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

Filing 137

DECLARATION of Partha P. Chattoraj in Opposition re: 83 MOTION in Limine to Exclude any Testimony, Argument or Evidence Regarding the Expert Reports and Opinions of Robert T. Scherer.. 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 Part 1, # 4 Exhibit C Part 2, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Exhibit G, # 9 Exhibit H, # 10 Exhibit I, # 11 Exhibit J, # 12 Exhibit K)(Chattoraj, Partha)

EXHIBITB

Page 1

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

-------------------------------------X
JT COLBY AND COMPANY, INC., D/B/A
BRICK TOWER PRESS, J. BOYLESTON AND
COMPANY PUBLISHERS, LLC, AND IPICTURE
BOOKS, LLC,
Plaintiffs,
Index No.
11-CV-4060(DLC)

-againstAPPLE

I

INC.

I

Defendant.

-------------------------------------X

VIDEOTAPED DEPOSITION OF ROBERT SCHERER
New York, New York
November 16, 2012, 9:06 a.m.

Reported By:
Nicole Sesta
Ref: 8577

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1

2
3

Q

Do you have any expertise in the

book publishing industry?
MR. RASKOPF:

4

Note my

5

objection to the form of the

6

question.

7

A

You may answer.

In working for a company like Time

8

Warner we owned two or three publishers, and I

9

was somewhat familiar with the nature of their

10

business.

11

Q

12

Do you consider yourself an expert

in the book publishing industry?

13

A

No.

14

Q

Have you ever worked for a

15

computer hardware or software company?

16

A

No.

17

Q

Do you consider yourself an expert

18

on computer hardware or software?

19

A

No.

20

Q

In your view is your expertise

21

more in the magazine publishing industry than

22

the book publishing industry?

23

MR. RASKOPF:

Note my

24

objection to the form of the

25

question.

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..
~

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relevant.
MR. RASKOPF:

3

Would you

like some water?

4

5

THE WITNESS:

Yes.

6

MR. RASKOPF:

Are you okay

7

because you're clearing your

8

throat?

I want to make sure.

9

THE WITNESS:

10

I'm just waking up.

11
12

Q

I'm good.

Is it fair to say you haven't

cleared a trademark in over seven years?

13

A

That's correct.

14

Q

Is it also fair to say you haven't

15

been involved in a trademark litigation case in

16

over seven years?

17

MR. RASKOPF:

18

the form of the question.

19

20
21
22

A

Objection to

I have been involved with

trademark litigation more recently than that.
Q

When was the last time you were

involved with trademark litigation?

23

A

It would be this suit.

24

Q

Other than this lawsuit have you

25

been involved in trademark litigation in the
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last seven years?

3

A

Yes.

4

Q

What matter?

5

A

It would have been a trademark

6

infringement claim in I believe the Central

7

District of California.
Q

How were you involved in that

10

A

I was asked to be an expert

11

witness.

12

Q

8

9

13

case?

Who asked you to be an expert

witness in that case?

14

A

Tom Morrison of Manatt Phelps.

15

Q

Who was Manatt•s client in that

17

A

Crayola.

18

Q

Who were the other parties to that

19

lawsuit?

20

A

16

21
22
23

case?

A company, to the best of my

recollection, a company called Spin Master.
Q

Did you agree to be an expert

witness in that case?

24

A

I did.

25

Q

Did you prepare a report in that
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case?
never finalized a report, no.

3

A

I

4

Q

Did you prepare a draft report in

5
6

7
8

9

that case?
I

A

began to draft a report but

never completed it.
Why did you never complete that

Q

draft report?

10

A

The case was settled.

11

Q

Were you asked to provide an

12

opinion on various topics in that lawsuit?

13

A

Yes.

14

Q

What topics were you asked to

15

provide an opinion?
don't recall.

16

A

I

17

Q

Did you ever have your deposition

18

taken in that case?

19

A

No.

20

Q

And you never testified in court?

21

A

Correct, never did.

22

Q

Do you still have a copy of your

23

draft report from that case?

24

A

No.

25

Q

What year was that when you were

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1

2

asked to be an expert witness in the Central

3

District of California case?

4

A

I don't recall.

5

Q

Was it within the last five years?

6

A

Yes.

7

Q

Do you recall who the judge was in

8

that case?

9

A

No.

