*1 This matter comes before the Court on Plaintiff and Counterclaim Defendant Moke America LLC's (“Plaintiff”) five Motions in Limine (ECF Nos. 175, 177, 178, 181, 183). Defendants and Counterclaim Plaintiffs American Custom Golf Cars, Inc. (“ACG”), Moke USA, LLC (“Moke USA”), and Moke International Ltd. (“Moke International”) (collectively, “Defendants”) responded to Plaintiff's Motions (ECF Nos. 193, 194, 195, 196, 197), and Plaintiff replied (ECF Nos. 207, 208, 209, 210, 211). Fully briefed, Plaintiff's Motions now stand ripe for review.

The parties, all dealers in low-speed land vehicles, dispute which of them rightfully asserts ownership of the MOKE trademark. Plaintiff claims that it owns the MOKE trademark by virtue of a 2016 assignment from non-party Mini Mania, Inc. Defendants maintain that Moke International owns the MOKE trademark by virtue of ACG's 2015 trademark application with the Patent and Trademark Office (the “PTO”), the rights to which were ultimately assigned to Moke International via Moke USA.

Plaintiff initiated the instant suit after the PTO's Trademark Trial and Appeal Board (the “TTAB”) dismissed Plaintiff's opposition to ACG's trademark application. In its Amended Complaint (ECF No. 20), Plaintiff appeals the TTAB's decision and asserts a Lanham Act claim against Defendants for trademark infringement. In their Third Amended Counterclaims (ECF No. 146), Defendants assert their own claim for trademark infringement and seek affirmation of the TTAB's decision. Defendants also assert a Lanham Act claim for unfair competition and false designation of origin.

Both Plaintiff and Defendants initially asserted additional claims. On January 5, 2023, the parties filed a Joint Stipulation voluntarily dismissing these additional claims. (ECF No. 238.) In light of the parties' Joint Stipulation, the Court ordered the parties to submit briefs addressing which, if any, of their remaining claims entitled them to a jury trial under the Seventh Amendment. (ECF No. 240.) On January 9, 2023, the parties submitted their respective briefs (ECF Nos. 241, 242), agreeing that neither party's remaining claims entitled them to a jury trial. Based on its own assessment of the relevant caselaw, the Court agreed. (ECF No. 243.) A bench trial is scheduled to commence on January 27, 2023.

A. Standard of Review

“The purpose of a motion in limine is to allow a court to rule on evidentiary issues in advance of trial in order to avoid delay, ensure an even-handed and expeditious trial, and focus the issues the [factfinder] will consider.” United States v. Verges, 2014 WL 559573, at *2 (E.D. Va. Feb. 12, 2014). Because “[q]uestions of trial management are quintessentially the province of the district courts,” United States v. Smith, 452 F.3d 323, 332 (4th Cir. 2006), the district court enjoys “broad discretion” in granting or denying motions in limine. Kauffman v. Park Place Hosp. Grp., 468 F. App'x 220, 222 (4th Cir. 2012). Nevertheless, district courts should grant motions in limine “only when the [challenged] evidence is clearly inadmissible on all potential grounds.” Verges, 2014 WL 559573, at *3. And, critically, “the exclusion of evidence is [generally] disfavored in a bench trial.” Teel v. City of Greenville (NC) Police Dep't, 2007 WL 9760002, at *1 (E.D.N.C. Sept. 21, 2007); see also Schultz v. Butcher, 24 F.3d 626, 631-32 (4th Cir. 1994) (noting that while “Rule 403 was designed to keep evidence not germane to any issue outside the purview of the jury's consideration,” the Federal Rules of Evidence's requirements are relaxed in bench trials, where “the district court can hear relevant evidence, weigh its probative value and reject any improper inferences”).

