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8 UNITED STATES DISTRICT COURT

9 CENTRAL DISTRICT OF CALIFORNIA

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LANARD TOYS LIMITED, CV 19-4350-RSWL-AFMx
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13 Plaintiff, [REDACTED] ORDER re:
Plaintiff’s Motion to
14 v. Strike “Rebuttal Expert
Report of Joel Delman”
15 Submitted by Defendants
ANKER PLAY PRODUCTS, LLC, [55]; Defendants’ Motion to
16 a Florida corporation; IG Exclude Expert Testimony of
DESIGN GROUP AMERICAS, Richard Gottlieb [58];
17 INC., a Georgia Defendants’ Motion to
18 corporation; and LEON Exclude Certain Expert
SUMMERS, an individual, Testimony of Neil J. Beaton
19 [59]; Plaintiff’s Motion
Defendants.
20 for Summary Judgment on All
Causes of Action and
21 Affirmative Defenses [60];
Defendants’ Motion for
22 Partial Summary Judgment
[61]
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24 Plaintiff Lanard Toys Limited (“Plaintiff”) brings
25 this Action for false designation of origin, trademark
26 infringement, design patent infringement, unfair
27 competition, and copyright infringement against
28 Defendant Anker Play Products, LLC (“Defendant Anker”),
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 1 Defendant IG Design Group Americas, Inc. (“Defendant IG
2 Design”), and Defendant Leon Summers (“Defendant
3 Summers”) (collectively, “Defendants”).
4 Currently before the Court are the following five
5 motions: (1) Plaintiff’s Motion to Strike “Rebuttal
6 Expert Report of Joel Delman” Submitted by Defendants
7 (“Motion to Strike Delman Report”) [55]; (2) Defendants’
8 Motion to Exclude Expert Testimony of Richard Gottlieb
9 (“Motion to Exclude Gottlieb Testimony”) [58]; (3)
10 Defendants’ Motion to Exclude Certain Expert Testimony
11 of Neil J. Beaton (“Motion to Exclude Beaton Testimony”)
12 [59]; (4) Plaintiff’s Motion for Summary Judgment on All
13 Causes of Action and Affirmative Defenses (“Plaintiff’s
14 MSJ”) [60]; and (5) Defendants’ Motion for Partial
15 Summary Judgment (“Defendants’ MSJ”) [61].
16 Having reviewed all papers submitted pertaining to
17 these motions, the Court NOW FINDS AND RULES AS FOLLOWS:
18 the Court GRANTS Plaintiff’s Motion to Strike Delman
19 Report; GRANTS in part and DENIES in part Defendants’
20 Motion to Exclude Gottlieb Testimony; GRANTS in part and
21 DENIES in part Defendants’ Motion to Exclude Beaton
22 Testimony; GRANTS in part and DENIES in part Plaintiff’s
23 MSJ; and DENIES Defendants’ MSJ.
24 I. BACKGROUND
25 A. Factual Background
26 Plaintiff is a Hong Kong corporation. Separate
27 Statement in Supp. of Pl.’s MSJ (“Pl.’s SUF”) ¶ 1, ECF
28 No. 60-2. Defendant Anker is a Florida limited

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 1 liability company that manufactures and distributes
2 activity play products for children. Id. ¶ 5.
3 Defendant Summers is Defendant Anker’s chief executive
4 officer who resides in Florida. Id. ¶ 6. Defendant
5 Anker is a subsidiary of Defendant IG Design, which is a
6 Georgia corporation. Id. ¶¶ 7-8.
7 Plaintiff sought and obtained two copyright
8 registrations from the U.S. Copyright Office, which
9 assigned Registration Nos. VA 2-022-296 and VA 1-999-283
10 (collectively, the “Copyrighted Designs”), effective
11 December 29, 2015, to 2-D artwork relating to the
12 single-pack and three-pack versions of Plaintiff’s
13 “Chalk Bomb!” product (the “Chalk Bomb Product”),
14 respectively. Id. ¶ 2; Separate Statement in Supp. of
15 Defs.’ MSJ (“Defs.’ SUF”) ¶¶ 45, 48, ECF No. 61-2.
16 Plaintiff has remained the sole owner of the Copyrighted
17 Designs. Pl.’s SUF ¶ 3.
18 Plaintiff also applied for federal trademark
19 registration for the mark CHALK BOMB!® (the “Mark”) for
20 “toys comprised of chalk powder, namely, tossing toys
21 and drawing toys” in International Class 028. Id. ¶ 4.
22 The Mark registered as U.S. Registration No. 5,046,808.
23 Id.
24 Plaintiff is the assignee of U.S. Design Patent No.
25 D804,596, dated December 5, 2017, for “[t]he ornamental
26 design for a toy throwing ball, as shown and described”
27 (the “’596 Patent”). Id. ¶ 9; Defs.’ SUF ¶ 1.
28 Plaintiff is also the assignee of U.S. Design Patent No.

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 1 D815,220, dated April 10, 2018, for “[t]he ornamental
2 design for a toy throwing ball, as shown and described”
3 (the “’220 Patent”). Pl.’s SUF ¶ 9; Defs.’ SUF ¶ 2.
4 The ’220 Patent claims priority to, and is a divisional
5 application of, the ’596 Patent (collectively, the
6 “Asserted Patents”). Defs.’ SUF ¶ 2.
7 Defendants promoted and sold a product bearing the
8 mark “Chalk Blast” (“Accused Product”). Pl.’s SUF ¶ 30.
9 Below are screenshot images of the Accused Product after
10 being removed from its packaging:
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18 Defs.’ SUF ¶¶ 18(a)-(b).
19 Plaintiff has asserted claims under 15 U.S.C. §
20 1117(a), 17 U.S.C. § 504(b), 35 U.S.C. § 284, and 35
21 U.S.C. § 289. Id. ¶ 52. Plaintiff’s theory of actual
22 damages is that the introduction of the Accused Product
23 caused “market spoilage,” which in turn caused Plaintiff
24 to sell less product. Id. ¶ 53.
25 B. Procedural Background
26 Plaintiff filed its Complaint [1] on May 20, 2019,
27 alleging false designation of origin, trademark
28 infringement, design patent infringement, California

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 1 unfair competition, and copyright infringement. After
2 the parties stipulated [11] to extend time to answer the
3 Complaint, Defendant Anker filed its Answer [12] on
4 August 16, 2019.
5 On January 30, 2020, the Court granted [30]
6 Plaintiff’s Motion for Leave to File First Amended
7 Complaint [22]. Plaintiff filed its First Amended
8 Complaint [32] on February 3, 2020, and Defendants Anker
9 and Summers answered [36] on March 3, 2020.
10 On April 30, 2020, the Court granted [45]
11 Plaintiff’s Motion for Leave to File Second Amended
12 Complaint [43]. Plaintiff filed the operative Second
13 Amended Complaint [46] on May 1, 2020, and Defendants
14 answered [48] on May 15, 2020.
15 On September 30, 2020, the Court denied [82]
16 Plaintiff’s Motion for Leave to File Third Amended
17 Complaint [51].
18 Plaintiff filed its Motion to Strike Delman Report
19 [55] on August 21, 2020. Defendants opposed [72] on
20 September 1, 2020, and Plaintiff timely replied [75].
21 Defendants filed their Motion to Exclude Gottlieb
22 Testimony [58] on August 25, 2020. Plaintiff opposed
23 [71] on September 1, 2020, and Defendants timely replied
24 [77].
25 Defendants filed their Motion to Exclude Beaton
26 Testimony [59] on August 25, 2020. Plaintiff opposed
27 [70] on September 1, 2020, and Defendants timely replied
28 [76].

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 1 Plaintiff filed its MSJ [60] on August 25, 2020.
2 Defendants opposed [73] on September 1, 2020, and
3 Plaintiff timely replied [74].
4 Defendants filed their MSJ [61] on August 25, 2020.
5 Plaintiff opposed [69] on September 1, 2020, and
6 Defendants timely replied [78].
7 II. DISCUSSION
8 A. Legal Standards
9 1. Motion for Summary Judgment
10 Federal Rule of Civil Procedure (“FRCP”) 56(a)
11 states that a “court shall grant summary judgment” when
12 “the movant shows that there is no genuine dispute as to
13 any material fact and the movant is entitled to judgment
14 as a matter of law.” A fact is “material” for purposes
15 of summary judgment if it might affect the outcome of
16 the suit, and a “genuine” issue exists if the evidence
17 is such that a reasonable factfinder could return a
18 verdict for the nonmovant. Anderson v. Liberty Lobby,
19 477 U.S 242, 248 (1986). The evidence, and any
20 inferences based on underlying facts, must be viewed in
21 the light most favorable to the nonmovant. Twentieth
22 Century-Fox Film Corp. v. MCA, Inc., 715 F.2d 1327,
23 1328-29 (9th Cir. 1983). In ruling on a motion for
24 summary judgment, the court’s function is not to weigh
25 the evidence, but only to determine if a genuine issue
26 of material fact exists. Anderson, 477 U.S. at 255.
27 Where the nonmovant bears the burden of proof at
28 trial, the movant need only prove that there is no

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 1 evidence to support the nonmovant’s case. In re Oracle
2 Corp. Sec. Litig., 627 F.3d 376, 387 (9th Cir. 2010).
3 If the movant satisfies this burden, the burden then
4 shifts to the nonmovant to produce admissible evidence
5 showing a triable issue of fact. Id.; Nissan Fire &
6 Marine Ins. Co. v. Fritz Cos., 210 F.3d 1099, 1102-03
7 (9th Cir. 2000); see also Cleveland v. Pol’y Mgmt. Sys.
8 Corp., 526 U.S. 795, 805–06 (1999) (quoting Celotex
9 Corp. v. Catrett, 477 U.S. 317, 322 (1986)).
10 2. Motion to Exclude Expert Testimony
11 Expert testimony is admissible pursuant to Federal
12 Rule of Evidence (“FRE”) 702 if it is relevant and
13 reliable. Daubert v. Merrell Dow Pharms., Inc., 509
14 U.S. 579, 589 (1993). Testimony is relevant if it will
15 assist the trier of fact in understanding the evidence
16 or determining a fact in issue. Id. at 591-92. As to
17 the reliability requirement, the court must act as a
18 “gatekeeper” to exclude “junk science” by making a
19 preliminary determination that the expert’s testimony is
20 reliable. Id. at 592-93. Expert testimony must be the
21 product of: (1) sufficient facts or data, (2) reliable
22 principles and methods, and (3) the reliable application
23 of those principles and methods to the facts of the
24 case. Fed. R. Evid. 702.
25 If an expert’s factual basis, data, methods, or
26 application is called sufficiently into question, the
27 court must determine whether the testimony has “a
28 reliable basis in the knowledge and experience of [the

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 1 relevant] discipline.” Kumho Tire Co. v. Carmichael,
2 526 U.S. 137, 149 (1998) (quoting Daubert, 509 U.S. at
3 592). The court has broad discretion in deciding how to
4 assess an expert’s reliability, including what
5 procedures to use in making that assessment, as well as
6 in making the ultimate determination of reliability in
7 light of the facts and circumstances of the particular
8 case. Id. at 152, 158.
9 However, the “court’s role as gatekeeper is not
10 intended to serve as a replacement for the adversary
11 system.” United States v. 14.38 Acres of Land, More or
12 Less Situated in Leflore Cnty., 80 F.3d 1074, 1078 (5th
13 Cir. 1996). “Vigorous cross-examination, presentation
14 of contrary evidence, and careful instruction on the
15 burden of proof are the traditional and appropriate
16 means of attacking shaky but admissible evidence.”
17 Daubert, 509 U.S. at 596 (citation omitted).
18 B. Discussion
19 1. Motions to Exclude Expert Testimony
20 a. Motion to Strike Delman Report
21 Defendants retained Joel Delman (“Delman”) as an
22 industrial design expert witness to opine on whether the
23 Asserted Patents have been infringed and rebut the
24 opinions offered by Plaintiff’s expert Richard Gottlieb
25 (“Gottlieb”). Ex. 1 to Decl. of Richard P. Sybert in
26 Supp. of Pl.’s Mot. to Strike Delman Report, Rebuttal
27 Expert Report of Joel Delman (“Delman Report”) ¶¶ 2-4,
28 ECF No. 55-4.

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 1 Plaintiff moves to strike the Delman Report on four
2 independent grounds: (1) the Delman Report and the
3 expected testimony derived from it contain improper
4 legal opinions, which are inappropriate subject matters
5 for expert testimony; (2) the Delman Report is not in
6 rebuttal to Plaintiff’s expert Gottlieb but instead is
7 an affirmative expert report, and neither Delman nor his
8 report were timely disclosed for that purpose; (3)
9 Delman lacks sufficient qualifications to render
10 opinions on the physical or mechanical toys at issue in
11 this Action; and (4) the Delman Report is a “set up” in
12 that the purported Accused Product that Delman
13 supposedly examined was specially prepared and supplied
14 for his report. Mem. of P. & A. in Supp. of Pl.’s Mot.
15 to Strike Delman Report 2:2-3:8, ECF No. 55-1.
16 In response, Defendants assert that it is well-
17 accepted that experts can provide infringement opinions.
18 Opp’n to Pl.’s Mot. to Strike Delman Report 1:15-19, ECF
19 No. 72. Additionally, Defendants respond that Plaintiff
20 fails to provide any legal support for its claim that an
21 expert “cannot perform the proper non-infringement
22 analysis in response to another expert’s bare, unmoored
23 assertion of infringement.” Id. at 1:20-23. Further,
24 Defendants maintain that Delman’s experience and
25 qualifications working with toy makers and throwing toys
26 are sufficient to opine on the ornamental designs at
27 issue in this Action. Id. at 2:1-7. Lastly, Defendants
28 argue that Plaintiff’s accusation of an alleged scheme

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 1 involving faux product is unfounded and an attempt to
2 side-track the Court. Id. at 13:17-26.
3 Determining infringement of a design patent is a
4 question of fact. Catalina Lighting, Inc. v. Lamps
5 Plus, Inc., 295 F.3d 1277, 1287 (Fed. Cir. 2002); see
6 also Richardson v. Stanley Works, Inc., 597 F.3d 1288,
7 1295 (Fed. Cir. 2010). “[I]n conducting a design patent
8 infringement analysis, the patented design is viewed in
9 its entirety, as it is claimed. The ultimate question
10 requires determining whether ‘the effect of the whole
11 design is substantially the same.’” Payless Shoesource,
12 Inc. v. Reebok Int’l Ltd., 998 F.2d 985, 990-91 (Fed.
13 Cir. 1993) (internal quotation marks and alterations
14 omitted) (quoting L.A. Gear, Inc. v. Thom McAn Shoe Co.,
15 988 F.2d 1117, 1125 (Fed. Cir. 1993)). In making this
16 comparison, the factfinder puts itself into the place of
17 an “ordinary observer.” Egyptian Goddess, Inc. v.
18 Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008). The
19 “ordinary observer” is not an expert; he is an observer
20 “of ordinary acuteness, bringing to the examination of
21 the article upon which the design has been placed that
22 degree of observation which men of ordinary intelligence
23 give.” Gorham Mfg. Co. v. White, 81 U.S. 511, 528
24 (1871); Arminak & Assocs., Inc. v. Saint-Gobain Calmar,
25 Inc., 501 F.3d 1314, 1323 (Fed. Cir. 2007)(“[T]he
26 ordinary observer is a person who is either a purchaser
27 of, or sufficiently interested in, the item that
28 displays the patented designs . . . .”).