10

Q

Other than the case involving

11

Manatt Phelps and this case here today, have you

12

ever been asked to be an expert witness in a

13

case?

14

A

No.

15

Q

Are those the only two cases where

16

you ever were retained as an expert witness?

17

A

Yes.

18

Q

Have you ever been qualified to

19

testify in court as an expert witness?
MR. RASKOPF:

20

Note my

objection to the form.

21
22

A

What do you mean by qualified?

23

Q

Have you ever been allowed by any

24

court to give an opinion as an expert witness in

25

a case?
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parameters of the use.
Q

Is it your understanding that

4

there is a duty to conduct a full search when

5

clearing a mark?
MR. RASKOPF:

6

Note my

7

objection to the form of the

8

question.

9

I think the case law has made it

A

10

clear that there's no duty to conduct a full

11

search but it is certainly a good practice and

12

evidence of good faith when you conduct an

13

appropriate fulr search.

14
15
16

Can you conduct a full search

Q

without the use of a commercial vendor?
A

I think we touched on that

17

earlier, but I don't think that you can conduct

18

a full -- again, the comprehensive issue, I

19

don't believe that you can conduct an

20

appropriate full comprehensive search hitting

21

all the necessary databases without going to a

22

commercial vendor.

23

24
25

What is the basis for that

Q

statement?
A

I think that they had the means,

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2

of that search, make a determination as to

3

whether there's a potential obstacle in the use

4

of that mark, and if so I advise the client and

5

they make some other arrangements.

6

clear at that point I then go ahead and order a

7

full commercial search report, the timing of

8

that depending upon the needs of the client.

9

If it's

We would receive that

10

electronically.

11

from PTO, state, common law, domain name, all of

12

the information that's in there, and decide

13

whether or not there are any obstacles,

14

potential obstacles for use of the mark.

15

appears to be clear based upon all of that we

16

would most often, we would advise the client

17

accordingly and in many cases file an

18

application to register it in the US.

19

I would review all the results

If it

If there's a potential problem

20

with the mark we will then initiate an

21

investigation starting with looking on the

22

internet in various relevant databases, ordering

23

the file history to see how the mark might have

24

been used, what the status is in the PTO, and if

25

all of that in the opinion of the trademark
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1

2

attorney fails to disclose a confusing similar

3

mark we will again advise the client and proceed

4

accordingly.

5

Q

When Dechert conducted its search

6

of the iBooks mark for Apple, it's your

7

testimony that they found plaintiffs' abandoned

8

applications in the PTO records, correct?

9

10
11

A

Through the SAEGIS search, that's

correct.
Q

After finding the plaintiffs'

12

abandoned applications in the PTO records do you

13

know what Dechert did to investigate those

14

applications?

15

MR. RASKOPF:

16

answered.

17

to the form of the question.

18

A

I'm sorry.

Asked and
Objection

I'm trying to think of the order

19

of things.

I don't recall if they ordered the

20

file histories.

21

may not have.

22

searching on Google and found, for example, that

23

Byron Preiss, who was the founder of iBooks,

24

Inc., they found he had been tragically killed

25

in 2005 and that the company subsequently went

It's my recollection that they
But they went and did some

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2

A

No.

3

Q

Why?
MR. RASKOPF:

4
5

answered.

6

Asked and

You may answer.

7

Objection to the form.

I don•t believe that they did the

A

8

appropriate full search in that they left out a

9

variety of targeted databases.

From what I•ve

10

seen, they cut off the Google search that they

11

did do too early and didn•t review all of the --

12

it•s my understanding didn•t review all of the

13

thousands of hits that were there in iBooks.

14

They didn•t look in databases or

15

web sites targeted to the industry that they

16

were looking to use the mark, publishing, for

17

example, and in that they failed to find the

18

facts surrounding plaintiffs use of the iBooks

19

mark.

20
21
22

What facts surround the plaintiffs

Q

use of the iBooks mark?
The fact that Amazon.com, for

A

23

example, had numerous hits of iBooks, which they

24

would have found had they looked in that

25

database.

I believe Barnes & Noble.com also had

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2

several hits of iBooks, and if Dechert was

3

looking to see whether or not the iBooks mark

4

was continued, was still in use, they failed to

5

look in the appropriate places because it's

6

there.

7

was done was inappropriate.

For that reason I think the search that

8

Q

Anything else?

