United States District Court, N.D. Illinois, Eastern Division
October 19, 2004.
TY, INC., Plaintiff,
PUBLICATIONS INTERNATIONAL, LTD., Defendant.
The opinion of the court was delivered by: JAMES ZAGEL, District Judge
MEMORANDUM OPINION AND ORDER
Defendant Publications International Ltd. ("PIL"), pursuant to
Rule 15(a) of the Federal Rules of Civil Procedure, moves to
amend its Answer to Plaintiff Ty Inc.'s ("Ty") 1999 Complaint of
copyright and trademark infringement. PIL also moves to exclude
the expert opinion and testimony of Ty's witness Howard Fisher. I
address each motion in turn.
I. PIL's Motion to Amend Its Answer
Plaintiff Ty filed a Complaint alleging both copyright and
trademark infringement against Defendant PIL in 1999. In its
Answer to Ty's Complaint, PIL offered the following affirmative
As Plaintiff alleges in its Complaint, it has
licensed others who are in competition with this
Defendant to publish and/or distribute books similar
to those upon which this Complaint is based. This
suit is an attempt by Plaintiff to control the
distribution and dissemination of information
regarding its products and constitutes unfair
competition and an improper attempt to create a
monopoly by Plaintiff so as to bar it from obtaining
any relief at law or in equity.
Defendant's Answer, ¶ 60. Shortly after the close of discovery,
Ty moved for summary judgment on both its copyright and trademark
claims. I granted summary judgment on the copyright claims but
denied summary judgment on the trademark claims. PIL appealed
both summary judgment rulings, and the Seventh Circuit reversed.
Ty, Inc. v. Publ'ns Int'l. Ltd., 292 F.3d 512 (7th Cir.
2002), cert. den., 537 U.S. 1110 (2003).
With respect to the copyright claims and defenses, I
subsequently ruled that the Seventh Circuit limited the scope of
remand to the issue of the defense of fair use and that PIL could
not raise the defense of misuse on remand See Ty, Inc. v.
Publ'ns Int'l, Ltd., No. 99 C 5565, 2003 U.S. Dist. LEXIS 9549,
at *13-17 (N.D. Ill. June 5, 2003). In that June, 2003 decision,
I noted that despite pleading the defense of misuse in paragraph
60 of its Answer, PIL waived the defense by failing to argue it
in response to Ty's motion for summary judgment and by failing to
argue copyright misuse in its appeal of my decision. Id. at 15.
In 2003, Ty moved for partial summary judgment on PIL's
affirmative defense of trademark misuse. I granted Ty's motion,
holding that paragraph 60 of PIL's Answer pled only a limited
defense of misuse. Ty, Inc. v. Publ'ns Int'l Ltd., No. 99 C
5565, 2004 U.S. Dist. LEXIS 10508 (N.D. Ill. May 27, 2004). In
that decision, I held that the language of paragraph 60 limited
PIL's allegations of misuse to Ty's actions in the present
lawsuit alone and not its conduct with respect to third parties,
e.g., Ty's licensees. Id. at *2-3 (noting that PIL "alleges
that only the present suit is an attempt to `control the
distribution and dissemination of information regarding its
products,' and that only the present suit `constitutes unfair
competition and an improper attempt to create a monopoly by
Plaintiff'"). In light of that ruling, PIL now moves to amend its Answer
pursuant to Federal Rule of Civil Procedure 15 (a) to include
the following two affirmative defenses.
65. Copyright Misuse Ty has used its copyrights to
eliminate or control independent commentary and
criticism about its products. Ty has entered into
license agreements, usually as part of a litigation
settlement, the terms of which give Ty control over
the content of licensed publications. Ty exercised
this control to extend its monopoly into the field of
third-party commentary and criticism regarding Beanie
Babies. At the same time that Ty exercised this
control, the licenses required that these "licensed"
publications disclaim any affiliation with, or
sponsorship or endorsement by Ty.
66. Trademark Misuse Ty has used its trademarks,
and licenses thereof, to mislead consumers about the
source of the content of the licensed publications,
and/or Ty's sponsorship, endorsement or affiliation
with the licensed publications. Ty has entered into
license agreements, usually as part of a litigation
settlement, the terms of which give Ty control over
the content of the licensed publications. Ty
exercised this control to extend its monopoly into
the field of third-party commentary and criticism
regarding Beanie Babies. At the same time that Ty
exercised this control, the licenses required that
these "licensed" publications disclaim any
affiliation with, or sponsorship or endorsement by
I deny PIL's motion with respect to both defenses.