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 1 The Court finds that the Delman Report and any
2 testimony therefrom would not be helpful to the trier of
3 fact within the meaning of FRE 702. With respect to
4 design patent infringement, courts routinely hold that
5 “it would constitute error to permit defendant to
6 present, under the imprimatur of a so-called ‘expert,’
7 an opinion which the witness is, at best, no more
8 qualified than the members of the jury to make.” Huang
9 v. Marklyn Grp. Inc., No. 11-cv-01765-REB-BNB, 2014 WL
10 3559367, at *3 (D. Colo. July 18, 2014) (finding an
11 expert with a background in product development was not
12 qualified to offer opinions as to the “ordinary
13 observer”).
14 Here, the Delman Report consists almost entirely of
15 comparisons between the Accused Product and Plaintiff’s
16 Asserted Patents.1 Delman’s observations and
17 conclusions regarding design patent infringement would
18 not be helpful to the jury, as the jury is able to
19 realize those observations themselves. See Huang, 2014
20 WL 3559367, at *4 (excluding expert report that “merely
21 lists some 18 asserted differences between the patented
22 design and the accused products without stating what, if
23 any, effect these differences would have on the overall
24 appearance of the two products to the ordinary observer”
25 because the expert was “no more qualified than the
26
1 The Delman Report also conducts a three-way analysis
27 between the Accused Product, Plaintiff’s Asserted Patents, and
28 the nearest prior art. See Delman Report 27-39.

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 1 jurors to offer these observations”).
2 In addition to offering opinions on design patent
3 infringement, the Delman Report attacks Gottlieb’s
4 qualifications. But “any gaps in a witness’
5 qualifications or knowledge or lack of specialization go
6 to the weight of his testimony and not admissibility.”
7 Romero ex rel. Ramos v. S. Schwab Co., Inc., No. 15-CV-
8 815-GPC-MDD, 2017 WL 5885543, at *10 (S.D. Cal. Nov. 29,
9 2017) (citations omitted). Here, Delman’s opinion on
10 the weight of Gottlieb’s testimony is irrelevant in
11 light of the Court’s conclusions with respect to
12 Gottlieb’s testimony and, to the extent relevant,
13 invades the province of the jury as the trier of fact.
14 As such, Delman’s opinion on the weight of Gottlieb’s
15 testimony is not helpful to the jury. Further, much of
16 the Delman report contains legal conclusions and legal
17 analysis, including a thorough discussion of the case
18 law which is not the proper subject of expert testimony.
19 See Hangarter v. Provident Life & Acc. Ins. Co., 373
20 F.3d 998, 1016 (9th Cir. 2004) (“[A]n expert witness
21 cannot give an opinion as to her legal conclusion, i.e.,
22 an opinion on an ultimate issue of law.”); id.
23 (“Similarly, instructing the jury as to the applicable
24 law ‘is the distinct and exclusive province’ of the
25 court.” (quoting United States v. Weitzenhoff, 35 F.3d
26 1275, 1287 (9th Cir. 1993))).
27 Accordingly, the Court GRANTS Plaintiff’s Motion to
28 Strike Delman Report and STRIKES the Delman Report

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 1 because it fails to provide any opinions that would
2 assist the trier of fact and Defendants have failed to
3 meet their burden of establishing that Delman’s opinions
4 are admissible. See Lanard Toys Ltd. v. Toys “R” Us-
5 Delaware, Inc., No. 3:15-CV-849-J-34PDB, 2019 WL
6 1304290, at *5 (M.D. Fla. Mar. 21, 2019) (“The burden of
7 establishing qualification, reliability and helpfulness
8 lies with the party offering the expert opinion.”).
9 Plaintiff also requests an order “barring [Delman]
10 from testifying or offering any opinions in this case.”
11 Mem. of P. & A. in Supp. of Pl.’s Mot. to Strike Delman
12 Report 17:11-13. The Court declines to categorically
13 preclude Delman from testifying, as Plaintiff’s request
14 is premature at this juncture and may be revisited at
15 trial based on facts and evidence as they are presented.
16 If Defendants wish to call Delman as a witness, the
17 Court ORDERS that they make a proffer in advance of that
18 testimony and outside the presence of the jury. The
19 Court will determine its admissibility at that time.
20 Accordingly, the Court DENIES Plaintiff’s request
21 without prejudice to Plaintiff’s ability to raise it at
22 trial, as appropriate.
23 b. Motion to Exclude Gottlieb Testimony
24 Plaintiff retained Gottlieb to opine on “all
25 aspects of intellectual property infringements” related
26 to Plaintiff’s Chalk Bomb Product. Ex. A to Decl. of
27 Kenneth L. Wilton in Supp. of Defs.’ Mot. to Exclude
28 Gottlieb Testimony, Expert Report of Richard Gottlieb

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 1 (“Gottlieb Report”) 2, ECF No. 58-3.
2 Defendants move to strike Gottlieb’s testimony in
3 its entirety, arguing that Gottlieb is unqualified to
4 render the opinions he offers; conducts an improper
5 infringement analysis; provides unsupported, subjective
6 opinions that are not based on any specialized
7 knowledge, skill, experience, training, or education;
8 and does not apply the appropriate legal standards. See
9 generally Defs.’ Mem. Of Law in Supp. of Defs.’ Mot. to
10 Exclude Gottlieb Testimony (“Mot. to Exclude Gottlieb
11 Testimony”), ECF No. 58-1.
12 Plaintiff responds that
13
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15 Opp’n to Defs.’ Mot.
16 to Exclude Gottlieb Testimony 1:4-15, ECF No. 71.
17 Plaintiff asserts that
18
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20 Id.
21 i. Gottlieb’s Design Patent Infringement
Opinions
22
23 “[D]etermining whether a design patent is infringed
24 is a two-step process. First, the court must construe
25 the design patent’s claim.” Catalina Lighting, 295 F.3d
26 at 1286; see Wing Shing Prod. (BVI) Co. v. Sunbeam
27 Prod., Inc., 665 F. Supp. 2d 357, 360 (S.D.N.Y. 2009)
28 (“District courts following Egyptian Goddess have

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 1 generally relied on patent drawings to construe design
2 claims.”). Next, “the fact-finder must compare the
3 patented and accused designs to determine whether the
4 accused design is substantially similar in appearance to
5 the patented design.” Rockport Co. v. Deer Stags, Inc.,
6 65 F. Supp. 2d 189, 193 (S.D.N.Y. 1999). Importantly,
7 the “infringement analysis must compare the accused
8 product to the patented design, not to a commercial
9 embodiment.” Lanard Toys Ltd. v. Dolgencorp LLC, 958
10 F.3d 1337, 1341 (Fed. Cir. 2020).
11 Here, the Court finds that Gottlieb’s testimony
12 regarding design patent infringement should be excluded
13 in its entirety. In his report, Gottlieb compares the
14 Accused Product to Plaintiff’s Chalk Bomb Product, not
15 to Plaintiff’s Asserted Patents. See Gottlieb Report
16 17-19 (“[The Accused Product] is identical . . . to
17 [Plaintiff’s] product. . . . [I]t was nearly identical
18 in appearance to [Plaintiff’s] patented product.”).
19 Accordingly, the Court concludes that Gottlieb’s
20 testimony regarding an irrelevant comparison between the
21 Accused Product and Plaintiff’s Chalk Bomb Product,
22 rather than the Asserted Patents, would not be helpful
23 to and would only confuse the jury. As such, the Court
24 EXCLUDES Gottlieb’s report and testimony related to
25 design patent infringement. See In re Katz Interactive
26 Call Processing Pat. Litig., No. 07-2196 RGK (FFMX),
27 2009 WL 10676152, at *2 (C.D. Cal. Mar. 11, 2009)
28 (“Expert testimony that is based on an erroneous

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 1 understanding or application of the law cannot meet the
2 requirements of Rule 702 because it cannot logically
3 assist the trier of fact.”)
4 ii. Gottlieb’s Copyright Infringement
Opinions
5
6 In order to prove copyright infringement, a
7 plaintiff must show: (1) he owns a valid copyright; and
8 (2) that the defendant copied the protected aspects of
9 the work. See Skidmore as Tr. for Randy Craig Wolfe Tr.
10 v. Led Zeppelin, 952 F.3d 1051, 1064 (9th Cir. 2020).
11 “[T]he second element has two distinct components:
12 ‘copying’ and ‘unlawful appropriation.’” Rentmeester v.
13 Nike, Inc., 883 F.3d 1111, 1117 (9th Cir. 2018),
14 overruled on other grounds by Skidmore, 952 F.3d 1051.
15 “To prove unlawful appropriation . . . the similarities
16 between the two works must be ‘substantial’ and they
17 must involve protected elements of the plaintiff’s
18 work.” Id.
19 In his report, Gottlieb compares the Accused
20 Product and its packaging to those of Plaintiff without
21 regard to the Chalk Bomb Product’s protected elements.
22 But “[b]ecause the requirement is one of substantial
23 similarity to protected elements of the copyrighted
24 work, it is essential to distinguish between the
25 protected and unprotected material in a plaintiff’s
26 work.” Folkens v. Wyland Worldwide, LLC, 882 F.3d 768,
27 774 (9th Cir. 2018) (emphasis in original) (quoting
28 Swirsky v. Carey, 376 F.3d 841, 845 (9th Cir. 2004).

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 1 Accordingly, the Court concludes that Gottlieb applied
2 an incorrect legal standard. See Ford Motor Co. v.
3 Versata Software, Inc., No. 15-11624, 2018 WL 10733561,
4 at *15 (E.D. Mich. July 9, 2018) (excluding expert
5 testimony related to copyright infringement where expert
6 failed to eliminate the unprotected elements of the
7 copyright before concluding that infringement had
8 occurred); Olin Corp. v. Lamorak Ins. Co., No. 84-CV-
9 1968 (JSR), 2018 WL 1901634, at *21 (S.D.N.Y. Apr. 18,
10 2018) (“Expert testimony also should be excluded when it
11 applies the wrong legal standard.”). Additionally, this
12 comparison—without regard to the Chalk Bomb Product’s
13 protected elements—would not be helpful to and would
14 only serve to confuse the jury. As such, the Court
15 EXCLUDES Gottlieb’s report and testimony as they pertain
16 to his opinions related to copyright infringement.
17 iii. Gottlieb’s Trademark Infringement and
Likelihood of Confusion Opinions
18
19 To establish a claim for trademark infringement, a
20 plaintiff must show: (1) ownership of the mark; and (2)
21 a likelihood of customer confusion. See Applied Info.
22 Sciences Corp. v. eBay, Inc., 511 F.3d 966, 969 (9th
23 Cir. 2007). The same likelihood of confusion standard
24 applies for false designation of origin claims under 15
25 U.S.C. § 1125. See Brookfield Commc’ns, Inc. v. W.
26 Coast Ent. Corp., 174 F.3d 1036, 1046 (9th Cir. 1999).
27 With respect to these claims, Gottlieb compares the
28 Accused Product, its name, and its packaging to

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 1 Plaintiff’s Chalk Bomb Product. Gottlieb notes what he
2 perceives to be the similarities between the two and
3 concludes that it “all adds up to consumer confusion.”
4 Gottlieb Report 22. Additionally, he ultimately
5 concludes that the Accused Product infringes the Mark
6 and is “highly likely to cause consumer confusion.” Id.
7 at 5. All of Gottlieb’s conclusions stem from his
8 personal observations of the products, which are within
9 the province of the jury. See Chesebrough-Pond’s, Inc.
10 v. Faberge, Inc., 666 F.2d 393, 398 (9th Cir. 1982)
11 (stating in a trademark case that, “[T]he similarity or
12 dissimilarity of these two words is a matter easily
13 evaluated by laymen within the realm of their common
14 knowledge and experience. It is highly doubtful that
15 expert testimony on the subject, of the type presented
16 by the affidavit, would be of any real assistance to the
17 trier of fact. Certainly it would be well within the
18 discretion of the trial judge to exclude the expert
19 opinion evidence under [FRE] 702.”); Patsy’s Italian
20 Rest., Inc. v. Banas, 531 F. Supp. 2d 483, 486 (E.D.N.Y.
21 2008) (“[T]estimony based solely on Wallace’s personal
22 opinion on the issue of likelihood of confusion should
23 not be permitted because it would usurp the jury’s role
24 in making fact determinations.”); Pharmacia Corp. v.
25 Alcon Labs., Inc., 201 F. Supp. 2d 335, 377 (D.N.J.
26 2002) (noting that “[t]here are no reported trademark
27 cases in which a court has based its findings of a
28 likelihood of confusion” on experts’ opinions “based

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 1 primarily on a subjective evaluation of the marks in
2 light of their experience”); Arner v. Sharper Image
3 Corp., No. CV 94-1713 ABC(BQRX), 1995 WL 873730, at *9
4 (C.D. Cal. Oct. 5, 1995) (“The Court finds that an
5 industrial design expert’s testimony regarding what an
6 ‘ordinary purchaser’ would perceive is not helpful under
7 Rule 702”).
8 The Court EXCLUDES Gottlieb’s opinions regarding
9 trademark infringement and likelihood of confusion
10 because these opinions would not assist the trier of
11 fact. See Playboy Enters., Inc. v. Terri Welles, Inc.,
12 78 F. Supp. 2d 1066, 1082 (S.D. Cal. 1999) (“[T]he court
13 will not allow Mr. Sterne to render a legal opinion on
14 whether . . . there is a likelihood of confusion.”); see
15 also JIPC Mgmt., Inc. v. Incredible Pizza Co., No. CV
16 08-04310 MMM (PLAx), 2009 WL 8591607, at *4 (C.D. Cal.
17 July 14, 2009) (permitting an expert “to testify
18 regarding the characteristics of relevant consumers, but
19 not to opine on the ultimate likelihood of confusion
20 between the parties’ marks” because “[t]estimony
21 regarding the habits or characteristics of consumers
22 concerns a subject beyond the knowledge of lay jurors
23 and may assist them in understanding consumer reactions
24 to the marks at issue”).
25 iv. Gottlieb’s Opinions Regarding
Defendants’ Intent and Motivation
26
27 “Courts routinely exclude as impermissible expert
28 testimony as to intent, motive, or state of mind.”

