Case 4:11-cv-01420 Document 128 Filed in TXSD on 09/24/12 Page 1 of 14

IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF TEXAS CLEARLINE TECHNOLOGIES LTD., Plaintiff, v. COOPER B-LINE, INC., Defendant. § § § § § § § § § §

No. 4:11-cv-1420 JURY DEMANDED

JOINT PRETRIAL ORDER

1.

Appearance of Counsel A. Plaintiff: Clearline Technologies, Ltd. 1149 St. Matthews Winnipeg, MB Canada R3G 0J8 M. Ross Cunningham Christopher M. McDowell John P. Pinkerton Rose Walker, LLP 3500 Maple Avenue, Suite 900 Dallas, Texas 75219 214.752.8600 Robert D. Katz Katz, PLLC 2908 Rosedale Avenue Dallas, Texas 75205 469.278.5999

   

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B.

Defendant Cooper B-Line, Inc. 509 West Monroe Street Highland, IL 62249 Robin L. Harrison John L. Dagley Campbell Harrison & Dagley L.L.P. 4000 Two Houston Center 909 Fannin Street Houston, Texas 77010 713.752.2332 Mitchell C. Chaney Colvin, Chaney, Saenz & Rodriguez, LLP 1201 East Van Buren – 78250 P.O. Box 1155 Brownsville, TX 78522 956.542.7441

2.

Statement of the Case

This is a trade dress and trademark infringement case by Clearline Technologies, Ltd. against Cooper B-Line, Inc. Clearline claims that, since May of 2008, the yellow stripe and yellow on black color scheme of Cooper B-Line’s DURA-BLOK™ roof top support blocks have infringed on the trade dress of Clearline’s C-PORT® roof top support blocks. Clearline also claims that Cooper B-Line infringed the C-PORT® trademark by knowingly and improperly using that mark on its website and in a trade show catalog for 2009, 2010, and 2011. Clearline seeks to recover lost profits on its sales of C-Port products and Cooper’s profits due to the claimed infringement. Cooper B-Line denies that it has infringed Clearline’s trade dress or trademark, denies that Clearline has suffered any lost profits as a result of any alleged infringement, and denies that Clearline is entitled to any of its profits.

   

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3.

Motions Plaintiff’s Motion in Limine is pending before the Court. Plaintiff may need to re-urge its challenge as to Juan Herrera. Defendant’s Motion in Limine is pending.

4.

Exhibits Plaintiff – See attached Exhibit 4-A. Defendant – See attached Exhibit 4-B.

5.

Witnesses In the event that there are any other witnesses to be called at the trial, their names, addresses, and the subject matter of their testimony shall be reported to opposing counsel as soon as they are known. This restriction shall not apply to rebuttal or impeaching witnesses, the necessity of whose testimony cannot reasonably be anticipated before the time of trial. A. Plaintiff

Burgreen, James – Clearline will call Mr. Burgreen by deposition unless he is made available. Cooper Industries 600 Travis Street, Suite 5600 Houston, Texas 77002 (713) 209.8400 Mr. Burgreen is expected to testify as to certain matters pertaining to Cooper’s current and previous websites, including the code for those website pages, search results, page/click metrics and generally the information contained in his deposition. The full extent of Mr. Burgreen’s testimony is contained within his deposition transcript, and Plaintiff reserves the right to designate any or all of his deposition for trial. Crain, Bob – Clearline will call Mr. Crain by deposition unless he is made available. Director of Marketing/Product Development Cablofil 8319 State Route 4 Mascoutah, IL 62258 (618) 566-5850

   

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Mr. Crain is expected to testify as to issues regarding the C-Port product, Cooper’s sale and marketing of the C-Port, Cooper’s manufacture and sale of the copy-cat Dura-Blok product, customer confusion due to Cooper’s copying of the C-Port. The full extent of Mr. Crain’s testimony is contained within his deposition transcript, and Plaintiff reserves the right to designate any or all of his deposition for trial. Krovats, Neil – Clearline will call Mr. Krovats live at trial. Clearline Technologies, Ltd. 1149 St. Matthews Ave. Winnipeg, Canada MB R3G-0J8 (204) 786-3334 Mr. Krovats is the president of Clearline Technologies Ltd. and is expected to testify as to Clearline’s product line and general business practices. He will also testify about customer confusion due to Cooper’s copying and imitating the C-Port trade dress in connection with its Dura-Blok Products and use of Clearline’s C-Port trademark. Mr. Krovats will testify about the invention of the C-Port, Clearline’s independent marketing efforts for its C-Port products, the notoriety of the C-Port trade dress and trademark, the non-functionality of the yellow stripe on the C-Port, the loss of sales and profits due to Cooper’s sale of the Dura-Blok products, future damages due to Cooper’s continued use of the C-Port trade dress and other related topics. The full extent of Mr. Krovats’ testimony was further explored by defendants during his deposition and, to the extent additional topics were discussed during his deposition, then Plaintiff incorporates those topics by reference. Moeller, Lindsey - Clearline will call Ms. Moeller by deposition. Hanley Wood Exhibitions 6191 N. State Hwy. 161, Suite 500 Irving, TX 75038 (972) 536-6300 Clearline will call Ms. Moeller by deposition on written questions as the custodian of records for Hanley Wood, LLC. to prove up the Hanley Wood Exhibitions trade show brochures for 20092011 if Defendants will not stipulate to the admissibility of the exhibits for all purposes at trial. Peeler, Chris – Clearline will call Mr. Peeler live at trial. Cooper B-Line, Inc. 509 W. Monroe St. Highland, Illinois 62249 (618) 654-2184 (800) 851-7415

   

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Clearline will call Mr. Peeler at trial (whether live or by deposition) Mr. Peeler is expected to testify as to the willful infringement of Clearline’s trade dress and trademark. Mr. Peeler will also testify about customer confusion, Cooper’s intentional destruction of Clearline’s business in the United States, Cooper’s knowledge of trademark infringement via the Hanley Woods publications, Cooper’s knowledge of Clearline’s trade dress and its efforts to design around the trade dress, and Cooper’s sales and gross profits of C-Port and Dura-Blok products. The full extent of Mr. Peeler’s testimony is contained within his deposition transcript, and Plaintiff reserves the right to designate any or all of his deposition for trial. Price, Alan - Clearline will call Mr. Price by deposition unless he is made available. 1128 S. 258th St. Seattle, WA 98198 (253) 228-0725 Clearline will call Mr. Price at trial (whether live or by deposition) Mr. Price is expected to testify as to the willful infringement of Clearline’s trade dress and trademark. Mr. Price will also testify about customer confusion, Cooper’s intentional destruction of Clearline’s business in the United States, Cooper’s knowledge of trademark infringement via the Hanley Woods publications, Cooper’s knowledge of Clearline’s trade dress and its efforts to design around the trade dress, and Cooper’s sales and gross profits of C-Port and Dura-Blok products. The full extent of Mr. Price’s testimony is contained within his deposition transcript, and Plaintiff reserves the right to designate any or all of his deposition for trial. Rice, Dave – Clearline will call Mr. Rice by deposition unless he is made available. Cooper B-Line, Inc. 509 W. Monroe St. Highland, Illinois 62249 (618) 654-2184 (800) 851-7415 Clearline will call Mr. Rice at trial (whether live or by deposition) Mr. Price is expected to testify as to the willful infringement of Clearline’s trade dress and trademark. Mr. Rice will also testify about customer confusion, Cooper’s intentional destruction of Clearline’s business in the United States, Cooper’s knowledge of trademark infringement via the Hanley Woods publications, Cooper’s knowledge of Clearline’s trade dress and its efforts to design around the trade dress, and Cooper’s sales and gross profits of C-Port and Dura-Blok products. The full extent of Mr. Rice’s testimony is contained within his deposition transcript, and Plaintiff reserves the right to designate any or all of his deposition for trial. Swiney, Mike – Clearline will call Mr. Swiney by deposition unless he is made available. Cooper B-Line, Inc. 509 W. Monroe St. Highland, Illinois 62249 (618) 654-2184 (800) 851-7415
   

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Mr. Swiney is expected to testify as to certain matters pertaining to Cooper’s current and previous websites, including the code for those website pages, search results, page/click metrics and generally the information contained in his deposition. The full extent of Mr. Swiney’s testimony is contained within his deposition transcript, and Plaintiff reserves the right to designate any or all of his deposition for trial. Wright, Tony – Clearline will call Mr. Wright live at trial. Wright IMC 660 North Central Expressway, Suite 450 Plano, TX 75074 (972) 215.7167 Mr. Wright will testify about the historical Cooper Dura-Blok webpages, including their use of the C-Port trademark in the meta-tags/alt-tags, specifically the use of the C-Port registered trademark in the meta-tag/alt-tag describing the Dura-Blok DB20 image on the webpages. Mr. Wright will testify about the content of the webpages that he retrieved from the Internet Archive. Mr. Wright will also offer testimony concerning the mechanics of webpages, html code and search engine results based on webpage data, including meta-tags/alt-tags. Prescott, Laurance Ph.D. – Clearline will call Dr. Prescott live at trial. Accumyn Consulting 1415 Congress Street, Suite 200 Houston, Texas 77002 682.551.6613 Dr. Prescott is an economist and an expert in the areas of intellectual property, economic and financial damage claim computations, valuation analysis, risk management and econometric and statistical analytics. He is expected to testify regarding Clearline’s past and future damages. The full extent of the subject matter and areas of Dr. Prescott’s testimony may be found in Plaintiff’s prior designations of Mr. Prescott and his written reports and supplements. Turner, Robert – Clearline may call Mr. Turner live at trial. McDole Kennedy & Williams PC 1700 Pacific Avenue Suite 1280 Dallas, Texas 75201 (214) 979-1122 Cunningham, M. Ross – Clearline will call Mr. Cunningham live at trial. Rose Walker 3500 Maple Ave., Suite 900 Dallas, TX 75219 214.752.8600 Mr. Cunningham is a partner with the law firm of Rose Walker, L.L.P. and will testify as to the reasonableness and necessity of the attorneys’ fees and expenses incurred during the pendency of
   

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this case. Mr. Cunningham’s opinions and the basis for those opinions has been previously provided in disclosures. Katz, Robert – Clearline may call Mr. Katz live at trial. Katz, PLLC 2908 Rosedale Ave. Dallas, TX 75205 (469) 278.5999 Mr. Katz is a member with the law firm of Katz, PLLC and may testify as to the reasonableness and necessity of the attorneys’ fees and expenses incurred during the pendency of this case. Mr. Katz’s opinions and the basis for those opinions has been previously provided in disclosures. Washburn, Rodney – Clearline will call Mr. Washburn by deposition. General Counsel DASH 2500 Adie Road Maryland Heights, MO 63043 (314) 432.3200 Clearline will call Mr. Washburn by deposition on written questions as the custodian of records for DASH and RB Rubber to prove up the DASH and RB Rubber produced documents if Defendants will not stipulate to the admissibility of the exhibits for all purposes at trial. Hilton, Vernon – Clearline will call Mr. Hilton by deposition. Director of Purchasing Rockford Board of Education School District 205 201 South Madison Street Rockford, Illinois 61104 815-966-3082 Clearline will call Mr. Hilton by deposition on written questions as the custodian of records for the Rockford Board of Education to prove up the Rockford Board of Education Request for Bid on Supplies for School District 205 if Defendants will not stipulate to the admissibility of the exhibits for all purposes at trial. Please see Exhibit 5C attached hereto for Plaintiff’s Deposition Designations.

   

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B.

Defendant

The witnesses that Cooper B-Line expects to call at trial: Brent K. Bersin 10000 Memorial, Suite 300 Houston, Texas 77024 (713) 335-5445 Mr. Bersin will offer expert testimony regarding damages and related issues. The substance of his testimony is that Plaintiff has not suffered any damages and has not suffered damages in the amounts to which Defendant’s expert may testify. James Burgreen 203 Cooper Circle Peachtree City, GA 30269 (770) 631-2100 Mr. Burgreen will testify about searches allegedly relating to the presence of the C-PORT® mark on Cooper B-Line’s website. The substance of his testimony is that the presence of the CPORT® mark on Cooper B-Line’s website had relatively little, if any, effect on website traffic and product sales. Jason Cook Product Manager, Marketing Cooper B-Line, Inc. 509 W. Monroe St. Highland, IL 62249 (618) 654-2184 Mr. Cook will testify about Plaintiff’s claim that Cooper B-Line has used and continues to use the C-PORT® mark in a trade show catalog and about service and supply issues in Cooper BLine’s relationship with Plaintiff. The substance of his testimony is that Cooper B-Line did not publish the trade show catalog or know about the error in the trade show catalog, that it promptly took action to correct the error upon discovering it, and that the error had no effect on product sales. The substance of his testimony is also that Cooper B-Line suffered significant service and supply problems with Clearline. Robert Crain Cablofil 8319 State Route 4 Mascoutah, IL 62258 (618) 566-5850 Mr. Crain will testify by deposition about the sales and marketing of the Cablo-Port and Cablofil’s relationship with Clearline. The substance of Mr. Crain’s testimony is that Cablofil
   

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sells and markets the C-PORT® roof top support block under the name of Cablo-Port without attribution to Clearline and that, based on information received from Clearline, Cablofil advertises the reflective yellow stripe on the C-PORT® roof top support block as a reflective safety strip to improve visibility. Mr. Crain’s deposition designations are attached. Margie Doll Cooper B-Line, Inc. 509 W. Monroe St. Highland, IL 62249 (618) 654-2184 Ms. Doll will testify about Plaintiff’s claim that Cooper B-Line has used and continues to use the C-PORT® mark in a trade show catalog. The substance of her testimony is that Cooper B-Line did not publish the trade show catalog or know about the error in the trade show catalog, and that it promptly took action to correct the error upon discovering it. Juan Manuel Herrera, Ph.D., P.E. 28 San Marcos El Paso, Texas 79922-166 (915) 534-3995 Dr. Herrera will offer expert testimony regarding the functionality of Clearline’s alleged trade dress. The substance of his testimony is that the yellow stripe and black color of the roof top support blocks are functional. Chris Peeler Cooper B-Line, Inc. 509 W. Monroe St. Highland, IL 62249 (618) 654-2184 Mr. Peeler will testify about all aspects of Cooper B-Line’s relationship with Plaintiff and about the development and marketing of the DURA-BLOK™ roof top support blocks. The substance of his testimony is that Cooper B-Line developed the DURA-BLOK™ roof top support blocks and terminated its relationship with Clearline because of service and supply problems, that the yellow stripe and black color of the roof top support blocks are functional, that no feature of DURA-BLOK™ roof top support blocks was developed with the intention of capitalizing on the goodwill of Clearline’s alleged trade dress or trademark, and that Cooper B-Line’s ability to sell and success at selling the roof top support blocks is because of its distribution network and customer relationships and not because of Clearline’s alleged trade dress or trademark. Alan Price 1128 S. 258th Street Seattle, WA 98198 (253) 228-0725
   

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Mr. Price will testify by deposition about the sales and marketing of C-Port, Dura-Blok and other rooftop support products. The substance of his testimony is that Cooper B-Line was the source with which purchasers associated the C-PORT® roof top support blocks and that the reflective yellow striping on both the C-PORT® and DURA-BLOK™ roof top support blocks is functional. Mr. Price’s deposition designations are attached. David Rice Cooper B-Line, Inc. 509 W. Monroe St. Highland, IL 62249 (618) 654-2184 Mr. Rice will testify, most likely by deposition about all aspects of Cooper B-Line’s relationship with Plaintiff and about the development and marketing of the DURA-BLOK™ roof top support blocks. The substance of his testimony is that Cooper B-Line developed the DURA-BLOK™ roof top support blocks and terminated its relationship with Clearline because of service and supply problems, that the yellow stripe and black color of the roof top support blocks are functional, and that no feature of DURA-BLOK™ roof top support blocks was developed with the intention of capitalizing on the goodwill of Clearline’s alleged trade dress or trademark. Mr. Rice’s deposition designations are attached. Mike Swiney Cooper B-Line, Inc. 509 W. Monroe St. Highland, IL 62249 (618) 654-2184 Mr. Swiney will testify about Cooper B-Line’s website and the presence of the C-PORT® mark on Cooper B-Line’s website. The substance of Mr. Swiney’s testimony is that a single descriptive reference to “C-Port” was inadvertently left in the Cooper B-Line has used and continues to use the C-PORT® mark in an “alt tag” on the website and that this error had relatively little, if any, effect on website traffic and product sales. The witnesses that Cooper B-Line may call at trial if the need arises: Eric Augustin Cooper B-Line, Inc. 509 West Monroe Street Highland, Illinois 62249 (618) 654-2184 If necessary, Mr. Augustin will testify about margins and proper costs and expenses to deduct from Cooper B-Line’s revenue from C-PORT® products and DURA-BLOK™ products and express opinions about the reasonableness and determination of those costs and expenses and the quantity of C-PORT® products and DURA-BLOK™ products sold. The substance of Mr. Augustin’s testimony is that certain costs and expenses should be deducted to arrive at
   

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appropriate margins and profits, that those costs and expenses are reasonable costs and expenses to deduct and are properly and accurately calculated, and the margins and profits based on deduction of these costs and expenses are properly and accurately calculated. Mitchell C. Chaney COLVIN, CHANEY, SAENZ & RODRIGUEZ, L.L.P. 1201 E. Van Buren P. O. Box 2155 Brownsville, Texas 78522-2155 (956) 542-7441 If necessary, Mr. Chaney will offer expert testimony regarding attorneys’ fees. Robin L. Harrison John L. Dagley Campbell Harrison & Dagley L.L.P. 4000 Two Houston Center 909 Fannin Street Houston, Texas 77010 (713) 752-2332 If necessary, Messrs. Harrison and Dagley will offer expert testimony regarding attorneys’ fees. Larry Lane RB Rubber 904 N.E. 10th Ave. McMinnville, OR (503) 434-4454 If necessary, Mr. Lane will testify about the relationship between RB Rubber and Cooper B-Line and the manufacture of the DURA-BLOK™ products. Don Overturf RB Rubber 904 N.E. 10th Ave. McMinnville, OR (503) 434-4454 If necessary, Mr. Overturf will testify about the relationship between RB Rubber and Cooper BLine and the manufacture of the DURA-BLOK™ products. Joe Pace Cooper B-Line, Inc. 509 W. Monroe St. Highland, IL 62249 (618) 654-2184
   

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If necessary, Mr. Pace will testify about service and supply problems in Cooper B-Line’s relationship with Clearline and concerning orders, shipment and sales of C-PORT® products. The substance of his testimony is that Cooper B-Line experienced significant service and supply issues with Clearline. Rodney Washburn DASH 2500 Adie Road. Maryland Heights, MO 63043 (314) 432-3200 If necessary, Mr. Washburn will testify about the relationship between RB Rubber and Cooper B-Line and the manufacture of the Dura-Blok products. Connie Winkeler Cooper B-Line, Inc. 509 W. Monroe St. Highland, IL 62249 (618) 654-2184 If necessary, Ms. Winkeler will testify about orders, shipment and sales of C-PORT® products. The substance of her testimony is that Cooper B-Line experienced significant service and supply issues with Clearline. Please see Exhibit 5D attached hereto for Defendant’s Deposition Designations. 6. Trial (a) (b) (c) This is a jury trial. Plaintiff and Defendant believe that this case will take 5-7 days including voir dire, opening and closing. Availability of witnesses. 1. Plaintiff has 5 live witnesses who are available during trial. 2. Defendant does not anticipate availability problems for any of its witnesses.

7.

Additional Required Attachments

The portion of the jury charge agreed to by the parties is attached hereto as Exhibit 7. (a) Plaintiff’s proposed jury instructions, definitions, and interrogatories are attached hereto as Exhibit 7aA.

   

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Defendant’s proposed jury instructions, definitions, and interrogatories are attached hereto as Exhibit 7aB. (b) Plaintiff’s Memorandum of Law is attached hereto as Exhibit 7bA. Defendant’s Memorandum of Law is attached hereto as Exhibit 7bB.

APPROVAL REQUESTED:

/s/ Ross Cunningham M. Ross Cunningham Attorney-in-charge Texas Bar No. 24007062 Southern District No. 34405 Christopher M. McDowell Texas Bar No. 24002571 SD Bar No. 22801 John P. Pinkerton Texas Bar No. 16016700 Southern District No. 32459 Rose Walker, LLP 3500 Maple Avenue, Suite 900 Dallas, Texas 75219 214.752.8600 (Main) 214.752.8700 (Facsimile) rcunningham@rosewalker.com cmcdowell@rosewalker.com jpinkerton@rosewalker.com Robert D. Katz State Bar No. 24057936 Southern District No. 1142686 Katz, PLLC 2908 Rosedale Avenue Dallas, Texas 75205 (469) 278-5999 (888) 231-5775 (Facsimile) rkatz@katzlawpllc.com ATTORNEYS FOR PLAINTIFF CLEARLINE TECHNOLOGIES LTD.

   

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/s/ Robin Harrison Robin Harrison State Bar No. 09120700 Southern District No. 4556 John Dagley State Bar No. 05310050 Southern District No. 12729 Campbell Harrison & Dagley L.L.P. 4000 Two Houston Center 909 Fannin Street Houston, Texas 77010 713.752.2332 Mitchell Chaney State Bar No. 04107500 Southern District No. 1918 Colvin, Chaney, Saenz & Rodriguez, LLP 1201 East Van Buren – 78250 P.O. Box 1155 Brownsville, TX 78522 956.542.7441 ATTORNEYS FOR DEFENDANT COOPER B-LINE, INC.