*2 “[T]he district court has broad discretion in determining the appropriate sanction for a party's noncompliance with a discovery request.” Majestic Distilling Co. v. Stanley Stawski Distrib. Co., 2000 WL 227919, at *4 (4th Cir. Feb. 28, 2000). To assess the propriety of discovery sanctions, the district court undertakes a three-step analysis, asking: (1) whether a party violated a discovery order or Federal Rule of Civil Procedure; (2) whether the violation was “harmless” or “substantially justified,” by reference to the factors set forth in Southern States Rack & Fixture, Inc. v. Sherwin-Williams Co., 318 F.3d 592 (4th Cir. 2003);[1] and (3) which sanction proves appropriate for the violation. Vir2us, Inc. v. Invincea, Inc., 235 F. Supp. 3d 766, 772 (E.D. Va. 2017).

In its Motions in Limine, Plaintiff cites to Federal Rules of Civil Procedure 26 and 37. Stated generally, Rule 26 requires that parties disclose relevant information during discovery. Fed. R. Civ. P. 26. Of importance here, Rule 26 specifically requires that a party furnish, without awaiting a discovery request, “a computation of each category of damages claimed” and “the documents or other evidentiary material ... on which each computation is based.” Fed. R. Civ. P. 26(a)(1)(A)(iii). Rule 37 sets forth the sanction for a party's failure to comply with Rule 26. In pertinent part, Rule 37 states that “[i]f a party fails to provide information or identify a witness as required by Rule 26(a) ... the party is not allowed to use that information or witness ... at trial.” Fed. R. Civ. P. 37(c)(1).

B. Analysis

Against the above legal backdrop, the Court now turns to Plaintiff's Motions. The Court takes up the five motions seriatim.

The Court will GRANT Plaintiff's Motion in Limine to Preclude Evidence of Damages. (ECF No. 175.) Plaintiff moves, pursuant to Federal Rules of Civil Procedure 26(a) and 37(c), to preclude Defendants from presenting any damages evidence or otherwise seeking damages on their counterclaims at trial. (Mem. Supp. Mot. Lim. No. 1 (“Mot. 1”) at 7 (ECF No. 176).) Plaintiff asserts that despite “many opportunities to disclose what damages they are seeking in connection with their counterclaims,” Defendants failed to disclose their damages calculation or the nature of the damages they sought at any point during the discovery period. (Id. at 2.) In support of that contention, Plaintiff details Defendants' responses to Plaintiff's document requests, interrogatories and deposition inquiries concerning damages, none of which speak to a calculation of the damages Defendants seek. (Mot. 1 at 2-5.) Plaintiff further notes that Defendants neither designated an expert witness on the subject of damages nor produced a damages-related expert report. (Mot. 1 at 5.)

Plaintiff represents that Defendants did not inform Plaintiff of their damages measure — disgorgement of Plaintiff's profits — until Plaintiff's counsel contacted Defendant's counsel to meet and confer in connection with the instant motion. Only then — nearly a year after the close of discovery — did Defendants disclose that they sought Plaintiff's profits as their damages. Because Defendants failed to timely provide information regarding their damages measure as required by Rule 26(a)(1)(A)(ii), Plaintiff argues, Rule 37(c) instructs that the Court “should prohibit the Defendants from introducing any damages-related evidence or otherwise seeking damages at trial.” (Mot. 1 at 6.)

*3 In opposition, Defendants argue three interrelated points. (Resp. 1 at 1–4.) First, Defendants maintain that they disclosed their theory of damages in their Third Amended Counterclaims, which state that Defendants seek “statutory damages for [Plaintiff]'s intentional and willful violation of 15 U.S.C. § 1125(a) pursuant to 15 U.S.C. § 1117.” (Resp. 1 at 1.) Defendants highlight that § 1117(a) provides that the party that prevails in a trademark infringement action under § 1125(a) “shall be entitled ... to recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action.” (Resp. 1 at 1.) Defendants further point out that they informed Plaintiff's counsel that they “are not seeking damages [as] described in Section 1117(a)(2).”[2] Plaintiff was therefore on notice, Defendants claim, that Defendants sought Plaintiff's profits as their damages measure.

