Apple Inc. v. Amazon.Com, Inc.

Filing 47

Declaration of Thomas R. La Perle in Support of 45 Reply to Opposition/Response filed byApple Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5)(Related document(s) 45 ) (Eberhart, David) (Filed on 6/8/2011)

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DAVID R. EBERHART (S.B. #195474)
[e-mail]

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RYAN J. PADDEN (S.B. #204515)
[e-mail]

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DAVID J. SEPANIK (S.B. #221527)

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O’MELVENY & MYERS LLP
Two Embarcadero Center, 28th Floor
San Francisco, CA 94111
Telephone:
[phone]
Facsimile:
[phone]

[e-mail]

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Attorneys for Plaintiff
APPLE INC.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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OAKLAND DIVISION

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APPLE INC., a California corporation,

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Plaintiff,
v.
AMAZON.COM, INC., a Delaware
corporation, and AMAZON DIGITAL
SERVICES, INC., a Delaware corporation,
Defendant.

Case No. CV 11-01327 PJH
DECLARATION OF THOMAS R. LA
PERLE IN SUPPORT OF APPLE INC.’S
REPLY IN SUPPORT OF MOTION FOR
PRELIMINARY INJUNCTION
Date:
Time:
Courtroom:
Judge:

June 22, 2011
9:00 A.M.
3, 3rd Floor
Hon. Phyllis J. Hamilton

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LA PERLE DEC. ISO APPLE INC.’S
REPLY ISO MOTION FOR PI,
CASE NO. CV 11-01327 PJH

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I, Thomas R. La Perle, pursuant to 28 U.S.C. § 1746, hereby declare as follows:
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I am currently a Director in Apple Inc.’s Legal Department, managing the

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Trademark, Copyright and Enforcement Group. I submit this declaration in support of Apple

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Inc.’s (“Apple”) reply in support of its motion for a preliminary injunction against Amazon.com,

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Inc. and Amazon Digital Services, Inc. (collectively, “Amazon”) on the basis that Amazon is

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infringing Apple’s trademark APP STORE. All information provided within this declaration is

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personally known to me or is information that has been provided to me, which I believe to be

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true, and if called as a witness I would testify to all information herein under oath.

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2.

I have previously submitted a declaration in this matter, which is filed as Docket

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No. 21 with the Court. That declaration discusses, among other things, the launch of Apple’s

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revolutionary APP STORE service and how that service allows users of Apple’s iPhone, iPod,

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and iPad mobile devices to browse, search for, and license a wide range of third-party software

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programs. As I stated in that declaration, Apple “licenses” software applications. Apple does not

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“sell” applications.

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3.

Nor do software developers “sell” applications through Apple’s APP STORE

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service. Instead, Apple acts as the agent for software developers who make their applications

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available for customers to license and download through the APP STORE service.

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4.

Consumers are made aware that they are licensing—not buying—software made

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available through the APP STORE service, because each user must accept Apple’s Licensed

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Application End User License Agreement. The first line of that agreement states that “[t]he

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Products transacted through the Service are licensed, not sold, to You for use only under the

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terms of this license.” A true and correct copy of this agreement is attached hereto as Exhibit 1.

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5.

My earlier declaration also discussed that, to the best of my knowledge, the term

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“App Store” was not in use in the United States, or elsewhere, in connection with the type of

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services offered by Apple under the APP STORE mark. As I discussed, prior to its launch of its

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APP STORE service, Apple became aware of the fact that a company named Salesforce.com, Inc.

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filed an intent to use the mark APPSTORE for “[a]pplication service provider (ASP) featuring

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computer software in the field of business project management, business knowledge, information
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LA PERLE DEC. ISO APPLE INC.’S
REPLY ISO MOTION FOR PI,
CASE NO. CV 11-01327 PJH

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and asset management, customer relationship management, sales, marketing, e-commerce,

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electronic messaging, and web site development.” Apple expressed its opposition to Salesforce’s

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intent to use that mark due to the similarity to the APPLE STORE trademark, a federally

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registered, incontestable mark that Apple has used for many years for online retail services,

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including software retail services . Salesforce.com abandoned its plans to use the term and never

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commenced such use.

