Case 5:18-cv-00153-RWS-CMC Document 594 Filed 07/16/21 Page 1 of 24 PageID #: 17879
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`
`
`
`
`
`
`TravelPass Group, LLC, Partner Fusion, Inc.,
`Reservation Counter, LLC,
`
`Plaintiffs,
`
`v.
`
`Caesars Entertainment Corporation, Choice
`Hotels International, Inc., Hilton Domestic
`Operating Company Inc., Hyatt Hotels
`Corporation, Marriott International, Inc., Red
`Roof Inns, Inc., Six Continents Hotels, Inc.,
`Wyndham Hotel Group, LLC,
`
`Defendants.
`
`Case No. 5:18-cv-153-RWS-CMC
`
`JURY TRIAL DEMANDED
`
`HEARING REQUESTED
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`
`
`
`
`
`
`
`
`DEFENDANTS’ OPPOSITION TO PLAINTIFFS’ MOTION TO EXCLUDE THE
`AFFIRMATIVE REPORTS, OPINIONS, AND TESTIMONY OF DEFENDANTS’
`EXPERT STEPHEN BECKER
`
`
`
`
`
`
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`

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`Case 5:18-cv-00153-RWS-CMC Document 594 Filed 07/16/21 Page 2 of 24 PageID #: 17880
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`TABLE OF CONTENTS
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`
`
`I.
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`INTRODUCTION ...............................................................................................................1
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`II.
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`LEGAL STANDARD ..........................................................................................................3
`
`III.
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`THERE IS NO BASIS TO STRIKE DR. BECKER’S OPINIONS AND REPORT ..........5
`
`A.
`
`Dr. Becker’s Testimony is Reliable, Relevant, and Helpful to the Trier of
`Fact. ..........................................................................................................................5
`
`B.
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`TravelPass Is Wrong On The Parties’ Burdens Regarding Disgorgement. .............7
`
`a.
`
`Dr. Becker has no obligation to apportion the disgorgement of
`profit award among the multiple claims asserted under the Lanham
`Act. ............................................................................................................ 10
`
`C.
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`Dr. Becker’s Opinion Estimating Corrective Advertising Expenditures Is
`Reliable and Admissible. .......................................................................................12
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`IV.
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`CONCLUSION ..................................................................................................................17
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`
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`i
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`Case 5:18-cv-00153-RWS-CMC Document 594 Filed 07/16/21 Page 3 of 24 PageID #: 17881
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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Astro Technology, Inc. v. Alliant Techsystems, Inc.,
`2005 WL 6061803 (S.D. Tex. 2005) .....................................................................13, 14, 15, 16
`
`Boltex Mfg. Co., L.P. v. Ulma Piping USA Corp.,
`2019 WL 9143478 (S.D. Tex. Aug. 23, 2019) ........................................................................10
`
`Boltex Mfg. Co., L.P. v. Ulma Piping USA Corp.,
`2020 WL 3525485 (S.D. Tex. Apr. 21, 2020) .........................................................................10
`
`Clearline Techs. Ltd. v. Cooper B-Line, Inc.,
`948 F. Supp. 2d 691 (S.D. Tex. 2013) .......................................................................................5
`
`Daubert v. Merrell Dow Pharms., Inc.,
`509 U.S. 579 (1993) .........................................................................................................4, 7, 13
`
`Elorac, Inc. v. Sanofi-Aventis Canada, Inc.,
`2017 WL 3592775 (N.D. Ill. Aug. 21, 2017) ....................................................................11, 12
`
`Firebirds Int’l, Inc. v. Firebird Rest. Grp., LLC,
`2019 WL 3957846 (N.D. Tex. Aug. 21, 2019) ..........................................................................4
`
`Gavrieli Brands LLC v. Soto Massini (USA) Corp.,
`2020 WL 1443215 (D. Del. Mar. 24, 2020) ............................................................................15
`
`Gucci Am. v. Bank of China,
