United States District Court, N.D. Illinois, Eastern Division.
River Light V, L.P. and Tory Burch LLC, Plaintiffs,
Zhangyali, et al., Defendants.
MEMORANDUM OPINION AND ORDER
S. SHAH United States District Judge.
I Love You To The Moom And Back operates an online store and
sold earrings bearing a counterfeit Tory Burch trademark. The
owners of that trademark, plaintiffs River Light V, L.P. and
Tory Burch LLC, brought claims under the Lanham Act and the
Illinois Uniform Deceptive Trade Practices Act. Plaintiffs
now move for summary judgment and seek statutory damages of
$150, 000. For the following reasons, summary judgment is
granted in favor of plaintiffs, and statutory damages in the
amount of $100, 000 will be awarded.
judgment is appropriate if the movant shows that there is no
genuine dispute as to any material fact and the movant is
entitled to judgment as a matter of law. Spurling v. C
& M Fine Pack, Inc., 739 F.3d 1055, 1060 (7th Cir.
2014); Fed.R.Civ.P. 56(a). A genuine dispute as to any
material fact exists if “the evidence is such that a
reasonable jury could return a verdict for the nonmoving
party.” Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 248 (1986). The party seeking summary judgment has
the burden of establishing that there is no genuine dispute
as to any material fact. See Celotex Corp. v.
Catrett, 477 U.S. 317, 323 (1986). A court must
“construe all facts and reasonable inferences in the
light most favorable to the non-moving party.” Apex
Digital, Inc. v. Sears, Roebuck, & Co., 735 F.3d
962, 965 (7th Cir. 2013).
River Light V, L.P. and Tory Burch LLC hold a valid and
incontestable trademark in the shape of two capital
T’s, registered with the United States Patent and
Trademark Office under the number 3, 029, 795.  ¶
1.Defendant I Love U To The Moom And Back
advertised, offered for sale, and sold earrings featuring a
counterfeit Tory Burch trademark, without plaintiffs’
authorization, through an online Aliexpress.com store. 
¶¶ 2-4. It listed the earrings for $1.80, and
described them as “Hot fashion follow out big classic
double T stud earrings the branded styled fashion rose gold
button earrings for women.”  ¶ 2. Defendant
advertised and offered to ship the earrings to potential
customers in Illinois and elsewhere in the United States.
 ¶ 4.
response to this motion, defendant refers to and attaches the
declarations of Wenquing Li and Michal Malkiewicz-two expert
reports that opine on plaintiffs’ actual damages and
defendant’s willfulness in infringing upon
plaintiffs’ trademarks. See [62-1], [62-3].
Plaintiffs request that the expert reports be stricken,
because defendant never disclosed the identities of, or its
intent to use, any expert witnesses. Under Rule 37(c),
“[i]f a party fails to provide information or identify
a witness as required by Rule 26(a) or (e), the party is not
allowed to use that information or witness to supply evidence
on a motion, at a hearing, or at a trial, unless the failure
was substantially justified or is harmless.”
Fed.R.Civ.P. 37(c). Exclusion is “automatic and
mandatory, ” unless the sanctioned party can show that
nondisclosure was either justified or harmless. David v.
Caterpillar, Inc., 324 F.3d 851, 857 (7th Cir. 2003)
(quoting Salgado v. Gen. Motors Corp., 150 F.3d 735,
742 (7th Cir.1998)).
concedes that it failed to make any initial disclosures or
disclosures of expert testimony, and that the Li and
Malkiewicz declarations constitute expert opinions. Its only
excuse is that it did not have an opportunity to provide the
necessary disclosures. Defendant claims that it did not
decide to commission expert reports until after December 16,
2015, when the briefing schedule for this motion was set and
discovery was stayed, and that the expert reports were not
ready until six days before its response brief was due. This
excuse is not sufficient justification. Defendant both
requested and received the reports before the filing deadline
for its response brief, and it could have moved to lift the
stay or amend the briefing schedule under Federal Rule of
Civil Procedure 56(d). What it should not have done was use a
stay of discovery as an opportunity to attach an expert
report to its response brief without warning.
also claims that its nondisclosure was harmless. The
following factors should be considered in determining whether
nondisclosure was harmless:
(1) the prejudice or surprise to the party against whom the
evidence is offered; (2) the ability of the party to cure the
prejudice; (3) the likelihood of disruption to the trial; and
(4) the bad faith or willfulness involved in not disclosing
the evidence at an earlier date.
Tribble v. Evangelides, 670 F.3d 753, 760 (7th Cir.
2012). Defendant concedes that plaintiffs may have been
surprised by its experts’ existence, but argues that
they should not be surprised by the content of the expert
reports, because they are consistent with and support
“what the defendant [has] been claiming throughout this
case.”  at 4. Defendant makes no mention at all of
the prejudice arising from plaintiffs’ inability to
adequately respond to the expert declarations. “Without
proper disclosures, a party may miss its opportunity to
disqualify the expert, retain rebuttal experts, or hold
depositions for an expert not required to provide a
report.” Tribble, 670 F.3d at 759-60.
Plaintiffs had no such opportunity, and defendant has not
offered one. Allowing defendant to rely on expert reports
that were disclosed for the first time in a response to
plaintiffs’ summary judgment motion would be
prejudicial. Despite defendant’s arguments to the
contrary, it had the opportunity to make expert disclosures
(or seek permission in advance) but did not, and this
indicates a willful decision to not comply with the rules.
The declarations of Li and Malkiewicz are therefore