposed to Video # 1 as confused on this basis, and three exposed to Video # 2. Yet, as Judge Scheindlin has already noted in this case, questions akin to those asked in Questions 6, 7, and 8 have been “rejected by courts because they improperly ask respondents for a legal conclusion.”
Vuitton I,
340 F.Supp.2d at 445 . Regarding a survey conducted by Dr. Jacob Jacoby, Judge Scheindlin determined that the respondent’s answers to a “needed to get permission” question “carry little weight.”
Id.
Finally, the Ericksen Survey respondents were not explicitly instructed against guessing. This is particularly disturbing in light of the number of respondents who expressed uncertainty in their verbatim answers to certain of the survey questions and in light of the degree to which the lettering of the Dooney
&
Bourke Monogram Multicolor Mark could not be seen in Videos # 1 and # 2. Because the Erick-sen Survey did not instruct against guessing, we have no way of knowing how many respondents named Louis Vuitton because, as one respondent put it, this was the “only flashy brand that I could think of off hand.”
73
See
J. Thomas McCarthy,
6 McCarthy on Trademarks and Unfair Competition,
§ 32:172 (4th ed. 2007) (“Caution must be exercised in evaluating the results of some open-ended survey questions about brands because respondents who merely guess will likely just play back the names of the best-known and dominant brands.”). Dr. Ericksen’s failure explicitly to provide a “don’t know” option is especially troubling in the context of this particular survey, in which respondents were screened according to,
inter alia,
whether they said that had bought or planned to buy a luxury handbag, and in which respondents were then essentially tested on their familiarity with luxury handbags.
See Cumberland,
32 F.Supp.2d at 576 (the average person “has a motive to figure out the purpose of the survey and will feel some pressure to ‘answer correctly.’ The position in which the respondent is placed make[s] it important explicitly to instruct the respondents not to guess.”); Jacob Jacoby,
A Critique of Rappeport’s “Litigation Surveys
— Social
‘Science’ As Evidence,
”
92 Trademark Rep.
1480 ,1485-86 (2002) (“Knowledge questions such as whether or not the respondent knows the source of a product raise issues of social presentation. The respondent does not wish to appear foolish or ill informed by giving obviously incorrect answers or admitting to not knowing something that everyone else knows. Explicitly mentioning T don’t know1 as an answer category also reduces perceived threat. These proce
*598
dures indicate that a ‘don’t know answer’ is acceptable even if it is not the most desirable answer.”)
(quoting Seymour Sudman and Norman M. Bradbum, Asking Questions 112-13
(1982) (alterations omitted))).
Though we recommend that Dr. Erick-sen’s confusion analysis be rejected in its entirety, we note that if the Court chooses (1) to disregard respondents who were classified as confused even though they made reference only to the general style of the bag and (2) to disregard respondents who were classified as confused solely because of their response to Question 7, then Dr. Ericksen’s survey would show nine respondents confused in response to Video # 1 (for a confusion rate of 9/104 or 8.7 percent) and twelve respondents confused in response to Video # 2 (for a confusion rate of 12/103 or 11.7 percent).
74
d. Dr. Ericksen’s Blurring Analysis Is Flawed
As with his confusion analysis, Dr. Ericksen’s blurring analysis is based on the use of an improper stimulus and flawed control. Moreover, Dr. Ericksen failed to limit his blurring analysis to blurring caused specifically by the Dooney & Bourke Multicolor Monogram Mark, rather than by the overall “look” of the Dooney & Bourke bags shown in Videos # 1 and # 2. For example, considering the videos together, Dr. Ericksen counted three respondents as demonstrating blurring because, in Dr. Ericksen’s words, “they thought the bags were similar.” Dr. Er-icksen counted a further thirteen respondents as demonstrating blurring when these respondents made no reference to the Dooney
&
Bourke Multicolor Monogram Mark, but instead spoke of the style, shape, color, look, or design of the bags shown to them. As with his confusion analysis, Dr. Ericksen also failed to instruct against guessing. For these reasons alone, we find Dr. Ericksen’s blurring analysis to be fatally flawed.
But beyond these previously-discussed substantial flaws in methodology in determining confusion, Dr. Ericksen made a further critical error by counting “confused” respondents as also demonstrating blurring. Dr. Ericksen’s blurring analysis proceeds from a fundamental misunderstanding of the theory of dilution by blurring. It is axiomatic in trademark doctrine that a consumer — or, as here, a survey respondent — who is confused as to source cannot also demonstrate blurring. Consumer confusion occurs when consumers perceive two similar marks as referring to the same source. Trademark dilution by blurring occurs when consumers perceive two identical (or very similar) marks as referring to
different
sources. In blurring, the harm to the senior mark is that the link between the senior mark and the senior mark’s source is “blurred” by the presence in the marketplace of the identical (or very similar) junior mark linking to the junior mark’s source.
