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JOHN MIDDLETON, INC. v. SWISHER INTERNATIONAL
April 8, 2004.
JOHN MIDDLETON, INC. and JMTM, INC. Plaintiffs,
SWISHER INTERNATIONAL, INC., Defendant
The opinion of the court was delivered by: LOUIS POLLAK, Senior District Judge
This is an action for trademark infringement and unfair competition
under the Lanham Act, 15 U.S.C. § 1051, et seq., and the
common law. Plaintiffs John Middleton, Inc. and JMTM, Inc. ("Middleton")
are charging that defendant Swisher International, Inc.'s ("Swisher")
BLACKSTONE cigarillo has infringed plaintiff's BLACK & MILD trademark
and its alleged trade dress in a small brown cigarillo.
On February 11, 2004 defendant filed this motion, asking this court,
pursuant to Fed.R.Civ.P. 42(b), to bifurcate the issues of liability
and damages. For the reasons stated below, defendant's motion is denied.
Federal Rule of Civil Procedure 42(b) provides in relevant part:
The court, in furtherance of convenience or to
avoid prejudice, or when separate trials will be
conducive to expedition and economy, may order a
separate trial . . . of any separate issue . . .
or issues, always preserving inviolate the rights
of trial by jury as declared by the Seventh
Amendment to the Constitution or as given by a
statute of the United States. The decision to bifurcate is a "matter to be decided on a case-by-case
basis and must be subject to an informed discretion by the trial judge in
each instance." Lis v. Robert Packer Hosp., 579 F.2d 819
(3d Cir. 1978). The party seeking bifurcation has the burden of
demonstrating that judicial economy would be promoted and that no party
would be prejudiced by separate trials. Spectra-Physics Lasers, Inc.
v. Uniphase Corp., 144 F.R.D. 99, 101 (N.D. Cal. 1992).
Defendant first argues that its motion should be granted because
bifurcation would streamline the proceedings and conserve resources
because the documents and witnesses needed to calculate damages will not
be the same as those needed to prove infringement. Furthermore, defendant
asserts, "if the case has been bifurcated and Swisher does prevail on
liability, both the parties and the Court will have been spared the
burden and expense of damages discovery and trial." Defendant also
submits that neither party will be prejudiced by the proposed bifurcation
because "the issues and proof involved in the liability and damages
phases have very limited overlap."
Plaintiffs contend that bifurcation would not be appropriate because
there would, in fact, be substantial overlap in the liability and damages
evidence and witnesses upon which the parties will rely. Furthermore,
plaintiffs argue against bifurcation because "[d]iscovery has
demonstrated that this case lacks complexity." Lastly, plaintiffs contend
that "bifurcation could only possibly benefit Swisher to the detriment
and expense of John Middleton" because bifurcation would create twice the
amount of work for the parties and the court because (1) the parties
would have to engage in two rounds of discovery one for liability
and one for damages; (2) the parties would have to expend the time and
expense to prepare for two jury trials and attend twice the number of court conferences; and (3) the "time
needed to adjudicate John Middleton's rights would be significantly
extended," causing prejudice and inconvenience.
The burden falls on defendant to demonstrate that bifurcation is the
proper course for this court to follow, and I conclude that defendant has
failed to meet this burden. Hence, it is hereby ORDERED that
defendant's Motion to Bifurcate the Issues of Liability and Damages (#14)
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