9

A

I'm sure there is but I can't

10
11

think of it right now.
What databases do you believe

Q

12

Dechert should have searched and didn't in

13

connection with the iBooks trademark?

14

MR. RASKOPF:

15

the form of the question.
Well, you

16

Q

17

in your answer.

18

Objection to

some databases

referring to?

19

me~tioned

What databases were you

Again, if I could look at my

A

20

report I could give you a more extensive list of

21

the databases.

22

they're one of the largest, if not the largest,

23

booksellers in the country.

24

Barnes & Noble.com.

25

references.

I mentioned Amazon.com because

Another one is

They also would have found

So those are two that come to mind.

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There are other smaller targeted web sites that

3

they could have looked at.
Q

5

Without my report I couldn't tell

sites?

6

7

What other smaller targeted web

A

4

you.

It's in the report.
MR. RASKOPF:

8

Let the

9

record reflect that the witness

10

has submitted a full report in

11

this case but he's not testifying

12

with it in front of him.

13

In your view Dechert should have

Q

14

looked at Amazon.com, Barnes & Noble, and these

15

other smaller targeted web sites, correct?

16

Since they were searching a mark

A

17

iBooks that was going to be used in connection

18

with E-readers and downloadable electronic

19

books, yes, they should have targeted their

20

search to some publishing web sites.

21

What is the basis for your

Q

22

statement that Dechert did not look at

23

Amazon.com?

24
25

A

I have seen no evidence in the

materials that I reviewed that they looked at
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it.

3

Q

What materials did you review?

4

A

The materials that were provided,

5

I assume, in response to document requests of

6

search results and investigation results.
Q

7

So in all the materials that were

8

provided to you you didn't see any printouts of

9

Amazon.com, correct?

10

A

That's correct.

11

Q

What is the basis of your

12

statement that Dechert didn't review Barnes &

13

Noble.com?

14

A

As with Amazon.com I did not find

15

any materials showing that that search had been

16

done.

17

Q

What is the basis of your

18

statement that Dechert didn't look at smaller

19

targeted web sites?

20

A

The same reason.

I haven't seen

21

any reports showing that they did and the only

22

web site

23

SAEGIS are the Google searches.

24
25

Q

material~

that I've seen in addition to

Do you know whether Dechert looked

at any web sites in connection with its search

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for iBooks but didn't print them out?
One thing I want to clarify, I

A

4

believe that it's not an answer to that question

5

but it's relevant, in reviewing the Google

6

searches there were some printouts of pages that

7

had turned up in the Google search unrelated to

8

our client.

9

So they would have gone to those, they would

There were other third party marks.

10

have clicked on the reference in Google and gone

11

to that other web site and found that, but those

12

are very specific instances.

13

the question again?

14

Q

Having gone there,

My question is do you know whether

15

Dechert printed out every web site it looked at

16

when conducting its trademark search?

17

MR. RASKOPF:

18

the form of the question.

19

A

Objection to

I don't know the answer to that.
If that was

20

I just know what I've seen.

21

pursuant to a document request I assume

22

everything was produced.

I
11

23

24
25

Q

Well when you conduct trademark

searches do you go visit web sites?
MR. RASKOPF:

Objection to

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the form of the question.
A

3

4

appearing web site I would go look at it.
Q

Why would you go look at the web

A

5

6

Yes, if it was a relevant

I would want to see how the mark

site?

7

8

that appeared that caused me to go to that web

9

site was being used.

10
11

When you were clearing trademarks

Q

did you print every web site that you visited?

12

MR. RASKOPF:

Objection to

the form.

13

14

A

Yes, I did.

15

Q

So every time you cleared a mark

16

you printed every web site that you visited and

17

put it in the file?

18

Yes.

A

I wanted there to be

19

evidence that I had gone and looked at that web

20

site.

21

We had a very big file room.
When you were clearing trademarks

Q

22

for Time did you ever clear any marks for use on

23

magazines?

24

A

Yes.

25

Q

What marks?

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The major -- I mean there were

A

3

hundreds, if not thousands over the years.

4

the major ones that we know of are In Style,

5

Entertainment Weekly, Real Simple.

6

some of the major ones.

7

But

Those are

Did you clear the trademark In

Q

8

Style for use?

9

A

Yes.

10

Q

Did you conduct a full search for

11

In Style?

12

A

Yes.

