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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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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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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2
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
PAGE
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and "1,500"
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competition" to "Trademarks and
Unfair Competition"
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Racketeer"
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"that"
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word "it"
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word "in" in its place
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"sure" and "a"
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