A. PIL's Motion to Amend its Answer to Add the Defense of
It is within my sound discretion to grant or deny this motion.
Jones v. Hamelman, 869 F.2d 1023, 1026 (7th Cir. 1989). Under
Fed.R. Civ. P. 15 (a), leave to amend a complaint "shall be
freely given when justice so requires." The Supreme Court has
interpreted this to mean that, "[i]n the absence of any apparent
or declared reason such as undue delay, bad faith or dilatory
motive on the part of the movant . . . undue prejudice to the
opposing party by virtue of allowance of the amendment, futility of amendment, etc. the
leave sought should, as the rules require, be `freely given.'"
Foman v. Davis, 371 U.S. 178, 182 (1962).
PIL asserts that it satisfies the Foman standard with respect
to the proposed copyright misuse amendment. I disagree. Prior to
my June, 2004 decision that PIL ineffectively pled the full
affirmative defense of copyright misuse, PIL had at least two
opportunities to raise and argue the defense: first, in response
to Ty's motion for summary judgment; and second, in its appeal of
my decision granting summary judgment in Ty's favor on the
copyright claim. At both of these junctures, PIL believed that it
had pled copyright misuse as an affirmative defense in paragraph
60 of its Answer. PIL's failure to argue this defense arose prior
to my decision that found the pleading inadequate. In the
interim, Ty won a partial grant of summary judgment on the issue
of copyright infringement, a decision that was remanded for
limited consideration of the defense of fair use.
At this late stage in the proceedings, PIL's motion to amend is
both untimely and prejudicial to Ty. In 2000, when PIL failed to
argue its defense of copyright misuse, PIL possessed the same
facts as it does now. See Continental Bank, N.A. v. Meyer,
10 F.3d 1293, 1297-98 (7th Cir. 1993) (upholding denial of motion to
amend answer when defendant was in possession of facts on which
proposed amendment was based for more than two years). I will not
allow PIL to raise now a defense that it believed it pled but
failed to argue at two prior stages in this litigation.
Furthermore, after a grant of summary judgment on the matter of
copyright infringement, a subsequent appeal to the Seventh
Circuit, and a remand limited to the discrete issue of fair use,
it is simply too "late in the day" for PIL to attempt to amend
its pleadings to include a new defense. Cleveland v. Porca Co., 38 F.3d 289, 297-98 (7th Cir.
1994) (no abuse of discretion to deny motion to amend to add new
claim "after discovery was completed and after the motions for
summary judgment were fully briefed"). See also Garner v.
Kinnear Mfg. Co., 37 F.3d 263, 269-70 (7th Cir. 1994) (no abuse
of discretion to deny motions to amend after opposing party moved
for summary judgment when parties failed to "take advantage of
the opportunities afforded them to press their case"); and
Kleinhans v. Lisle Sav. Profit Sharing Trust, 810 F.2d 618, 625
(7th Cir. 1987) (plaintiff's motion to amend "represents an
apparent attempt to avoid the effect of summary judgment" given
that plaintiff based its motion on information known before
defendants moved for summary judgment). Given the significant
delay since PIL first learned of the facts that purportedly
support its proposed defense and given that PIL's motion would
result in litigation over new issues on a matter that has already
been the subject of a grant of summary judgment, PIL's motion to
Amend is denied. See Sanders v. Venture Stores, 56 F.3d 771,
774 (7th Cir. 1995) ("granting Plaintiffs' motion for leave to
amend clearly would result in undue delay, as well as prejudice
to [Defendant] . . . forcing [Defendant] to re-litigate the
dispute on new bases . . . and to incur new rounds of additional
and costly discovery, and depriving it of the meaningful value of
obtaining summary judgment").