`768 F.3d 122 (2d Cir. 2014).......................................................................................................8
`
`Hamilton-Brown Shoe Co. v. Wolf Bros. & Co.,
`240 U.S. 251 (1916) ...............................................................................................................7, 9
`
`Illinois Tool Works, Inc. v. Rust-Oleum Corp.,
`955 F.3d 512 (5th Cir. 2020) ...............................................................................................9, 10
`
`Justin Brands, Inc. v. Lucchese, Inc.,
`2005 WL 8159158 (N.D. Tex. Aug. 29, 2005) ..........................................................................4
`
`Logan v. Burgers Ozark Country Cured Hams Inc.,
`263 F.3d 447 (5th Cir. 2001) .....................................................................................................9
`
`Maltina Corp. v. Cawy Bottling Co.,
`613 F.2d 582 (5th Cir. 1980) .................................................................................................8, 9
`
`
`
`ii
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`

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`McCord v. Prudential Ins. Co. of Am.,
`2011 WL 6176473 (E.D. Tex. Aug. 17, 2011) ..........................................................................4
`
`Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co.,
`316 U.S. 203 (1942) ...........................................................................................................7, 8, 9
`
`Neutron Depot, L.L.C. v. Bankrate, Inc.,
`798 F. App’x 803 (5th Cir. 2020) ..............................................................................................5
`
`Neutron Depot, LLC v. Bankrate, Inc.,
`2018 WL 3014435 (W.D. Tex. May 1, 2018) ...........................................................................5
`
`Primrose Operating Co. v. Nat’l Am. Ins. Co.,
`382 F.3d 546 (5th Cir. 2004) .....................................................................................................4
`
`ProTradeNet, LLC v. Predictive Profiles, Inc.,
`6:18-CV-38-ADA, 2020 WL 5510732 (W.D. Tex. Mar. 10, 2020) ........................................15
`
`Rex Real Est. I, L.P. v. Rex Real Est. Exch., Inc.,
`No. A-19-CV-696-RP, 2020 WL 710198 (W.D. Tex. Feb. 12, 2020) ....................................16
`
`Static Control Components, Inc. v. Lexmark Intern., Inc.,
`2007 WL 7083655 (E.D. Ky. 2007) ........................................................................................11
`
`Texas Pig Stands, Inc. v. Hard Rock Cafe Int’l, Inc.,
`966 F.2d 956 (5th Cir. 1992) .....................................................................................................9
`
`Three Boys Music Corp. v. Bolton,
`212 F.3d 477 (9th Cir. 2000) .....................................................................................................9
`
`United States v. Jackson,
`19 F.3d 1003 (5th Cir. 1994) .....................................................................................................4
`
`WMS Gaming, Inc. v. WPC Prods. Ltd.,
`542 F.3d 601 (7th Cir. 2008) .................................................................................................8, 9
`
`Worldventures Holdings, LLC v. Ariix, LLC,
`2019 WL 6037989 (E.D. Tex. Jul. 31, 2019) ............................................................................4
`
`Statutes
`
`15 U.S.C. 1117(a) ............................................................................................................................8
`
`15 U.S.C. § 1117(a) .........................................................................................................................5
`
`Other Authorities
`
`Local Rule CV-5(a)........................................................................................................................20
`
`
`
`iii
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`Defendants Choice Hotels International, Inc. (“Choice”), Marriott International, Inc.
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`(“Marriott”), and Six Continents Hotels, Inc. (“Six Continents”) (collectively, “Defendants”)
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`hereby oppose the Motion to Exclude The Affirmative Reports, Opinions, And Testimony Of
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`Defendants’ Expert Stephen Becker, Dkt. 559, (the “Motion”) filed by Plaintiffs TravelPass
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`Group, LLC, Partner Fusion, Inc., and Reservation Counter, LLC (collectively, “TravelPass”).
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`I.
