Free Motion in Limine - District Court of Colorado - Colorado

Case 1:01-cv-00600-JLK-MEH

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Filed 06/19/2006

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO

Civil Action No. 01-cv-0600-JLK-MEH GO PRO, LTD., a Georgia limited liability company, Plaintiff, v. RIVER GRAPHICS, INC., a Colorado corporation, Defendant.

GO PRO LTD.'S MOTION IN LIMINE TO EXCLUDE RIVER GRAPHICS, INC.'S: (1) REFERENCE TO GO PRO'S SUPPLEMENTAL TRADEMARK REGISTRATION; (2) ALL IRRELEVANT USE OF "HERE FISHY, FISHY" BY THIRD PARTIES; AND (3) ALL EVIDENCE CONCERNING ALLEGED DELAY IN BRINGING ACTION

Plaintiff Go Pro, Ltd. ("Go Pro"), respectfully moves the Court to exclude irrelevant, prejudicial, misleading and confusing evidence under Fed. R. Evid. 402 and 403 as outlined below: (1) The Court's April 5, 2006 Order (Document #44) held that there were no genuine issues of material fact related to Go Pro's trademark infringement claim, which was based upon Go Pro's Supplemental Registration. Go Pro's remaining claims are not based on the Supplemental Registration. Go Pro thus believes that the Supplemental Registration is irrelevant and its introduction into evidence can only confuse or mislead the jury. Defendant River Graphics, Inc. ("River Graphics") seeks to introduce alleged third-party use of "HERE FISHY, FISHY" in connection with unrelated goods and services. The evidence goes to no issue in the case and should be excluded. River Graphics claims, based solely upon Go Pro's 27 month delay in bringing this action, that Go Pro's claims are barred by estoppel, waiver, acquiescence, and/or laches. River Graphics does not have evidence to support its affirmative defenses. Accordingly, introduction of alleged delay evidence is a waste of judicial resources, confusing and should be excluded.

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I.

LEGAL STANDARD

Irrelevant evidence is inadmissible. Fed. R. Evid. 402. Additionally, the Court has the discretion to exclude evidence when "its probative value is substantially outweighed by the danger of unfair prejudice, confusion of the issues, or misleading the jury." Fed R. Evid. 403. II. ARGUMENT A. The Supplemental Registration Is Not Relevant To The Remaining Claims At Issue

Go Pro sued River Graphics for infringement of its Supplemental Registration, unfair competition for unauthorized use of "HERE FISHY, FISHY," and misappropriation of its business values. The Court recently issued an Order granting partial summary judgment, stating that Go Pro had "failed to raise a triable issue of material fact with regard to its infringement claim." As such, Go Pro's Supplemental Registration is not relevant nor required to resolve the remaining issues at trial. It is appropriate for the Court to exclude any reference or introduction of evidence of the Supplemental Registration for lack of relevance under Fed. R. Evid. 402. B. Evidence Of Third-Party Use Of A Trademark Must Be On Similar Goods To Be Relevant

Go Pro's "HERE FISHY, FISHY" mark is used on and in connection with embroidered shirts and headwear. In summary judgment briefing and the pretrial order, River Graphics argues that third-party use of "HERE FISHY, FISHY" on unrelated goods and/or services tends to prove that "HERE FISHY, FISHY" is not available as a protectable trademark to Go Pro. As an example, River Graphics references Bert and Ernie's use of "HERE FISHY, FISHY" on Sesame Street and similar usages by actors performing in a Monty Python show. Such unrelated third-party use is not relevant as a matter of law. 2

