Sunlighten, Inc. v. Finnmark Designs, LLC ( 2023 )

1 JONATHAN D. BLUM, ESQ. Nevada Bar No. 09515 2 WILEY PETERSEN 1050 Indigo Drive, Suite 200B 3 Las Vegas, Nevada 89145 4 Telephone: (702) 910-3329 Facsimile: (702) 553-3467 5 Email: jblum@wileypetersenlaw.com 6 JAMES J. KERNELL, ESQ. (Pro Hac Vice) 7 Kansas Bar No. 19559 KYLE D. DONNELLY, ESQ. (Pro Hac Vice) 8 Kansas Bar No. 25531 AVEK IP, LLC 9 8900 State Line Road, Suite 500 10 Leawood, Kansas 66206 Telephone: (913) 549-4700 11 Facsimile: (913) 549-4646 Email: jkernell@avekip.com 12 13 kdonnelly@avekip.com 14 Attorneys for Plaintiff Sunlighten, Inc. 15 16 UNITED STATES DISTRICT COURT 17 DISTRICT OF NEVADA 18 SUNLIGHTEN, INC., Case No.: 2:20-cv-00127-CDS-NJK 19 Plaintiff 20 v. JOINT PRETRIAL ORDER 21 FINNMARK DESIGNS, LLC, 22 Defendant 23 24 25 26 27 28 1 After pretrial proceedings in this case, 2 IT IS ORDERED: 3 I. 4 A. Plaintiff’s Statement of the Case 5 This is an action for unfair competition and false designation of origin under 15 U.S.C. 6 §1125(a), violation of Nevada Deceptive Trade Practices Nevada Revised Statute 598, and 7 Trademark Infringement and Unfair Competition under Nevada common law. 8 1. Sunlighten’s Contentions 9 Sunlighten has been in business since 1999 and has focused its business on creating 10 wellness products and services that enable consumers to improve their quality of life. Sunlighten 11 is known for its unique and innovative sauna designs along with other wellness products. Based 12 in Overland Park, Kansas, Sunlighten is a leader in the sauna market and is a consistent innovator 13 when it comes to infrared-based saunas and heaters. A major factor that has allowed Sunlighten 14 to surpass competitors is the way in which they construct their saunas. Each sauna is made to be 15 over 30% thicker than the industry standard while the wood and process that they use to construct 16 them is meant to be environmentally friendly. 17 Sunlighten’s industry-leading approach to the design and manufacturing of quality saunas 18 has resulted in intellectual property protection for its innovations, including utility patents, design 19 patents, trademarks, and trade dress protection. Sunlighten’s innovations have resulted in 20 emulation by its competitors, who have attempted to capitalize on Sunlighten’s success by 21 imitating its innovative and distinctive product designs. Such is the case with the present lawsuit. 22 Finnmark has copied Sunlighten’s proprietary, patented sauna designs. Not only has Finnmark 23 copied the designs, but it has used a confusingly similar trademark and trade dress to lure 24 consumers into purchasing its saunas believing them to be Sunlighten saunas. 25 Sunlighten has used the Empower trademark for saunas continuously and exclusively 26 since 2009. Sometime in 2019, Finnmark began importing and selling saunas marked with the 27 Empower trademark. Upon learning of Finnmark’s use of the Empower trademark with its saunas, 28 1 Sunlighten sent Finnmark a letter dated January 21, 2020 demanding that Finnmark immediately 2 cease use of Empower or any confusingly similar name, in any manner associated with saunas. 3 Sunlighten also demanded that Finnmark: (1) promptly inform in writing its dealers, distributors, 4 retailers, or any other entity which sells Finnmark saunas to immediately cease use of Empower 5 or any confusingly similar name, in any manner associated with its saunas and destroy all printed 6 materials which include Empower; (2) within 14 days, provide a complete accounting of all 7 Finnmark Infringing Saunas ordered, imported, sold, and in inventory, including the name and 8 address of the manufacturer, importer, seller, and the location of the sales or units in inventory; 9 (3)pay a royalty of 25% of the retail sales price for all Finnmark Infringing Saunas already sold; 10 (4) destroy all Finnmark Infringing Saunas in inventory; and (5) cease all future importation of 11 12 Finnmark Infringing Saunas. Shortly thereafter Finnmark removed Empower from its website, 13 thereby admitting that it was infringing Sunlighten’s trademark, but refused to comply with any 14 of the other demands. Finnmark has refused to stipulate and swear that it will not use the 15 Empower trademark, or any confusingly similar trademark with sales of its saunas in the future. 16 Before it ceased infringement of the Empower trademark, Finnmark sold 800 saunas under 17 the Empower name at a profit of $100 each for a total profit of $80,000. Finnmark sold an 18 additional 18 saunas under the Empower name at a retail price of $3,795 each for a total of 19 $68,310. When Finnmark entered into the sauna market in 2019, it knew of Sunlighten and 20 Sunlighten’s use of Empower for its saunas. 