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 1 Siring v. Or. State Bd. of Higher Educ. ex rel. E. Or.
2 Univ., 927 F. Supp. 2d 1069, 1077 (D. Or. 2013) (citing
3 Hill v. Novartis Pharm. Corp., No. 1:06-CV-00939-AWI,
4 2012 WL 5451816, at *2 (E.D. Cal. Nov. 7, 2012) (“The
5 Court finds this and other testimony regarding
6 Defendant’s intent, motives or state of mind to be
7 impermissible and outside the scope of expert
8 testimony.”); Johnson v. Wyeth LLC, No. CV 10-02690-PHX-
9 FJM, 2012 WL 1204081, at *3 (D. Ariz. Apr. 11, 2012)
10 (“Dr. Parisian and Dr. Blume may not offer opinions
11 concerning defendants’ motive, intent, knowledge, or
12 other state of mind.”); In re Rezulin Prod. Liab.
13 Litig., 309 F. Supp. 2d 531, 546 (S.D.N.Y. 2004)
14 (finding that “the opinions of [expert] witnesses on the
15 intent, motives, or states of mind of corporations,
16 regulatory agencies and others have no basis in any
17 relevant body of knowledge or expertise”). “Expert
18 testimony as to intent, motive, or state of mind offers
19 no more than the drawing of an inference from the facts
20 of the case.” Siring, 927 F. Supp. 2d at 1077. “The
21 jury is sufficiently capable of drawing its own
22 inferences regarding intent, motive, or state of mind
23 from the evidence, and permitting expert testimony on
24 this subject would be merely substituting the expert's
25 judgment for the jury’s and would not be helpful to the
26 jury.” Id. (first citing United States v. Benson, 941
27 F.2d 598, 604 (7th Cir. 1991) (rejecting expert
28 testimony regarding the purpose of a transaction because

20
 1 “[m]uch of [the expert’s] testimony consists of nothing
2 more than drawing inferences from the evidence that [the
3 expert] was no more qualified than the jury to draw”);
4 then citing Baldonado v. Wyeth, No. 04 C 4312, 2012 WL
5 1802066, at *8 (N.D. Ill. May 17, 2012) (finding that
6 “the jury is fully capable of considering the issue of
7 intent based on the evidence presented at trial”); and
8 then citing Smith v. Wyeth–Ayerst Labs. Co., 278 F.
9 Supp. 2d 684, 700 (W.D.N.C. 2003) (“[T]he jury should
10 hear and/or see first-hand any relevant evidence
11 pertaining to the Defendant’s intent. Then the jury,
12 not the witnesses, should consider the facts and make
13 its own determination regarding Defendant’s intent.”)).
14 Accordingly, the Court EXCLUDES all of Gottlieb’s
15 opinions and testimony related to Defendants’ intent,
16 motive, or state of mind.
17 v. Gottlieb’s Opinions Regarding the
Quality of the Accused Product
18
19 Defendants argue that Gottlieb’s opinions related
20 to the quality of the Accused Product should be stricken
21 because Gottlieb “did not analyze quality in any
22 reasonable or reasoned way.” Mot. to Exclude Gottlieb
23 Testimony 15:3-4. The Court rejects Defendants’
24 contention. Gottlieb concluded that the Accused Product
25 was of “poor quality,” Gottlieb Report 23, after
26 assessing: (1) the thickness of the Accused Product’s
27 cardboard packaging; (2) the coverage and seal of the
28 packaging’s blister; (3) the coarseness of the chalk;

21
 1 (4) the thickness of the fabric material; and (5) the
2 thickness of the “fuses.” See Gottlieb Report 7-12.
3 The Court finds that the assessments made and
4 conclusions drawn by Gottlieb related to the quality of
5 the Accused Product are based on a reliable foundation
6 and may assist the trier of fact. Accordingly, the
7 Court DENIES the Motion to Exclude Gottlieb Testimony on
8 this basis.
9 vi. Gottlieb’s Market Spoilage Opinions
10 Defendants assert that Gottlieb’s testimony that
11 the Accused Product resulted in market spoilage should
12 be stricken because “Gottlieb simply assumes that the
13 market for Plaintiff’s product was impacted by
14 Defendants’ actions,” Mot. to Exclude Gottlieb Testimony
15 16:1-2, and his conclusion “finds no support in the
16 record,” id. at 17:1-2. The Court DENIES Defendants’
17 Motion to Exclude Gottlieb’s Testimony as to Gottlieb’s
18 opinions on market spoilage. Gottlieb’s experience in
19 the toy industry, see Gottlieb Report 2-4, provides him
20 with the potential to provide insight as to whether an
21 alleged “knock-off” of inferior quality could impact the
22 market for the original product. These opinions could
23 be helpful to the trier of fact. Moreover, the denial
24 of Defendants’ motion on this basis does not preclude
25 Defendants from objecting to Gottlieb’s conclusions at
26 trial where they see fit.
27 ///
28 ///

22
 1 vii. Gottlieb’s Opinions Regarding the
Safety of the Accused Product
2
3 Defendants maintain that Gottlieb’s opinions
4 regarding the safety of the Accused Product should be
5 excluded because “Gottlieb simply lacks both the
6 experience and the data necessary to assert that the
7 Accused Product is unsafe.” Mot. to Exclude Gottlieb
8 Testimony 17:18-19. Moreover, Defendants maintain that
9 such opinions would “introduce unfair prejudice under
10 Rule 403.” Id. at 17:20-21.
11 The Court disagrees. Gottlieb’s opinions regarding
12 the safety concerns of the Accused product speak to the
13 overall quality of the Accused Product, and accordingly,
14 contribute to possible market spoilage. Moreover, any
15 issues regarding Gottlieb’s expertise or background in
16 science or safety speak to weight, rather than
17 admissibility, of his testimony. See Romero, 2017 WL
18 5494588, at *10 (“[G]aps in a witness’ qualifications or
19 knowledge or lack of specialization go to the weight of
20 his testimony and not admissibility.”). As such, the
21 Court DENIES Defendants’ Motion to Exclude Gottlieb
22 Testimony on this basis.
23 As such, the Court GRANTS in part Defendants’
24 Motion to Exclude Gottlieb Testimony as it pertains to
25 Gottlieb’s opinions related to design patent
26 infringement, copyright infringement, trademark
27 infringement, and likelihood of confusion. The Court
28 DENIES in part Defendants’ Motion to Exclude Gottlieb

23
 1 Testimony as it pertains to Gottlieb’s opinions related
2 to the quality of the Accused Product, market spoilage,
3 and the safety of the Accused Product.
4 c. Motion to Exclude Beaton Testimony
5 Plaintiff’s expert Neil J. Beaton (“Beaton”) was
6 retained to quantify Plaintiff’s monetary recovery
7 assuming it succeeds in its false designation of origin,
8 trademark infringement, design patent infringement,
9 California unfair competition, and copyright
10 infringement claims. Ex. A to Decl. of Kenneth L.
11 Wilton in Supp. of Defs.’ Mot. to Beaton Testimony,
12 Expert Report of Neil J. Beaton, CPA/ABV/CFF, CFA, ASA
13 (“Beaton Report”) ¶¶ 1-2, ECF No. 59-3.
14 Defendants move to exclude Beaton’s testimony
15 related to Plaintiff’s actual damages on the basis that
16 Beaton’s opinion related to market spoilage “is
17 completely unsupported by the evidence and does not meet
18 the standard of [FRE] 702.” Mem. of P. & A. in Supp. of
19 Mot. to Exclude Beaton Testimony (“Mot. to Exclude
20 Beaton Testimony”) 2:10-11, ECF No. 59-1. Specifically,
21 Defendants argue that Beaton’s testimony should be
22 excluded because Beaton assumed—based on communications
23 with Plaintiff’s Managing Director, James Hesterberg
24 (“Hesterberg”)—that market spoilage occurred in forming
25 his opinions regarding actual damages. Id. 4:5-9.
26 Additionally, Defendants assert that Beaton’s opinion
27 that Defendants failed to comply with their discovery
28 obligations “should be stricken because it does not

24
 1 address an issue the jury is intended to decide, is
2 entirely unsupported and baseless, encroaches on the
3 authority of the Court, and its probative value is
4 substantially outweighed by a danger of unfair prejudice
5 and undue delay.” Id. 2:13-16.
6 Plaintiff responds that
7
8
9
10
11 Opp’n to Defs.’ Mot. to Exclude Beaton
12 Testimony 1:5-11, ECF No. 70. Further, Plaintiff
13 asserts that
14
15 Id. at
16 13:1-5.
17 Plaintiff is correct that expert testimony may be
18 based on circumstantial evidence. See Orth v. Emerson
19 Elec. Co., White-Rodgers Div., 980 F.2d 632, 638 (10th
20 Cir. 1992) (“The expert testimony, though based on
21 circumstantial evidence, was sufficiently reliable.”).
22 Here, Beaton relied on a timeline of Plaintiff’s sales,
23 as well as his discussions with Plaintiff’s Managing
24 Director, Hesterberg, in forming his opinions. See
25 Beaton Report ¶¶ 33, 35. Any alleged flaws in Beaton’s
26 damages opinions go to the weight of his testimony and
27 should be addressed on cross-examination. See City of
28 Pomona v. SQM N. Am. Corp., 750 F.3d 1036, 1044 (9th

25
 1 Cir. 2014) (“Expert opinion testimony is relevant if the
2 knowledge underlying it has a valid connection to the
3 pertinent inquiry. And it is reliable if the knowledge
4 underlying it has a reliable basis in the knowledge and
5 experience of the relevant discipline. Shaky but
6 admissible evidence is to be attacked by cross
7 examination, contrary evidence, and attention to the
8 burden of proof, not exclusion.” (internal quotation
9 marks and citations omitted)). The Court DENIES
10 Defendants’ motion on this basis.
11 However, the Court finds that paragraph 42 of the
12 Beaton Report should be stricken under FRE 403. Beaton
13 notes:
14 Based on these inconsistent representations by
Anker, it is not possible to determine whether
15 Anker has produced records accounting for its
16 full sales of Accused Products. Given the
inconsistencies of Anker’s prior reporting, I
17 would only be able to evaluate Anker’s fulsome
compliance with discovery requests for its
18 sales of Accused Products were Anker to produce
19 audited sales records from 2018 to date, as
well as the associated sales detail for all of
20 its products sold beginning in 2018 by product
number and description that reconciled to its
21 audited financial statements. Only if these
documents are provided would I be able to
22 evaluate whether other Anker sales were of
23 Accused Products or not.