   

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Case 4:11-cv-01420 Document 128-1 Filed in TXSD on 09/24/12 Page 1 of 8 EXHIBIT 4A CLEARLINE'S EXHIBIT LIST
Exhibit #
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Price Depo Exhibit Price Depo Exhibit Price Depo Exhibit Price Depo Exhibit Price Depo Exhibit Price Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit

Depo Ex. No.

Bates Beginning
CL000015

Bates End
CL 000033

Exhibit Date

Exhibit Description
Proprietary Information Agreement and related documents RTS rooftop support products document Unipier Rooftop Pipe Support System - Sleeper Support GNR Parking Lot Safety Solutions information Rooftop Accessories info EcoCurb Supports info C-Port CX Series info

Offered

Objections

Admitted

Witness

CL 000014 BL 007851

CL 000019 BL 007869

4.9.03 11.13.05 7.1.07

Fax between Dave Rice and Jim Krovatz enclosing signed confidentiality agreement E-mail chain from Dave Rice to Bill Lampen forwarding Clearline Master Supply Agreement Handwritten notes regarding design E-mail from Dave Rice to Chris Peeler and Joe Pace regarding Clearline Price Increase File E-mail from Mark Fuller to Andy Kamm regarding C-Port quote E-mail from David Cibula to Mark Dullen and Matthew Orr regardding C-Port project E-mail from Mark Fuller to Chris Peeler regarding C-Port Project/CES Vietnam E-mail from David Rice to Chris Peller and "Larry" regarding rubber molding discussion and conference call Handwritten notes on "eject proper" Production Sales Quotation from Rubber Products Price list for DuraBlok Rooftop Support System C-port product catalog

BL 000307 BL 008223 BL 000201 BL 000196

BL 000307 BL 008230 BL 000201 BL 000196

7.10.07 7.16.07 7 27 07 7.27.07 7.27.07 7.6.07

16 17 18 19 20

10.31 1.14.08 BL 008176 BL 006346 BL 007942 BL 008177 BL 006353 BL 007942 9.25.07

E-mail from Dave Rice to Chris Peeler regarding telephone conference with Krovatz stating he wanted to sign the long term agreement and Rice reminding him of "sticking points" E-mail from Chris Peeler to Dave Rice and Gary Griesbaum regarding rb rubber E-mail from David Rice to Chris Peeler regarding samples E-mail from Don Overturf to Chris Peeler and Larry regarding 3M reflective tape E-mail from Dave Rice to Chris Peeler, Don Overturf and Larry regarding Roof Block Meeting appointment reminder regarding New C-Port Design Update from Chris Peeler
Page 1 of 16

21 22 23 24 25

Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit

BL 001158 BL 000456 BL 000466 BL 000474 BL 000021

BL 001158 BL 000458 BL 000468 BL 000474 BL 000021

9.26.07 10.15.07 10.23.07 11.12.07 11.15.07

Case 4:11-cv-01420 Document 128-1 Filed in TXSD on 09/24/12 Page 2 of 8
Exhibit #
26 27 28 29 30 31 32 33 34 35 36 37 38 39 40 41 42 43 44 45 46 48 49 50 51 52 53 54

Depo Ex. No.
Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Rice Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit

Bates Beginning
BL 000020 BL 000024 BL 000023 BL 000703 BL 001178 BL 000773 BL 008125 BL 008400 BL 007098 BL 001447 BL 001314 BL 006430

Bates End
BL 000020 BL 000024 BL 000023 BL 000703 BL 001178 BL 000773 BL 008127 BL 008400 BL 007098 BL 001451 BL 001323 BL 006439

Exhibit Date
11.21.07 12.12.07 12.12.07 2.14.08 4.18.08 5.14.08 2.4.08

Exhibit Description
Meeting appointment reminder from Chis Peeler regarding Clearline's Visit Meeting appointment reminder from Chris Peeler regarding C-Port transition plan Meeting appointment reminder from Chis Peeler regarding C-Port transition & storage E-mail from Mark Fuller to Chris Peeler and others regarding Dura-Blok proposed action plan E-mail from Chris Peeler to David Rice and others regarding Dura-Blok Transition E-mail from Joe Pace to Chris Peeler regarding C10's almost gone New product selling summary "Dura-Blok" PowerPoint slide - Cooper B-Line - Clearline Technologies Main Pain PowerPoint slide - Cooper B-Line - Clearline Technologies Main Pain PowerPoint Cooper B-Line B-Line C-Port Rooftop Supports PowerPoint Cooper B-Line Durablock Rooftop Support Product PowerPoint Cooper B-Line "2005 C Port Results 2006 Goal Cooper B-Line Curb Appeal Cooper B-Line spreadsheet of summary of contribution margin C-Port historical sales Program & Event Guide - Position your Business for Success E-mail from MaryAnn Pasek to Chris Peeler and Margie Doll regarding copy of booth photo Program & Event Guide - Rise Above the Crowd E-mail from Jason Cook to Chris Peeler and Margie Doll regarding roofing company description Program & Event Guide - Profit Potential at its Peak Booth Profile for Cooper B-Line from International Roofing Expo Request for Bid from Rockford Public Schools Cooper B-Line spreadsheet of summary of contribution margin C-Port historical sales Spreadsheet regarding Division B-Line Page of spreadsheet - noting product flow has improved

Offered

Objections

Admitted

Witness

05 & '06 4.12.12 2.3.09

BL 008371

BL 008372

11.6.09 2.22.10

BL 006533 CL 000558 CL 000553

BL 006533 CL 000559 CL 000553

2.17.11 2.16.11

BL 008405 BL 007108 BL 001193 BL 007907 BL 000192 BL 008221 BL 011375

BL 008410 BL 007108 BL 001194 BL 007909 BL 000194 BL 008221 BL 011375 2.9.07 4.18.07 5.30.07 6.26.07 7.5.07

E-mail from Craig Barry to Chis Peeler regarding C-Port Opportunity E-mail from Kathy Neville to Chris Peeler regarding Master Supply Agreement E-mail from Dick Kerndt to Monica Kutan regarding C-port PDF E-mail from Kevin Emig to Chris Peeler regarding C-Port samples E-mail from Chris Peeler to Larry regarding mold drawings

Page 2 of 16

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Exhibit #
55 56 57

Depo Ex. No.
Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit

Bates Beginning
DASH 001454 BL 008222 BL 000501

Bates End
DASH 001454 BL 008222 BL 000501

Exhibit Date
7.5.07 7.5.07 8.7.07

Exhibit Description
E-mail from Chris Peeler to Larry regarding mold drawings E-mail from Larry to Chis Peeler regarding drawings E-mail from Eric Cottone to Rob Smith and Chris Peeler regarding Effects of Rooftop Exposure on Ambient Temps Inside Conduits E-mail from Tammy Antonille to Chris Peeler regarding Rooftop name E-mail from Joe Pace to Chris Peeler and Kent Kampwerth regarding Direct Shipment E-mail from Gerald Hogan to Greg Jeckstadt regarding Cooper B-Line C-Port Price List E-mail from Joe Pace to Chris Peeler and Jason Cook regarding CBL priority schedule for 10.8.07 E-mail from Gary Griesbaum to Chris Peeler and Brandon Tally regarding drawings Meeting notice from Joe Pace regarding discuss the impace on exhisiting workshops capacity to absorb application all CBL felt product E-mail from Don Overturf to Chris Peeler regarding roof block DuraBlok engineering drawing E-mail from John Scime to George Dowse regarding DuraBlok Spreadsheet regarding Cooper B-Line Wages - 2008 E-mail from Brian Griffin to Chris Peeler regarding New CPorts E-mail from Mike Swiney to Chris Peeler regarding DuraBlok website E-mail from Mike Swiney to John Bursich, Chris Peeler, Rob Smith & Dave Heim regarding Dura-Blok website Catalog page from CADDY Pyramid/Rooftop Supports

Offered

Objections

Admitted

Witness

58 59 60 61 62 63

BL 007941 BL 000333 BL 000357 BL 008013 BL 008027 BL 000022

BL 007941 BL 000333 BL 000358 BL 008014 BL 008027 BL 000022

8.22.07 8.24.07 9.11.07 10.8.07 11.9.07 11.13.07

64 65 66 67 68 69 70

BL 000497 BL 000496 BL 008070

BL 000500 BL 000496 BL 008070

11.21.07 11.21.07 2.28.08 2008

BL 008083 BL 000757 BL 000758

BL 008084 BL 000757 BL 000760

4.10.08 5.1.08 5.6.08

71 72

BL 006515 BL 000768

BL 006515 BL 000770 5.13.08

73

BL 000778

BL 000779

5.15.08

E-mail from Mike Swiney to Chris Peeler, John Bursich, Rob Smith and Martin Witherbee regarding Dura-Blok website E-mail from Tom Fox to Chris Peeler regarding Introducing Cooper B-Line's Dura-Blok Rooftop Support System E-mail from Robert Holshouser to various individuals regarding Dura-Blok Correspondence from Chris Peeler to Cooper B-Line Manufacturers Representatives and Outside Salesmen regarding Introduction to Cooper B-Line's New "Dura-Blok" Rooftop Supports E-mail from Evin Emig to Chris Peeler regarding C10 E-mail from Tammy Antonille to Chris Pickard regarding CPort to Dura-Blok E-mail from Neil Carlock to Chris Peeler regarding Dura Blok letters

74 75

BL 001188 BL 006345

BL 001188 BL 006345

5.29.08

76 77 78

Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit

BL 008157 BL 008172 BL 008178

BL 008159 BL 008172 BL 008178

5.29.08 6.4.08 6.18.08

Page 3 of 16

Case 4:11-cv-01420 Document 128-1 Filed in TXSD on 09/24/12 Page 4 of 8
Exhibit #
79

Depo Ex. No.
Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Peeler Depo Exhibit Burgreen Depo Exhibit Burgreen Depo Exhibit Burgreen Depo Exhibit Burgreen Depo Exhibit Burgreen Depo Exhibit Swiney Depo Exhibits Swiney Depo Exhibits Swiney Depo Exhibits Swiney Depo Exhibits Swiney Depo Exhibits Swiney Depo Exhibits Swiney Depo Exhibits Swiney Depo Exhibits Swiney Depo Exhibits Swiney Depo Exhibits Swiney Depo Exhibits Swiney Depo Exhibits

Bates Beginning
BL 008182

Bates End
BL 008182

Exhibit Date
5.19.08

Exhibit Description
correspondence from Kenneth Werle of Duro-Blast to Cooper B-Line regarding B-Line Dura-Block Compatibility E-mail from Amanda Nix to Chris Peeler and Joe Pace regarding C-port to Dura Blok Dura-Blok installation instructions E-mail from John Scime to Chris Peeler and David Cibula regarding Clearline and written obligations to them E-mail from Chris Peeler to Joe Kline regarding Dura Block pricing E-mail from Jason Cook to Mark Reinders and Chris Peeler regarding Anixter Solar Brochure Solar Power Solutions catalogue E-mail from Chris Peeler to Mark Reinders and Jason Cook regarding Anixter Solar Brochure 2009 Major MVP Projects spreadsheet Durablock keyword marketing search B-line C-port keyword marketing search B-line cooper keyword marketing search Ranking Search Ranking Search HTML and Design View HTML and Design View

Offered

Objections

Admitted

Witness

80 81 82

BL 008193 BL 008194 BL 008204

BL 008193 BL 008196 BL 008204

8.22.08

1.8.09

83 84 85 86 87 88 89 90 91 92 93 94 95 96 97 98 99

BL 001421 BL 001410 BL 001412 BL 006536 BL 007773

BL 001423 BL 001410 BL 001419 BL 006536 BL 007778

4.20.10 2.8.11

2.8.11 2009 4.1.2011 4.23.12 4.1.2011 4.23.12 4.1.2011 4.23.12

BL000757 BL000774 CL 000545 CL 000560 BL001188 BL000777 CL 000552 CL 000561 BL001189

5.1.08 5.14.08

E-mail from Mike Swiney to Chris Peeler regarding DuraBlok website E-mail from Mike Swiney to Chris Peeler regarding DuraBlok website Source Code Google Canada C port roof supports

5.29.08

100 101 102

BL008099 BL008116 BL006549

BL008115 BL008127 BL006550 11.23.10

E-mail from Robert Holshouser to various persons regarding Dura-Blok Cross Reference sheet from Chris Peeler Dura-Blok Brochure Dura-Blok Launch Kit Cross Reference & List Prices E-mail from Jason Cook to Margie Doll regarding current verbage on Dura-Blok product for brands page E-mail from B-Line to Chris Peeler showing group e-mail sent introducing Cooper B-Line's Dura-Blok Rooftop Support System Source Code

103

BL00780

BL00782

5.15.08

104

CL001333

CL001342

Page 4 of 16

Case 4:11-cv-01420 Document 128-1 Filed in TXSD on 09/24/12 Page 5 of 8
Exhibit #
105 106 107 108 109 110 111 112 113 114 115 116 117 118 119

Depo Ex. No.
Swiney Depo Exhibits Swiney Depo Exhibits

Bates Beginning
CL001130 CL 000554 CL002725 CL000805 CL000466 CL000105 CL001058 CL001078.007 DASH000571 CL001126 CL000545 CL000560 CL000782 CL000460 CL001500 CL001773 CL001776 CL001928 CL002016 CL002020 CL002046 CL00542 CL001064 BL00496 CL000001 CL000003 CL002430 CL002680 CL002912 CL002895 CL002656 CL002678

Bates End
CL001142 CL 000555 CL002740 CL000824 CL000466 CL000153 CL001059

Exhibit Date
Source Code

Exhibit Description

Offered

Objections

Admitted

Witness

Wois Lookup Domain Availibility and Registration Information Incontestability affidavit Clearline Financial Documents & Sales Documents Clearline Financials 2007 - 2008 & 2008 - 2009 Clearline Advertising & Promotional Documents Correspondence from Neil Krovats to Marvin Thorarinson 4.9.07 12.16.11 E-mail to Chris Peeler E-mail to Chris Peeler International Roofing Expo Program Guides Cooper Website HTML coding Search Engine Results Clearline's Annual Sales Figures August 2010 Purchase Order ALSC Architects Eastern Washington University Project and supporting Affidavit of John Manning Rockford Board of Education Project Documents and supporting Affidavit of Vernon Hilton

CL001129 CL000552 CL000561 CL000804 CL001887

120

CL 002128

121 122 123 124 125 126 127 128 129 130 131 132 133 134 135 136 137 138 139 140

CL001069 CL000002

C-Port Entry on U.S. PTO Principal Register C-Port Drawings Dura-Blok Drawings Correspondence to Cooper B-Line from Erin McNicol Correspondence to Erin McNicol from Cooper B-Line

CL002567 CL002708 CL002926 CL002911 CL002660 CL002691

Deposition on Written Questions of Hanley Wood and exhibits Rose Walker Fee Bills Robert Katz Fee Bills Patton Roberts Fee Bills Akins, Macaulay & Thorvaldson Fee Bills Exemplar Clearline C-Port products Exemplar Cooper B-Line Dura-Blok products Exemplar of other competitors' rooftop supports Building Code Excerpts Rooftop Catwalk drawing Fax Blasters Morden Middle School Roof Replacement Docs Sales History 2004 - 2005 Trade Show Retreat National Building Code §22,000 (formerly known as §15,000), which is the section governing pipe and equipment supports Purchase Order C-Port Summary of contribution margin, C-Port Salves by SKU, Dura-Blok Summary of Contribution margin, and Dura-Blok Sales by SKU for the period ending July 31, 2012

CL002416 CL002420 CL002421 CL002568 CL002661 CL002677

CL002419 CL002429 CL002640 CL002676

141 142

CL000460

Page 5 of 16

Case 4:11-cv-01420 Document 128-1 Filed in TXSD on 09/24/12 Page 6 of 8
Exhibit #
143

Depo Ex. No.

Bates Beginning
CL002741

Bates End
CL002894

Exhibit Date

Exhibit Description
Cooper Industries plc's 2011 Annual Report, Cooper Industries plc's 2011 form 10-K, and Cooper Industries plc's Form 10-Q for the period ending June 30, 2012 Official Notice from USPTO of Acceptance and Acknowledgement under Sections 8 and 165 of the Trademark Act regarding Trademark Registration No. 3,227,010 Cooper's Responses to Request for Admissions Nos. 13, 14, 15 Cooper's Responses to Request for Admissions Nos. 101, 102 Cooper's Responses to Request for Admissions Nos. 118, 119 E-mails from HC- Yurkiw.pst B-Line C-Port Brochure BRTS-03R html code and Cooper webpage html code and Cooper webpage html code and Cooper webpage html code and Cooper webpage html code and Cooper webpage html code and Cooper webpage html code and Cooper webpage html code and Cooper webpage C-Port PowerPoint Presentation Affidavit from DASH with attachments P&L Detail 2007 - 2008 P&L Detail 2006 - 2007 CP Sales by SKU - Quantity Produced 031312 CP Summary and Sales by SKU DB Sales by SKU - Quantity - Produced 31312 Exhibit D - C-Port Sales by SKU - to Fed R. Civ.P. a-2-c Disclosures William G. Barber, "The Recovery of Profits Under the Lanham Act: Are the District Courts Doing their Job?", The Trademark Reporter , (Vol. 82 TMR, pages 173 - 174, 1992 Davidson, Maher, Stickney and Weil. Managed Accouning: An Introduction to Concepts, Methods and Uses. Second Edition. The Dryden Press. 1988 Rooftop Support System is made of recycled rubber., Clearline Technologies. Pdf (or http://news.thomasnet.com/fullstory/Rooftop-Support system-is-made-of-recycled-rubber-453907 CP-SKU Prod 082212 DB-SKU Prod 082212 CP-SCM Prod 082212

Offered

Objections

Admitted

Witness

144

145 146 147 148 149 150 151 152 153 154 155 156 157 158 159 160 161 162 163 164 165 166 CL001062 CL002721 CL001192 CL001233 CL001265 CL001288 CL001333 CL001354 CL001385 CL001396 BL008231 L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs CL 001124 CL 00125

CL002724 CL001202 CL001243 CL001276 CL001299 CL001353 CL001374 CL001395 CL001406 BL008237

5.20.08 10.24.08 12.24.08 2.23.09 9.27.10 10.19.10 11.22.10 12.1.10 7.12.07

167

L Prescott Docs

168

L Prescott Docs

169 170 171

L Prescott Docs L Prescott Docs L Prescott Docs

Page 6 of 16

Case 4:11-cv-01420 Document 128-1 Filed in TXSD on 09/24/12 Page 7 of 8
Exhibit #
172 173 174 175

Depo Ex. No.
L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs

Bates Beginning

Bates End

Exhibit Date

Exhibit Description
DB--SCM Prod 082212 TLCOMCON Fed Data U33HVS Lieberman M. and D. Montgomery, 'First-mover advantages', Strategic Management Journal, Volume 9, Special Issue: Strategy Content Report, Summer 1988. @ http://www.anderson.ucla.edu/faculty/marvin.lieberman/publ ications/FMA 1-SMJ1988.pdf

Offered

Objections

Admitted

Witness

176 177 178 179 180 181 182 183 184 185 186 187 188 189

L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs L Prescott Docs

BL 001190 CL 000047 CL 000077 CL 000313 CL 00374 CL 00550 CL 001073 CL 001077 DASH 001494 DASH 001435 DASH 001629 DASH 1507 DASH 1495 DASH 1642 CL 000411 CL 000048 CL 000092

DuraBlok Rooftop Support System Launch Kit Cross Reference & List Prices C-Port Brochure Dura-Blok brochure BRTS-08 Cooper Pricing and shipping amounts spreadsheet Sales Report by Customer Detail Code from webpage Brochure with product information and size detailing HC 2007 - 2008 P&L B RB Rubber Products, Inc. - Sales History by Location E-mails produced by RB Rubber Products RB Rubber Products, Inc. - Sales History by Location DB Summary - EXA and Sales by SKU-EXB Produced 12.22.11 Annual Report for Cooper Industries plc (NYSE:CBE) Base Supports from RTS Rooftop support Systems available at http://www.rooftopsupportsystems.com/bases.htm Cooper D-B Rooftop Support Pages - taken from Cooper web site Cooper D-B Rooftop support Standalone - taken from Cooper website Cooper Entire Catalog - taken from Cooper website Cooper Rooftop Walkways Flyer - taken from Cooper website C-port_spec_sheets_2011 TESS Trademark Status sn78748394 The AHR News, July 18, 2005 at http://www.achrnews.com/articles/print/100029 US Trademark Law - Rules of Practice and Federal Statutes USPTO
Page 7 of 16

190 191 192 193 194 195 196 197

Case 4:11-cv-01420 Document 128-1 Filed in TXSD on 09/24/12 Page 8 of 8
Exhibit #
198 199 200 201 202 203 204 205 206 207 208 209 210 211 212 213 214 215 216 217 218 219 220

Depo Ex. No.
Krovats Depo Exhibit Krovats Depo Exhibit Krovats Depo Exhibit Krovats Depo Exhibit Krovats Depo Exhibit Krovats Depo Exhibit Krovats Depo Exhibit Krovats Depo Exhibit Krovats Depo Exhibit Krovats Depo Exhibit Krovats Depo Exhibit Krovats Depo Exhibit Krovats Depo Exhibit Krovats Depo Exhibit p Krovats Depo Exhibit Krovats Depo Exhibit Krovats Depo Exhibit Krovats Depo Exhibit Krovats Depo Exhibit Krovats Depo Exhibit Krovats Depo Exhibit Krovats Depo Exhibit Krovats Depo Exhibit

Bates Beginning

Bates End

Exhibit Date

Exhibit Description
Marketing material from B-Line regarding C-Port Rooftop Support Solution C-Port specification sheets for various products Marketing material regarding legrand Cablofil rooftop support systems Marketing material from B-Line regarding Dura-Blok Advanced Support Products, Inc.'s Specification Sheet for REC (Rubber EcoCurb) Specification sheet for RTA KeyCurb Pipe Supports Specification sheet for Rooftop Sleeper Support Specification sheet for OMG PipeGuard Rooftop Pipe Supports Info on OMG PipeGuard Rooftop Pipe Supports - Safe for all roof membranes Information and specifications for Caddy Pyramid Pipe & Equipment Supports

Offered

Objections

Admitted

Witness

Specification sheet from RoofTooper Rooftop Supports
Specification sheet from Tremco Rubber Triangle Pipe Blocks Airtec - Equipment Mounting Catalog Specification sheet from DiversiTech - HEF-T Support Systems Technical Data Sheet from DiversiTech - Hef-T-Foot Unistrut Catalog for Rooftop Pipe Support Systems Specification sheet from Big Foot Systems on Fix-it Foot product Specification sheet on Airtec Condenser Support Bracket from Rectorseal Clearline Technologies, Inc. Year End Report Accountant's Copy Clearline Technologies, Inc. Financial Statements Clearline Technologies, Inc. Financial Statements Clearline Technologies, Inc. Financial Statements E-mail from Tom Derrett to Neil Krovats attaching C-Port C'07 Planning Jan 15, '07.ppt; ClearlingCritical Path Nov 6 '06

2011

CL 000782 CL 000805 CL 000815 CL 000825

CL 000785 CL 000814 CL 000824 CL 000835

7.31.05 7.31.07 7.31.08 7.31.09 1.15.07

Page 8 of 16

Case 4:11-cv-01420 Document 128-2 Filed in TXSD on 09/24/12 Page 1 of 7

Exhibit 4-B IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF TEXAS

CLEARLINE TECHNOLOGIES LTD. Plaintiff, v. COOPER B-LINE, INC. Defendants.

