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)
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
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Jacoby
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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.
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I
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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.
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Jacoby
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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
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Jacoby
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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
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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,
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Jacoby
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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
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Jacoby
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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.
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Jacoby
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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.
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Jacoby
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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
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Jacoby
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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
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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
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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?
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