B. PIL's Motion to Amend its Answer to Add the Defense of
Once again, PIL's motion cannot overcome Foman's exception
for amendments that risk undue delay or prejudice to the
non-movant. Foman, 371 U.S. at 182. PIL seeks to add a new,
albeit related, affirmative defense to Ty's claim of trademark
infringement. Specifically, PIL's amended answer would allege Ty's misuse of its trademark with
respect to its relationship with licensees not party to this
Unlike PIL's proposed affirmative defense of copyright misuse,
PIL did argue the merits of its trademark misuse defense when it
responded to Ty's motion for partial summary judgment on the
defense. However, because PIL originally pled only the limited
affirmative defense of misuse based on the present suit, PIL's
proposed amendment would require Ty to conduct additional
discovery on this matter. Proposed amendments that require
additional discovery by the non-movant long after the close of
discovery cause prejudice sufficient to support a district
court's discretionary denial of the motion to amend. Continental
Bank, 10 F.3d at 1298 ("If the amendment were allowed, the
[non-movant] would have been put to additional discovery, and
thus prejudiced"). The fact that PIL's proposed amendment
involves Ty's conduct with its own licensees does not mean that
Ty would not suffer prejudice if forced to respond to the
affirmative defense. Continental Bank recognized the burden
amended affirmative defenses can place on the non-movant, even
when the defense involves the non-movants' own behavior. Id.
This prejudice alone compels the denial of PIL's motion.
Although delay alone is typically an insufficient basis for
denying a motion to amend, delay does constitute grounds for
denying a motion to amend when that delay "results in undue prejudice to the opposing party." Tragarz v. Keene Corp.,
980 F.2d 411, 432 (7th Cir. 1992). In this case, PIL's delay in
clarifying its "inartful pleading" comes years after the close of
discovery and a grant of summary judgment on Ty's behalf on the
issue of the trademark misuse defense. PIL's delay in amending is
sufficiently undue to prejudice Ty. Id. Cf. King v. Cooke,
26 F.3d 720, 723 (7th Cir. 1994) (upholding decision permitting the
amendment of an answer that inadvertently included admissions,
even when the motion was filed three years after the original
answers were filed; the non-movant was not prejudiced by the
amendment since he had not relied on the answers).
Finally, Ty has now won partial summary judgment on its motion
to exclude PIL's defense of trademark misuse. Allowing PIL's
amendment would deprive Ty "of the meaningful value of obtaining
summary judgment." Saunders v. Venture Stores, Inc.,
56 F.3d 771, 774 (7th Cir. 1995) (noting that Seventh Circuit case
law "uniformly advis[es] that a plaintiff's leave to amend, when
filed after discovery has been closed and after a defendant's
motion for summary judgment has been filed, is considered unduly
delayed and prejudicial"). Therefore, PIL's motion to amend its
defense of trademark misuse is also denied.
II. PIL's Motion to Exclude the Testimony and Opinion of
Expert Howard Fisher
In June, 2003 I allowed both parties in this case to take
additional expert discovery on the matter of apportioning PIL's
profits "between those attributable to the photos and those
attributable to the text." Ty, Inc. v. Publ'ns Int'l, Ltd.,
2003 U.S. Dist. LEXIS 9309, No. 99 C 5565, 2003 WL 21294667, at
*6 (N.D. Ill. June 4, 2003). Ty retained Howard Fisher as its
expert witness on the subject of apportionment and PIL now moves
to exclude Fisher's expert testimony and opinion pursuant to Federal Rule of Evidence 702
and Daubert v. Merrell Dow Pharm., 509 U.S. 579 (1993).
"The admission of expert testimony is specifically governed by
[Rule 702] and the principles announced in" Daubert. Smith v.
Ford Motor Co., 215 F.3d 713, 717 (7th Cir. 2000). Expert
testimony must satisfy the following standard:
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.
Fed.R. Evid. 702. This standard requires me to evaluate both
the reliability and the relevance of expert testimony. Daubert,
509 U.S. at 589. In the Seventh Circuit, reliability and
relevance are tested by evaluating "(1) whether the expert would
testify to valid scientific knowledge, and (2) whether that
testimony would assist the trier of fact with a fact at issue."
Smith, 215 F.3d at 718 (quoting Walker v. Soo Line R.R Co.,
208 F.3d 581
, 586 (7th Cir. 2000)). PIL's various objections to
Fisher's expert opinion essentially challenge the reliability
rather than the relevance of his testimony.
The reliability of an expert depends upon both the expert's
qualifications and the methodology employed by that expert.
Smith, 215 F.3d at 718; see also Kumho Tire Co. v.
