Mattsson v. Pat McGrath Cosmetics LLC

Background

Desiree Mattsson alleges that she owns a copyright in a photograph called the “Fly Face Image.” She alleges that Pat McGrath Cosmetics LLC used the photograph in connection with makeup products and that Sephora USA, Inc., Bergdorf Goodman, LLC, and Selfridges Retail Limited were also liable for infringement. The defendants dispute aspects of her claims, including the scope of any license and ownership or validity issues concerning a version of the image with gold-colored flies. The opinion addresses only defendants’ motion to hold separate trials for liability and damages.

Legal standard

Federal Rule of Civil Procedure 42(b) allows a court to order separate trials of issues or claims for convenience, to avoid prejudice, or to promote efficiency, while preserving any right to a jury trial. The court explained that separate trials are generally disfavored and that the party seeking them must show that bifurcation would promote convenience or avoid prejudice. The decision is within the trial court’s discretion.

The court’s analysis

The court concluded that bifurcation was not appropriate. First, it viewed the case as a dispute over one copyrighted photograph, with liability likely to depend on straightforward documentary evidence, communications between the parties, and witness testimony. The court distinguished more complicated copyright and patent cases cited by defendants.

Second, the court found that separate trials would not save significant court resources and could prolong the trial. Evidence concerning the defendants’ use of the image, the products displaying it, advertising, and sales would be relevant to both liability and damages. The court also rejected any implied request to pause damages discovery, noting that the case schedule required discovery to be completed by August 2022.

Third, the court found that separate trials were unlikely to help jurors because the liability and damages issues were not sufficiently distinct or complex. The witnesses would overlap, including Mattsson, her manager, and representatives of Pat McGrath Cosmetics. The court also stated that potential discovery-related prejudice to defendants could be addressed through discussions between the parties and, if needed, conferences with the court. It further noted that Pat McGrath Cosmetics had indemnified the retail defendants.

Disposition

Judge Sarah L. Cave denied defendants’ motion to bifurcate the liability and damages phases of the action and directed the Clerk to close the motion. The opinion did not resolve the underlying copyright claims, the defendants’ defenses, or Pat McGrath Cosmetics’ counterclaims.