J.T. Colby & Company, Inc. et al v. Apple, Inc.

Filing 135

DECLARATION of Claudia T. Bogdanos in Opposition re: 120 MOTION in Limine to Exclude any Testimony, Argument or Evidence Regarding the Expert Reports and Opinions of Susan Schwartz McDonald.. Document filed by Ipicturebooks LLC, J.Boyston & Company, J.T. Colby & Company, Inc., Publishers LLC. (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 Part 1, # 10 Exhibit I Part 2, # 11 Exhibit J, # 12 Exhibit K, # 13 Exhibit L, # 14 Exhibit M, # 15 Exhibit N, # 16 Exhibit O, # 17 Exhibit P, # 18 Exhibit Q, # 19 Exhibit R)(Chattoraj, Partha)

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EXHIBIT E Page 1 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK J.T. COLBY & COMPANY, INC. d/b/a BRICK TOWER PRESS, J. BOYLSTON & COMPANY PUBLISHERS LLC, and IPICTURES LLC, Plaintiffs, vs. Civil Action No. 11-cv-4060(DLC) APPLE, INC., Defendant. -------------------------) VIDEOTAPED DEPOSITION OF JACOB JACOBY, Ph.D. New York, New York Thursday, December 6, 2012 Reported by: SHAUNA STOLTZ-LAURIE Ref: 8576 TransPerfect Legal Solutions 212-400-8845 - depo@transperfect.com Page 25 1 Jacoby 2 Q. Were you first contacted about this 3 case in the context of doing a rebuttal 4 report? 5 MR. RASKOPF: 6 form. 7 A. Objection to the I was not asked to do a survey, so 8 I -- you know, presumably was in the context 9 of doing a rebuttal report. 10 11 Q. A. I think initially it was Ms. case? 12 13 Well, who contacted you about this Bogdanos. 14 Q. And what was said in that initial 15 conversation? 16 A. Go through the normal conflicts 17 checks, and I had no conflict. 18 likely -- well, I don't know exactly what was 19 said. 20 21 22 Most I can tell you what most likely was said. Would you like me to tell you that? Q. 23 Sure. MR. RASKOPF: 24 you can say -- 25 Q. Don't guess, Jack. Your -- your best recollection. TransPerfect Legal Solutions 212-400-8845 - depo@transperfect.com I Page 105 1 2 Jacoby A. Well, that ibooks online, 3 Plaintiffs' ibooks online, and defendants use 4 the term iBooks for its app and -- online, 5 and that's where the overlap is. 6 7 Q. Can you get any of Plaintiffs' books on Defendant's app? 8 A. I don't believe so. 9 Q. Okay. 10 Apple doesn't use the mark iBooks as an imprint on books, does it? 11 MR. RASKOPF: 12 form. 13 A. Objection to the You know, it's interesting, you 14 asked me before about when plaintiff started 15 using I -- lower case I capital B. 16 remember reading material in this case, there 17 came a point where defendant stopped using 18 iBooks in the way that would have fostered -- 19 I don't remember specifics -- could have 20 fostered greater confusion (speaking 21 simultaneously) -- 22 Q. If I Did you discuss that with counsel 23 during the break, and did they tell you to 24 make that comment? 25 A. Absolutely not. TransPerfect Legal Solutions 212-400-8845 - depo@transperfect.com Page 198 1 Jacoby 2 expert should not deprive respondents of 3 contextual clues that might be helpful to 4 them one way or the other in assessing 5 confusion? 6 A. I do. 7 MS. BOGDANOS: 8 (Discussion off the record.) 9 Q. Objection. Now -- now, in your report, 10 paragraph ten again that we're still talking 11 about, Exhibit 3, you say at the end of that 12 paragraph "I am of the opinion that while 13 point of sale confusion may occur, it is post 14 sale confusion that is more likely." 15 see that? Do you 16 A. I do. 17 Q. What is your basis for your view 18 that point of sale confusion is more likely? 19 A. 20 more likely. 21 Q. 22 No. I think I said post sale is Forgive me. What is the basis for your view 23 that post sale confusion is more likely than 24 point of sale confusion? 25 A. My own experience, and the way I TransPerfect Legal Solutions 212-400-8845 - depo@transperfect.com Page 263 1 Jacoby 2 where it says "The nature of Apple's business 3 suggests that the present matter more likely 4 times of confusion with confusion as to 5 affiliation, association, or connection and 6 confusion as to sponsor PIP authorization or 7 permission." 