IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 10-50724

HONESTECH, INCORPORATED,

Plaintiff - Appellant

v.

SONIC SOLUTIONS,

Defendant - Appellee

Appeal from the United States District Court

for the Western District of Texas

USDC No. 1:08-CV-922

Before JOLLY, HAYNES, and GRAVES, Circuit Judges.

E. GRADY JOLLY, Circuit Judge:

*

In 2005, Honestech Incorporated began selling a product in the United

States -- VHS TO DVD (“VTD”) -- that allows users to convert media from analog

format to digital format. Although Honestech never formally applied for

trademark protection, it attached a trademark insignia to its VTD label in April

United States Court of Appeals

Fifth Circuit

F I L E D

June 23, 2011

Lyle W. Cayce

Clerk

 Pursuant to 5TH CIR. R. 47.5, the court has determined that this opinion should not *

be published and is not precedent except under the limited circumstances set forth in 5TH CIR.

R. 47.5.4.

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2007. In July 2008, Sonic Solutions began marketing a competing product,

which it labeled “Easy VHS TO DVD” (“EVTD”).

On December 23, 2008, Honestech filed a trademark infringement suit

against Sonic. Sonic hired Dr. Bruce Isaacson to conduct a survey evaluating

whether the VTD mark had acquired secondary meaning; his survey concluded

that the mark had no secondary meaning. On November 2, 2009, Honestech

moved to strike Isaacson’s survey, arguing that it was methodologically flawed.

The district court denied Honestech’s motion.

At trial, Honestech presented circumstantial evidence of secondary

meaning, and Sonic presented Dr. Isaacson’s testimony. The jury found in

Sonic’s favor. Honestech asked the district court to grant a new trial, arguing

that the improper admission of Isaacson’s survey had affected its substantial

rights. The district court denied the motion.

Honestech appeals; its sole argument is that the district court abused its

discretion in admitting Isaacson’s survey. Indeed, at oral argument it conceded

that we should affirm if we determine that the survey was properly admitted.

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We hold that the survey was admissible and we therefore AFFIRM.

I.

This court reviews a trial court's decision regarding the admissibility of

expert testimony under an abuse of discretion standard, and it will reverse the

district court only if “the ruling is manifestly erroneous.” Guy v. Crown Equip.

Corp., 394 F.3d 320, 324-25 (5th Cir. 2004) (internal citations omitted).

“Manifest error is one that is plain and indisputable, and that amounts to a

Although Honestech notes that at least one circuit has held that intentional copying, 1

standing alone, “establishes a prima facie case of secondary meaning[,]” see Larsen v. Terk

Techs. Corp., 151 F.3d 140, 148-49 (4th Cir. 1998), it conceded at oral argument that its appeal

hinges on whether Isaacson’s survey was admissible. Stated differently, Honestech does not

specifically ask us to reverse the jury verdict based solely on Sonic’s intent, nor did it ask the

district court to instruct the jury that intent is dispositive. 

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complete disregard of the controlling law.” Id. (internal marks and citation

omitted). “If it is found that the district court abused its discretion . . . this court

must then consider whether the error was harmless, affirming the judgment

unless the ruling affected a substantial right of the complaining party.”

Primrose Operating Co. v. Nat'l Am. Ins. Co., 382 F.3d 546, 561 (5th Cir. 2004).

In urging us to hold that the district court abused its discretion in

admitting the survey, Honestech’s arguments, broadly stated, are two.

Honestech first argues that Isaacson’s methodology was flawed. It

contends that he failed to conduct appropriate market research, and that as a

result his survey universe was over inclusive. Honestech argues that the

appropriate universe consisted solely of mature males who had previously

purchased analog to digital products or who, in response to questioning,

indicated that they were interested in purchasing one. It further contends -- but

only in the factual statement and argument summary of its brief -- that

Isaacson’s results were unreliable because his questions did not control for the

fact that Sonic had released its EVTD line.

Honestech’s second argument is that the district court abdicated its

gatekeeping function. Honestech complains that the district court seemed to say

that it routinely ignores the substance of Daubert motions, and it contends that

the court perpetuated this deficient practice here.

A.

“In assessing the validity of a survey, we look to two factors: first, the

manner of conducting the survey, including especially the adequacy of the

universe; and second, the way in which participants are questioned.” Scott

Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477, 487 (5th Cir. 2004) (internal

citation omitted). “In an infringement action, the appropriate universe should

include a fair sampling of those purchasers most likely to partake of the alleged

infringer's goods or services.” Id. at 487-88 (internal quotation marks and

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citation omitted). This standard does not require the surveyor to solicit the

responses of past purchasers of the product; indeed, focusing too closely on such

individuals renders the survey unreliable. See Sno-Wizard Mfg., Inc. v.

