Swimming in Shark - Infested Waters

by James T. Berger

Doing an in-person survey (as opposed to a mail or telephone survey) for intellectual property litigation cases is literally like swimming in shark-infested waters. Hazards abound and a thick skin on the part of the survey expert is mandatory.

In certain cases, a survey can be a powerful ploy. Not only can it sway judge and/or jury, if the survey is convincing enough it can go a long way toward convincing an opponent to settle rather than litigate. Also, a good survey can help in obtaining a summary judgment.

However, the wrong survey or the wrong execution of a survey can weaken or even destroy a case. Therefore, the rationale, methodology and execution of the survey is crucial to its success. Be aware that every survey is subject to review and criticism. This is important to remember if you are the initiator or the adversary. Even the best of surveys are subject to criticism and one can easily find an expert with experience and background to cast doubt on the most ironclad of contentions or conclusions.

8 Simple Rules

Following are eight simple rules to follow when planning and executing an intellectual property related surveys:

Rule 1: Determine precisely what you want to prove.

This will save time and money when you screen and select your survey expert. If it is a likeihood of confusion case, make sure you can articulate what you believe are the elements of confusion and why. If it is a trade dress case, gather the specific examples of the appearance of the product, the trademark or the advertisement and be able to articulate to the expert precisely why you believe or do not believe that somebody has copied the appearance of the product, advertisement or other point of trade dress infringement. If it is a secondary meaning case, be able to document your contention that the product, name, trademark, etc. has taken on secondary meaning.

Rule 2: Isolate your target market.

In marketing today virtually every strategy is directed at a particular market segment. In past eras, marketers would attempt to “mass market” products to everyone. Rarely is that attempted today. Marketers have put the shotgun back into the gun rack and have adopted the high- powered rifle as the weapon of choice. Determine from your client precisely who that target market is realizing it can be a broad market or a very narrow one. The broader the market the easier and cheaper it is to execute the survey. The narrower the market, the more challenging and, unfortunately, the more expensive. In my experience, a target market could be as broad as anyone who has ever purchased a power tool or a consumer package good or as narrow as a specialized medical practitioner responsible for

prove. Don’t be afraid of the length of the survey. In some cases, you can do a mall intercept survey where you can pay as little $5 and show something to the subject very quickly and ask as little as two or three questions. In other cases, you have to recruit people to come into a research facility and your questionnaire can be long and involved. The key rule to follow is: whatever it takes.

Rule 3: Have the expert develop a survey that proves what you want to prove.

Don’t be afraid of the length of the survey. In some cases, you can do a mall intercept survey where you can pay as little $5 and show something to the subject very quickly and ask as little as two or three questions. In other cases, you have to recruit people to come into a research facility and your questionnaire can be long and involved. The key rule to follow is: whatever it takes.

Rule 4: Always play devil’s advocate.

As one who has worked both sides of the street, try to anticipate how your opponent will critique what you are trying to prove. Put yourself in his/her shoes right from the beginning. Make believe your survey is his/her survey and try to find the flaws and soft spots before you even begin the execution of the survey. It’s like preparing a politician for a news conference. The fewer surprises you get with your survey, the stronger your case or your settlement bargaining position.

Rule 5: Do your survey procedure homework.

Make sure all the details and “little things” are covered. For example, make sure that your subjects are wearing their glasses or hearing aids if they require such devices. If you don’t, your opponent will question this and although it’s not a fatal flaw in a survey, it will be a point of weakness. There are a variety of such procedures to watch for and there are a number of published guides that enumerate those procedures. Make sure your expert is aware that you want these rules followed precisely.

Rule 6: Test your survey.

Have your expert test the survey himself to verify anticipated results. Before you embark on expensive field testing at a number of out-of-town venues have a good idea of the results you can expect. Have your expert go to a local facility, recruit an appropriate number of subjects and execute the questionnaire. If there are alternatives to presenting the evidence or alternative questions to use when probing for information, test them. When you are finally ready for your expert to take the survey on the road and train research facility personnel, have some solid up- front expectations.

Rule 7: Be prepared to abandon the survey.

If your test data is not being confirmed in the actual survey or if your test data was inconclusive going into the execution and things are not going well with the actual survey, be prepared to pull the plug and try something else. Have your expert stay in very close touch during the first day or two of the survey execution. Depending on how important the survey is to your case, you might want to instruct your expert to use his/her time to experiment with different approaches in an attempt to settle on something that will support your case. If nothing is forthcoming, pick up your marbles and go home. You are not committed to disclosing test results if you choose to abandon the survey. If your survey expert makes no report, he/she will not be deposed. No survey is better than a flawed survey that could very well weaken your case.

Rule 8: Don’t ignore ancillary data from the survey.

Everything that comes out of the survey is fair game for your opponent. Even information that has no specific relevance to the key points can jeopardize your findings if you ignore them. I did a survey in an arbitration case that dealt with a car manufacturer withholding supply to a dealer and thus jeopardizing the dealer’s to compete with other dealers. The findings in the case were right on target and the hypothesis was proved. However, in the course of the research, I uncovered some information that was highly uncomplimentary to the dealership in question. I continually pointed out to the attorney that this information was a potential bombshell, but the attorney chose to ignore it saying that “all car dealers are guilty of this kind of thing.” When I wanted to address these findings in my report and give my opinion

on the reasons for these findings, the attorney I was working with opted not to mention them. The opposing attorney, however, feasted on these results and realized how embarrassing they could be for the car dealership. It was only during the deposition that the attorney I was working with realized the potential damage posed by these findings. By then it was too late. The opposing attorney had effectively neutralized my value and the excellent findings from the survey.

Clearly, doing a survey is a high- risk/high-return venture. If successful it can make your case, force a settlement or even a summary judgment. If done poorly, it will come back to haunt you. Be very careful in selecting your survey expert. Check cases in which the expert has been involved. Check references to make sure that expert gives compelling testimony. Finally, make sure the expert is flexible, can take criticism and be totally committed to what you hope to prove.

Reprinted from
INTELLECTUAL PROPERTY TODAY
June, 2004

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