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`INTRODUCTION
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`Dr. Stephen Becker is an experienced and well-regarded expert in the areas of financial
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`analysis and economic damages. Defendants have retained Dr. Becker to analyze damages in this
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`case related to both TravelPass’s antitrust claims and Defendants’ Lanham Act and state law
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`counterclaims. TravelPass argues in its Motion that Dr. Becker’s opinions related to Defendants’
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`counterclaims should be excluded. The Court should deny TravelPass’s Motion because its
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`criticisms of Dr. Becker’s opinions are wrong on the law or at most go to the weight of his
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`testimony, not its admissibility.
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`Defendants will prove at trial that TravelPass has misled consumers into believing that they
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`were booking hotel room reservations directly with a hotel when in fact they were booking with
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`TravelPass. Nearly all of TravelPass’s customers wound up booking with TravelPass by (1)
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`searching online for a specific hotel brand in a specific location—e.g., “Holiday Inn Texarkana,”
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`(2) following a link in a sponsored ad, (3) arriving at a hotel landing page, (4) ultimately making
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`a reservation though the TravelPass website or dialing a phone number on the TravelPass website
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`that connected the customer to a call center. At each step of this process, TravelPass set out to
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`mislead the consumer into believing they were dealing directly with a centralized reservation
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`counter or desk for the hotels themselves. For example, TravelPass’s sponsored ads prominently
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`feature hotel brand names along with phrases
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`like “book direct” and URLs
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`like
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`"holidayinn.reservationcounter.com. TravelPass’s websites also featured hotel brand names, along
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`OPPOSITION TO MOTION TO EXCLUDE EXPERT STEPHEN BECKER – Page 1
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`with hotel logos, while minimizing, if not altogether obscuring, TravelPass’s own brand, and using
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`generic names like Reservation Counter and Reservation Desk for their websites. TravelPass
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`further included telephone numbers for its call centers in locations designed to appear as though
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`they were telephone numbers for the hotels, e.g., immediately below the hotel address, and when
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`call center operators answered the calls, they pretended to be the centralized reservation counter
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`for the hotels themselves.
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`The misleading and infringing nature of these activities is evidenced by the significant
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`record of actual confusion in this case and detailed in Defendants’ Joint Motion for Summary
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`Judgment on Likelihood of Confusion and Fair Use. See Dkt. Nos. 565-566. Thus, TravelPass’s
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`conduct constitutes trademark infringement, unfair competition, false advertising, and trademark
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`dilution in violation of the Lanham Act, related state laws, and the common law. Defendants are
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`seeking, inter alia, a disgorgement of TravelPass’s profits related to bookings for the hotel brands
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`at issue and corrective advertising. Defendants plan to call Dr. Becker to testify regarding
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`quantification of its disgorgement and corrective advertising claims.
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`TravelPass argues that Dr. Becker’s opinion on disgorgement is unreliable because he did
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`not determine what percentage of TravelPass’s bookings were due to its wrongful conduct as
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`opposed to other factors. But, that is not Defendants’ burden. More than 100 years of Supreme
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`Court case law, as well as the plain language of the Lanham Act, make clear that a trademark
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`owner seeking a disgorgement of profits need only prove the infringer’s sales. It is the infringer’s
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`burden to prove any deductions, including any profits not attributable to its unlawful conduct.
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`While there must be some correlation between the infringer’s profits and the unlawful conduct,
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`once that correlation is shown, the burden to quantify any deductions is on the infringer. And here,
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`given the evidence of actual confusion alone, there can be no question that such a correlation has
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`OPPOSITION TO MOTION TO EXCLUDE EXPERT STEPHEN BECKER – Page 2
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`been established. TravelPass’s Motion does not raise any dispute regarding Dr. Becker’s
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`calculation of its sales or otherwise challenge his analysis of disgorgement.
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`Regarding corrective advertising, TravelPass argues that Dr. Becker is not an advertising
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`expert. However, Defendants are presenting Dr. Becker as an expert on damages—not advertising.
