Apple Inc. v. Amazon.Com, Inc.

Filing 39

Declaration of Sarah J. Givan in Support of 36 Opposition/Response to Motion for Preliminary Injunction filed byAmazon Digital Services, Inc., Amazon.Com, Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12)(Related document(s) 36 ) (Givan, Sarah) (Filed on 6/1/2011)

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1 2 3 4 5 6 7 8 9 MARTIN R. GLICK (No. 40187) email: mglick@howardrice.com CLARA J. SHIN (No. 214809) email: cshin@howardrice.com SARAH J. GIVAN (No. 238301) email: sgivan@howardrice.com HOWARD RICE NEMEROVSKI CANADY FALK & RABKIN A Professional Corporation Three Embarcadero Center, 7th Floor San Francisco, California 94111-4024 Telephone: 415/434-1600 Facsimile: 415/677-6262 Attorneys for Defendants and Counter-Claimants AMAZON.COM, INC., a Delaware corporation, and AMAZON DIGITAL SERVICES, INC., a Delaware corporation 10 11 UNITED STATES DISTRICT COURT 12 NORTHERN DISTRICT OF CALIFORNIA 13 14 APPLE INC., a California corporation, 15 Plaintiff and CounterDefendant, 16 v. 17 18 AMAZON.COM, INC., a Delaware corporation, and AMAZON DIGITAL SERVICES, INC., a Delaware corporation, No. 11-cv-01327 PJH Action Filed: March 18, 2011 DECLARATION OF SARAH J. GIVAN IN SUPPORT OF DEFENDANTS AMAZON.COM, INC. AND AMAZON DIGITAL SERVICES, INC.’S OPPOSITION TO PLAINTIFF APPLE INC.’S MOTION FOR PRELIMINARY INJUNCTION 19 20 Defendants and CounterClaimants. 21 22 23 24 25 26 27 28 GIVAN DECL ISO AMAZON OPP’N TO MOT. FOR PI 11-cv-01327 PJH 1 I, Sarah J. Givan, declare as follows: 2 1. I am admitted to practice law in the State of California, and am an attorney with the law 3 firm of Howard Rice Nemerovski Canady Falk & Rabkin, A Professional Corporation (“Howard 4 Rice”), counsel to Defendants and Counter-Claimants Amazon.com, Inc., and Amazon Digital 5 Services, Inc. (collectively, “Amazon”) in the above-captioned case. I make this declaration in 6 support of Amazon’s Opposition to Plaintiff Apple Inc.’s Motion for Preliminary Injunction. Except 7 where otherwise indicated, this declaration is based upon my own personal knowledge, and I could 8 and would testify competently to the truth of the matters stated herein if called upon to do so. 9 2. Attached as Exhibit 1 are true and correct copies of excerpts from dictionaries defining 10 the terms “app” and “application”, which I obtained through Exhibit 3 to the Declaration of 11 Nathaniel E. Durrance in Support of Opposer Microsoft Corporation’s Motion for Summary 12 Judgment filed on January 10, 2011 in Opposition No. 91195592 pending before the Trademark 13 Trial and Appeal Board (“TTAB”) in the United States Patent and Trademark Office (“PTO”). This 14 document is publicly available at http://ttabvue.uspto.gov/ttabvue/v?pno=91195582&pty=OPP. 15 3. Attached as Exhibit 2 is a true and correct copy of a printout from the 16 WordReference.com website, showing the definitions of “application” listed by the Concise Oxford 17 English Dictionary, which I obtained and printed from the www.wordreference.com website on 18 March 27, 2011. 19 4. Attached as Exhibit 3 are true and correct copies of excerpts from dictionaries defining 20 the term “store”, which I obtained through Exhibit 5 to the Declaration of Nathaniel E. Durrance in 21 Support of Opposer Microsoft Corporation’s Motion for Summary Judgment filed on January 10, 22 2011 in Opposition No. 91195592 pending before the Trademark Trial and Appeal Board (“TTAB”) 23 in the United States Patent and Trademark Office (“PTO”), which is publicly available at 24 http://ttabvue.uspto.gov/ttabvue/v?pno=91195582&pty=OPP. 25 5. Attached as Exhibit 4 is a true and correct copy of the definition of “app store” 26 appearing in PC Magazine’s online Encyclopedia, which I obtained and printed from the 27 http://www.pcmag.com/encyclopedia_term/0,2542,t=online+app+store&i=62644,00.asp. 28 6. Attached as Exhibit 5 are true and correct copies of the following documents I retrieved GIVAN DECL ISO AMAZON OPP’N TO MOT. FOR PI -1- 11-cv-01327 PJH 1 on March 26, 2011 from the website for the American Dialect Society at www.americandialect.org: 2 (a) an online article dated January 8, 2011, indicating that the American Dialect Society voted “app” 3 as its Word of the Year for 2010, and (b) the first two pages of the American Dialect Society’s 4 January 7, 2011 press release announcing that selection. 