13

Q

Did you go look at web sites for

14
15
16
17

18

In Style?
Yes, to the best of my

A

recollection.
Q

To the best of your recollection

what web sites did you --

19

A

I don't know.

20

Q

Did you look at any databases?

21

A

Yes.

22

Q

What databases?

23

A

I don't know.

24

Q

If you were clearing the mark In

25

Style today for a magazine what databases would
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you look at?

3

4

After the full search was done,

A

after I had received the full search results?

5

Q

Yes.

6

A

I would look to the databases

7

involving any marks or trade names that showed

8

up in a search report.

9

each one of those, if I could, if they had a web

I would try to visit

10

site.

I may, if I felt it necessary, do my own

11

additional searching in an Amazon.com or Barnes

12

& Noble, I'm talking magazines, appropriate

13

magazine databases.

14

or I might go to a Shed or Advanced Publications

15

and see if something turned up.

I might go to a Conde Nast

16

Q

Anything else?

17

A

I'm sure there were other

18

databases and web sites that I look at if it was

19

called for.

20

Q

So I believe you said you would go
••••

21
22
23

to magazine databases; is that correct?
A

Magazine publishing
MR. RASKOPF:

Excuse me.

24

Objection to the form of the

25

question.

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those companies that wrote those pamphlets?

3

A

No.

4

Q

Were they outside law firms?

5

A

Most of them were corporations.

6

Q

Do you know whether other

7

trademark lawyers conduct full searches without

8

using third-party vendors?

9

I understand some firms are

A

10

beginning to do that but I would question the

11

efficacy of that practice.

12

Q

Why?

13

A

Because I think as in this case it

14

misses some potential references or information.

15

Q

How do you know that?

16

A

From this case I know that Dechert

17

did not, because of its limited efforts, did not

18

locate current uses of the iBooks mark by

19

plaintiffs which were clearly on the internet.

20

But it's your understanding that

Q

21

some law firms are now doing their own full

22

searches?

23

A

I don't have any information but

24

in reading some of the materials that's what

25

I've been told.
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•

2

'·

3

becoming more common now for companies and law

4

firms to conduct their own searches as opposed

5

to using commercial vendors, correct?

'

Q

It's your understanding that it's

MR. RASKOPF:

6

Note my

7

objection to the form of the

8

question.

9

A

10

common.

11

I don't know if it's becoming more

do that.

12
13

I just know some firms are beginning to

Q

To your knowledge what firms are

beginning to conduct their full searches?
MR. RASKOPF:

14

Asked and

answered.

15
16

Q

Without using a commercial vendor?

17

A

Dechert.

18

Q

Any other law firms?

19

A

Not that I know of.

20

Q

In your numerous years as a

21

trademark lawyer were you aware of particular

22

trademark lawyers who had great reputations for

23

conducting trademark searches?

24
25

MR. RASKOPF:

Objection to

the form.
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2

Q

Why not?

3

A

Why didn't they acquire them?

4

Q

Why do you believe they didn't

5

acquire the assets necessary to make the

6

assignment valid?

7

A

I haven't seen any documents or

8

any material that indicate that anything other

9

than the trademark itself and a couple of domain

10

names, which I'll clarify in a moment, were

11

transferred by Family Systems to Apple.

12

we're talking about that, I want to clarify a

13

point that I made in my report.

14

in one paragraph I made the statement that Apple

15

did not acquire any of the foreign registrations

16

that were owned by Family Systems, nor did they

17

acquire the domain names that had been owned by

18

Family Systems.

19

While

In the report

The reason for that is those

20

assets were referenced in a six, seven, eight

21

page assignment agreement, which I'll call the

22

main agreement.

23

early on I completely lost focus and began to

24

look at the US assignment, which was a one-page

25

document dated January 29, 2010, which was

While I had seen that agreement

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2

subsequently recorded in the PTO assignment

3

branch.

4

names also were mentioned, that main assignment

5

agreement.

They weren't mention in the one page

6

US filing.

That's why there was a discrepancy

7

or inconsistency with what happened.

8

aware that the domain names and the two foreign

9

registrations were transferred to Apple.

10

So I want to clarify.

And the domain

I'm now

So now that you know that you had

Q

11

those two facts wrong when you submitted your

12

report does that change your opinion in any way?

13

14
15

It does not change my opinion in

A

any way, no.
Q

But in your report when you said

16

that Apple did not acquire any foreign

17

registrations you were wrong on that, correct?