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`There is no dispute that Dr. Becker is a well-qualified damages expert, and he may rely on the
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`evidence and testimony of other witnesses regarding any facts underlying his analysis of the
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`amount of money Defendants are seeking for corrective advertising. TravelPass also argues that
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`Dr. Becker did not identify a compensable loss justifying corrective advertising or a method to
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`determine the cost of corrective advertising. TravelPass is wrong on both counts. The record
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`contains extensive evidence regarding Defendants’ advertising-related expenditures in response to
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`TravelPass’s unlawful conduct. There are also numerous examples of customers who blame
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`Defendants for their negative experience with TravelPass, further indicating the necessity for
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`corrective advertising. Dr. Becker explains in great detail his method for determining a reasonable
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`and highly conservative estimate of the corrective advertising damages, starting with the amount
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`spent by TravelPass on paid-search advertising through Google. TravelPass’s criticisms of Dr.
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`Becker’s approach at most go to the weight of his testimony.
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`TravelPass’s Motion
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`to exclude Dr. Becker’s expert evidence on Defendants’
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`counterclaims is without merit, the Motion should be denied, and Dr. Becker’s expert evidence
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`should be admitted and presented to the jury.
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`II. LEGAL STANDARD
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`Pursuant to Rule 702 of the Federal Rules of Evidence (“FRE”), “a witness who is qualified
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`as an expert by knowledge, skill, experience, training, or education may testify in the form of an
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`opinion or otherwise if: (a) the expert's scientific, technical, or other specialized knowledge will
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`help the trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is
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`OPPOSITION TO MOTION TO EXCLUDE EXPERT STEPHEN BECKER – Page 3
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`based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods;
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`and (d) the expert has reliably applied the principles and methods to the facts of the case.” See
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`FED. R. EVID. 702; see also Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 589 (1993).
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`It is well established in this Court that excluding expert testimony is the exception and not
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`the rule. McCord v. Prudential Ins. Co. of Am., 2011 WL 6176473, at *4 (E.D. Tex. Aug. 17,
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`2011). “[A]s a general rule, questions relating to the bases and sources of an expert’s opinions
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`affect the weight to be assigned that opinion rather than its admissibility and should be left for the
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`jury’s consideration.” Primrose Operating Co. v. Nat’l Am. Ins. Co., 382 F.3d 546, 562 (5th Cir.
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`2004) (citation omitted). The Court in Daubert “makes clear, ... the trial court's role as gatekeeper
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`is not intended to serve as a replacement for the adversary system: ‘Vigorous cross-examination,
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`presentation of contrary evidence, and careful instruction on the burden of proof are the traditional
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`and appropriate means of attacking shaky but admissible evidence.’” Id.
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`Determinations regarding the credibility of expert witnesses and the weight to be afforded
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`to expert testimony remain within the province of the trier of fact. See, e.g., United States v.
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`Jackson, 19 F.3d 1003, 1007 (5th Cir. 1994); Worldventures Holdings, LLC v. Ariix, LLC, 2019
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`WL 6037989 (E.D. Tex. Jul. 31, 2019) (denying defendant’s motion to strike expert’s calculation
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`of profits, holding the expert’s “testimony is both relevant and probative of the issues in the
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`case…[if] Defendants wish to challenge the credibility and weight of [the expert’s] opinions, such
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`matters are more properly reserved for cross-examination.”); Firebirds Int'l, Inc. v. Firebird Rest.
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`Grp., LLC, 2019 WL 3957846 (N.D. Tex. Aug. 21, 2019) (denying defendant’s motion to strike,
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`opining that any “methodological shortcomings of [the expert’s] survey bear on its evidentiary
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`weight, not its admissibility.”); Justin Brands, Inc. v. Lucchese, Inc., 2005 WL 8159158 (N.D.
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`Tex. Aug. 29, 2005) (denying defendant’s motion to exclude, finding defendant’s “challenge
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`OPPOSITION TO MOTION TO EXCLUDE EXPERT STEPHEN BECKER – Page 4
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`relates to the weight to be given [the expert’s] opinions rather than to the admissibility of those
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`opinions…”).