§ § § § § § § § §

No. 4:11-cv-1420 Judge Keith P. Ellison

DEFENDANTS’ COOPER B-LINE’S EXHIBIT LIST

NO.
1

DESCRIPTION
February 11, 2004 E-mail between Mark McRae and Neil Krovats re “Cooper BLine Rooftop Specification” with CSI CPort Rooftop spec 2-04.doc attached February 2004 E-Mail string between Mark McRae, Neil Krovats, and Bill Lampen re “Cooper B-Line Rooftop Specification” February 2004 E-mail string between Robert Crain, Mark McRae, Bill Lampen, and Neil Krovats re “Cooper BLine Rooftop Specification” February 2004 Email string between Neil Krovats and Mark McRae re “Cooper BLine Rooftop Specification” April 11, 2006 Meeting Notice Meeting Notes from TMVP Meeting CPort 6/28 Clearline Technologies – Main Plan The Project Gallery Presentation CBL58HighlandRice: C-Port Rooftop Mount Lead Time Reduction Presentation September 13, 2006 E-Mail String between Joe Pace, Chris Peeler and Jason Cook re “Shipping expectations”

OFFERED

ADMITTED OBJECTIONS

2

3

4

5 6 7 8 9

10

Case 4:11-cv-01420 Document 128-2 Filed in TXSD on 09/24/12 Page 2 of 7

NO.
11

DESCRIPTION
September 2006 E-Mail String between Greg Libbrecht, Neil Krovats, and Chris Peeler re “Mini-Port/Airport” October 2006 E-Mail String between Lori Hager (customerservice@clearline.ca) and Jeffrey Dodd re “building for the week” October 24, 2006 E-Mail string between Greg Libbrecht, Chris Peeler, Joe Pace, and Jeffrey Dodd re “C-Port Backlog” November 2006 E-Mail String between Tom Derrett and Chris Peeler re “AirPort and Mini-Port Follow Up” November 22, 2006 E-Mail between Tom Derrett, Chris Peeler, Greg Libbrecht, and Neil Krovats re “Letter to your sales staff” with letter attached January 15, 2007 E-mail between Tom Derrett and Neil Krovats with Clearline 2007 Sales Plan attached February 26, 2007 E-Mail String between Jeffrey Dodd and Chris Peeler re “Production Planning” February 27, 2007 E-Mail String between Tom Derrett and Neil Krovats April 2, 2007 E-Mail String between Tom Derrett and Chris Peeler re “C-Port” April 25, 2007 E-Mail String between Neil Krovats and Tom Derrett re “Clearline-Cooper call” C-Port Blog May 29, 2007 E-Mail String between Joe Pace and Greg Libbrecht re “OPEN ORDER REPORT CLEARLINE” May 29, 2007 E-Mail String between Connie Winkeler, Andy Tebbe, Chris Peeler, Ken Kampwerth, David Cibula, and Joe Pace re “C10’s” May 29, 2007 E-Mail String between Joe Pace and Greg Libbrecht re “OPEN ORDER REPORT CLEARLINE” June 8, 2007 E-Mail between Gerald Hogen, Joe Pace, and Chris Peeler re “Copy of CL open orders 6 4 2007” with spreadsheet attached June 20, 2007 E-Mail between Joe Pace, Greg Libbrecht, Gerald Hogan, Chris 2

OFFERED

ADMITTED OBJECTIONS

12

13

14

15

16

17

18 19 20

21 22

23

24

25

26

Case 4:11-cv-01420 Document 128-2 Filed in TXSD on 09/24/12 Page 3 of 7

NO.

DESCRIPTION
Peeler, Jason Cook, and Connie Winkeler re “Clearline hot list” with spreadsheet attached June 27, 2007 E-Mail from Tom Derrett to Neil Krovats re “Cooper Issues” June 2007 E-Mail String between Tom Derrett and Chris Peeler re “Service issues” July 2007 E-Mail String between Joe Pace, Chris Peeler, David Cibula, and Connie Winkeler re “C-Port Price Increase” July 9, 2007 E-Mail String between Dave Rice and Chris Peeler re “Clearline’s Contact Info” July 10, 2007 E-Mail between Joe Pace, Gerald Hogan, Connie Winkeler, and Chris Peeler re “C10 Status” July 10, 2007 E-Mail between Greg Libbrecht, Joe Pace, Gerald Hogan, Chris Peeler, and Connie Winkeler re “C10 Status” July 2007 E-Mail String between Joe Pace and Chris Peeler re “Next 3 Months” August 2, 2007 E-Mail between Joe Pace, Gerald Hogan, Connie Winkeler, and Chris Peeler re “CBL Past due HOT list” August 9, 2007 5:02 AM E-Mail between Greg Libbrecht, Joe Pace, Gerald Hogan, Chris Peeler, and Connie Winkeler re “Clearline Aug 9 Shipment Schedule.xls” August 9, 2007 1:29 PM E-Mail between Greg Libbrecht, Joe Pace, Gerald Hogan, Chris Peeler, and Connie Winkeler re “Clearline Aug 9 Shipment Schedule.xls” August 2007 E-Mail String between Joe Pace, Greg Libbrecht, Gerald Hogan, Connie Winkeler, Chris Peeler, and Jason Cook re “Clearline Aug 9 Shipment Schedule.xls” August 13, 2007 E-Mail between Joe Pace, Gerald Hogan, Connie Winkeler, 3

OFFERED

ADMITTED OBJECTIONS

27 28

29

30

31

32

33

34

35

36

37

38

Case 4:11-cv-01420 Document 128-2 Filed in TXSD on 09/24/12 Page 4 of 7

NO.
39

DESCRIPTION
and Chris Peeler re “Open order update” August 14, 2007 E-Mail between Greg Libbrecht, Joe Pace, Chris Peeler, and Gerald Hogan re “Production Output” August 14 & 15, 2007 E-Mail String between Chris Peeler and Lori Hager re “Call” August 15, 2007 E-Mail String between Jason Cook, Joe Pace, Gerald Hogan, Connie Winkeler, and Chris Peeler re “Clearline past due” August 17, 2007 E-Mail String between Joe Pace and Chris Peeler re “Shipment Friday Aug 17” August 23, 2007 E-Mail String between Greg Libbrecht, Joe Pace, Gerald Hogan Jason Cook, and Chris Peeler re “Production scheduling to CBL requirements” August 30, 2007 E-Mail String between Jerry Masterson, Paul Pinnacle, Chris Peeler, Andy Tebbe re “C10/C20/CXP” September 2007 E-Mail String between Gerald Hogan, Joe Pace, Greg Libbrecht, Connie Winkeler, and Chris Peeler re “This week’s shipments” September 2007 E-Mail String between Joe Pace, Jason Cook, and Chris Peeler re “This week’s shipments” September 2007 E-Mail String between Greg Libbrecht, Joe Pace, Gerald Hogan, Connie Winkeler, Neil Krovats, Jason Cook and Chris Peeler re “Updates???” September 18, 2007 E-Mail String between Joe Pace, Gerald Hogan, Connie Winkeler, Greg Libbrecht, and Chris Peeler re “Shipped Friday Sept 14” September 21, 2007 E-Mail between Joe Pace, Gerald Hogan, Connie Winkeler, and Chris Peeler re “CL Shipping schedule for today” September 26, 2007 E-Mail String between Chris Peeler, Dave Rice, and Gary Griesbaum re “rb rubber” October 23, 2007 E-Mail String between Dave Rice and Chris Peeler re “3M 4

OFFERED

ADMITTED OBJECTIONS

40

41

42

43

44

45

46

47

48

49

50

51

Case 4:11-cv-01420 Document 128-2 Filed in TXSD on 09/24/12 Page 5 of 7

NO.
52

DESCRIPTION
reflective tape” October 23, 2007 E-Mail String between Don Overturf, Chris Peeler, and Dave Rice re “3M reflective tape” October 31, 2007 E-Mail String between Joe Pace, Gerald Hogan, Connie Winkeler, Greg Libbrecht, and Chris Peeler re “Shipped Tuesday Oct 30” November 2, 2007 E-Mail String between Joe Pace, Gerald Hogan, Chris Peeler, Connie Winkeler, and Jason cook re “Shipped Tuesday Oct 30” November 21, 2007 Meeting Notice Dura-Blok Drawing Dura-Blok Drawing November 29, 2007 E-Mail String between Chris Peeler, Dave Rice, and Gary Griesbaum re “meeting notes” January 2008 E-Mail String between Joe Pace, Jason Cook and Chris Peeler re “Shipped Friday, Jan 4” January 2008 E-Mail String between Joe Pace and Chris Peeler re “Shipped Friday, Jan 4” January 15, 2008 E-Mail String between Ed Caperton, Chris Peeler, Dave Rice, and Andy Kamm re “test for tape to stick to block” Dura-Blok New Product Selling Summary February 28, 2008 E-Mail String between John Scime, George Dowse, and Chris Peeler re “Dura Blok” May 1, 2008 E-Mail between Mike Swiney and Chris Peeler re “Dura-Blok (BRTS-08) – Website" May 2008 E-Mail String between Mike Swiney, Chris Peeler, John Bursich, Rob Smith, and Martin Witherbee re “DuraBlok (BRTS-08) – Website” May 2008 E-Mail String between Mike Swiney, Chris Peeler, and John Bursich re “Dura-Blok (BRTS-08) – Website" May 15, 2008 E-Mail String between Tom Fox and Chris Peeler re “Introducing Cooper B-Line’s Dura-Blok 5

OFFERED

ADMITTED OBJECTIONS

53

54

55 56 57 58

59

60

61

62 63

64

65

66

67

Case 4:11-cv-01420 Document 128-2 Filed in TXSD on 09/24/12 Page 6 of 7

NO.
68 69

DESCRIPTION
Rooftop Support System” Dura-Blok Introduction Memo May 2008 E-Mail String between B-Line U.S. and Chris Peeler re “Introducing Cooper B-Line’s Dura-Blok Rooftop Support System” December 8, 2008 MiFab Letter June 4, 2008 E-Mail between Tammy Antonille, Chris Pickard, and Chris Peeler re “C-Port to Dura-Blok” November 4, 2009 E-Mail from Michael Whiteside to Neil Krovats re “B-Line Case” November 2009 E-mail String between MaryAnn Pasick, Chris Peeler, and Margie Doll re “Emailing:sendbinary” February 2011 E-Mail String between Jason Cook, Chris Peeler, and Margie Doll re “Roofing company description” November 23, 2010 Email from Margie Doll to Jason Cook re “DURA-BLOK Brand Website Page-Verbiage review” November 23, 2010 Email from Margie Doll to Jason Cook re “DURA-BLOK Brand Website Page-Verbiage review” November 23, 2010 Email from Jason Cook to Margie Doll re “DURA-BLOK Brand Website Page-Verbiage review” November 23, 2010 Email from Jason Cook to Margie Doll re “DURA-BLOK Brand Website Page-Verbiage review” Image of B-Line Rooftop Support B-Line C-Port Rooftop Supports presentation Cooper B-Line C-Port Brochure BRTS03 C-Port Brochure – Mars Cooper B-Line C-Port Brochure BRTS03R Cooper B-Line C-Port Brochure BRTS04 Cooper B-Line C-Port Brochure BRTS04R EC&M Article Cooper B-Line C-Port Brochure BRTS6

OFFERED

ADMITTED OBJECTIONS

70 71

72

73

74

75

76

77

78

79 80 81 82 83 84 85 86 87

Case 4:11-cv-01420 Document 128-2 Filed in TXSD on 09/24/12 Page 7 of 7

NO.
88 89 90 91 92 93 94 95 96 97 98 99 100 101 102 103 104 105 106 107 108 109 110 111 112 113 114 115 116 117 118 119 120 121 122

DESCRIPTION
07 Cooper B-Line C-Port Brochure BRTS07 Dura-Blok Brochure BRTS-08 Dura-Blok Brochure BRTS-08 Dura-Blok Brochure Dura-Blok Brochure C-Port Brochure C-Port Spec Sheets MiFab C-Port Brochure – August 3, 2009 MiFab C-Port Brochure 2011 C-Port – MiFab Presentation Haydon C-Port Brochure Haydon H-Block Brochure – July 2012 LeGrand/Cablofil Brochure LeGrand/Cablofil Brochure LeGrand/Cablofil Brochure GNR Brochure GNR Home Park It Brochure GNR Park-It Brochure GNR Parking Lot Safety Solutions Brochure 3M Online Product Catalog RoofTop Accessories Brochure KeyCurb Spec Sheets Advanced Support Products Spec Sheets PipeGuard Brochure RoofTopper Brochure Rooftop Sleeper Support Brochure Fix-It Foot Brochure Hef-T-Foot Brochure Erico Caddy Brochure Dura-Blok Web Page Screen Keyword Search Report Keyword Search Report Keyword Search Report Keyword Search Report Keyword Search Report

OFFERED

ADMITTED OBJECTIONS

Cooper B-Line reserves the right to identify any additional exhibits as necessary and permitted by all applicable authority.

7

Case 4:11-cv-01420 Document 128-3 Filed in TXSD on 09/24/12 Page 1 of 1

EXHIBIT 5A

Plaintiff’s Trial Witness List Burgreen, James Crain, Bob Krovats, Neil Moeller, Lindsey Peeler, Chris Price, Alan Rice, Dave Swiney, Mike Wright, Tony Prescott, Laurance Ph.D. Turner, Robert Cunningham, M. Ross Katz, Robert Washburn, Rodney Hilton, Vernon

Case 4:11-cv-01420 Document 128-4 Filed in TXSD on 09/24/12 Page 1 of 2

EXHIBIT 5B IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF TEXAS CLEARLINE TECHNOLOGIES LTD. Plaintiff, v. COOPER B-LINE, INC. COOPER INDUSTRIES PLC, and COOPER TECHNOLOGIES COMPANY, Defendants. § § § § § § § § § § §

No. 4:11-cv-1420 JURY DEMANDED

DEFENDANT COOPER B-LINE’S WITNESS LIST

The witnesses that Cooper B-Line expects to call at trial: Brent K. Bersin James Burgreen Jason Cook Robert Crain Margie Doll Juan Manuel Herrera, Ph.D., P.E. Chris Peeler Alan Price David Rice Mike Swiney

Case 4:11-cv-01420 Document 128-4 Filed in TXSD on 09/24/12 Page 2 of 2

The witnesses that Cooper B-Line may call at trial if the need arises: Eric Augustin Mitchell C. Chaney Robin L. Harrison John L. Dagley Larry Lane Don Overturf Joe Pace Rodney Washburn Connie Winkeler In the event that there are any other witnesses to be called at the trial, their names, addresses, and the subject matter of their testimony shall be reported to opposing counsel as soon as they are known. This restriction shall not apply to rebuttal or impeaching witnesses, the necessity of whose testimony cannot reasonably be anticipated before the time of trial.

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EXHIBIT 5C CLEARLINE'S DEPOSITION DESIGNATIONS Witness: James Burgreen Date of Deposition: 4.25.12 INITIAL DESIGNATIONS End Page End Notes; Objection Line partial s line designati ons 5 3 7 8 13 22 14 16 24 25 25 24 27 17 32 1 36 6 42 25 70 15 COUNTER-DESIGNATIONS Begin End Page End Notes: Objection Line Line partial s line designati ons REBUTTAL DESIGNATIONS Begin End Page End Line Line

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Witness: Robert Crain Date of Deposition: 4.24.12 INITIAL DESIGNATIONS End Page End Notes; Objection Line partial s line designati ons 5 18 8 5 9 9 13 10 15 6 19 12 23 8 34 15 35 7 36 9 36 21 39 19 42 12 42 23 43 18 45 19 46 13 48 4 50 17 51 21 52 25 55 5 56 22 63 10 65 7 66 15 67 22 68 23 70 3 COUNTER-DESIGNATIONS Begin End Page End Notes: Objection Line Line partial s line designati ons REBUTTAL DESIGNATIONS Begin End Page End Line Line

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Witness: Chris Peeler Date of Deposition: 4.12.12 INITIAL DESIGNATIONS End End Notes; Page Line partial line designations 1 9 9 13 14 6 44 12 46 18 48 6 49 4 64 2 66 4 67 21 69 2 71 10 75 14 79 16 82 18 85 21 86 18 123 23 129 22 131 2 132 7 133 21 137 5 142 4 143 21 146 4 147 5 148 13 149 16 153 10 156 15 157 21 160 17 165 21 167 2 170 9 185 20 182 17 186 4 193 17 193 17 197 11 208 23 COUNTER-DESIGNATIONS End End Notes: Page Line partial line designations REBUTTAL DESIGNATIONS Begin End End Notes: Line Page Line partial line designations

Begin Page 1 8 13 42 46 47 48 60 65 66 68 69 75 76 79 82 86 122 129 130 131 132 136 137 143 145 146 147 149 150 154 157 158 164 166 168 180 182 183 187 192 194 206

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Witness: Chris Peeler Date of Deposition: 4.12.12 INITIAL DESIGNATIONS End End Notes; Page Line partial line designations 210 8 210 21 211 21 213 8 215 11 218 18 223 13 224 18 225 22 227 25 230 6 232 8 233 12 234 21 235 16 236 14 239 1 240 13 242 14 246 23 248 2 249 19 253 13 255 8 257 18 258 8 260 7 273 18 277 19 278 18 282 3 285 16 287 4 291 14 295 2 296 14 299 19 301 3 304 1 311 2 312 17 314 25 323 24 COUNTER-DESIGNATIONS End End Notes: Page Line partial line designations REBUTTAL DESIGNATIONS Begin End End Notes: Line Page Line partial line designations

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Witness: Chris Peeler Date of Deposition: 4.12.12 INITIAL DESIGNATIONS End End Notes; Page Line partial line designations 327 2 351 12 352 10 COUNTER-DESIGNATIONS End End Notes: Page Line partial line designations REBUTTAL DESIGNATIONS Begin End End Notes: Line Page Line partial line designations

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Witness: Alan Price Date of Deposition: 2.3.12 INITIAL DESIGNATIONS End End Notes; Page Line partial line designations 5 11 11 17 12 12 13 11 14 25 16 7 18 17 20 22 21 21 23 3 24 6 25 16 27 11 31 2 32 19 34 5 35 2 51 11 73 21 107 16 111 6 COUNTER-DESIGNATIONS End End Notes: Page Line partial line designations REBUTTAL DESIGNATIONS Begin End End Notes: Line Page Line partial line designations

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Witness: David Rice Date of Deposition: 4.11.12 INITIAL DESIGNATIONS End End Notes; Page Line partial line designations 6 13 8 8 12 6 13 21 15 21 17 4 21 7 22 5 26 1 32 19 36 22 38 21 43 8 44 15 47 24 50 10 51 18 61 9 62 12 63 8 64 20 68 19 69 18 82 13 84 12 85 7 87 18 88 21 88 23 90 24 92 5 99 17 103 4 105 1 109 25 113 15 120 6 120 23 122 15 135 11 139 16 140 13 148 2 COUNTER-DESIGNATIONS End End Notes: Page Line partial line designations REBUTTAL DESIGNATIONS Begin End End Notes: Line Page Line partial line designations