See
J. Thomas McCarthy,
6 McCarthy on Trademarks and Unfair Competition,
§ 24.69 (4th ed. 2007) (“Dilution by blurring consists of a single mark identified by consumers with two different sources. One mark: two sources. Traditional trademark infringement involves mistakenly connecting similar marks with the
*599
same source or an affiliate source. Similar marks: one source. The ordinary situation of no dilution and no infringement is: two different marks: two different sources.” (footnote omitted)). No individual consumer can believe both that the two marks refer to the same source
and
to different sources. Because Dr. Erick-sen’s survey so fundamentally misunderstands the theory of “blurring,” McCarthy deserves to be quoted on this issue at length:
A given unauthorized use by defendant can cause confusion in some people’s minds and in other people’s minds cause dilution by blurring, but in no one person’s mind can both perceptions occur at the same time. Either a person thinks that the similarly branded goods or services come from a common source (or are connected or affiliated) or not. In that sense they are inconsistent states of customer perception. But viewing the relevant customer group en masse, while some customers may be confused as to source or connection, other customers recognize the independence of source. For the former group, the legal claim is the traditional one of a likelihood of confusion. For the latter group, the legal claim is one of dilution.
It is important to see that as legal theories, a traditional likely confusion claim and a dilution claim look to separate and distinct harms to a trademark and can be pleaded as alternative legal counts. Both infringement by a likelihood of confusion
and
dilution can coexist as legal findings only if it is proven that a significant number of customers are likely to be confused
and
that among a significant number of other customers who are not confused, the defendant’s use will illegally dilute by blurring or tarnishment, but one state of mind does not overlap with the other in one person.
McCarthy, § 24.72 (emphasis in original).
See also
RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 25, comment f (1995), Reporter’s Note (“Although in a particular case the use of another’s mark may confuse some consumers and dilute the value of the mark in the minds of other consumers, the state of mind required for confusion and dilution are distinct and inconsistent. The confused consumer believes that the actor’s use of the mark is connected with the trademark owner, and thus for such consumers the use does not dilute the distinctiveness of the mark.”). We recognize that dicta in the Second Circuit has confused the binary relationship between confusion and dilution.
Compare Nabisco, Inc. v. PF Brands, Inc.,
191 F.3d 208, 219 (2d Cir.1999) (“A junior use that confuses consumers as to which mark is which surely dilutes the distinctiveness of the senior mark.”),
with: McCarthy,
§ 24.72 (referring to the Nabisco dictum as a “misunderstanding of the nature of ‘dilution’ by blurring.”). Nevertheless, the basic logic of the theory of dilution by blurring requires that any consumer — or survey respondent — who is confused cannot also demonstrate blurring. To the extent that the respondents whom Dr. Ericksen classified as “confused” make up a large majority of those whom he also counted as demonstrating blurring, we find this to be an additional independent basis to reject Dr. Ericksen’s survey results and testimony with respect to blurring.
3. Summary on Admissibility of Testimony, Survey, and Expert Report of Dr. Ericksen
We conclude that Dr. Ericksen’s survey, when offered to prove confusion and especially when offered to prove dilution, is inadmissible in its entirety under Rules 702 and 403. Accordingly, Dr. Ericksen’s expert report should be excluded and he
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should not be permitted to testify to any aspect of his survey.
B. Dr. Jacob Jacoby
Louis Vuitton retained Dr. Jacob Jaco-by
75
to conduct a trademark confusion survey (the “Jacoby Confusion Survey”),
76
which Judge Scheindlin has previously reviewed,
Vuitton I,
340 F.Supp.2d at 442-45 , and a trademark dilution survey (the “Jacoby Dilution Survey”),
77
which Judge Scheindlin has also previously discussed,
id.
at. 449-51. The Jacoby Confusion Survey consisted of a mall intercept survey in which respondents were shown an advertisement for Louis Vuitton’s Murakami bags and then exposed to a Dooney & Bourke It-Bag and two control bags made by third-party manufacturers.
78
The respondent was then asked a series of questions designed to elicit whether the respondent believed that any of the bags placed before her (1) “came from the same company whose bag was shown in the ad,” (2) was “put out” by a company that has “some business relationship” with the company whose bag was shown in the advertisement, or (3) came from a company that needed to “get permission or a license from the company whose bags were shown in the ad.”
