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AWGI, L.L.C. v. Atlas Trucking Company, L.L.C.

United States District Court, E.D. Michigan, Southern Division

December 30, 2019

AWGI, L.L.C.; Atlas Logistics, Inc.; and Atlas Van Lines, Inc. Plaintiffs,
v.
Atlas Trucking Company, L.L.C.; Atlas Logistics, L.L.C.; and Eaton Steel Bar Company, Inc., Defendants.

          OPINION AND ORDER REGARDING MOTIONS IN LIMINE

          Sean F. Cox United States District Judge.

         This trademark infringement case will proceed to a bench trial. Plaintiffs have filed two motions in limine, (ECF Nos. 120, 121), and Defendants have filed six motions in limine. (ECF No. 123).[1] For the reasons below, the Court will (1) grant Plaintiffs' motion to preclude Defendants from calling Plaintiffs' counsel to testify at trial; (2) deny without prejudice Plaintiffs' motion to preclude Defendants from reading Plaintiffs' corporate designee's deposition into the record; and (3) deny Defendants' motions.

         BACKGROUND

         This is a trademark case about the use of a stylized “A” and the terms “Atlas, ” “Atlas Logistics, ” and “Atlas - - the Agent's Van Line.” The plaintiffs are Atlas Van Lines (which is primarily a household moving company), Atlas Logistics, Inc. (a logistics management service) (“Plaintiff Logistics”), and AWGI, LLC (the holding company for Van Lines and Plaintiff Logistics). The defendants are Eaton Steel Bar Company (a steel manufacturer) and its affiliated trucking and logistics companies, Atlas Trucking Company, LLC, and Atlas Logistics, LLC (“Defendant Logistics”).

         Plaintiffs alleged four counts of trademark infringement under the Lanham Act, two counts of trademark counterfeiting under the Lanham Act, and one count of common law unfair competition. Defendant Logistics counterclaimed against Plaintiff Logistics and AWGI for one count of unfair competition and false designation of origin under the Lanham Act, and one count of common law unfair competition. Defendant Logistics also seeks a declaratory injunction, pursuant to § 1119 of the Lanham Act, stating that Plaintiffs' trademark in “Atlas Logistics” was improperly registered and directing the Commission of Patents and Trademarks to cancel it.

         Following the Court's rulings on the parties's cross-motions for summary judgment, (ECF Nos. 90, 106), these are the claims that will proceed to trial:

Plaintiffs

Type of Claim

Mark at Issue

Count I

Trademark Infringement

“Atlas”

Count II

Trademark Infringement

“Atlas Logistics”

Count III

Trademark Infringement

Stylized A Logo

Count IV

Trademark Infringement

Atlas--The Agents' Van Line”

Count VI

Counterfeiting

“Atlas Logistics”

Defendants

Type of Claim

Mark at Issue

Counterclaim I

Unfair Competition and False Designation of Origin

“Atlas Logistics”

Counterclaim III

Dec. Inj. re Cancelling Plaintiffs' Trademark

“Atlas Logistics”

         The parties stipulated to a bench trial and withdrew all requests for any type of monetary relief. (ECF No. 111). Whoever prevails at trial will receive only injunctive relief.

         On November 8, 2019, the parties filed their motions in limine. (ECF Nos. 120, 121, 123). Generally, the Plaintiffs would like (1) to bar Defendants from calling Plaintiffs' lead trial counsel to testify, and (2) to prevent Defendants from reading a deposition into evidence because the deponent will testify live at trial. Defendants would like (1) to exclude any evidence regarding the public's perception of Plaintiffs' marks; (2) to exclude any evidence regarding “actual confusion”; (3) to exclude evidence regarding Plaintiffs' advertising expenditures; (4) to preclude Plaintiffs from asserting that they haul steel; (5) to exclude the expert testimony of Krista Holt; and (6) to exclude a magazine article regarding an award Plaintiffs allegedly won. Each side responded to the other's motions (ECF Nos. 129, 130, 131), and filed replies in support of their own motions. (ECF Nos. 136, 137, 139). The Court heard oral arguments on these motions on December 12, 2019.

         ANALYSIS

         I. Motions in Limine Generally

         Trials are dynamic, and a district court should grant a motion in limine “only when that evidence is clearly inadmissible on all potential grounds.” Palmer v. Allen, 2017 WL 218077 at*1 (E.D. Mich. Jan. 19, 2017) (quoting Ind. Ins. Co. v. GE, 326 F.Supp.2d, 844, 846 (N.D. Ohio 2004)). In cases where that high standard is not met, “evidentiary rulings should be deferred until trial so that questions of foundation, relevancy, and potential prejudice may be resolved in a proper context.” Id. Denial of a motion to exclude evidence in limine does not necessarily mean that the Court will admit the evidence at trial. See Luce v. United States, 469 U.S. 38, 41 (1984). “[E]ven if nothing unexpected happens at trial, the district judge is free, in the exercise of sound judicial discretion, to alter a previous in limine ruling.” Id. at 41-42.

         II. Plaintiffs' Motions

         Plaintiffs have filed two motions in limine: a motion to preclude Defendants from calling Plaintiffs' trial counsel, Mark Warzecha, to testify at trial (ECF No. 120); and a motion to preclude Defendants from reading into evidence the deposition testimony of Plaintiffs' corporate designee Ryan McConnell, who will testify live at trial (ECF No. 121).

