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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MARTIN R. GLICK (No. 40187)
email: [e-mail]
CLARA J. SHIN (No. 214809)
email: [e-mail]
SARAH J. GIVAN (No. 238301)
email: [e-mail]
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

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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APPLE INC., a California corporation,

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Plaintiff and CounterDefendant,

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v.

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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

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Defendants and CounterClaimants.

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GIVAN DECL ISO AMAZON OPP’N TO MOT. FOR PI

11-cv-01327 PJH

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I, Sarah J. Givan, declare as follows:

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1.

I am admitted to practice law in the State of California, and am an attorney with the law

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firm of Howard Rice Nemerovski Canady Falk & Rabkin, A Professional Corporation (“Howard

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Rice”), counsel to Defendants and Counter-Claimants Amazon.com, Inc., and Amazon Digital

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Services, Inc. (collectively, “Amazon”) in the above-captioned case. I make this declaration in

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support of Amazon’s Opposition to Plaintiff Apple Inc.’s Motion for Preliminary Injunction. Except

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where otherwise indicated, this declaration is based upon my own personal knowledge, and I could

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and would testify competently to the truth of the matters stated herein if called upon to do so.

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2.

Attached as Exhibit 1 are true and correct copies of excerpts from dictionaries defining

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the terms “app” and “application”, which I obtained through Exhibit 3 to the Declaration of

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Nathaniel E. Durrance in Support of Opposer Microsoft Corporation’s Motion for Summary

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Judgment filed on January 10, 2011 in Opposition No. 91195592 pending before the Trademark

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Trial and Appeal Board (“TTAB”) in the United States Patent and Trademark Office (“PTO”). This

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document is publicly available at http://ttabvue.uspto.gov/ttabvue/v?pno=91195582&pty=OPP.

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3.

Attached as Exhibit 2 is a true and correct copy of a printout from the

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WordReference.com website, showing the definitions of “application” listed by the Concise Oxford

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English Dictionary, which I obtained and printed from the www.wordreference.com website on

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March 27, 2011.

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4.

Attached as Exhibit 3 are true and correct copies of excerpts from dictionaries defining

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the term “store”, which I obtained through Exhibit 5 to the Declaration of Nathaniel E. Durrance in

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Support of Opposer Microsoft Corporation’s Motion for Summary Judgment filed on January 10,

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2011 in Opposition No. 91195592 pending before the Trademark Trial and Appeal Board (“TTAB”)

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in the United States Patent and Trademark Office (“PTO”), which is publicly available at

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http://ttabvue.uspto.gov/ttabvue/v?pno=91195582&pty=OPP.

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5.

Attached as Exhibit 4 is a true and correct copy of the definition of “app store”

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appearing in PC Magazine’s online Encyclopedia, which I obtained and printed from the

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http://www.pcmag.com/encyclopedia_term/0,2542,t=online+app+store&i=62644,00.asp.

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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

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on March 26, 2011 from the website for the American Dialect Society at www.americandialect.org:

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(a) an online article dated January 8, 2011, indicating that the American Dialect Society voted “app”

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as its Word of the Year for 2010, and (b) the first two pages of the American Dialect Society’s

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January 7, 2011 press release announcing that selection.

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7.

Attached as Exhibit 6 is a true and correct copy of a Salesforce.com press release dated

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December 12, 2006, which I obtained and printed from Salesforce.com’s website on March 27,

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2011.

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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,

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July 14, September 28, November 4, 2009, and October 18, 2010, which I retrieved from Apple's

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website on March 27, 2011, and May 25, 2011.

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11.

Attached as Exhibit 10 is a true and correct copy of Apple’s Amendment to Alleged

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Use under 15 U.S.C. Section 1051(c), filed by Apple with the USPTO on November 20, 2009, to

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prove use of APP STORE in connection with Application No. 77/525,433. I obtained Exhibit 9 via

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publicly accessible records on the www.uspto.gov website on March 28, 2011. The three attached

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specimens are screen shots showing what a user sees when accessing Apple's App Store via its

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iTunes Store on a personal computer. The first specimen filed by Apple is to prove use of APP

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STORE in Class 35, showing that a user selects “iTunes Store” from the “STORE” options, that

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“App Store” is an option within the iTunes Store selections, and a “Search Store” tool is available to

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search for apps. The second specimen filed by Apple is to prove use of APP STORE in Class 38,

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showing that downloading service is part of an app purchase on the App Store and a “Get App”

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function is used to purchase apps via download on iTunes. The third specimen, filed by Apple to

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prove use of APP STORE in Class 42, is identical to the Class 35 specimen.