79
Based on the respondents’ answers to these and related follow-up questions, and taking into account their responses to the control bags, Dr. Jacoby found that a net of eleven percent of the respondents incorrectly believed that the IL-Bag “came from” Louis Vuitton, a net of seven percent believed that the It-Bag was “put out” by a company that has “some business relationship” with Louis Vuitton, and a net of seven percent believed that the Ib-Bag came from a company that needed to obtain permission or a license from Louis Vuitton.
80
The Jacoby Dilution Survey consisted of a mall intercept survey in which ninety-six respondents were shown two It-Bags, two Murakami bags, and a control bag in the form of a Dooney & Bourke bag bearing the interlocking initials “D” and “B” imprinted in red on a red background. While being shown these bags, the respondents were asked a lengthy series of questions designed, in essence, to elicit how knowledge of the availability in the marketplace of the It-Bags influenced the respondent’s perception of the Murakami bags and vice-versa. Dr. Jacoby found that twenty-three percent of the respondents “reported” “feeling one or more” of the following “aspects of dilution”
81
for
*601
reasons relating specifically to the IN Bags’ use of the Dooney & Bourke Multicolor Monogram Mark: nineteen percent reported a “negative reaction” to the Mu-rakami bags or otherwise thought the IN Bags were a “copy” of the Murakami bags; one percent were “less likely to buy” the Murakami bags; five percent were “more likely to buy” the INBags; fourteen percent felt the Murakami bags were “less distinctive;” three percent felt they were “less valuable;” and seven percent felt they were “less exclusive.”
82
With respect to the Jacoby Confusion Study, we find that there are very serious discrepancies between that Study Report’s account of the conduct of the survey and the survey that was actually conducted, as Dr. Jacoby described it in his deposition testimony — discrepancies that Judge Scheindlin has already noted.
Vuitton I,
340 F.Supp.2d at 444 . The Jacoby Confusion Study Report did not accurately report the data collected and moreover the Jacoby Confusion Study was not conducted in a manner to ensure objectivity.
See
MANUAL FOR COMPLEX LITIGATION, FOURTH § 11:493 (Federal Judicial Center 2004) (factors relevant to determining whether a survey “conform[s] to generally recognized statistical standards” include whether “the data gathered were accurately reported” and whether “the process was conducted so as to ensure objectivity.”). Because of the seriousness of these discrepancies, as well as other significant methodological flaws in the survey, we will devote relatively brief attention to it. With respect to the Jacoby Dilution Survey, we find that the survey is not relevant to the issue of dilution and that it suffers from several serious methodological flaws, rendering it inadmissible under Rules 702 and 403. We therefore recommend that Dr. Jacoby’s testimony be excluded in its entirety and that his reports if offered be excluded as well.
1. The Jacoby Confusion Survey
In its initial overview of the survey’s “principal findings and conclusions,” the Jacoby Confusion Study Report describes the survey process as follows:
After the respondent indicated she was finished looking at the advertisement, it was removed from view. Next, the respondent was shown a set of three bags, one of the allegedly infringing Dooney bags and two “control” bags (a Coach bag and either an Etienne Aigner or Guess bag). With these bags in view, the respondent was then asked a series of questions designed to determine the degree to which (if at all) she was confused either as to source, affiliation or connection, and/or sponsorship or approval.
After eliminating two respondent data sheets that failed the quality checks at check-in and another respondent data sheet that failed the post-survey validation, data analysis was confined to the remaining 109 respondent data sheets.
83
The Jacoby Confusion Study Report subsequently states: “To be able to show that the effects obtained were not due to having used a single, perhaps atypical, Dooney bag, respondents were shown one of two Dooney Test bags. Approximately half the respondents were shown Dooney’s large ‘It Bag’ Wristlet; the other half was shown Dooney’s ‘It Bag’ ID/coin purse.”
84
The clear implication of this statement is that the survey used two bags as stimuli, with the “Wristlet” bag exposed to approximately half of the 109 respondents, and
*602
the “ID/coin purse” bag shown to the other half. Notably, the report does not provide in an appendix any photographs of the Dooney & Bourke bags used as stimuli in the survey, though it does provide a photograph of the advertisement used to prime the respondents. Thus, the reader of the report has no way of knowing, for example, what the background color of the “Wristlet” bag was or what the background color of the “ID/coin purse” bag was. Also notable is that the Jacoby Confusion Study does not specify what proportion of respondents exposed to the “Wrist-let” were coded as confused, nor does it specify what proportion of the respondents exposed to the “ID/coin purse” were coded as confused. Instead, the report sets forth a table that purports to summarize the survey’s results with respect to the 109 respondents surveyed.