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`III. THERE IS NO BASIS TO STRIKE DR. BECKER’S OPINIONS AND REPORT
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`TravelPass’s Motion to exclude Dr. Becker’s expert evidence should be denied because (1)
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`Dr. Becker’s testimony will assist the jury, (2) Dr. Becker is not required to determine whether
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`some portion of TravelPass’s profits is not attributable to its wrongful conduct, and (3) Dr.
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`Becker’s opinion regarding corrective advertising damages is reliable and well-grounded.
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`A.
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`Dr. Becker’s Testimony is Reliable, Relevant, and Helpful to the Trier of Fact.
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`Dr. Becker is an experienced and well-regarded financial and economic damages expert
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`and is highly qualified to provide his opinion regarding Defendants’ damages, which TravelPass
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`does not dispute. Dr. Becker’s testimony is also relevant. Here, Defendants seek a disgorgement
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`of profits and corrective advertising to offset the harm Defendants suffered due to TravelPass’s
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`trademark infringement, unfair competition, false advertising, trademark dilution, and other
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`deceptive acts. In accordance with the Lanham Act, Dr. Becker meticulously determined
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`TravelPass’s sales attributable to the conduct at issue. 15 U.S.C. § 1117(a) (“[i]n assessing profits,
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`the plaintiff shall be required to prove defendant's sales only; defendant must prove all elements
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`of cost or deduction claimed.”); Neutron Depot, LLC v. Bankrate, Inc., 2018 WL 3014435, at *4
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`(W.D. Tex. May 1, 2018), aff'd sub nom. Neutron Depot, L.L.C. v. Bankrate, Inc., 798 F. App'x
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`803 (5th Cir. 2020) (“Once the court decides an award of profits is appropriate, the defendant bears
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`the burden of isolating profits attributable to its infringement.”); Clearline Techs. Ltd. v. Cooper
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`B-Line, Inc., 948 F. Supp. 2d 691, 707 (S.D. Tex. 2013) (finding principle that infringer must prove
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`which, if any, sales were not attributable to the wrongful act “was established decades ago by the
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`Supreme Court, and it remains the law of the land.”). Dr. Becker also identified specific harm to
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`Defendants, noting
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` of
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`OPPOSITION TO MOTION TO EXCLUDE EXPERT STEPHEN BECKER – Page 5
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`Defendants. Ex. A, Becker, Rep., p. 46; see also Dkt. 565-54, Ex. 39 at p. 33, l. 623
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`, p. 119, l. 314
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`.
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`Likewise, Dr. Becker calculated Defendants’ corrective advertising damages resulting from this
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`harm. See, e.g., Ex. A, Becker Rep., S. 5.2. Dr. Becker’s opinions are therefore highly relevant and
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`helpful to the fact-finder in this case.
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`Moreover, Dr. Becker’s opinion and testimony are reliable. Dr. Becker followed standard
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`financial analysis and accounting principles to carefully measure the revenue directly attributed to
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`TravelPass’s bookings for the hotel brands at issue and TravelPass’s advertising expenditures to
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`secure these bookings. He explains his methodology in detail in his reports. For example, Dr.
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`Becker relied on the actual sales revenue data, commission agreements and reports and additional
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`financial data produced in this case. See e.g., Ex. A, Becker Rep., S. 1.3, 4, 5, 6, Appx. C; Ex. B,
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`Becker First Supp. Rep., S. 1.2, 2, Appx. C-Supp.; Ex. C, Becker Second Supp. Rep., S. 1.2, 2,
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`Appx. C-Supp.; Ex. D, Becker Third Supp. Rep., S. 1.2, 3, Appx. C-Supp.; Ex. E, Becker Fourth
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`Supp. Rep., Paras. 4, 21, 26, Appx. C-Supp. The accounting and financial analysis in this case was
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`complex and required extensive review and analysis of substantial datasets. Further, with the
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`receipt of additional materials from TravelPass, Dr. Becker routinely supplemented his report to
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`provide the most precise damages possible. Similarly, Dr. Becker employed a conservative
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`measure of TravelPass’ advertising expenditures – only measuring the subset of TravelPass’s most
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`effective advertising, namely the ads that secured TravelPass a booking of one of Defendants’
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`rooms. See Ex. A, Becker Rep., p. 48.