24 Beaton Report ¶ 42. The Court concludes that any

26
 1 not relevant to the amount of damages Plaintiff
2 sustained, and its prejudicial value outweighs any
3 probative value. See Fed. R. Evid. 403 (“The court may
4 exclude relevant evidence if its probative value is
5 substantially outweighed by a danger of one or more of
6 the following: unfair prejudice, confusing the issues,
7 misleading the jury, undue delay, wasting time, or
8 needlessly presenting cumulative evidence.”).
9 Accordingly, the Court GRANTS in part Defendants’
10 motion and STRIKES paragraph 42 of the Beaton Report.
11 Beaton is precluded from testifying as to whether
12 Defendants fully complied with their discovery
13 obligations in this Action.
14 2. Motions for Summary Judgment
15 Plaintiff seeks summary judgment as to all its
16 claims and on all of Defendants’ affirmative defenses.
17 See generally Pl.’s MSJ, ECF No. 60. Defendants move
18 for summary judgment as to Plaintiff’s claims for design
19 patent infringement, copyright infringement, and
20 Plaintiff’s prayer for actual damages. See generally
21 Defs.’ MSJ, ECF No. 61. To the extent the parties’
22 motions involve the same claim, the Court will analyze
23 these motions together.
24 Before proceeding to the merits of the parties’
25 motions, the Court first addresses Plaintiff’s request
26 for judicial notice and the parties’ evidentiary
27 objections.
28 ///

27
 1 a. Request for Judicial Notice
2 Under FRE 201, courts may take judicial notice of
3 facts that are: (1) “generally known within the trial
4 court’s territorial jurisdiction” or (2) “can be
5 accurately and readily determined from sources whose
6 accuracy cannot be reasonably questioned.”
7 In support of its MSJ, Plaintiff requests that the
8 Court take judicial notice of the following: (1) the
9 copyright registration for “Chalk Balls Packaging” with
10 the U.S. Copyright Office under Registration No. VA 2-
11 022-296; (2) the copyright registration for “Chalk Balls
12 Packaging” with the U.S. Copyright Office under
13 Registration No. VA 1-999-283; (3) the trademark
14 registration for “Chalk Bomb!” with the U.S. Patent and
15 Trademark Office under Registration No. 5,046,808; (4)
16 the trademark registration for “CHALK BLAST BALLS!” with
17 the U.S. Patent and Trademark Office under Registration
18 No. 5,386,759; (5) the design patent with the U.S.
19 Patent and Trademark Office under Patent No. D804,596;
20 (6) the design patent with the U.S. Patent and Trademark
21 Office under Patent No. D815,220; (7) Lex Machina’s
22 “Case Summary” for RMS Int’l (USA), Inc. v. Anker Play
23 Products, LLC, et al., Case No. 1:20-cv-21554-UU; (8)
24 Lex Machina’s “Case Summary” for RMS Int’l (USA), Inc.
25 v. Anker Play Products, LLC, et al., Case No. 1:20-cv-
26 10400-RGS; (9) Lex Machina’s “Case Summary” for Horizon
27 Grp. USA, Inc. v. Anker Play Products, LLC, Case No.
28 1:19-cv-06356-DLC; (10) Lex Machina’s “Case Summary” for

28
 1 Horizon Grp. USA, Inc. v. Anker Play Products, LLC, Case
2 No. 1:18-cv-03445-PKC; (11) Lex Machina’s “Case Summary”
3 for Creative Kids Far East Inc. v. Anker Play Products,
4 LLC, Case No. 1:17-cv-03858-RJS; and (12) Lex Machina’s
5 “Case Summary” for Larose Indus., LLC v. Anker Play
6 Products, LLC, Case No. 2:19-cv-16285-MCA-LDW. Req. for
7 Judicial Notice in Supp. of Pl.’s MSJ, ECF No. 60-29.
8 The Court GRANTS Plaintiff’s request with respect
9 to items (1)-(3), (5), and (6), as copyright and
10 trademark registrations, as well as design patents, are
11 documents appropriate for judicial notice. See Warren
12 v. Fox Family Worldwide, Inc., 171 F. Supp. 2d 1057,
13 1062 (C.D. Cal. 2001) (“Copyright certificates are the
14 type of documents that the court may judicially notice
15 under Rule 201(b)(2).”); Dep’t of Parks & Recreation v.
16 Harper, No. CV 05-2008 DSF (JWJx), 2006 WL 8434676, at
17 *3 (C.D. Cal. Apr. 25, 2006) (quoting Vitek Sys., Inc.
18 v. Abbott Labs., 675 F.2d 190, 192 n.3 (8th Cir. 1982))
19 (“[T]he ‘court may take judicial notice of Patent and
20 Trademark Office documents.’”).
21 The Court DENIES as moot Plaintiff’s request as to
22 items (4) and (7)-(12), as the Court does not rely on
23 those documents in reaching its decision. See Flate v.
24 Mortg. Lenders Network USA, Inc., No. CV 15-08873-AB
25 (FFMx), 2016 WL 9686051, at *4 (C.D. Cal. Mar. 4, 2016)
26 (denying as moot a request for judicial notice where
27 “the [c]ourt did not rely on any documents in . . . its
28 ruling”).

29
 1 b. Evidentiary Objections
2 i. Plaintiff’s Evidentiary Objections
3 Plaintiff objects to paragraph 22 of the
4 Declaration of Kenneth L. Wilton in Support of
5 Defendants’ MSJ [62] on lack of personal knowledge and
6 foundation grounds. Opp’n to Defs.’ MSJ 20:1-10.
7 Plaintiff contends that “Wilton is not qualified to say
8 [Plaintiff] never produced a scintilla of evidence as to
9 negative consumer perception,” and Plaintiff “produced
10 testimony of toy industry veterans Hesterberg and
11 Gottlieb.” Id. The objections are without merit
12 because Wilton, as counsel for Defendants in this
13 Action, has personal knowledge and foundation to testify
14 about evidence produced by Plaintiff. Indeed, Wilton
15 states in his Reply Declaration that he has “reviewed
16 all of the discovery produced by Plaintiff in this
17 action.” Reply Decl. of Kenneth L. Wilton in Supp. of
18 Defs.’ MSJ ¶ 2, ECF No. 78-2. And to the extent that
19 Plaintiff seeks to rebut paragraph 22 of Wilton’s
20 declaration, such an objection is superfluous as the
21 Court considers the parties’ arguments in ruling on
22 their motions. Therefore, the Court OVERRULES
23 Plaintiff’s evidentiary objection to paragraph 22 of
24 Wilton’s declaration.
25 Plaintiff also objects to portions of Defendants’
26 Separate Statement of Undisputed Facts [61-2] on lack of
27 personal knowledge and foundation grounds. See Suppl.
28 Separate Statement in Supp. of Opp’n to Defs.’ MSJ

30
 1 (“Resp. to Defs.’ SUF”) ¶¶ 30-32, ECF No. 69-1. Because
2 the Court does not rely on this evidence, the Court
3 OVERRULES as moot Plaintiff’s evidentiary objections to
4 Defendants’ proposed undisputed facts.
5 ii. Defendants’ Evidentiary Objections
6 Defendants separately filed evidentiary objections
7 to paragraphs 2, 3, and 4 of the Declaration of Reid E.
8 Dammann and corresponding Exhibits A, B, and C [[73-2]-
9 [73-5]], which Plaintiff submitted and relies on in
10 support of its Opposition to Defendants’ MSJ [69]. See
11 generally Defs.’ Objs. to Pl.’s Evid. in Supp. of Opp’n
12 to Defs.’ MSJ, ECF No. 78-6. Defendants object on the
13 basis of FRCP 37(c)(1), FRE 401, and FRE 403. The Court
14 OVERRULES as moot Defendants’ evidentiary objections
15 because the Court does not rely on the objected-to
16 evidence in its ruling.
17 c. Trademark Infringement
18 “To prevail on [a] trademark infringement claim,” a
19 party must show that “(1) it has a valid, protectable
20 trademark, and (2) that [the other party’s] use of the
21 mark is likely to cause confusion.” Applied Info., 511
22 F.3d at 969.
23 i. Valid Trademark
24 “Under the Lanham Act, registration of a trademark
25 creates a rebuttable presumption that the mark is valid,
26 but the presumption evaporates as soon as evidence of
27 invalidity is presented.” Hokto Kinoko Co. v. Concord
28 Farms, Inc., 810 F. Supp. 2d 1013, 1022 (C.D. Cal.

31
 1 2011). Here, Plaintiff asserts that it received a
2 federal trademark registration for the mark CHALK
3 BOMB!®.2 See Ex. C in Supp. of Pl.’s MSJ, CHALK BOMB!®
4 Trademark Registration, ECF No. 60-6. Defendants do not
5 rebut the presumption of the Mark’s validity, so the
6 Court concludes that the first inquiry has been
7 satisfied.
8 ii. Likelihood of Confusion
9 Courts within the Ninth Circuit generally consider
10 eight factors (the “Sleekcraft factors”) for determining
11 whether a likelihood of confusion exists: “(1) strength
12 of the mark; (2) proximity of the goods; (3) similarity
13 of the marks; (4) evidence of actual confusion; (5)
14 marketing channels used; (6) type of goods and the
15 degree of care likely to be exercised by the purchaser;
16 (7) defendant’s intent in selecting the mark; and (8)
17 likelihood of expansion of the product lines.” Rearden
18 LLC v. Rearden Com., Inc., 683 F.3d 1190, 1209 (9th Cir.
19 2012) (citing AMF Inc. v. Sleekcraft Boats, 599 F.2d
20 341, 348-49 (9th Cir. 1979)). “The test is a fluid one
21 and the plaintiff need not satisfy every factor,
22
2 Plaintiff also seeks summary judgment on the basis of its
23 trademark for CHALK BLAST BALLS!®. See Pl.’s MSJ 13:18-21. But
the operative Second Amended Complaint in this Action does not
24 reference the CHALK BLAST BALLS!® mark, and the Court denied
25 Plaintiff’s Motion for Leave to File Third Amended Complaint to
include allegations related to the CHALK BLAST BALLS!® mark. See
26 generally Order re Plaintiff’s Motion for Leave to File Third
Amended Complaint, ECF No. 82. Accordingly, the Court DENIES
27 Plaintiff’s MSJ as it pertains to claims related to its CHALK
28 BLAST BALLS!® mark.

32
 1 provided that strong showings are made with respect to
2 some of them.” Surfvivor Media, Inc. v. Survivor
3 Prods., 406 F.3d 625, 631 (9th Cir. 2005). “Given the
4 open-ended nature of this multi-prong inquiry, it is not
5 surprising that summary judgment on ‘likelihood of
6 confusion’ grounds is generally disfavored.” Rearden,
7 683 F.3d at 1210.
8 Here, Plaintiff has the burden of establishing
9 likelihood of confusion as a matter of law. Because
10 Plaintiff put forth no evidence or argument as to
11 “evidence of actual confusion” and “likelihood of
12 expansion of product lines,” the Court will not discuss
13 those factors in its analysis.
14 A. Strength of the Mark
15 “The stronger a mark—meaning the more likely it is
16 to be remembered and associated in the public mind with
17 the mark’s owner—the greater the protection it is
18 accorded by the trademark laws.” Network Automation,
19 Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137,
20 1149 (9th Cir. 2011) (quoting Brookfield, 174 F.3d at
21 1058). Courts evaluate the strength of a mark
22 conceptually and commercially. Id. Conceptual strength
23 refers to the classification of a mark along a continuum
24 of “generally increasing inherent distinctiveness as
25 generic, descriptive, suggestive, arbitrary, or
26 fanciful.” Brookfield, 174 F.3d at 1058. “Arbitrary or
27 fanciful marks . . . are called ‘strong’ marks, whereas
28 descriptive or suggestive marks are ‘weak.’”

33
 1 Nutri/Sys., Inc. v. Con–Stan Indus., Inc., 809 F.2d 601,
2 605 (9th Cir. 1987). Commercial strength, on the other
3 hand, refers to the mark’s “actual marketplace
4 recognition.” Id. (citing Brookfield, 174 F.3d at
5 1058). A conceptually weak mark “can have its overall
6 strength as a mark bolstered by its commercial success.”
7 Monster Energy Co. v. BeastUp LLC, 395 F. Supp. 3d 1334,
8 1352 (E.D. Cal. 2019) (citing M2 Software, Inc. v.
9 Madacy Ent., 421 F.3d 1073, 1081 (9th Cir. 2005)).
10 Here, Plaintiff argues that its Mark is “not
11 generic, descriptive, or functional” because “the
12 product is not a bomb, does not explode, has no
13 incendiary elements, and cannot cause harm.” Pl.’s MSJ
14 14:14-17. Defendants contend that the Mark is
15 descriptive because “Plaintiff was required to disclaim
16 the word ‘chalk’ in its application to register the mark
17 because that term described a feature of the mark,” and
18 the “BOMB” portion of the mark describes the shape and
19 appearance of Plaintiff’s Chalk Bomb Product. See Opp’n
20 to Pl.’s MSJ 15:12-18.
21 The Court concludes that a triable issue of fact
22 exists as to the strength of the Mark. On the one hand,
23 the Mark’s connection to the Chalk Bomb Product is not
24 obvious and requires a consumer to “use imagination or
25 any type of multistage reasoning to understand the
26 [M]ark’s significance,” indicating that the Mark is
27 suggestive. Kendall-Jackson Winery, Ltd. v. E. & J.
28 Gallo Winery, 150 F.3d 1042, 1047 (9th Cir. 1998). On

34
 1 the other hand, a reasonable jury, viewing the evidence
2 in the light most favorable to Defendants, could
3 conclude that the Mark is descriptive because it
4 “define[s] a particular characteristic of the product.”
5 Surfvivor, 406 F.3d at 632; see Zobmondo Ent., LLC v.
6 Falls Media, LLC, 602 F.3d 1108, 1116 (9th Cir. 2010)
7 (“[M]erely descriptive marks need not describe the
8 ‘essential nature’ of a product; it is enough that the
9 mark describe some aspect of the product.”). Because
10 there is a genuine issue of material fact as to whether
11 the Mark is suggestive or descriptive, and a lack of
12 facts or argument as to the Mark’s commercial strength,
13 Plaintiff has failed to demonstrate that uncontroverted
14 evidence supports a finding that its Mark is strong. As
15 such, the strength of Plaintiff’s Mark is a question for
16 the jury.
17 B. Proximity of the Goods
18 Proximity of the goods exists where “the public
19 will mistakenly assume there is an association between
20 the producers of the related goods, though no such
21 association exists.” Sleekcraft, 599 F.2d at 350. “The
22 proximity of goods is measured by whether the products
23 are: (1) complementary; (2) sold to the same class of
24 purchasers; and (3) similar in use and function.”
25 Network Automation, 638 F.3d at 1150.
26 Here, Plaintiff argues that the Accused Product and
27 Plaintiff’s Chalk Bomb Product “are identical in
28 proximity” because “[b]oth toy products are throwable

35
 1 bags filled with colored powdered chalk,” though the
2 Accused Product is “inferior in quality.” Pl.’s MSJ
3 15:7-13. Defendants fail to respond to Plaintiff’s
4 assertions with respect to proximity of the goods.
5 The Court finds that the Accused Product and the
6 Chalk Bomb Product are sold to the same class of
7 purchasers, primarily parents shopping for toys for
8 their young children. Moreover, the Court finds that
9
10
11
12
13
14 Based on these facts, in combination with Defendants’
15 failure to respond to Plaintiff’s assertions that
16 proximity of the goods exists, the Court concludes that
17 this factor weighs in favor of finding a likelihood of
18 confusion.
19 C. Similarity of the Marks
20 Similarity of the marks is an important factor in
21 determining whether likelihood of confusion exists
22 because “[w]here the two marks are entirely dissimilar,
23 there is no likelihood of confusion.” Brookfield, 174
24 F.3d at 1054. “The following axioms define and delimit
25 the similarity analysis: (1) similarity is best
26 evaluated by appearance, sound, and meaning; (2) marks
27 should be considered in their entirety and as they
28 appear in the marketplace; and (3) similarities weigh

36
 1 more heavily than differences.” Pom Wonderful LLC v.
2 Hubbard, 775 F.3d 1118, 1127–28 (9th Cir. 2014). “Of
3 importance here, commonly used words generally do not
4 make two marks similar where they appear with
5 distinguishing words.” Delta Forensic Eng’g, Inc. v.
6 Delta V Biomechanics, Inc., 402 F. Supp. 3d 902, 909
7 (C.D. Cal. 2019) (citing Stonefire Grill, Inc. v. FGF
8 Brands, Inc., 987 F. Supp. 2d 1023, 1052 (C.D. Cal.
9 2013) (“Multiple courts have found that the presence of
10 a common word does not render two marks similar where
11 additional words make the marks distinctive.”)).
12 Here, Plaintiff asserts that “Defendants used
13 ‘Chalk Bomb’ interchangeably with ‘Chalk Blast’ in
14 promoting and selling the Accused Product.” Pl.’s MSJ
15 15:22-23. Specifically, Plaintiff states that
16 “Defendants used ‘Chalk Bomb’ in the emails discussing
17 the Accused Product and actually used ‘Chalk Bomb’ in
18 the invoice of selling the Accused Product.” Id. at
19 15:24-25. Further, with respect to the use of “Chalk
20 Blast,” Plaintiff argues: (1) “Chalk Blast” sounds
21 similar to “Chalk Bomb” in that they both consist of
22 “Chalk” with a word starting with the letter “B”; (2)
23 the words “bomb” and “blast” convey similar meanings;
24 and (3) “the appearance of ‘Chalk Blast!’ is
25 substantially similar to ‘Chalk Bomb!’” Id. at 16:1-6.
26 Defendants dispute Plaintiff’s assertion that they
27 used “Chalk Bomb” interchangeably with “Chalk Blast” in
28 selling the Accused Product. See Defs.’ Resp. and Objs.

