TimesLines, Inc v. Facebook, Inc.
Filing
173
MEMORANDUM by Facebook, Inc. in Opposition to motion in limine 171 No. 9 (Attachments: # 1 Declaration of Lori Mayall, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D)(Willsey, Peter)
Exhibit C
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IN THE UNITED STATES DISTRICT COURT
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FOR THE NORTHERN DISTRICT OF ILLINOIS
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EASTERN DIVISION
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TIMELINES, INC.,
)
)
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Plaintiff,
)
)
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vs.
) No. 11-CV-06867
)
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FACEBOOK, INC.,
)
) Judge John W. Darrah
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Defendant.
)
___________________________)
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HIGHLY CONFIDENTIAL - OUTSIDE COUNSEL ONLY
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VIDEOTAPED DEPOSITION OF BRIAN HAND
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Chicago, Illinois
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Thursday, September 20, 2012
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Reported by:
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PAULA CAMPBELL, CSR, RDR, CRR, CCP
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JOB NO. 53018
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HIGHLY CONFIDENTIAL - OUTSIDE COUNSEL ONLY - B. HAND
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A.
Yes.
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Q.
And how did go about preparing it?
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A.
I used our -- the existing Timelines
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description of services, and then I looked up the
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Facebook description of services to see if there was
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overlap with what we were doing but had not
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described in our identification in the past, and
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what Facebook was doing and had described in their
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identification.
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in this application to make our description and our
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identification more complete.
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Q.
And I thought to incorporate that
So portions of this description that you
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prepared were based upon descriptions of services
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covered by Facebook trademark filings?
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A.
Yeah, I used -- I read through the way they
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described it, which more fully described the
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services we were providing, and used that to add to
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our identification.
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Q.
And were the Facebook filings that you
looked at for the mark Facebook?
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A.
Yes.
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Q.
And there weren't -- you didn't find any
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Facebook applications for the term timeline?
A.
No.
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HIGHLY CONFIDENTIAL - OUTSIDE COUNSEL ONLY - B. HAND
Q.
If you'll turn to the fifth page of the
document with Bates number 2584 at the bottom?
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A.
Yep.
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Q.
In the middle -- starting in the middle of
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the page, there is, again, a recitation of the
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services covered by this application.
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Does that look accurate?
A.
When you say accurate, is that -- it's the
same as this one just prior, I believe.
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Q.
Yes?
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A.
Is that -- yes.
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Q.
So is that the description you prepared?
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A.
Yeah.
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Q.
And on the following page with Bates number
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It's the same one, yes.
2585 at the bottom --
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A.
Yes.
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Q.
-- there is a declaration on this page, and
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do you see there is a portion of the page that says
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signature, Brian Hand?
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A.
Yes.
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Q.
Did you electronically sign this --
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A.
Yes.
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Q.
-- application?
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MR. ALBRITTON:
Say yes again.
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date of this, but yes.
Let me look.
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Q.
Look at the top.
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A.
Yes.
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Q.
So that's approximately two months after
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the lawsuit was filed?
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A.
Yes.
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Q.
Without going through -- I mean, you can
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take as much time reading this, but what's your
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recollection of what the Patent and Trademark Office
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communicated in this office action?
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A.
My understanding is that they denied the
request for -- for the trademark.
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Q.
And for what reason?
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A.
I, quite frankly, didn't spent an awful
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loft time on this.
Q.
I referred it to our counsel.
And I'm definitely not asking you to
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disclose any attorney-client privileged
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communications, any legal advice that he provided.
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If you turn to the page that has 2591 at
the bottom.
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A.
Okay.
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Q.
If you look about a third of the way down,
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there is a heading with the number one, and it says
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Section 2E1 Refusal - Merely Descriptive.
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A.
Yes.
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Q.
Does that refresh your recollection as to
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why the Patent and Trademark Office refused
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registration of -- or refused this application?
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A.
In reading this, yes.
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Q.
And was it because the PTO took the
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position that the mark was merely descriptive?
A.
I presume so.
I'm -- I just read what it
says here, yes.
Q.
Without disclosing any legal advice that
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you got, what did the company do in response to this
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office action?
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A.
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was it.
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Q.
Did the company ever respond to it?
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A.
I --
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I referred it to our counsel, and then that
MR. ALBRITTON:
So you can -- so this is
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one where the client consulted with us about
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it.
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company respond to the office action?
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A.
Yes.
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Q.
Why did the company not respond to this
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So you can answer yes or no.
Did the
No, we did not.
office action?
MR. ALBRITTON:
So that one is privileged.
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So I object.
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covered by the attorney-client privilege, and I
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instruct the witness not to answer that
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question.
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Q.
And are you not answering based on your --
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A.
I'm not answering, yes.
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Q.
Is there any reason the company had for not
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It calls for an answer that's
Correct.
responding to this office action that does not
relate to anything that legal counsel told you?
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A.
No.
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Q.
Has the company filed any applications for
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the term timelines covering a similar description of
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services since this application?
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A.
I don't think so, no.
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Q.
If you'll look at the pages starting with
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2596 on the bottom.
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A.
Okay.
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Q.
And from 2596 through, let's see how far it
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goes, all the way to 2640, have you seen those
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pages?
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A.
Only when they first came in, before I
forwarded everything on to our counsel.
Q.
And what's your understanding of what these
pages are?
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A.
These are other services cited by the
trademark examiner.
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Q.
And are they uses of the term timeline?
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A.
I, quite honestly, didn't spend any time at
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all, other than just breezing through it, and then
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forwarded it on.
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Q.
Did you investigate any of the entities
that are referenced in this string of pages?
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A.
No.
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Q.
Were you concerned at all that any of them
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might be infringing your trademark?
A.
I didn't spend any time looking at those,
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because at that point in time I had counsel that was
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handling things related to this.
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Q.
Did the company as a whole conduct any
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investigation into what these entities were doing
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with respect to the term timeline or timelines?
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A.
No.
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Q.
Do you have any reason to believe that the
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entities that are referenced in this string of pages
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from 2596 through 2640 are no longer using the term
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timeline?
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A.
I don't know.
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Q.
And if you look at the final page of the
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