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`TravelPass does not dispute Dr. Becker’s calculations of profits for disgorgement or of the
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`costs of Defendants’ corrective advertising. Instead, TravelPass argues that Dr. Becker should have
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`OPPOSITION TO MOTION TO EXCLUDE EXPERT STEPHEN BECKER – Page 6
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`excluded any portion of TravelPass’s profits not attributable to TravelPass’s wrongful conduct.
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`TravelPass also challenges Dr. Becker’s opinion on corrective advertising, arguing that Dr. Becker
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`is not an advertising expert, that Defendants did not suffer a compensable loss, and that Dr. Becker
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`does not provide a methodology for estimating corrective advertising costs. As explained below,
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`these criticisms are not valid and, at most, are relevant to the weight afforded Dr. Becker’s
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`testimony – not its admissibility. That alone warrants denial of their Daubert motion.
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`B.
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`TravelPass Is Wrong On The Parties’ Burdens Regarding Disgorgement.
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`TravelPass’s argument that Defendants must prove how much of TravelPass’s profits are
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`due to its infringement ignores over a century of Supreme Court case law to the contrary and the
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`plain language of the Lanham Act. In Hamilton-Brown Shoe Co. v. Wolf Bros. & Co., 240 U.S.
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`251 (1916), the Supreme Court held that once a plaintiff establishes the “sales made under a
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`simulated trademark,” it did not have to apportion out “the profits attributable to defendant's use
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`of the offending mark and those attributable to the intrinsic merit of defendant's shoes.” Id. at 260-
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`261. The Supreme Court later reaffirmed that trademark owners do not bear the burden of parsing
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`out any profits not due to the infringement in Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge
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`Co., 316 U.S. 203 (1942):
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`If it can be shown that the infringement had no relation to profits made by the defendant,
`that some purchasers bought goods bearing the infringing mark because of the defendant's
`recommendation or his reputation or for any reason other than a response to the diffused
`appeal of the plaintiff's symbol, the burden of showing this is upon the poacher…The
`burden is the infringer's to prove that his infringement had no cash value in sales made
`by him. If he does not do so, the profits made on sales of goods bearing the infringing
`mark properly belong to the owner of the mark. There may well be a windfall to the trade-
`mark owner where it is impossible to isolate the profits which are attributable to the use of
`the infringing mark. But to hold otherwise would give the windfall to the wrongdoer. In
`the absence of his proving the contrary, it promotes honesty and comports with experience
`to assume that the wrongdoer who makes profits from the sales of goods bearing a mark
`belonging to another was enabled to do so because he was drawing upon the good will
`generated by that mark.
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`OPPOSITION TO MOTION TO EXCLUDE EXPERT STEPHEN BECKER – Page 7
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`Mishawaka Rubber, 316 U.S. at 206–07 (citations omitted, emphasis added). These same
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`principles remain true today. The court in WMS Gaming, Inc. v. WPC Prods. Ltd., 542 F.3d 601,
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`603 (7th Cir. 2008), reached the same conclusion when it considered the “unapologetic
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`infringement” of appellant’s trademarks and opined it is “consonant with reason and justice that
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`the owner of the trademark should have the whole profit than that he should be deprived of any
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`part of it by the fraudulent act of the defendant.” Id. at 608 (quotations omitted); see also Gucci
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`Am. v. Bank of China, 768 F.3d 122, 131 (2d Cir. 2014); Maltina Corp. v. Cawy Bottling Co., 613
`
`F.2d 582, 586 (5th Cir. 1980). This principle is further codified in the plain language of the Lanham
`
`Act which provides that “In assessing profits the plaintiff shall be required to prove defendant’s
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`sales only; defendant must prove all elements of cost or deduction claimed.” See 15 U.S.C.