21 When a violation of any right of the registrant of a mark registered in the Patent and 22 Trademark Office, a violation under section 1125(a) or (d) of this title, or a willful violation under 23 section 1125(c) of this title, shall have been established in any civil action arising under this 24 chapter, the plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 of this 25 title, and subject to the principles of equity, to recover (1) defendant's profits, (2) any damages 26 sustained by the plaintiff, and (3) the costs of the action. The court shall assess such profits and 27 damages or cause the same to be assessed under its direction. In assessing profits the plaintiff 28 shall be required to prove defendant's sales only; defendant must prove all elements of cost 1 or deduction claimed. In assessing damages the court may enter judgment, according to the 2 circumstances of the case, for any sum above the amount found as actual damages, not exceeding 3 three times such amount. If the court shall find that the amount of the recovery based on profits 4 is either inadequate or excessive the court may in its discretion enter judgment for such sum as 5 the court shall find to be just, according to the circumstances of the case . . . (emphasis added). 6 15 U.S.C. § 1117(a). 7 B. Defendant’s Statement of the Case 8 Defendant FINNMARK DESIGNS, LLC (“Finnmark”) sets forth the following statement 9 of the nature of this action. 10 1. Nature of the Action: 11 12 This action commenced when Sunlighten sued Finnmark claiming infringement of two 13 design patents, trade dress infringement, and both federal, state, and common law claims relating 14 to alleged infringement of an unregistered trademark in the word Empower for saunas. 15 After both parties filed motions for summary judgment, this Court held: 16 • Both design patents were invalid as anticipated by Sunlighten’s sales of saunas 17 covered by those patents more than one year before the effective filing date of both 18 patents. This holding was based on those patents not being entitled to the filing 19 date of earlier patent applications. (ECF No. 77 at 9-14.) Therefore, Finnmark 20 was granted judgment on Counts 1 and 2 of Plaintiff’s Complaint. 21 • Sunlighten had not presented sufficient proof to raise a genuine issue of fact as to 22 whether its trade dress had attained secondary meaning. (ECF No. 77 at 14-18.) 23 Therefore, Finnmark was granted judgment on Count 4 of Plaintiff’s Complaint, 24 as well as Counts 5 and 6 to the extent that they were based on trade dress 25 infringement. (ECF No. 77 at 18 n.73.) 26 • Sunlighten had not presented sufficient proof to raise a genuine issue of fact as to 27 whether it had suffered any actual damages related to Finnmark’s alleged 28 infringement of Sunlighten’s Empower mark. Therefore, the Court held that 1 Finnmark was entitled to partial judgment on Sunlighten’s trademark damages 2 claim. (ECF No. 77 at 20.) 3 • This Court held that this case will proceed to trial on trademark infringement 4 claims seeking disgorgement of profits and injunctive relief relating to 5 Sunlighten’s alleged Empower trademark. (ECF No. 77 at 2, 21, 23.) 6 2. Finnmark’s Contentions 7 Finnmark contends that Sunlighten cannot prove any trademark rights in and to the word 8 Empower, which was not a registered trademark during the relevant timeframe and was only used 9 to identify the largest one of Sunlighten’s five specific models of mPulse saunas (using the letters 10 A through E for these five sub-models, Sunlighten used the words Aspire, Believe, Conquer and 11 12 Discover as the sub-model names of its other mPulse series saunas). Sunlighten’s marketing of 13 the Empower sub-model of its mPulse® sauna contains nothing to identify or suggest “Empower” 14 as a unique distinctive trademark, and identifies the sauna as “mPulse® Empower,” where the 15 trademark is clearly mPulse and the word Empower is merely just a sub-model name (one of five 16 different ones used by Sunlighten to separate and distinguish the five different types of mPulse 17 saunas). Indeed, the specific Empower sub-model was used in connection with Sunlighten’s 18 largest mPulse sauna – a 5-person sauna (a sauna size that Finnmark did not even sell). 19 Finnmark further contends that Sunlighten cannot show a likelihood of confusion using 20 the eight-factor test of AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). Based 21 on the different ways the parties used the word Empower, the weakness of the mark at issue, the 22 parties’ different marketing channels, and the degree of care exercised by consumers of the goods, 23 a reasonably prudent consumer in the marketplace would not have mistakenly affiliated 24 Finnmark’s sauna with Sunlighten. 25 Finnmark was organized in September 2019. Finnmark manufactured and imported these 26 saunas as part of a manufacturing agreement with Influence Sauna (a non-party to this case). 27 When promoted by Influence Sauna through online influencer Robyn Openshaw, the saunas sold 28 were identified by the name “Empower.” Sales by Influence Sauna began November 7, 2019. 1 Finnmark also promoted the saunas on its website where it identified the saunas by the same name 2 “Empower.” Finnmark’s first sale was on November 18, 2019. 