18

MR. RASKOPF:

19

the form of the question.

20

A

Objection to

As I just stated, I didn't focus

21

on that when I wrote the report.

22

subsequently been reminded that it's in the main

23

assignment document.

24
25

Q

I've

So it's your testimony that Apple

did in fact acquire at least two foreign
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application?

3
4

I may have

prepared a design patent in the past.

5
6

Not a utility patent.

A

How many design patents have you

Q

designed in your entire career?

7

A

If any, one or two.

8

Q

Have you ever litigated a utility

10

A

No.

11

Q

Do you own any utility patents?

12

A

No.

13

Q

Do you own any design patents?

14

A

No.

15

Q

Have you ever been trained as a

16

patent attorney?

17

A

No.

18

Q

Do you feel like you're an expert

9

patent?

19

on patent law?

20

A

No.

21

Q

Do you feel like you're an expert

22
23
24
25

on copyright law?
I'm conversant in copyrights but

A

not an expert, no.
What is your field of expertise?

Q
m"

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2

meaning based upon substantially exclusive and

3

continuous use for five years.

4

and look at the date when it was first adopted,

5

which I think was 1999, it would be in the range

6

of 2004, 2005 when I would say would have

7

acquired secondary meaning.

8

9
10

Q

Are you offering an opinion in

this case that plaintiffs' iBooks mark acquired
secondary meaning?

11

MR. RASKOPF:

12
13

If you go back

Objection to

the form.
A

We've gone back to where we were.

14

I'm saying that if it was required, if the mark

15

had been found to be merely descriptive, I

16

believe that based upon five years of

17

substantially exclusive continuous use of the

18

mark that it has acquired secondary meaning.

19

you look at the response filed in the iBooks,

20

Inc., iBooks application I think it was dated

21

2002 when the response was filed.

22

If

In that response it refers to the

23

fact that the mark had been used since 1999,

24

although a declaration of use hadn't been filed

25

but reference was made.

It talked about in a

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period of two-and-a-half to three years that

3

there had been more than $5 million worth of

4

iBooks branded books sold and over a quarter

5

million dollars of advertising and promotional

6

expenditures which for a niche publisher like

7

iBooks, Inc. I think that's a substantial use in

8

a relatively short period of time.

9

Q

The fourth expert opinion you

10

mentioned earlier in your testimony was the

11

assignment of the mark and registration from

12

Family Systems to Apple.

13

that's an assignment in gross and, therefore,

14

invalid, correct?

You believe that

15

A

Correct.

16

Q

We've already covered that in your

17

earlier testimony, correct?

18

A

Correct.

19

Q

Other than what you've already

20

testified about today, are you aware of any

21

other basis on why the assignment of the mark

22

from Family Systems to Apple was an invalid

23

assignment?

24
25

A

I can go back and kind of provide

a little more clarity in terms of what I said in

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elements and I would say since none of them went

3

to Apple with the trademark, that there was no

4

transfer of goodwill because Apple was not in a

5

position to continue to conduct the business in

6

substantially the same manner as Family Systems

7

had done it.

8

9

Q

So it's your testimony that of all

the tangible assets that could have been

10

transferred the patent is the most important

11

tangible asset?

12

MR. RASKOPF:

Objection to

13

the characterization of the

14

witness' prior testimony.

15

A

I would say it's one of the most

16

important because it covered the entirety of the

17

Family Systems computer software product

18

identified by the iBooks mark.

19

receive that patent in an assignment Apple

20

couldn't use the mark on the same goods and

21

services in which it had used before because it

22

would be infringing that patent.

23

patent is terribly important in terms of what

24

needed to be transferred, but it's one of

25

several indicia of goodwill.

If Apple did not

I think the

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1

2
3

4
5

I don't know if it is.

A

I refer to

it as an app, whatever that might be.
Q

What is the difference between an

app and computer software?

6

A

I don't know.

7

Q

If you don't know what the iBooks

8

application is how can you say that it's not

9

similar to Family Systems computer software?

10

A

I've used it.

I'm talking about

11

from a consumer standpoint.

12

iBooks system or product on my iPhone.

13

consumer, as well as a trademark lawyer, I'm

14

familiar with the way the market is being used.

15
16
17

Q

I've used the Apple
As a

In your opinion what is the

difference between software and an application?
A

I answered that I don't know.