8 A. Yes. 9 Q. What's your basis for that 10 11 Do you see that? statement? A. Well, they might not think Apple 12 was the publisher of a book, I think, because 13 of the iBlooks that is used by Apple -- well, 14 you didn't study that here. 15 that given the "i" with the book, that as you 16 said before, that's the paradigm that Apple 17 uses, they would think that there was some 18 kind of relationship or business connection 19 between them. 20 is important and it has nothing to do with 21 this case and I just want to make you feel 22 good because it makes me feel good and that 23 is there is research that shows the longer 24 the sentences you right if they're correct 25 sentences, the less likely you are to get I -- I think By the way this -- this really TransPerfect Legal Solutions 212-400-8845 - depo@transperfect.com Page 265 1 2 Jacoby the whole thing. 3 Q. Um-hm. 4 A. But that then gives me all the more 5 reason to think that people upon coming -- 6 first you have the iBook by Apple, which was 7 hardware. 8 software application and you have the iBook 9 which is plaintiffs' mark for its books. Now you have the iBook which is a 10 think give that Apple's prior use of iBook 11 for hardware coupled with its use of iBook 12 for an app would make it more likely that 13 I there would be confusion. 14 Q. But isn't it true that if consumers 15 thought of Apple because when it saw the -- 16 the imprint iBooks because of Apple's prior 17 use of iBook or because Apple had a family of 18 marks with "i" something else, those would be 19 not probative of the -- whether the marking 20 issue has led to confusion? 21 A. Which then leads me to think that 22 an "i" something might not be an appropriate 23 control. 24 "i", ilit or whatever, "i", full word, as a 25 control. We were talking before about using Perhaps under those circumstances, TransPerfect Legal Solutions 212-400-8845 - depo@transperfect.com Page 266 1 Jacoby 2 you would need to use something like a 3 generic "ebook" or something else as a 4 control, because the "i" by itself would be 5 sufficient to elicit an Apple response among 6 controls. 7 Q. And did you discuss your -- 8 A. Controls' response. 9 Q. -- testimony with counsel -- 10 11 (Discussion off the record.) Q. Did you discuss your prior 12 testimony on this subject with counsel during 13 the break? 14 A. 15 16 We discussed a lot of my testimony. On this part? Q. Tangentially. And were you advised that your 17 testimony about how ebooks would not be a 18 good control, was harmful to Plaintiffs' 19 case, because Dr. McDonald used "ebooks" as 20 her control? 21 A. Don't know what the -- again, they 22 kept me carefully shielded from what Dr. 23 McDonald has done. 24 25 Q. So you didn't read that portion of Dr. Nowlis's report that you read and TransPerfect Legal Solutions 212-400-8845 - depo@transperfect.com Page 389 1 Jacoby 2 A. Right. 3 Q. Dr. Jacoby, have you ever in the 4 course of this litigation or in the course of 5 any litigation that we've worked on together 6 instructed you to take a position with which 7 you did not agree? 8 A. Never. 9 Q. Has Mr. Raskopf? 10 A. Never. 11 Q. Have I ever in the course of this 12 litigation, as an example, provided you with 13 information for your consideration that you 14 might not have previously thought of? 15 A. Yes. 16 Q. In connection with this case, did 17 you ever study what would have been an 18 appropriate control to use, the selection of 19 a control? 20 A. The question is did I ever do a 21 thorough consideration? 22 of what was (speaking simultaneously) -- 23 Q. 24 study. 25 Yes. Did I do an analysis I apologize for the word That's misleading in this context. Yes. TransPerfect Legal Solutions 212-400-8845 - depo@transperfect.com Page 390 1 Jacoby 2 A. I did not. 3 Q. If you were informed that some 4 people might consider the term ibooks to be a 5 shorthand reference for Internet books, would 6 that in any way affect what you consider to 7 be an appropriate control in this case? 8 A. I think I'd have to think about 9 that some more, but maybe it would require a 10 different kind of control than something with 11 the -- the letter "i" -- lower case "i" 12 beforehand. 