Tiffany (NJ) Inc. et al v. eBay Inc.

Filing 60

DECLARATION of Erik C. Walsh in Opposition re: 55 MOTION in Limine to Exclude Evidence that Purports to Create Liability Based on Trademarks First Asserted in Tiffany's Proposed Findings of Fact.. Document filed by Tiffany (NJ) Inc., Tiffany and Company. (Attachments: # 1 Exhibit A# 2 Exhibit B# 3 Exhibit C# 4 Exhibit D# 5 Exhibit E# 6 Exhibit F# 7 Exhibit G# 8 Exhibit H# 9 Exhibit I# 10 Exhibit J# 11 Exhibit K# 12 Exhibit L# 13 Exhibit M# 14 Exhibit N# 15 Exhibit O# 16 Exhibit P)(Boccanfuso, Anthony)

STATES SOUTHERN

DISTRICT

COURT YORK

DISTRICT

OF NEW

TIFFANY (NJ) INC. and TIFFANY AND
COMPANY,

Case No. 04 Civ. 4607 (KMK)
Plaintiffs,

eBAY INC.,
Defendants.

DECLARATION OPPOSITION

OF ERIK

C. WALSH MOTION

IN INLI2MINE

TO DEFENDANT'S

I, Erik C. Walsh, declare as follows: 1. I am admitted to practice before the Courts of the State of New York, and am a

member of this Court. I am associated with Amold & Porter LLP, attorneys for plaintiffs Tiffany (NJ) Inc. and Tiffany and Company (collectively, "Tiffany"). I submit this Declaration in opposition to Defendant's Motion in Limine. I have personal knowledge of the facts set forth
herein.

2.

Annexed hereto as Exhibit A is a true and correct copy of the Certificate of

Registration for the "bean" design mark, bearing registration number 1,804,353 on the Principal
Register in the United States Patent and Trademark Office. Tiffany designated this Certificate of Registration as Plaintiffs' Exhibit 1057 in the Joint Pretrial Order.
Tiffany (NJ) Inc. et al v. eBay Inc. Doc. 60

3.

Annexed hereto as Exhibit B is a true and correct copy of listings for the Elsa

Peretti Mini Bean Pendant and Elsa Peretti Bean Pendant from Tiffany's official website at www.tiffany.com.

Dockets.Justia.com

Annexed hereto as Exhibit C is a true and correct copy of the Certificate of Registration for the "X" design mark, bearing registration number 1,785,204 on the Principal Register in the United States Patent and Trademark Office. Tiffany designated this Certificate of
Registration as Plaintiffs' Exhibit 1056 in the Joint Pretrial Order.

5.

Annexed hereto as Exhibit D is a true and correct copy of listings for the Paloma

Picasso X pendant, Paloma Picasso X ornament and Paloma Picasso X drop earrings from
Tiffany's official website at www.tiffany.com. 6. Annexed hereto as Exhibit E is a true and correct copy of Plaintiffs' First Request

for the Production of Documents and Things to Defendant eBay Inc., dated October 22, 2004. 7. Annexed hereto as Exhibit F is a true and correct copy of Plaintiffs' First Set of

Interrogatories to Defendant eBay Inc., dated October 22, 2004.

8.

Annexed hereto as Exhibit G is a true and correct copy of Defendant's Objections

and Responses to Plaintiffs' First Request for the Production of Documents and Things, dated
November 22, 2004.

9.

Annexed hereto as Exhibit H is a true and correct copy of the pertinent and non-

confidential excerpt from Defendant's Objections and Responses to Plaintiffs' First Set of Interrogatories, dated November 22, 2004.
Objections. 10. Annexed hereto as Exhibit I is a true and correct copy of the First Request for the

The excerpt is the section entitled General

Production of Documents by Defendant eBay Inc., dated October 25, 2004 ("eBay's First
Request").

