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)

EXHIBITE

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

3
4

5

6
7

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

8

9

Case Number
11-CV-40260
(DLC)

APPLE,

INC.
Defendant.
I

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11

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October 3, 2 012
HIGHLY CONFIDENTIAL

Videotaped deposition of GLENN
GUNDERSEN, ESQUIRE, taken at the offices of
Veritext National Court Reporting Company,
1801 Market Street, Suite 1800, Philadelphia,
Pennsylvania 19103, beginning at 9:24a.m.,
before LINDA ROSSI RIOS, RPR, CCR and Notary
Public.

22

23
24
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VERITEXT NATIONAL COURT REPORTING COMPANY
MID-ATLANTIC REGION
1801 Market Street - Suite 1800
Philadelphia, Pennsylvania
19103
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Page 120
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GLENN GUNDERSEN,

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we're describing.

3

Q.

ESQUIRE - HIGHLY CONFIDENTIAL

In the case of your trademark

4

clearance work on the iBooks potential mark,

5

did Dechert's opinion concerning that

6

clearance work constitute a

7

e-mails?

series of

8

A.

Yes.

9

Q.

Did it also include telephone

10

conversations?

11

A.

Yes.

12

Q.

When was

-- withdrawn.

What was the date of the last

13

14

e-mail in the series of e-mails that

15

constituted Dechert's opinion concerning the

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iBooks potential mark?

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18
19

A.

There was probably an e-mail

sometime in February.
Q.

So the final e-mail in a

series

20

of e-mails constituting Dechert's opinion

21

concerning the iBooks trademark clearance

22

work took place after the announcement of the

23

availability --

24

MS.

CENDALI:

25

You know,

I'm

ready to object.
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Page 292
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GLENN GUNDERSEN,

2

at the point that were on amazon.com?

ESQUIRE -

HIGHLY CONFIDENTIAL

3

Q.

4

this deposition.

5

they were there,

6

What's relevant is whether you searched there

7

and you don't know.

8

9

A.

My testimony is not relevant to
I ' l l represent to you that
but that's irrelevant.

Right?

Amazon.com and other retail Web

sites have a number of issues in searching.

10

There are a great deal of -- there's a great

11

deal of merchandise that shows up on Amazon

12

and other places that is the online

13

equivalent of a card table at a flea market.

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Old stock,

15

that somebody has that they've put for sale

16

on the Internet.

17

that we might look at from time to time,

18

it is not strongly indicative that a mark is

19

actually in current use as a

20

Q.

overstock,

leftover merchandise

And Amazon is something

I'm going to --

but

search tool.
I

very much

21

appreciate your enthusiasm for the subject

22

matter and the extent of your expertise.

23

That being said,

24

questions because my time grows short and I'm

25

trying my best to ask you very focused

I

need you to focus on my

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Page 293
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GLENN GUNDERSEN,

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ESQUIRE - HIGHLY CONFIDENTIAL

questions.
Is it true that to the best of

3

4

your knowledge,

5

or anyone acting on Apple's behalf searched

6

amazon.com in the course of the iBooks

7

trademark clearance search?

8

9

you don't know whether Apple

At this point,

A.

years later,

I

more than two

don't know if we searched

10

Amazon as part of this clearance project.

11

look at Amazon and other retail sites

12

frequently,

13

reservations about what we find on there

14

because most of what we find is not

15

representative of current use in commerce.

16

17

We

but we have doubts and

So it is your testimony that

Q.

you look at amazon.com sites frequently?

18

MS.

CENDALI:

19

THE WITNESS:

Objection.
No,

It depends on --

I

said retail

I ' l l clarify,

20

sites.

21

you don't have to read that.

22

look at retail sites.

23

Amazon to be a retail site.

24

are

25

tools because they contain vast

I

We do

consider
But they

-- have shortcomings as search

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.,

;

Page 294
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GLENN GUNDERSEN,

ESQUIRE - HIGHLY CONFIDENTIAL

2

amounts of merchandise that does not

3

represent current use in the

4

marketplace.