13 Q. 14 15 16 What would your opinion be of "iNotes" as a control in this case? A. I think that would get very close to suggesting maybe Apple. 17 Q. How about "iPrinters"? 18 A. It might suggest a product from 19 Apple. 20 Q. How about "iFries"? 21 A. No, I don't think so. 22 Q. Why not? 23 A. It's not in the context of 24 hardware. 25 It has nothing to do with the Internet. TransPerfect Legal Solutions 212-400-8845 - depo@transperfect.com Page 391 1 Jacoby 2 Well, you know, then again, iFries 3 it's a food, an Apple is a food. 4 possibility somebody might make an 5 association, but I think much less likely 6 than -- 7 It's remote What were your examples, iNotes -- 8 Q. IPrinters. 9 A. -- an iPrinters? Right. 10 Q. So would you consider "iFries" to 11 be an appropriate control in this case? 12 13 MS. CENDALI: A. Objection. More so than iNotes or iPrinter, 14 much more so because of its distance. 15 not in the same category of goods. 16 don't know if iFries is a food. 17 It's I -- I Ob the other hand iAppple refers to 18 a fruit, I think the iPear as an example of 19 being a problem. 20 through. 21 with controls is really think them through. 22 Q. But I'd have to think that I haven't. Okay. What you have to do Apart from the issue of 'i" 23 as -- as registering Apple potentially for 24 people, if there was an underlying issue that 25 "i" might register the word Internet for TransPerfect Legal Solutions 212-400-8845 - depo@transperfect.com Page 392 1 Jacoby 2 people, can you think of a control that might 3 be appropriate? 4 5 And we'll go back to your testimony. 6 Is this an example where ebooks 7 might be an appropriate control to weed out 8 the concept of "i" as being shorthand for 9 Internet? 10 11 MS. CENDALI: A. Objection, leading. It might be, and I think, you know, 12 in some ways analogous to what Dr. Jay did 13 with her X control, using some other letter. 14 But, again, I'd want to think that 15 one through. 16 Q. 17 You're not criticizing Dr. Jay for the X books control, are you? 18 A. No, not at all. 19 Q. Have you ever been retained by 20 Kirkland & Ellis? 21 A. Yes. 22 Q. In a litigation? 23 A. I did two -- two things for the New 24 York office. 25 office. I've done stuff for the Chicago One of the things I did for the New TransPerfect Legal Solutions 212-400-8845 - depo@transperfect.com Page 398 1 2 3 4 Jacoby A. I would say it definitely is fiction. Q. And turning to page 35 of the same 5 exhibit, the reproduced page, could you read 6 for me, please, the first sentence? 7 8 9 A. Oh. This book is a work of fiction. Q. 10 Thank you. You weren't asked to comment or 11 evaluate the issue of secondary meaning in 12 this case, were you? 13 A. Correct. 14 Q. Have you ever examined the strength 15 of Plaintiffs' mark? 16 A. No. 17 Q. Have you ever surveyed niche 18 science fiction readers in connection with 19 their recognition of Plaintiffs' mark? 20 A. 21 No. MS. BOGDANOS: 22 questions. 23 I have no further BY MS. CENDALI: 24 25 Q. Dr. Jacoby, did you know that counsel was going to ask you questions at the TransPerfect Legal Solutions 212-400-8845 - depo@transperfect.com Page 399 1 2 Jacoby end of my exam? 3 A. I did. 4 Q. Did she give you a preview of what 5 6 7 8 9 she was going to ask? A. Not really. She said she would have some questions. Q. Did she tell you that she was going to go back and ask you more questions about 10 the control because you gave lots of 11 admissions she didn't like? 12 MS. BOGDANOS: Objection. 13 A. Absolutely not! 14 Q. Let's talk about exhibit or 15 appendix E to your corrected report. That's 16 the one that counsel just asked you about, 17 The Dawn of Amber. Is that right? 18 A. Yes. 19 Q. And that's the books that when I 20 questioned you earlier today, you identified 21 as a hard copy book -- 22 23 MS. BOGDANOS: Q. Objection. -- that you are now saying from 24 counsel's questions you think it might be 25 pages of an electronic book; is that right? TransPerfect Legal Solutions 212-400-8845 - depo@transperfect.com

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