3 On January 22, 2020, one day after Sunlighten’s counsel sent a letter advising Finnmark 4 that it considered Finnmark’s use of Empower to infringe its trademark in that name, Finnmark 5 ceased using the name Empower. Influence Sauna stopped using the name Empower within days 6 (by January 27, 2020) of Sunlighten’s notice. Neither Finnmark nor Influence Sauna resumed 7 using the name Empower and have no intent to do so. The use of the name Empower in 8 connection with Finnmark’s saunas was for no more than 81 days in total. From November 2019 9 to January 27, 2020, Influence Sauna made 573 direct sales of saunas under the Empower name. 10 The total gross profit earned by Finnmark from Influence Sauna’s 573 sales was $57,300 based 11 12 on the $100 per sauna tech fee earned by Finnmark for its role as an import broker for the saunas 13 sold by Influence Sauna. From November 2019 to January 22, 2020, Finnmark made 14 direct 14 sales of saunas. The total gross profit earned by Finnmark from its 14 sales was $41,490 (gross 15 sales of $55,130.00 minus $13,640.00 cost of goods sold). 16 Finnmark further claims that Sunlighten cannot prove that, under the principles of equity 17 governing disgorgement, Sunlighten is entitled to disgorgement of Finnmark’s profits. Mr. 18 Gordon, the CEO of Finnmark, was not aware that Sunlighten claimed any trademark rights in 19 Empower and had no reason to conclude that it did – the name was selected after seeing the name 20 “Empower Field” in Denver, Colorado. Sunlighten used Empower as the sub-model name of one 21 of five different size saunas that it sold under its mPulse® line. While Sunlighten had applied to 22 register the name Empowering Wellness, it had not applied to register Empower, itself, as a 23 trademark, and thus there was no constructive notice of Sunlighten’s alleged trademark rights. 24 Moreover, there was no impact on sales of Finnmark’s sauna after it stopped using the name, 25 which demonstrates that Influence Sauna and Finnmark did not benefit from their usage of the 26 name Empower. 27 Finnmark further claims that its gross profit on its sales of saunas that used the name 28 Empower from November 2019 to January 22, 2020 was less than $100,000. That is because most 1 of the sales were through Influence Sauna, to which Finnmark served as a broker for the 2 importation of the saunas sold by Influence Sauna and only receiving a $100 tech fee for each 3 sauna sale by Influence Sauna. In that agreement, Finnmark identifies the saunas being imported 4 for Influence by various specific unique model numbers, and does not use the name Empower in 5 identifying the saunas. Finnmark made only 14 direct sales of saunas and did not sell any other 6 products during the relevant timeframe. Moreover, the less than $100,000 gross profit does not 7 take into account allocable overhead or general and administrative expenses. Once these are taken 8 into account, there was no net profit that Finnmark realized on these early sales when Finnmark 9 was still in its startup phase. 10 Finally, Finnmark contends that a permanent injunction against any future use of 11 12 Empower in connection with Finnmark’s sales or offers for sale of saunas is unwarranted. First, 13 Finnmark ceased using the name Empower in January 2020 and there is no indication or evidence 14 that it intends to resume using the name. Given that nearly 3 years have gone by where Finnmark 15 has not used (or given any indication of an intent to resume use) the name Empower, Sunlighten 16 cannot show a genuine threat of continuing infringement that this Court must enjoin through a 17 permanent injunction. More importantly, however, Sunlighten ceased selling the Empower sub- 18 model of the mPulse® sauna in December 2021. If Sunlighten is no longer even using the 19 purported trademark that is serving as the basis for its request for injunctive relief, then there is 20 no longer any threat of continuing infringement or irreparable harm for this Court to enjoin. 21 22 II. 23 This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a) and (b); 24 and 28 U.S.C. § 1367. 25 This Court has personal jurisdiction over Defendant because Defendant is a Nevada 26 company and conducts business within this State and this District. 27 28 1 III. 2 The following facts are admitted by the parties and require no proof: 3 1. Garrett Gordon is the sole member of Finnmark Designs, LLC, a Nevada limited 4 liability company (“Finnmark”). 5 2. In early November 2019, Finnmark entered into a manufacturing agreement with 6 Influence Sauna. 7 3. Three types of sauna models were part of the manufacturing agreement – 8 accommodating 1, 2 and 3 persons. 9 4. Influence Sauna sold saunas to consumers through the promotional efforts of 10 online influencer Robyn Openshaw. 11 12 5. The three sauna models sold by Influence Sauna were identified as Empower 13 Hybrid, Empower 2-3, and Empower 3-4. 14 6. Under the manufacturing agreement, Finnmark manufactured and imported the 15 saunas that Influence Sauna sold to consumers. 16 7. For its role as a broker for the importation of the saunas sold by Influence Sauna, 17 Finnmark received a tech fee of $100 per sauna. 18 8. Sales of saunas by Influence Sauna began November 7, 2019. 19 9. Finnmark also promoted the saunas on its website where it identified the saunas 20 by the same three names as Influence Sauna – Empower Hybrid, Empower 2-3, and Empower 21 3-4. 22 10. Finnmark’s first direct sale of one of these saunas – the Empower 2-3 – was on 23 November 18, 2019. 