5 7. Attached as Exhibit 6 is a true and correct copy of a Salesforce.com press release dated 6 December 12, 2006, which I obtained and printed from Salesforce.com’s website on March 27, 7 2011. 8 9 10 11 12 8. Attached as Exhibit 7 is an copy of a printout from Apple’s iPhone website, taken on March 27, 2011 from www.apple.com/iphone/apps-for-iphone/. 9. Attached as Exhibit 8 a true and correct copy of the first page of Apple’s iOS Developer Program License Agreement, which is available on Apple’s website. 10. Attached as Exhibit 9 are true and correct copies of Apple press releases dated April 24, 13 July 14, September 28, November 4, 2009, and October 18, 2010, which I retrieved from Apple's 14 website on March 27, 2011, and May 25, 2011. 15 11. Attached as Exhibit 10 is a true and correct copy of Apple’s Amendment to Alleged 16 Use under 15 U.S.C. Section 1051(c), filed by Apple with the USPTO on November 20, 2009, to 17 prove use of APP STORE in connection with Application No. 77/525,433. I obtained Exhibit 9 via 18 publicly accessible records on the www.uspto.gov website on March 28, 2011. The three attached 19 specimens are screen shots showing what a user sees when accessing Apple's App Store via its 20 iTunes Store on a personal computer. The first specimen filed by Apple is to prove use of APP 21 STORE in Class 35, showing that a user selects “iTunes Store” from the “STORE” options, that 22 “App Store” is an option within the iTunes Store selections, and a “Search Store” tool is available to 23 search for apps. The second specimen filed by Apple is to prove use of APP STORE in Class 38, 24 showing that downloading service is part of an app purchase on the App Store and a “Get App” 25 function is used to purchase apps via download on iTunes. The third specimen, filed by Apple to 26 prove use of APP STORE in Class 42, is identical to the Class 35 specimen. 27 28 12. Attached as Exhibit 11 is a true and correct copy of a publicly available transcript of Apple Incorporated’s October 18, 2010 earnings call, which I printed from the website GIVAN DECL ISO AMAZON OPP’N TO MOT. FOR PI -2- 11-cv-01327 PJH 1 2 www.seekingalpha.com on March 26, 2011. 13. Attached as Exhibit 12 is a true and correct copy of a October 19, 2010 NPR Morning 3 Edition article concerning Apple's October 18, 2010 earnings call and comments made by Apple's 4 CEO, Steve Jobs, which I obtained and printed from Westlaw.com. 5 14. Attached as Exhibit 13 are true and correct copies of printouts of online general and 6 trade press articles and blog postings discussing “app stores.” Each article has a URL and date on 7 the bottom or side of the page indicating from what website the article was printed and the date on 8 which I printed it. For ease of review, the printouts have been underlined where “app store” is used 9 generically. 10 15. Attached as Exhibit 14 are true and correct copies of printouts of additional general 11 press articles discussing “app stores.” I obtained and printed these articles on March 28, 2011 from 12 Westlaw at the referenced addresses on each page of Exhibit 14. For ease of review, the printouts 13 have been underlined where “app store” is used generically. 14 16. Attached as Exhibit 15 are true and correct copies of printouts of 27 press articles with 15 the plural term “app stores” in their title. I obtained and printed these articles on March 27, 2011, 16 via a search of the USNEWS database at Westlaw.com for “app stores” in article headlines. 17 Expanding that search to include “app stores” in lead paragraphs of articles increased the results hits 18 to 753 articles. 19 17. 20 21 Attached as Exhibit 16 is a true and correct copy of the Wikipedia entry for “App Store”, which I located and printed from www.wikipedia.com on March 26, 2011. 18. Attached as Exhibit 17 is an printout from DirectTV’s website advertising its DirectTV 22 App Store for television applications, which I located, obtained, and printed from DirectTV’s 23 website 24 http://www.directv.com/DTVAPP/global/article.jsp?assetId=P6220088, on March 27, 2011. 