I

18

would assume if an application is software they

19

would call it software.

20

Q

Well, you have an iPhone, correct?

21

A

I

22

Q

Isn't it true that Apple's iBooks

23
24
25

do.

app creates an electronic book on the iPhone?
MR. RASKOPF:

Objection to

the form.
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If I press the appropriate buttons

A

3

and pay the appropriate fee, yes, an electronic

4

book will show up on my iPhone.

5

happens or why that happens, I don't know.
Q

6

How that

So when Apple's iBooks software

7

creates that E-book you're able to flip through

8

pages?

9

A

Yes.

10

Q

Have you ever read Apple's iBooks

11

terms of service?

12

That's like do you ever beat your

A

13

wife.

14

haven't.

15
16
17

You have to be careful with that.

No, I

Have you ever read Family Systems

Q

software terms of use?
I read materials that describe how

A

18

it's used in some of the various components, but

19

I have not read their terms of service.

20

Do you know whether the terms of

Q

21

use for Apple's iBooks app refers to it as

22

software?

23

A

I do not know.

24

Q

Do you know whether Apple's iBooks

25

app is a software program available for
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contend that Apple purchased Family Systems'

3

mark to gain priority over plaintiffs' marks?

4

MR. RASKOPF:

5

Objection to

the form.

6

A

Yes, two reasons, I think.

One,

7

the primary reason, yes, to get priority over

8

plaintiffs' mark and two, to deal with the

9

consent agreement from 1999.

10

It had reached

some accommodation with Family Systems.

-

11

Q

Let's talk about the second thing

12

you mentioned, the consent agreement with Family

13

Systems.

14

purchase the mark from Family Systems under that

15

consent agreement?
A

16

Why do you believe Apple had to

They did not have to purchase it

17

but there were going to have to be discussions

18

between Apple and Family Systems because that

19

consent agreement limited Apple's ability to

20

expand the use or adopt a new use of the iBooks

21

mark beyond computer hardware.

Q

22

If Apple wanted to use the iBooks

23

mark for computer software it would be in breach

24

of that consent agreement, correct?
A

25
~""

'

That's correct.

r:;,

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Q

2

•

So isn't it true that Apple had to

3

purchase the rights from Family Systems in order

4

to be able to use the mark iBooks for computer

5

software?
MR. RASKOPF:

6

the form.

7
A

8
9

Objection to

mark.

They didn't have to purchase the

They just had to reach the new agreement

10

or amend the agreement with Family Systems.

11

believe given the timing of the situation, the

12

timing of the purchase, that the primary reason

13

was to acquire priority over plaintiffs use of

14

iBooks, and at the same time they were able to

15

deal with the consent agreement issue from 2000

16

or 1999, whatever it was.

17

Q

I

So is it your contention that

18

Apple already had received a notice from the

19

plaintiffs when it acquired the rights from

20

Family Systems?
MR. RASKOPF:

21

the form.

22
23

Objection to

A

I'm thinking dates here.

It's my

24

understanding that Apple was aware of

25

plaintiffs' rights in the iBooks mark at about

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Q

Were you aware that Byron Preiss

3

visual publications launched a new imprint that

4

focused on books with content appropriate for

5

marketing on the internet?

6

MR. RASKOPF:

Objection to

7

the form of the question.

8

Q

Did you ever hear that before?

9

A

I believe I've heard that before.

10

Q

Did you ever read any marketing

11

materials in connection with your work in this

12

case that said that Byron Preiss launched a new

13

imprint under the name iBooks for the purpose of

14

marketing books on the internet?

15

MR. RASKOPF:

16

the form of the question.

17

A

Objection to

That statement sounds familiar.

18

It may be in my report, I'm not sure, but I

19

believe I've heard that before, yes.

20
21

Q

Have you read the most recent

version of the TMEP?

22

A

No.

23

Q

Do you know whether the TMEP has a

24
25

section in it related to I descriptive marks?
A

I am now.
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Prior to this case were you aware

2

Q

3

of that?

4

A

No.

5

Q

When you worked at the trademark

6

office you never reviewed any applications

7

because of the time that you worked there

8

involving I descriptive marks, correct?
MR. RASKOPF:

9

10

Objection to

the form.

11

I can't -- I could stand for a lot

A

12

of things.

13

I may have.

14
15

Q

I can't answer that.

I don't know.