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`§ 1117(a).
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`Here, nearly all of TravelPass’s sales of reservations to Defendants’ hotels have been
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`driven by branded key word searches. That means, that nearly all of those reservations have been
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`made after customers interacted with TravelPass’s sponsored ads, websites and call centers. And
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`each of these ads, website and call centers have engaged in activity that has misled customers into
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`believing that TravelPass was the hotel itself. While TravelPass disputes that such activity is
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`misleading, they have not challenged that the ads, websites and call centers engaged in the activity
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`Defendants have alleged.
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`TravelPass attempts to place the burden on Dr. Becker “to consider the other factors that
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`would have driven TravelPass’ bookings absent the alleged infringement and false advertising.”
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`Mot. at 11. Such burden shifting flies in the face of established precedent. This is not Dr. Becker’s
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`– or Defendants’ – burden to bear; but rather, TravelPass’s burden to prove that any portion of its
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`sales was not due to its trademark infringement, false advertising, or other deceptive acts. The law
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`OPPOSITION TO MOTION TO EXCLUDE EXPERT STEPHEN BECKER – Page 8
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`is clear. A trademark owner is only required to offer evidence of infringing sales – not attribution.
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`See Hamilton-Brown Shoe Co. v. Wolf Bros. & Co., 240 U.S. 251 (1916); Mishawaka Rubber &
`
`Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203 (1942); WMS Gaming Inc. v. WPC Prods. Ltd.,
`
`542 F.3d 601, 609 (7th Cir. 2008); Three Boys Music Corp. v. Bolton, 212 F.3d 477 (9th Cir.
`
`2000); Maltina Corp. v. Cawy Bottling Co., 613 F.2d 582 (5th Cir. 1980). TravelPass’s attribution
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`argument fails as a matter of law and provides no basis to exclude Dr. Becker’s expert opinions.
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`Further, TravelPass’s reliance on Texas Pig Stands, Inc. v. Hard Rock Cafe Int’l, Inc., 966
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`F.2d 956 (5th Cir. 1992) (Pig Stands II), Logan v. Burgers Ozark Country Cured Hams Inc., 263
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`F.3d 447 (5th Cir. 2001) and Illinois Tool Works, Inc. v. Rust-Oleum Corp., 955 F.3d 512 (5th Cir.
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`2020), is at best misplaced and at worst misleading. Motion at 7. In Pig Stands II, the Court
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`declined to disgorge profits “based solely on the lack of evidence showing that any of Defendant's
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`profits were the result of its infringement of the mark.” See Pig Stands II at 957 (emphasis added).
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`Similarly, in Logan, the Court held that where a plaintiff “failed to present evidence that the
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`defendant benefitted from the alleged false advertising” they will not be permitted to recover
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`defendants’ profits. See Logan at 457. And in Illinois Tool Works, the Court, relying on Logan,
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`declined to award profits because of the absence of any evidence demonstrating some relationship
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`between the accused activity and the profits generated noting that there was no evidence “that even
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`a single consumer purchased RainBrella because of the false advertising.” See Illinois Tool Works
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`at 515. Unlike Pig Stands II, Logan and Illinois Tool Works, there is no absence of evidence
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`demonstrating that TravelPass was able to sell reservations by misleading consumers. That
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`TravelPass benefitted from the accused activity is evidenced by the mountains of actual confusion
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`evidence demonstrating that customers booked reservations with TravelPass because they thought
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`that they were the hotels. See, e.g., Dkt 562-1 Ex. 73 at 1
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`OPPOSITION TO MOTION TO EXCLUDE EXPERT STEPHEN BECKER – Page 9
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`Case 5:18-cv-00153-RWS-CMC Document 594 Filed 07/16/21 Page 14 of 24 PageID #:
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`529-4 at 6
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` Dkt. 565-54, Ex. 39 at l. 126
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`; Dkt.
