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)

EXHIBITG

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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

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

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Plaintiff,
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vs.

Case No. 11-CIV4060 (DLC)

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APPLE

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INC .

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Defendant.
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HIGHLY CONFIDENTIAL PURSUANT TO PROTECTIVE ORDER
Attorneys' Eyes Only Confidential Pages 300 - 302
VIDEOTAPED DEPOSITION OF THOMAS LA PERLE
30(b) (6) Capacity
Redwood Shores, California
Wednesday, September 19, 2012

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Reported by:
LORRIE L. MARCHANT, CSR No. 10523
RPR, CRR, CCRR, CLR

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JOB NO. 53418
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opinion with respect to the clearance process for

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the "iBooks" mark?

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A.

Yes.

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Q.

Did you convey that opinion to others

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within Apple?

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A.

Yes.

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Q.

What was their opinion?

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MS. CENDALI:
answer.

We're not relying on an advice of counsel

defense in this action, and that's privileged.

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Again, I instruct you not to

BY MR. CHATTORAJ:
Q.

Was any trademark clearance work done other

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than the work done by the Dechert firm in connection

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with the "iBooks" mark?

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A.

I don't recall.

I sus- -- well, I assume

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that there were foreign searches done.

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recall at this time.

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Q.

I just don't

So the foreign searches would have been

carried out by firms other than Dechert?

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A.

By foreign counsel.

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Q.

Did foreign counsel eventually prepare

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opinions with respect to the "iBooks" mark and their

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respective foreign jurisdictions?

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A.

Typically, that's what happens.

I just

don't recall if that was the case with this -- this
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through all the depositions.

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that's even a viable argument for either side.

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MS. CENDALI:

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MR. CHATTORAJ:

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And we'll see if

BY MR. CHATTORAJ:

Okay.
Okay.

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Q.

Do you remember the question?

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A.

I don't.

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MR. CHATTORAJ:

Can you read it back,

please.

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(Record read as follows:

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"Q

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Action dated September 4, 2002, after

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Mr. Colby had contacted Apple,

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to say that you saw nothing there that gave

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you cause for concern about Mr. Colby's

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having any rights?")

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THE WITNESS:

So in reading this Response to Office

is it fair

Well, I just want to back up

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a little bit.

This had nothing to do with --

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after -- this 1s after Colby contacted us I read

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this document.
BY MR. CHATTORAJ:

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Q.

Yes.

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A.

As I testified to,

I was aware of these

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applications during the clearance process.

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abandoned applications.

These

And what I was aware of at

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that point was that Preiss, the -- Colby's

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predecessor in interest -- I didn't know anything

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about Colby

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abandoned these applications.

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into Section 7 bankruptcy, and he died.

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I knew.

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these -- these trademark rights.

Colby's predecessor in interest
His business went
That's all

So that's the extent of my knowledge about

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Only after Colby approached us did we

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realize that Colby had acquired the rights and

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allegedly had used the mark.

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whatsoever of Colby, his use, or of Preiss's use.

But I had no knowledge

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Q.

Of Preiss's use?

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A.

Yeah.

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Q.

Of Preiss's use at any time?

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A.

At any time.

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Q.

Okay.

I understand your testimony to be

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that this document that was marked as La Perle

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Exhibit 6 was something that you had not reviewed

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A.

I'm sorry.

bankruptcy.
Q.

At any time post the Section 7

I'm sorry.

Oh, okay.

So you were -- you had some

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knowledge about Preiss's use of the mark before

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Mr. Preiss died and the companies then went into

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bankruptcy?

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A.

Right.
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Mr. Colby to you?

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A.

Yes.

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Q.

Is this that e-mail?

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A.

I believe it is.

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Q.

Did you read it at that time?

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A.

I did.

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Q.

Have you reviewed it since then?

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A.

I don't believe so, no.

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Q.

It appears to be an e-mail from John Colby,

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the principal of plaintiffs in this action, to

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Steve Dowling; is that right?

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A.

That's correct.

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Q.

And it's dated January 29, 2010, at

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2:17p.m.; right?

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A.

Correct.

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Q.

Was January 29, 2010, before or after the

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announcement of the iPad and the availability of

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iBooks on iPad?

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A.

After.

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Q.

How long after?

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A.

I think the date was -- January 24th was

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the launch, and so five days after.

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Q.

Did you subsequently forward this document

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to others?

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A.

Yes.
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Q.

To whom did you forward it?

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A.

I forwarded it to Glenn Gundersen.

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Q.

Anyone else?

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A.

No.

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Q.

Did you subsequently have an exchange with

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Mr. Gundersen concerning legal advice concerning

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this matter?

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A.

Yes.

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Q.

Are you aware of whether there was any

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future or subsequent communication with Mr. Colby

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after this e-mail?

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A.

Yes.

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Q.

To the best of your knowledge, what was

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that communication?
A.

I believe Glenn Gundersen contacted

John Colby and inquired about his -- this e-mail.
Q.

Did Mr. Gundersen contact Mr. Colby with

your knowledge?

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A.

Yes.

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Q.

Did he do so at your instruction?

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A.

Yes.

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Q.

Mr. Colby's e-mail reads, among other

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things -- I'm just going to read an excerpt.
I'm trying to find the right person to talk
with at Apple.

We are book publishers and have used
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THOMAS LA PERLE - 9/19/2012
STATE OF NEW YORK
COUNTY OF NEW YORK

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•
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THOMAS LA PERLE - 9/19/2012

Subscribed and sworn to before me
this

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day of November, 2012.

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