85
This table contains a column headed simply “D
&
B.” The clear implication of this heading is that it refers to results obtained with respect to both the “Wristlet” and the “ID/coin purse,” and only the “Wristlet” and “ID/coin purse.”
As Judge Scheindlin has recognized,
Vuitton I,
340 F.Supp.2d at 444 , the Jaco-by Confusion Survey Report does not, in fact, describe the actual survey that was undertaken. As Judge Scheindlin explained:
Dr. Jacoby testified that the survey was conducted in two parts. During phase one, fifty-eight respondents were interviewed, and shown one of four different Dooney
&
Bourke bags or accessories. A percentage of the respondents expressed confusion as to each of the four bags as follows: 10 % (Bag 33); 7% (Bag 34); 6% (Bag 35); 5% (Bag 36). During phase two, fifty-one additional interviews were performed, and rather than being shown four bags, respondents were shown only one of the four Dooney & Bourke items-Bag 33. Dr. Jacoby explained that, although phase two of the study should have been run with two bags, the white and black wristlets, due to a “mistake” on the part of Dr. Kaplan (who was responsible for the interview process), only the white wristlet was used.
Id.
Louis Vuitton offers no explanation for why the report failed to state 1) that the survey was conducted in two phases, the first of which used
four
different IL-Bags, or 2) that Dr. Kaplan made a “mistake” in his presentation of the survey stimuli to the survey respondents, so that in the second phase only
one
Dooney
&
Bourke bag was used — the one that happened to yield the highest confusion level in the first phase of the survey.
See
Shari Seidman Diamond,
Reference Guide on Survey Research,
in REFERENCE MANUAL ON SCIENTIFIC EVIDENCE at 270 (Federal Judicial Center 2000) (“The completeness of the survey report is one indicator of the trustworthiness of the survey and the professionalism of the expert who is presenting the details of the survey.”); and
id.
(noting that a survey report should provide in detail all visual exhibits used and a description of special scoring).
In his deposition testimony, Dr. Jacoby offers an explanation for the disjointed nature of the survey: the survey initially took the form of an extended questionnaire that sought to test both for confusion and dilution, but after it became apparent that respondents were fatigued by the number of questions, the survey was broken into a confusion component and a dilution component. Dr. Jacoby then retained the confusion-related data he had already collected with respect to the fifty-eight respondents interviewed up to that time, and sought to
*603
interview an additional set of respondents to achieve a sufficient sample size. This may be a reasonable explanation for the peculiar conduct of the survey itself, but the Jacoby Confusion Survey Report alludes to none of this, and appears to have been written in a deliberately ambiguous manner.
86
More significantly, the Jacoby Confusion Survey Report’s failure to explicate the survey’s results with respect to “Bag 35” and “Bag 36” and the survey’s failure to continue to use those stimuli, as well as Bag 34, very strongly suggest that the survey was not reported in an accurate manner and that the survey was not conducted in an objective manner. We therefore conclude that Louis Vuitton has not proved that the Jacoby Confusion Survey was produced through a reliable application of reliable methods, and accordingly the Survey should be excluded under Rule 702.
87
Furthermore, because of the serious questions surrounding the implementation of survey methods and the reporting of its results, the Jacoby Confusion Study’s probative value, if any, is substantially outweighed by its potential to mislead the jury and to create unfair prejudice. Therefore it should be excluded under Rule 403 as well.
See Sterling Drug, Inc. v. Bayer AG,
14 F.3d 733, 741 (2d Cir.1994) (“To be probative on the issue of confusion, a survey must have been fairly prepared and its results directed to the relevant issues.” (citation omitted)).
While we find that the above concerns are alone sufficient to require the exclusion of the Jacoby Confusion Survey, we note other fundamental problems with the survey that, taken together with the problems of disjointed implementation and ambiguous reports, leave no doubt that the cumulative errors render the survey inadmissible.
