Free Proposed Jury Instructions - District Court of Colorado - Colorado

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

Document 50

Filed 05/25/2006

Page 1 of 82

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.

PROPOSED JURY INSTRUCTIONS

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

Document 50

Filed 05/25/2006

Page 2 of 82

INDEX Section 1.0 General Instructions 5

Instruction No. 1.1 Description of the Case Instruction No. 1.2 Status of a Corporation Instruction No. 1.3 Knowledge of a Corporation Instruction No. 1.4 Scope of Authority - Defined Instruction No. 1.5 Apparent Authority - Definition and Effect Instruction No. 1.6 Evidence - General Instruction No. 1.7 Evidence - Direct and Circumstantial Instruction No. 1.8 Filing of Lawsuit and Pleadings Instruction No. 1.9 Credibility of Witnesses Instruction No. 1.10 Single Witness Instruction No. 1.11 Burden of Proof Instruction No. 1.12 Juror Conduct Section 2.0 Instructions For Use During Trial 25

Instruction No. 2.1 Consideration of Deposition Testimony Instruction No. 2.2 Charts and Summaries Section 3.0 Substantive Instructions 28

Instruction No. 3.1 Policy of Trademarks

2

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

Document 50

Filed 05/25/2006

Page 3 of 82

Defendant's Objection to Plaintiff Tendered Jury Instruction No. 3.1 Plaintiff's Reply to Defendant's Objections to Jury Instruction No. 3.1 Instruction No. 3.2 Definition of a Trademark and Right It Confers Defendant's Objection to Plaintiff Tendered Jury Instruction No. 3.2 Plaintiff's Reply to Defendant's Objections to Jury Instruction No. 3.2 Instruction No. 3.3 Trademark Registration Defendant's Objection to Plaintiff Tendered Jury Instruction No. 3.3 Plaintiff's Reply to Defendant's Objections to Jury Instruction No. 3.3 Plaintiff's Instruction No. 3.4 Defendant's Instruction No 3.4 The Parties' Contentions The Parties' Contentions/Unfair Competition

Parties' Statement on Jury Instruction No. 3.4 Plaintiff's Instruction No. 3.5 Defendant's Instruction No. 3.5 Likelihood of Confusion - Factors Unfair Competition - Standard

Parties' Statement on Jury Instruction No. 3.5 Instruction No. 3.6 Spectrum of Mark - Conceptual Strength Instruction No. 3.7 Secondary Meaning Instruction No. 3.8 Misappropriation of Business Values - Colorado Law Instruction No. 3.9 Damages Instruction No. 3.10 Damages

3

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

Document 50

Filed 05/25/2006

Page 4 of 82

Plaintiff's Instruction No. 3.12

Damages - Colorado Law

Defendant's Objection to Plaintiff Tendered Jury Instruction No. 3.12 Defendant's Instruction No. 3.12 Punitive Damages Plaintiff's Objections to Defendant Tendered Jury Instruction No. 3.12 Instruction No. 3.13 Damages - Not to be Inferred/Difficulty or Uncertainty Instruction No. 3.14 Unreasonable Delay Plaintiff's Objection to Defendant Tendered Jury Instruction No. 3.14 Section 4.0 Final Instructions 63

Instruction No. 4.1 Jury Deliberations - General Instructions Instruction No. 4.2 Jury Deliberations Instruction No. 4.3 Jury - The Deliberation Process Instruction No. 4.4 Communication with the Judge Instruction No. 4.5 Unanimous Agreement with Jury Verdict Form Section 5.0 Jury Verdict Form 74

Plaintiff's Proposed Jury Verdict Form Defendant's Proposed Jury Verdict Form Plaintiff's Objections to Defendant's Proposed Jury Verdict Form

4

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

Document 50

Filed 05/25/2006

Page 5 of 82

SECTION 1.0 GENERAL INSTRUCTIONS

5

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

Document 50

Filed 05/25/2006

Page 6 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 1.1 DESCRIPTION OF THE CASE In order to help you understand this case, I will give you a brief summary of the claims and defenses. The case you are about to hear involves an action brought by plaintiff Go Pro, Ltd., which I shall refer to as Go Pro, against defendant River Graphics, Inc., which I shall refer to as River Graphics. Go Pro claims it has marketed and sold shirts and caps under and in connection with "HERE FISHY, FISHY" since at least February 1997. In September of 1997, Go Pro introduced its line of embroidered "HERE FISHY, FISHY" clothing to the Rocky Mountain region sporting goods market place by attending that years Denver Fly Fishing Show. In addition to its trademark, Go Pro uses a number of slogans, including, "BITE ME"; "COME TO PAPPA"; "FISH FEAR ME"; "WOMEN LOVE ME FISH FEAR ME"; "WORK SUCKS GONE FISHIN" and fishing imagery on its goods. Prior to the Summer of 1998, Stan Pomery of River & Stream purchased "HERE FISHY, FISHY" products from Go Pro. Mr. Pomery met with representatives of River Graphics requesting that it manufacture embroidered clothing products which included the "HERE FISHY, FISHY" trademark. River Graphics complied with Mr. Pomery's request and

6

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

Document 50

Filed 05/25/2006

Page 7 of 82

began producing copies of Go Pro's "HERE FISHY, FISHY" shirts and caps. River Graphics first began selling clothing embroidered with "HERE FISHY, FISHY" in approximately July of 1998. After River Graphics began producing embroidered "HERE FISHY, FISHY" clothing from River & Stream, Mr. Pomery discontinued all purchase of clothing from Go Pro. Go Pro claims that River Graphics has engaged in unfair competition in violation of federal and Colorado common law by unauthorized use of "HERE FISHY, FISHY" on clothing products. Go Pro also claims that River Graphics has misappropriated its business values in violation of Colorado laws by its unauthorized use of "HERE FISHY, FISHY" and other Go Pro slogans on clothing products. River Graphics asserts that prior to July 1998 the phrase "Here Fishy, Fishy" to which Go Pro claims common law trademark protection was used solely ornamentally and that the use of said phrase had not gained secondary meaning as to origin or in connection with Go Pro. River Graphics asserts that Go Pro's claim to exclusive use of this and other phrases that are in the common usage of the general public, including "Bite Me", "Come to Papa", "Fish Fear Me", "Women Love Me, Fish Fear Me", "Work Sucks Gone Fishing", etc. are without basis and River Graphics denies that Go Pro has exclusive rights in these phrases or in the imagery commonly associated with them. River Graphics claims use of the phrase and

7

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

Document 50

Filed 05/25/2006

Page 8 of 82

common imagery in a fair manner to take advantage of the popularity of the saying, and not in a way that is likely to cause confusion, mistake or deception. Finally, River Graphics asserts the affirmative defense that Go Pro's delay in bringing this lawsuit was unreasonable. The parties have agreed to certain facts. You must treat these agreed upon, or stipulated facts as having been proved. The facts on which both sides have agreed are as follows:

1. 2. 3.