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6.

I understand that Amazon has identified a handful of entities that, according to

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Amazon, have referred to their services as “app stores.” To the extent Apple was aware of

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entities using Apple’s APP STORE mark, Apple has contacted them to request they cease their

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use of the mark. Those efforts have often been successful in obtaining the voluntary cessation of

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the use of Apple’s mark.

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Apple is also enforcing its rights to the APP STORE mark against Amazon’s

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misuse of that mark in other jurisdictions. The District Court in Hamburg, Germany has recently

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granted a preliminary injunction ordering Amazon to cease use of APP STORE in connection

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with Amazon’s developer program in Germany. Amazon has not yet launched its mobile

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software download service in Germany. A true and correct copy of that court’s order, and an

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English translation, are attached hereto as Exhibit 2.

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8.

My prior declaration—and that of Apple’s Matthew Fischer filed as Docket No.

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well-known among the consuming public. For consumers who do not yet have a smartphone

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(such as an iPhone, iPad or Android-based device), or do not yet have a similar device that can

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access and make use of downloadable mobile software, a comparison of the number, quality, and

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interoperability of software applications available for use on such devices is likely to be a

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significant factor in their device purchasing decision. I am aware of several articles discussing

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how the software ecosystem available for various smart phones or other devices affect

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consumers’ decisions whether to buy a smartphone and which smartphone to buy. A true and

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correct copy of various articles discussing those purchasing decisions is attached hereto as Exhibit

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3. Those consumers are likely to see the Appstore service available on the Android device and
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LA PERLE DEC. ISO APPLE INC.’S
REPLY ISO MOTION FOR PI,
CASE NO. CV 11-01327 PJH

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mistakenly believe it is related to the well-known APP STORE service provided by Apple.

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Consumers who intend to gain access to the large library of applications Apple makes available

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through its APP STORE service—and who believe that the “Appstore” offered by a well-known

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reseller such as Amazon will provide such access for Android devices—may mistakenly purchase

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a device that will not work with Apple’s APP STORE service. Those consumers would then be

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foreclosed from accessing Apple’s APP STORE service until they purchased a different device.

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9.

I am aware that Amazon has asserted that Amazon “cannot expand into sales of

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apps for Apple devices without Apple’s permission.” That is not correct with respect to all types

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of applications for Apple devices. In particular, it may be possible that Amazon would expand

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into sales of applications for jailbroken iOS-based Apple devices. Although Apple does not offer

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applications for jailbroken iOS-based devices, such applications are available from other sources.

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For instance, the Cydia Store—located at http://cydia.saurik.com/store/—offers such applications.

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The Cydia Store does not have any permission or authorization from Apple. Nor has Apple

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authorized any other person or entity to provide applications for jailbroken iOS devices.

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10.

On June 2, 2011, it was reported that Google removed from its Android Market 30

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malware-infected software applications for Android devices. A true and correct copy of an article

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reporting that event is attached hereto as Exhibit 4.

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11.

I am also aware of news articles reporting complaints regarding Amazon’s process

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for purchasing from its mobile software download service, namely that under certain

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circumstances a single click can result in an accidental purchase for which Amazon will not

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provide a refund. I am also aware of recent reports that Amazon has taken steps to fix this

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problem by requiring two clicks for all purchases from Amazon’s service. True and correct

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copies of articles reporting this concern are attached hereto as Exhibit 5.

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12.

I am aware that on approximately May 26, 2011, Amazon launched a service that

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allows consumers to download from Amazon software for MAC personal computers

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manufactured by Apple. Amazon has branded that service the “Mac Software Downloads” area

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or department of the www.amazon.com website.

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LA PERLE DEC. ISO APPLE INC.’S
REPLY ISO MOTION FOR PI,
CASE NO. CV 11-01327 PJH