Eisemann Prods. Co., 791 F.2d 423, 427 (5th Cir. 1986). Finally, the general rule

is that “methodological flaws in a survey bear on the weight the survey should

receive, not the survey’s admissibility.” Scott Fetzer Co., 381 F.3d at 488.

Honestech’s primary point of attack on the survey is the inadequacy of

Isaacson’s universe. It argues that Isaacson failed to identify the relevant

consumers: individuals who “ha[d] purchased or intend[ed] to purchase [from]

the product category at issue within a contextually appropriate time[ ]frame.”

2

Honestech further argues that numerous district courts have deemed it

insufficient for a surveyor to identify individuals “who meet certain criteria that

make them possible purchasers” without determining whether they “have an

interest or willingness to purchase the products at issue[.]”

Honestech also criticizes Isaacson for his failure to control for the release

of Sonic’s competing EVTD line by asking whether the participants had

associated the VTD tag with only one company prior to Sonic's launch of its

EVTD line. Notably, Honestech cites no authority that would have required the

district court to exclude the survey on this basis.

3

Honestech insists thatfocusing on past purchaserswould not have skewed the results;

2

in a related vein, it contends that there is no evidence suggesting that consumers will

purchase an analog-to-digital converter only once. To understand this argument, we need to

briefly revisit the district court's order denying Honestech's motion. The district court noted

that “the survey concerned a product likely to be purchased only once in a lifetime, not a

product (like pizza, groceries, or car insurance) thatis likely to be purchased over a consumer's

lifetime.” The district court further noted that when this one-time-purchase type of item is

at issue, “surveying those who had already bought the product skew[s] the results, . . . .”

Indeed, it is likely that this argument is inadequately briefed, as it is presented only 3

in Honestech's factual statement and argument summary -- not in its argument section -- and

Honestech does not cite any supporting authority. “[T]he appellant's argument [must] contain

the reasons he deserves the requested relief with citation to the authorities, statutes and parts

of the record relied on.” Yohey v. Collins, 985 F.2d 222, 225 (5th Cir. 1993) (emphasis added). 

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In responding to Honestech’s attack on the survey, Sonic counters that the

survey was not flawed. It points out that Isaacson limited the universe based

on a host of variables, including, inter alia, whether the individual “bought or

participated in selecting computers and/or audio and video equipment for their

household; “owned . . . at least one device capable of playing analog content;”

and “had audio or video material recorded in an analog format . . . .” Sonic

further argues that the district court properly determined that past purchasers

would at best be able to “identify the product that they had already used and

purchased.” It urges that this rationale is especially compelling where, as here,

the product is one that a consumer will likely purchase only once, and it argues

that, for the same reason, it would be unreasonably difficult to locate individuals

who had a fixed intent to buy the product. Finally, Sonic reiterates the general

rule that “methodological flaws in a survey bear on the weight the survey should

receive, not the survey’s admissibility.” Scott Fetzer Co., 381 F.3d at 488.

We must agree with Sonic. Isaacson’s screening questions reflect a

reasonable attempt to identify individuals who would be interested in buying the

software. At the very least, these questions eliminated individuals that would

be unlikely to have any need for the product. Moreover, the district court used

common sense in observing that this product is unlike food in that consumers

are unlikely to purchase it time and time again. In any event, the district court

could reasonably conclude that, under our precedent, surveying consumers who

had already purchased the product would skew the results. Sno-Wizard Mfg.,

Inc., 791 F.2d at 427. Similarly, although Honestech finds fault with Isaacson’s

failure to pinpoint individuals who intended to buy the product in the future,

requiring such exactitude would likely make it impossible to conduct a survey

“[O]nly the issues presented and argued in the brief are addressed.” Id. (emphasis added). 

We will nevertheless address this argument, because, as we explain, it does not change the

outcome of this case. 

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in this case. As stated by the district court: “Without a pattern of . . . purchases,

it is difficult to predict future purchases.”

In any event, a survey need not be perfect to be admitted into evidence.

This court has never required a surveyor to identify with mathematical precision

the individuals who have a fixed intent to buy the relevant product; instead, it

had merely required that the survey universe reflect a “fair sampling of those

purchasers most likely to partake of the alleged infringer's goods or services."

Id. at 487-88 (emphasis added). Isaacson’s survey satisfies this threshold.

Stated differently, methodological errors generally speak to “weight . . . not

. . . admissibility.” Scott Fetzer Co., 381 F.3d at 488. This rule speaks most

directly to Honestech’s argument that Isaacson failed properly to account for the

presence of two competing products in the marketplace. Although Isaacson’s

survey might have been more reliable if he had subjected potential participants

to the questioning that Honestech prefers, his failure to do so does not render the

survey unreliable so as to be excluded from the jury’s consideration. Finally, we

note that Honestech was permitted to attempt to discredit Dr. Isaacson and his

survey through aggressive cross-examination.