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Third-party use has only been held to be relevant to trademark creation and strength issues when the third-party use is on similar goods and services. Big Dog Motorcycles, LLC v. Big Dog Holdings, Inc., 402 F. Supp. 2d 1312, 1337 (D. Kan. 2005), citing, T. McCarthy, McCarthy on Trademarks and Unfair Competition § 11:88 (2004); see also, Universal Money Centers, Inc. v. Am. Tel. & Tel. Co., 22 F.3d 1527, 1533 (10th Cir. 1994). The third-party use that River Graphics seeks to introduce at trial is not on goods similar to those sold by Go Pro is not relevant evidence, and thus, should be excluded. C. River Graphics Cannot Meet Its Burden Of Proof For Its Affirmative Defenses Thus Any Introduction Of A Delay By Go Pro Is Irrelevant And Prejudicial

Go Pro sent a cease and desist letter to River Graphics in January 1999 regarding the issues currently being litigated, but did not initiate this action until April 2001. River Graphics contends that this 27 month delay in filing suit is inexcusable and should preclude Go Pro's claim for lost profits. The affirmative defense of laches requires River Graphics to prove two elements: (1) inexcusable delay in instituting suit; and (2) resulting prejudice to River Graphics. See Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, 523 (10th Cir. 1987). Estoppel requires the same elements. See McCarthy on Trademarks and Unfair Competition § 31:2 (2006). Acquiescence can only be shown if Go Pro expressly or impliedly advised River Graphics that it would not assert its trademark rights against River Graphics. Creative Gifts, Inc. v. UFO, 235 F.3d 540, 547-48 (10th Cir. 2000). Lastly, "waiver requires evidence of a voluntary and intentional relinquishment or abandonment of a known right. . . .". Minn. Specialty Crops, Inc. v. Minn. Wild Hockey Club, LP, No. 00-2317, 2002 U.S. Dist. LEXIS 13991, at *32 (D. Minn. 2002), quoting, Haghighi v. Russian-American Broad. Co., 173 F.3d 1086, 1088 (8th Cir. 1999). River Graphics has failed to 3

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allege in the final pretrial order any prejudice resulting from Go Pro's alleged delay or any affirmative act of Go Pro which River Graphics reasonably relied upon or a voluntary and intentional relinquishment of Go Pro's rights. Obviously, River Graphics cannot prove its affirmative defenses and any introduction of evidence of delay is irrelevant, prejudicial and a waste of judicial resources. III. CONCLUSION

In view of the foregoing, Go Pro respectfully requests the Court to exclude the discussion and/or the introduction of all evidence related to Go Pro's Supplemental Registration, irrelevant third-party use of "HERE FISHY, FISHY" and reference to an alleged 27 month delay in bringing this action because such evidence is of no probative value, prejudicial to Go Pro, and likely to cause confusion or mislead the jury. A proposed Order is attached for the Court's convenience and use.

Respectfully submitted,

Dated: June 19, 2006

By:

s/ Paul S. Cha Robert R. Brunelli, Esq. [email protected] Paul S. Cha, Esq. [email protected] SHERIDAN ROSS P.C. 1560 Broadway, Suite 1200 Denver, Colorado 80202-5141 Telephone: 303-863-9700 Facsimile: 303-863-0223 E-mail: [email protected] ATTORNEYS FOR PLAINTIFF GO PRO, LTD.

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CERTIFICATE OF SERVICE

I hereby certify that on June 19, 2006, I electronically filed the foregoing with the Clerk of Court using the CM/ECF system which will send notification of such filing to the following e-mail addresses: Franklin D. Patterson, Esq. [email protected] William P. Boyle, Esq. [email protected] PATTERSON, NUSS & SEYMOUR, P.C. 304 Inverness Way South, Suite 305 Englewood, Colorado 80112 Telephone: 303-741-4539 Facsimile: 303-741-5043 ATTORNEYS FOR DEFENDANT RIVER GRAPHICS, INC.

s/ Kristin M. Heil Kristin M. Heil Assistant to Paul S. Cha, Esq. SHERIDAN ROSS P.C. 1560 Broadway, Suite 1200 Denver, CO 80202-5141 Telephone: 303-863-9700 Facsimile: 303-863-0223 E-mail: [email protected] [email protected]

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