5

find evidence of current use in

6

commerce.

7

BY MR.

9
10

CHATTORAJ:
Is it your position that retail

Q.

8

So we are looking to

sites do not provide evidence of current use
in commerce?

11

A.

I

didn't say that.

12

Q.

I'm asking you the question.

13

A.

Retail sites can sometimes

14

provide evidence of use in commerce,

15

generate a

16

to as false positives.

17

listed there,

18

products that are not actually representing

19

current use of the trademark in commerce and

20

products that often when you attempt to

21

purchase them,

22

so they're
Q.

23

large number of what I

but they

would refer

Products that may be

products that may be overstock,

turn out not to be available,

I

move to strike all of the

24

testimony subsequent to the first

25

Mr.

Gundersen's answer.

I

sentence of

apologize,

but

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GLENN GUNDERSEN,

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days.

ESQUIRE

-

HIGHLY CONFIDENTIAL

Right?

3

A.

Yes.

4

Q.

I ' l l represent

to you that this

5

document was obtained from the New York State

6

Department of State,

7

Corporations,

8

certificate of assumed name that was filed.

9

Was

10

and it constitutes a

this document

Apple's

and those

11

Division of

identified in the course of
--withdrawn.

Was this document

identified in

12

the

course of the trademark clearance search

13

for

the

iBooks mark?

14

A.

I

don't believe

15

Q.

Were assumed name registries

16

searched in the course of

17

clearance search for the
A.

18

it was.

the trademark
iBooks mark?

If assumed names were part of

19

the a

state trademark registration database,

20

they would have been included.

21

registries are not

22

searched.

23

Q.

--

Assumed name

were not separately

Are assumed name registrations

24

a

part of New York State's

25

trademark

registration files?
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Page 330
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GLENN GUNDERSEN,

2

A.

3

I

ESQUIRE - HIGHLY CONFIDENTIAL
can't tell you specifically

which ones we would have searched.
Were any other databases

4

Q.

5

searched?

6

A.

Yes.

7

Q.

But you don't know which ones?

8

A.

There would be ample

9
10

information of what was searched and found in
the advice to the client.
Q.

11

12

your communication with the client?
A.

13

14

What searches were reflected in

That information is

in the

opinions to the client.
MS.

15

CENDALI:

Okay.

Instruct

16

you not to answer about privilege

17

communications with the client.
MR.

18

CHATTORAJ:

Because Apple is

19

not relying on advice of counsel

20

defense.
MS.

21
22
23

BY MR.

Right?
CENDALI:

Correct.

CHATTORAJ:
Q.

Let's just make a

record.

24

Please describe to me the search query

25

results that were contained in your
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Page 334
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GLENN GUNDERSEN,

2

admissibility of Gundersen Exhibit 9 are

3

preserved,

4

on my representation that this is a photocopy

5

of the book.

but I ' l l

MS.
BY MR.

just ask questions based

Is that acceptable?

6

7

ESQUIRE - HIGHLY CONFIDENTIAL

CENDALI:

Okay.

CHATTORAJ:
Q.

Was this book published in

10

A.

I

11

Q.

Did you update the contents of

8

9

12

2000?

the book at any time after 2000?

13
14

believe it was.

The book is a bound book.

A.

There is no third edition of the book.
Q.

15

So the answer is there is no

16

published updates of this book although

17

you've written other articles yourself?

18

A.

There are no published updates

19

of this book.

20

edition,

21

different.

22

Q.

If there were to be a

third

the technology would likely be
We've had discussions about that.
Please turn to page 111 of your

This page appears in the chapter

23

book.

24

entitled:

25

In this paragraph number 2 which appears at

"Evaluating the Search Report."

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Page 335
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GLENN GUNDERSEN,

2

the top of page 111,

3

read:

4

statutes does not

5

rights,

6

source of common law marks.