See Mastercard Int’l Inc. v. First Nat’l Bank of Omaha,
No, 02 Civ. 3691, 2004 WL 326708 , at *30 (S.D.N.Y. Feb.23, 2004) (court excludes survey on the basis of cumulative errors, even if each error considered alone might be thought a question of weight). First, the survey improperly defined its universe. The Jacoby Confusion Survey Report states that “the relevant population was defined as females who were 16 years of age or older and were potential Louis Vuitton or Dooney & Bourke customers (or potential customers of both).” The report continues:
To be classified as a potential Louis Vuitton customer, in the past year or two, the respondent had to have bought a handbag costing more than $350, or a purse or wallet costing more than $100, or say she was likely to do so in the next year or so. To be classified as a potential Dooney & Bourke customer, in the past year or two, the respondent had to have bought a handbag costing $100 to $350, or a purse or wallet costing $50 to $100, or say she was likely to do so in the next year or so. Some respondents qualified for both groups.
88
*604
As Judge Scheindlin has previously noted,
Vuitton I,
340 F.Supp.2d at 443 , the qualifying questions used to filter for this universe employed the ambiguous term “purse,” which is synonymous with “handbag.”
See id.
Furthermore, an unknown proportion of respondents may have qualified only because they had bought a “handbag” or “purse or wallet” costing more than the required amount “in the past year or two,” but were not likely to do so in “the next year or so.” It is well-established that only potential future purchasers, not past purchasers, are relevant to a confusion study.
See Universal City Studios, Inc. v. Nintendo Co., Ltd.,
746 F.2d 112, 118 (2d Cir.1984) (“[T]he survey utilized an improper universe in that it was conducted among individuals who had already purchased or leased Donkey Kong machines rather than those who were contemplating a purchase or lease.”);
American Footwear Corp. v. General Footwear Co.,
609 F.2d 655, 660-661, n. 4 (2d Cir.1979) (holding that a survey was defective where survey participants, although former purchasers of the product at issue, did not necessarily have any present purchasing interest in the particular matter being surveyed);
Jordache Enterprises, Inc. v. Levi Strauss & Co.,
841 F.Supp. 506, 518-519 (S.D.N.Y.1993) (survey that “interviewed participants who had purchased or worn jeans within the past six months” but “did not inquire as to whether those participants intended to purchase jeans in the future ... does not necessarily include potential purchasers of jeans” and “does not constitute acceptable evidence of actual confusion”). Consequently, the Jacoby Confusion Survey failed in establishing the proper universe of respondents.
Second, the Jacoby Confusion Survey asked improper questions, and of the respondents whom the survey classified as confused, more than half were classified as confused based on their responses to these questions.
89
The survey’s second main question consisted of the following:
If you have any thoughts about it, do you think the company that put out this bag is not part of and has no business relationship with the company whose bags were shown in the ad, or do you think the company that put out this bag is part of, or does have some business relationship with the company whose bags were shown in the ad?
The phrase “some business relationship” is highly ambiguous.
See
Shari Seidman Diamond,
Reference Guide on Survey Research
in MANUAL ON SCIENTIFIC EVIDENCE 2d at 248 (Federal Judicial Center 2000) (“When unclear questions are included in a survey, they may threaten the validity of the survey by systematically distorting responses if respondents are misled in a particular direction, or by inflating random error if respondents guess because they do not understand the question. If the crucial question is sufficiently ambiguous or unclear, it may be the basis for rejecting the survey.”). Notably, if the respondent answered yes to this question, the follow-up question did not ask about the nature of this “business relationship,” but rather asked about the bag: “What, in particular, makes you think that bag number [ ] come from a company that is part of, or has some business relationship with, the company whose bags were shown in the ad?” Thus, the respondents’ understanding of the term “business relationship” cannot be evaluated.
The survey’s third main question consisted of the following:
If you have any thoughts on this, do you think that, in order to come out with this bag the company did not need to get
*605
permission or a license from the company whose bags were shown in the ad, or do you think the company that put out this bag did need to get permission or a license from the company whose bags were shown in the ad?
As Judge Scheindlin has noted, this kind of question has been criticized by courts because it “improperly ask[s] respondents for a legal conclusion.”
Vuitton I,
340 F.Supp.2d at 445 . Indeed, the question asked the respondents the very question that this litigation seeks to answer.
Finally, the Jacoby Confusion Survey classified several respondents as confused based on factors not relevant to the marks at issue. For example, one respondent was classified as confused based on her identification of the It-Bag as “[coming] from the same company whose bag was shown in the ad.” Yet when asked what made her say so, the respondent responded: “white background, it has capital letter initials.”
90
Two other respondents identified the It-Bag in response to the survey’s second main question. When asked what made them say so, one referred only to “the initial on the bag”
91
while the other responded: “The style is familiar because of the lettering.”
92
But Louis Vuitton has not argued that the mere interlocking initials “D” and “B” infringe on any Louis Vuitton mark. Rat

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/1692273. Public record. Not legal advice.