25 19. at http://tvapps.directv.com/index.do and Attached as Exhibit 18 are true and correct copies of printouts from websites showing 26 third parties’ use of the term “app store” to refer to their own services. Each website printed has a 27 URL and date on the bottom or side of the page indicating where the website was printed from and 28 the date I printed it. As shown in Exhibit 18, the following third parties have used “app store” to GIVAN DECL ISO AMAZON OPP’N TO MOT. FOR PI -3- 11-cv-01327 PJH 1 refer to their services: metroPCS (“@metro App Store”); Sprint (“Sprint Partner App Stores”); 2 Appia (“White Label App Store”); Shopify (“Shopify App Store”); Palm App Store; Appstore for 3 Symbian; Mobile2Day Appstore for Blackberry; Handango Mobile App Store; AndAppStore; 4 Handmark Mobile App Store for Android; Sentrion App Store; DC App Store; MobiHand (“Get the 5 MobiHand App Store Launcher); DNAappstore; The PC App Store; iPAQ Appstore; GetJar 6 (“GetJar is the world’s largest open app store”); Mini App Stores; Tristit App Store; MiKandi App 7 Store; and Android App Store. 8 9 10 11 20. Attached as Exhibit 19 are true and correct copies of U.S. Patent Application Nos. 20100009702, 20100257059 20110045816, which I obtained from the United States Patent and Trademark Office’s website at www.uspto.gov on June 1, 2011. 21. I am familiar with and frequently use the DomainTools service available at 12 www.domaintools.com. 13 research and monitoring services. DomainTools allows a user to search the number of registered 14 domain names that contain a particular word. On March 29, I performed a search for “appstore” in 15 currently active domain names in which the generic top-level domain (gTLD) was “.com”, “.net”, 16 “.org”, “.info”, “.biz”, or “.us”, and in which the second-level domain was 25 characters or less. On 17 March 29, there were 2122 active registered domain names that contain the term “appstore” with a 18 common gTLD. Attached as Exhibit 20 is a true and correct copy of these results, which I printed 19 from DomainTools’s website. 20 22. DomainTools is a well-known company that provides domain name Attached as Exhibit 21 are true and correct copies of printouts from websites in which 21 the second level domain name includes the term “appstore.” Each website printed has a URL and 22 date on the bottom or side of the page indicating where the website was printed from and the date I 23 printed it. 24 www.appstores.com, www.theappstore.com, www.appstorelist.com, www.blackberryappstore.com, 25 and www.smartphone-appstore.com. As shown in Exhibit 18, other companies using domain names 26 containing 27 www.pcappstore.com, and www.miniappstores.com. 28 23. As shown in Exhibit 21, these websites include: www.appstoreinsider.com, “appstore” include www.andappstore.com, www.dnaappstore.com, Attached hereto as Exhibit 22 are true and correct copies of news articles, blog entries, GIVAN DECL ISO AMAZON OPP’N TO MOT. FOR PI -4- 11-cv-01327 PJH 1 and radio stories regarding Apple’s lawsuit, which I located, obtained and printed from the Internet. 2 Each article has a URL and date on the bottom or side of the page indicating where the article was 3 printed from and the date I printed it. These articles include: 4 • “Apple Says Other App Stores Can’t Be Called App Stores, Sues Amazon”, 5 ReadWriteWeb (March 21, 2011), at 6 http://www.readwriteweb.com/archives/apple_says_other_app_stores_cant_be_called_app 7 _stores_sues_amazon.php; 8 • 9 Launch,” Business Insider (March 21, 2001, at http://www.businessinsider.com/apple- 10 11 amazon-app-store-2011-3; • 12 13 • “Apple Sues Amazon Over App Store”, NPR (March 22, 2011), at http://www.npr.org/2011/03/22/134755626/Business-News; • 16 17 “Appsolutely Ridiculous Lawsuit”, MediaPost MoBlog (March 22, 2011), at http://www.mediapost.com/publications/?fa=Articles.showArticle&art_aid=147200 14 15 “Apple Sues Amazon Over “App Store” Name Right Before Amazon’s Is Supposed To “Apple Sues Amazon Over Term ‘App Store’”, The Wall Street Journal (March 22, 2011), at http://online.wsj.com/article/SB10001424052748704139004576215392658777706 • “Apple’s App Store and a little trademark history,” Tech Republic (March 22, 2011), at 18 http://www.techrepublic.com/blog/mac/apples-app-store-and-a-little-trademark- 19 history/1063; 20 • 21 22 “Amazon Launches Appstore for Android,” The Slatest blog (March 22, 2011), at http://slatest.slate.com/id/2289054; • “Amazon App Store draws Apple lawsuit,” Mobile Computing News (March 24, 2011), at 23 http://www.mobile-computing-news.co.uk/industry-news/10788/amazon-app-store-draws- 24 apple-lawsuit.html; 25 • “Amazon to Open Android App Store as Apple Sues,” New York Times Bits blog 26 (March 24, 2011), at http://bits.blogs.nytimes.com/2011/03/22/amazon-opens-an-android- 27 app-store/; 28 • “The Great Language Land Grab”, The New York Times (March 26, 2011), at GIVAN DECL ISO AMAZON OPP’N TO MOT. FOR PI -5- 11-cv-01327 PJH 1 http://www.nytimes.com/2011/03/27/weekinreview/27zimmer.html; • 2 3 “Techman: What’s good for AT&T could be bad for consumers,” Pittsburg Post-Gazette (March 27, 2011), at http://www.post-gazette.com/pg/11086/1134737-96.stm; • 4 “Apple Claim Over ‘App Store’ Gets More Appsurd”, MediaPost MoBlog (May 20, 5 2011), at 6 http://www.mediapost.com/publications/?fa=Articles.showArticle&art_aid=150917. 