Plaintiff Go Pro, Ltd. is a Georgia limited liability company; Defendant River Graphics, Inc. is a Colorado corporation; Go Pro began embroidering the phrase "HERE FISHY, FISHY" on shirts and caps and marketed them for retail in their 1997 catalogue under "Design No. 144." Go Pro begin distributing the catalog to existing and potential customers in January 1997. The first commercial order for products labeled with "HERE FISHY, FISHY" from Go Pro was filled in mid-February 1997. River Graphics has advertised, distributed and sold and continues to advertise, distribute, sell, all in interstate commerce, embroidered clothing, adorned with the phrase "HERE FISHY, FISHY". River Graphics attended the 1997 Denver Fly Fishing Show. Go Pro had actual knowledge of River Graphic's use of the phrase "HERE FISHY, FISHY" 27 months prior to bringing suit.

4.

5.

6.

7. 8.

8

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

Document 50

Filed 05/25/2006

Page 9 of 82

Kane, J., Standard Jury Instructions; Complaint; Answer;

9

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

Document 50

Filed 05/25/2006

Page 10 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 1.2 STATUS OF A CORPORATION All persons are equal before the law. A corporation is considered by the law to be a person. Corporations are entitled to the same fair and conscientious consideration by you as any physical person. Corporations can act only through their officers and employees. Any act or omission of an officer or employee while acting within the scope of his or her employment or authority is the act or omission of the corporation.

Kane, J., Standard Jury Instructions; 10

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

Document 50

Filed 05/25/2006

Page 11 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 1.3 KNOWLEDGE OF A CORPORATION Knowledge of, or notice to, a corporation's director, officer, or employee received while he or she is acting within the scope of his or her authority, is the knowledge of, or notice to, the corporation.

Kane, J., Standard Jury Instructions;

11

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

Document 50

Filed 05/25/2006

Page 12 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 1.4 SCOPE OF AUTHORITY - DEFINED A director, officer, or employee is acting within the scope of his or her authority when he or she is doing the work assigned by his or her employer, or is doing that which is proper, usual, and necessary to accomplish the assigned work, or is doing that which is customary in the particular trade or business to accomplish the assigned work.

Kane, J., Standard Jury Instructions;

12

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

Document 50

Filed 05/25/2006

Page 13 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 1.5 APPARENT AUTHORITY - DEFINITION AND EFFECT When a representative of a corporation, by words or conduct, has caused another person reasonably to believe that a director, officer, or employee has authority to take certain action on the corporation's behalf, although no such authority has in fact been given, the director, officer, or employee has apparent authority and may bind the corporation just as if the corporation had authorized such action.

Kane, J., Standard Jury Instructions; 13

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

Document 50

Filed 05/25/2006

Page 14 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 1.6 EVIDENCE - GENERAL It will be your duty to decide from the evidence what the facts are. You, and you alone, are the judges of the facts. You will hear the evidence, decide what the facts are, and then apply those facts to the law I give you. That is how you will reach your verdict. In doing so, you must follow the law whether you agree with it or not. At no time during the trial will I suggest what I think your verdict should be nor do I want you to guess or speculate about my views of what verdict you should render. You will decide what the facts are from the evidence that the parties will present to you during the trial. That evidence will consist of the sworn testimony of witnesses on both direct and cross-examination, regardless of who called the witness; documents and other things received into evidence as exhibits; and any facts on which the lawyers agree or which I may instruct you to accept as true. The following things are not evidence and you must not consider them as evidence in deciding the facts of this case: 1. Statements and arguments by lawyers are not evidence. The lawyers are not witnesses. What they say in their opening statements, closing arguments, and at other times is intended to help you interpret the evidence, but it is not

14

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

Document 50

Filed 05/25/2006

Page 15 of 82

evidence. If the facts as you remember them differ from the way the lawyers have stated them, your memory of the facts controls. 2. Questions and objections by the lawyers are not evidence. Lawyers have a duty to their clients to object when they believe a question is improper under the rules of evidence. You should not be influenced by the objection or by my ruling on it. 3. Testimony that has been excluded or stricken, or that you have been instructed to disregard, is not evidence and must not be considered. 4. Anything you may see or hear when the Court is not in session is not evidence, even if what you see or hear is done or said by one of the parties or by one of the witnesses. You are to consider only the evidence in the case. But in your consideration of the evidence, you are not limited solely to what you see and hear as the witnesses testify. You are permitted to draw, from facts that you find have been proved, such reasonable inferences as seem justified in the light of your experience. Inferences are inductions or conclusions your reason and common sense lead you to draw from the facts established by the evidence in the case.

Kane, J., Standard Jury Instructions;

15

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

Document 50

Filed 05/25/2006

Page 16 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 1.7 EVIDENCE - DIRECT AND CIRCUMSTANTIAL Evidence can be either direct or circumstantial. Direct evidence is testimony by a witness about what that witness personally saw or heard or did. Circumstantial evidence is indirect evidence; that is, it is proof of one or more facts from which one can find that another fact exists or is true. You should consider both kinds of evidence in deciding this case. It is for you to decide how much weight to give to any evidence, direct or circumstantial. The rules of evidence control the facts you may consider. When one lawyer asks a question or offers an exhibit and an opposing lawyer thinks that it is not permitted by the rules of evidence, the opposing lawyer may object. If I overrule the objection, the question may be answered or the exhibit received. If I sustain the objection, the question cannot be answered and the exhibit cannot be received. Whenever I sustain an objection to a question, you must ignore the question and must not guess what the answer might have been. Sometimes I may order that evidence be stricken from the record and that you disregard or ignore such evidence. That means that when you are deciding the case, you must not consider the evidence that I told you to disregard. Kane, J., Standard Jury Instructions;

16

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

Document 50

Filed 05/25/2006

Page 17 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 1.8 FILING OF LAWSUIT AND PLEADINGS The fact that a claimant files a lawsuit is not evidence that the other party did anything wrong. The fact that a claimant complains that he has been damaged is not evidence that he has been damaged or that the other party violated the law. You cannot say, "Well, there must be something wrong here or the case would not be in court." This would be improper. By the same reasoning, the fact that an answer to the complaint has been filed is not evidence that the other party has not been damaged or that the answering party did not violate the law. The filing of a lawsuit and the pleading, including the complaint and the answer, are merely the mechanisms by which the case is brought to court for you to decide.