37
 1 to Pl.’s SUF (“Resp. to Pl.’s SUF”) ¶¶ 28-29, ECF No.
2 73-1. Further, Defendants argue that Plaintiff “ignored
3 how th[e] marks appear in the marketplace.” Opp’n to
4 Pl.’s MSJ 16:27-28. Specifically, Defendants note that
5 “both parties use a house mark . . . on their products,”
6 ensuring that purchasers were not confused. Id. at
7 17:1-6.
8 Viewed as they appear in the marketplace, the marks
9 differ in several significant ways. Although both marks
10 use the term “chalk,” they do not display the term in
11 the same way. Specifically, Defendants’ mark uses only
12 capital letters, while Plaintiff’s Mark uses both
13 capital and lowercase letters; Defendants’ mark uses a
14 block-type font, while Plaintiff’s Mark uses a wider
15 font for “bomb” and a script-like font for the word
16 “chalk”; and Plaintiff’s Mark is larger and displayed
17 more prominently than Defendant’s mark. See Defs.’ SUF
18 ¶¶ 15, 46. The parties’ inclusion of house marks on
19 their packaging may also mitigate the likelihood of
20 confusion. Stone Brewing Co., LLC v. MillerCoors LLC,
21 445 F. Supp. 3d 1113, 1132 (S.D. Cal. 2020). In
22 addition, the marks, while both containing the word
23 “chalk,” are phonetically dissimilar, as “bomb” and
24 “blast” do not sound the same. See Delta V
25 Biomechanics, 402 F. Supp. 3d at 909 (noting that
26 “‘Delta V Biomechanics’ is phonetically different” from
27 “Delta V Forensic Engineering”). Further, the two marks
28 have similar, but not identical, meanings, as they both

38
 1 invoke impressions of explosions.
2 On balance, a factfinder could reasonably conclude
3 that the marks are dissimilar because of their visual
4 and aural differences. Even weighing the marks’
5 semantic similarity more heavily than their differences,
6 the evidence does not justify a conclusive finding in
7 Plaintiff’s favor as to similarity of the marks. See
8 Coachella Music Festival, LLC v. Simms, No. 2:17-CV-
9 06059-RGK-GJS, 2018 WL 6074556, at *7 (C.D. Cal. Sept.
10 10, 2018) (holding that “[t]he evidence therefore is not
11 so one-sided that summary judgment is justified” where
12 the two marks shared the same suffix, “chella,” but the
13 marks had different beginnings and were depicted in
14 different fonts).
15 D. Marketing Channels Used
16 “In assessing marketing channel convergence, courts
17 consider whether the parties’ customer bases overlap and
18 how the parties advertise and market their products.”
19 Pom Wonderful, 775 F.3d at 1130 (citing Nutri/Sys., 809
20 F.2d at 606).
21 Plaintiff argues that Plaintiff and Defendants
22 “have a potential overlap in customer base, making the
23 marketing channels identical.” Pl.’s MSJ 16:11-12.
24 Defendants respond that “Plaintiff has presented no
25 evidence that the parties sold to the same retailers
26 and, in fact, their damages claim is based on the
27 premise that they did not.” Opp’n to Pl.’s MSJ 16:15-
28 16; Resp. to Pl.’s SUF ¶ 39.

39
 1 Here, the record shows that overlap in marketing
2 channels, albeit minimal, is not entirely nonexistent.
3 Although Defendant states that Plaintiff presented no
4 evidence that the parties sold to the same retailers,
5 Plaintiff did provide evidence that both parties sold to
6 See Pl.’s SUF ¶ 39; Ex. W in Supp. of Pl.’s
7 MSJ, Def. Anker’s Suppl. Resp. to Pl.’s Interrogs. 7:7,
8 ECF No. 65-14. However, the overlap of only one
9 customer, coupled with Plaintiff’s assertions that “the
10 parties sell primarily to different customers,” Beaton
11 Report ¶ 45, and that the Accused Product has been
12 distributed mainly through “second- and third-tier
13 retailers,” id. ¶ 34(c), renders this factor only
14 slightly in favor of a finding of likelihood of
15 confusion. See Surfvivor, 406 F.3d at 633-34
16 (determining that a “minor overlap” of distribution
17 channels “slightly favors” a finding of likelihood of
18 confusion).
19 E. Type of Goods and the Degree of
Customer Care
20
21 “Likelihood of confusion is determined on the basis
22 of a ‘reasonably prudent consumer,’” and “[w]hat is
23 expected of this reasonably prudent customer depends on
24 the circumstances.” Brookfield, 174 F.3d at 1060.
25 “Unlike purchasers of expensive goods—whom we expect to
26 be more discerning and less easily confused—purchasers
27 of inexpensive goods ‘are likely to exercise less care,
28 thus making confusion more likely.’” Pom Wonderful, 775

40
 1 F.3d at 1127 (citing Brookfield, 174 F.3d at 1060).
2 Here, Plaintiff argues that because both its
3 product and the Accused Product are inexpensive
4 products, “the reasonably prudent consumer is less
5 discerning, as this item is more of an impulse buy.”
6 Pl.’s MSJ 17:3-5. Defendants do not rebut this
7 assertion, nor do they advance any argument in
8 opposition to Plaintiff’s contention that this factor
9 weighs in favor of likelihood of confusion.
10 The Court finds that this factor weighs in
11 Plaintiff’s favor because it is undisputed that the
12 parties’ products are not expensive. See Pom Wonderful,
13 775 F.3d at 1127 (affirming district court’s finding
14 that the beverages at issue that cost between $1.99 and
15 $2.49 resulted in customers generally exercising a low
16 degree of care).
17 F. Defendants’ Intent in Selecting
the Mark
18
19 “When an alleged infringer knowingly adopts a mark
20 similar to another’s, courts will presume an intent to
21 deceive the public.” Off. Airlines Guides, Inc. v.
22 Goss, 6 F.3d 1385, 1395 (9th Cir. 1993).
23 Plaintiff maintains that Defendants were well aware
24 of Plaintiff’s Chalk Bomb Product “and even ma[de] a
25 direct comparison to it in marketing and promoting the
26 accused product,” demonstrating that they “knowingly
27 adopted a mark similar to” Plaintiff’s Mark. Pl.’s MSJ
28 17:13-16; Pl.’s SUF ¶ 19. Defendants dispute

41
 1 Plaintiff’s allegation that they had knowledge of the
2 Chalk Bomb Product prior to their decision to sell the
3 Accused Product. See Resp. to Pl.’s SUF ¶ 19.
4 The Court finds that a triable issue of fact exists
5 as to whether Defendants had knowledge of Plaintiff’s
6 Chalk Bomb Product when they chose to begin marketing
7 and selling the Accused Product. Defendants disputed
8 Plaintiff’s assertion as such, and Plaintiff failed to
9 meet its burden of demonstrating that no genuine issue
10 of material of fact exists. Accordingly, because a
11 dispute exists as to whether Defendants had any
12 knowledge of Plaintiff’s Chalk Bomb Product and/or Mark
13 before it began selling the Accused Product, the Court
14 cannot assess whether Defendants knowingly adopted an
15 allegedly similar mark.
16 G. Likelihood of Confusion:
Conclusion
17
18 Because likelihood of confusion is an “intensely
19 factual” inquiry, “summary judgment is generally
20 disfavored” in trademark cases. Fortune Dynamic, Inc.
21 v. Victoria's Secret Stores Brand Mgmt., Inc., 618 F.3d
22 1025, 1031 (9th Cir. 2010) (citation omitted). Courts
23 should only grant summary judgment where “the evidence
24 is clear and tilts heavily in favor of a likelihood of
25 confusion.” Au-Tomotive Gold, Inc. v. Volkswagen of
26 Am., Inc., 457 F.3d 1062, 1075 (9th Cir. 2006).
27 Evaluating all the factors, the Court cannot
28 conclude that Plaintiff has, as a matter of law,

42
 1 demonstrated a likelihood of consumer confusion. While
2 three of the Sleekcraft factors favor Plaintiff, “courts
3 do not merely count beans or tally points” in
4 determining whether a likelihood of confusion exists.
5 Stone Creek, Inc. v. Omnia Italian Design, Inc., 875
6 F.3d 426, 431 (9th Cir. 2017). Here, triable issues
7 remain on several of the factors, and the question of
8 likelihood of confusion “should be answered as a mater
9 of fact by a jury, not as a matter of law by a court.”
10 Fortune Dynamic, 618 F.3d at 1031. The evidence “does
11 not tilt so heavily in Plaintiff[’s] favor that summary
12 judgment is appropriate.” Coachella Music Festival,
13 2018 WL 6074556, at *8; Diamon-Fusion Int’l, Inc. v.
14 Diamon-Fusion, USA, Inc., No. SA-CV-08-1460-DOC-PLAX,
15 2009 WL 10671716, at *4 (C.D. Cal. Oct. 20, 2009)
16 (“[R]ecognizing that some of the Sleekcraft factors
17 weigh in favor of Defendants, others weigh in favor of
18 Plaintiff, and some—notably the critical ‘similarity of
19 the mark’ factor—require close factual determinations as
20 to which way they lean, the Court does not find that
21 judgment should be entered as a matter of law.”);
22 Positive Ions, Inc. v. ION Media Networks, Inc., No. CV-
23 06-4296-ABC-FFMX, 2007 WL 9701964, at *9 (C.D. Cal. Aug.
24 6, 2007) (denying the plaintiff’s motion for summary
25 judgment as to trademark infringement where there were
26 “genuine issues of material fact on several of the
27 factors in the likelihood of confusion test that are
28 important to the analysis in this case”). As such, the

43
 1 Court DENIES Plaintiff’s MSJ as to its trademark
2 infringement claim.
3 d. False Designation of Origin and Unfair
Competition Under California Business and
4 Professions Code § 17200
5 A claim for false designation of origin is subject
6 to “[t]he same standard” as a claim for trademark
7 infringement, except a claim for false designation of
8 origin does not require that the mark be registered.
9 Celebrity Chefs Tour, LLC v. Macy’s, Inc., 16 F. Supp.
10 3d 1159, 1166 (S.D. Cal. 2014) (citing Brookfield, 174
11 F.3d at 1046 n.6). “Further, ‘the Ninth Circuit has
12 consistently held that state common law claims of unfair
13 competition and actions pursuant to California Business
14 and Professions Code § 17200 are substantially congruent
15 to claims under the Lanham Act.’” New Age Imps., Inc.
16 v. VD Imps., Inc., No. SA-CV-17-02154-CJC-KES, 2019 WL
17 4570035, at *3 (C.D. Cal. July 18, 2019) (quoting
18 Wecosign, Inc. v. IFG Holdings, Inc., 845 F. Supp. 2d
19 1072, 1079 (C.D. Cal. 2012)).
20 Accordingly, because Plaintiff has failed to
21 establish likelihood of confusion with respect to its
22 trademark claim as a matter of law, Plaintiff has also
23 failed to establish that it is entitled to summary
24 judgment as to its false designation of origin and
25 unfair competition claims. See Diamon-Fusion Int’l,
26 2009 WL 10671716, at *4 (“Additionally, as the issue of
27 likelihood of confusion is essential to proving
28 Plaintiff’s false designation of origin, common law

44
 1 trademark infringement, California unfair competition,
2 and common law unfair competition claims, Plaintiff’s
3 motion for summary judgment on those counts is defeated
4 as well.”). As such, the Court DENIES Plaintiff’s MSJ
5 as to Plaintiff’s claims for false designation of origin
6 and unfair competition.
7 e. Design Patent Infringement
8 A design patent may issue to the inventor of “any
9 new, original and ornamental design.” 35 U.S.C. § 171.
10 Infringement of a design patent is evaluated in a two-
11 step process. “First, the court must construe the
12 claims of the design patent to determine their meaning
13 and scope.” Arminak, 501 F.3d at 1319 (citing OddzOn
14 Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1404-05
15 (Fed. Cir. 1997)). The court then applies the ordinary
16 observer test, which asks whether “the accused design
17 could not reasonably be viewed as so similar to the
18 claimed design that a purchaser familiar with the prior
19 art would be deceived by the similarity between the
20 claimed and accused designs, ‘inducing him to purchase
21 one supposing it to be the other.’” Egyptian Goddess,
22 543 F.3d at 683 (quoting Gorham, 81 U.S. at 528).
23 i. Claim Construction
24 “Design patents are typically claimed as shown in
25 drawings, and claim construction must be adapted to
26 pictorial setting.” Crocs, Inc. v. Int’l Trade Comm’n,
27 598 F.3d 1294, 1302 (Fed. Cir. 2010). “As a rule, the
28 illustration in the drawing views is its own best