24 11. On January 21, 2020, after it filed its Complaint in this action, Sunlighten sent a 25 letter to Finnmark notifying Finnmark that Sunlighten believed that Finnmark was infringing on 26 its trademark Empower for saunas. 27 28 12. Upon receipt of Sunlighten’s letter, Finnmark took steps to cease all use of Empower in connection with the saunas it was selling on its website and notified Influence Sauna to cease use of the name Empower for the saunas it was selling. 13. Sunlighten previously held a U.S. trademark registration for the mark EMPOWERING WELLNESS in connection with, inter alia, “saunas.” ; 14. The EMPOWERING WELLNESS mark was registered January 18, 2011 as Registration No. 3,909,091 with the U.S. Patent and Trademark Office (“USPTO”), but this 9 registration was subsequently cancelled by the USPTO on August 20, 2021 for failure to submit 19 ||the necessary renewal filing. 11 15. As of November 2019, Sunlighten did not have any trademark registration or 12 || pending trademark application for the mark EMPOWER. 13 16. As of January 27, 2020, Sunlighten did not have any trademark registration or 14 || pending trademark application for the mark EMPOWER. 15 17. Sunlighten used Empower in connection with one of five models of its mPulse® 16 line. 17 18. The five models were, using the letters A through E, Aspire, Believe, Conquer, 18 |) Discover, and Empower (as pictured below). 19 21 22 y i 24 25 fatrcoa rules Bilieve Plan Comnpuee mln Diacove fuse Emme 1 ane a ey, Le 28 ier acai sep ipcuin ab “uaght cud 2 oe neigh incu 2° fot “Haight ictus 2" tel 1 2 19. The Sunlighten mPulse® Empower sauna identified its largest mPulse® sauna 3 capable of fitting 5-persons. 4 IV. 5 The following facts, though not admitted, will not be contested at trial by evidence to the 6 contrary: None. 7 V. 8 The following are the issues of fact to be tried and determined at trial. 9 A. Plaintiff’s Statement of the Issues of Fact: 10 1. The total amount of damages for trademark infringement to be awarded to 11 12 Sunlighten. 13 2. Whether Finnmark’s use of the Empower name was willful. 14 3. Whether Sunlighten should be awarded its attorney’s fees. 15 4. Whether a permanent injunction should issue prohibiting Finnmark from using 16 Empower or any name confusingly similar to Empower for saunas. 17 B. Defendant’s Statement of the Issues of Fact: 18 1. Trademark Infringement 19 a) Whether Sunlighten held a protectible mark in the unregistered name 20 Empower as applied to saunas during the November 2019 – January 2020 timeframe. 21 b) Whether Sunlighten used the name Empower as a trademark in connection 22 with saunas during the November 2019 – January 2020 timeframe. 23 c) Whether Sunlighten ceased using the name Empower in connection with 24 saunas in December 2021. 25 d) Whether there was a likelihood of consumer confusion arising from the use of 26 the name Empower by Finnmark and Influence Sauna in connection with the sale of saunas during 27 the November 2019 – January 2020 timeframe. 28 1 e) The strength of Sunlighten’s purported Empower mark, as a factor in assessing 2 likelihood of consumer confusion. 3 f) The proximity or relatedness of the products, as a factor in assessing likelihood 4 of consumer confusion. 5 g) Similarity of the parties’ trademarks, as a factor in assessing likelihood of 6 consumer confusion. 7 h) Whether the use of the trademarks in commerce has led to actual confusion, as 8 a factor in assessing likelihood of consumer confusion. 9 i) The marketing channels used, as a factor in assessing likelihood of consumer 10 confusion. 11 12 j) The degree of care likely to be exercised by consumers, as a factor in assessing 13 likelihood of consumer confusion. 14 k) Defendant’s intent in selecting the name Empower, as a factor in assessing 15 likelihood of consumer confusion. 16 l) Defendant’s likelihood of expansion, as a factor in assessing likelihood of 17 consumer confusion. 18 2. Disgorgement of Finnmark’s Profits 19 a) Whether the use of the name Empower by Finnmark and Influence Sauna for 20 its saunas provided any benefit in the sales of such saunas. 21 b) Whether the adoption of the name Empower by Finnmark and Influence Sauna 22 was done with an intent to cause consumer confusion with Sunlighten’s saunas. 23 c) Whether Finnmark knew of Sunlighten’s use of the name Empower in 24 connection with one of Sunlighten’s sauna models. 25 d) Whether Finnmark knew that Sunlighten claimed trademark rights to the name 26 Empower in connection with saunas. 27 e) Whether Finnmark was willfully blind regarding Sunlighten’s use of the name 28 Empower in connection with one of Sunlighten’s sauna models. 1 3. Amount of Finnmark’s Profits During Relevant Timeframe 2 a) Whether after accounting for Finnmark’s indirect costs, such as overhead and 3 general and administrative costs, Finnmark had no net profit on the sauna sales occurring during 4 the relevant timeframe. 5 VI. 6 The following are the issues of law to be tried and determined at trial. 