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Witness: David Rice Date of Deposition: 4.11.12 INITIAL DESIGNATIONS End End Notes; Page Line partial line designations 149 2 150 5 152 16 154 20 155 19 157 6 159 4 159 24 161 7 165 19 167 17 172 6 183 17 184 24 186 22 189 22 192 18 193 11 199 24 200 17 201 23 202 14 203 20 205 22 206 16 207 24 209 8 214 5 215 10 218 2 221 11 222 25 223 17 226 25 231 7 238 17 242 21 243 14 243 25 246 17 248 7 250 24 251 25 COUNTER-DESIGNATIONS End End Notes: Page Line partial line designations REBUTTAL DESIGNATIONS Begin End End Notes: Line Page Line partial line designations

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Witness: David Rice Date of Deposition: 4.11.12 INITIAL DESIGNATIONS End End Notes; Page Line partial line designations 253 13 255 4 257 6 COUNTER-DESIGNATIONS End End Notes: Page Line partial line designations REBUTTAL DESIGNATIONS Begin End End Notes: Line Page Line partial line designations

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Witness: Michael Swiney Date of Deposition: 4.24.12 INITIAL DESIGNATIONS End End Notes; Page Line partial line designations 7 3 8 11 9 9 9 25 20 24 22 21 24 20 30 10 31 1 32 20 33 11 35 24 39 23 44 12 47 9 48 13 55 23 61 24 77 6 78 12 79 18 80 22 83 25 94 21 95 10 95 25 97 10 98 4 102 19 105 19 107 6 126 13 128 6 132 9 136 7 COUNTER-DESIGNATIONS End End Notes: Page Line partial line designations REBUTTAL DESIGNATIONS Begin End End Notes: Line Page Line partial line designations

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Case 4:11-cv-01420 Document 128-6 Filed in TXSD on 09/24/12 Page 1 of 3

EXHIBIT 5D IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF TEXAS CLEARLINE TECHNOLOGIES LTD. Plaintiff, v. COOPER B-LINE, INC. COOPER INDUSTRIES PLC, and COOPER TECHNOLOGIES COMPANY, Defendants. § § § § § § § § § § §

No. 4:11-cv-1420 JURY DEMANDED

DEFENDANT COOPER B-LINE’S DEPOSITION DESIGNATIONS ROBERT M. CRAIN START Page 5, Line 17 Page 7, Line 17 Page 8, Line 20 Page 9, Line 8 Page 10, Line 9 Page 11, Line 10 Page 15, Line 2 Page 18, Line 3 Page 19, Line 13 Page 20, Line 10 Page 23, Line 1 Page 23, Line 13 Page 24, Line 14 Page 25, Line 19 Page 26, Line 23 Page 29, Line 24 Page 30, Line 21 Page 31, Line 12 Page 31, Line 20 Page 32, Line 3 Page 36, Line 10 Page 46, Line 14 STOP Page 5, Line 18 Page 8, Line 13 Page 8, Line 21 Page 9, Line 13 Page 11, Line 2 Page 11, Line 14 Page 15, Line 13 Page 18, Line 8 Page 19, Line 18 Page 20, Line 13 Page 23, Line 4 Page 24, Line 9 Page 25, Line 15 Page 26, Line 12 Page 29, Line 7 Page 30, Line 15 Page 31, Line 9 Page 31, Line 16 Page 31, Line 23 Page 33, Line 11 Page 37, Line 9 Page 47, Line 3

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Page 47, Line 15 Page 66, Line 9 Page 68, Line 24

Page 47, Line 21 Page 68, Line 9 Page 69, Line 2 DAVE RICE

START Page 7, Line 19 Page 10, Line 6 Page 13, Line 8 Page 18, Line 20 Page 27, Line 13 Page 37, Line 6 Page 72, Line 18 Page 78, Line 3 Page 79, Line 7 Page 112, Line 24 Page 118, Line 8 Page 119, Line 4 Page 159, Line 14 Page 160, Line 7 Page 178, Line 22 Page 180, Line 14 Page 181, Line 13 Page 185, Line 5 Page 191, Line 12 Page 212, Line 22 Page 216, Line 17 Page 226, Line 7 Page 227, Line 12 Page 228, Line 12 Page 229, Line 23

STOP Page 8, Line 8 Page 10, Line 10 Page 13, Line 21 Page 19, Line 12 Page 28, Line 1 Page 37, Line 9 Page 73, Line 10 Page 73, Line 9 Page 79, Line 25 Page 113, Line 15 Page 119, Line 1 Page 119, Line 21 Page 159, Line 18 Page 159, Line 14 Page 179, Line 24 Page 181, Line 4 Page 181, Line 25 Page 186, Line 8 Page 191, Line 19 Page 214, Line 9 Page 216, Line 25 Page 227, Line 6 Page 227, Line 20 Page 229, Line 5 Page 230, Line 6 ALAN PRICE

START Page 5, Line 6 Page 10, Line 5 Page 10, Line 22 Page 11, Line 8 Page 15, Line 11 Page 16, Line 18 Page 16, Line 25

STOP Page 5, Line 11 Page 10, Line 7 Page 11Line, 1 Page 14, Line 18 Page 15, Line 16 Page 16, Line 21 Page 17, Line 9

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Page 17, Line 20 Page 19, Line 8 Page 21, Line 17 Page 22, Line 17 Page 24, Line 7 Page 24, Line 25 Page 27, Line 16 Page 29, Line 1 Page 30, Line 4 Page 34, Line 6 Page 35, Line 24 Page 59, Line 15 Page 60, Line 12 Page 62, Line 13 Page 65, Line 21 Page 72, Line 11 Page 74, Line 21 Page 78, Line 11 Page 80, Line 22 Page 82, Line 2 Page 84, Line 17 Page 87, Line 18 Page 90, Line 8 Page 92, Line 4 Page 96, Line 8 Page 97, Line 23 Page 100, Line 3 Page 102, Line 5

Page 18, Line 14 Page 20, Line 12 Page 22, Line 2 Page 23, Line 14 Page 24, Line 10 Page 25, Line 16 Page 28, Line 22 Page 29, Line 19 Page 30, Line 16 Page 34, Line 21 Page 36, Line 10 Page 60, Line 3 Page 61, Line 10 Page 63, Line 6 Page 67, Line 16 Page 73, Line 21 Page 77, Line 15 Page 79, Line 24 Show Ex. 4 Page 81, Line 12 Page 82, Line 5 Page 86, Line 25 Page 88, Line 15 Page 91, Line 6 Page 93, Line 23 Show Exs. 5&6 Page 96, Line 19 Page 99, Line 8 Page 101, Line 14 Page 103, Line 21

Cooper B-Line reserves the right to make cross-designations and any additional designations as necessary and permitted by all applicable authority.

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EXHIBIT 7 IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF TEXAS HOUSTON DIVISION CLEARLINE TECHNOLOGIES LTD., Plaintiff, v. COOPER B-LINE, INC., ET AL., Defendants. § § § § § § § § § §

CIVIL ACTION NO. 4:11-CV-1420

PLAINTIFF’S AND DEFENDANT’S JOINT PROPOSED JURY INSTRUCTIONS AND SPECIAL VERDICT FORM Plaintiff Clearline Technologies Ltd. (“Clearline”) and Defendant Cooper B-Line, Inc. submit these Joint Proposed Jury Instructions and Special Verdict form.1 Pursuant to the Court’s Procedures, those parts that the parties cannot agree upon will be submitted separately. The parties reserve the right to supplement, amend, or withdraw any submission based on the evidence presented at trial, and to object to any submission.

1

See Procedures of Judge Keith P. Ellison at 7–8.

JOINT PROPOSED JURY INSTRUCTIONS AND QUESTIONS

1

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GENERAL INSTRUCTIONS Introduction2 Members of the Jury, you have heard the evidence in this case. I will now instruct you on the law that you must apply. It is your duty to follow the law as I give it to you. On the other hand, you, the jury, are the judges of the facts. Do not consider any statement that I have made in the course of trial or make in these instructions as an indication that I have any opinion about the facts of this case. After I instruct you on the law, the attorneys will have an opportunity to make their closing arguments. Statements and arguments of the attorneys are not evidence and are not instructions on the law. They are intended only to assist the jury in understanding the evidence and the parties’ contentions. Answer each question from the facts as you find them. Do not decide who you think should win and then answer the questions accordingly. Do not let bias, prejudice, or sympathy play any part in your deliberations. Your answers and your verdict must be unanimous. Burden of Proof3 You must answer all questions from a preponderance of the evidence. By this is meant the greater weight and degree of credible evidence before you. In other words, a preponderance of the evidence just means the amount of evidence that persuades you that a claim is more likely so than not so. In determining whether any fact has been proved by a preponderance of the evidence in this case, you may, unless otherwise instructed, consider the testimony of all witnesses, regardless of who may have called them, and all exhibits received in evidence, regardless of who may have produced them. Witness Testimony4 In determining the weight to give to the testimony of a witness, you should ask yourself whether there was evidence tending to prove that the witness testified falsely concerning some important fact, or whether there was evidence that at some other time the witness said or did something, or failed to say or do something, that was different from the testimony the witness gave before you during the trial. You should keep in mind, of course, that a simple mistake by a witness does not necessarily mean that the witness was not telling the truth as he or she remembers it, because people may forget some things or remember other things inaccurately. So, if a witness has made a misstatement, you need to consider whether that misstatement was an intentional falsehood or

2

Authorities: Fifth Circuit Pattern Jury Instructions – Civil, 3.1. Authorities: Fifth Circuit Pattern Jury Instructions – Civil, 3.1. 4 Authorities: Fifth Circuit Pattern Jury Instructions – Civil, 3.1.
3

JOINT PROPOSED JURY INSTRUCTIONS AND QUESTIONS

2

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simply an innocent lapse of memory; and the significance of that may depend on whether it has to do with an important fact or with only an unimportant detail. Evidence5 While you should consider only the evidence in this case, you are permitted to draw such reasonable inferences from the testimony and exhibits as you feel are justified in the light of common experience. In other words, you may make deductions and reach conclusions that reason and common sense lead you to draw from the facts that have been established by the testimony and evidence in the case. The testimony of a single witness may be sufficient to prove any fact, even if a greater number of witnesses may have testified to the contrary, if after considering all the other evidence you believe that single witness. There are two types of evidence that you may consider in properly finding the truth as to the facts in the case. One is direct evidence – such as testimony of an eyewitness. The other is indirect or circumstantial evidence – the proof of a chain of circumstances that indicates the existence or nonexistence of certain other facts. As a general rule, the law makes no distinction between direct and circumstantial evidence, but simply requires that you find the facts from a preponderance of all the evidence, both direct and circumstantial. Expert Witnesses6 When knowledge of technical subject matter may be helpful to the jury, a person who has special training or experience in that technical field – he is called an expert witness – is permitted to state his opinion on those technical matters. However, you are not required to accept that opinion. As with any other witness, it is up to you to decide whether to rely upon it. In deciding whether to accept or rely upon the opinion of an expert witness, you may consider any bias of the witness, including any bias you may infer from evidence that the expert witness has been or will be paid for reviewing the case and testifying, or from evidence that he testifies regularly as an expert witness and his income from such testimony represents a significant portion of his income. Deposition Testimony7 During the course of trial, certain testimony was presented to you through deposition. A deposition is the sworn, recorded answers to questions asked a witness in advance of the trial. Under some circumstances, if a witness cannot be present to testify from the witness stand, that witness' testimony may be presented, under oath, in the form of a deposition. Some time before this trial, attorneys representing the parties in this case questioned this witness under oath. A
5

Authorities: Fifth Circuit Pattern Jury Instructions – Civil, 3.1. Authorities: Fifth Circuit Pattern Jury Instructions – Civil, 2.19, 3.1. 7 Authorities: Fifth Circuit Pattern Jury Instructions—Civil, 2.23 (modified).
6

JOINT PROPOSED JURY INSTRUCTIONS AND QUESTIONS

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court reporter was present and recorded the testimony. This deposition testimony is entitled to the same consideration and is to be judged by you as to credibility and weighed and otherwise considered by you insofar as possible in the same way as if the witness had been present and had testified from the witness stand in court.

JOINT PROPOSED JURY INSTRUCTIONS AND QUESTIONS

4

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[The parties have not been able to agree at this time on certain of the proposed instructions. Pursuant to the Court’s procedures, Clearline and Cooper will submit a series of instructions by separate filings. Clearline’s proposed instructions include Proposed Instructions Nos. 1-14 in its submission, and Cooper’s proposed instructions will be in Parts II and III of its submission.]

JOINT PROPOSED JURY INSTRUCTIONS AND QUESTIONS

5

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[The Proposed Instruction No. 15 below is Part IV of Cooper’s submission, and the substance of this submission is agreed to by the parties.] PROPOSED INSTRUCTION NO. 15 INSTRUCTIONS FOR DELIBERATIONS These instructions are given to you as a whole, and you are not to single out one instruction alone as stating the law, but must consider the instructions as a whole. You have heard all of the evidence in the case and you have heard the argument of counsel. You must perform your duties as jurors without bias or prejudice as to any party. The law does not permit you to be controlled by sympathy, prejudice, or public opinion. All parties expect that you will carefully and impartially consider all the evidence, follow the law as it is now being given to you, and reach a just verdict, regardless of the consequences. It is your sworn duty as jurors to discuss the case with one another in an effort to reach agreement if you can do so. Each of you must decide the case for yourself, but only after full consideration of the evidence with the other members of the jury. While you are discussing the case, do not hesitate to re-examine your own opinion and change your mind if you become convinced that you are wrong. However, do not give up your honest beliefs solely because the others think differently or merely to finish the case. Remember that in a very real way you are the judges—judges of the facts. Your only interest is to seek the truth from the evidence in the case. You should consider and decide this case as a dispute between persons of equal standing in the community, of equal worth, and holding the same or similar stations in life. A corporation is entitled to the same fair trial as a private individual. All persons, including corporations and other organizations, stand equal before the law and are to be treated as equals. When you retire to the jury room to deliberate on your verdict, you may take this charge with you as well as exhibits which the Court has admitted into evidence. Select your Foreperson and conduct your deliberations. If you recess during your deliberations, follow all of the instructions that the Court has given you regarding your conduct during the trial. After you have reached your unanimous verdict, your Foreperson is to fill in the form with your answers to the questions. Do not reveal your answers until such time as you are discharged, unless otherwise directed by me. You must never disclose to anyone, not even to me, your numerical division on any question. Any notes that you have taken during this trial are only aids to memory. If your memory should differ from your notes, then you should rely on your memory and not on the notes. The notes are not evidence. A juror who has not taken notes should rely on his or her independent recollection of the evidence and should not be unduly influenced by the notes of other jurors. Notes are not entitled to any greater weight than the recollection or impression of each juror about the testimony.

JOINT PROPOSED JURY INSTRUCTIONS AND QUESTIONS

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If you want to communicate with me at any time, please give a written message or question to the Court Security Officer, who will bring it to me. I will then respond as promptly as possible either in writing or by having you brought into the courtroom so that I can address you orally. I will always first disclose to the attorneys your question and my response before I answer your question. After you have reached a verdict, you are not required to talk with anyone about the case unless the Court orders otherwise. You may now retire to the jury room to deliberate.

JOINT PROPOSED JURY INSTRUCTIONS AND QUESTIONS

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SPECIAL VERDICT FORM [The jury questions on the special verdict form could not be agreed to by the parties, and will be addressed in separate submissions by Clearline and Cooper.]

JOINT PROPOSED JURY INSTRUCTIONS AND QUESTIONS

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Case 4:11-cv-01420 Document 128-8 Filed in TXSD on 09/24/12 Page 1 of 28

EXHIBIT 7aA IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF TEXAS HOUSTON DIVISION CLEARLINE TECHNOLOGIES LTD., Plaintiff, v. COOPER B-LINE, INC., ET AL., Defendants. § § § § § § § § § §

CIVIL ACTION NO. 4:11-CV-1420

PLAINTIFF’S PROPOSED JURY INSTRUCTIONS AND SPECIAL VERDICT FORM Plaintiff Clearline Technologies Ltd. (“Clearline”) submits these Proposed Jury Instructions and Special Verdict form.1 Clearline reserves the right to supplement, amend, or withdraw any submission based on the evidence presented at trial, and to object to any submission.

1

See Procedures of Judge Keith P. Ellison at 7–8.

PLAINTIFF CLEARLINE TECHNOLOGIES LTD.’S PROPOSED JURY INSTRUCTIONS AND QUESTIONS

1

Case 4:11-cv-01420 Document 128-8 Filed in TXSD on 09/24/12 Page 2 of 28

GENERAL INSTRUCTIONS Introduction2 Members of the Jury, you have heard the evidence in this case. I will now instruct you on the law that you must apply. It is your duty to follow the law as I give it to you. On the other hand, you, the jury, are the judges of the facts. Do not consider any statement that I have made in the course of trial or make in these instructions as an indication that I have any opinion about the facts of this case. After I instruct you on the law, the attorneys will have an opportunity to make their closing arguments. Statements and arguments of the attorneys are not evidence and are not instructions on the law. They are intended only to assist the jury in understanding the evidence and the parties’ contentions. Answer each question from the facts as you find them. Do not decide who you think should win and then answer the questions accordingly. Do not let bias, prejudice, or sympathy play any part in your deliberations. Your answers and your verdict must be unanimous. Burden of Proof3 You must answer all questions from a preponderance of the evidence. By this is meant the greater weight and degree of credible evidence before you. In other words, a preponderance of the evidence just means the amount of evidence that persuades you that a claim is more likely so than not so. In determining whether any fact has been proved by a preponderance of the evidence in this case, you may, unless otherwise instructed, consider the testimony of all witnesses, regardless of who may have called them, and all exhibits received in evidence, regardless of who may have produced them. Witness Testimony4 In determining the weight to give to the testimony of a witness, you should ask yourself whether there was evidence tending to prove that the witness testified falsely concerning some important fact, or whether there was evidence that at some other time the witness said or did something, or failed to say or do something, that was different from the testimony the witness gave before you during the trial. You should keep in mind, of course, that a simple mistake by a witness does not necessarily mean that the witness was not telling the truth as he or she remembers it, because people may forget some things or remember other things inaccurately. So, if a witness has made a misstatement, you need to consider whether that misstatement was an intentional falsehood or

2

Authorities: Fifth Circuit Pattern Jury Instructions – Civil, 3.1. Authorities: Fifth Circuit Pattern Jury Instructions – Civil, 3.1. 4 Authorities: Fifth Circuit Pattern Jury Instructions – Civil, 3.1.
3

PLAINTIFF CLEARLINE TECHNOLOGIES LTD.’S PROPOSED JURY INSTRUCTIONS AND QUESTIONS

2

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simply an innocent lapse of memory; and the significance of that may depend on whether it has to do with an important fact or with only an unimportant detail. Evidence5 While you should consider only the evidence in this case, you are permitted to draw such reasonable inferences from the testimony and exhibits as you feel are justified in the light of common experience. In other words, you may make deductions and reach conclusions that reason and common sense lead you to draw from the facts that have been established by the testimony and evidence in the case. The testimony of a single witness may be sufficient to prove any fact, even if a greater number of witnesses may have testified to the contrary, if after considering all the other evidence you believe that single witness. There are two types of evidence that you may consider in properly finding the truth as to the facts in the case. One is direct evidence – such as testimony of an eyewitness. The other is indirect or circumstantial evidence – the proof of a chain of circumstances that indicates the existence or nonexistence of certain other facts. As a general rule, the law makes no distinction between direct and circumstantial evidence, but simply requires that you find the facts from a preponderance of all the evidence, both direct and circumstantial. Expert Witnesses6 When knowledge of technical subject matter may be helpful to the jury, a person who has special training or experience in that technical field – he is called an expert witness – is permitted to state his opinion on those technical matters. However, you are not required to accept that opinion. As with any other witness, it is up to you to decide whether to rely upon it. In deciding whether to accept or rely upon the opinion of an expert witness, you may consider any bias of the witness, including any bias you may infer from evidence that the expert witness has been or will be paid for reviewing the case and testifying, or from evidence that he testifies regularly as an expert witness and his income from such testimony represents a significant portion of his income. Deposition Testimony7 During the course of trial, certain testimony was presented to you through deposition. A deposition is the sworn, recorded answers to questions asked a witness in advance of the trial. Under some circumstances, if a witness cannot be present to testify from the witness stand, that witness' testimony may be presented, under oath, in the form of a deposition. Some time before this trial, attorneys representing the parties in this case questioned this witness under oath. A
5

Authorities: Fifth Circuit Pattern Jury Instructions – Civil, 3.1. Authorities: Fifth Circuit Pattern Jury Instructions – Civil, 2.19, 3.1. 7 Authorities: Fifth Circuit Pattern Jury Instructions—Civil, 2.23 (modified).
6

PLAINTIFF CLEARLINE TECHNOLOGIES LTD.’S PROPOSED JURY INSTRUCTIONS AND QUESTIONS

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court reporter was present and recorded the testimony. This deposition testimony is entitled to the same consideration and is to be judged by you as to credibility and weighed and otherwise considered by you insofar as possible in the same way as if the witness had been present and had testified from the witness stand in court.