Defendants then argue that they were under no obligation to provide Plaintiff with a detailed damages calculation, as § 1117(a) further provides that “[i]n assessing profits[,] the plaintiff shall be required to prove defendant's sales only; defendant must prove all elements of cost or deduction claimed.” (Resp. 1 at 2.) Because Plaintiff's sales figures “solely derive” from profit and loss statements belonging to Plaintiff, Defendants argue, “any calculation proving Plaintiff's sales would simply be a regurgitation of the very figures that Plaintiff itself ... produced.” (Id.) Defendants contend that disclosure of Plaintiff's sales figures would therefore “be an exercise in futility only.” (Id.)

Third and finally, Defendants argue that because Plaintiff's sales figures originate from Plaintiff, any alleged non-disclosure survives under Rule 37(c) as unprejudicial and harmless. (Id.) “The information necessary to calculate ... damages,” Defendants assert, “comes from Plaintiff itself, and could not have been produced by [Defendants].” (Id.) Defendants suggest that Plaintiff is therefore at “no risk” of “being surprised or ‘sandbagged’ ” by Defendants' untimely damages calculation. (Id.)

Defendants' conduct warrants a discovery sanction, and the Court will therefore GRANT Plaintiff's Motion (ECF No. 175). First, Defendants violated Federal Rule of Civil Procedure 26(a)(1)(A)(ii) by failing to timely disclose the measure of damages that they intend to seek at trial. Throughout discovery, Defendants refused to provide substantive responses to Plaintiff's multiple inquiries — made via document requests, interrogatories and depositions — into their anticipated damages calculation. Defendants' assertion that they “informed Plaintiff's counsel” that they are not seeking actual damages under § 1117(a)(2), thus allowing Plaintiff's counsel to determine by process of elimination that Defendants seek Plaintiff's profits, does little to help Defendants' cause where Defendants waited until the month of trial to provide Plaintiff with that information. Rule 26 imposes an obligation to inform the opposing party, “without awaiting a discovery request,” of the damages a party claims and the calculation underlying that figure. Fed. R. Civ. P. 26(a). Defendants flouted that obligation.

Moreover, Defendants' failure to comply with Rule 26 proves neither justified nor unprejudicial. Defendants' explanation for their failure to timely identify their damages measure boils down to the following proposition: Plaintiff's counsel should have figured it out themselves. Needless to say, that explanation cannot prevail. As Defendants' point out, the statute places the burden on Plaintiff to transform its top-line sales figure into a profit measure by “prov[ing] all elements of cost or deduction claimed.” 15 U.S.C. § 1117(a). Because Defendants failed to timely disclose the damages that they seek, Plaintiff did not retain an expert witness to opine upon Plaintiff's costs and deductions. (Reply 1 at 3.) If the Court permits Defendants to present evidence of damages at trial, Plaintiff's ability to “cure the surprise” will be seriously handicapped. S. States, 318 F.3d at 597. While damages evidence is unquestionably of great importance to Defendants' counterclaims, that consideration fails to overcome the serious prejudice that Plaintiff would suffer were the Court to endorse Defendants' approach to discovery. On balance, the Southern States factors weigh in Plaintiff's favor. Id.

*4 Finally, the “self-executing” sanction set forth in Rule 37(c) — preclusion of the evidence that a party failed to provide from trial — proves appropriate here. Rambus, Inc. v. Infineon Techs. AG, 145 F. Supp. 2d 721, 724 (E.D. Va. 2001) (“Rule 37(c)(1) has been described as a self-executing sanction for failure to make a disclosure required by Rule 26(a), designed to provide a strong inducement for disclosure.”) (cleaned up). Should Defendants prevail on their counterclaims in the liability phase of trial, the Court will preclude Defendants from presenting evidence of damages.[3] Accordingly, the Court hereby GRANTS Plaintiff's first Motion in Limine (ECF No. 175).