7 A. Plaintiff’s Statement of the Issues of Law: 8 1. Unfair Competition and False Designation of Origin – 15 U.S.C. § 1125(a) 9 a) Whether Finnmark attempted to trade on Sunlighten’s long-standing and 10 hard-earned goodwill in its Empower trademark, and the reputation established by Sunlighten in 11 12 connection with its saunas in order to confuse consumers as to the origin and sponsorship of 13 Finnmark’s saunas to pass off its products as those of Sunlighten; 14 b) Whether Finnmark’s unauthorized and tortious conduct has deprived and 15 will continue to deprive Sunlighten of the ability to control the consumer perception of its saunas, 16 placing the valuable reputation and goodwill of Sunlighten in the hands of Defendant; 17 c) Whether Finnmark’s conduct is likely to cause confusion, mistake or 18 deception as to the affiliation, connection or association of Defendant with Sunlighten as to the 19 origin, sponsorship or approval of Defendant and its products, in violation of Section 43 of the 20 Lanham Act, 15 U.S.C. § 1125(a); 21 d) Whether as a result of Finnmark’s aforesaid conduct, Sunlighten has 22 suffered damage, as well as the continuing loss of the goodwill and reputation established by 23 Sunlighten in its mark; 24 e) Whether this continuing loss of goodwill cannot be properly calculated and 25 thus constitutes irreparable harm and an injury for which Sunlighten has no adequate remedy at 26 law; 27 f) Whether Sunlighten will continue to suffer irreparable harm unless this 28 Court enjoins Defendant’s conduct under 15 U.S.C. § 1116. 1 2. Violation of Nevada Deceptive Trade Practices Nevada Revised Statute 598 2 a) Whether Finnmark has engaged in unfair competition by intentionally 3 using Sunlighten’s Empower mark to trade on Sunlighten’s long-standing and hard-earned 4 goodwill in its mark, as well as in order to confuse consumers as to the origin and sponsorship of 5 Defendant’s goods and to pass its products off as those of Sunlighten; 6 b) Whether Finnmark’s conduct is likely to cause confusion, mistake or 7 deception as to the affiliation, connection or association of Defendant and its goods with 8 Sunlighten, and as to the origin, sponsorship or approval of Defendant and its products; 9 c) Whether Finnmark had direct and full knowledge of Sunlighten’s prior use 10 of and rights in its mark before the acts complained of herein; 11 12 d) Whether Finnmark’s unlawful and unfair conduct has led to a material 13 diminution of the reputation and goodwill established by Sunlighten in its Empower trademark; 14 e) Whether Finnmark has engaged in deceptive trade practices as defined by 15 NRS 598.0915(3) by knowingly using the term “Empower” in association with the sale of its 16 saunas; 17 f) Whether as a result of Finnmark’s aforesaid conduct, Sunlighten has 18 suffered substantial damages, as well as the continuing loss of the goodwill and reputation 19 established by Sunlighten in its Empower trademark; 20 g) Whether this continuing loss of goodwill cannot be properly calculated and 21 thus constitutes irreparable harm and an injury for which Sunlighten has no adequate remedy at 22 law. 23 3. Trademark Infringement and Unfair Competition under Nevada Common Law 24 a) Whether Finnmark has deliberately and willfully attempted to trade on 25 Sunlighten’s long standing and hard-earned goodwill in its Empower trademark and the 26 reputation Sunlighten established in connection with its saunas, as well as to confuse consumers 27 as to the origin and sponsorship of Finnmark’s goods and to pass them off as those of Sunlighten; 28 1 b) Whether Finnmark’s unauthorized and tortious conduct has also deprived 2 and will continue to deprive Sunlighten of the ability to control the consumer perception of its 3 products and offered under Sunlighten’s Empower trademark, placing the valuable reputation and 4 goodwill of Sunlighten in the hands of Defendant; 5 c) Whether Finnmark’s conduct is likely to cause confusion, mistake or 6 deception as to the affiliation, connection or association of Defendant with Sunlighten, and as to 7 the origin, sponsorship or approval of Defendant and its products in violation of Nevada common 8 law; 9 d) Whether as a result of Finnmark’s aforesaid conduct, Sunlighten has 10 suffered damages, as well as the continuing loss of the goodwill and reputation established by 11 12 Sunlighten in its Empower trademark; 13 e) Whether this continuing loss of goodwill cannot be properly calculated and 14 thus constitutes irreparable harm and an injury for which Sunlighten has no adequate remedy at 15 law; 16 f) Whether Sunlighten will continue to suffer irreparable harm unless this 17 Court enjoins Finnmark’s conduct. 18 B. Defendant’s Statement of the Issues of Law: 19 1. Trademark Infringement 20 a) Whether Sunlighten held a protectible mark in the unregistered name 21 Empower as applied to saunas during the November 2019 – January 2020 time frame. 22 b) Whether there was a likelihood of consumer confusion arising from the use of 23 the name Empower by Finnmark and Influence Sauna for the saunas it sold from 24 November 2019 – January 2020 25 2. Disgorgement 26 a) Whether Sunlighten has shown that, as a matter of equity, it is entitled to the 27 disgorgement of Finnmark’s profits related to the sales of saunas by Finnmark and 28 Influence Sauna from November 2019 – January 2020. 1 3. Injunctive Relief 2 a) Whether Sunlighten has shown that, as a matter of equity, it is entitled to a 3 permanent injunction, and the appropriate scope of such an injunction. 