7

only certain states'

8

registrations are

9

registration databases.

11

ESQUIRE

-

HIGHLY CONFIDENTIAL

the last

two sentences

Compliance with fictitious

but

10

name

convey any substantive

fictitious names are a useful
Unfortunately,

fictitious

names

included in state

Did I

11

read that

ac·curately?

11

A.

You did read that accurately.

12

Q.

I

13

sentences

14

in the year 2000.

take

it that those two

reflected your views
Is that

of this

issue

right?

15

A.

They did.

16

Q.

Has your view changed since

17

that time?
A.

18

Well,

I

think I

19

fictitious

20

common law marks because of

21

filing,

22

not evidence that a mark is actually being

23

used in commerce.

24

25

as

Q.

names are a useful

would not say
source of

fictitious name

I've said before,

Were fictitious

evidence of a use of commerce

does not

is

name filings
in 2000?

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Page 336
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GLENN GUNDERSEN,

2

A.

No.

3

Q.

Why did your view change?

4

A.

My view here is probably not

5

ESQUIRE - HIGHLY CONFIDENTIAL

fully stated as I
Q.

6

stated it now.

So now you think that the

7

sentence "compliance with fictitious name

8

statutes does not convey any substantive

9

rights,

but fictitious names are a useful

10

source of common law marks"

11

Correct?

12

MS.

13

THE WITNESS:

14

i t ' s false.

15

CENDALI:

is false.

Objection.
No,

I'm not saying

incomplete.

16

BY MR.

CHATTORAJ:
Q.

17

I'm saying i t ' s

You testified previously that

18

you think you would not say fictitious names

19

are useful sources of common-law marks.

20

Right?

21

A.

If I

were to rephrase this,

22

would say fictitious

--

I

23

they are a useful

24

to the extent that that sentence may imply

25

that the existence of a fictitious name

I

would not say that

source of common-law marks

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Page 337
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GLENN GUNDERSEN,

2

filing creates common-law rights.

3

Q.

ESQUIRE

-

Understood.

HIGHLY CONFIDENTIAL

However,

is it

4

your view that fictitious name databases or

5

registrations are useful in conducting a

6

search for common-law marks?
A.

7

Well,

the context here is to

8

say that if you are searching in some states,

9

you may be getting fictitious name

10

registrations.

11

here to go beyond that and search all 50

12

states.
Q.

13

There is no recommendation

I

understand that there's no

14

recommendation contained in this text that a

15

trademark professional review fictitious name

16

databases in all 50 states.

17

is it still your view that fictitious name

18

registrations are a useful source of

19

information in searching for common-law

20

marks?
A.

21
22

I

My question is,

My current view is the one that

just stated.
Q.

23

Please turn to the following

24

page,

page 112.

25

points here concerning abandoned marks.

There are several bullet

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The

GLENN GUNDERSEN - 10/3/2012
STATE OF NEW YORK
COUNTY OF NEW YORK

ss:
)

I wish to make the following changes, for the following
reasons:

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have

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HIGHLY CONFIDENTIAL

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E R R A T A
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LINE

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VERI1EXT NATIONAL COURT REPORTING COMPANY
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\r"

GLENN GUNDERSEN - 10/3/2012
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began, back

Clarification.

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a lot of choices

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Subscribed and sworn to before me

2

Page 356
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GLENN GUNDERSEN,

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ESQUIRE - HIGHLY CONFIDENTIAL

ACKNOWLEDGMENT OF DEPONENT

3
4

5

hereby certify that I have read the foregoing

6

pages

7

correct transcription of the answers given by

8

me to the questions therein propounded,

9

except for the corrections or changes in form

1

to

10

or substance,

11

351

and that the same is a

if any,

noted in the attached

Errata Sheet.

12
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14

DATE

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Subscrib~d

and sworn to before me this
2012.

day of

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20

My commission expires:

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22
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Notary Public
Assignment Number:

1525833

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