FILED
NOT FOR PUBLICATION
MAR 24 2017
UNITED STATES COURT OF APPEALS MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS
FOR THE NINTH CIRCUIT
SOLID 21, INC., a Nevada Corporation No. 15-56036
headquarted in Los Angeles, California,
D.C. No.
Plaintiff-counter- 2:11-cv-00468-DMG-JC
defendant-Appellant,
v. MEMORANDUM*
HUBLOT OF AMERICA, a Florida
Corporation; et al.,
Defendants-counter-
claimants-Appellees.
Appeal from the United States District Court
for the Central District of California
Dolly M. Gee, District Judge, Presiding
Argued and Submitted March 8, 2017
Pasadena, California
Before: PREGERSON, PAEZ, and CHRISTEN, Circuit Judges.
Solid 21, Inc. (“Solid 21”) appeals the district court’s order granting
summary judgment in favor of Hublot of America and its affiliates (collectively
*
This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
“Hublot”). The district court concluded that no genuine issue of material fact
existed regarding whether Solid 21’s mark “red gold” is invalid because it is
generic. We have jurisdiction under 28 U.S.C. § 1291. We review the district
court’s evidentiary rulings for abuse of discretion, Estate of Barabin v.
AstenJohnson, Inc., 740 F.3d 457, 462 (9th Cir. 2014), and “review summary
judgments de novo,” Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d 1108,
1113 (9th Cir. 2010). For the following reasons, we reverse and remand for further
proceedings.
1. The district court excluded a portion of the declaration of Solid 21’s
expert linguist, Dr. Ronald Butters, as going to the ultimate issue. In a civil case,
“[a]n opinion is not objectionable just because it embraces an ultimate issue.” Fed.
R. Evid. 704(a). “That said, an expert witness cannot give an opinion as to her
legal conclusion, i.e., an opinion on an ultimate issue of law.” Nationwide Transp.
Fin. v. Cass Info. Sys., Inc., 523 F.3d 1051, 1058 (9th Cir. 2008) (quoting
Hangarter v. Provident Life & Accident Ins. Co., 373 F.3d 998, 1016 (9th Cir.
2004)).
The district court excluded the portions of Dr. Butters’s declaration that
related to anything other than dictionary definitions of “red gold.” This included
his testimony regarding the associations that ordinary English speakers have with
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the term “red gold.” The district court did not explain why this testimony was
unhelpful or constituted nothing more than a legal conclusion. The exclusion of
this testimony prejudiced Solid 21 by depriving it of evidence related to the
primary significance that consumers assign Solid 21’s mark. See Kellogg Co. v.
Nat’l Biscuit Co., 305 U.S. 111, 118 (1938) (articulating the test for genericness as
“the primary significance of the term in the minds of the consuming public”). The
district court abused its discretion by excluding Dr. Butters’s linguistic opinions as
going to the ultimate issue.
2. The district court excluded Solid 21’s proffered consumer declarations
under Federal Rule of Civil Procedure 37(c) because Solid 21 did not disclose the
witnesses in its initial disclosures or before filing its opposition to summary
judgment. In order for Rule 37(c) to bar the introduction of evidence, a party’s
failure to disclose must prejudice the opposing party. See R & R Sails, Inc. v. Ins.
Co. of Pa., 673 F.3d 1240, 1247 (9th Cir. 2012). Consumer perception goes to the
heart of the genericness inquiry, see Yellow Cab Co. of Sacramento v. Yellow Cab
of Elk Grove, Inc., 419 F.3d 925, 929 (9th Cir. 2005), so the exclusion of consumer
declarations put a substantial hurdle in the way of Solid 21’s effort to mount a
successful opposition to summary judgment. Hublot could have cured any
prejudice by taking the opportunity to conduct additional discovery, including
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deposing the witnesses if it wished, and supplementing its motion for summary
judgment if necessary.
The district court’s other stated reasons for excluding the declarations do not
justify its ruling. The consumer declarations offered by Solid 21 did not relate
solely to secondary meaning. Consumers Donald Anderson, Kelly Trahan, Lucille
Bilyeyev, Orville “Shaggy” Burrell, Tyson Beckford, Samuel Appiah, Jermaine
Coleman, Aaron Goodwin, and Robert Filotei all stated that they associate “red
gold” with Chris Aire and Solid 21. Former Solid 21 employee Mary Davis
described her understanding that “red gold” had not been used to describe watches
before Solid 21 started using the term. This is the type of evidence that courts have
admitted for purposes of determining genericness. See Self-Realization Fellowship
Church v. Ananda Church of Self-Realization, 59 F.3d 902, 909 (9th Cir. 1995)
(considering declarations of “‘buyers’ relevant to the genericness analysis”); see
also Zobmondo, 602 F.3d at 1120 (concluding that expert testimony that “Would
You Rather . . . ?” had not previously been used to describe a board game was
relevant to whether the mark was widely understood by consumers to refer to the
type of game in question).
Additionally, the district court stated that the declarations all came “from
employees, former colleagues, or individuals who have known Aire[] for a ‘long
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time,’” and concluded that this sort of evidence was irrelevant under Ninth Circuit
case law. See Self-Realization, 59 F.3d at 910 (“Trademark law is skeptical of the
ability of an associate of a trademark holder to transcend personal biases to give an
impartial account of the value of the holder’s mark.”).
But only one witness was a former Solid 21 employee, and none of the
declarations actually described a close personal relationship with Aire. The
witness testimony here is unlike the testimony excluded in Self-Realization, which
came from only the plaintiff’s “employees and wholesalers.” Id. Furthermore, the
court in Self-Realization concluded that the declarations had “little probative
value,” not that they were inadmissible. Id. Accordingly, the district court abused
its discretion by excluding the consumer declarations.
3. With this additional evidence, Solid 21 raised a triable issue of material
fact concerning whether consumers understand “red gold” to refer only to a
particular producer’s goods (in which case the term is not generic) or whether
consumers understand the term to refer to the goods themselves (in which case the
term is generic). See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.,
408 F.3d 596, 604 (9th Cir. 2005).
Appellees shall bear costs on appeal.
REVERSED AND REMANDED.
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