45
 1 description.” Id. at 1303 (citation omitted). The
2 Federal Circuit instructs the district courts to defer
3 to figures for claim construction of a design patent.
4 Egyptian Goddess, 543 F.3d at 679. Here, the sole claim
5 in the ’596 Patent and ’220 Patent recites “[t]he
6 ornamental design for a toy throwing ball, as shown and
7 described.” Ex. E in Supp. of Pl.’s MSJ (“’596
8 Patent”), at 1, ECF No. 60-8; Ex. F in Supp. of Pl.’s
9 MSJ (“’220 Patent”), at 1, ECF No. 60-9. Because “the
10 preferable course ordinarily will be for a district
11 court not to attempt to ‘construe’ a design patent claim
12 by providing a detailed verbal description of the
13 claimed design,” Egyptian Goddess, 543 F.3d at 679, the
14 Court relies on the illustrations contained in the
15 Asserted Patents as follows:
16 FIG. 1: “a perspective view of a juice bottle,
17 showing my new design;”
18 FIG. 2: “a front elevational view thereof;”
19 FIG. 3: “a rear elevational view thereof;”
20 FIG. 4: “a left side elevational view thereof;”
21 FIG. 5: “a right side elevational view thereof;”
22 FIG. 6: “a top plan view thereof; and,”
23 FIG. 7: “a bottom plan view thereof.”
24 ’596 Patent at 1; ’220 Patent at 1.
25 ///
26 ///
27 ///
28 ///

46
 ’596 Patent ’220 Patent
1
2
FIG. 1
3
4
5
6 FIG. 2
7
8
9
10 FIG. 3
11
12
13
14 FIG. 4
15
16
17
18 FIG. 5
19
20
21 FIG. 6
22
23
24 FIG. 7
25
26 Resp. to Defs.’ SUF ¶¶ 3-9.
27 ///
28 ///

47
 1 ii. Ordinary Observer Test
2 Determining infringement of a design patent is a
3 question of fact. Catalina Lighting, 295 F.3d at 1287;
4 see also Richardson, 597 F.3d at 1295. “[I]n conducting
5 a design patent infringement analysis, the patented
6 design is viewed in its entirety, as it is claimed. The
7 ultimate question requires determining whether ‘the
8 effect of the whole design is substantially the same.’”
9 Payless, 998 F.2d at 990-91 (quoting L.A. Gear, 988 F.2d
10 at 1125) (internal quotation marks and alterations
11 omitted). In making this comparison, the fact finder
12 puts itself into the place of an “ordinary observer.”
13 Egyptian Goddess, 543 F.3d at 667. The “ordinary
14 observer” is not an expert; he is an observer “of
15 ordinary acuteness, bringing to the examination of the
16 article upon which the design has been placed that
17 degree of observation which men of ordinary intelligence
18 give.” Gorham, 81 U.S. at 528; see Arminak, 501 F.3d at
19 1323 (“[T]he ordinary observer is a person who is either
20 a purchaser of, or sufficiently interested in, the item
21 that displays the patented designs . . . .”).
22 Here, Plaintiff argues that an ordinary observer
23 would view the Accused Product as “substantially the
24 same” as the Asserted Patents because the Asserted
25 Patents and the Accused Product “both have a ‘ball’-like
26 round shape and wick, making their appearance
27 identical,” and they have similar contoured surfaces,
28 wicks, and gathering of material around the wick. Pl.’s

48
 1 MSJ 20:8-20. Defendants argue that they are entitled to
2 summary judgment as to Plaintiff’s design patent claim
3 because the Accused Product and the Asserted Patents are
4 plainly dissimilar in: (1) shape; (2) body pattern; (3)
5 the gathering of material at the top; and (4) the
6 fuse/lever shape. Defs.’ MSJ 10:1-2, 12:3-23.
7 The Court concludes that many disputes as to
8 material facts exist that preclude the Court from
9 employing the ordinary observer test for design patent
10 infringement, and further, granting summary judgment.
11 First, the parties are in dispute about many photos of
12 the Accused Product outside its packaging. See Resp. to
13 Defs.’ SUF ¶ 16. Specifically, Plaintiff asserts that
14 the photos Defendants rely on in support of their motion
15 are not actually photos of the Accused Product but
16 instead are photos of a “product [that] was created for
17 Defendants’ expert . . . with the purpose of finding
18 non-infringement.” Id. Defendants maintain, however,
19 that their counsel purchased the Accused Product on eBay
20 and then sent some of the products to a professional
21 photographer and others to Delman for his review. See
22 Decl. of Jamaica P. Szeliga in Supp. of Opp’n to Pl.’s
23 Mot. to Strike Delman Report ¶¶ 2-7, ECF No. 72-1; Decl.
24 of Kenneth L. Wilton in Supp. of Opp’n to Pl.’s Mot. to
25 Strike Delman Report ¶¶ 3-6, ECF No. 72-12. Next, the
26 parties dispute the shape of the Accused Product. See
27 Defs.’ SUF ¶ 20 (“The Accused Product is not
28 spherical.”); Resp. to Defs.’ SUF ¶ 20; Opp’n to Defs’

49
 1 MSJ 10:24-26 (noting that the Accused Product has “a
2 ‘ball’-like round shape”). The parties also dispute the
3 manner in which the fabric material is gathered at the
4 top of the Accused Product. See Defs.’ SUF ¶ 21 (“The
5 Accused Product does not have a neat ‘cap’ design. The
6 cap of the Accused Product is ‘jaggedy’ and
7 ‘unkempt.’”); Resp. to Defs.’ SUF ¶ 20; Opp’n to Defs’
8 MSJ 11:15-17 (“It is hard to be certain at what the
9 material is at the top of sphere-like product . . . .”).
10 Accordingly, based on the disputes concerning
11 aspects of the Accused Product, in combination with a
12 lack of clear photos3 from which the Court could conduct
13 a reasonable comparison between the Accused Product and
14 the Asserted Patents, the Court concludes that a dispute
15 of material fact exists that precludes summary judgment.
16 Accordingly, the Court DENIES both Plaintiff’s MSJ and
17 Defendants’ MSJ as to design patent infringement.
18 f. Copyright Infringement
19 To establish copyright infringement, Plaintiff must
20 prove “(1) ownership of a valid copyright, and (2)
21 copying of constituent elements of the work that are
22 original.” Feist Publ’ns, Inc. v. Rural Tel. Servs.
23 3 As noted above, Plaintiff disputes the accuracy of the
24 photographs of the Accused Product submitted in support of
Defendants’ MSJ. See Resp. to Defs.’ SUF ¶ 16. The only
25 undisputed photos: (1) show the Accused Product in its packaging;
(2) do not show the Accused Product from multiple angles; and/or
26 (3) are unclear screenshots from YouTube videos. See Defs.’ SUF
¶¶ 15, 18(a)-(b). The agreed-upon photos do not allow the Court
27 to reasonably compare the Accused Product, as depicted in the
28 photos, to the Asserted Patents.

50
 1 Co., 499 U.S. 340, 361 (1991). Here, Defendants only
2 contest the second element of copyright infringement.
3 See Defs.’ MSJ 18:8-10 (“With regard to the first
4 element of infringement, for purposes of this motion
5 Defendants assume that Plaintiff owns both the ‘296
6 Registration and the ‘283 Registration”).4 Accordingly,
7 the Court will only assess the second element.
8 “The second prong of the infringement analysis
9 contains two separate components: ‘copying’ and
10 ‘unlawful appropriation.’” Skidmore as Tr. for Randy
11 Craig Wolfe Tr. v. Led Zeppelin, 952 F.3d 1051, 1064
12 (9th Cir. 2020) (citing Rentmeester v. Nike, Inc., 883
13 F.3d 1111, 1117 (9th Cir. 2018), overruled on other
14 grounds by Skidmore, 952 F.3d 1051).
15 i. Copying
16 To establish copying, Plaintiff must show either:
17 (1) the two works in question are substantially similar
18 and the defendant had access to the subject work; or (2)
19 that the works are strikingly similar. Malibu Textiles,
20 Inc. v. Label Lane Int’l, Inc., 922 F.3d 946, 952 (9th
21 Cir. 2019) (citations omitted). In the absence of
22 direct evidence of copying, the plaintiff “can attempt
23 to prove it circumstantially by showing that the
24 4 As to copyright validity, Defendants only dispute
25 Plaintiff’s assertion that its Copyrighted Designs cover both the
Chalk Bomb packaging and product. See Opp’n to Pl.’s MSJ 20:1-5.
26 The Court finds that Plaintiff’s Copyrighted Designs cover only
the “2-D artwork” related to the “Chalk Balls Packaging.” See
27 Ex. A in Supp. of Pl.’s MSJ (“‘296 Registration”), ECF No. 60-4;
28 Ex. B in Supp. of Pl.’s MSJ (“‘283 Registration”), ECF No. 60-5.

51
 1 defendant had access to the plaintiff’s work and that
2 the two works share similarities probative of copying.”
3 Skidmore, 952 F.3d at 1064 (internal quotation marks and
4 citations omitted). “A finding of such similarity may
5 be based on the overlap of unprotectable as well as
6 protectable elements.” Id. “To prove copying, the
7 similarities between the two works need not be extensive
8 . . . [t]hey just need to be similarities one would not
9 expect to arise if the two works had been created
10 independently.” Rentmeester, 883 F.3d at 1117.
11 A. Access
12 “Direct access is shown if there is proof that the
13 defendant actually viewed, read, or heard the work at
14 issue.” Briggs v. Blomkamp, 70 F. Supp. 3d 1155, 1165
15 (N.D. Cal. 2014) (citing Lucky Break Wishbone Corp. v.
16 Sears, Roebuck & Co., 528 F. Supp. 2d 1106, 1122 (W.D.
17 Wash. 2007), aff’d, 373 F. App’x 752 (9th Cir. 2010)).
18 Nevertheless, access can be demonstrated through
19 circumstantial evidence by: (1) establishing a chain of
20 events linking the plaintiff’s work and the defendant’s
21 access, or (2) showing that the plaintiff’s work has
22 been widely disseminated. Three Boys Music Corp. v.
23 Bolton, 212 F.3d 477, 482 (9th Cir. 2000), overruled on
24 other grounds by Skidmore, 952 F.3d 1051. The Ninth
25 Circuit requires that “the defendant ha[ve] a reasonable
26 opportunity to view or copy the plaintiff’s work.”
27 Express, LLC v. Fetish Grp., Inc., 424 F. Supp. 2d 1211,
28 1227 (C.D. Cal. 2006). Reasonable access is “more than

52
 1 a ‘bare possibility.’” Id.; see Briggs, 70 F. Supp. 3d
2 at 1165 (citation omitted) (stating reasonable access
3 requires more than a “bare possibility,” and “may not be
4 inferred through mere speculation or conjecture.”).
5 Here, the parties dispute whether Defendants had
6 access to the Copyrighted Designs. In support of its
7 MSJ, Plaintiff relies on Defendant Summers’s deposition
8 as well as emails from Defendant Summers to Defendants’
9 customers as evidence of access. Specifically,
10 Plaintiff maintains that Defendants’ use of “Chalk Bomb”
11 to describe the Accused Product demonstrates access.
12 See Reply in Supp. of Pl.’s MSJ 17:15-17, ECF No. 74;
13 Ex. K in Supp. of Pl.’s MSJ, ECF No. 65-3 (
14
15
16
17
18 ).
19 The Court finds that Plaintiff has failed to meet
20 its burden to demonstrate either direct or
21 circumstantial evidence of access. Plaintiff provides
22 no proof as to direct access. Moreover,
23
24
25 fails to rise to the level
26 of establishing “a particular chain of events . . .
27 between the plaintiff’s work and the defendant’s
28 access.” Three Boys Music Corp., 212 F.3d at 482.

