Benefit Cosmetics LLC v. E.L.F. Cosmetics, Inc.

Background

Benefit Cosmetics LLC alleged that E.L.F. Cosmetics, Inc.’s Lash ‘N Roll mascara infringed trademark and trade dress rights associated with Benefit’s Roller Lash mascara. Before the scheduled August 26, 2024 bench trial, the parties filed cross-motions to exclude expert testimony. Benefit also moved to strike certain deposition testimony, documents, expert opinions, and theories that it said were disclosed too late. The parties also filed motions concerning sealed materials.

Expert-exclusion motions

The court applied Federal Rule of Evidence 702 and the standards for evaluating expert testimony. It held that e.l.f.’s motion to exclude Benefit expert Tim P. Fletcher was granted in part and denied in part. Fletcher could testify based on his design experience, online and in-person research, and use of Gestalt Theory and Familiarity Theory. The court said e.l.f.’s criticisms generally affected the weight of his testimony rather than its admissibility. But Fletcher could not offer opinions that were speculative or merely compared physical differences between products without adding expertise. Any opinions at trial also had to be grounded in his experience.

Benefit’s motion to exclude e.l.f. experts Victoria Colby, Glenn May, and Sarah Butler was granted in part and denied in part. Colby and May could testify about consumer perceptions and industry practices when their opinions were based on their relevant industry experience. They could not simply identify visually apparent product differences and draw conclusions that consumers would distinguish the products, and they could not offer direct conclusions about the overall likelihood of confusion. Certain unsupported opinions about what consumers remember, what consumers necessarily know about so-called “dupes,” the legality of dupes, and statistics about dupes were excluded. Colby could not rely on articles as empirical data about consumer sophistication, but she could testify about consumer sophistication based on her industry experience. The court also excluded a legal conclusion in May’s report concerning whether color branding could constitute protectable trade dress. Finally, Benefit’s motion was granted as to Sarah Butler’s post-sale survey opinions because Benefit was not pursuing a post-sale confusion theory.

Benefit’s motion to strike

Benefit’s motion to strike was granted in part and denied in part. The court ruled that Glenn May could respond at trial to specific criticisms of his report, but only in a rebuttal context. He could not use that testimony to introduce unrelated new criticisms, including criticisms of Fletcher’s experience or qualifications.

The court granted Benefit’s motion to strike John Teshome’s new sur-rebuttal testimony and the supporting spreadsheet. Teshome had provided a new explanation for his analysis and a spreadsheet that had not been disclosed before his deposition. The court also granted the motion to strike, to the extent Teshome’s opinions relied on them, cost documents disclosed after fact discovery had closed. The late disclosure prejudiced Benefit’s ability to investigate the documents and question fact witnesses about them.

As to e.l.f.’s additional functionality theories and related expert opinions, the court found that the theories were disclosed late and that Benefit had been deprived of an opportunity to conduct fact discovery about them. Instead of excluding all of those theories and opinions, the court allowed Benefit to take up to two additional depositions. E.l.f. had to pay the associated costs and fees, and the depositions were to occur within 14 days of the order if conducted.

Sealing motions and disposition

The court found e.l.f.’s sealing requests overbroad. E.l.f. was directed to file one narrower, omnibus sealing motion within 14 days, identifying specifically what information should be sealed and why. E.l.f. was also directed to file its motion to exclude and the attached expert report and deposition transcript publicly without redactions within seven days. Benefit was directed to respond to e.l.f.’s sealing motion and identify any material it wanted to keep under seal within seven days.

The court’s final disposition was that e.l.f.’s motion to exclude, Benefit’s motion to exclude, and Benefit’s motion to strike were each granted in part and denied in part. The order addressed evidence, discovery, and sealing before trial; it did not decide whether either party prevailed on the underlying trademark or trade dress infringement claims.