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)

EXHIBITD

Page 1
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IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK

2
3
4

5
6

J.T. COLBY & COMPANY,
INC. d/b/a BRICK TOWER
PRESS; J. BOYLSTON &
COMPANY, PUBLISHERS LLC
and IPICTUREBOOKS
LLC,
Plaintiffs,

vs.

7

8

Case Number
11-CV-40260
( DL C)

APPLE,

INC.
Defendant.

9

10
October 2,

2012

11

12
13
14
15
16
17
18
19
20
21

Videotaped deposition of APPLE,
INC., through HAL E. BORDEN, ESQUIRE, taken
at the offices of Veritext National Court
Reporting Company, 1801 Market Street, Suite
1800, Philadelphia, Pennsylvania 19103,
beginning at 10:15 a.m., before LINDA ROSSI
RIOS, RPR, CCR and Notary Public.

22

23
24
25

VERITEXT NATIONAL COURT REPORTING COMPANY
MID-ATLANTIC REGION
1801 Market Street - Suite 1800
Philadelphia, Pennsylvania
19103

VERITEXT NATIONAL COURT REPORTING COMPANY
888-777-6690 ~ 215-241-1000 ~ 610-434-8588 ~ 302-571-0510

Page 90
1
2

HAL E.

BORDEN,

ESQUIRE

in iBooks.
Q.

3

Before January 27,

2010,

did

4

you have any personal knowledge with respect

5

to the plaintiffs'
A.

6

use of the name iBooks?

Prior to that date,

7

aware of the plaintiffs'

8

I

was not

iBooks.
Q.

9

use of the name

Prior to January 27,

2010,

did

10

you have any personal knowledge or awareness

11

of any predecessors in interest of the

12

plaintiffs using the name iBooks?
A.

13

Prior to that date,

I

was aware

14

of abandoned trademark applications for

15

iBooks and I believe one other mark,

16

ibooksinc.com,

17

I

18

2010,

19

the plaintiffs have succeeded.

20

if I

remember correctly,

that

learned at some point after January 27,
were being claimed as marks to which

Q.

Other than those of abandoned

21

trademark registrations that you recall,

22

there any other source of your knowledge with

23

respect to plaintiffs'

24

in interest's use of the name iBooks?

25

MS.

RAY:

was

or their predecessors

Objection.

Caution on

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2

HAL E.

BORDEN,

ESQUIRE

below or referenced.
Q.

3

So is it fair

to say that your

4

knowledge or awareness of Apple's knowledge

5

or awareness before January 27,

6

the result of seeing an e-mail between Mr.

7

Gundersen and Apple?
A.

8

2010,

is as

It's the result of either

9

seeing such an e-mail or of

seeing a

10

reference to such an e-mail

that would have

11

made

12

communicated.

it clear that

13

Q.

information was

Without revealing the

14

substance,

did you ever have a

15

with Glenn Gundersen concerning plaintiffs'

16

marks?
don't

conversation

17

A.

I

recall.

18

Q.

Without revealing the

19

substance,

did you ever have a

conversation

20

with anyone at Apple before January 27,

21

regarding plaintiffs'

2010,

marks?

22

A.

I

don't believe so.

23

Q.

To the best of your knowledge,

24

did Glenn Gundersen ever communicate verbally

25

with anyone at Apple concerning plaintiffs'
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HAL E.

1

2

A.

I

Q.

And when I

don't

know whether he

did or

not.

5

6

ESQUIRE

marks?

3

4

BORDEN,

understand

I

say

"verbally,"

you

mean

7

A.

Orally.

8

Q.

Yes.

9

when

I

So

if

I

had asked

it

to the best of your knowledge,

as
did

10

Glenn Gundersen ever communicate orally with

11

anyone

at Apple

12

I

A.
that

concerning plaintiffs'
don't

13

of

14

speaking about

15

ancillary online

16

In the

context

referring to.

17

question,

know.

marks?

Q.

prior to January 27th,

the

two applications

information that

and

I've been

Can you describe with any

18

greater

specificity the,

19

ancillary online

20

referred to?

22

is

23

who was

24

involvement

25

that

i t was
a

Q.

information that

The extent to which

A.

21

quote/unquote,

a

you

I

remember

description of Byron Preiss

founder
in the

or had other significant
applicant

in question.

Do you recall what

it

said

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HAL E.

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2

BORDEN,

ESQUIRE

about Byron Preiss?
A.