Kane, J., Standard Jury Instructions;

17

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

Document 50

Filed 05/25/2006

Page 18 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 1.9 CREDIBILITY OF WITNESSES In deciding the facts of this case, you will have to decide which witnesses to believe and which witnesses not to believe. You may believe everything a witness says, only part of it, or none of it. In considering the testimony of any witness, you may consider: 1. The witness's opportunity and ability to see or hear or know the things to which the witness testified; 2. 3. 4. The quality of the witness's memory; The witness's manner while taking the oath and while testifying; Whether the witness had an interest in the outcome of the case or any motive, bias or prejudice; 5. Whether the witness's testimony is contradicted by anything the witness said or did at another time, by the testimony of other witnesses, or by other evidence; 6. 7. How reasonable the witness's testimony was in light of all the evidence; and, Any other facts that bear on believability.

18

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

Document 50

Filed 05/25/2006

Page 19 of 82

The weight of the evidence as to a fact does not necessarily depend on the number of witnesses who testify to that fact. If you believe a witness has willfully lied regarding any material fact, you have the right to disregard all or any part of that witness's testimony.

Kane, J., Standard Jury Instructions;

19

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

Document 50

Filed 05/25/2006

Page 20 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 1.10 SINGLE WITNESS The testimony of a single witness that produces in your minds belief in the likelihood of truth is sufficient for the proof of any fact, and would justify a verdict in accordance with such testimony, even though a number of witnesses may have testified to the contrary, if, after consideration of all the evidence in the case, you hold greater belief in the accuracy and reliability of the one witness.

Kane, J., Standard Jury Instructions;

20

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

Document 50

Filed 05/25/2006

Page 21 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 1.11 BURDEN OF PROOF This is a civil case. Therefore, Go Pro has the burden of proving her claims by what is called a preponderance of the evidence. That means that no matter who produces the evidence, when you consider each of Go Pro's claims in light of all the facts, you believe that claim is more likely true than not true. To put it differently, if you were to put all of the evidence in favor of Go Pro and all of the evidence in favor of River Graphics on opposite sides of the scales, Go Pro would have to make the scale tip to her side. If Go Pro fails to meet this burden on any of her claims, your verdict on that claim must be for River Graphics. In defense to one or more of Go Pro's claims, River Graphics has asserted affirmative defenses, which will be described to you more fully later. An affirmative defense is more than a denial of the claim. In terms of applying the burden of proof, you should treat River Graphics' affirmative defenses in the same way you treat Go Pro. claims. That is, River Graphics, as the asserting party, has the burden of proving that the affirmative defense is more likely true than not true. In evaluating whether Go Pro and River Graphics have met their respective burdens on their claims and defenses, you should also know that the law does not require parties to call as witnesses all persons who may have been present at any time or place involved in the

21

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

Document 50

Filed 05/25/2006

Page 22 of 82

case, or who may appear to have some knowledge of the matter in issue at this trial. Nor does the law require parties to produce as exhibits all papers or other things mentioned in the evidence in the case.

Kane, J., Standard Jury Instructions;

22

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

Document 50

Filed 05/25/2006

Page 23 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 1.12 JUROR CONDUCT Your conduct as jurors is of the utmost importance. First, do not talk with one another about this case or about anyone who has anything to do with it until the end of the case when you go the jury room to decide on your verdict. Second, do not talk with anyone else about this case or about anyone who has anything to do with it until the trial has ended and you have been discharged as jurors. "Anyone else" includes members of your family and your friends. You may tell them that you are a juror in a case and that I have ordered you not to tell them anything else about it until the case is over. Third, do not let anyone talk to you about the case or about anyone who has anything to do with it. If someone tries to talk to you, please report it to me immediately. Fourth, do not read any news stories or articles or listen to any radio or television reports about the case or about anyone who has anything to do with the case. Fifth, do not do any research, such as consulting dictionaries or other reference materials, and do not make any investigation about the case on your own.

23

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

Document 50

Filed 05/25/2006

Page 24 of 82

Sixth, do not make up your mind about what the verdict should be until after you have gone to the jury room to decide the case and you and your fellow jurors have discussed the evidence. Keep an open mind until then. Seventh, each of you will have one or more notebooks containing the names of the witnesses and copies of exhibits. You are free to take notes in order to enhance your memory or assist you in recollecting during your deliberations. I caution you, however, not to become a slave to your notes. It is most important that you observe the witnesses and listen to their testimony. Your note taking should merely assist you.

Kane, J., Standard Jury Instructions;

24

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

Document 50

Filed 05/25/2006

Page 25 of 82

SECTION 2.0 INSTRUCTION FOR USE DURING TRIAL

25

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

Document 50

Filed 05/25/2006

Page 26 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 2.1 CONSIDERATION OF DEPOSITION TESTIMONY A deposition is testimony taken under oath before the trial and preserved in writing or on videotape. Deposition testimony can be read into evidence or shown by videotape. You are to give the same consideration to deposition testimony as to live testimony presented here in the courtroom. That is, you are to judge the credibility of the witness and determine the weight to be given to the testimony to the best of your ability under the circumstances, as if the witness had been before you on the witness stand when he or she made the statement under oath.

Kane, J., Standard Jury Instructions;

26

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

Document 50

Filed 05/25/2006

Page 27 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO 2.2 CHARTS, SUMMARIES AND GRAPHIC MATERIALS A number of charts, summaries and other graphic materials will be shown to you in order to help explain the facts and documents in evidence in the case. However, such charts, summaries and materials are not in and of themselves evidence or proof of any facts. If such materials do not correctly reflect facts or figures shown by the evidence in the case, you should disregard them.

Kane, J., Standard Jury Instructions; 27

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

Document 50

Filed 05/25/2006

Page 28 of 82

SECTION 3.0 SUBSTANTIVE INSTRUCTIONS

28

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

Document 50

Filed 05/25/2006

Page 29 of 82

___ Stipulated; Tendered by: _X_ Plaintiff ___Defendant INSTRUCTION NO. 3.1 POLICY OF TRADEMARKS The trademark laws balance three often conflicting goals: (1) protecting the public from being misled about the nature and source of goods and services, so that the consumer is not confused or misled in the market; (2) protecting the rights of a business to identify itself to the public and its reputation in offering goods and services to the public; and (3) protecting the public interest in fair competition in the market. The balance of these policy objectives vary from case to case, because they may often conflict.

O'Malley, et al., Fed. Jury Practice and Instructions § 159.01 (5 th ed. 2005).

29

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

Document 50

Filed 05/25/2006

Page 30 of 82

Defendant's Objection to Plaintiff Tendered Jury Instruction No. 3.1 Defendant objects to this proposed instruction and does not believe any instruction should be given. This proposed instruction does not state a rule of law, but is a philosophical comment on the law. It is more appropriate for argument than as a statement of governing law.

30

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

Document 50

Filed 05/25/2006

Page 31 of 82

Plaintiff's Reply to Defendant's Objections to Jury Instruction No. 3.1 The Jury is entitled to know the policies underlying unfair competition law. The instruction has been given in other cases and is appropriate in this case.