Have you ever worked on any

trademark applications for I descriptive marks?
MR. RASKOPF:

16

Objection to

the form.

17

18

A

Not that I can recall.

19

Q

Have you ever prosecuted a

20

trademark application involving an I descriptive

21

mark?
MR. RASKOPF:

22

Objection to

the form.

23

24

A

Not that I recall.

25

Q

Prior to your work in this case

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were you aware that the TMEP had a section

3

relating to I descriptive marks?
MR. RASKOPF:

4

answered.

5

Asked and

You may answer.

6

A

No.

7

Q

Prior to serving your report in

8

this case, which has been marked as Exhibit 5,

9

were you aware that the TMEP had a section in it

10

relating to I descriptive marks?
MR. RASKOPF:

11

12

the form.

Objection to

You may answer.

13

A

No.

14

Q

You learned about that TMEP

15

section relating to I descriptive marks after

16

you served your report in this case, which has

17

been marked as Exhibit 5, correct?

18

A

That's correct.

As I recall, that

19

language in the TMEP from what I've read in the

20

deposition transcripts simply says that in the

21

first instance the examiner is supposed to

22

refuse registration on the grounds of mere

23

descriptiveness.

24

it so.

25

overcome that refusal where the examiner, after

That doesn't necessarily make

Quite often subsequent submissions will
li

h

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having made the initial refusal, has a change of

3

mind or a change of heart.

4

Q

Never having worked on an I

5

descriptive trademark application or

6

registration prior to this case, is it fair to

7

say you're not an expert on I descriptive marks?

8

MR. RASKOPF:

9

the form of the question.

10

A

Objection to

I don't know anyone who would be

11

an expert except Apple on I descriptive marks.

12

That's a strange profession or expertise.

13

14
15
16
17

Q

Do you consider yourself an expert

on I formative marks?
A

I'm conversant on I formative

marks but I would not consider myself an expert.
Q

That's because you never

18

prosecuted any I formative trademark

19

applications, correct?

20

A

That's correct, but I have

21

prosecuted numerous applications where the marks

22

were deemed to be merely descriptive.

23

have experience in the types of responses and

24

submissions that are necessary to overcome those

25

initial refusals.

So I do

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connection with the plaintiff and its

3

predecessor's sales of products under the mark?

4

A

That's correct.

5

Q

The only thing you've reviewed in

6

connection with the sales or advertising of

7

plaintiff and its predecessor's products under

8

the iBooks mark is the response to office action

9

filed by their attorney to the trademark office,

10

correct?

11

MR. RASKOPF:

Objection to

12

the characterization of the

13

witness' prior testimony.

14

answer.

15

A

You can

Since submitting my report and

16

reading the information that we talked about in

17

terms of sales from 1999 to 2002, I believe,

18

which were substantial, I have looked at the

19

deposition transcripts of Mr. Frieze and Mr.

20

Shatskin and gained a better understanding of

21

the niche publishing business, and have gained a

22

new appreciate for the volumes of sales that

23

iBooks has had under that brand.

24
25

Q

So the basis of your knowledge

regarding the sales of plaintiff and its

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purchased the iBooks mark or the iBook mark from

3

Family Systems, and pretty much simultaneously

4

with when the assignment document had been

5

finalized they had notice of plaintiffs' claim.
Q

6

That's because plaintiffs' claim

7

came in right after Apple had completed the

8

purchase of that trademark, correct?
MR. RASKOPF:

9

Objection to

10

the characterization of the

11

witness' testimony.

12

A

Going back in terms of timing,

13

going back and reconsidering the trademark and

14

domain name assignment agreement, while I

15

earlier said that page one, which is all I had

16

looked at before, it says that the effective

17

date has January 26, 2010.

18

the signature page there are no dates there on

19

the signature page.

20

signed.

21

Yet when I look at

So I don't know when it was

And when I look at some of the

22

attachments which were signed and returned, they

23

were returned on February 4, 2010 to Thomas

24

LaPerle at Apple.

25

this document, this assignment document was

So I don't know exactly when

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actually signed and completed.
Q

So you don't know whether that

4

assignment agreement was actually signed and

5

completed before Apple received the claim from

6

the plaintiffs, correct?

7

A

That's correct, it's not clear.

8

Q

You don't know one way or another,

9

correct?

