United States District Court, C.D. Illinois, Springfield Division
MYERSCOUGH UNITED STATES DISTRICT JUDGE
cause is before the Court on Defendants Meijer, Inc. and
Whitmor, Inc.'s Motion to Strike the Declaration of
Garfield Goodrum (d/e 212). The Motion is GRANTED IN PART and
DENIED IN PART. The Court denies as moot the Motion to Strike
the portion of the Declaration relating to the chart of
Digital Millennium Copyright Act (DMCA) violations. For
purposes of the summary judgment pleadings, the Court takes
judicial notice of the United States Patent and Trademark
Office (PTO) documents at Exhibits 9 through 13 but STRIKES
the factual assertions contained in paragraphs 11 through 24
of the Declaration.
the attorneys representing Plaintiff in this litigation,
Garfield Goodrum, filed a Declaration in support of
Plaintiff's summary judgment pleadings (d/e 191).
Goodrum's Declaration contains three sections with the
following headings: (1) Chart of DMCA Violations; (2)
Prosecution and Registration of SPARROWCLIPS, U.S. Reg. 5,
040, 924, Serial No. 86899130; and (3) PTO Registration of
Word Marks for Products with Decorative Shapes.
section of the Declaration titled “Chart of DMCA
Violations, ” Goodrum states that Exhibit 1 is a chart
summarizing certain commercial documents produced by the
parties in the action and certain deposition testimony from
Defendants. The Chart purports to summarize information
showing Defendants' distribution of its CANARY CLIPS. One
column, titled “# of CMI Violations, ” contains
second section, titled “Prosecution and Registration of
SPARROWCLIPS, U.S. Reg. 5, 040, 924, Serial No. 86899130,
” Goodrum recites the prosecution and registration
history of the SPARROWCLIPS mark with the PTO. Goodrum also
makes factual assertions, such as identifying actions taken
by the PTO examining attorney and asserting that the PTO
accepted SPARROWCLIPS as inherently distinctive and never
issued a registration refusal based on descriptiveness.
See, e.g., Decl. ¶¶ 14, 17, 18.
Goodrum cites to the trademark application for SPARROWCLIPS
(d/e 191-14), the prosecution history (d/e 191-15, 191-16),
and the trademark registration (d/e 191-17) (Exs. 9-12).
third section of the Declaration, “PTO Registration of
Word Marks for Products with Decorative Shapes, ”
Goodrum identifies examples of PTO registration word marks
for products with decorative shapes. Goodrum cites to
examples of such trademarks and attaches copies of the
registration certificates. See (d/e 191-18) (Ex.
13). He refers to the practice of registering word marks for
products with decorative shapes as
“long-standing” and states that “the PTO
has registered word trademarks arguably suggestive of the
decorative shapes of products for which they are used,
finding them inherently distinctive and granting registration
on the U.S. Principal Register without Section 2(f) claims of
acquired distinctiveness or disclaimers.” Decl. ¶
move to strike Goodrum's Declaration in its entirety.
argue that, to the extent Goodrum is acting as a fact
witness, his declaration is not based on personal knowledge
and Goodrum was not disclosed in the Rule 26 disclosures.
Defendants further argue that, to the extent Goodrum is
acting as an expert, he did not produce an expert report and
Goodrum does not qualify as an expert under Federal Rule of
Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals,
Inc., 509 U.S. 579, 589 (1993). Defendants also express
concern that Goodrum is the litigation counsel of record for
Plaintiff and that, absent extraordinary circumstances or
compelling reasons, an attorney who participates in a case
should not serve as a witness.
responds that Defendants misconstrue Goodrum's
Declaration. According to Plaintiff, Goodrum “merely
provides the Court with a permissible summary of evidence as
allowed under both Federal Rules of Evidence 1006 and
611(a).” Resp. at 8 (d/e 216) (pertaining to the
“Chart of DMCA Violations”). Plaintiff further
asserts that Goodrum's Declaration introduces true and
correct copies of admissible evidence into the record. In the
alternative, Plaintiff asks that the Court not strike the
Declaration in its entirety and only strike those statements
that may be construed as requiring personal knowledge or
expertise. Resp. at 11, 12.
Court denies as moot Defendants' motion to strike the
section titled “Chart of DMCA Violations.”
Plaintiff uses this portion of the Declaration in its motion
for summary judgment to support the statements that Meijer
knowingly distributed CANARY CLIPS in over 200 retail stores
and Whitmor knowingly distributed CANARY CLIPS to
Meijer's stores and TJX in over 81 distributions with
false copyright management information and without Plaintiffs
correct copyright management information; . See Pl.
SOF ¶¶ 52, 53 (d/e 190); see also Pl. Mot.
at 103 (seeking summary judgment that Whitmor violated the
DMCA 163 times and Meijer violated the DMCA 400 times).
Opinion filed contemporaneously with this Opinion, the Court
has found that disputed issues of material fact remain
regarding liability on the DMCA claims. The Court did not
need to address the portion of Plaintiff's motion for
summary judgment seeking damages for the alleged DMCA
violations. Therefore, the Court need not determine whether
the section of the Goodrum Declaration pertaining to the
number of DMCA violations should be struck. Defendants'
motion to strike this portion of the Declaration is denied as
Court will address the second and third portions of
Goodrum's Declaration together. Plaintiff asserts, in its
response to Defendants' motion to strike, that the
Declaration “simply introduces true and correct copies
of admissible evidence into the record.” Resp. at 2
(d/e 126). Taking Plaintiff at its word, that the intent was
to introduce true and correct copies of admissible evidence
into the record, the Court will take judicial notice of the
PTO records. Maxberry v. ITT Tech. Inst., No.
1:13-CV-00409-SEB, 2015 WL 416495, at *4 (S.D. Ind. Jan. 30,
2015) (PTO records are the proper subject of judicial
notice); In re Unified Messaging Solutions, LLC Patent
Litig., No. 12 C 6286, 2013 WL 5405698, at *1 n.4 (N.D.
Ill. Sept. 25, 2013) (court judicially noticed website
printouts recovered from the PTO), aff'd 708
Fed.Appx. 1013 (Fed. Cir. 2017). The factual assertions, as