Wednesday, September 08, 2004

Court on IP professor

Charter One Financial (2001 WL 1035721; 65 USPQ2d 1684):

"In the instant case, defendant has challenged Professor Lichtman's credentials to testify about trademark law.

Since June of 1998, Professor Lichtman has been employed as an assistant professor of law at the University of Chicago. From June of 1997 through May of 1998, he was employed as a Fellow at Yale Law School. His academic credentials are impressive. He was graduated from Yale Law School in 1997 as an Olin Fellow in Law, Economics and Public Policy and as a Coker Teaching Fellow in Constitutional Law.

He attended Duke University and was graduated first in his class with a B.S.E. in Electrical Engineering and Computer Science. He has published seven works, on subjects including telecommunications law, patents and jury reform. None of the works that Professor Lichtman has published focuses on trademark law, but he is currently researching a project that has a focus in trademark law. Furthermore, the classes that he has taught while an assistant professor at the University of Chicago contain a trademark component.

During the preliminary injunction hearing, Professor Lichtman testified that he considers himself an expert able to testify about trademark law, patent law, and law involving emerging technology. Professor Lichtman has never done any practical work on a trademark. He has never drafted a trademark application, defended a trademark or prosecuted a trademark.

[3] Professor Lichtman is not currently qualified to testify as an expert on trademark law. Courts have recognized that expertise may be acquired through practical experience, academic experience or simply through observing the work of others. DePaepe v. General Motors Corp., 141 F.3d 715, 719 (7th Cir. 1998); Wetherill v. University of Chicago, 565 F.Supp. 1553, 1563-64 (N.D. Ill. 1983) (Shadur, J.).

However, Professor Lichtman has no special qualification over the average lawyer in the field of trademark. He testified that he is qualified as an expert because "I am incredibly well read in the area, read all relevant law, read a lot of the relevant cases, read a lot of the commentary, try to understand what the next issues will look like, try to understand the policies that caused us to design the law *1690 the way we did, their strengths and weaknesses. The details of practicing trademark law, that is not what I do."

Essentially, Professor Lichtman is asking this Court to certify him as an expert because he has done what any motivated lawyer could do, namely, study precedent. There is no special or unique perspective, other than his intelligence, which Professor Lichtman can bring to the court. It is difficult to reconcile Professor Lichtman's lack of overall experience with his claim to be an expert in so many wide-ranging areas of the law. Given that none of his published work involves trademark law and that trademark law only comprises a small subset of larger topics which he teaches, we cannot find Professor Lichtman qualified as an expert.

However, we have considered his legal arguments. In our opinion, he advanced no arguments that could not have been presented to this court as legal argument in a brief or memorandum. As our opinion makes clear above, we rejected Professor Lichtman's analysis that, using the imagination test, "charter" is a suggestive mark.


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