4 5 VII. 6 (a) The following exhibits are stipulated into evidence in this case and may be so marked 7 by the clerk: TBD1 8 (b) The following exhibits, the party against whom the same will be offered objects to 9 their admission on the grounds stated: 10 (1) Set forth the Plaintiff’s exhibits and objections to them. See attached Exhibit A. 11 12 (2) Set forth the Defendant’s exhibits and objections to them. See attached Exhibit B. 13 (c) Electronic evidence: The parties do not intend to present electronic evidence. The 14 parties do intend to utilize courtroom technology to view electronic versions of the 15 trial exhibits and any demonstratives, but also will provide paper copies pursuant to 16 the Court’s procedures. 17 (d) Depositions: 18 (1) Plaintiff will offer the following depositions: 19 David Floyd Shurtleff, 22:19 – 24:15; 88:8 – 90:15; 91:2 – 92:7 20 Garett Gordon 21 (2) Defendant will offer the following depositions: 22 23 Witness Page/Line Designation 24 Sunlighten’s 125:9 – 125:19; 205:18 – 206:25; 207:1 – 25; 25 30(b)(6) Witness 209:1 – 19; 210:3 – 211:22; 212:1-4; 212:25 – 213:7 26 (Aaron Zack) 27 28 1 During preparations for trial, counsel shall meet, confer, pre-mark, and exchange all trial exhibits. At least three business days prior to trial, counsel must notify the Courtroom Administrator that the exhibits have been pre-marked and supply an original and one copy of a complete exhibit list of all 1 (e) Objections to Depositions: 2 (1) Defendant objects to plaintiff’s depositions as follows: 3 Defendant objects to David Floyd Shurtleff 88:8 – 90:15 and 91:2 – 92:7 on the 4 basis of FRE 403. 5 Defendant reserves the right to object to Plaintiff’s specific designations of the 6 deposition of Garett Gordon once Plaintiff has so designated. 7 (2) Plaintiff objects to defendant’s depositions as follows: 8 Plaintiff objects to defendant’s designations of Aaron Zack under FRE 403 as 9 Aaron Zack will be present to give live testimony at trial. 10 11 12 VIII. 13 The following witnesses may be called by the parties at trial: 14 (a) Provide names and addresses of Plaintiff’s witnesses: 15 (1) Aaron Zack, 7373 West 107th Street, Overland Park, Kansas 66212 16 (2) Connie Zack, 7373 West 107th Street, Overland Park, Kansas 66212 17 (3) Doug Vandervalk, 7373 West 107th Street, Overland Park, Kansas 66212 18 (4) Garett Gordon, 6231 McLeod Drive, Suite A, Las Vegas, Nevada 89120 19 (5) Robyn Openshaw, 3750 Lariat Road, Park City, Utah 84098 20 (b) Provide names and addresses of Defendant’s witnesses. 21 (1) Garett Gordon, 6231 McLeod Drive, Suite A, Las Vegas, Nevada 89120 22 (2) Won Lee, 3303 Stone Point Way, Buford, Georgia 30519 23 24 IX. 25 The attorneys or parties have met and jointly offer these three trial dates: 26 October 16, 2023; November 13, 2023; January 29, 2024 27 28 1 It is expressly understood by the undersigned that the court will set the trial of this matter 2 on one of the agreed-upon dates if possible, if not, the trial will be set at the convenience of the 3 court’s calendar. 4 X. 5 It is estimated that the trial will take a total of 2-3 days. 6 7 8 APPROVED AS TO FORM AND CONTENT: 9 10 By: /s/ James J. Kernell By: /s/Ryan Gile 11 James J. Kernell (Pro Hac Vice) Ryan Gile 12 Kansas Bar No. 19559 Nevada Bar No. 8807 Kyle D. Donnelly, Esq. (Pro Hac Vice) GILE LAW GROUP LTD. 13 Kansas Bar No. 25531 1180 N. Town Center Drive, Suite 100 AVEK IP, LLC Las Vegas, Nevada 89144 14 8900 State Line Road, Suite 500 Telephone: (702) 703-7288 15 Leawood, Kansas 66206 Email: rg@gilelawgroup.com Telephone: (913) 549-4700 16 Facsimile: (913) 549-4646 Attorney for Defendant Email: jkernell@avekip.com Finnmark Designs, LLC 17 kdonnelly@avekip.com 18 Jonathan D. Blum 19 Nevada Bar No. 09515 WILEY PETERSEN 20 1050 Indigo Drive, Suite 200B 21 Las Vegas, Nevada 89145 Telephone: (702) 910-3329 22 Facsimile: (702) 553-3467 Email: jblum@wileypetersenlaw.com 23 24 Attorneys for Plaintiff Sunlighten, Inc. 25 26 27 28 1 XI. ACTION BY THE COURT 2 3 The case is set for court trial on the stacked calendar on November 13, 2023 at 9:30 4 a.m. Calendar call will be held on November 2, 2023 at 9:30 a.m. in courtroom 6B. 5 6 DATED: 4/24/2023 7 8 ______________________________ U.S. District Judge Cristina D. Silva 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 EXHIBIT A 1 JONATHAN D. BLUM, ESQ. 2 Nevada Bar No. 09515 WILEY PETERSEN 3 1050 Indigo Drive, Suite 200B 4 Las Vegas, Nevada 89145 Telephone: (702) 910-3329 5 Facsimile: (702) 553-3467 Email: jblum@wileypetersenlaw.com 6 7 -and- 8 JAMES J. KERNELL, ESQ. (Pro Hac Vice) Kansas Bar No. 19559 9 KYLE D. DONNELLY, ESQ. (Pro Hac Vice) 10 Kansas Bar No. 25531 AVEK IP, LLC 11 8900 State Line Road, Suite 500 Leawood, Kansas 66206 12 Telephone : (913) 549-4700 13 Facsimile : (913) 549-4646 Email : jjk@kcpatentlaw.com 14 kdd@kcpatentlaw.com 15 Attorneys for Plaintiff Sunlighten, Inc. 16 17 UNITED STATES DISTRICT COURT 18 DISTRICT OF NEVADA 19 SUNLIGHTEN, INC., Case No.: 2:20-cv-00127-JAD-EJY 20 Plaintiff, 21 PLAINTIFF SUNLIGHTEN, INC.’S v. 22 TRIAL EXHIBIT LIST 23 FINNMARK DESIGNS, LLC, 24 Defendant. 