PLAINTIFF CLEARLINE TECHNOLOGIES LTD.’S PROPOSED JURY INSTRUCTIONS AND QUESTIONS

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[PROPOSED INSTRUCTION NO. 1 ELEMENTS OF FEDERAL TRADE DRESS INFRINGEMENT8 A trade dress is a type of trademark used by a person to identify his product, to distinguish his product from those manufactured or sold by others, and to indicate the source of his product. The term “trade dress” refers to the total image and overall appearance of a product and may include features such as the size, shape, color, color combinations, textures, graphics, and even sales techniques that characterize a particular product.9 Clearline asserts that the yellow stripe and yellow-on-black color scheme used on its CPort rooftop support products constitute protectable trade dress, and that Cooper infringed on that trade dress. To prevail on a claim for trade dress infringement, Clearline must first prove: (1) that the dress qualifies for protection; and (2) that the dress has been infringed.10

8

15. U.S.C. § 1125(a); TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 28-29 (2001); EppendorfNetheler-Hinz GMBH v. Ritter GMBH, 289 F.3d 351, 354-55 (5th Cir. 2002). Pebble Beach Co. v. Tour 18 I, LTD, 155 F.3d 526, 536 (5th Cir. 1998) (“With trade dress, the question is whether the "combination of features creates a distinctive visual impression, identifying the source of the product.") citing Sunbeam Prods., Inc. v. West Bend Co., 123 F.3d 246, 251 & n. 3 (5th Cir.1997), cert. denied, ___ U.S. ___, 118 S.Ct. 1795, 140 L.Ed.2d 936 (1998). Taco Cabana Int’l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1117-18 (5th Cir. 1991).

9

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PROPOSED INSTRUCTION NO. 2 FEDERAL TRADE DRESS INFRINGEMENT ELEMENT ONE—TRADE DRESS PROTECTION To qualify for protection, the features of the claimed trade dress must stratify two requirements: (1) (2) the features of the trade dress cannot be functional; and the features of the trade dress must be distinctive through acquired secondary meaning.

Functionality:11 A product feature is functional where it is essential to the use or purpose of an article, or if it affects the cost or quality of the article. A feature is essential to the use or purpose of a product if it serves any significant function other than to distinguish a firm’s goods or identify their source. If a product feature is the reason the device works, then the feature is functional. Secondary Meaning:12 A trade dress acquires secondary meaning when it has been used in such a way that its primary significance in the minds of prospective purchasers is not the product itself, but the identification of the product with a single source, regardless of whether consumers know who or what that source is. You must find that the preponderance of the evidence shows that the consuming public associates Clearline’s trade dress with a single source, regardless of whether the name of the source is unknown, to find that it has acquired secondary meaning.13

15 U.S.C. § 1125(a) TrafFix Devices, Inc. v. Marketing Displays, Inc. 532 U.S. 23, 33 (2001): Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159,165-66 (1995); Eppendorf-Netheler-Hinz GMBH v. Ritter GMBH, 289 F.3d 351, 355-56 (5th Cir. 2002); Taco Cabana Int’l, Inc. v. Two Pesos, Inc., 932 F.2d 1113 (5th Cir. 1991).
12

11

15 U.S.C. § 1125(a); TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33 (2001); Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 216 (2000); Berg v. Symons, 393 F. Supp. 2d 525, 550 (S.D. Tex. 2005).

1 J. McCarthy, McCarthy on Trademarks and Unfair Competition §8:8, at 8-43 (3d ed. 1994) (hereinafter McCarthy) (citing Stuart Hall Co. v. Ampad Corp., 51 F.3d 780 (8th Cir. 1995)); accord Coca-Cola Co. v. Koke Co., 254 U.S. 143, 146 (1920) (In assessing a claim of secondary meaning, the major inquiry is the consumer’s attitude toward the mark. The mark must denote to the consumer “a single thing coming from a single source,:”); Aloe Creme Laboratories, Inc. v. Milsan, Inc., 423 F.2d 845, 849 (5th Cir. 1970); Sunbeam, 123 F.3d at 253. See Shell Trademark Mgmt. B.V. v. Warren Unilube, Inc., 765 F. Supp. 2d 884, 885 (S.D. Tex. 2011) (quoting Bd. of Sup’rs of La. St. Univ. v. Smack Apparel Co., 550 F.3d 465, 476 (5th Cir. 2008) . Secondary meaning may also be achieved through sales by licenses of the trade dress. See Tone Bros. v. Sysco Corp., 28 F.3d 1192, 1204 (Fed. Cir. 1994) (denying summary judgment in a case involving trade dress sold by a number of licensees finding that plaintiff raised genuine issue of fact where association in the mind of consumer between shape and appearance and an indication that the product was linked to one source).

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You may consider the following factors in determining whether Clearline’s trade dress has acquired secondary meaning:14 (1) (2) (3) (4) (5) (6) (7) The length and manner of use of the trade dress; The volume of sales; The amount and manner of advertising; The nature of use of the mark or trade dress in newspapers and magazines; Consumer-survey evidence from an expert; Direct consumer testimony; and The defendant’s intent to copying the trade dress.

14

Pebble Beach Co. v. Tour 18 I, LTD, 155 F.3d 526 (5th Cir. 1998) at 541 (citing RESTATEMENT (THIRD) OF UNFAIR COMPETITION, 13, cmt. E.; Duraco Prods., Inc. v. Joy Plastic Enters., 40 F.3d 1431, 1452 (3rd Cir. 1994); Berg v. Symons, 393 F. Supp. 2d 525, 550 (S.D. Tex. 2005)). In measuring secondary meaning, no precise guidelines are applicable and no single factor is determinative. Waples-Platter Cos. V. General Foods Corp., 439 F. Supp. 551, 577 (N.D. Tex 1977) (citing that consumers consider a mark to be an indicator of source even if each factor alone would not prove secondary meaning. Bd. Of Supervisors for La. State Univ. Agric. & Mech. College v. Smack Apparel Co, 50 F.3d 465, 476 (5th Cir. 2008).

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PROPOSED INSTRUCTION NO. 3 FEDERAL TRADE DRESS INFRINGEMENT ELEMENT TWO—INFRINGEMENT15

If you find that Clearline has a protectable trade dress, you must then consider whether Cooper has infringed that trade dress. Infringement of a trade dress occurs when there is a likelihood of confusion between Clearline’s and Cooper’s rooftop products, or the affiliation of Clearline and Cooper, by consumers. Clearline must prove infringement by a preponderance of the evidence. Clearline need not prove an actual confusion between the products or as to affiliation to obtain relief. Clearline must show, however, that confusion between Cooper’s products and Clearline’s products, or the association between Clearline and Cooper, is probable. The concept of consumer confusion considers the perception of the ordinary purchaser using ordinary care.16 To such a buyer or purchaser, the test is one of general overall impression gained at a glance.17 If you find that Cooper intentionally copied Clearline’s trade dress, you can presume that Cooper intended to create customer confusion and succeeded in doing so.18 In determining whether there is a likelihood of confusion, you should consider the following factors19:

(1) The similarity of the products: The greater the similarity between the parties’ products, the greater the likelihood of confusion; the greater the dissimilarity, the less likely is confusion.

Blue Bell Bio-Medical v. Cin-Bad, Inc., 864 F.2d 1253, 1260 (5th Cir. 1989); Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 258-59 (5th Cir. 1980); Sun Water Systems, Inc. v. Vitasauls, Inc., 2007 WL 628099, 11 (N.D. Tex. 2007).
16

15

McLean v. Fleming, 96 U.S. 245, 24 L. Ed. 828 (1878); Southern California Fish Co. v. White Star Canning co., 45 Cal. App. 426. 187 P. 981 (1920)(“purchaser of ordinary intelligence using reasonable care”). Thomas J. Lipton, Inc. v. Borden, Inc., 72 Misc. 2d 757, 340 N.Y.S.2d 328, 176 U.S.P.Q. 129 (1972)(“The incautious, the ignorant and the unthinking buyer must also be protected”: but differences sufficient to prevent confusion of such buyers). Chevron Chemical Co. v. Voluntary Purchasing Groups, Inc., 659 F. 2d 695, 212 U.S.P.Q. 904 (5th Cir. 1981), cert. denied, 457 U.S. 1126 (1982). See Pebble Beach Co. v. Tour 18 I, LTD, 155 F.3d 526, 543 (5th Cir. 1998); Blue Bell, 864 F.2d at 1259–60; Sno– Wizard, 791 F.2d at 428. Proof of actual confusion is not a prerequisite, and no single factor is dispositive of the likelihood of confusion. Taco Cabana, 932 F.2d at 1122 n. 9. Sunbeam Products, Inc. v. West Bend Co., 123 F.3d 246, 257 (5th Cir. 1997).

17

18

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(2) The identity of the retail outlets and purchasers: Similarities between the retail outlets for and the predominant consumers of Clearline’s and Cooper’s goods increase the likelihood of confusion, mistake or deception; dissimilarities decrease the likelihood. (3) The identity of the advertising media used: The greater the similarity in the manner of advertising, the greater the likelihood of confusion; the greater the dissimilarity, the less likely is confusion. (4) The type (strength) of trade dress: The more distinctive or recognizable the trade dress, the stronger it is. (5) Cooper's intent: If Clearline can show that Cooper used Clearline’s trade dress with the intent of deriving benefit from the reputation or good will of Clearline, that fact alone may be sufficient to justify a finding of a likelihood of confusion.20 The absence of such intent means that this factor is not relevant to the likelihood of confusion. (6) Similarity of the trade dress: Whether the overall impression created by Cooper’s trade dress is similar to that created by Clearline’s trade dress in appearance. 21 (7) Any evidence of actual confusion: Whether Cooper’s use of the trade dress has led to instances of actual confusion among purchasers or potential purchasers about the source, origin, sponsorship or approval of Cooper’s product. However, actual confusion is not required for finding a likelihood of confusion.22 (8) The degree of care exercised by potential purchasers: In buying relatively inexpensive, as opposed to a big ticket item, a buyer may exercise less care in shopping and selecting the product, thereby increasing the likelihood of confusion.23 If buyers exercise more care, as they typically do with more expensive products, the likelihood of confusion is less. The weight to be given to each of these factors is up to you to determine. No particular factor or number of factors is required to prove likelihood of confusion.24

20

Elvis Presley Enterprises, Inc. v. Capece, 141 F. 3d 188, 203 (5th Cir. 1998)

21 22
23

Seventh Cir. Pattern Jury Instruction 13.1.2.3. Seventh Cir. Pattern Jury Instruction 13.1.2.3.

Bd. of Supervisors for La. State Univ. Agric. & Mech. College v. Smack Apparel Co., 50 F.3d 465, 483 (5th Cir. 2008); Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221 (5th Cir. 2009). Seventh Cir. Pattern Jury Instruction 13.1.2.3.

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PROPOSED INSTRUCTION NO. 4 WILLFULNESS AS TO TRADE DRESS INFRINGEMENT If you find that Cooper infringed Clearline’s trade dress, you must consider whether Cooper’s conduct was willful. “Willful” means that Cooper acted voluntarily and intentionally and with the intent to cause the likelihood of consumer confusion, to cause mistake or to deceive.25

Pebble Beach Co. v. Tour 18 I, Ltd., 155 F.3d 526, 544 (5th Cir. 1998) (describing the willfulness factor as “whether the defendant had the intent to confuse of deceive); accord Quick Technologies, Inc. v. The Sage Group, PLC, 313 F.3d 338, 347, 349 n.9 (5th Cir. 2002), cert. denied, 540 U.S. 814, 124 S. Ct. 66, 157 L.Ed.2d 29 (2003).

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PROPOSED INSTRUCTION NO. 5 TRADE DRESS DAMAGES – CLEARLINE’S LOST PROFITS 26 If you find that Cooper is liable for trade dress infringement, then you should consider the amount of money to award to Clearline, if any. This should include damages that Clearline sustained because of Cooper’s infringement, and profits that Cooper made because of its infringement. If you find that Cooper is liable for trade dress infringement, then you must consider whether or not to award lost profits to Clearline. Even though I am instructing you on monetary damages, this should not be taken to mean that I believe that Cooper is liable for the claims brought or that such damages are appropriate. These are issues for you to resolve under the instructions I have given you. I am instructing you on lost profits only so that you will have guidance should you decide that Clearline is entitled to recover. Clearline claims that it has sustained lost profits due to a loss of sales due to Cooper’s actions. In assessing profits, Clearline is required to prove Cooper’s sales only; Cooper must prove all elements of cost or deduction claimed. If you decide to award compensatory damages, you should be guided by dispassionate common sense. Computing damages may be difficult, but you must not let that difficulty lead you to engage in arbitrary guesswork. On the other hand, the law does not require that the injured party prove the amount of his losses with mathematical precision, but only with as much definiteness and accuracy as the circumstances permit.

15 U.S.C. §1117(a); Boston Professional Hockey Ass’n. Inc. v. Dallas Cap & Emblem Mfg, Inc., 597 F.2d 71, 7475 (5th Cir. 1979); Taco Cabana International, Inc. v. Two Pesos, Inc., 931 F.2d 1113, 1126-27 (5th Cir. 1991).

26

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PROPOSED INSTRUCTION NO. 6 TRADE DRESS DAMAGES –COOPER’S PROFITS OR UNJUST ENRICHMENT27 If you find that Cooper is liable for trademark infringement, you should also consider whether or not to award Cooper’s profits. Even though I am instructing you on an accounting of profits, this should not be taken to mean that I believe that Cooper is liable for the claims brought or that awarding such amounts is appropriate. These are issues for you to resolve under the instructions I have given you. I am instructing you on this issue only so that you will have guidance should you decide that Clearline is entitled to recover. In addition to actual damages, Clearline is entitled to any profits earned by Cooper that are attributable to the infringement, which Clearline proves by a preponderance of the evidence. You may not, however, include in any award of profits any amount that you took into account in determining actual damages. Profit is determined by deducting all expenses from gross revenue. Gross revenue is all of Cooper’s receipts from using Clearline’s trade dress(es) in sale of its infringing rooftop support products. Clearline has the burden of proving Cooper’s gross revenue by a preponderance of the evidence. Cooper has the burden of proving the expenses [and the portion of the profit attributable to factors other than use of the infringed trade dress] by a preponderance of the evidence. Unless you find that a portion of the profit from the sale of the infringing rooftop support products using Clearline’s trade dress is attributable to factors other than use of its trade dress(es), you shall find that the total profit is attributable to the infringement.

15 U.S.C. § 1117(a); Hamilton Brown Shoe Co. v. Wolf Bros & Co., 240 U.S. 251, 60 L. Ed. 629, 36 S. Ct. 269 (1916)(The U.S. Supreme Court held that damages for trademark infringement include defendant’s profits); see, e.g., Texas Pig Stands, Inc. v. Hard Rock Café Int’l, 951 F.2d 684, 694 (5th Cir.1992)(quoting 15 U.S.C. § 1117(a))l :[D]isgorgement of profits is a traditional trademark remedy,” Jerry’s Famous Deli, Inc. v. Papanicolaou, 383 F. 3d 998, 1004-05 (9th Cir. 2004) (enforcement of trademark injunction case, but describing remedy as “akin to an award of the infringer’s profits under trademark law” and noting “Under established law, once gross profits related to the infringement are established, [infringer] has the burden of documenting any legitimate offsets”). “Recovery of both plaintiff’s lost profits and disgorgement of defendant’s profits is generally considered a double recovery under the Lanham Act.” Nintendo of America, Inc. v. Dragon Pacific Int’l, 40 F.3d 1007, 1010 (9th Cir.1994). Regarding establishing and calculating defendant’s profits, see Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400, 1405-1408 (9th Cir.1993)(“The intent of the infringer is relevant evidence on the issue of awarding profits and damages and the amount;” determining that in order to establish damages under the lost profits method, plaintiff must make prima facia showing of reasonably forecast profits.); Louis Vuitton S.A. v. Spencer Handbags Corp., 765 F.2d 966,973 (2d Cir.1985) (defendant’s own statements as to profits provided sufficient basis for calculation of defendant’s profits under 15 U.S.C. § 1117(a)). See also American Honda Motor Co. v. Two Wheel Corp., 918 F.2d 1060, 1063 (2d Cir. 1990) (plaintiff entitled to amount of gross sales unless defendant adequately proves amount of costs to be deducted from it); Polo Fashions, Inc. v. Dick Bruhn, Inc., 793 F.2d 1132, 1135 (9th Cir.1986) (court awarded receipts from sales pursuant to 15 U.S.C. § 1117(a)); 5 J. Thomas McCarthy, Trademarks and Unfair Competition § 30.65 (4th ed. 2001) (discussing computation of defendant’s profits from infringing sales).; Lindy Pen Co., 982 F.2d at 1405-1408; Nintendo of America, 40 F.3d at 1012 (where infringing and noninfringing elements of a work cannot be readily separated, all of a defendant’s profits should be awarded to the plaintiff).

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PROPOSED INSTRUCTION NO. 7 ILLINOIS COMMON LAW TRADE DRESS INFRINGEMENT

Clearline has alleged that Cooper committed trade dress infringement under the law of the state of Illinois. To prove common law trade dress infringement, Clearline has the burden to prove by a preponderance of the evidence that Cooper misappropriated the labors and expenditures of Clearline by selling a product that was virtually identical to Clearline’s product.28 In essence, Clearline must show that Cooper reaped the benefit of Clearline’s efforts.29

28 29

Stephen & Hayes Constr., Inc. v. Meadowbrook Homes, Inc., 988 F. Supp. 1194, 1200 (N.D. Ill. 1998).

Higher Gear Group, Inc. v. Rockenbach Chevrolet Sales, Inc., 223 F. Supp. 2d 953, 958–59 (N.D. Ill. 2002); Lexmark Int’l, Inc. v. Transp. Ins. Co., 327 Ill. App. 3d 128, 139 (Ill. App. 1st Dist. 2001).

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PROPOSED INSTRUCTION NO. 8 ILLINOIS DECEPTIVE TRADE PRACTICES ACT

Clearline has alleged that Cooper violated the Illinois Deceptive Trade Practices Act. Clearline has the burden to prove by a preponderance of the evidence any of the following: 1. Cooper’s actions passed off goods as those of another;30 2. Cooper’s actions caused likelihood of confusion or misunderstanding as to the source, sponsorship, or approval of goods;31 3. Cooper’s actions caused likelihood of confusion or misunderstanding as to the affiliation, connection, or association with the goods of another;32 or 4. Cooper engaged in any other conduct which similarly created a likelihood of confusion or misunderstanding. 33 To succeed on this claim, Clearline does not have to show that there was any actual confusion or misunderstanding by customers. 34 If you find for Clearline on its Illinois Uniform Deceptive Trade Practices Act claim, you should not consider the question of damages. The Court will determine what damages, if any, to award Clearline under the Illinois Uniform Deceptive Trade Practices Act.

30

815 ILCS 510/2(a)(1). 815 ILCS 510/2(a)(2). 815 ILCS 510/2(a)(3).  815 ILCS 510/2(a)(12).  815 ILCS 510/2(b). 

31

32

33

34

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PROPOSED INSTRUCTION NO. 9 ELEMENTS OF FEDERAL TRADEMARK INFRINGEMENT35 Clearline claims that Cooper infringed Clearline’s C-PORT mark through the sale of Cooper’s rooftop support products using the trademark C-PORT. A “trademark” includes any word, name or symbol used by a manufacturer or merchant to identify and distinguish its goods from those manufactured or sold by others and to indicate to the public the source of the goods, even if that source is unknown.36 A person acquires the right to exclude others from using a trademark by being the first to use it in the marketplace. Rights in a trademark are obtained only through commercial use of the mark. The owner of a trademark has the right to exclude others from using the mark unless the mark has been abandoned. Once the owner of a mark has obtained the right to exclude others from using the trademark, the owner may obtain a certificate of registration issued by the United States Patent and Trademark Office. Thereafter, when the owner brings an action for infringement, the owner may rely solely on the registration certificate to prove that the owner has the right to exclude others from using the trademark in connection with the type of goods or services specified in the certificate. 37 The main function of a trademark is to identify and distinguish goods as a product of a particular business and to protect that business’ goodwill against another business that is selling its product as if it were the product of the business that owns the trademark. A trademark is also a merchandising symbol that helps a prospective purchaser to make purchasing selections. A trademark signifies that all goods bearing that trademark have a single source and that all goods bearing the mark are of equal quality. On Clearline’s claim for trademark infringement, Clearline has the burden of proving each of the following by a preponderance of the evidence:38 1. C-PORT has been registered as a trademark on the principal register in the United States Patent and Trademark Office; 2. Clearline is the registrant of that trademark; and 3. Cooper used C-PORT without the consent of Clearline in a manner that was likely to cause confusion among ordinary purchasers as to the sponsorship, affiliation or source of Cooper’s rooftop support products.

35

15 U.S.C. §1127; 15 U.S.C. §1114(1)(a); Elvis Presley Enters. v. Capece, 141 F .3d 188, 194 (5th Cir. 1998); American Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 2008). Board of Supervisors for La. State Univ. Agric. & Mech. Coil. v. Smack Apparel, 550 F.3d 465, 474 (5th Cir. 2008). See O’Malley, Grenig & Lee, Federal Jury Practice and Instructions, 5th Ed. Thomson West § 159.01.

36

37

38

15 U.S.C. § 1114(1); see also O’Malley, Grenig & Lee, Federal Jury Practice and Instructions, 5th Ed. Thomson West § 159.20.

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In order to prevail on this claim, Clearline must first show that it has ownership in a legally protectable mark. It then must show that Cooper’s use of the trademark was likely to cause confusion, mistake or to deceive consumers as to the sponsorship, affiliation or source of Cooper’s rooftop support products.