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`. This evidence alone is more than enough to meet the requirement addressed in
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`TravelPass’s cited cases. See, e.g., Boltex Mfg. Co., L.P. v. Ulma Piping USA Corp., 2020 WL
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`3525485, at *1, n. 1 (S.D. Tex. Apr. 21, 2020) (finding the profits attributable to plaintiff’s Lanham
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`Act award were “supported by ample evidence” attributable to defendant’s infringement and “in
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`sharp contrast to the plaintiff in Illinois Tool Works.”). As in Boltex, here, nothing more is
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`required.
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`a. Dr. Becker has no obligation to apportion the disgorgement of profit
`award among the multiple claims asserted under the Lanham Act.
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`Disgorgement of profits applies to all claims under the Lanham Act. See Boltex Mfg. Co.,
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`L.P. v. Ulma Piping USA Corp., 2019 WL 9143478, at *4 (S.D. Tex. Aug. 23, 2019) (stating
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`“Section 35 of the Lanham Act allows monetary recovery for certain Lanham Act violations in the
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`form of actual damages, disgorgement, and costs.”). Defendants’ disgorgement of profits claim
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`applies to each of their Lanham Act claims – trademark infringement, unfair competition, false
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`advertising, and dilution. It is axiomatic that Dr. Becker is not required “to determine which of
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`TravelPass’ advertisements fell under Defendants’ false advertising claims and which did not.”
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`Mot. at 10.
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`The factual record establishes that TravelPass designed their OTA paid search marketing
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`strategy, website search results, and landing pages for all hotels – including Defendants’ sub-brand
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`hotels – to make them appear as the actual hotels. TravelPass and its affiliates then marketed
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`themselves as the hotels in order for consumers to think they were booking these hotels directly.
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`OPPOSITION TO MOTION TO EXCLUDE EXPERT STEPHEN BECKER – Page 10
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`Case 5:18-cv-00153-RWS-CMC Document 594 Filed 07/16/21 Page 15 of 24 PageID #:
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`As a result of TravelPass’s intentionally designed “hotel-branded” OTA experience, Defendants’
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`allege confusion resulting from trademark infringement occurred with every booking made
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`through TravelPass for each of Defendants’ sub-brand hotels, as well as deception. There may
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`have been bookings for hotel sub-brands that resulted from multiple violations of the Lanham Act,
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`but each resulted from at least one such violation based upon TravelPass’s consistent scheme and
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`paid search marketing design.
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`Any inquiry relating to the attribution of TravelPass’s bad acts to Defendants’ harm is
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`qualitative and does not require a precise calculation of the percentage of TravelPass’s sales
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`resulting from its individual violations. Dr. Becker certainly has no such obligation and need only
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`analyze the booking revenue received by TravelPass for Defendants’ sub-brands at issue. Dr.
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`Becker does this. In his damages model, Dr. Becker included the profit associated with every sub-
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`brand booking made through TravelPass during the relevant period. There was therefore no doubt
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`Dr. Becker’s analysis was properly limited to profits attributable to TravelPass’s bad acts and no
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`need to separately identify the profit associated with each false statement or additional deceptive
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`element for such bookings – each of TravelPass’s violations funneled consumers to the same place.
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`See Static Control Components, Inc. v. Lexmark Intern., Inc., 2007 WL 7083655 at *6 (E.D. Ky.
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`2007) (“A damages model would, of course, be necessarily consistent with liability, or necessarily
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`assume liability.”).
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`TravelPass attempts to liken the current facts to Elorac, Inc. v. Sanofi-Aventis Canada,
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`Inc., 2017 WL 3592775, *1 (N.D. Ill. Aug. 21, 2017), where the Northern District of Illinois
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`excluded an expert report because he did not establish that damages were reasonably certain to
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`have flowed from the alleged wrongful conduct. Elorac, however, only further highlights the
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`reliable nature of Dr. Becker’s report. Unlike the Elorac expert, Dr. Becker’s report is founded on
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`