25 26 27 28 1 BATES NUMBER DESCRIPTION OBJECTION FINNMARK-0426 Sauna Orders Nov 2019-Jan 2020 2 (AEO) 3 SUNLIGHTEN-000321 Screenshot titled “Empower through Hybrid Full Spectrum Sauna” from 4 SUNLIGHTEN-000324 Finnmark web site dated 1/8/2020 SUNLIGHTEN-001258 Sunlighten brochures FRE 403 (Cumulative) 5 through 6 SUNLIGHTEN-001334 SUNLIGHTEN-001335 Email from Laurie Roman to FRE 801/802 (Hearsay) 7 Connie Zack SUNLIGHTEN-001337 Sunlighten press release regarding FRE 401/402 (Relevance); 8 mPulse sauna appearance on FRE 403 (Prejudicial; 9 Dr. Oz show Confusion; Waste of Time; Cumulative) 10 SUNLIGHTEN-001482 Article entitled “Warm Your Heart FRE 401/402 (Relevance); with a Sunlighten” by Julie Powell FRE 403 (Prejudicial; 11 Confusion; Waste of Time; 12 Cumulative); FRE 801/802 (Hearsay); 13 FRE 901 (Authenticity) 14 SUNLIGHTEN-001483 Article entitled “The Athlete’s FRE 401/402 (Relevance); through Chiropractor Talks Infrared Sauna FRE 403 (Prejudicial; 15 SUNLIGHTEN-001484 Therapy” by Alex Muniz Confusion; Waste of Time; Cumulative); 16 FRE 801/802 (Hearsay); 17 FRE 901 (Authenticity) SUNLIGHTEN-001488 Article entitled “Bob Greene on FRE 401/402 (Relevance); 18 through Getting 20 Years Younger with FRE 403 (Prejudicial; SUNLIGHTEN-001490 Infrared Sauna Therapy and Other Confusion; Waste of Time; 19 Health Secrets” by Kim Henderson Cumulative); 20 FRE 801/802 (Hearsay); FRE 901 (Authenticity) 21 SUNLIGHTEN-001491 Emailed dated 3/1/2011 from Erin FRE 401/402 (Relevance); through Roscetti to Sunlighten regarding FRE 403 (Prejudicial; 22 SUNLIGHTEN-001496 European launch of The mPulse Confusion; Waste of Time; 23 Series Cumulative) SUNLIGHTEN-001497 Photo of Sunlighten booth FRE 401/402 (Relevance); 24 FRE 403 (Prejudicial; Confusion; Waste of Time; 25 Cumulative) 26 SUNLIGHTEN-001505 Email dated 10/4/2011 from Steve FRE 401/402 (Relevance); through Heykers to Aaron Zack FRE 403 (Prejudicial; 27 SUNLIGHTEN-001508 announcing mPulse sauna as Confusion; Waste of Time; winner of 2011 innovation award Cumulative) 28 1 at Professional Beauty and Wellness trade show 2 SUNLIGHTEN-001509 Article entitled “Jordan Rubin’s FRE 401/402 (Relevance); 3 Hot Health Secret—Infrared Sauna FRE 403 (Prejudicial; Therapy” by Jordan Rubin Confusion; Waste of Time; 4 Cumulative); FRE 801/802 (Hearsay); 5 FRE 901 (Authenticity) 6 SUNLIGHTEN-001516 “The Doctors” television show FRE 401/402 (Relevance); through episode synopsis featuring mPulse FRE 403 (Prejudicial; 7 SUNLIGHTEN-001517 bELIEVE sauna Confusion; Waste of Time; Cumulative) 8 SUNLIGHTEN-001519 Article entitled “Sweat Your Way FRE 401/402 (Relevance); 9 to Sexy” by Jennifer Stevens FRE 403 (Prejudicial; Confusion; Waste of Time; 10 Cumulative); FRE 801/802 (Hearsay); 11 FRE 901 (Authenticity) 12 SUNLIGHTEN-001520 Letter dated 1/22/2020 from James through Kernell to Robyn Openshaw 13 SUNLIGHTEN-001521 regarding sales of Finnmark infringing saunas 14 SUNLIGHTEN-001522 Sunlighten brochure for mPulse® 15 Aspire sauna SUNLIGHTEN-001523 Sunlighten brochure for mPulse® 16 Believe sauna 17 SUNLIGHTEN-001524 Sunlighten brochure for mPulse® Conquer sauna 18 SUNLIGHTEN-001525 Sunlighten brochure for mPulse® Discover sauna 19 SUNLIGHTEN-001526 Sunlighten brochure for mPulse® 20 Empower sauna SUNLIGHTEN-001633 Sunlighten’s EMPOWERING FRE 403 (Cumulative) 21 through WELLNESS U.S. Trademark/ SUNLIGHTEN-001636 Service Mark Certificate of 22 Registration No. 3,909,091, 23 registered 1/18/2011 CONFIDENTIAL Email dated 1/25/2021 from FRE 401/402 (Relevance); 24 SUNLIGTHEN-001653 Joseph Rapisarda to Aaron Zack FRE 403 (Prejudicial; through providing data regarding known Confusion; Waste of Time; 25 SUNLIGHTEN-001654 sales lost to Influence Cumulative); 26 FRE 602 (Foundation); FRE 801/802 (Hearsay) 27 28 EXHIBIT B DEFENDANT’S EXHIBITS BEG. BATES END BATES DESCRIPTION OBJECTION FINNMARK- FINNMARK- Photos from Sunlighten website. 0075 0076 SUNLIGHTEN- SUNLIGHTEN- Fact Sheet for mPulse® Aspire by 001522 001522 Sunlighten SUNLIGHTEN- SUNLIGHTEN- Fact Sheet for mPulse® Believe by 001523 001523 Sunlighten SUNLIGHTEN- SUNLIGHTEN- Fact Sheet for mPulse® Conquer by 001524 001524 Sunlighten SUNLIGHTEN- SUNLIGHTEN- Fact Sheet for mPulse® Discover by 001525 001525 Sunlighten SUNLIGHTEN- SUNLIGHTEN- Fact Sheet for mPulse® Empower by 001526 001526 Sunlighten SUNLIGHTEN- SUNLIGHTEN- Webpages listing Sunlighten 001479 001481 trademarks and patents SUNLIGHTEN SUNLIGHTEN- U.S. Trademark Registration No. Objected to 1645 01646 4,150,495 for mPulse. under FRE 401, 402 and 403 as irrelevant, unfairly prejudicial, confusing the issues, and wasting time FINNMARK- FINNMARK- Email from Sunlighten to Objected to 0352 0354 gordonfamilyinc@gmail.com dtd. under FRE 403 December 27, 2021 indicating as unfairly mPulse Empower model being prejudicial, discontinued. confusing the issues, and wasting time; Hearsay under FRE 801 and 802 FINNMARK- FINNMARK- Screenshots from Sunlighten’s Objected to 0355 0360 website, dtd. Jul. 19, 2022, showing under FRE 401, four models of Sunlighten’s mPulse 402 and 403 as sauna line. irrelevant, unfairly prejudicial, confusing the issues, and wasting time FINNMARK- FINNMARK- Screenshots from Finnmark’s 0189 0209 website and brochures of Finnmark saunas SUNLIGHTEN- SUNLIGHTEN- Cease and Desist to Finnmark