During the course of discovery herein, eBay never propounded any document request or interrogatory that sought information concerning the scope of the Tiffany trademarks that Tiffany alleges in the First Amended Complaint that eBay infringed. 12. During depositions that eBay took during the course of discovery in this action,

eBay never inquired about the scope of Tiffany trademarks that Tiffany alleges in the First Amended Complaint that eBay infi-inged. 13. Annexed hereto as Exhibit J is a true and correct copy of a schedule setting forth

pertinent information from Tiffany's 2004 Buying Program, bearing bates numbers TCO 087144-A - TCO 087144-I. Tiffany produced this schedule in response to eBay's First Request,
and designated it as Plaintiffs' Exhibit 434 in the Joint Pretrial Order.

14.

Annexed hereto as Exhibit K is a true and correct copy of a schedule setting forth

pertinent information from Tiffany's 2005 Buying Program, bearing bates numbers TCO 086511 - TCO 086521. Tiffany produced this schedule in response to eBay's First Request, and

designated it as Plaintiffs' Exhibit 433 in the Joint Pretrial Order.

15.

Exhibits J and K hereto collectively identify a total of 45 items purchased or

selected for purchase during Tiffany's Buying Programs that included the words Atlas, Peretti, Elsa Peretti and/or Paloma Picasso in the listing title.
16. Annexed hereto as Exhibit L is a true and correct copy of a screenshot of an eBay

listing for a "Tiffany Atlas Sterling Silver and Rubber Bracelet" bearing bates numbers TCO 085170 - TCO 085172. Tiffany produced this document in response to eBay' s First Request.
17. Annexed hereto as Exhibit M is a true and correct copy of a screenshot of an eBay

listing for a "Tiffany & Co. Paloma Picasso Loving Heart Necklace" bearing bates numbers

084782 - TCO 084788. Tiffany produced this document in response to eBay's First
Request.

18.

Annexed hereto as Exhibit N is a true and correct copy of a screenshot of an eBay

listing for a "Tiffany & Co. Large Elsa Peretti Crucifix Necklace" bearing bates numbers TCO
085483 - TCO 085489. Tiffany produced this document in response to eBay's First Request. 19. Annexed hereto as Exhibit O are true and correct copies of pages 1 and 14 of

Exhibit E to the Joint Pretrial Order, i.e., Plaintiffs' Exhibit List. Pursuant to the Court's pretrial
requirements, Plaintiffs' Exhibit List sets forth the objections that eBay lodged to the trial

exhibits designated by Tiffany. As reflected by the absence of any objections, eBay did not object to Plaintiffs' Exhibits 433 and 434, the Buying Program spreadsheets that are annexed
hereto as Exhibits J and K.

20.

Annexed hereto as Exhibit P is a true and correct copy of page 15 of Plaintiffs'

Exhibit List. As reflected on this page, Tiffany designated as trial exhibits the packaging used for the items that were purchased during the two Buying Programs identified in Paragraphs 13
and 14 hereof. Those packaging materials have been designated as Plaintiffs' Exhibits 451, 452, 465, 466, 472, 473 and 474. Each of those exhibits bears what purports to be Tiffany

trademarks, including the Tiffany blue. I declare under penalty of perjury that the foregoing is true and correct.
Dated: New York, New York June 1, 2007

ERIK'C.

WALSH

OF SERVICE

I, Anthony D. Boccanfuso, the undersigned attorney at law duly admitted to practice in

the State of New York, respectfullyshow that on the l"fday of June, 2007, the annexed
DECLARATION MEMORANDUM OF ERIK C. WALSB IN SUPPORT OF PLAINTIFFS' MOTION INLIMINE

OF LAW IN OPPOSITION

TO DEFENDANT'S

was served by hand delivery upon:

Mark Fiore, Esq.
WEIL GOTSHAL 767 Fifth Avenue & MANGES LLP

New York, NY 10153

Anthony D. Boccanfuso