B.

As earlier noted, Honestech contends that the district court failed to follow

proper procedure in allowing Isaacson to testify. It correctly notes that district

courts are given gate-keeping responsibilities with regard to expert testimony.

See Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 589 (1993). Honestech

argues that the district court admitted that it had abdicated this gatekeeping

function when it said that it doesn’t “have time, with the docket to go through

and decide, in the abstract . . . all the Daubert motions that the Supreme Court

has blessed us with because they did not try lawsuits.”

Sonic counters with a different interpretation of the judge’s comments:

that the district court was merely discouraging Sonic’s attorney from introducing

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into evidence the order permitting Isaacson to testify, and that it therefore

emphasized that its order did not endorse the merits of Isaacson’s survey. Sonic

further urges that the order itself demonstrates the motion was given full and

proper consideration because it addresses all of Honestech’s admissibility

arguments.

On its face, the district court’s statement raises some concern. The court

seemed to imply that it routinely allows experts to testify without evaluating

whether their testimony will be reliable; this, it cannot do. Daubert, 509 U.S. at

598. On the other hand, when viewed in context, the court’s statement seems

to reflect only a rhetorical flourish. The record shows that Kim Brightwell, who

was one of Sonic’s trial attorneys, stated that he intended to introduce for the

jury’s consideration the district court’s order admitting Isaacson’s survey. In

response, the district court cautioned Mr. Brightwell that his proposal may not

be so bright: “I don’t think I would do that because then, I would instruct the

jury that all I said was he would be able to present testimony to the jury. I did

not find as a matter of law based on the briefs that he was unqualified.” Only

after this back and forth did the court make the complained-of statement. It

thus seems that the court was using rhetoric to emphasize to Mr. Brightwell that

it would not allow its order to be portrayed as a merits endorsement of Isaacson’s

survey. The court’s statement does not require us to reverse the jury verdict,

because the survey was admissible, and the court’s order denying the motion to

exclude -- which carefully discusses the relevant facts and precedent in detail --

demonstrates that the motion was given full and proper consideration.

Because we have determined that the district court did not abuse its

discretion by admitting Isaacson’s survey, we need not consider whether the

admission of the evidence affected Honestech’s substantial rights. We similarly

need not address Honestech’s argument that the district court abused its

discretion in denying its motion for a new trial, as Honestech presented one --

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and only one -- argument to the district court in urging it to grant a new trial:

that the court had erred in admitting Isaacson’s survey.

4

II.

We tally the points of this opinion: Honestech, a company that sells

software that converts media from analog format to digital format, sued one of

its competitors, Sonic Solutions, alleging that Sonic had infringed Honestech’s

trademark. More specifically, Honestech argued that the “VHS TO DVD” label

attached to its product had acquired secondary meaning and that Sonic had

created confusion among consumers by marking its similar product “Easy VHS

TO DVD.”

Sonic responded with a survey conducted by Dr. Bruce Isaacson; the

survey results suggested that Honestech had failed to establish secondary

meaning. Honestech asked the district court to exclude Isaacson’s survey,

arguing that it was unreliable because of its flawed methodology. The district

court refused to exclude the report, and the case proceeded to trial. At trial,

Honestech presented circumstantial evidence of secondary meaning. Sonic

called Dr. Isaacson as a witness, who testified to the results of his survey.

Thus, the jury heard both sides of the arguments regarding secondary

meaning. It then found that Honestech’s mark was merely descriptive and that

Honestech had failed to establish secondary meaning, returning a verdict in

Sonic’s favor. Honestech sought a new trial, arguing that Isaacson’s unreliable

survey had tainted the jury. The district court refused to grant a new trial; it

concluded that the survey was properly admitted, and further concluded that

any error in its admission was harmless.

 Honestech says in its appellate brief that Isaacson's trial testimony “only confirmed 4

Honestech's original reasons for opposing [the survey's] admission[,]” and that “the Court's

refusal to correct this error following trial, thus, constituted an abuse of discretion for

precisely the same reasons.”

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On appeal, Honestech again insists that the survey was improperly

admitted. Sonic insists that the survey was reliable, and notes that this court

has never said that a surveyor must use laser-like precision in crafting a survey

universe.

We have held today that the district court did not abuse its discretion in

admitting Isaacson’s survey. The survey, although not perfect, was sufficiently

reliable to be admitted; in other words, any methodological errors spoke to its

weight, not its admissibility.

We have found no error in the admission of the survey, and the judgment

of the district court is therefore, in all respects,

AFFIRMED.

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