Objected to 000404 000406 Design from Erickson Kernell dtd under FRE 403 January 21, 2020 as unfairly prejudicial, confusing the issues, and wasting time; Hearsay under FRE 801 and 802 FINNMARK- FINNMARK- 2019 Exclusive Manufacturing Objected to 0417 0423 Contract between Finnmark Designs, under FRE 401, LLC and Influence Brands, dtd. Sep. 402 and 403 as 5, 2019. irrelevant, (CONFIDENTIAL – AEO) unfairly prejudicial, confusing the issues, wasting time, and produced after the close of discovery FINNMARK- FINNMARK- Influence Orders – November 2019 Object to title of 0426 0426 – January 2020. exhibit as (CONFIDENTIAL – AEO) misleading FINNMARK- FINNMARK- Listing of direct sales of Saunas Object to title of 0427 0427 from November 2019 – January exhibit as 2020. misleading (CONFIDENTIAL – AEO) FINNMARK- FINNMARK- Finnmark Designs, Profit and Loss Objected to 0361 0361 Statement for 2019-January 20, 2020 under FRE 403 (CONFIDENTIAL – AEO) as unfairly prejudicial, confusing the issues, wasting time, incomplete and produced after the close of discovery FINNMARK- FINNMARK- Documentation re Won Lee trip to Objected to 0408 0415 China, dtd. Sep. 13, 2019 under FRE 401, (CONFIDENTIAL – AEO) 402 and 403 as irrelevant, unfairly prejudicial, confusing the issues, wasting time, and produced after the close of discovery FINNMARK- FINNMARK- Lease Agreement between Harsch Objected to under 0366 0394 Investment Properties and Finnmark FRE 401, 402 and Designs, dtd October 29, 2019. 403 as irrelevant, (CONFIDENTIAL – AEO) unfairly prejudicial, confusing the issues, wasting time, and produced after the close of discovery FINNMARK- FINNMARK- Invoice from New Pacific Alliance Objected to 0362 0362 to Finnmark Designs, showing costs under FRE 401, associated with sauna imported by 402 and 403 as Finnmark (CONFIDENTIAL – irrelevant, AEO) unfairly prejudicial, confusing the issues, wasting time, and produced after the close of discovery FINNMARK- FINNMARK- Modeling Contract, dtd Nov. 1, 2019 Objected to under 0363 0365 between ModelingStop, LLC and FRE 401, 402 and Finnmark Designs. 403 as irrelevant, (CONFIDENTIAL– AEO) unfairly prejudicial, confusing the issues, wasting time, and produced after the close of discovery FINNMARK- FINNMARK- Invoice from New Pacific Alliance Objected to under 0395 0395 to Finnmark, dtd. Jan. 10, 2020 for FRE 401, 402 and services from two people. 403 as irrelevant, (CONFIDENTIAL – AEO) unfairly prejudicial, confusing the issues, wasting time, and produced after the close of discovery FINNMARK- FINNMARK- Invoice from New Pacific Alliance Objected to under 0396 0396 to Finnmark, dtd. Nov. 18, 2019 for FRE 401, 402 and annual import bond. 403 as irrelevant, (CONFIDENTIAL – AEO) unfairly prejudicial, confusing the issues, wasting time, and produced after the close of discovery FINNMARK- FINNMARK- Invoice from Won Lee to Finnmark, Objected to under 0397 0397 dtd. Dec. 11, 2019, for Consulting FRE 401, 402 and Fee and Warehouse consulting fee. 403 as irrelevant, (CONFIDENTIAL -AEO) unfairly prejudicial, confusing the issues, wasting time, and produced after the close of discovery FINNMARK- FINNMARK- Invoice from Won Lee to Finnmark, Objected to under 0398 0398 dtd. Dec. 12, 2019, for UHaul FRE 401, 402 and Rentals, sample charges, and other 403 as irrelevant, items. (CONFIDENTIAL – AEO) unfairly prejudicial, confusing the issues, wasting time, and produced after the close of discovery FINNMARK- FINNMARK- Invoice from QingDao Songduk Objected to under 0399 0399 Foods to Finnmark, dtd. Dec. 11, FRE 401, 402 and 2109, for inspection fee on first 200 403 as irrelevant, units. (CONFIDENTIAL – AEO) unfairly prejudicial, confusing the issues, wasting time, and produced after the close of discovery FINNMARK- FINNMARK- Invoice from New Pacific Alliance Objected to under 0400 0400 to Finnmark, dtd. Jan. 3, 2020, for FRE 401, 402 and services of two people and 403 as irrelevant, packaging. (CONFIDENTIAL – unfairly AEO) prejudicial, confusing the issues, wasting time, and produced after the close of discovery FINNMARK- FINNMARK- Invoice from New Pacific Alliance Objected to under 0401 0401 to Finnmark, dtd. Jan. 3, 2020 for FRE 401, 402 and services of two people. 403 as irrelevant, (CONFIDENTIAL – AEO) unfairly prejudicial, confusing the issues, wasting time, and produced after the close of discovery FINNMARK- FINNMARK- Invoice from New Pacific Alliance Objected to under 0402 0402 to Finnmark, dtd. Jan. 14, 2020 for FRE 401, 402 and trucking charges. 403 as irrelevant, (CONFIDENTIAL – AEO) unfairly prejudicial, confusing the issues, wasting time, and produced after the close of discovery FINNMARK- FINNMARK- Invoices from Uline to Finnmark for Objected to under 0403 0407 5 orders of packaging materials. FRE 401, 402 and (CONFIDENTIAL – AEO) 403 as irrelevant, unfairly prejudicial, confusing the issues, wasting time, and produced after the close of discovery FINMMARK- FINMMARK- ProForma Invoice from Jiangsu Objected to under 0416 0416 Kangnuo Far-Ir Equipment Co. to FRE 401, 402 and Finnmark, dtd. Aug. 6, 2019 for a 403 as irrelevant, sauna. (CONFIDENTIAL – AEO) unfairly prejudicial, confusing the issues, wasting time, and produced after the close of discovery