The Court will GRANT Plaintiff's Motion in Limine to Exclude Evidence Regarding Ownership of the Design of the Moke Vehicle (ECF No. 177). In their Response to Plaintiff's Motion (ECF No. 194), Defendants state that they intend to offer evidence establishing ownership of the design of the MOKE vehicle in support of their counterclaim for tortious interference under Florida common law (Count VIII). (Resp. 2 at 1–2.) Defendants have since voluntarily dismissed that counterclaim, however, via the parties' Joint Stipulation (ECF No. 238). Because evidence of Defendants' design rights lacks any relevance to the parties' remaining claims and counterclaims, the Court will exclude any such evidence. Fed. R. Evid. 401, 402. Accordingly, the Court hereby GRANTS Plaintiff's second Motion in Limine. (ECF No. 177.)

The Court will GRANT IN PART and DENY IN PART Plaintiff's Motion in Limine to Exclude All Evidence Regarding Undisclosed Agreements with Photographers (ECF No. 179). Between its Memorandum in Support (Mem. Supp. Mot. Lim. No. 3 (“Mot. 3”) (ECF No. 180)) and its Reply Brief (Reply No. 3 (“Reply 3”) (ECF No. 209)), Plaintiff seeks several remedies from the Court. The Court addresses Plaintiff's requests in turn.

First, the Court GRANTS Plaintiff's Motion to the extent it seeks to exclude undisclosed evidence regarding contractual agreements between Defendants and any photographers. Plaintiff's document requests make clear that Plaintiff sought all evidence that Defendants possess concerning Defendants' alleged ownership of images of MOKE vehicles appearing on Moke International's website (the “Subject Works”). (Mot. 3 at 2.) Rule 26 therefore obligated Defendants to disclose relevant information — evidence demonstrating their ownership or title to the Subject Works — during discovery. Fed. R. Civ. P. 26(a). Outside of the email exchange between Moke International and photographer Antoine Verglas' studio (the “AVI Emails”), Defendants produced no documentation evidencing their ownership of the Subject Works. Pursuant to Rule 37(c), Defendants therefore cannot proffer any evidence, other than the AVI Emails, of their ownership of the Subject Works at trial. Fed. R. Civ. P. 37(c).

Second, the Court hereby DENIES Plaintiff's Motion to the extent it seeks to exclude the AVI emails. Putting aside whether such evidence would prove relevant to Defendants' now-dismissed claims for copyright infringement under the Copyright Act or unfair competition under Florida law,[4] the Court finds that the AVI emails may prove relevant to the Court's resolution of Defendants' counterclaim for false designation of origin under the Lanham Act. Fed. R. Civ. P. 401, 402. Accordingly, Defendants may present evidence related to the AVI emails at trial.

*5 Third, the Court hereby GRANTS Plaintiff's Motion to the extent Plaintiff moves the Court to exclude from trial “any testimony ... that Moke International is the owner or exclusive licensee of the copyrights associated with the Subject Works.” (Reply 3 at 9.) Defendants voluntarily dismissed their counterclaim for Copyright Infringement in the parties' Joint Stipulation (ECF No. 238), and evidence concerning ownership of or license to the copyrights associated with the Subject Works bears no relevance to the claims remaining in this case. Fed. R. Evid. 401, 402. Moreover, any such testimony would needlessly delay trial and waste judicial resources. Fed. R. Evid. 403. Accordingly, the Court excludes testimony concerning copyrights associated with images of MOKE vehicles appearing on Moke International's website. Fed. R. Civ. P. 401–403.

Fourth, the Court hereby DENIES AS MOOT Plaintiff's Motion to the extent it requests reconsideration of Plaintiff's Motion for Summary Judgment (ECF No. 111). Defendants voluntarily dismissed their counterclaim for copyright infringement under the Copyright Act (ECF No. 238), mooting Plaintiff's request for reconsideration.