         A. Motion Regarding Plaintiffs' Counsel

         Defendants have indicated that they may call Plaintiffs' counsel, Mark Warzecha, to testify at trial. Plaintiffs object, arguing that Defendants cannot meet the required showing for compelling a party's attorney to testify and that requiring counsel to testify implicates his ethical obligations.

         When considering whether to compel a party's attorney to testify at trial, courts in the Sixth Circuit apply the Eighth Circuit's “Shelton test.” See Alomari v. Ohio Dep't of Public Safety, 626 Fed.App'x 558, 573 (6th Cir. 2015) (“This circuit has adopted the so-called ‘Shelton rule'. . .”); Under the Shelton test, a party seeking testimony from an attorney must show that (1) no other means exist to obtain the information at issue; (2) the information sought is relevant and non-privileged; and (3) the information is crucial to the case. Shelton v. American Motors Corp., 805 F.2d 1323, 1327 (8th Cir. 1986); see also Gazvoda v. Secretary of Homeland Security, 2018 WL 1281756 at *6-*7 (E.D. Mich. 2018) (applying Shelton in a ruling on a motion in limine); Commercial Law Corp., P.C. v. Fed. Deposit Ins. Corp., 2015 WL 7450149 at *5-*6, n.7 (E.D. Mich. 2015) (same).

         Defendants argue that counsel's testimony is necessary because he filed and prosecuted the Plaintiffs' “Atlas Logistic” trademark at the Patent and Trademark Office. In the application, counsel attested that Plaintiffs had first used this mark in commerce “at least as early as December 3, 2012.” (ECF No. 137, PageID 4521). Defendants allege that they used the “Atlas Logistics” mark at least as early as September 2005. After Defendants argued that the application indicated that Plaintiffs had begun using the “Atlas Logistics” mark after Defendants' first use, “Plaintiffs reversed course and claimed that the December 3, 2012 date. . . was a ‘scrivener's error.'” (ECF No. 130, PageID 4411). Defendants seek to call counsel to question him about that scrivener's error because he was the scrivener.

         The Court concludes that no part of the Shelton test is met. First, counsel's possible testimony regarding Plaintiffs' first use of “Atlas Logistics, ” and the information contained in the trademark application, is likely subsumed by the testimony of Plaintiffs' executives, who can testify as to whether the date on the application is correct. Second, the disclosure of how counsel obtained the information he placed on the application and what that information was-necessary predicates to the relevancy of counsel's testimony regarding the scrivener's error-would likely implicate privileged client communications. Third, testimony regarding this alleged scrivener's error is not crucial to the case. The relevant issue is which party first used “Atlas Logistics” or its legal equivalent. The accuracy of the trademark application is not dispositive of this issue, and the applicable date can be established using other testimony. Because Defendants have not established the Shelton factors, the Court will grant Plaintiffs' first motion in limine. (ECF No. 120).

         B. Motion Regarding Reading Deposition into Record

         Defendants have indicated that they would like to read into the record portions of the transcript from the deposition of Plaintiffs' corporate representative, Ryan McConnell. Plaintiffs object, arguing that such a reading is unnecessary because McConnell will be testifying live at trial. Defendants respond that they want to ensure that McConnell's testimony on behalf of the company-rather than his testimony as an individual-is in the record. The parties agree that the Court has “broad discretion” to decide this motion. (ECF No. 121, PageID 4184); (ECF No. 129, PageID 4404).

         The parties appear to agree more than they disagree about this issue. Plaintiffs admit that, as their Vice President of Strategic Planning and corporate designee, McConnell's testimony binds them. (ECF No. 138, PageID 4537). And Plaintiffs concede that McConnell's deposition may be used for impeachment purposes and that, during closing arguments, Plaintiffs may read any portion of the transcript that has been admitted into evidence. Thus, it appears that the only dispute is whether the Defendants can, as a matter of right, enter the deposition into evidence and read it during their opening statement.

         A federal district court recently grappled with this precise issue and outlined the appropriate framework[2] under which to evaluate this motion:

Whether to admit deposition testimony in evidence at trial rests within the district court's broad discretion. Lear v. Equitable Life Assurance Soc'y, 798 F.2d 1128, 1135 (8th Cir. 1986); accord Gonzalez Prod. Sys., Inc. v. Martinrea Int'l Inc., 310 F.R.D. 341, 344 (E.D. Mich. 2015). It also is within a district court's “broad discretion to conduct [a] trial in an orderly and efficient manner, and to choose among reasonable evidentiary alternatives” to ensure the fair and complete presentation of evidence. McCoy v. Augusta Fiberglass Coatings, Inc., 593 F.3d 737, 747 (8th Cir. 2010) (internal quotation marks omitted) (reviewing evidentiary rulings in the context of Federal Rule of Evidence 106); see also Fed. R. Evid. 106 advisory committee's note (explaining that Rule 106 “is an expression of the rule of completeness” and “is substantially a restatement” of the analogous rule applicable to depositions pursuant to Federal Rule of Civil Procedure 32(a)). A district court may exclude otherwise ...

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