31

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

Document 50

Filed 05/25/2006

Page 32 of 82

___ Stipulated; Tendered by: _X_ Plaintiff ___Defendant INSTRUCTION NO. 3.2 DEFINITION OF A TRADEMARK AND RIGHT IT CONFERS The term "trademark" includes any word, name, symbol, or device, or any combination thereof, adopted and used by a manufacturer or merchant to identify his or her goods and to distinguish from those manufactured or sold by others. A person acquires a trademark and thus the right to exclude others from using a confusingly similar word, name, symbol or device, by being the first to use the mark in the marketplace. The function of a trademark is to designate goods as a product of a particular manufacturer or merchant and to protect his or her goodwill against the sale of another's product as his or hers. A trademark is also a merchandising shortcut which induces a prospective purchaser to select what he or she wants or what he or she has been led to believe he or she wants.

O'Malley, et al., Fed. Jury Practice and Instructions § 159.01 (5 th ed. 2005).

32

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

Document 50

Filed 05/25/2006

Page 33 of 82

Defendant's Objection to Plaintiff Tendered Jury Instruction No. 3.2 Defendant objects to this proposed instruction because the court's ruling on summary judgment is the controlling law of the case and the court has ruled that plaintiff failed to establish a protected trademark in the use of the phrase on shirts and hats. The court's ruling said that plaintiff can only prevail on its remaining claim under § 43 if it proves that it had acquired common law trademark rights to the phrase prior to defendant's use of the phrase beginning in July, 1998 other than on the front of shirts and hats. If this instruction is proposed to be used for this remaining claim, either this or one of the following instructions must refer to the time frame identified by the court.

33

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

Document 50

Filed 05/25/2006

Page 34 of 82

Plaintiff's Reply to Defendant's Objections to Jury Instruction No. 3.2 On page 7 of the Court's opinion, the Court held that: While the mere fact that Go Pro embroiders the Here Fishy, Fishy phrase on its Tshirts and hats is insufficient to imbue it with trademark rights as a matter of law, it is sufficient to withstand summary judgment on the question of whether Go Pro's use of the phrase on shirts, hats and on labels, invoices, advertisements, and hang tags gave rise to protectible trademark rights under § 43(a) of the Act. As understood, Go Pro is thus allowed to argue that it generated trademark right prior to 1998 by use of the phrase "HERE FISHY, FISHY" on t-shirts and hats, and on labels, invoices, advertisements, and hang tags for those products. With that understanding and to that extent, the instruction as presented is necessary and appropriate. Further, it is unnecessary to specifically include July 1998 within the instruction, as it already includes the concept that trademark rights must be generated before the accused party enters the market with their accused product. Go Pro's instruction should be given as worded.

34

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

Document 50

Filed 05/25/2006

Page 35 of 82

___ Stipulated; Tendered by: _X_ Plaintiff ___Defendant INSTRUCTION NO. 3.3 TRADEMARK REGISTRATION Once the owner of a mark has obtained the right to exclude others from using its trademark, the owner may obtain a certificate of registration issued by the United States Patent and Trademark Office. Thereafter, when the owner brings an action for infringement or unfair competition, the owner may rely solely on the registration certificate to prove that the owner has the right to exclude others from using the trademark in connection with the type of goods or services specified in the certificate.

O'Malley, et al., Fed. Jury Practice and Instructions § 159.01 (5 th ed. 2005).

35

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

Document 50

Filed 05/25/2006

Page 36 of 82

Defendant's Objection to Plaintiff Tendered Jury Instruction No. 3.3 Defendant objects to this proposed instruction because the court's ruling on summary judgment is the controlling law of the case and the court has ruled that plaintiff failed to establish a protected trademark in the use of the phrase on shirts and hats. The court's ruling found that plaintiff had failed to establish the existence of a trademark as contemplated in this instruction, and limits plaintiff's case to proof of a creation of common law trademark rights prior to July, 1998. Defendant does not believe any instruction should be given. Defendant further objects to this instruction on the grounds that despite attaining registration in February 2003, Go Pro failed to disclose this registration to River Graphics until April 2006 following the Court's Order on Defendant's Motion for Summary Judgment.

36

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

Document 50

Filed 05/25/2006

Page 37 of 82

Plaintiff's Reply to Defendants Objections to Jury Instruction No. 3.3 The Court's previous ruling concerned Go Pro's supplemental registration. The Court's ruling did not address Go Pro's primary registration for "HERE FISHY, FISHY" which issued in February 2003, well after briefing on the motion for Summary Judgement had closed. Go Pro is entitled to and plans to present that registration as evidence of a protectable trademark right in and to "HERE FISHY, FISHY." As for the instruction itself, it a common instruction that has been given in other cases.

37

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

Document 50

Filed 05/25/2006

Page 38 of 82

___ Stipulated; Tendered by: _X_ Plaintiff ___Defendant PLAINTIFF'S INSTRUCTION NO. 3.4 THE PARTIES' CONTENTIONS In this case, Go Pro contends it owns protectable trademark rights in "HERE FISHY, FISHY" at least as of July 1998. Go Pro has the burden of proving by a preponderance of the evidence that it is the owner of that valid trademark rights in and to "HERE FISHY, FISHY." If you find that Go Pro has protectable rights in "HERE FISHY, FISHY", Go Pro also has the burden of proving each of the following factors by a preponderance of the evidence to prove a claim for unfair competition under either federal or Colorado law: 1. 2. River Graphics used "HERE FISHY, FISHY" in connection with goods; and The use of "HERE FISHY, FISHY" is likely to cause confusion.

O'Malley, et al., Fed. Jury Practice and Instructions §§ 159.01 and 159.25 (5 th ed. 2005).

38

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

Document 50

Filed 05/25/2006

Page 39 of 82

___ Stipulated; Tendered by: ___ Plaintiff _X_Defendant DEFENDANT'S INSTRUCTION NO. 3.4 THE PARTIES' CONTENTIONS/UNFAIR COMPETITION-STANDARD In this case, Go Pro contends that River Graphics has engaged in unfair competition by using "HERE FISHY, FISHY" on clothing products without authorization and infringed its trademark. Go Pro has the burden of proving by a preponderance of the evidence that 1. prior to July, 1998 its use of the phrase "HERE FISHY, FISHY" made such a visual impression that the viewer would see the phrase as a symbol of origin with Go Pro separate and apart from everything else; 2. as a result of this impression created prior to July, 1998 a consumer identified the phrase with Go Pro; 3. River Graphics used the phrase "HERE FISHY, FISHY" in connection with goods in a way that was likely to cause confusion as to the source of the goods, or endorsement, approval or sponsorship of the goods by Go Pro; and 4. Go Pro was or is likely to be damaged by River Graphics' actions.

River Graphics contends, on the other hand, that Go Pro's use of "HERE FISHY, FISHY" prior to July, 1998 was purely ornamental, that consumers did not associate the phrase "HERE FISHY, FISHY" as a symbol of origin with Go Pro, and that Go Pro is not entitled to preclude others from using the phrase or in connection with clothing products.