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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

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www.seekingalpha.com on March 26, 2011.
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Attached as Exhibit 12 is a true and correct copy of a October 19, 2010 NPR Morning

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Edition article concerning Apple's October 18, 2010 earnings call and comments made by Apple's

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CEO, Steve Jobs, which I obtained and printed from Westlaw.com.

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Attached as Exhibit 13 are true and correct copies of printouts of online general and

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trade press articles and blog postings discussing “app stores.” Each article has a URL and date on

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the bottom or side of the page indicating from what website the article was printed and the date on

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which I printed it. For ease of review, the printouts have been underlined where “app store” is used

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generically.

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Attached as Exhibit 14 are true and correct copies of printouts of additional general

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press articles discussing “app stores.” I obtained and printed these articles on March 28, 2011 from

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Westlaw at the referenced addresses on each page of Exhibit 14. For ease of review, the printouts

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have been underlined where “app store” is used generically.

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Attached as Exhibit 15 are true and correct copies of printouts of 27 press articles with

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the plural term “app stores” in their title. I obtained and printed these articles on March 27, 2011,

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via a search of the USNEWS database at Westlaw.com for “app stores” in article headlines.

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Expanding that search to include “app stores” in lead paragraphs of articles increased the results hits

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to 753 articles.

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17.

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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.
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Attached as Exhibit 17 is an printout from DirectTV’s website advertising its DirectTV

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App Store for television applications, which I located, obtained, and printed from DirectTV’s

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website

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http://www.directv.com/DTVAPP/global/article.jsp?assetId=P6220088, on March 27, 2011.

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at

http://tvapps.directv.com/index.do

and

Attached as Exhibit 18 are true and correct copies of printouts from websites showing

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third parties’ use of the term “app store” to refer to their own services. Each website printed has a

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URL and date on the bottom or side of the page indicating where the website was printed from and

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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

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refer to their services: metroPCS (“@metro App Store”); Sprint (“Sprint Partner App Stores”);

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Appia (“White Label App Store”); Shopify (“Shopify App Store”); Palm App Store; Appstore for

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Symbian; Mobile2Day Appstore for Blackberry; Handango Mobile App Store; AndAppStore;

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Handmark Mobile App Store for Android; Sentrion App Store; DC App Store; MobiHand (“Get the

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MobiHand App Store Launcher); DNAappstore; The PC App Store; iPAQ Appstore; GetJar

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(“GetJar is the world’s largest open app store”); Mini App Stores; Tristit App Store; MiKandi App

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Store; and Android App Store.

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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.
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I am familiar with and frequently use the DomainTools service available at

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www.domaintools.com.

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research and monitoring services. DomainTools allows a user to search the number of registered

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domain names that contain a particular word. On March 29, I performed a search for “appstore” in

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currently active domain names in which the generic top-level domain (gTLD) was “.com”, “.net”,

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“.org”, “.info”, “.biz”, or “.us”, and in which the second-level domain was 25 characters or less. On

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March 29, there were 2122 active registered domain names that contain the term “appstore” with a

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common gTLD. Attached as Exhibit 20 is a true and correct copy of these results, which I printed

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from DomainTools’s website.

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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

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the second level domain name includes the term “appstore.” Each website printed has a URL and

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date on the bottom or side of the page indicating where the website was printed from and the date I

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printed it.

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www.appstores.com, www.theappstore.com, www.appstorelist.com, www.blackberryappstore.com,

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and www.smartphone-appstore.com. As shown in Exhibit 18, other companies using domain names

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containing

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www.pcappstore.com, and www.miniappstores.com.

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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

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and radio stories regarding Apple’s lawsuit, which I located, obtained and printed from the Internet.