3

I

believe that

it

indicated

4

that Byron Preiss

had died and his

5

question had gone

into bankruptcy.

6

Q.

Was

7

A.

I

8

Q.

Was

9

A.

I

10

don't
it

a

news

recall
a

don't

article?
the

context.

bankruptcy filing?
believe

it was

a

bankruptcy filing.
Q.

11

When you say

12

information,"

13

through the

14

a

was

A.
i t was

information found

or was

the

it

found

through

best of my recollection,

through the
At

Q.

17

"online

search database?
To

found

this

Internet

professional

15
16

this

company in

that

Internet.

time,

did you have

18

understanding that Byron Preiss and the

19

bankruptcy,

20

online

21

were

22

an

registrations?

those

source,

the

facts

related in that

referred to the

applicants

for

the

believe

same

entity as

so.

23

A.

I

24

Q.

That was

25

had then,

just to

two abandoned

an understanding you

clarify?

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HAL E.

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BORDEN,

ESQUIRE

2

registration work in connection with the

3

iBooks•

mark?

4

A.

I

don•t

5

Q.

What

recall.

elements of Tom La

6

testimony with respect

7

or awareness of plaintiffs•

8

January 27,

2010,
MS.

9

Perle•s

to Apple•s knowledge
marks prior to

are you aware?
RAY:

Objection.

10

can go ahead factually

11

your understanding.

12

THE WITNESS:

But you

13

is

14

Apple was

15

applications

16

well

17

about

18

BY MR.

that Tom La

as

to which we

referred as

online

information

applicants.

Getting

the

21

referred,

22

came

23

information of

25

two abandoned

CHATTORAJ:

20

24

indicated that

the

additional

the

Q.

19

of

of

My understanding

Perle

aware

in terms

into the

abandoned applications
do you know where

from?

A.
applications

What was

the

substance of

to which you have
that knowledge

source of your

the abandoned applications?
The

fact

that

the

existed would have

abandoned
come

to me,

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HAL E.

1

2

did come

3

SAEGIS

ESQUIRE

through the

to me

BORDEN,

results

of a

search.

4

Q.

What

5

A.

I

information specifically?

don't

what

information

6

specifically I

7

typically reveal

8

registration record including the mark,

9

goods

11

the

file

history of

SAEGIS
that

A SAEGIS

13

line by line

14

but

15

filed

16

covered,

Does a

A.

12

A SAEGIS

search will

information about

and services
Q.

10

saw.

recall

the

the
the

owner.

search include

application?

search would

include a

summary of prosecution history,

would not

include all

with the
Q.

of

the

documents

PTO.
At

the

time

that

you

17

communicated to Glenn Gundersen the

18

information you had discovered about

19

abandoned applications,

20

file

history of

had you reviewed the

either of

those

applications?

21

A.

I

22

Q.

Had you reviewed any of

23

documents

24

connection with those

25

A.

that

don't

recall.

have been filed

I

don't

the

at

the

the
PTO in

applications?
recall.

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HAL E.

1

Q.

2

BORDEN,

ESQUIRE

Has there ever been a time

3

between that time and the present that you

4

have reviewed any of the documents contained

5

in the file history of those applications?
MS.

6

RAY:

Objection.

Without

7

revealing any privileged communications,

8

you can go ahead and answer.
THE WITNESS:

9

10
11
12
13

BY MR.

I don't recall.

CHATTORAJ:
Q.

You don't recall whether you

reviewed those documents with counsel?
A.

I believe I

reviewed those

14

documents with counsel in preparation for

15

this deposition.

16

don't recall whether or not I

17

previously.

18

Q.

I

don't recall prior

I

reviewed them

Are there any documents that

19

would reflect whether you reviewed those U.S.

20

PTO filings previously?

21

A.

Not to my knowledge.

22

Q.

So,

for example,

it's

23

impossible that you wrote an e-mail

24

describing to Glenn Gundersen your review of

25

the U.S.

PTO filings.

Right?

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HAL E.

1

BORDEN,

2

MS.

3

privilege grounds,

4

ESQUIRE

factually answer.

BY MR.

but you can

My recollection is

CHATTORAJ:
Q.

8

10

Calls for

that they did.

6

9

Objection.

THE WITNESS:

5

7

RAY:

So with respect to United

States trademarks,
search,

Dechert conducted a full

not a preliminary search.

11

A.

Correct.

12

Q.

Correct?

To the best of your

13

recollection -- withdrawn.