39

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

Document 50

Filed 05/25/2006

Page 40 of 82

Parties' Statement on Jury Instruction 3.4 The parties have competing ideas on the appropriate way of communicating the concepts outlined in these instructions. The parties welcome the opportunity to discuss their differences with regard to these instructions with the Court.

40

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

Document 50

Filed 05/25/2006

Page 41 of 82

___ Stipulated; Tendered by: _X_ Plaintiff ___Defendant PLAINTIFF'S INSTRUCTION NO. 3.5 LIKELIHOOD OF CONFUSION - FACTORS I will now suggest some factors you should consider in deciding whether River Graphics' use of "HERE FISHY, FISHY" causes confusion in the market place. The presence or absence of any particular factor that I suggest should not necessarily resolve whether there was a likelihood of confusion, because you must consider all relevant evidence in determining that issue.

1.

SIMILARITY OF GO PRO'S AND RIVER GRAPHICS' MARKS. If the overall impression created by Go Pro's mark is similar to that created by River Graphics' mark in appearance or meaning, there is a greater chance that consumers are likely to be confused by River Graphics' use of a mark. RIVER GRAPHICS' USE OF THE MARK. If River Graphics and Go Pro use their marks on the same or related kinds of goods there may be a greater likelihood of confusion about the source of the goods than otherwise. COMMERCIAL STRENGTH OF GO PRO'S MARK. The more the consuming public recognizes Go Pro's mark as an indication of origin of Go Pro's goods, the more likely it is that consumers would be confused about the source of River Graphics' goods if River Graphics uses a similar mark. CONCEPTUAL STRENGTH OF GO PRO'S MARK. How strongly a trademark indicates that a good comes from a specific source is also an important factor to consider in accessing likelihood of consumer confusion. Generally, the stronger a trademark might be conceptually, the more likely it is that confusion by use of a similar mark will occur. As I shall instruct you shortly, you should classify a mark on the spectrum of trademark

2.

3.

4.

41

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

Document 50

Filed 05/25/2006

Page 42 of 82

distinctiveness, with the more distinctive marks being entitled to broader protection the conceptually weak marks. 5. DISTRIBUTION CHANNELS. If Go Pro's and River Graphics' goods are likely to be sold in the same or similar stores or outlets, this increases the likelihood of confusion. MARKET FACTORS. The more sophisticated the potential buyers and the more costly the goods, the more careful and discriminating the buyers may be. They may be less likely to be confused by similarities in Go Pro's and River Graphics' marks. PRODUCT LINES. When parties' products differ, you may consider how likely Go Pro is to begin selling the products for which River Graphics is using its mark. If Go Pro has an interest in reserving the option to use the mark on goods similar to River Graphics' in the distant future, there is a greater likelihood of confusion. KNOWING ADOPTION OF GO PRO'S MARK. Knowing use by River Graphics of Go Pro's trademark to identify similar goods may strongly show a likelihood of confusion. On the other hand, even in the absence of proof that River Graphics acted knowingly, the use of Go Pro's trademark to identify similar goods may indicate a likelihood of confusion. ACTUAL CONFUSION. If use by River Graphics of Go Pro's trademark has led to actual confusion, this strongly suggests a likelihood of confusion. But actual confusion is not required. Even if actual confusion did not occur, River Graphics' use of the mark may still be likely to cause confusion. OTHER. Any other factors that bear on likelihood of confusion.

6.

7.

8.

9.

10.

O'Malley, et al., Fed. Jury Practice and Instructions § 159.25 (5 th ed. 2005).

42

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

Document 50

Filed 05/25/2006

Page 43 of 82

___ Stipulated; Tendered by: ___ Plaintiff _X_Defendant DEFENDANT'S INSTRUCTION NO. 3.5 UNFAIR COMPETITION - STANDARD In determining whether a consumer is likely to be confused, likely to make mistakes, or likely to be deceived, you should consider ordinary consumers who are neither overly careful nor overly careless. Consumers include purchasers or users of the product. You are instructed that it is not necessary to find actual confusion in order to find a likelihood of confusion. However, evidence of actual confusion is the best evidence of a likelihood of confusion. In answering whether there was a likelihood of confusion in the mind of the consumer, you may draw on your common knowledge and experience as citizens of the community, and you may also consider the following factors: 1. 2. Similarity of Go Pro's and River Graphics' products in appearance or meaning. Whether Go Pro and River Graphics used the phrase and similar imagery on the same or related kinds of goods. Commercial Strength of Go Pro's Use. The more the consuming public recognizes Go Pro's mark as an indication of origin of Go Pro's goods, the more likely it is that consumers would be confused about the source of River Graphics' goods if River Graphics uses a similar mark. Conceptual Strength of Go Pro's Use. How strongly a mark indicates that a good comes from a specific source is also an important factor to consider in accessing likelihood of consumer confusion.

3.

4.

43

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

Document 50

Filed 05/25/2006

Page 44 of 82

5.

Similarity of Distribution Channels. Whether Go Pro's and River Graphics' goods are likely to be sold in the same or similar stores. Market Factors. The relative cost of the goods, and whether the potential buyers are more sophisticated, more careful or more discriminating. Knowing Use. Whether River Graphics knowingly used Go Pro's trademark Actual Confusion. Whether Go Pro has demonstrated actual confusion by consumers. Other. Any other factors that bear on likelihood of confusion.

6.

7. 8.

9.

O'Malley, et al., Fed. Jury Practice and Instructions § 159.25 (5 th ed. 2005); Matthew Bender & Company, Jury Instructions in Commercial Litigation (2006)9.08

44

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

Document 50

Filed 05/25/2006

Page 45 of 82

Parties' Statement on Jury Instruction 3.5 The parties have competing ideas on the appropriate way of communicating the concepts outlined in these instructions. The parties welcome the opportunity to discuss their differences with regard to these instructions with the Court.

45

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

Document 50

Filed 05/25/2006

Page 46 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 3.6 SPECTRUM OF MARKS - CONCEPTUAL STRENGTH Trademark law provides protection to distinctive or strong trademarks. Conversely, trademarks that are not as distinctive or strong are called "weak" trademarks and receive less protection from infringing uses. Trademarks that are not distinctive are not entitled to any trademark protection. For deciding trademark protectability you must consider whether a trademark is inherently distinctive. Trademarks are grouped into four categories according to their relative strength. These four categories are, in order of strength or distinctiveness: arbitrary (which is inherently distinctive), suggestive (which also is inherently distinctive), descriptive (which is protected only if it acquires in consumers' minds a "secondary meaning") and generic trademarks (which are entitled to no protection). Arbitrary Trademarks. The first category is "inherently distinctive" trademarks. They are considered strong marks and are clearly protectable. They involve the arbitrary, fanciful or fictitious use of a word to designate the source of a product. Such a trademark is a word that in no way describes or has any relevance to the particular product it is meant to identify. It may be a common word used in an unfamiliar way. It may be a newly created (coined) word or parts of common words which are applied in a fanciful, fictitious or unfamiliar way, solely as a trademark.