Carmichael, 526 U.S. 137, 153 (1999). An expert's qualifications
need not stem from academic pedigree alone. Both the Federal
Rules and this Circuit's case law recognize practical experience
and training as bases of expertise. Fed R. Evid. 702 (an expert
may be qualified by "knowledge, skill, experience, training, or education"); and
Tyus v. Urban Search Mgmt., 102 F.3d 256, 263 (7th Cir. 1996)
("genuine expertise may be based on experience or training").
Like Gabriel Perle, the expert tendered by PIL on the same
issue of apportionment, Howard Fisher has sufficient general
experience in the customs and practices of the publishing
industry. Fisher has worked in the publishing industry for more
than 30 years creating, publishing and selling non-fiction books
for consumers. He was the founding shareholder of HPBooks, a
publishing company sold to Knight-Ridder newspapers. Fisher later
served as the Vice President of Sales and Marketing at
Knight-Ridder. Fisher also directed the sales and marketing of 10
bestsellers and is the co-author of a New York Times No. 1
bestseller. He has published extensively in adult non-fiction
subjects on such topics as cooking, gardening and landscaping,
home improvement, parenting, health, self-help, photography and
business. In sum, Fisher's publishing experience includes work in
sales and marketing, finance, operations, new product
development, editorial and packaging.
At issue, however, is whether Fisher possesses sufficient
specialized expertise to render his opinion on the topic of
apportionment reliable, as required by Daubert. Fisher's
competence in the general field of non-fiction publishing must
extend to his specific testimony on the matter of apportioning
the profits based on PIL's use of infringing photographs. See
Carroll v. Otis Elevator Co., 896 F.2d 210, 212 (7th Cir. 1990)
("[w]hether a witness is qualified as an expert can only be
determined by comparing the area in which the witness has
superior knowledge, skill, experience, or education with the
subject matter of the witness's testimony) (citing Gladhill v.
General Motors Corp., 743 F.2d 1049, 1052 (4th Cir. 1984)). See
also 28 Charles A. Wright & Victor J. Gold, Federal Practice
and Procedure § 6205 (2d ed. 1993) (citing Berry v. City of Detroit, 25 F.3d 1342, 1351 (6th Cir. 1994) ("The issue with
regard to expert testimony is not the qualifications of the
witness in the abstract, but whether those qualifications provide
a foundation for a witness to answer a specific question").
I have already defined the specific expertise required for this
aspect of the case as "demonstrated experience in valuation." Ty
Inc. v. Publ'ns Int'l., Ltd., 2004 U.S. Dist. LEXIS 12037, No.
99 C 5565 at *8, n. 1 (N.D. Ill. July 1, 2004). Fisher will be
asked to assist the jury in determining the profits driven by
PIL's use of the use of the allegedly infringing photographs.
However, as I noted earlier in this case, "it is difficult to
comprehend how any expert could acquire significant experience in
determining `what profits are driven by the use of photographs.'"
Id. at 11.
Ty argues that Fisher's extensive publishing experience, and
more particularly his experience in marketing and sales, renders
him an expert in understanding the "drivers" of consumer
purchases, including color photographs. While I cannot agree that
Fisher has an "ideal" set of skills and background for evaluating
the value of color photographs as a driver of consumer purchases,
I believe his experience in gauging consumer interest in and
consumption of adult, non-fiction books and magazines is
sufficient to provide a jury with an expert opinion on
apportioning the value of the photographs in the publications at
issue in this case. Although Fisher offers no evidence that he
has engaged in similar apportionment exercises as a part of
litigation, his background in finance and profit calculations and
his familiarity with consumer preferences provide a sufficient
foundation in valuation from which he can answer the specific
question of apportioning profits based on those preferences. Defendant's expert Perle qualified as an expert because his
experience valuing photographs for the purpose of acquiring them
provided a strong base from which he could determine the value of
photographs as an element of commercial profitability. As PIL
points out, Fisher's expertise regarding photographs is more
general (photographs constitute but one driver of consumer
purchases) and he alludes to no specific experience in valuing
photographs. However, Fisher's broader experience with the many
drivers of consumer book and magazine purchases renders him no
less qualified than Perle to quantify the profits attributable to
the photographs as PIL used them in the publications currently in
dispute. The importance of photographs as a driver of consumer
purchases whether on covers, in the interior pages of a book or
as part of the overall packaging is relevant to the
determination of profits driven by those photographs. Therefore,
Fisher's experience identifying the drivers of consumer book and
magazine purchases qualifies him as an expert in this case.