7 24. Attached as Exhibit 23 are true and correct copies of consumer blogs discussing “app 8 stores.” Each printout has a URL and date on the bottom of the page indicating where the consumer 9 blog was printed from and the date it was printed. For ease of review, the printouts have been 10 underlined where “app store” is used generically. 11 25. Attached as Exhibit 24 is a true and correct copy of a printout of the March 16, 2011 12 Congressional testimony of Ashkan Soltani, in which he states “Mobile phones, televisions, set top 13 boxes . . . are now equipped with Internet connectivity and can leverage Web services which include 14 online advertisement. Some of these platforms also allow applications written by third parties, the 15 most prominent example being app stores on mobile smartphones” (emphasis added). I obtained 16 and 17 http://ashkansoltani.org/docs/soltani_senate.written.testimony_20111116.pdf. 18 printed 26. this document on June 1, 2011, from From review of publicly-available TTAB records, I am aware that Apple’s Application 19 No. 77/525,433 to register the mark APP STORE is the subject of Opposition No. 91195592. The 20 Opposer in that case, Microsoft Corporation, has asserted that “app store” is generic, and on January 21 10, 2011, filed a motion for summary judgment on that ground. That motion is currently pending. 22 Attached as Exhibit 25 is a true and correct copy of that motion. 23 27. Attached as Exhibit 26 is a true and correct copy of the Declaration of Robert A. 24 Leonard filed on February 28, 2011 by Apple in Opposition No. 91195592, which I obtained 25 through publicly-available TTAB records. 26 28. Attached as Exhibit 27 is a true and correct copy of the Declaration of Dr. Ronald R. 27 Butters filed on March 29, 2011 by Microsoft in Opposition No. 91195592, which I obtained 28 through publicly-available TTAB records. GIVAN DECL ISO AMAZON OPP’N TO MOT. FOR PI -6- 11-cv-01327 PJH 1 2 3 4 5 29. Attached as Exhibit 28 is a true and correct copy of printouts from Apple’s online store at www.apple.com, reflecting the prices at which an iPhone 4 are offered. 30. Attached as Exhibit 29 is a true and correct copy of printouts from Amazon’s online store at www.amazon.com, reflecting the prices at which various Android-based phones are offered. 31. Attached as Exhibit 30 is a true and correct copy of a survey titled “Wireless Shoppers 6 2.0: How Consumers Shop for Wireless Phones / Google Compete / Clickstream and Survey Based 7 Study / U.S., Feb. 2010”, which my office obtained and printed on May 25, 20011, from 8 http://www.gstatic.com/ads/research/en/2010_WirelessShoppers2.0.pdf. 9 32. Attached as Exhibit 31 is a true and correct copy of a printouts of an article titled 10 “Android outshines Apple in 4th quarter”, dated February 8, 2011, which I obtained and printed on 11 May 27, 2011 from CNET’s website at http://reviews.cnet.com/8301-19736_7-20030974-251.html. 12 33. Attached as Exhibit 32 is a true and correct copy of records regarding Apple’s 13 Community Trade Mark Registration No. 007078314 for APP STORE, which I obtained and 14 printed from the Office for Harmonization in the Internet Market’s (OHIM) website at 15 www.oami.europa.eu, and which reflect that Amazon, Microsoft Corporation, Sony Erickson 16 Mobile Communications, HTC Corporation, and Nokia Corporation have all filed applications to 17 cancel Apple’s registration. 18 19 I declare under penalty of perjury under the laws of the State of California that the foregoing is 20 true and correct to the best of my knowledge. Executed this 1st day of June, 2011, at San Francisco, 21 California. 22 /s/ Sarah J. Givan SARAH J. GIVAN 23 24 25 26 27 28 GIVAN DECL ISO AMAZON OPP’N TO MOT. FOR PI -7- 11-cv-01327 PJH