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PROPOSED INSTRUCTION NO. 10 OWNERSHIP OF THE C-PORT TRADEMARK A trademark is any word, name, symbol, or device or any combination of them used by a business to identify and distinguish its goods from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.39 A Registered Trademark is a trademark that is registered in the United States Patent and Trademark Office, which registration is evidenced by an issued Certificate of Trademark Registration.40 The certificate of registration of the C-PORT trademark in evidence in this case is conclusive evidence of: the validity of Clearline’s trademark; the fact that it is registered; Clearline's ownership of the trademark; and, Clearline's exclusive right to use the C-PORT mark in commerce on or in connection with rooftop support products. In this case, there is no dispute that Clearline received a registration for the C-PORT trademark and this registration is now “incontestable” under the trademark laws. This means that Clearline’s registration of the trademark is conclusive evidence of Clearline’s ownership of that trademark and that the trademark is valid and protectable.

39

15 U.S.C. §1115; TMEP§807.03; McCarthy, J. Thomas, MCCARTHY ON TRADEMARKS, §19.58 (2010). Id.

40

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PROPOSED INSTRUCTION NO. 11 TRADEMARK - LIKELIHOOD OF CONFUSION41 To prove its claim of infringement, Clearline must show that Cooper’s use of C-PORT was likely to cause confusion among consumers as to source, affiliation or sponsorship of the parties’ products. Confusion may include a mistaken impression that Clearline gave Cooper permission to use C-PORT or vice versa. In addition, trademark law protects against confusion in which the non-trademark owner’s goods are thought to originate with or be sponsored or approved by the trademark owner, as well as the reverse situation in which a trademark owner’s goods are thought to originate with or be sponsored or approved by the non-trademark owner. In determining whether Cooper’s use of C-PORT is likely to cause confusion, or to cause mistake or to deceive, you may draw on common sense and experience. In addition to the general knowledge you have acquired throughout your lifetimes, you should also consider the factors listed below. No single factor is dispositive, and a finding of a likelihood of confusion does not require a positive finding on a majority of these factors.42 Cooper may be

liable for trademark infringement even if Cooper innocently used Clearline's trademark and lacked any intent to confuse consumers as to the source of the goods.43 If the likelihood of
confusion analysis is closely balanced, it should be resolved in favor of Clearline.44 (1) The strength or distinctiveness of Clearline’s C-PORT mark: The stronger the mark, the greater the likelihood that consumers will be confused by competing uses of the mark; the weaker the mark, the less likely confusion may be. You may consider the existence and extent of uses of similar marks by third parties. Although extensive third party use may weaken a mark, such usage does not itself eliminate the mark’s ability to be protected. Clearline is not obligated to bring suit against all third parties who it believes may use a mark that infringes its C-PORT mark. In this regard, a mark that is relatively weak in the overall

41

Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221 (5th Cir. 2009); Elvis Presley Enters. v. Capece, 141 F .3d 188, 194 (5th Cir. 1998); Pebble Beach Co. v. Tour 18 I, Ltd., 155 F.3d 526, 543 (5th Cir. 1998); Pebble Beach Co. v. Tour 18 I, Ltd., 942 F.Supp. 1513, 1554 (S.D.Tex. 1996), aff’d as modified, 155 F.3d 526 (5th Cir.1998); SunFun-Prods., Inc. v. Suntan Research & Dev. Inc., 656 F.2d 186, 191 (5th Cir.1981); Bd. of Supervisors for La. State Univ. Agric. & Mech. College v. Smack Apparel Co., 50 F.3d 465, 483 (5th Cir. 2008); Am. Century Proprietary Holdings v. Am. Century Cas. Co., 295 Fed. Appx. 630, 635 (5th Cir. 2008); Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221 (5th Cir. 2009) citing Marathon Mfg. Co. v. Enerlite Prods. Corp., 767 F.2d 214, 218 (5th Cir. 1985).
Conan Properties, Inc. v. Conan Pizza, Inc., 752 F.2d 145 (5th Cir. 1985).

42

43

E.g. Island Insteel Sys., Inc. v. Waters, 296 F.3d 200, 213 (3d Cir. 2002).

44

Am. Century Proprietary Holdings v Am. Century Cas. Co., 295 Fed Appx 630, 635 (5th Cir 2008) citing Quantum Fitness Corp. v. Quantum LifeStyle Ctrs., L.L.C., 83 F.Supp.2d 810, 831 (S.D. Tex. 1999); 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:64 (4th ed. 2006) (“The burden of proof is always on the plaintiff, but when the evidence is weighed and the scales balance equally, the doubt is resolved in favor of the party who has built up valuable rights in the mark.”)

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market for all goods and services can nonetheless be strong enough to make confusion likely when a Cooper uses a similar mark in the same general line of business. (2) The similarity between the two marks: In analyzing the similarities between the two marks, you should compare Clearline’s registered trademark with the trademark allegedly used by Cooper. The greater the similarity, the more likely is confusion; the greater the dissimilarity, the less likely is confusion. (3) The similarity of the products: The greater the similarity between the parties’ products, the greater the likelihood of confusion; the greater the dissimilarity, the less likely is confusion. (4) The identity of the retail outlets and purchasers: Similarities between the retail outlets for and the predominant consumers of Clearline’s and Cooper’s goods increase the likelihood of confusion, mistake or deception; dissimilarities decrease the likelihood. (5) The identity of the advertising media used: The greater the similarity in the manner of advertising, the greater the likelihood of confusion; the greater the dissimilarity, the less likely is confusion; (6) Cooper's intent: If Clearline can show that Cooper used the mark C-Port with the intent of deriving benefit from the reputation or good will of Clearline, that fact alone may be sufficient to justify a finding of a likelihood of confusion.45 The absence of such intent means that this factor is not relevant to the likelihood of confusion. (7) Any evidence of actual confusion: Evidence of actual confusion caused by a similar mark is not required to establish a likelihood of confusion, but if there is actual confusion, it is the best evidence of a likelihood of confusion. “Confusion” focuses on whether any use by Cooper of Clearline's trademark created a likelihood of confusion among consumers. There are several types of possible confusion. Evidence of actual confusion is not necessary to a finding of a likelihood of confusion.46 Infringement can be based upon confusion that creates initial consumer interest, even though no actual sale is finally completed as a result of the confusion. Initial-interest confusion gives, to a newcomer to the market for the trademarked goods, credibility during the early stages of a transaction, and can possibly bar the trademark owner from consideration by the consumer once the confusion is dissipated.47 (8) The degree of care exercised by potential purchasers: In buying relatively inexpensive, as opposed to a big ticket item, a buyer may exercise less care in shopping and
45

Elvis Presley Enterprises, Inc. v. Capece, 141 F. 3d 188, 203 (5th Cir. 1998)

See O’Malley, Grenig & Lee, Federal Jury Practice and Instructions, Civil Companion Handbook West 2011 §6:1 citing Waco Int’l Corp. v. KHK Scaffolding, Inc., 2000 WL 34593839 (S.D. Tex. 2000). Id; accord Elvis Presley Enterprises, Inc. v. Capece, 141 F. 3d 188, 203-204 (5th Cir. 1998); Pet Silk, Inc. v. Jackson, 481 F.Supp.2d 824, 829-30 (S.D. Tex. 2007).
47

46

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selecting the product, thereby increasing the likelihood of confusion.48 If buyers exercise more care, as they typically do with more expensive products, the likelihood of confusion is less.

PROPOSED INSTRUCTION NO. 12 WILLFULNESS AS TO TRADEMARK INFRINGEMENT If you find that Cooper infringed Clearline’s trademark, you must consider whether Cooper’s conduct was willful. “Willful” means that Cooper acted voluntarily and intentionally and with the intent to cause the likelihood of consumer confusion, to cause mistake or to deceive.49

48

Bd. of Supervisors for La. State Univ. Agric. & Mech. College v. Smack Apparel Co., 50 F.3d 465, 483 (5th Cir. 2008); Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221 (5th Cir. 2009).

Pebble Beach Co. v. Tour 18 I, Ltd., 155 F.3d 526, 544 (5th Cir. 1998) (describing the willfulness factor as “whether the defendant had the intent to confuse of deceive); accord Quick Technologies, Inc. v. The Sage Group, PLC, 313 F.3d 338, 347, 349 n.9 (5th Cir. 2002), cert. denied, 540 U.S. 814, 124 S. Ct. 66, 157 L.Ed.2d 29 (2003).

49

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PROPOSED INSTRUCTION NO. 13 TRADEMARK DAMAGES – CLEARLINE’S LOST PROFITS50 If you find that Cooper is liable for trademark infringement, then you should consider the amount of money to award to Clearline, if any. This should include damages that Clearline sustained because of Cooper’s infringement, and profits that Cooper made because of its infringement. If you find that Cooper is liable for trademark infringement, then you must consider whether or not to award lost profits to Clearline. Even though I am instructing you on monetary damages, this should not be taken to mean that I believe that Cooper is liable for the claims brought or that such damages are appropriate. These are issues for you to resolve under the instructions I have given you. I am instructing you on lost profits only so that you will have guidance should you decide that Clearline is entitled to recover. Clearline claims that it has sustained lost profits due to a loss of sales due to Cooper’s actions. In assessing profits, Clearline is required to prove Cooper’s sales only; Cooper must prove all elements of cost or deduction claimed. If you decide to award compensatory damages, you should be guided by dispassionate common sense. Computing damages may be difficult, but you must not let that difficulty lead you to engage in arbitrary guesswork. On the other hand, the law does not require that the injured party prove the amount of his losses with mathematical precision, but only with as much definiteness and accuracy as the circumstances permit.

15 U.S.C. §1117(a); Boston Professional Hockey Ass’n. Inc. v. Dallas Cap & Emblem Mfg, Inc., 597 F.2d 71, 7475 (5th Cir. 1979); Taco Cabana International, Inc. v. Two Pesos, Inc., 931 F.2d 1113, 1126-27 (5th Cir. 1991).

50

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PROPOSED INSTRUCTION NO. 14 TRADEMARK DAMAGES –COOPER’S PROFITS OR UNJUST ENRICHMENT51 If you find that Cooper is liable for trademark infringement, you should also consider whether or not to award Cooper’s profits. Even though I am instructing you on an accounting of profits, this should not be taken to mean that I believe that Cooper is liable for the claims brought or that awarding such amounts is appropriate. These are issues for you to resolve under the instructions I have given you. I am instructing you on this issue only so that you will have guidance should you decide that Clearline is entitled to recover. To determine whether to award Clearline Cooper’s profits or unjust enrichment, you should consider the following factors: 1. 2. 3. 4. 5. 6. whether Cooper had the intent to confuse or deceive; whether sales have been diverted from Clearline; the adequacy of other remedies; any unreasonable delay by Clearline in asserting its rights; the public interest in making the conduct unprofitable; whether this is a case of passing off. Passing off occurs when one party misrepresents its goods are those of another when in fact they are not.

In deciding to award Cooper’s profits, there is no requirement that the parties be in direct competition. There also is no requirement that Cooper willfully infringed Clearline’s trademark or that customers were actually confused or deceived. In assessing profits, Clearline is only required to prove the amount of Cooper’s total gross sales. Total gross sales are the starting point that you are to use in calculating Cooper’s profits.52 Cooper has the burden of proving sales, if any, that were not attributable to the infringement. You should only deduct from the total gross sales attributable to the infringement any allowable costs and expenses you find that Cooper has proven by a preponderance of the evidence. If the actual sales by Cooper cannot be precisely determined, you may resolve any doubts against Cooper in calculating profits, particularly if you find that the uncertainty is due to Cooper's inadequate record keeping or failure to produce documentary evidence.53 When a
15 U.S.C. §1117(a); Quick Technologies, Inc. v. Sage Group, PLC, 313 F.3d 338, 349 (5th Cir. 2002), cert. denied, 540 U.S. 814, 124 S. Ct. 66, 157 L.Ed.2d 29 (2003); McArdle v. Mattel, Inc., 456 F.Supp. 2d 769, 783 (E.D. Tex. 2006); American Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321,338 (5th Cir. 2008); Fifth Circuit Pattern Jury Instructions – Civil (2006) (adopted from instruction 9.7); Bd. of Supervisors for La. State Univ. Agric. & Mech. College v. Smack Apparel Co., 50 F.3d 465, 483 (5th Cir. 2008); Blendo, Inc. v. Conagra Foods, Inc., 132 Fed. Appx. 520 (5th Cir. 2005); Rolex Watch USA, Inc., v. Robert Meece, 158 F.3d 816 (5th Cir. 1998); Kiva Kitchen & Bath Inc v. Capital Distrib. 2007 US Dist LEXIS 70496 @7. American Rice Inc v Producers Rice Mill Inc., 518 F.3d 321 (5th Cir 2008) (holding that he Act allows defendant’s profits to be determined based upon gross sales made by defendant.) See O’Malley, Grenig & Lee, Federal Jury Practice and Instructions, Civil Companion Handbook West 2011 §6:1 citing Waco Int’l Corp. v. KHK Scaffolding, Inc., 2000 WL 34593839 (S.D. Tex. 2000).
53 52 51

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party frustrates proof of damages, either by withholding facts or through inaccurate record keeping, any doubts about the actual assessment of damages should be resolved against that party.54]

54

Id.

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PROPOSED INSTRUCTION NO. 15 INSTRUCTIONS FOR DELIBERATIONS These instructions are given to you as a whole, and you are not to single out one instruction alone as stating the law, but must consider the instructions as a whole. You have heard all of the evidence in the case and you have heard the argument of counsel. You must perform your duties as jurors without bias or prejudice as to any party. The law does not permit you to be controlled by sympathy, prejudice, or public opinion. All parties expect that you will carefully and impartially consider all the evidence, follow the law as it is now being given to you, and reach a just verdict, regardless of the consequences. It is your sworn duty as jurors to discuss the case with one another in an effort to reach agreement if you can do so. Each of you must decide the case for yourself, but only after full consideration of the evidence with the other members of the jury. While you are discussing the case, do not hesitate to re-examine your own opinion and change your mind if you become convinced that you are wrong. However, do not give up your honest beliefs solely because the others think differently or merely to finish the case. Remember that in a very real way you are the judges—judges of the facts. Your only interest is to seek the truth from the evidence in the case. You should consider and decide this case as a dispute between persons of equal standing in the community, of equal worth, and holding the same or similar stations in life. A corporation is entitled to the same fair trial as a private individual. All persons, including corporations and other organizations, stand equal before the law and are to be treated as equals. When you retire to the jury room to deliberate on your verdict, you may take this charge with you as well as exhibits which the Court has admitted into evidence. Select your Foreperson and conduct your deliberations. If you recess during your deliberations, follow all of the instructions that the Court has given you regarding your conduct during the trial. After you have reached your unanimous verdict, your Foreperson is to fill in the form with your answers to the questions. Do not reveal your answers until such time as you are discharged, unless otherwise directed by me. You must never disclose to anyone, not even to me, your numerical division on any question. Any notes that you have taken during this trial are only aids to memory. If your memory should differ from your notes, then you should rely on your memory and not on the notes. The notes are not evidence. A juror who has not taken notes should rely on his or her independent recollection of the evidence and should not be unduly influenced by the notes of other jurors. Notes are not entitled to any greater weight than the recollection or impression of each juror about the testimony. If you want to communicate with me at any time, please give a written message or question to the Court Security Officer, who will bring it to me. I will then respond as promptly as possible either in writing or by having you brought into the courtroom so that I can address you

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orally. I will always first disclose to the attorneys your question and my response before I answer your question. After you have reached a verdict, you are not required to talk with anyone about the case unless the Court orders otherwise. You may now retire to the jury room to deliberate.

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SPECIAL VERDICT FORM [Question No. 1: Has Clearline proven by a preponderance of the evidence that Cooper infringed Clearline’s trade dress?

Answer “Yes” or “No.”

Answer: ____________

If you answered yes to Question No. 1, then answer Questions No. 2, 3, and 4. Otherwise, skip to Question No. 5 without answering Questions No. 2, 3, or 4.

Question No. 2: Has Clearline proven by a preponderance of the evidence that Cooper’s actions relating to its infringement of Clearline’s trade dress were done willfully?

Answer “Yes” or “No.”

Answer: ______________

Question No. 3: What amount, if any, would compensate Clearline for its lost profits as a result of Cooper’s infringement of Clearline’s trade dress? Answer in dollars and cents, if any.

Answer: ____________________

Question No. 4: What amount, if any, of Cooper’s profits do you find are attributable to Cooper’s infringement of Clearline’s trade dress that should be awarded to Clearline? Answer in dollars and cents, if any.

Answer: _____________________

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Question No. 5: Has Clearline proven by a preponderance of the evidence that Cooper violated the Illinois Deceptive Trade Practices Act?

Answer “Yes” or “No.”

Answer: ______________

If you answered yes to Question No. 5, then answer Question No. 6. Otherwise, skip to Question No. 7 without answering Question No. 6.

Question No. 6: Has Clearline proven by a preponderance of the evidence that Cooper’s actions relating to its violation of the Illinois Deceptive Trade Practices Act were done willfully?

Answer “Yes” or “No.”

Answer: ______________

Question No. 7: Has Clearline proven by a preponderance of the evidence that Cooper infringed Clearline’s trademark C-PORT?

Answer “Yes” or “No.”

Answer: ______________ If you answered “Yes” to Question No. 7, then Answer Questions No. 8, 9, and 10. Otherwise, skip Questions No. 8, 9, and 10.

Question No. 8: Has Clearline proven by a preponderance of the evidence that Cooper’s actions relating to its infringement of Clearline’s trademark were done willfully?

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Answer “Yes” or “No.”

Answer: ______________

Question No. 9: What amount, if any, would compensate Clearline for its lost profits as a result of Cooper’s infringement of Clearline’s trademark?

Answer in dollars and cents, if any.

Answer: _____________________

Question No. 10: What amount, if any, of Cooper’s profits do you find are attributable to Cooper’s infringement of Clearline’s trademark that should be awarded to Clearline?

Answer in dollars and cents, if any.

Answer: _____________________ ]

PLAINTIFF CLEARLINE TECHNOLOGIES LTD.’S PROPOSED JURY INSTRUCTIONS AND QUESTIONS 28

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EXHIBIT 7aB IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF TEXAS

CLEARLINE TECHNOLOGIES LTD. Plaintiff, v. COOPER B-LINE, INC. Defendants.

§ § § § § § § § §

No. 4:11-cv-1420 Judge Keith P. Ellison

COOPER B-LINE’S PRELIMINARY PROPOSED JURY INSTRUCTIONS, DEFINITIONS AND INTERROGATORIES TO THE HONORABLE UNITED STATES DISTRICT JUDGE: Under the instructions in the Court’s pre-trial procedures, Cooper B-Line tenders the following questions, instructions, and definitions. These items are being presented for the Court’s consideration to anticipate the evidence and to permit consideration of the eventual jury charge that will be prepared at the close of all the evidence. However, these requested submissions are for discussion purposes only because they are being tendered to the Court without the benefits of the presentation of evidence and the Plaintiff’s case-in-chief. Cooper B-Line respectfully reserves the right to request any other jury submissions at the appropriate time, at the close of all the evidence, and at the formal charge conference. The following are without waiver of any questions, instructions, and definitions that may be requested at the formal charge conference, or before it, as provided by the Rules of Procedure.

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Respectfully submitted: John Lee Dagley Robin L. Harrison CAMPBELL HARRISON & DAGLEY, LLP 909 Fannin, Ste. 4000 Houston, Texas 77010 713.752.2332–telephone 713.752.2330–facsimile HOGAN & HOGAN

By: ________________________ Richard P. Hogan, Jr. State Bar No. 09802010 rhogan@hoganfirm.com Jennifer Bruch Hogan State Bar No. 03239100 jhogan@hoganfirm.com 909 Fannin, Suite 2700 Houston, Texas 77010 713.222.8800telephone 713.222.8810facsimile

Mitchell C. Chaney State Bar No. 04107500 Southern District No. 1918 COLVIN, CHANEY, SAENZ & RODRIGUEZ, LLP 1201 East Van Buren – 78250 P.O. Box 2155 Brownsville, TX 78522-2155 (956) 542-7441 (956) 541-2170 (fax)

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DEFENDANT COOPER’S REQUESTED INSTRUCTION ON FUNCTIONALITY
Clearline alleges that Cooper B-Line infringed on a claimed trade dress. To prove infringement of a trade dress, Clearline bears the burden to prove, by a preponderance of the evidence, that (1) the trade dress is protectable, and (2) the trade dress has been infringed by Cooper B-Line. Clearline’s trade dress claim is limited only to the alleged use by Cooper B-Line of reflective yellow striping on black support blocks. To prove that a claimed trade dress is protectable, Clearline must prove both that the reflective yellow striping on its support blocks is not functional and that the Cooper B-Line’s reflective yellow striping is not functional. Moreover, Clearline must establish that reflective yellow striping on black support blocks has acquired a secondary meaning. A product feature or design is functional if it is essential to the use or purpose of the device or if it affects the cost or quality of the device. Or, stated another way, if the reflective yellow striping is “essential” to the usefulness or purpose of the support blocks, or it affects the cost or quality of the support blocks, then the yellow striping is functional. “Essential,” does not equate a layman’s understanding of the word; it is a term of art, used to distinguish product features that only serve to identify a product’s source from those that serve “any other significant function.” The word “essential” in this definition of functionality means that the feature, here the reflective yellow striping, serves any significant function other than to distinguish a firm’s goods or identify their source. NOTES This proposed instruction reflects the remaining claim and takes the definitions of functionality and the elements of proof from the Court’s summary judgment opinion. AUTHORITIES TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32, 33-34 (2001); Eppendorf-Netheler-Hinz GMBH v. Ritter GMBH, 289 F.3d 351, 355 (5th Cir. 2002); Poly-Am., L.P. v. Stego Indus., L.L.C., 3:08-CV-2224-G, 2011 WL 3206687 (N.D. Tex. July 27, 2011).