Finally, the Court hereby DENIES Plaintiff's Motion to the extent it seeks a show cause order for failure to comply with discovery rules. The Court finds that the exclusion of undisclosed evidence, as discussed supra, provides a sufficient sanction for the complained-of conduct. Accordingly, the Court finds a show cause order unnecessary and inappropriate at this time.

The Court will GRANT Plaintiff's Motion in Limine Regarding Testimony on Foreign Trademarks (ECF No. 181). Plaintiff moves, pursuant to an October 14, 2021 Order of this Court (ECF No. 85), to exclude “any evidence or argument concerning the ownership or registration of trademark rights outside the United States.” (Mem. Supp. Mot. Lim. No. 4 (“Mot. 4”) at 3 (ECF No. 182).) The Court's Order followed an October 12, 2021 hearing to resolve various discovery disputes between the parties. The Court summarized the relevant dispute and its resolution thusly:

(ECF No. 85 at 1-2) (emphasis added).

Defendants argue that they can introduce evidence of their foreign trademark portfolio “to describe the nature of their businesses and give the [factfinder] important context” without contravening the Court's Order, as the Order did not prohibit Defendants from introducing evidence of their foreign trademarks “for any and every purpose,” but only where relied upon “to support their defenses and counterclaims.” (Resp. 4 at 1–2.) Plaintiff argues, however, and the Court agrees, that the Court's October 12, 2021 Order memorializes Defendants' election not to rely on evidence of foreign trademark rights “in litigating the remainder of the case.” The Court will abide by its prior Order. Accordingly, the Court GRANTS Plaintiff's Motion (ECF No. 181) and prohibits Defendants from presenting evidence of foreign trademark rights at trial.

*6 The Court will DENY Plaintiff's Motion in Limine to Exclude Evidence and Argument Regarding Prior Acts Committed by Mr. Rome (ECF No. 183). Plaintiff moves, pursuant to Federal Rules of Evidence 403 and 608(b), to exclude evidence concerning (1) regulatory proceedings against Plaintiff's CEO, Todd Rome, during Mr. Rome's prior employment in the securities industry and (2) an arbitration finding, upheld in federal court, that Mr. Rome defamed an ex-employee of the broker-dealer of which Mr. Rome was then a senior manager. (Mem. Supp. Mot. Lim. No. 5 (“Mot. 5”) at 1-2 (ECF No. 184).) Plaintiff contends that neither of these prior events proves probative of Mr. Rome's character for truthfulness and, moreover, that any slight probative value these events possess would be substantially outweighed by their tendency to prejudice the factfinder and unduly delay trial. (Mot. 5 at 7.)

Because this action will be tried to the bench, the Court finds that pre-trial exclusion of evidence related to Mr. Rome's prior acts would be premature. Though Plaintiff rightfully emphasizes the nature of the evidence related to the regulatory proceedings (mere “allegations”) and the significant passage of time since the prior acts that Defendants intend to highlight occurred (greater than twenty years), the Court, acting as the factfinder, is well-equipped to account for those considerations when evaluating whether and to what extent Mr. Rome's prior acts prove probative of his character for truthfulness. The Court thus reserves any Rule 608 analysis for trial.[5]

Moreover, the Fourth Circuit has held that “in the context of a bench trial, evidence should not be excluded under [Rule] 403 on the ground that it is unfairly prejudicial.” Schultz, 24 F.3d at 632. “Rule 403 was designed to keep evidence not germane to any issue outside the purview of the jury's consideration,” and jury prejudice is not at issue here. Id. Again, the Court is well-equipped to “hear relevant evidence, weigh its probative value and reject any improper inferences.” Id. The Court can also address issues of undue delay as they occur at trial. Accordingly, the Court DENIES Plaintiff's fifth Motion in Limine (ECF No. 183).

For the foregoing reasons, the Court hereby:

Let the Clerk file a copy of this Order electronically and notify all counsel of record.

It is so ORDERED.

Richmond, Virginia