46

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

Document 50

Filed 05/25/2006

Page 47 of 82

For instance, the common word "apple" became a strong and inherently distinctive trademark when used by a company to identify the personal computers that company sold. The company's use of the word "apple" was arbitrary or fanciful because "apple" did not describe and was not related to what the computer was, its components, ingredients, quality, or characteristics. "Apple" was being used in an arbitrary way to designate for consumers that the computer comes from a particular manufacturer or source. Suggestive Trademarks. The next category of marks is suggestive trademarks. These trademarks are also inherently distinctive but are considered weaker than arbitrary trademarks. Unlike arbitrary trademarks, suggestive trademarks imply some characteristic or quality of the product to which they are attached. If the consumer must use imagination or any type of multi-stage reasoning to understand the trademark's significance, then the trademark does not describe the product's features, but suggests them. A suggestive use of a word involves consumers associating the qualities the word suggests to the product to which the word is attached. For example, when "apple" is used not to indicate a certain company's computers, but rather "Apple-A-Day" Vitamins, it is being used as a suggestive trademark. "Apple" does not describe what the vitamins are. However, consumers may come to associate the healthfulness of "an apple a day keeping the doctor away" with the supposed benefits of taking "Apple-A-Day" Vitamins. Descriptive Trademarks. The third category of marks is descriptive trademarks.

47

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

Document 50

Filed 05/25/2006

Page 48 of 82

These trademarks directly identify or describe some aspect, characteristic, or quality of the product to which they are affixed in a straightforward way that requires no exercise of imagination to be understood. For instance, the word "apple" is descriptive when used in the trademark "CranApple" to designate a cranberry-apple juice. It directly describes ingredients of the juice. Other common types of descriptive trademarks identify where a product comes from, or the name of the person who makes or sells the product. Thus, the words "Apple Valley Juice" affixed to cider from the California town of Apple Valley is a descriptive trademark because it geographically describes where the cider comes from. Similarly, a descriptive trademark can be the personal name of the person who makes or sells the product. So, if a farmer in Apple Valley, Judy Brown, sold her cider under the label "Judy's Juice" (rather than CranApple) she is making a descriptive use of her personal name to indicate and describe who produced the apple cider. Generic Trademarks. The fourth category of trademarks is entitled to no protection at all. They are called generic trademarks and they give the general name of the product of Go Pro. They are part of our common language which we need to identify all such similar products. They are the common name for the product to which they are affixed. It is the general name for which the particular product or service is an example. O'Malley, et al., Fed. Jury Practice and Instructions § 159.62 (5 th ed. 2005).

48

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

Document 50

Filed 05/25/2006

Page 49 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 3.7 SECONDARY MEANING If you determined that "HERE FISHY, FISHY" is descriptive, you must consider the recognition that the mark has among prospective purchasers. Market recognition is called the trademark's "secondary meaning." A word acquires a secondary meaning when it has been used in such a way that its primary significance in the minds of the prospective purchasers is not the product itself, but the identification of the product with a single source, regardless of whether consumers know who or what that source is. You may consider the following factors when you determine whether a mark has acquired a secondary meaning: 1. Purchaser Perception. Whether the people who purchase the product that bears the claimed trademark associate the trademark with the owner; Advertisement. To what degree and in what manner the owner may have advertised under the claimed trademark; Demonstrated Utility. Whether the owner successfully used this trademark to increase the sales of its product; Extent of Use. The length of time and manner in which the owner used the claimed trademark; Exclusivity. Whether the owner's use of the claimed trademark was exclusive; Copying. Whether River Graphics intentionally copied the owner's trademark;

2.

3.

4.

5. 6.

49

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

Document 50

Filed 05/25/2006

Page 50 of 82

7.

Actual Confusion. Whether River Graphics' use of Go Pro's trademark has led to actual confusion; and Any other factors that bear on secondary meaning.

8.

Descriptive marks are protectable only to the extent you find they acquired distinctiveness by the public coming to associate the mark with a particular source. Descriptive marks are entitled to protection only as broad as the secondary meaning they have acquired, if any. If they have acquired no secondary meaning, they are entitled to no protection and cannot be considered a valid mark.

O'Malley, et al., Fed. Jury Practice and Instructions § 159.63 (5 th ed. 2005). 50

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

Document 50

Filed 05/25/2006

Page 51 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 3.8 MISAPPROPRIATION OF BUSINESS VALUES - COLORADO LAW Go Pro has also alleges that River Graphics has misappropriated its business values in and to the use of "HERE FISHY, FISHY;" "BITE ME"; "COME TO PAPPA"; "FISH FEAR ME"; "WOMEN LOVE ME FISH FEAR ME"; "WORK SUCKS GONE FISHIN" on clothing under Colorado law. In order for Go Pro to prevail on this claim, you must find, based upon a preponderance of the evidence, that: (1) prior to July, 1998, Go Pro created a protectable business value in "HERE FISHY, FISHY," "BITE ME," "COME TO PAPA," "FISH FEAR ME, WOMEN LOVE ME," and/or "WORK SUCKS, GONE FISHIN"; (2) the protectable business value was the result of Go Pro's expenditure of labor, skill and money; (3) (4) (5) River Graphics unfairly appropriated that protectable business value; River Graphics unfairly profited from Go Pro's protectable business value; Go Pro was damaged as a result of the appropriation by River Graphics.

Appropriated in this context means to take of another.

Smith v. TCI Comm., Inc., 981 P.2d 690 (Colo. App. 1999; Heller v. Lexton-Ancira Real Estate Fund, Ltd., 809 P.2d 1016 (Colo. App. 1990). 51

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

Document 50

Filed 05/25/2006

Page 52 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 3.9 DAMAGES Should you find that Go Pro has met is burden with regard to one or more of its claims, Go Pro is entitled to recover damages from River Graphics.

Transition Instruction 52

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

Document 50

Filed 05/25/2006

Page 53 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 3.10 DAMAGES Damages are designed to compensate plaintiff for actual injury caused by defendant's wrongful conduct. Damages cannot be based on speculation or feelings but must be proven. If you find that the actions of River Graphics engaged in unfair competition or misappropriated a protectable business value of Go Pro. Go Pro must prove the amount of monetary damages to which it is entitled. Actual damages means the amount of money which will reasonably and fairly compensate Go Pro for any injury that you find was caused by River Graphics' actions. You may consider the following factors in determination actual damages to Go Pro: 1. 2. the injury to or loss of Go Pro's reputation; the injury to or loss of Go Pro's goodwill, including injury to Go Pro's

general business reputation; 3. 4. 5 5. 6. the loss of Go pro's sales as a result of the infringement; the actual loss of Go Pro's profits; River Graphics' profits from the infringement of Go Pro's mark; the actual loss of Go Pro's licensing revenues; the expense of preventing customers from being deceived; and

53

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

Document 50

Filed 05/25/2006

Page 54 of 82

7.