PIL also challenges the methodology Fisher employs to reach his
conclusions regarding the apportionment of profits attributable
to PIL's use of the allegedly infringing photographs.
Fed.R.Evid. 702 permits expert testimony only when it "is based upon
sufficient facts or data . . . is the product of reliable
principles," and when the expert has "applied the principles and
methods reliably to the facts of the case." In evaluating
Fisher's testimony, I must be satisfied that he has demonstrated
sufficient intellectual rigor and that his testimony is based
upon his special skills. Tyus, 102 F.3d at 263. His methodology
must not yield mathematical exactness, but it must provide a
rational basis upon which to make a reasonable approximation.
Sheldon v. Metro-Goldwyn Pictures Corp., 309 U.S. 390, 408
(1940). In my July, 2004 decision denying Ty's motion to exclude PIL's
expert opinion and testimony, I noted that "there is no industry
or legal standard methodology for apportionment in copyright
cases." Ty, 2004 U.S. Dist. LEXIS 12037 at *13. I suggested,
however, that one possible methodology would be to evaluate the
relative importance of the non-infringing content of the
infringing work to the marketability of the infringing work based
on the testimony of an expert "informed by observation and
experience." Id. at *13-14 (quoting Sheldon,
309 U.S. at 408.) Similarly, an expert informed by observation and experience
might determine the relative importance of the infringing content
to the value of the infringing work as a whole. See, e.g.,
Bucklew v. Hawkins, Ash, Baptie & Co., 329 F.3d 923, 932 (7th
Cir. 2003) ("[t]he apportionment that the law permits is . . .
between the infringing and the non-infringing features of the
defendant's work"). This is the approach selected by Fisher.
Based on his review of the ten publications at issue in this
litigation, Fisher offers valuations intended to quantify the
"range of profits attributable" to the photographs of Ty's
products.*fn2 Fisher bases his apportionment valuation on
his review of three elements of each publication: the cover, the
interior pages, and the "overall publishing package." In
analyzing these elements, Fisher relies on knowledge gained
during his thirty years of experience marketing and selling books
and working with magazine wholesalers and publishers, information
garnered from his review of industry literature identifying the
primary drivers of consumer purchases, and information provided by Ty regarding the value of licenses Ty
issues to other publishers producing guidebooks to Ty products.
PIL argues that Fisher's report offers only subjective
conclusions unsupported by meaningful analysis. See, e.g., GE v.
Joiner, 522 U.S. 136, 146 (1997) ("nothing in either Daubert
or the Federal Rules of Evidence requires a district court to
admit opinion evidence which is connected to existing data only
by the ipse dixit of the expert. A court may conclude that
there is simply too great an analytical gap between the data and
the opinion proffered"). In fact, Fisher offers only a limited
explanation of how his analysis of the cover photographs,
interior photographs, and overall packaging of the books led to
his conclusion that the profits attributable to PIL's use of the
allegedly infringing photographs range from 75% to 90% of the
total profits for each publication.
However, Fisher does offer a rational basis for his conclusions
informed by his years of experience in the publishing industry.
Sheldon, 309 U.S. at 408. Relying on both his own experience
and an industry study identifying cover art, impulse purchases
and the display of products as the three primary drivers of
consumer book purchases, Fisher concludes that PIL's covers were
the primary driver of consumer purchases of both the books and
magazines. Fisher also bases his estimates of profits
attributable to PIL's use of allegedly infringing photographs on
the number of photographs on the interior pages of the
publications and his assessment of the value of photographs to
"overall consumer appeal," "what the books might look like
without color photographs," the "emphasis in the marketing and
sales materials on the display of color photographs," and the
"high value placed on Ty licenses for the photographs" in similar
publications. Unlike Bucklew, where the testimony of plaintiff's expert had
"no factual basis whatsoever," Fisher's estimates are based on
the use of the allegedly infringing photographs on the covers, on
the photographs that appear on 84% to 94% of the interior pages
of the various publications in dispute, and on the emphasis in
the marketing and sales materials on the display of the
photographs. Bucklew, 329 F.3d at 933. Fisher's reliance on
these factors, in addition to his own knowledge of the value of
the photographs to the overall profitability of the books and
magazines based on his own experience publishing, selling and
marketing books, is sufficient for Fisher to escape the
allegation that the conclusions in his report are connected to
his analysis only by ipse dixit. PIL is free to challenge the
correctness of Fisher's conclusions (e.g., his leap from the
total number and location of the photographs that appear in For
the Love of Beanie Babies and the importance of those
photographs to consumer appeal to his estimate that 75% to 90% of
PIL's profits from the sale of that book are attributable to its
use of photographs of Ty's products) when Fisher testifies.