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DEFENDANT COOPER’S REQUESTED INSTRUCTION ON SECONDARY MEANING In addition to proving that the reflective yellow striping is nonfunctional, Clearline also must prove that this feature had acquired a secondary meaning at the time any alleged infringement by Cooper B-Line began. A mark acquires a secondary meaning when it has been used in such a way that its primary significance in the minds of the public is not the product itself, but the identification of the product with a single source, regardless of whether consumers know who or what that source is. You must find that the preponderance of the evidence shows that a significant number of the consuming public associated Clearline’s claimed trade dress with a single source at the time any alleged infringement by Cooper B-Line began, in order to find that it has acquired secondary meaning. To show this secondary meaning, Clearline must establish through competent proof that, at the time any alleged infringement by Cooper BLine began, the public made a mental association between the mark (the reflective yellow striping) and Clearline as the source of the product. The primary significance of the reflective yellow marking must be to identify Clearline as the source of the product rather than to identify the product itself. In determining whether Clearline has proven the existence of this secondary meaning, you may consider a number of factors, including: (1) the length and manner of use of the reflective yellow striping; (2) the volume of sales of the support blocks; (3) the amount and manner of advertising; (4) the nature the reflective yellow striping’s use in the media and advertisements; (5) any consumer-survey evidence; (6) direct consumer testimony; and (7) Cooper B-Line’s intent in using a reflective yellow stripe on its support blocks. NOTES This proposed instruction is mostly taken from the Court’s summary judgment opinion. It limits the plaintiff’s claim as stated in the order. AUTHORITIES Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 212-13 (2000); Bd. of Supervisors for La. State Univ. of Agric. and Mech. College v. Smack Apparel Co., 550 F.3d 465, 476 (5th Cir. 2008); Sugar Busters LLC v. Brennan, 177 F.3d 258, 269 (5th Cir. 1999).

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DEFENDANT COOPER’S REQUESTED INSTRUCTION ON LIKELIHOOD OF CONFUSION AND INFRINGEMENT To prove that the trade dress is infringed, Clearline must prove that the use of its claimed trade dress creates a likelihood of confusion as to the source, affiliation, or sponsorship of Cooper B-Line’s product. Likelihood of confusion means more than a mere possibility; Clearline must demonstrate a probability of confusion. You may consider, in determining whether there is a likelihood of confusion, (1) the type of trade dress; (2) similarities between the alleged trade dress; (3) product similarity; (4) outlet and purchaser identity; (5) advertising media identity; (6) Cooper B-Line’s intent; (7) actual confusion; and (8) care exercised by potential purchasers. NOTES This proposed instruction submits the issue of confusion in the minds of the public with regard to the specific trade dress violation, using the factors mentioned in the Court’s summary judgment order. AUTHORITIES 15 U.S.C. § 1125(a)(1)(A); Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 226, 227 (5th Cir. 2009).

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DEFENDANT COOPER’S REQUESTED INSTRUCTION ON TRADEMARK INFRINGEMENT Clearline also claims that Cooper B-Line infringed on a trademark by using Clearline’s registered C-PORT trademark in meta-tags on the Cooper B-Line website after the business relationship between Cooper B-Line and Clearline came to an end. Additionally, Clearline claims that Cooper B-Line used Clearline’s mark in a tradeshow catalog. Clearline’s trademark claim against Cooper B-Line is limited to the meta-tags and the tradeshow catalog. To prove this trademark infringement claim, Clearline must prove that any use of the C-PORT trademark in Cooper B-Line’s meta-tags or in a tradeshow catalog for some limited time period was both intended to and likely did cause confusion as to the source, sponsorship, or affiliation of Cooper B-Line’s DURABLOK products. The basic test of infringement is likelihood of confusion. A person’s intent to compete is not tantamount to intent to confuse. In determining whether there is or will be a likelihood of confusion caused by the use of the marks by both Clearline and Cooper B-Line, you must consider all the relevant evidence including the following: (1) the degree to which the marks in question indicate that they came from a particular source; (2) the degree of similarity between the marks in question; (3) the intent of Cooper B-Line in adopting the mark for a limited period in its website’s meta-tags, that is, whether there was an intent to confuse; (4) the manner and method in which Clearline and Cooper B-Line used the marks; (5) the similarity between the goods or services in question; (6) the degree of care likely to be used by purchasers; (7) the degree of actual confusion; and (6) other factors about the goods or services that would tend to reduce any tendency to confuse the purchaser as to the source of origin of the product. NOTES This proposed instruction submits the issue of trademark infringement as discussed in the Court’s summary judgment order. AUTHORITIES Eli Lilly & Co. v. Natural Answers, Inc., 223 F.3d 456, 465 (7th Cir. 2000); Interstellar Starship Svcs., Ltd. v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002).

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DEFENDANT COOPER’S REQUESTED INSTRUCTION ON LACHES AND FAIR USE DEFENSES Cooper B-Line contends that Clearline unreasonably delayed in asserting any claimed rights to the protection of either its trade dress or its trademark. If Clearline engaged in an inexcusable delay that results in prejudice to Cooper BLine, then Clearline is guilty of laches. Laches comprises three elements: (1) delay in asserting one's trade dress or trademark rights, (2) lack of excuse for the delay, and (3) undue prejudice to the alleged infringer caused by the delay. Cooper B-Line also asserts that any use, challenged as an infringement, of the trademark in either the meta-tags or the tradeshow publications were a use, otherwise than as a trademark, of a term which is descriptive of, and fairly used in good faith solely to describe its goods or their geographic origin. If you find that Clearline either unreasonably delayed in asserting its trade dress or trademark infringement claims, or that Cooper B-Line’s use of the trademarks in either the meta-tags or the tradeshow publications was descriptive of, and fairly used in good faith solely to describe its goods or their geographic origin, then your verdict should be for Cooper B-Line. NOTES This proposed instruction submits the issue of trademark infringement as discussed in the Court’s summary judgment order. AUTHORITIES Board of Supervisors for Louisiana State University Agricultural and Mechanical College v. Smack Apparel Co. 550 F.3d 465, 489-90 (5th Cir. 2008) (laches); Abraham v. Alpha Chi Omega, 816 F.Supp.2d 357, 360 -362 (N.D. Tex. 2011) (Ferguson, J.) (same); Ergon, Inc. v. Dean, 649 S.W.2d 772, 779 (Tex. App.—Austin 1983, no writ) (fair descriptive use); KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 116-117 (2004).

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DEFENDANT COOPER’S REQUESTED INSTRUCTION ON LOST PROFITS If you find that Clearline has a protectable trade dress or trademark that was infringed by Cooper B-Line, then you must determine the amount of damages to be awarded to Clearline for the infringement in either lost-profit damages suffered by Clearline or disgorgement of the profits earned by Cooper B-Line. Please recall my earlier instructions that Clearline’s trade dress claim is limited only to the alleged use by Cooper B-Line of reflective yellow striping on black support blocks, and Clearline’s trademark claim against Cooper B-Line is limited to the meta-tags and the tradeshow catalog. The purpose of compensatory damages is to make the party whole—that is, to compensate the party for the damage it has suffered. You may award compensatory damages only for injuries that Clearline proves were proximately caused by Cooper B-Line’s allegedly wrongful conduct. The damages that you award must be fair compensation for all of Clearline’s damages, no more and no less. Compensatory damages are not allowed as a punishment and cannot be imposed or increased to penalize a party. You should not award compensatory damages for speculative injuries, but only for those injuries which the party has actually suffered or is reasonably likely to suffer in the future. If you decide to award compensatory damages, you should be guided by dispassionate common sense. Computing damages may be difficult, but you must not let that difficulty lead you to engage in arbitrary guesswork. On the other hand, the law does not require that a party prove the amount of its losses with mathematical precision, but only with as much definiteness and accuracy as the circumstances permit. You must use sound discretion in fixing an award of damages, drawing reasonable inferences where you find them appropriate from the facts and circumstances in evidence. Once again, the fact that I am instructing you as to the proper measure of damages should not be construed as intimating any view of the Court as to which party is entitled to prevail in this case. Instructions as to the measure of damages are given for your guidance in the event you find the evidence on liability in favor of Clearline. Lost profits must be determined with reasonable certainty, and Clearline’s proof of its lost profits, if any, must be non-speculative and corroborated.

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NOTES This proposed instruction follows accepted Fifth Circuit charges on compensatory damages and the case law discussing lost profits in trade dress and trademark infringement cases. AUTHORITIES 15 U.S.C. § 1117(a); Badger Meter, Inc. v. Grinnell Corp., 13 F.3d 1145, 1157 (7th Cir.1994) (holding that section 1117 damages “must constitute compensation’ for its own losses or for the defendant’s unjust enrichment; section . . . does not allow a “penalty” against the defendant.).

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DEFENDANT COOPER’S REQUESTED INSTRUCTION ON PROFIT DISGORGEMENT In addition to compensatory damages for its own lost profits, Clearline is seeking any profits earned by Cooper B-Line that are attributable to the alleged infringement. If you find that Clearline has proved by a preponderance of the evidence that it has a protectable trade dress and that Cooper B-Line infringed Clearline’s trade dress, then you may award Clearline profits that Cooper B-Line has earned attributable to its use of the claimed trade dress or trademark that you find to be protectable and infringed. An award of Cooper B-Line’s profits is not automatic, and should be awarded only to the extent that you find it is fair to do so. If Clearline fails to present evidence that Cooper B-Line benefitted from the alleged trade dress infringement, you may not award any of Cooper B-Line’s profits to Clearline. An award of Cooper B-Line’s profits, if any, is meant to be compensation and not a penalty. In deciding whether or not to award damages any profits attributable to the alleged infringement, you should consider the following factors: (1) whether Cooper B-Line had the intent to confuse or deceive; (2) whether sales have been diverted from Clearline; (3) the adequacy of other remedies; (4) any unreasonable delay by Clearline in asserting his rights; (5) the public interest in making the misconduct unprofitable; and (6) whether this is a case of palming off by Cooper B-Line. If you believe that lost profits should be awarded, Clearline has the burden of proving Cooper B-Line’s gross profits attributable to any infringement by a preponderance of the evidence. Cooper B-Line bears the burden of showing any elements of cost or deduction from sales by a preponderance of the evidence. NOTES This proposed instruction follows accepted jury charges on profit disgorgement, as described in the case law discussing lost profits in trade dress and trademark infringement cases. AUTHORITIES 15 U.S.C. § 1117(a); Badger Meter, Inc. v. Grinnell Corp., 13 F.3d 1145, 1157 (7th Cir.1994); Taco Cabana Intern., Inc. v. Two Pesos, Inc., 932 F.2d 1113 (5th Cir. 1991); aff’d, 505 U.S. 763 (1992); Shen Mfg. Co. v. Suncrest Mills, Inc., 673 F. Supp. 1199, 1206 (S.D.N.Y.1987).

Case 4:11-cv-01420 Document 128-9 Filed in TXSD on 09/24/12 Page 11 of 18

DEFENDANT COOPER’S REQUESTED QUESTIONS TO THE JURY QUESTION_____ Is the use by either Clearline or Cooper B-Line of reflective yellow striping on a support block’s black surface non-functional? Answer “Yes,” or “no” with respect to both of the following:
a.

Clearline’s reflective yellow striping ANSWER:

b.

Cooper B-Line’s reflective yellow striping ANSWER:

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QUESTION_____ Is the use by Cooper B-Line of reflective yellow striping on a support block’s black surface required by competitive necessity? Answer “Yes,” or “no” with respect to both of the following:
c.

Clearline’s reflective yellow striping ANSWER:

d.

Cooper B-Line’s reflective yellow striping ANSWER:

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QUESTION_____ Did Clearline’s use of reflective yellow striping on its support blocks acquire a secondary meaning? Answer “Yes,” or “no.”

ANSWER:

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QUESTION_____ Did Cooper B-Line’s use of reflective yellow striping on a black surface create a likelihood of confusion as to the source, affiliation, or sponsorship of Cooper B-Line’s product? Answer “Yes,” or “no.”

ANSWER:

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QUESTION_____ If you answered “Yes” to any item in Question Nos. ___ or ___, please answer the following question: Answer “yes” or “no” in response to each of the following sub-parts with respect to any use of the C-PORT trademark in Cooper B-Line’s website meta-tags or the tradeshow catalogs: 1.
a.

Use of the trademark in meta-tags:

Was any such use intended to cause confusion as to the source, sponsorship, or affiliation of Cooper B-Line’s DURA-BLOK products?

ANSWER:
b.

Did any such use actually cause confusion as to the source, sponsorship, or affiliation of Cooper B-Line’s DURA-BLOK products? ANSWER: 2. Use of the trademark in tradeshow catalogs:

a.

Was any such use intended to cause confusion as to the source, sponsorship, or affiliation of Cooper B-Line’s DURA-BLOK products? ANSWER:

b.

Did any such use actually cause confusion as to the source, sponsorship, or affiliation of Cooper B-Line’s DURA-BLOK products?

ANSWER:

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QUESTION_____ If you answered “Yes” to any item in Question Nos. ___ or ___, please answer the following question: Clearline is entitled to any profits earned by Cooper B-Line that are attributable to the infringement, if proven by a preponderance of the evidence. Profit is determined by deducting all expenses from gross revenue. Gross revenue is all of defendant’s receipts from using the trademark or trade dress in the sale of a product. Clearline has the burden of proving Cooper B-Line’s gross revenue by a preponderance of the evidence. Expenses are all operating, overhead, and production costs incurred in producing the gross revenue. Cooper B-Line has the burden of proving the expenses and the portion of the profit attributable to factors other than use of the infringed trademark by a preponderance of the evidence. Clearline has the burden of proving the amount of Cooper B-Line’s total sales based on the infringement. Cooper B-Line then has the burden of proving expenses that should be deducted from total sales. These expenses include all costs incurred in producing the total sales based upon the infringement. Profit is then determined by subtracting expenses from total sales. What amount of money, if paid now in cash, represents the profits earned by Cooper B-Line as a proximate cause of its acts of trademark or trade dress infringement, if any?
“Proximate cause” means a cause that was a substantial factor in bringing about an event, and without which cause such event would not have occurred. In order to be a proximate cause, the act or omission complained of must be such that a person using the degree of care required of him would have foreseen that the event, or some similar event, might reasonably result therefrom. There may be more than one proximate cause of an event.

Answer in dollars and cents, if any, as to each of the following.

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1.

Trade dress (the reflective yellow striping)

Answer:
2.

$____________________

Use of the trademark in meta-tags

Answer:
3.

$____________________

Use of the trademark in tradeshow catalogs

Answer:

$____________________

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QUESTION_____ If you answered “Yes” to any item in Question Nos. ___ or ___, please answer the following question: What amount of money, if paid now in cash, would fully compensate Clearline for its lost profits, if any, that were a natural, probable, and foreseeable consequence of Cooper B-Line’s acts of trademark or trade dress infringement? Answer in dollars and cents, if any, as to each of the following. 1. Trade dress (the reflective yellow striping)

Answer:
2.

$____________________

Use of the trademark in meta-tags

Answer:
3.

$____________________

Use of the trademark in tradeshow catalogs

Answer:

$____________________

NOTES
These damages questions follow the instructions above on profit disgorgement and lost profits, as described in the case law cited with the instructions.

Case 4:11-cv-01420 Document 128-10 Filed in TXSD on 09/24/12 Page 1 of 9

EXHIBIT 7bA IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF TEXAS CLEARLINE TECHNOLOGIES LTD., Plaintiff, v. COOPER B-LINE, INC., Defendant. § § § § § § § § §

No. 4:11-cv-1420 JURY DEMANDED

PLAINTIFF CLEARLINE TECHNOLOGIES LTD.’S PRETRIAL MEMORANDUM OF LAW Plaintiff Clearline Technologies Ltd. (“Clearline”) files Pretrial Memorandum of Law, pursuant to Section 10(B)(3) of the Court’s Procedures. INTRODUCTION AND SUMMARY This case involves claims for trade dress and trademark infringement under federal and Illinois law and violations of the Illinois Deceptive Trade Practices Act.1 Clearline has alleged that Defendant Cooper B-Line, Inc. (“Cooper”) infringed upon Clearline’s C-PORT® trademark and Clearline’s trade dress. The remaining issues before the Court have been substantially briefed and addressed throughout the course of this litigation, and the Court’s recent Orders have clarified the scope of the issues that will be relevant at trial. Clearline provides this Memorandum pursuant to the Court’s Procedures as an overview of the legal issues that will be presented at trial. Clearline will provide specific briefing where necessary in response to other legal questions that are raised through pretrial motions. Where necessary, Clearline will refer the Court to other filings or docket entries that include the Court’s view on a particular issue, or Clearline’s previous or simultaneous submissions on a particular legal point.
                                                            
The Court has addressed other claims asserted by Clearline, including for fraud and breach of contract, in previous Orders (Dkts. ). As those claims are not to be presented at trial, they are not addressed in this submission.
1

1
 

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LEGAL ISSUES RELATING TO TRADE DRESS INFRINGEMENT The term “trade dress” refers to the total image and overall appearance of a product and may include features such as the size, shape, color, color combinations, textures, graphics, and even sales techniques that characterize a particular product. Pebble Beach Co. v. Tour 18 I, LTD, 155 F.3d 526, 536 (5th Cir. 1998) (“With trade dress, the question is whether the ‘combination of features creates a distinctive visual impression, identifying the source of the product.’”) (citing Sunbeam Prods., Inc. v. West Bend Co., 123 F.3d 246, 251 & n. 3 (5th Cir.1997), cert. denied, ___ U.S. ___, 118 S.Ct. 1795, 140 L.Ed.2d 936 (1998)). In its Order of July 2, 2012 (Dkt. 108), the Court held that there was a genuine issue of material fact regarding whether two components of Clearline’s claimed trade dress, the black-and-yellow color scheme and the yellow stripe, were entitled to trade dress protection. The jury will be presented with the following legal issues: (1) whether the black-and-yellow color scheme and the yellow stripe are not functional; (2) whether the black-and-yellow color scheme and the yellow stripe have obtained secondary meaning; (3) whether there is a likelihood of confusion between Clearline’s C-PORT® product and Cooper’s DURA-BLOK product; (4) whether Cooper’s infringement was willful; and (5) what damages Clearline is entitled to. 1. Whether the black-and-yellow color scheme and the yellow stripe are not functional. These issues have been substantially briefed and addressed by the Court’s Orders of July 2, 2012 (Dkt. 108, at 21–23) and August 22, 2012 (Dkt. 121, at 3–4). As the Court has noted, Clearline must prove that the black-and-yellow color scheme and the yellow stripe are not functional. Order, Dkt. 108, at 10. Whether these elements are not functional requires consideration of whether the black-and-yellow color scheme and the yellow stripe are “essential to the use or purpose of the article or if it affects the cost or quality of an article.” Id. at 11 (citing TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32 (2001)). These features are 2
 

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“essential” if they serve any significant function other than to distinguish a firm’s goods or identify their source. Id. If a product feature is the reason the device works, then the feature is functional. Id. (citing Eppendorf-Netheler-Hinz GMBH v. Ritter GMBH, 289 F.3d 351, 355 (5th Cir. 2002)). It is Clearline’s position that these features are not functional under this legal definition. 2. Whether the black-and-yellow color scheme and the yellow stripe have obtained secondary meaning. The Court has held that the issue of secondary meaning should be addressed by the jury. Secondary meaning concerns the public’s mental association between the mark and the alleged mark holder to determine whether, in the minds of the public, the primary significance of the mark is to identify the source of the product rather than the product itself.” Order, Dkt. 108, at 23 (citing Bd. of Supervisors for La. State Univ. Agric. and Mech. College v. Smack Apparel Co., 550 F.3d 465, 476 (5th Cir. 2008)). Clearline has the burden to show that the consuming public associated Clearline’s trade dress with a single source, regardless of whether the name of the source is unknown, to find that it has acquired secondary meaning. 1 J. McCarthy, McCarthy on Trademarks and Unfair Competition § 8:8, at 8-43 (3d ed. 1994). The Court identified seven factors that the jury will address: (1) length and manner of use of the mark or trade dress, (2) volume of sales, (3) amount and manner of advertising, (4) nature of use of the mark or trade dress in newspapers and magazines, (5) consumer-survey evidence, (6) direct consumer testimony, and (7) the defendant's intent in copying the trade dress. Id. at 12 (citing Pebble Beach, 155 F.3d at 543). The facts and factors that the jury will consider have been previously addressed in Clearline’s briefing and the Court’s Order (Dkt. 108 at 24–25), and are further discussed in the Proposed Jury Instructions being submitted simultaneously with this Order.

