                                                                            FILED
                           NOT FOR PUBLICATION
                                                                                MAR 24 2017
                    UNITED STATES COURT OF APPEALS                       MOLLY C. DWYER, CLERK
                                                                           U.S. COURT OF APPEALS


                            FOR THE NINTH CIRCUIT


SOLID 21, INC., a Nevada Corporation             No.    15-56036
headquarted in Los Angeles, California,
                                                 D.C. No.
              Plaintiff-counter-                 2:11-cv-00468-DMG-JC
              defendant-Appellant,

 v.                                              MEMORANDUM*

HUBLOT OF AMERICA, a Florida
Corporation; et al.,

              Defendants-counter-
              claimants-Appellees.


                    Appeal from the United States District Court
                       for the Central District of California
                      Dolly M. Gee, District Judge, Presiding

                       Argued and Submitted March 8, 2017
                              Pasadena, California

Before: PREGERSON, PAEZ, and CHRISTEN, Circuit Judges.

      Solid 21, Inc. (“Solid 21”) appeals the district court’s order granting

summary judgment in favor of Hublot of America and its affiliates (collectively



      *
             This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
“Hublot”). The district court concluded that no genuine issue of material fact

existed regarding whether Solid 21’s mark “red gold” is invalid because it is

generic. We have jurisdiction under 28 U.S.C. § 1291. We review the district

court’s evidentiary rulings for abuse of discretion, Estate of Barabin v.

AstenJohnson, Inc., 740 F.3d 457, 462 (9th Cir. 2014), and “review summary

judgments de novo,” Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d 1108,

1113 (9th Cir. 2010). For the following reasons, we reverse and remand for further

proceedings.

      1. The district court excluded a portion of the declaration of Solid 21’s

expert linguist, Dr. Ronald Butters, as going to the ultimate issue. In a civil case,

“[a]n opinion is not objectionable just because it embraces an ultimate issue.” Fed.

R. Evid. 704(a). “That said, an expert witness cannot give an opinion as to her

legal conclusion, i.e., an opinion on an ultimate issue of law.” Nationwide Transp.

Fin. v. Cass Info. Sys., Inc., 523 F.3d 1051, 1058 (9th Cir. 2008) (quoting

Hangarter v. Provident Life & Accident Ins. Co., 373 F.3d 998, 1016 (9th Cir.

2004)).

      The district court excluded the portions of Dr. Butters’s declaration that

related to anything other than dictionary definitions of “red gold.” This included

his testimony regarding the associations that ordinary English speakers have with


                                           2
the term “red gold.” The district court did not explain why this testimony was

unhelpful or constituted nothing more than a legal conclusion. The exclusion of

this testimony prejudiced Solid 21 by depriving it of evidence related to the

primary significance that consumers assign Solid 21’s mark. See Kellogg Co. v.

Nat’l Biscuit Co., 305 U.S. 111, 118 (1938) (articulating the test for genericness as

“the primary significance of the term in the minds of the consuming public”). The

district court abused its discretion by excluding Dr. Butters’s linguistic opinions as

going to the ultimate issue.

      2. The district court excluded Solid 21’s proffered consumer declarations

under Federal Rule of Civil Procedure 37(c) because Solid 21 did not disclose the

witnesses in its initial disclosures or before filing its opposition to summary

judgment. In order for Rule 37(c) to bar the introduction of evidence, a party’s

failure to disclose must prejudice the opposing party. See R & R Sails, Inc. v. Ins.

Co. of Pa., 673 F.3d 1240, 1247 (9th Cir. 2012). Consumer perception goes to the

heart of the genericness inquiry, see Yellow Cab Co. of Sacramento v. Yellow Cab

of Elk Grove, Inc., 419 F.3d 925, 929 (9th Cir. 2005), so the exclusion of consumer

declarations put a substantial hurdle in the way of Solid 21’s effort to mount a

successful opposition to summary judgment. Hublot could have cured any

prejudice by taking the opportunity to conduct additional discovery, including


                                           3
deposing the witnesses if it wished, and supplementing its motion for summary

judgment if necessary.

      The district court’s other stated reasons for excluding the declarations do not

justify its ruling. The consumer declarations offered by Solid 21 did not relate

solely to secondary meaning. Consumers Donald Anderson, Kelly Trahan, Lucille

Bilyeyev, Orville “Shaggy” Burrell, Tyson Beckford, Samuel Appiah, Jermaine

Coleman, Aaron Goodwin, and Robert Filotei all stated that they associate “red

gold” with Chris Aire and Solid 21. Former Solid 21 employee Mary Davis

described her understanding that “red gold” had not been used to describe watches

before Solid 21 started using the term. This is the type of evidence that courts have

admitted for purposes of determining genericness. See Self-Realization Fellowship

Church v. Ananda Church of Self-Realization, 59 F.3d 902, 909 (9th Cir. 1995)

(considering declarations of “‘buyers’ relevant to the genericness analysis”); see

also Zobmondo, 602 F.3d at 1120 (concluding that expert testimony that “Would

You Rather . . . ?” had not previously been used to describe a board game was

relevant to whether the mark was widely understood by consumers to refer to the

type of game in question).

      Additionally, the district court stated that the declarations all came “from

employees, former colleagues, or individuals who have known Aire[] for a ‘long


                                          4
time,’” and concluded that this sort of evidence was irrelevant under Ninth Circuit

case law. See Self-Realization, 59 F.3d at 910 (“Trademark law is skeptical of the

ability of an associate of a trademark holder to transcend personal biases to give an

impartial account of the value of the holder’s mark.”).

      But only one witness was a former Solid 21 employee, and none of the

declarations actually described a close personal relationship with Aire. The

witness testimony here is unlike the testimony excluded in Self-Realization, which

came from only the plaintiff’s “employees and wholesalers.” Id. Furthermore, the

court in Self-Realization concluded that the declarations had “little probative

value,” not that they were inadmissible. Id. Accordingly, the district court abused

its discretion by excluding the consumer declarations.

      3. With this additional evidence, Solid 21 raised a triable issue of material

fact concerning whether consumers understand “red gold” to refer only to a

particular producer’s goods (in which case the term is not generic) or whether

consumers understand the term to refer to the goods themselves (in which case the

term is generic). See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.,

408 F.3d 596, 604 (9th Cir. 2005).

      Appellees shall bear costs on appeal.

      REVERSED AND REMANDED.


                                          5