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Each article has a URL and date on the bottom or side of the page indicating where the article was

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printed from and the date I printed it. These articles include:

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“Apple Says Other App Stores Can’t Be Called App Stores, Sues Amazon”,

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ReadWriteWeb (March 21, 2011), at

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http://www.readwriteweb.com/archives/apple_says_other_app_stores_cant_be_called_app

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_stores_sues_amazon.php;

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•

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Launch,” Business Insider (March 21, 2001, at http://www.businessinsider.com/apple-

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amazon-app-store-2011-3;
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“Apple

Sues

Amazon

Over

App

Store”,

NPR

(March

22,

2011),

at

http://www.npr.org/2011/03/22/134755626/Business-News;
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“Appsolutely Ridiculous Lawsuit”, MediaPost MoBlog (March 22, 2011), at
http://www.mediapost.com/publications/?fa=Articles.showArticle&art_aid=147200

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“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

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“Apple’s App Store and a little trademark history,” Tech Republic (March 22, 2011), at

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http://www.techrepublic.com/blog/mac/apples-app-store-and-a-little-trademark-

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history/1063;

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“Amazon Launches Appstore for Android,” The Slatest blog (March 22, 2011), at
http://slatest.slate.com/id/2289054;

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“Amazon App Store draws Apple lawsuit,” Mobile Computing News (March 24, 2011), at

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http://www.mobile-computing-news.co.uk/industry-news/10788/amazon-app-store-draws-

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apple-lawsuit.html;

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“Amazon to Open Android App Store as Apple Sues,” New York Times Bits blog

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(March 24, 2011), at http://bits.blogs.nytimes.com/2011/03/22/amazon-opens-an-android-

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app-store/;

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“The Great Language Land Grab”, The New York Times (March 26, 2011), at
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http://www.nytimes.com/2011/03/27/weekinreview/27zimmer.html;
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“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;

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“Apple Claim Over ‘App Store’ Gets More Appsurd”, MediaPost MoBlog (May 20,

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2011), at

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http://www.mediapost.com/publications/?fa=Articles.showArticle&art_aid=150917.

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Attached as Exhibit 23 are true and correct copies of consumer blogs discussing “app

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stores.” Each printout has a URL and date on the bottom of the page indicating where the consumer

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blog was printed from and the date it was printed. For ease of review, the printouts have been

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underlined where “app store” is used generically.

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25.

Attached as Exhibit 24 is a true and correct copy of a printout of the March 16, 2011

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Congressional testimony of Ashkan Soltani, in which he states “Mobile phones, televisions, set top

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boxes . . . are now equipped with Internet connectivity and can leverage Web services which include

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online advertisement. Some of these platforms also allow applications written by third parties, the

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most prominent example being app stores on mobile smartphones” (emphasis added). I obtained

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and

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http://ashkansoltani.org/docs/soltani_senate.written.testimony_20111116.pdf.

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printed

26.

this

document

on

June

1,

2011,

from

From review of publicly-available TTAB records, I am aware that Apple’s Application

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No. 77/525,433 to register the mark APP STORE is the subject of Opposition No. 91195592. The

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Opposer in that case, Microsoft Corporation, has asserted that “app store” is generic, and on January

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10, 2011, filed a motion for summary judgment on that ground. That motion is currently pending.

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Attached as Exhibit 25 is a true and correct copy of that motion.

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Attached as Exhibit 26 is a true and correct copy of the Declaration of Robert A.

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Leonard filed on February 28, 2011 by Apple in Opposition No. 91195592, which I obtained

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through publicly-available TTAB records.

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Attached as Exhibit 27 is a true and correct copy of the Declaration of Dr. Ronald R.

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Butters filed on March 29, 2011 by Microsoft in Opposition No. 91195592, which I obtained

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through publicly-available TTAB records.
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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

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2.0: How Consumers Shop for Wireless Phones / Google Compete / Clickstream and Survey Based

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Study / U.S., Feb. 2010”, which my office obtained and printed on May 25, 20011, from

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http://www.gstatic.com/ads/research/en/2010_WirelessShoppers2.0.pdf.

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Attached as Exhibit 31 is a true and correct copy of a printouts of an article titled

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“Android outshines Apple in 4th quarter”, dated February 8, 2011, which I obtained and printed on

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May 27, 2011 from CNET’s website at http://reviews.cnet.com/8301-19736_7-20030974-251.html.

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Attached as Exhibit 32 is a true and correct copy of records regarding Apple’s

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Community Trade Mark Registration No. 007078314 for APP STORE, which I obtained and

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printed from the Office for Harmonization in the Internet Market’s (OHIM) website at

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www.oami.europa.eu, and which reflect that Amazon, Microsoft Corporation, Sony Erickson

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Mobile Communications, HTC Corporation, and Nokia Corporation have all filed applications to

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cancel Apple’s registration.

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I declare under penalty of perjury under the laws of the State of California that the foregoing is

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true and correct to the best of my knowledge. Executed this 1st day of June, 2011, at San Francisco,

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California.

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/s/ Sarah J. Givan
SARAH J. GIVAN

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