53
 1 Plaintiff also failed to establish that its work was
2 widely disseminated. See id.
3 B. Striking Similarity
4 Because Plaintiff has failed to establish access,
5 Plaintiff “can establish copyright infringement only by
6 showing ‘striking similarity.’” Briggs, 70 F. Supp. 3d
7 at 1167 (citation omitted); see Three Boys Music Corp.,
8 212 F.3d at 485 (“[I]n the absence of any proof of
9 access, a copyright plaintiff can still make out a case
10 of infringement by showing [the alleged copyrighted work
11 and alleged infringing work] were ‘strikingly
12 similar.’”).
13 “Strikingly similar is a high bar. ‘At base,
14 “striking similarity” simply means that, in human
15 experience, it is virtually impossible that the two
16 works could have been independently created.’” Briggs,
17 70 F. Supp. 3d at 1167 (quoting 4 Melville B. Nimmer &
18 David Nimmer, Nimmer on Copyright § 13.02 [B] (2005)).
19 Works are considered strikingly similar only when they
20 “are so unmistakably similar that, ‘as a matter of
21 logic, the only explanation [for the similarities]
22 between the two works must be “copying . . . .”’”
23 Bernal v. Paradigm Talent & Literary Agency, 788 F.
24 Supp. 2d 1043, 1052 (C.D. Cal. 2010) (citation omitted).
25 In order to prove striking similarity, a plaintiff
26 must show that the similarities between the works are
27 “the sort of similarities that cannot satisfactorily be
28 accounted for by a theory of coincidence, independent

54
 1 creation, prior common source, or any other theory than
2 that of copying. The similarities should be
3 sufficiently unique or complex as to make it unlikely
4 that both pieces were copied from a prior common source,
5 . . . or that the defendant was able to compose the
6 accused work as a matter of independent creation.”
7 Stewart v. Wachowski, 574 F. Supp. 2d 1074, 1103 (C.D.
8 Cal. 2005) (citation omitted). Finally, the “mere
9 existence of multiple similarities is insufficient to
10 meet the test.” Stabile v. Paul Smith Ltd., 137 F.
11 Supp. 3d 1173, 1189 (C.D. Cal. 2015) (citation omitted).
12 “In assessing whether particular works are
13 substantially similar, or strikingly similar, this
14 Circuit applies a two-part analysis: the extrinsic test
15 and the intrinsic test.” Unicolors, Inc. v. Urban
16 Outfitters, Inc., 853 F.3d 980, 985 (9th Cir. 2017).
17 “The extrinsic test requires plaintiffs to show overlap
18 of concrete elements based on objective criteria, while
19 the intrinsic test is subjective and asks whether the
20 ordinary, reasonable person would find the total concept
21 and feel of the works to be substantially similar.” Id.
22 (internal quotation marks and citations omitted). While
23 the Court may determine whether Plaintiff has satisfied
24 the extrinsic test, “once th[at] objective threshold is
25 met, it is the role of the jury to make a nuanced
26 subjective determination under the intrinsic test.” Id.
27 at 987.
28 ///

55
 1 Here, Plaintiff asserts that the following
2 similarities between the Accused Product’s packaging and
3 Plaintiff’s Copyrighted Designs demonstrate substantial
4 similarity: (1) the phrases “200+ Throws!”, “6+”,
5 “Collect All 6 Colors”, and “Outdoor Only” on both the
6 front and back of the packaging; (2) the phrase “Create
7 Art with Every Toss” on the packaging; (3) the phrase
8 “200+ Throws!” was placed in the exact same location on
9 the card; and (4) the color range was placed in the same
10 location. Pl.’s SUF ¶¶ 51, 53-55. Defendants do not
11 dispute these facts, but nevertheless argue the works
12 are dissimilar. See Defs.’ MSJ 20:4-13. Specifically,
13 Defendants point to the following differences between
14 the Accused Product’s packaging and the Copyrighted
15 Designs: (1) Plaintiff’s packaging includes images of
16 its products, while the Accused Product’s does not; (2)
17 the fonts; (3) the color schemes; and (4) the fact that
18 the Accused Product’s packaging does not include the
19 image of any people, but the Copyrighted Designs do.
20 See id. at 20:7-13.
21 ///
22 ///
23 ///
24 ///
25 ///
26 ///
27 ///
28 ///

56
 Accused Product in Copyright Registration
1
bilingual packaging No. VA 2-022-296
2
3
4
5
6
7
8
9
10
11
12
Defs.’ SUF ¶ 15. Defs.’ SUF ¶ 46
13
14 The Court concludes that a genuine dispute of
15 material fact as to striking and substantial similarity
16 exists. While the Court recognizes that similarities
17 exist in the phrases used in the packaging and the
18 placement of phrases, the Court questions whether these
19 similarities are sufficient to prove substantial, or
20 striking, similarity because, “[g]iven the simplicity of
21 the toys, there are likely a limited number of ways of
22 expressing their method of operation.” Lanard Toys Ltd.
23 v. Novelty Inc., 511 F. Supp. 2d 1020, 1040 (C.D. Cal.
24 2007); see also Allen v. Acad. Games League of Am.,
25 Inc., 89 F.3d 614, 617 (9th Cir. 1996) (“Consequently,
26 the notions of idea and expression may merge from such
27 ‘stock’ concepts that even verbatim reproduction of a
28 factual work may not constitute infringement.”).

57
 1 Accordingly, the Court DENIES both parties’ MSJs as to
2 copyright infringement. See X-IT Prod., L.L.C. v.
3 Walter Kidde Portable Equip., Inc., 155 F. Supp. 2d 577,
4 614 (E.D. Va. 2001) (denying cross-motions for summary
5 judgment where the plaintiff had “pointed to enough
6 similarities between [its] current packaging and [the
7 defendant’s] copyright to survive a motion for summary
8 judgment, although the Court cannot say that the
9 packages are substantially similar so as to remove this
10 question from the province of the jury . . . .”).
11 g. Actual Damages
12 Defendants move for summary judgment as to
13 Plaintiff’s request for actual damages in this Action,
14 arguing that Plaintiff has failed to prove it is
15 entitled to actual damages. See Defs.’ MSJ 23:26-28.
16 Specifically, Defendants assert that Plaintiff “has not
17 disclosed, produced, or provided a single shred of
18 evidence to support” its theory of market spoilage. Id.
19 at 23:25-26. Plaintiff responds that market spoilage is
20 not a “theory,” and the “negative impact on the relevant
21 market from the introduction of the Accused Product, and
22 the consequent and subsequent rapid decline in the sales
23 of the real product from Plaintiff, is a demonstrable
24 fact fairly inferred from the sales data, timeline, and
25 testimony from those who know the toy market.” Opp’n to
26 Defs.’ MSJ 19:1-5.
27 Here, the Court finds that a dispute of material
28 fact exists with respect to actual damages.

58
 1 Specifically, Defendants assert that Plaintiff never
2 produced evidence demonstrating the negative impact of
3 the Accused Product on Plaintiff’s market. See Defs.’
4 SUF ¶ 59. But Plaintiff disputes this fact and relies
5 on the testimony of its expert, Gottlieb, and its
6 Managing Director, Hesterberg. See Gottlieb Report 29
7 (noting that Plaintiff’s “sales and brand identity would
8 suffer (and evidently did) from the market spoilage
9 resulting from introduction of the Anker knockoff”
10 because Defendants “eschew[] quality to create a much
11 cheaper and inferior product that can sell at discount
12 stores”); Ex. P to Decl. of Kenneth L. Wilton in Supp.
13 of Defs.’ MSJ, Hesterberg Dep. Tr. 77:5-14, ECF No. 62-
14 15 (“We innovate a product and then another company
15 comes out with a much less expensive, inferior product,
16 and it has a residual effect with our customers that we
17 are overcharging, a very negative effect to which the
18 experts can testify as to what the knockoffs, the cheap
19 imitations, the impact they have on . . . business.”).
20 The Court concludes that this evidence is sufficient to
21 demonstrate that a genuine dispute of material fact
22 exists. Accordingly, the Court DENIES Defendants’ MSJ
23 as to actual damages.
24 h. Defendants’ Affirmative Defenses
25 Plaintiff moves for summary judgment as to the
26 following affirmative defenses: (1) failure to state a
27 claim for relief; (2) standing; (3) waiver, laches,
28 estoppel, acquiescence; (4) descriptiveness; (5)

59
 1 invalidity of the patents-in-suit; (6) limitation on
2 damages of the patents-in-suit; (7) invalidity of
3 copyright; (8) de minimis use; (9) fair use; (10)
4 innocent intent; and (11) lack of personal jurisdiction.
5 See Pl.’s MSJ 24:15-28:17. Defendants only address four
6 of these affirmative defenses in their Opposition. See
7 Opp’n to Pl.’s MSJ 22:13-23:7. Defendants do not
8 specifically oppose the remaining affirmative defenses;
9 instead, Defendants generally assert that summary
10 judgment should be denied because “Plaintiff has failed
11 to present evidence to support summary judgment on
12 Defendants’ affirmative defenses.” Opp’n to Pl.’s MSJ
13 22:10-12.
14 Although Defendants have the burden to prove their
15 affirmative defenses at trial, Plaintiff bears the
16 initial burden of establishing the absence of a genuine
17 issue of material fact. See Celotex, 477 U.S. at 323.
18 “However, if the nonmoving party bears the burden of
19 proof on an issue at trial, the moving party need not
20 produce affirmative evidence of an absence of fact to
21 satisfy its burden.” In re Brazier Forest Prods., Inc.,
22 921 F.2d 221, 223 (9th Cir. 1990) (citing Celotex, 477
23 U.S. at 323). Instead, the moving party “may simply
24 point to the absence of evidence to support the
25 nonmoving party’s case.” Id.; see also Fairbank v.
26 Wunderman Cato Johnson, 212 F.3d 528, 532 (9th Cir.
27 2000) (“[The moving party] may shift the burden of
28 producing evidence to [the nonmoving party] merely by

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 1 ‘showing’—that is, pointing out through argument—the
2 absence of evidence to support [the nonmoving party’s]
3 claim.”). “The nonmoving party must then make a
4 sufficient showing to establish the existence of all
5 elements essential to its defense.” Farmers & Merchs.
6 Bank v. Willemsen, No. EDCV 13-0609-JGB (SPx), 2014 WL
7 12465445, at *5 (C.D. Cal. May 14, 2014) (citation
8 omitted). “Summary judgment may be granted if the
9 nonmoving party completely fails to offer evidence
10 supporting its affirmative defenses.” Id.
11 i. Failure to State a Claim for Relief
12 Plaintiff maintains that the Court should grant
13 summary judgment as to Defendants’ affirmative defense
14 for failure to state a claim for relief because it is
15 not a proper affirmative defense and Plaintiff has
16 stated a claim for copyright infringement. Pl.’s MSJ
17 24:26-25:4. Defendants do not specifically respond to
18 Plaintiff’s argument in their Opposition.
19 The Court GRANTS Plaintiff’s MSJ as it pertains to
20 Defendants’ affirmative defense for failure to state a
21 claim because failure to state a claim is not a proper
22 affirmative defense. See In re Yashouafar, No. CV 16-
23 9519-JFW, 2017 WL 8180770, at *2 (C.D. Cal. June 8,
24 2017) (citing Jacobson v. Persolve, LLC, 2014 WL
25 4090809, *7 (N.D. Cal. Aug. 19, 2014) (“This Court has
26 previously held that failure to state a cause of action
27 is better understood as a denial of Plaintiff’s
28 allegations rather than an affirmative defense.”)).

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 1 ii. Standing
2 Plaintiff moves for summary judgment on Defendants’
3 affirmative defense for standing, arguing that it is not
4 a proper affirmative defense because Plaintiff has the
5 burden of proving standing and Defendants’ contention
6 that Plaintiff lacks standing is not supported by the
7 evidence. Pl.’s MSJ 25:6-14. Defendants respond that
8 because Plaintiff “failed to present any evidence of
9 standing, Plaintiff is not entitled to summary judgment
10 on standing at this stage of the litigation.” Opp’n to
11 Pl.’s MSJ 2:20-21.
12 Standing is not an affirmative defense, but rather
13 “is a jurisdictional issue.” Plaintiff bears the burden
14 of establishing jurisdiction, including standing. See
15 Chandler v. State Farm Mut. Auto. Ins. Co., 598 F.3d
16 1115, 1122 (9th Cir. 2010). At the summary judgment
17 stage, Plaintiff has “the burden of showing by
18 uncontroverted facts that [it] ha[s] standing . . . .”
19 Barnes-Wallace v. City of San Diego, 530 F.3d 776, 784
20 (9th Cir. 2008).
21 Here, Plaintiff provided the Court with its
22 certificates of registration for Registration Nos. VA 2-
23 022-296 and VA 1-999-283. See Ex. A in Supp. of Pl.’s
24 MSJ; Ex. B in Supp. of Pl.’s MSJ. Defendants do not
25 dispute that Plaintiff is the sole owner of these
26 copyrights. See Resp. to Pl.’s SUF ¶¶ 2-3. Section
27 501(b) of the Copyright Act of 1976 establishes who has
28 standing to sue for infringement: “The legal or

62
 1 beneficial owner of an exclusive right under a copyright
2 is entitled, subject to the [registration] requirements
3 of section 411, to institute an action for any
4 infringement of that particular right committed while he
5 or she is the owner of it.” 17 U.S.C. § 501(b).
6 Accordingly, Plaintiff has standing to pursue its
7 copyright infringement claims.
8 Plaintiff also provided the Court with its
9 trademark registration for its CHALK BOMB!® mark. See
10 Ex. C in Supp. of Pl.’s MSJ. Defendants do not dispute
11 that Plaintiff applied for and received this Mark. See
12 Resp. to Pl.’s SUF ¶ 4. 15 U.S.C. § 1114 provides that
13 a trademark registrant has standing to sue for trademark
14 infringement. Accordingly, the Court finds that
15 Plaintiff has standing to bring its trademark-related
16 claims.
17 Lastly, Plaintiff provided the Court with copies of
18 its design patents. See ’596 Patent; ’220 Patent.
19 Plaintiff is the owner of the Asserted Patents by way of
20 assignment, which Defendant does not dispute. See Resp.
21 to Pl.’s SUF ¶ 9. “A patentee shall have remedy by
22 civil action for infringement of his patent.” 35 U.S.C.
23 § 281; see also Dexas Int’l, Ltd. v. Saunders Mfg. Co.,
24 No. 3:07-CV-0296-O, 2008 WL 4526132, at *2 (N.D. Tex.
25 Oct. 7, 2008) (“The term ‘patentee’ is expressly defined
26 as both the person to whom the patent issued and any
27 successors in title. When a patentee assigns the
28 patent, the transferee is considered the ‘patentee’

63
 1 under § 281 and is possessed with the right to sue
2 infringers of the patent.” (citations omitted)). As
3 such, the Court finds that Plaintiff has standing to
4 bring claims related to infringement of its Asserted
5 Patents.
6 The Court GRANTS Plaintiff’s MSJ as it pertains to
7 the affirmative defense of standing because Plaintiff
8 has demonstrated that it has standing to bring claims
9 arising from its trademark, copyrights, and design
10 patents.
11 iii. Waiver, Laches, Estoppel, Acquiescence
12 Plaintiff urges the Court to grant summary judgment
13 as to Defendants’ affirmative defense of waiver, laches,
14 estoppel, and acquiescence because no evidence has been
15 produced related to this defense. See Pl.’s MSJ 25:18-
16 20. Specifically, Plaintiff argues: (1) there is no
17 evidence of Plaintiff waiving any right; (2) there is no
18 evidence that Plaintiff acquiesced, expressly or
19 impliedly consented to the infringement; (3) Defendants
20 have not provided evidence that Plaintiff, either
21 intentionally or under circumstances induced reliance,
22 engaged in conduct upon which Defendants relied and that
23 they acted or changed their position to their detriment;
24 and (4) no evidence suggests that Plaintiff neglected or
25 delayed in bringing suit. Id. at 25:20-26. Defendants
26 failed to address any of Plaintiff’s arguments. See
27 generally Opp’n to Pl.’s MSJ.
28 ///