14

A.

15

relatively soon.

16

coming up for you,

17

immediately.

18
19

Q.

If we could take a break
If there's a natural break
it doesn't have to be

Certainly I ' l l ask you one more

question and then we'll go off record.

20

What searches were carried out

21

by Apple or on Apple's behalf in connection

22

with the

23

A.

24

question.

25

Q.

iBooks mark?
I

don't understand the

What databases were searched by

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HAL E.

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BORDEN,

2

Apple or on Apple's behalf

3

the

ESQUIRE
in connection with

iBooks mark?
MS.

4

RAY:

I'll

object

5

caution the witness not

6

privileged communication,

7

factually you can answer.
THE WITNESS:

8

clearance searches

9

I

to

and

reveal
but

recall

encompassed SAEGIS database

11

trademark registrations

12

applications,

13

I

14

databases

15
16

17

BY MR.

that

the

in question

10

don't

any

of

and

Web searches via Google.

recall
were

which,

if

any,

other

searched.

CHATTORAJ:

Q.

Was more

than one

search

carried out on SAEGIS?

18

A.

I

19

Q.

Did you work with Betsy Yen to

20

formulate

21

A.

I

22

Q.

And were

23
24
25

strategies
A.

don't

recall.

search strategies
believe

I

for

this

search?

did.

those

search

implemented and carried out?
I

believe they were.

MR.

CHATTORAJ:

We

can go off

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HAL E.

1

BORDEN,

ESQUIRE

2

(A recess was taken.)

3
4

VIDEOGRAPHER:

5

The time is 1531.

We are back on the video record.

6

MR.

7

CHATTORAJ:

We just went off

8

the record so that Mr.

Borden can

9

consult with his counsel regarding a

10

question of privilege.

11

there was a question pending.

12
13

BY MR.

That was when

CHATTORAJ:
Q.

I

will repeat the question

14

which was as follows:

15

having seen the two abandoned applications

16

and then the death of Byron Preiss and then

17

the bankruptcy of the applicant,

18

believed that no use was being made of the

19

iBooks mark by those entities or other

20

entities that may have acquired their assets?

21

MS.

RAY:

Is it fair to say that

Apple

I ' l l object and just

22

caution the witness on privilege

23

grounds,

24

ahead and answer that question.

25

but I

believe you can go

THE WITNESS:

Based on the

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HAL E.

1

BORDEN,

ESQUIRE

2

existence of the two abandoned

3

applications and the

4

the

5

understanding is that Apple had no

6

knowledge of use of

7

were

8

by the applicant or anyone else at

9

that

10

BY MR.

information about

applicant that you

the

referenced,

the marks

my

that

subject of those applications

time,

at

the

time of

the

search.

CHATTORAJ:

11

Q.

The

12

A.

Correct.

13

Q.

Did you have any direct

search was

employees

in January 2010?

14

with Apple

15

iBooks trademark clearance work?

16

please

in connection with the

A.

Not

18

Q.

So all

that

I

A.

Is

that

right?

All of the communications that

21

I

22

and not by me directly.

23

recall

recall.

communications were

through Glenn Gundersen.

20

And if so,

identify them.

17

19

contact

Q.

being aware of were

through Glenn

Do you know who at Apple Glenn

24

was communicating with concerning the

25

iBooks

trademark clearance work?
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HAL E.

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BORDEN,

ESQUIRE

2

being aware of searches beyond that

3

which were described in the question.

4

BY MR.

CHATTORAJ:
Q.

5

So having discovered that the

6

applicant had gone bankrupt,

7

to see what became of the applicant or its

8

mark after the bankruptcy.

Right?

A.

I don't recall searches of that

Q.

9

10

no one searched

You've used the word

nature.

11
12

"abandoned" several times in connection with

13

the application by Byron Preiss'

14

entity during your testimony today.

15

you mean by that?
A.

16

iBooks
What do

It's literally the status that

17

the trademark office gives to an application

18

that is not prosecuted through to registration.
Q.

19

Does an applicant have to stop

20

using a mark if it abandons its application

21

to the trademark office?

22

MS.

RAY:

Objection.

23

THE WITNESS:

No,

understanding.

24

25

not to my

BY MR.

CHATTORAJ:
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HAL BORDEN - 10/2/2012
STATE OF NEW YORK
SS:

COUNTY OF NEW YORK
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Subscribed and sworn to before me
this

1

~November,

2012.

Hal Borden

2

Whether