10

A

From the dates here it looks as

11

though they received some of the signed

12

documents with a letter dated February 4, 2010,

13

and I know that the letter e-mail from John

14

Colby was received on January 29th.

15

Q

Isn't it true that one of the

16

reasons Apple acquired the Family Systems

17

trademark was because of the consent agreement

18

that prohibited Apple from going into software

19

under that mark?

20

A

Again, it didn't require them to

21

purchase the mark.

All they had to do was amend

22

the earlier consent agreement.

23

buy it because of that consent agreement.

24

didn't have to.

25

Q

So they didn't
They

Let's go off the record for a
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bad faith?
MR. VISCOUNTY:

3

4

Yes, I would.

A

Objection.

I think it's a

5

disregard of the trademark rights of others

6

including in this case John Colby.

7

Q

8

opinion?

Do you intend to offer that

MR. VISCOUNTY:

9

Objection.

10

A

Yes.

11

Q

I have nothing further.

12

EXAMINATION BY

13

MR. VISCOUNTY:

14
15

Q

What is the basis for your opinion

that Apple acted in bad faith?
MR. RASKOPF:

16

and answered ad nauseam.

17

18

Already asked

A

It depends where we're starting in

19

terms of my answering that question, but I will

20

start with where we are right now in the record.

21

They received -- they knew about our abandoned

22

applications way back in January, January 12th,

23

I believe, 2010.

24

of searching through Dechert, which wasn't

25

necessarily targeted or appropriate.

They allegedly did all sorts

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Then they received a letter on

3

January 29, 2010 informing them of a claim of

4

rights by John Colby.

5

eight weeks before the actual launch of the

6

product, and they did nothing, even though they

7

had another mark potentially in their hip

8

pocket, they did nothing to try to work out

9

something with Colby or to change the name of

They still had seven or

10

the product.

11

early April of 2010, which I find irresponsible.

12

Q

They went ahead and launched it in

Isn't it true you don't mention

13

your bad faith opinion in either of your expert

14

reports in this case?

15

MR. RASKOPF:

Objection to

16

the characterization of the

17

witness' report.

18
19
20

There are several places in there

A

where I discuss bad faith.

It's there.

Why don't you show me in what

Q

21

parts of your report do you render this opinion

22

of bad faith?

23

A

I looked at this bad faith as kind

24

of a corporate culture in respect to trademarks.

25

At the end of section five I mentioned this
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failure to follow the customary steps including

3

the iBooks mark was a glaring omission, and

4

evidences a total disregard for the trademark

5

rights of others.

6

Q

Anything else?

7

A

I'm going to find it.
MR. RASKOPF:

8

the report speaks for itself.

9

10
11

I want to say
Go

ahead.
A

I think it's clear from my claim

12

of fraud on the Patent and Trademark Office that

13

that is an act of bad faith.

14

Q

Anything else?

15

A

I'm going to get there.

At the

16

end of section 15 I mention that Apple's pattern

17

of adopting new trademarks and after the fact

18

repeatedly encountering conflicting claims can

19

only be the result of either shoddy clearance

20

procedures, corporate arrogance, or a blatant

21

disregard for the trademark rights of others.

22

Q

Anything else?

23

A

I think looking at it quickly

24
25

those three may be it.
Q

Do you mention this opinion of bad
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faith in section 16 of your report on pages 44

3

and 45?
MR. RASKOPF:

4

Did you say on page?

5

MR. VISCOUNTY:

6

8

10

44 and 45,

yes, section 16.

7

9

Objection.

A

In page -- in opinion or section

16, opinions and number one, I stated that Apple
disregarded the trademark rights of others.

11

Q

Anything else?

12

A

In section eight I don't use those

13

words but I specifically refer to the Colby

14

letter having been sent to Apple informing him

15

of plaintiffs' prior rights in the mark, and

16

it's clear from the facts of the case that

17

despite that they went ahead and used the mark.
Q

18
19
20

I have nothing further.

Thank

you.
THE VIDEOGRAPHER:

The time

21

is 5:41 p.m. on November 16, 2012.

22

This completes the videotaped

23

deposition of Mr. Robert Scherer.

24

(Time noted:

5:41p.m.)

25
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ERRATA SHEET
J.T. Colby & Co., Inc., et al. v. Apple, Inc.
Deposition of Robert Scherer, November 16, 2012

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Mistranscription by court reporter.
Mistranscription by court reporter.
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