3
 

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3. Whether there is a likelihood of confusion between Clearline’s C-PORT® product and Cooper’s DURA-BLOK product. The issue of likelihood of confusion has been substantially briefed and was succinctly summarized by the Court’s Order of July 2, 2012: [I]nfringement occurs where “the use creates a likelihood of confusion as to the ‘source, affiliation, or sponsorship’” of the alleged infringer’s product. Pebble Beach, 155 F.3d at 543 (citing 15 U.S.C. § 1125(a)(1)(A)). “‘Likelihood of confusion’ means more than a mere possibility; the plaintiff must demonstrate a probability of confusion.” Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 226 (5th Cir. 2009). Courts “examine the following nonexhaustive ‘digits of confusion’ in evaluating likelihood of confusion: (1) the type of trademark; (2) mark similarity; (3) product similarity; (4) outlet and purchaser identity; (5) advertising media identity; (6) defendant's intent; (7) actual confusion; and (8) care exercised by potential purchasers.” Id. at 227. “No digit is dispositive, and the digits may weigh differently from case to case, depending on the particular facts and circumstances involved.” Id. (quotation marks omitted). “[L]ikelihood of confusion is typically a question of fact.” Id. Order, Dkt. 108, at 25. These factors are further discussed in the Proposed Jury Instructions being submitted simultaneously with this Order. 4. Whether Cooper’s infringement was willful. Under federal law, if the infringer acted willfully, the Court may treble damages, as well as award attorneys’ fees. 15 U.S.C. § 1117(a). The Court may also award attorneys’ fees for willful infringement under the Illinois Deceptive Trade Practices Act. 815 ILCS 510/3. The question of whether Cooper’s infringement was willful is for the jury. Seatrax, Inc. v. Sonbeck Int’l, Inc., 200 F.3d 358, 372–73 (5th Cir. 2000). Cooper acted “willfully” if it acted voluntarily and intentionally and with the intent to cause the likelihood of consumer confusion, to cause mistake, or to deceive. Pebble Beach Co. v. Tour 18 I, Ltd., 155 F.3d 526, 544 (5th Cir. 1998) (describing the willfulness factor as “whether the defendant had the intent to confuse or deceive); accord Quick Technologies, Inc. v. The Sage Group, PLC, 313 F.3d 338, 347, 349 n.9 (5th Cir. 2002), cert. denied, 540 U.S. 814, 124 S. Ct. 66, 157 L.Ed.2d 29 (2003). 4
 

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5. What damages Clearline is entitled to. Under 15 U.S.C. 1117(a), Clearline may recover Clearline’s lost profits and Cooper’s profits. The law regarding damages was not substantially assessed in the parties’ briefing, but the relevant authorities have been provided in the Proposed Jury Instructions being submitted simultaneously with this Order. In regard to a recovery of Cooper’s profits, 15 U.S.C. 1117(a) provides that Clearline “shall be required to prove defendant's sales only; defendant must prove all elements of cost or deduction claimed.” Furthermore, “[i]f the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty.” Id. LEGAL ISSUES RELATING TO TRADEMARK INFRINGEMENT In its Order of July 2, 2012, the Court held that there is a genuine issue of material fact as to whether Cooper infringed upon Clearline’s C-PORT® trademark. The jury will be presented with the following legal issues: (1) whether “C-PORT” is a trademark registered to Clearline; (2) whether Cooper used the “C-PORT” trademark without Clearline’s permission in a manner that was likely to cause confusion; (3) whether Cooper’s infringement was willful; and (4) what damages Clearline is entitled to. 1. Whether “C-PORT” is a trademark registered to Clearline. To prove this element, Clearline will be presenting evidence of Trademark Registration No. 3227010 which is a word mark for “C-PORT”. Clearline will also present evidence that Clearline owns the C-PORT trademark and that the C-PORT trademark is incontestable.

5
 

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2. Whether Cooper used the “C-PORT” trademark without Clearline’s permission in a manner that was likely to cause confusion. As discussed above, the factors for consideration in the likelihood of confusion inquiry are: (1) the type of trademark; (2) mark similarity; (3) product similarity; (4) outlet and purchaser identity; (5) advertising media identity; (6) defendant's intent; (7) actual confusion; and (8) care exercised by potential purchasers.” Order, Dkt. 108, at 25. “No digit is dispositive, and the digits may weigh differently from case to case, depending on the particular facts and circumstances involved.” Id. If the likelihood of confusion analysis is closely balanced, it should be resolved in favor of Clearline. See Am. Century Proprietary Holdings v Am. Century Cas. Co., 295 Fed Appx 630, 635 (5th Cir 2008) (citing Quantum Fitness Corp. v. Quantum LifeStyle Ctrs., L.L.C., 83 F.Supp.2d 810, 831 (S.D. Tex. 1999)); 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:64 (4th ed. 2006) (“The burden of proof is always on the plaintiff, but when the evidence is weighed and the scales balance equally, the doubt is resolved in favor of the party who has built up valuable rights in the mark.”). If Clearline can show that Cooper used the mark C-Port with the intent of deriving benefit from the reputation or goodwill of Clearline, that fact alone may be sufficient to justify a finding of a likelihood of confusion. Elvis Presley Enterprises, Inc. v. Capece, 141 F. 3d 188, 203 (5th Cir. 1998). Evidence of actual confusion is not necessary to a finding of a likelihood of confusion. See O’Malley, Grenig & Lee, Federal Jury Practice and Instructions, Civil Companion Handbook West 2011 § 6:1 (citing Waco Int’l Corp. v. KHK Scaffolding, Inc., 2000 WL 34593839 (S.D. Tex. 2000)). Infringement can be based upon confusion that creates initial consumer interest, even though no actual sale is finally completed as a result of the confusion. Initial-interest confusion gives, to a newcomer to the market for the trademarked goods, credibility during the early stages of a transaction, and can possibly bar the trademark owner from consideration by the consumer 6
 

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once the confusion is dissipated. Id; accord Elvis Presley, 141 F. 3d at 203–04 (5th Cir. 1998); Pet Silk, Inc. v. Jackson, 481 F.Supp.2d 824, 829–30 (S.D. Tex. 2007). The issue involving the use of “meta-tags” has been substantially briefed and was succinctly summarized by the Court’s Order of January 9, 2012: The Court finds that there are sufficient facts to find a likelihood of confusion stemming from Cooper plc’s use of Clearline’s trademark in its metatags. The use of meta-tags has been compared to the use of a misleading sign on a freeway: Suppose West Coast's competitor (let's call it “Blockbuster”) puts up a billboard on a highway reading—“West Coast Video: 2 miles ahead at Exit 7”—where West Coast is really located at Exit 8 but Blockbuster is located at Exit 7. Customers looking for West Coast's store will pull off at Exit 7 and drive around looking for it. Unable to locate West Coast, but seeing the Blockbuster store right by the highway entrance, they may simply rent there. Brookfield, 174 F.3d at 1064; see also Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004). Some courts have criticized the use of this metaphor, arguing that resuming one’s internet search is easier than finding the physical store that the customer initially intended to patronize. See Bihari v. Gross, 119 F. Supp. 2d 309, n. 15, (S.D.N.Y. 2000); Hearts on Fire Company, LLC v. Blue Nile, Inc., 603 F. Supp. 2d 274 (D. Mass. 2009). However, if the goods are similar enough to cause confusion, the customer may buy or become interested in the advertised goods without returning to his original internet search. See Interstellar Starship Services, Ltd. v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002) (“[A]ctionable initial interest confusion on the Internet is determined, in large part, by the relatedness of the goods offered and the level of care exercised by the consumer.”); Network Network v. CBS, Inc., No. CV 98–1349 NM(ANX), 2000 WL 362016, at *9 (C.D. Cal. Jan. 18, 2000) (“A trademark violation based on initial interest confusion involves the junior user capitalizing on the senior user’s goodwill. . . . Thus, relatedness of products is an important component in the analysis.”)[.] Order, Dkt. 48, at 13. As Clearline’s “C-PORT” trademark was present in the meta-tags on Cooper’s website, this analysis will be relevant to the jury’s consideration of likelihood of confusion.

7
 

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3. Whether Cooper’s infringement was willful. The specific legal issues relating to this question are similar or identical to those addressed in the same section regarding trade dress infringement above, and Clearline refers the Court to that section. 4. What damages Clearline is entitled to. The specific legal issues relating to this question are similar or identical to those addressed in the same section regarding trade dress infringement above, and Clearline refers the Court to that section. LEGAL ISSUES RELATING TO ILLINOIS DECEPTIVE TRADE PRACTICES ACT CLAIMS Clearline has also raised claims under Illinois law relating the Illinois Deceptive Trade Practices Act. The Illinois DTPA is a codification of the Illinois common law of unfair competition, McGraw-Edison Co. v. Walt Disney Productions, 787 F.2d 1163, 1174 n.9 (7th Cir. 1986), and, as the Court has previously recognized, Illinois DTPA claims are adjudged using the same standards as claims for trademark and trade dress infringement. Order, Dkt. 48, at 12. In regard to the Illinois Deceptive Trade Practices Act, Clearline contends that, based on Cooper’s actions primarily in Illinois, Cooper willfully engaged in the following deceptive trade practices: passing off its Dura-Blok products as C-Port products in violation of Section 2(a)(1); causing likelihood of confusion as to the source or approval of its Dura-Blok products in violation of Section 2(a)(2); causing likelihood of confusion as to its affiliation, connection or association with Clearline in violation of Section 2(a)(3); and, engaging in other conduct that similarly created a likelihood of confusion or misunderstanding in violation of Section 2(a)(12). 815 ILCS 510/2(a)(1), (2), (3), (12). The Illinois DTPA has some unique provisions relating to damages, including a provision 8
 

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for injunctive relief if a violation of the DTPA is found. 815 ILCS 510/3. Attorneys’ fees are available if Cooper’s conduct is found to be willful.

9
 

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EXHIBIT 7bB IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF TEXAS CLEARLINE TECHNOLOGIES LTD. Plaintiff, v. COOPER B-LINE, INC. COOPER INDUSTRIES PLC, and COOPER TECHNOLOGIES COMPANY, Defendants. § § § § § § § § § § §

No. 4:11-cv-1420 JURY DEMANDED

DEFENDANT COOPER B-LINE, INC’S MEMORANDUM OF LAW TO THE HONORABLE UNITED STATES DISTRICT JUDGE: Defendant Cooper B-Line, Inc. (“Cooper B-Line”) submits the following Memorandum of Law. ARGUMENT AND AUTHORITIES 1. All Of Plaintiff’s Claims Are Governed By The Lanham Act. Plaintiff’s trade dress and trademark infringement claims under Illinois common law (Count 2), and the Illinois Deceptive Trade Practices Act, 814 ILCS 510/2 (Count 3) are subsumed within and governed by the same standards as Plaintiff’s trade dress and trademark infringement claims under the Lanham Act. Dynamic Fluid Control (PTY) Ltd. v. International Valve Mfg., LLC, 790 F.Supp.2d 732, 739 (N.D. Ill. 2011) (DTPA); Specht v. Google, Inc., 660 F.Supp.2d 858, 866 (N.D. Ill. 2009) (DTPA); Jim Mullen Charitable Foundation v. World Ability Federation, NFP, 395 Ill.App.3d 746, 335 Ill.Dec. 34, 917 N.E.2d 1098, 1104 (Ill.App.Ct.2009).

1

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2.

Plaintiff Must Prove That The Product Feature For Which It Seeks Trade Dress Protection Is Nonfunctional, Has Secondary Meaning, And That Its Use Creates A Likelihood Of Confusion. “‘Trade dress’ refers to the design or packaging of a product which serves to identify the

product's source.” Eppendorf –Netheler-Hinz GMBH v. Ritter GMBH, 289 F.3d 351, 354 (5th Cir. 2002). “To prove infringement of a trade dress, a plaintiff must show 1) that the dress is protectable; and 2) that infringement has occurred.” Shell Trademark Mgt. B.V. v. Warren Unilube, Inc., 765 F.Supp.2d 884, 895 (S.D. Tex. 2011). The first prong of a trade dress

infringement claim, that the dress is protectable, requires the plaintiff to prove that the allegedly infringing dress is nonfunctional and that it is either inherently distinctive or has secondary meaning. Id.; Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210 (2000). The second prong of a trade dress infringement claim – infringement – requires a plaintiff to prove that the use of the dress creates a likelihood of confusion as to the source, affiliation, or sponsorship of the alleged infringing product. 15 U.S.C. § 1125(a)(1)(A); Shell, 765 F.Supp.2d at 896. a. Functionality (i) 25. Traditional Test

A product feature is functional under the traditional test if it is essential to the use

or purpose of the product or if it affects the cost or quality of the product. Traffix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29 (2002). A product feature is essential to the use or purpose of a product if it serves any significant function other than to distinguish a firm's goods or identify their source. Poly-America, L.P. v. Stego Industries, L.L.C., 2011 WL 3206687, *10 (N.D. Tex. 2011), citing Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165-66 (1995).

2

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“Essential” in this context is different from a layman's understanding of the word and is instead a term of art used to distinguish product features that only serve to identify a product's source from those that serve any other significant function. Id.; see also Baughman Tile Co. v. Plastic Tubing, Inc., 211 F.Supp.2d 720, 723 (E.D.N.C.) (recognizing that functionality inquiry involves determination of whether feature serves some utilitarian purpose or yields some utilitarian advantage). A product feature need not be functional in all applications to fall outside the scope of protection. Poly-America, 2011 WL 3206687, *8; Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1277-78 (Fed. Cir. 2002). The availability of alternative designs is irrelevant to the functionality analysis. Traffix, 532 U.S. at 33-34; Eppendorf, 289 F.3d at 355, 357. (ii) Competitive Necessity or Utilitarian Test

If a product feature is nonfunctional under the traditional test, the next test is the competitive necessity or utilitarian test. Traffix, 532 U.S. at 33; Eppendorf, 289 F.3d at 356. This test inquires into whether the particular product feature is a competitive necessity; that is, whether the exclusive use of it would put competitors at a significant, non-reputation related disadvantage. Traffix, 532 U.S. at 33. As applied by the Fifth Circuit, the inquiry is whether characterizing a feature or configuration as protected will hinder competition or impinge upon the rights of others to compete effectively in the sale of goods. Eppendorf, 289 F.3d at 356. b. Secondary Meaning

Product design that is alleged to be trade dress – as in this case – is never inherently distinctive, so proof of secondary meaning is always required. Wal-Mart, 529 U.S. at 212-13. Proof of secondary meaning requires a plaintiff to prove that, in the minds of the public, the primary significance of the product feature is to identify the source of the product rather than the product itself. Wal-Mart, 529 U.S. at 211. A “[p]laintiff must demonstrate a high degree of

3

Case 4:11-cv-01420 Document 128-11 Filed in TXSD on 09/24/12 Page 4 of 7

proof to establish secondary meaning.” Sugar Busters L.L.C. v. Brennan, 177 F.3d 258, 269 (5th Cir. 1999). In addition, a plaintiff must demonstrate that the secondary meaning existed at the time the alleged infringement began. Id. at 269, n.8. Factors for consideration are: (1) the length and manner of the use of the trade dress; (2) the nature and extent of advertising and promotion of the trade dress; (3) the sales volume of the product; (4) instances of actual confusion; and (5) survey evidence. Id. at 269. c. Likelihood of Confusion

The second prong of a trade dress infringement claim – infringement – requires a plaintiff to prove that the use of the dress creates a likelihood of confusion as to the source, affiliation, or sponsorship of the alleged infringing product. 15 U.S.C. § 1125(a)(1)(A); Shell, 765 F.Supp.2d at 896. “‘Likelihood of confusion’ means more than a mere possibility; the plaintiff must demonstrate a probability of confusion.” Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 226 (5th Cir. 2009). To demonstrate a probability of confusion, the plaintiff must prove that “a large number of purchasers likely will be confused as to the source of the goods in question.” Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 743 (2nd Cir. 1998). Factors for

consideration are: (1) the type of trademark allegedly infringed, (2) the similarity between the marks, (3) the similarity of the products or services, (4) the identity of the retail outlets and purchasers, (5) the identity of the advertising media used, (6) the defendant's intent, and (7) any evidence of actual confusion. Sugar Busters, 177 F.3d at 264 n.1. 3. Plaintiff Must Prove That Cooper B-Line’s Alleged Use Of Its Trademark Created A Likelihood Of Confusion. “‘The mere reproduction of a trademark does not constitute infringement if there is no likelihood of confusion.’” National Business Forms & Printing, Inc. v. Ford Motor Co., F.3d. (5th Cir. 2012), 2012 WL 502712, *2 (Feb. 16, 2012), quoting 4 J. Thomas McCarthy,

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Case 4:11-cv-01420 Document 128-11 Filed in TXSD on 09/24/12 Page 5 of 7

MCCARTHY

ON

TRADEMARKS

AND

UNFAIR COMPETITION § 25.8 (4th ed. 2009). Factors for

consideration are: (1) the type of trademark allegedly infringed, (2) the similarity between the marks, (3) the similarity of the products or services, (4) the identity of the retail outlets and purchasers, (5) the identity of the advertising media used, (6) the defendant's intent, and (7) any evidence of actual confusion. Sugar Busters, 177 F.3d at 264 n.1.34. 4. Plaintiff Must Prove Both The Cause And Extent Of Any Lost Profits With Reasonable Certainty. A plaintiff’s rights to recover damages for trademark or trade dress infringement under Section 35(a) of the Lanham Act “sounds in tort.” Obear-Nester Glass Co. v. United Drug Co., 149 F.2d 671, 674 (8th Cir. 1945), cert. denied, 326 U.S. 761 (1945). Therefore, a plaintiff is “entitled to recover only such damages as naturally and proximately result from the infringement . . . ” Id. The damages may include “all elements of injury to the business of the trademark owner proximately resulting from the infringer’s wrongful acts” including lost profits Boston Professional Hockey Assoc. v. Dallas Cap & Emblem Mfg., 597 F.2d 71, 75 (5th Cir. 1979). The plaintiff has the burden of proving both the cause and the extent of any actual damages; therefore, the plaintiff must prove that because of the defendant’s infringement it lost sales. Maltina Corp. v. Cawy Bottling Co., 613 F.2d 582, 587 (5th Cir. 1980); see also

Restatement (Third) of Unfair Competition § 36 cmt. h (“The plaintiff, however, bears the burden of proving causation). A court cannot simply assume that sales made by defendant

would have actually been made by plaintiff if not for the defendant’s infringement. Obear, 149 F.2d at 674. While proof of a general decline in sales may support an inference of causation in limited cases, generally, a plaintiff must prove more than just a decrease in overall sales to establish an adequate causal connection between his damages and the defendant’s conduct. Obear, 149 F.2d at 674. While the Fifth Circuit does not require proof of actual customer

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confusion to justify an award for damages, it is among the relevant factors to be considered by courts. Board of Supervisors for Louisiana State University Agricultural and Mechanical

College v. Smack Apparel, Co., 550 F.3d 465, 490 (5th Cir. 2008). A party claiming lost profits must show the amount of the loss by competent evidence with reasonable certainty. Meaux

Surface Protection, Inc. v. Fogelman, 607 F.3d 161, 170 (5th Cir. 2010). This is a fact-intensive inquiry, and any opinions or estimates of lost profits must be based on objective facts, figures, or data from which the amount of lost profits may be ascertained.” Id. at 170-71. The proper measure is lost net profits. Id. at 171. 5. Even If Infringement Occurred, An Award Of A Defendant’s Profits Is Not Automatic. In determining if an award of the defendant’s profits is appropriate, the Fifth Circuit prefers a factor-based approach rather than the adoption a bright-line rule. Quick Technologies, Inc. v. Sage Group PLC, 313 F.3d 338, 349 (5th Cir. 2002). In assessing whether or not a plaintiff is entitled to a defendant’s profits, the Fifth Circuit applies the following non-exclusive list of factors: (1) whether the defendant had the intent to confuse or deceive; (2) whether sales have been diverted; (3) the adequacy of other remedies; (4) any unreasonable delay by the plaintiff in asserting his rights; (5) the public interest in making the misconduct unprofitable; and (6) whether it is a case of palming off. Id. Reviewing evidence under these factors requires a totality of the circumstances approach with no single evidentiary fact carr[ying] the day.” Texas Pig Stands, Inc. v. Hard Rock Cafe Intern., Inc., 951 F.2d 684, 696 (5th Cir. 1992). If an accounting of profits is appropriate, the plaintiff must prove the amount of the defendant’s sales or gross profits attributable to the infringement. 15 U.S.C. 1117(a); Maltina Corp., 613 F.2d at 586. Nonetheless, lack of proof of willful infringement and the absence of any palming off supports a conclusion that the plaintiff is

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Case 4:11-cv-01420 Document 128-11 Filed in TXSD on 09/24/12 Page 7 of 7

not entitled to an accounting of profits. Rolex Watch USA v. Meece, 158 F.3d 816, 828 (5th Cir. 1998), cert. denied, 119 S.Ct. 1808 (1999). Cooper B-Line reserves the right to supplement its Memorandum of Law as necessary given the course of pretrial hearings and trial in this case. Respectfully submitted, /s/ Robin L. Harrison Attorney-in-Charge State Bar No. 09120700 Southern District No. 4556 John L. Dagley State Bar No. 05310050 Southern District No. 12729 CAMPBELL HARRISON & DAGLEY L.L.P. 4000 Two Houston Center 909 Fannin Street Houston, TX 77010 (713) 752-2332 (713) 752-2330 (fax) ATTORNEYS FOR DEFENDANT COOPER B-LINE, INC.

CERTIFICATE OF SERVICE I hereby certify that on September 24, 2012, this document was electronically filed with the Clerk of the Court for the U.S. District Court, Southern District of Texas, as part of the parties joint pretrial order in this case using the electronic case filing system of the Court. The electronic case filing system sent a “Notice of Electronic Filing” to all counsel of record, each of whom have consented in writing to accept the notice as service of this document by electronic means.

/s/ John L. Dagley

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