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

Filing 159

DECLARATION of Bonnie L. Jarrett in Support re: 104 MOTION for Summary Judgment.. Document filed by Apple Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3 (REDACTED), # 4 Exhibit 4 (REDACTED), # 5 Tab - Borden Dep, # 6 Tab - Colby 30(b)(6) Dep (REDACTED), # 7 Tab - Colby Dep, # 8 Tab - Freese Dep, # 9 Tab - Goldhor Dep, # 10 Tab - Gundersen Dep, # 11 Tab - Kvamme Dep)(Cendali, Dale)

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IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK
J.T. COLBY & COMPANY,
: Case Number
INC. d/b/a BRICK TOWER
: 11-CV-40260
PRESS; J. BOYLSTON &
: (DLC)
COMPANY, PUBLISHERS LLC
:
and IPICTUREBOOKS
:
LLC,
:
Plaintiffs,
:
:
vs.
:
:
APPLE, INC.,
:
Defendant.
:

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October 2, 2012
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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.

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 108
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HAL E. BORDEN, ESQUIRE
marks?

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A.

I don't know whether he did or

Q.

And when I say "verbally," you

not.

understand I mean --

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A.

Orally.

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Q.

Yes.

So if I had asked it as

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when I -- to the best of your knowledge, did

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Glenn Gundersen ever communicate orally with

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anyone at Apple concerning plaintiffs' marks?

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A.

I don't know.

In the context

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of that question, prior to January 27th,

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speaking about the two applications and

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ancillary online information that I've been

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referring to.

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Q.

Can you describe with any

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greater specificity the, quote/unquote,

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ancillary online information that you

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referred to?

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A.

The extent to which I remember

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is that it was a description of Byron Preiss

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who was a founder or had other significant

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involvement in the applicant in question.

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Q.

Do you recall what it said

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Page 109
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HAL E. BORDEN, ESQUIRE
about Byron Preiss?
A.

I believe that it indicated

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that Byron Preiss had died and his company in

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question had gone into bankruptcy.

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Q.

Was this a news article?

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A.

I don't recall the context.

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Q.

Was it a bankruptcy filing?

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A.

I don't believe it was a

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bankruptcy filing.
Q.

When you say "online

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information," was this information found

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through the Internet or was it found through

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a professional search database?

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A.

To the best of my recollection,

it was found through the Internet.
Q.

At that time, did you have an

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understanding that Byron Preiss and the

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bankruptcy, those facts related in that

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online source, referred to the same entity as

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were the applicants for the two abandoned

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registrations?

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A.

I believe so.

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Q.

That was an understanding you

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had then, just to clarify?
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Page 177
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HAL E. BORDEN, ESQUIRE

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be added to the cover sheet.

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particularly if the paralegal is the

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one that is doing the subsequent

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searching.

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doing follow-up work online, in those

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situations, in my experience, it's

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less typical that all of that, all of

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those strategies are reported on this

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But

If Mr. Gundersen or I are

sheet.
BY MR. CHATTORAJ:
Q.

Still in connection with the

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iBooks trademark clearance work, as you sit

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here today, you're not aware of any searches

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carried out by Apple or those acting on

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Apple's behalf other than the iBooks plural

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form on the Google Web site that are not

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reflected in this document.

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A.

Right?

I don't recall specific

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instances of such search strategies being run

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with the exception that we have been talking

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about online information relating to two

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abandoned applications, I don't recall the

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context in which that arose.

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been likely a follow up of some kind.

It would have

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888-777-6690 ~ 215-241-1000 ~ 610-434-8588 ~ 302-571-0510

I

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HAL E. BORDEN, ESQUIRE

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don't recall who performed that follow up.

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So to the extent that you consider that a

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search strategy, that's not reflected here.

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Q.

At the top of the first page,

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there's a heading that says:

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REGISTERED TRADEMARKS."

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list of countries and jurisdictions with the

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words "PRELIMINARY SEARCH STRATEGIES" in all

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caps.

"MULTINATIONAL

Underneath it is a

Do you see that?

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A.

I do.

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Q.

What does preliminary search

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strategies mean in this context?
A.

Typically it would indicate

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that the searches that follow on this

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template are part of a preliminary search.

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Looking at this sheet, it's clear to me that

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that's an inaccurate description of the

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strategies that were run because there are

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significant number of strategies.

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a recollection of seeing a stack of results

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that arose from those strategies, it's clear

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to me that that's not a preliminary search

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except to the extent with respect to foreign

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jurisdictions.

And having

We don't consider what we at

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