PIL also asserts that Fisher's analysis is meaningless because
it fails to attribute value to any content in the publications
other than the photographs. However, in calculating the range of
profits attributable to the photographs found on the cover and
interior of PIL's publications (between 75% and 90% depending
upon the publication), Fisher ascribed the remainder (10% to 25%)
to the non-infringing content of PIL's publications. The degree
to which Fisher appropriately valued the non-infringing content
relative to the allegedly infringing photographs may raise doubts
about the credibility of his conclusions, but not the
admissibility of his testimony. PIL's complaint that Fisher engages in excessive "speculation"
is not unfamiliar to this court. I considered and rejected the
same charge when it was leveled against PIL's expert Gabriel
Perle. Given the lack of standard methodology for apportioning
profits in cases like this, it is not surprising that there are
speculative components to each expert's evaluation of the
offending publications. In the instant case, both experts'
conclusions are based on their significant, although different,
experiences in the publishing industry. It will be for the jury
to decide which expert's testimony is more reasonable and offers
a better approach for apportioning profits.
PIL's remaining criticisms of Fisher's analysis raise questions
about the credibility, not admissibility, of Fisher's testimony.
These include: Fisher's lack of clarity in explaining how his
valuations correspond to the different uses of photographs within
each publication; the alleged inconsistency between the industry
study on which Fisher relied and his conclusions; the quality of
the other sources Fisher cited as references and the extent to
which he relied on them; the weight Fisher accorded other factors
arguably influencing PIL's profits or other recognized drivers of
consumer purchases; Fisher's decision to not compare PIL's
publications to competitors' publications as part of his
analysis; Fisher's purported over-emphasis on the photographs
that appear on the publications' covers; and the similarity of
Fisher's estimates for each of the ten publications.*fn3
These may be valid criticisms, but they do not render Fisher's
testimony inadmissible. Finally, PIL alleges that Fisher's opinion is inadmissible
because he "farm[ed] out substantial issues" in the process of
completing his report. Fisher's consultations with three other
industry sources in the process of preparing his report is not a
sufficient basis to exclude his testimony, as Fisher does not
appear to have relied on their opinions. However, even if Fisher
did rely on their research or opinions, PIL raised no credible
ground for excluding Fisher's testimony. See Walker v. Soo Line
R.R. Co., 208 F.3d 581, 588 (7th Cir. 2000) (expert testimony
may rely on the opinions or data of others unless "the testifying
expert's opinion is too speculative" or "the underlying basis is
faulty") (citations omitted); and Fed R. Evid. 703 ("[t]he
facts or data in the particular case upon which an expert bases
an opinion or inference may be those perceived by or made known
to the expert at or before the hearing").
In sum, the apportionment of profits based on PIL's use of the
allegedly infringing photographs is a speculative endeavor at
best. While elements of Fisher's analysis are subject to
challenge, I believe that his analysis is as likely to aid the
jury in its task of apportioning profits as is the testimony of
PIL's expert Gabriele Perle. PIL remains free to challenge
Fisher's credibility and his conclusions on cross-examination and
to argue that in light of these deficiencies Fisher's conclusions
should be given little weight.
In its reversal of my earlier decision in this case, the
Seventh Circuit noted that I "erred in refusing to apportion
PIL's profits between those attributable to the photos and those
attributable to the text." Ty, Inc., 292 F.3d at 524. Judge
Posner specifically noted that "[a]ll that Ty is entitled to if
it proves infringement on remand is the profits attributable to
the photos." Id. At PIL's request, I agreed that the jury
should have the benefit of expert testimony on this subject.
However, I never expressed certainty that reliable expertise in
this area could be found. Based on what I have seen with both experts, their opinions may be the
best that can be done. In light of Judge Posner's opinion
requiring the apportionment of profits, I am reluctant to reject
both experts. Moreover, even if I was inclined to reject both, it
is a question that ought to be resolved on a full record in
context at trial.
For the reasons stated above, PIL's Motion to Amend Its Answer
is DENIED, and its Motion to Exclude the Expert Opinion and
Testimony of Howard Fisher is also DENIED.