Any other factors that bear on Go Pro's actual damages.

In awarding damages, you may not include in any category of damages any amount which you took into account as damages of another category.

Kane, Trademark Law § 17:3; O'Malley, et al., Fed. Jury Practice and Instructions §§ 150.91, 159.92 (5 th ed. 2005); BG Prod. Inc. v. Isaac, no. 96-Z-2082; 1998 U.S. Dist. LEXIS 21122 (D. Colo. Oct. 19, 1998). 54

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

Document 50

Filed 05/25/2006

Page 55 of 82

___ Stipulated; Tendered by: _X_ Plaintiff ___Defendant PLAINTIFF'S INSTRUCTION NO. 3.12 DAMAGES - COLORADO LAW If you awarded Go Pro damages for any violation of Colorado law, then you shall consider whether punitive damages should be assessed against River Graphics on those claims. You may award punitive damages if you find that River Graphics' actions were attended by circumstances of fraud, malice or wanton and reckless conduct. Punitive damages, if assessed, are not to be viewed as compensation. Rather, punitive damages are to be assessed as punishment, and as an example to others. Whether or not to make any award of punitive damages, in addition to any actual damages, is a matter exclusively within the province of the jury. The amount of any punitive damages, when awarded, must be fixed with calm discretion and sound reason, and must never be awarded simply because of any sympathy, or bias, or prejudice with respect to any party.

Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co., 408 F. Supp. 1219 (D. Colo.), aff'd, 561 F.2d 1365 (10th Cir. 1977). 55

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

Document 50

Filed 05/25/2006

Page 56 of 82

Defendant's Objection to Plaintiff Tendered Jury Instruction No. 3.12 Defendant objects to this instruction because there is no factual basis for punitive damages. If an instruction on punitive damages is to be given for the Colorado claims, defendant proposes the following instruction.

56

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

Document 50

Filed 05/25/2006

Page 57 of 82

___ Stipulated; Tendered by: ___ Plaintiff _X_Defendant DEFENDANT'S INSTRUCTION NO. 3.12 PUNITIVE DAMAGES If you find in favor of the plaintiff, Go Pro, and award it actual damages on its claim of Misappropriation of Business Values, then you shall consider whether you should award punitive damages against the defendant. If you find beyond a reasonable doubt that the defendant acted in a fraudulent, malicious, or willful and wanton manner, you may award a reasonable sum as punitive damages that may not be more than the amount awarded as actual damages. Punitive damages, if assessed, are to be assessed as punishment of the defendant and as an example to others. Reasonable doubt means a doubt based upon reason and common sense, which arises from a fair and thoughtful consideration of all the evidence, or the lack of evidence, in the case. It is not a vague, speculative or imaginary doubt, but one that would cause reasonable persons to hesitate to act in matters of importance to themselves. "Willful and wanton conduct" means an act purposefully committed by a person who must have realized that the conduct was dangerous, and which conduct was done heedlessly and recklessly, either without regard to the consequences, or without regard to the rights of others, particularly the plaintiff.

57

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

Document 50

Filed 05/25/2006

Page 58 of 82

CJI-Civ. 4 th 5:3, 3:3, and 9:30

58

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

Document 50

Filed 05/25/2006

Page 59 of 82

Plaintiff's Objections to Defendant Tendered Jury Instruction No. 3.12 Go Pro believes that there is more than ample evidence supporting the claim for punitive damages. This evidence specifically includes the fact that River Graphics has systematically appropriated for itself Go Pro's trademark and business values. Also, Go Pro believes that its jury instruction is more accurate and understandable than the instruction proposed by River Graphics and should be given to the Jury.

59

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

Document 50

Filed 05/25/2006

Page 60 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 3.13 DAMAGES - NOT TO BE INFERRED/DIFFICULTY OR UNCERTAINTY The fact that an instruction on measure of damages has been given to you does not mean that the Court is instructing the jury to award or not to award damages. The question of whether or not damages are to be awarded is a question for the jury's consideration. Difficulty or uncertainty in determining the precise amount of damages does not prevent you from deciding an amount. You should use your best judgment based on the evidence.

Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co., 408 F. Supp. 1219 (D. Colo.), aff'd, 561 F.2d 1365 (10th Cir. 1977). 60

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

Document 50

Filed 05/25/2006

Page 61 of 82

___ Stipulated; Tendered by: ___ Plaintiff _X_Defendant INSTRUCTION NO. 3.14 UNREASONABLE DELAY You must find for the defendant if you find from the evidence that the plaintiff allowed an unreasonable delay to exist between the time it knew of the alleged infringement of the trademark and the time it sought to protect the exclusive right to the trademark by this litigation, and that such delay placed the defendant at a disadvantage. As used in these instructions, unreasonable delay means a delay of a longer period of time than a person of ordinary prudence would have delayed in taking action under the same or similar circumstances.

Matthew Bender & Company, Jury Instructions in Commercial Litigation (2006) 9.13

61

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

Document 50

Filed 05/25/2006

Page 62 of 82

Plaintiff's Objection to Defendant Tendered Jury Instruction No. 3.14 Go Pro objects to the instruction as incomplete and requires a statement of what constitutes reasonable and unreasonable delay in the context of unfair competition and misappropriation of business values. In that context, generally applicable statutes of

limitation are deemed to set the bounds of reasonableness for a delay period. If the alleged delay is less than the applicable statute of limitations, the delay is generally not considered unreasonable. Go Pro understands the applicable statute of limitations for its claims to be 4 years. If these concepts are included in the instruction and River Graphics defenses of latches, etc. withstand a motion for directed verdict, the instruction would be generally acceptable to Go Pro.

62

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

Document 50

Filed 05/25/2006

Page 63 of 82

SECTION 4.0 FINAL INSTRUCTIONS

63

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

Document 50

Filed 05/25/2006

Page 64 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 4.1 JURY DELIBERATIONS - GENERAL INSTRUCTIONS Each of you has a copy of the instructions to consult as you find it necessary. It is your duty to find the facts from all the evidence in the case. To those facts, you must apply and follow the laws contained in these instructions whether you agree with them or not. Your decision is called a verdict and is reached by applying those laws to the facts as you find them. You must not be influenced by any personal likes or dislikes, opinions, prejudices or sympathy. You have taken an oath promising to do just so. You must follow all of these instructions and not single out some and ignore others; they are all equally important. You must not read into these instructions or into anything I may say or do any suggestions as to what verdict you should return. Your verdict is a matter entirely for you to decide.

