Offering Legal Conclusions Gets Expert Witness Tossed

With few exceptions, expert witnesses may not draw legal conclusions in US federal courts, but where that line is drawn may not always be crystal clear — or attorneys may just see how far they can push the boundaries.

In Commodores Entertainment Corp. v. McClary, No. 14-14883 (11th Cir. 2018), a founding member of the Commodores music band, Thomas McClary, was sued for infringing the Commodores trademark by his former band members, William King and Walter Orange, owners of Commodores Entertainment Corp. (CEC).

In 1984, McClary split from the band to pursue his own solo career. At that time the CEC contract specifically stated:

“Upon the death or withdrawal of less than a majority of the Partners, the remaining majority of the Partners shall continue to have the right to use the Group Name for any purpose.”

While there were issues as to the formalities of McClary's departure, McClary did not perform again with the band until 2010, when he only filled in for The Commodore's regular guitar player who was ill.

In 2014, McClary began recording and performing under the band name “The Commodores featuring Thomas McClary,” playing many of the hits identified with The Commodores.

CEC sued McClary for trademark infringement, dilution, passing off, false designation of origin for unauthorized use of The Commodores trademarks.

To support his claim to the Commodores' trademark, McClary engaged Richard Wolfe, an attorney specializing in entertainment law, as his trademark expert witness. Wolfe offered testimony the appellate court summarized to be “on the validity and value of the marks, the goodwill associated with the marks, the validity of the assignment to CEC, the difference between statutory and common-law trademarks, and whether CEC breached duties owed to its shareholders.”

In district court, CEC moved to strike Wolfe's testimony, arguing that it was “rife with case citations and conclusory statements.”¹ Initially, the district court only granted CEC's motion to the extent that Wolfe's testimony concerned “any legal conclusions or opinions concerning the law,” but after reviewing Wolfe's report and hearing his testimony outside the presence of the jury, the district court excluded all of the testimony, noting that “The law is well-settled that the ”court must be the jury's only source of law“; thus, expert witnesses ”may not testify to the legal implications of conduct." McClary appealed, claiming in part that the district court abused its discretion in excluding Wolfe's testimony.

While the appellate court did note review for abuse that there were exceptions which allowed an expert in a civil case “to offer his opinion on an ”ultimate issue“ in a case” [Fed. R. Evid. 704(a)], it repeated the district court's finding that experts “may not testify to the legal implications of conduct.”

The appellate court expanded on its reasons:

"Wolfe's expert report is replete with legal opinion. In it, he offered the legal view that the original members “owned the underlying marks jointly as tenants in common, owning an undivided interest in the totality of the partnership assets.” He explained that McClary “was an equal owner, in an undivided interest in the name and had equal rights (as each of the other founding members had) to use and enjoy the mark, which right was not waived, nor divested”; that “McClary was not divested of his interest in the PARTNERSHIP nor his interest in the underlying trademark”; and that McClary “never executed an assignment or waiver of his ownership rights.” He even wrote that “ownership of the trademark will be vested in those persons who created, used and controlled the creative endeavors of the group” and that “[i]n this case, that occurred in 1978, when there were five members of the band to be called ‘the Commodores' including Thomas McClary.”

The appellate court found not only that the legal conclusions in his report were properly struck, but also that his testimony outside of the jury's presence did “no more than offer expert opinion in the form of legal conclusions, and they risked confusing, prejudicing, or misdirecting the jury.”

The appellate court affirmed the district court's grant of judgment as a matter of law for CEC and affirmed the permanent injunction against McClary.