64
 1 Because Defendants have failed to set forth any
2 evidence supporting this affirmative defense after
3 Plaintiff demonstrated that this affirmative defense was
4 unsupported, the Court GRANTS Plaintiff’s MSJ as to the
5 affirmative defense of waiver, laches, estoppel, and
6 acquiescence. See Standard Fabrics Int’l, Inc. v.
7 Dress Barn Inc., No. 2:15-CV-08437-ODW-PJW, 2017 WL
8 240072, at *7 (C.D. Cal. Jan. 19, 2017) (granting the
9 plaintiff’s summary judgment motion as to affirmative
10 defenses for laches, waiver, and estoppel where the
11 defendants “failed to produce any evidence in support of
12 their defenses”); Levi Strauss & Co. v. Abercrombie &
13 Fitch Trading Co., No. C 07-03752 JSW, 2008 WL 4614660,
14 at *11 (N.D. Cal. Oct. 16, 2008) (granting summary
15 judgment on the defendant’s laches defense because the
16 defendant “has not come forth with evidence to establish
17 [the plaintiff] unreasonably delayed in filing suit”).
18 iv. Descriptiveness
19 Plaintiff asserts that Defendants have offered no
20 evidence showing Plaintiff’s Mark as descriptive and
21 thus invalid. See Pl.’s MSJ 26:8-13. Defendants
22 respond that “in light of Plaintiff’s disclaimer of
23 ‘chalk’ and its admissions that its product looks like a
24 ‘bomb’, there are genuine issues of fact regarding
25 whether Plaintiff’s asserted CHALK BOMB mark is
26 descriptive.” Opp’n to Pl.’s MSJ 22:23-25.
27 The Court agrees with Defendants. Because the
28 Court holds that a triable issue of fact exists as to

65
 1 the strength of Plaintiff’s Mark, i.e., whether it is
2 descriptive, it necessarily follows that a triable issue
3 of facts exists as to whether Defendants can assert an
4 affirmative defense of descriptiveness. The Court
5 DENIES Plaintiff’s MSJ on this defense.
6 v. Invalidity of the Patents-in-Suit
7 Plaintiff asserts that the Court should grant
8 summary judgment as to Defendants’ affirmative defense
9 of invalidity of the patents-in-suit because “Defendants
10 do not proffer any evidence in support of their
11 affirmative defense that the patents are invalid under
12 patent law . . . [and] [a]s the party challenging a
13 patent claim’s validity, Defendants bear the burden to
14 prove the invalidity by clear and convincing evidence.”
15 Pl.’s MSJ 26:15-19. Defendants respond that “in light
16 of the substantial prior art there are serious questions
17 related to the validity of Plaintiff’s patents,” so
18 summary judgment should not be granted on this
19 affirmative defense. Opp’n to Pl.’s MSJ 22:27-23:2.
20 Based on Defendants’ assertions with respect to the
21 prior art, summary judgment as to the affirmative
22 defense of invalidity of the patents-in-suit is
23 improper, and the Court DENIES Plaintiff’s MSJ on this
24 defense.
25 vi. Limitation on Damages of the Patents-
in-Suit
26
27 Plaintiff maintains that “Defendants have not
28 provided any evidence that the damages should be limited

66
 1 in any way and therefore, the Court should grant summary
2 judgment against Defendants’ affirmative defense” of
3 limitation on damages of the patents-in-suit. Pl.’s MSJ
4 27:2-4. Citing 35 U.S.C. § 287(a), Defendants respond
5 that “patentees are required to provide actual notice of
6 infringement or constructive notice, accomplished by
7 marking the article with the patent number to recover
8 damage,” and “Plaintiff has presented no evidence to
9 defeat this affirmative defense.” Opp’n to Pl.’s MSJ
10 23:4-7.
11 35 U.S.C. § 287 is “a limitation on damages, and
12 not an affirmative defense.” Arctic Cat Inc. v.
13 Bombardier Recreational Prod. Inc., 876 F.3d 1350, 1366
14 (Fed. Cir. 2017) (citing Motorola, Inc. v. United
15 States, 729 F.2d 765, 770 (Fed. Cir. 1984)).
16 Nonetheless, “district courts routinely permit section
17 287 to be employed as an affirmative defense in an
18 answer.” Targus Grp. Int’l, Inc. v. CODi, Inc., No. SA-
19 CV-1500353-CJC-EX, 2015 WL 12696220, at *2 (C.D. Cal.
20 Sept. 17, 2015) (citing Vistan Corp. v. Fadei USA, Inc.,
21 No. C-10-4862 JCS, 2011 WL 1544796, at *1 (N.D. Cal.
22 Apr. 25, 2011)). But “[c]ompliance with § 287 is a
23 question of fact.” Arctic Cat, 876 F.3d at 1366.
24 Accordingly, because a triable issue of fact exists as
25 to whether an affirmative defense of limitation on
26 damages exists, the Court DENIES Plaintiff’s MSJ on this
27 defense.
28 ///

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 1 vii. Invalidity of Copyright
2 Plaintiff argues that the Court should grant
3 summary judgment on Defendants’ affirmative defense of
4 invalidity of copyright because Defendants have not
5 provided any evidence that Plaintiff’s copyright
6 registrations are invalid. Pl.’s MSJ 27:12-14.
7 Defendants do not oppose Plaintiff’s MSJ on this ground.
8 The parties do not dispute that the U.S. Copyright
9 Office issued Copyright Registration Nos. VA 2-022-296
10 and VA 1-999-283 to Plaintiff. Resp. to Pl.’s SUF ¶ 2.
11 The certificates establish that the registrations were
12 made within five years after the first publication of
13 the work and are therefore “prima facie evidence of the
14 validity of the copyright and of the facts stated in the
15 certificate.”5 17 U.S.C. § 410(c). Defendants have
16 failed to present any evidence that Plaintiff’s
17 copyrights are invalid. Accordingly, the Court GRANTS
18 Plaintiff’s MSJ as to Defendants’ affirmative defense of
19 invalidity of copyright. See Standard Fabrics, 2017 WL
20 240072, at *7 (granting the plaintiff’s summary judgment
21 motion as to affirmative defense for invalidity of
22 copyright where the defendants “failed to produce any
23 evidence in support of their defenses”).
24 ///
25 ///
26
5Both certificates of registration state the date of first
27 publication as November 7, 2015 and their effective date as
28 December 29, 2015. See ‘296 Registration; ‘283 Registration.

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 1 viii. De Minimis Use
2 Plaintiff states that the Court should grant
3 summary judgment as to Defendants’ affirmative defense
4 of de minimis use because a “defense which points out a
5 defect in the plaintiff’s prima facie case is not an
6 affirmative defense,” “Defendants already plead fair use
7 as a defense to copyright infringement,” and “Defendants
8 have not provided any evidence to support this
9 affirmative defense.” Pl.’s MSJ 27:24-28. Defendants
10 do not address Plaintiff’s arguments in their
11 Opposition.
12 “A copyright infringement is considered de minimis
13 ‘only if it is so meager and fragmentary that the
14 average audience would not recognize the
15 appropriation.’” Rosen v. R & R Auction Co., LLC, No.
16 CV-15-07950-BRO-JPRX, 2016 WL 7626443, at *11 (C.D. Cal.
17 Aug. 31, 2016) (citing Fisher v. Dees, 794 F.2d 432, 434
18 n.2 (9th Cir. 1986)). Whether Defendants’ use is
19 considered de minimis is a question of fact for the
20 jury. See Iantosca v. Elie Tahari, Ltd., No. 19-CV-
21 04527 (MKV), 2020 WL 5603538, at *3 (S.D.N.Y. Sept. 18,
22 2020) (noting that “affirmative defenses in copyright
23 actions are generally fact-intensive”). Accordingly,
24 the Court DENIES Plaintiff’s MSJ on this defense.
25 ix. Fair Use
26 Plaintiff asserts that the Court should grant
27 Plaintiff’s MSJ as to Defendants’ fair use defense
28 because “Defendants have not provided any evidence to

69
 1 support this affirmative defense.” Pl.’s MSJ 28:4-5.
2 Defendants do not address this affirmative defense in
3 their Opposition.
4 To establish fair use, the Court looks to “(1) the
5 purpose and character of the use, including whether such
6 use is of a commercial nature or is for nonprofit
7 educational purposes; (2) the nature of the copyrighted
8 work; (3) the amount and substantiality of the portion
9 used in relation to the copyrighted work as a whole; and
10 (4) the effect of the use upon the potential market for
11 or value of the copyrighted work.” 17 U.S.C. § 107.
12 First, Defendants used Plaintiff’s works
13 commercially and derived a financial benefit from that
14 use, so this factor weighs in favor of Plaintiff. See
15 BMG Rights Mgmt. (US) LLC v. Glob. Eagle Ent. Inc., No.
16 2:18-CV-03723-VAP-JEMx, 2019 WL 6315533, at *9 (C.D.
17 Cal. Sept. 9, 2019) (“[T]he first factor weighs in BMG’s
18 favor because a commercial use of copyrighted material
19 is presumptively an unfair exploitation of the monopoly
20 privilege that belongs to the owner of the copyright.”)
21 (internal quotation marks and citations omitted)).
22 Second, Plaintiff’s copyrights protect original
23 artwork for its packaging, which weighs in Plaintiff’s
24 favor. See Campbell v. Acuff-Rose Music, Inc., 510 U.S.
25 569, 586 (1994) (noting that “some works are closer to
26 the core of intended copyright protection than others,”
27 such as fictional short stories versus factual works,
28 motion pictures versus news broadcasts, and creative

70
 1 works versus bare factual compilations).
2 The third factor weighs in Defendants’ favor
3 because they did not use the entirety of Plaintiff’s
4 work.
5 And the fourth, and most important, factor weighs
6 in favor of Plaintiff because a likelihood of market
7 harm may be presumed when Defendants’ intended use was
8 for commercial gain. See FameFlynet, Inc. v. Breitbart
9 News Network, L.L.C., No. CV-17-05416 TJH (ASx), 2018 WL
10 6321648, at *6 (C.D. Cal. Nov. 28, 2018) (“The fourth
11 factor [is] the most important to the fair use analysis
12 . . . .”). Because the balance of the factors
13 overwhelmingly tips in Plaintiff’s favor, and because
14 Defendants have provided no evidence of fair use, the
15 Court GRANTS Plaintiff’s MSJ as to Defendants’ fair use
16 defense.
17 x. Innocent Intent
18 Plaintiff seeks summary judgment as to Defendants’
19 affirmative defense of innocent intent because
20 “Defendants have not provided any evidence to support
21 this affirmative defense.” Pl.’s MSJ 28:9-12.
22 Defendants do not address Plaintiff’s arguments in their
23 Opposition.
24 The Court finds that a dispute of fact exists as to
25 whether any infringement on the part of Defendants was
26 willful. See Pl.’s SUF ¶ 10; Resp. to Pl.’s SUF ¶ 10.
27 And it necessarily follows that if Defendants’
28 infringement was willful, it could not have been

71
 1 innocent. Accordingly, the Court DENIES Plaintiff’s MSJ
2 as to Defendants’ affirmative defense of innocent intent
3 because a dispute of material fact exists.
4 xi. Lack of Personal Jurisdiction
5 Plaintiff seeks summary judgment as to Defendant
6 Summers’s affirmative defense of lack of personal
7 jurisdiction because “Defendants have not provided any
8 evidence to support this affirmative defense.” Pl.’s
9 MSJ 28:14-17. Defendants do not specifically respond to
10 this argument in their Opposition.
11 Plaintiff has the burden of establishing personal
12 jurisdiction. See Ziegler v. Indian River Cty., 64 F.3d
13 470, 473 (9th Cir. 1995); Flynt Distrib. Co. v. Harvey,
14 734 F.2d 1389, 1392 (9th Cir. 1984). Here, Plaintiff
15 has set forth no argument as to why this Court has
16 personal jurisdiction over Defendant Summers.
17 Accordingly, the Court DENIES Plaintiff’s MSJ on this
18 defense.
19 ///
20 ///
21 ///
22 ///
23 ///
24 ///
25 ///
26 ///
27 ///
28 ///

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 1 III. CONCLUSION
2 Based on the foregoing, the Court rules as follows:
3 (1) The Court GRANTS Plaintiff’s Motion to Strike
4 Delman Report and STRIKES the Delman Report in its
5 entirety.
6 (2) The Court GRANTS in part Defendants’ Motion to
7 Exclude Gottlieb Testimony as it pertains to
8 Gottlieb’s opinions regarding design patent
9 infringement, copyright infringement, trademark
10 infringement, and likelihood of confusion. The
11 Court DENIES in part Defendants’ Motion to Exclude
12 Gottlieb Testimony as it pertains to Gottlieb’s
13 opinions regarding the quality of the Accused
14 Product, market spoilage, and the safety of the
15 Accused Product.
16 (3) The Court GRANTS in part Defendants’ Motion to
17 Exclude Beaton Testimony and STRIKES paragraph 42
18 of the Beaton Report.
19 (4) The Court GRANTS in part Plaintiff’s MSJ as to
20 Defendants’ affirmative defenses of failure to
21 state a claim for relief; standing; waiver, laches,
22 estoppel, and acquiescence; invalidity of
23 copyright; and fair use. The Court DENIES in part
24 Plaintiff’s MSJ as to its claims for trademark
25 infringement; false designation of origin and
26 unfair competition; design patent infringement; and
27 copyright infringement; as well as Defendants’
28 affirmative defenses of descriptiveness; invalidity

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 1 of the patents-in-suit; limitation on damages of
2 the patents-in-suit; de minimis use; innocent
3 intent; and lack of personal jurisdiction.
4 (5) The Court DENIES Defendants’ MSJ as to Plaintiff’s
5 claims for design patent infringement; copyright
6 infringement; and actual damages.
7 IT IS SO ORDERED.
8
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10 12
DATED: November __, 2020 /s/ Ronald S.W. Lew
_________________________
HONORABLE RONALD S.W. LEW
11
Senior U.S. District Judge
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