Kane, J., Standard Jury Instructions;

64

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

Document 50

Filed 05/25/2006

Page 65 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 4.2 JURY - DELIBERATIONS When you go to the jury room to begin your deliberations, you must elect one of you to serve as your Presiding Juror. He or she will preside over your deliberations and speak for you here in court. You will then discuss the case with your fellow jurors to reach agreements if you can do so. Your verdict must be unanimous. Each of you must decide the case for yourself, but you should do so only after you have considered all the evidence, discussed it with your fellow jurors, and listened to the views of your fellow jurors. I offer some suggestions on how you might do this in the next jury instruction, entitled "Jury The Deliberations Process." Do not be afraid to change your opinion if the discussion persuades you that you should. But do not come to a decision simply because other jurors think it is right. It is important that you attempt to reach a unanimous verdict, but, of course, only if each of you can do so after having made your own conscientious decision. Do not change an honest belief about the weight of the evidence simply to reach a verdict.

Kane, J., Standard Jury Instructions;

65

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

Document 50

Filed 05/25/2006

Page 66 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 4.3 JURY - THE DELIBERATION PROCESS Once you have elected your Presiding Juror as directed by the previous instruction, you are free to proceed as you agree is appropriate. Therefore, I am not directing you how to proceed, but I offer the following suggestions that other juries have found helpful so that you can proceed in an orderly fashion, allowing full participation by each juror, and arrive at a verdict that is satisfactory to each of you. First, it is the responsibility of the Presiding Juror to encourage good communication and participation by all jurors and to maintain fairness and order. Your Presiding Juror should be willing and able to facilitate productive discussions even when disagreements and controversy arise. Second, the Presiding Juror should let each of you speak and be heard before expressing his or her own views. Third, the Presiding Juror should never attempt to promote nor permit anyone else to promote his or her personal opinions by coercion or intimidation or bullying of others. Fourth, the Presiding Juror should make certain that the deliberations are not rushed to reach a conclusion.

66

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

Document 50

Filed 05/25/2006

Page 67 of 82

If the Presiding Juror you select does not meet these standards, he or she should voluntarily step down or be replaced by a majority vote. After you select a Presiding Juror you should consider electing a secretary who will tally the votes, help keep track of who has or hasn't spoken on the various issues, make certain that all of you are present whenever deliberations are under way and otherwise assist the Presiding Juror. Some juries are tempted to start by holding a preliminary vote on the case to "see where we stand." It is most advisable, however, that no vote be taken before a full discussion is had on the issue to be voted on, otherwise you might lock yourself into a certain view before considering alternative and possibly more reasonable interpretations of the evidence. Experience has also shown that such early votes frequently lead to disruptive, unnecessarily lengthy, inefficient debate and ineffective decision-making. Instead, I suggest the Presiding Juror begin your deliberations by directing the discussion to establishing informal ground rules for how you will proceed. These rules should assure that you will focus upon, analyze and evaluate the evidence fairly and efficiently and that the viewpoints of each of you is heard and considered before any decisions are made. No one should be ignored. You may agree to discuss the case in the order of the questions presented in the special verdict form or in chronological order or

67

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

Document 50

Filed 05/25/2006

Page 68 of 82

according to the testimony of each witness. Whatever order you select, however, it is advisable to be consistent and not jump from one topic to another. To move the process of deliberation along in the event you reach a controversial issue, it is wise to pass it temporarily and move on to the less controversial ones and then come back to it. You should then continue through each issue in the order you have agreed upon unless a majority of you agrees to change the order. It is very helpful, but certainly not required of you, that all votes be taken by secret ballot. This will help you focus on the issues and not be overly influenced by personalities. Each of you should also consider any disagreement you have with another juror or jurors as an opportunity for improving the quality of your decision and therefore should treat each other with respect. Any differences in your views should be discussed calmly and, if a break is needed for that purpose, it should be taken. Each of you should listen attentively and openly to one another before making any judgment. This is sometimes called "active listening" and it means that you should not listen with only one ear while thinking about a response. Only after you have heard and understood what the other person is saying should you think about a response. Obviously, this means that, unlike TV talk shows, you should try very hard not to interrupt. If one of your number is going on and on, it is the Presiding Juror who should suggest that the point has been made and it is time to hear from someone else.

68

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

Document 50

Filed 05/25/2006

Page 69 of 82

You each have a right to your individual opinion, but you should be open to persuasion. When you focus your attention and best listening skills, others will feel respected and, even while they may disagree, they will respect you. It helps if you are open to the possibility that you might be wrong or at least that you might change your mind about some issues after listening to other views. Misunderstanding can undermine your efforts. Seek clarification if you do not understand or if you think others are not talking about the same thing. From time to time the Presiding Juror should set out the items on which you agree and those on which you have not yet reached agreement. In spite of all your efforts, it is indeed possible that serious disagreements may arise. In that event, recognize and accept that "getting stuck" is often part of the decision-making process. It is easy to fall into the trap of believing that there is something wrong with someone who is not ready to move toward what may be an emerging decision. Such a belief is not helpful. It can lead to focusing on personalities rather than the issues. It is best to be patient with one another. At such times slower is usually faster. There is a tendency to set deadlines and seek to force decisions. Providing a break or more time and space, however, often helps to shorten the overall process. You may wish from time to time to express your mutual respect and repeat your resolve to work through any differences. With such a commitment and mutual respect, you

69

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

Document 50

Filed 05/25/2006

Page 70 of 82

will most likely render a verdict that leaves each of you satisfied that you have indeed rendered justice.

Kane, J., Standard Jury Instructions;

70

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

Document 50

Filed 05/25/2006

Page 71 of 82

_X_ Stipulated; Tendered by: ___ Plaintiff ___Defendant INSTRUCTION NO. 4.4 COMMUNICATION WITH JUDGE If it becomes necessary during your deliberations to communicate with me, you may send a folded note through the court security officer, signed by one of you. Do not disclose the content of your note to the court security officer. No member of the jury should hereafter attempt to communicate with me except by signed writing; and I will communicate with any member of the jury on anything concerning the case only in writing, or orally here in open court. You are not to tell anyone ­ including me ­ how the jury stands, numerically or otherwise, until you have reached a unanimous verdict and I have discharged you. If you send a note to me containing a question or request for further direction, please bear in mind that responses take considerable time and effort. Before giving an answer or direction I must first notify the attorneys and bring them back to the court. I must confer with them, listen to arguments, research the legal authorities, if necessary, and reduce the answer or direction to writing. There may be some question that, under the law, I am not permitted to answer. If it is improper for me to answer the question, I will tell you that. Please do not speculate about what the answer to your question might be or why I am not able to answer a particular question.

71

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

Document 50

Filed 05/25/2006

Page 72 of 82

In some instances jurors request that certain testimony be read to them. This cannot be done as it is inappropriate for the court to single out testimony