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One Expert or Two?
From the Expert Tips to Find Qualified IP Professionals series
By Weston Anson
When the World Triathlon Corporation brought litigation against a television company for using its Ironman trademark in an unauthorized manner on a television series, they faced bringing a multitude of actions. As a result, the question that their legal counsel faced was whether they needed one IP litigation expert, two, or possibly even three. In interviewing CONSOR Intellectual Asset Management, they laid out the issues they were facing, which included IP customs and practices issues, valuation of the Ironman trademark and logo, calculation of damages to the trademark assets, federal trademark infringement claims, as well as false designation of origin and trademark dilution. In addition, they were looking at common law trademark infringement in Florida. Having interviewed the experts at the firm, and having reviewed redacted versions of our prior work, they reached the conclusion that one firm of experts was clearly the more time-effective, cost-effective, and intellectually superior way to approach the case.
A common question that arises during expert selection is whether to split the expert duties amongst two or more experts or expert groups. It has been our universal experience that in those cases where the litigator has thought that two experts were better than one, that litigator has most often proved himself or herself wrong during the course of the litigation. If one is looking for true expert advice on intellectual property valuation and damages, the expert hired to cover the valuation and damages issues also should be able to cover all the other IP issues – assuming they are a true IP expert. What most often happens when the duties are split between a so-called damages expert and a so-called IP expert is that the sum of the two is less than the whole (in a mixed metaphor).
For example, we recently participated in a trademark and copyright infringement lawsuit case in the state of Washington. The so-called damages expert misunderstood the case so greatly that it caused substantial harm to the client, and, more importantly, partially undermined our report on the issues of trademark usage, licensing, and customs and practices. Clearly the client was worse off for having two witnesses; and even the litigators were gracious enough to admit this at the conclusion of the deposition phase of the process. Where possible, then, a single witness covering the IP and damages issues is always a preferable to using two or more witnesses.
