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

Filing 162

DECLARATION of Mary Mazzello in Support re: 120 MOTION in Limine to Exclude any Testimony, Argument or Evidence Regarding the Expert Reports and Opinions of Susan Schwartz McDonald.. Document filed by Apple Inc.. (Attachments: # 1 Exhibit 1 (Part 1 of 5), # 2 Exhibit 1 (Part 2 of 5), # 3 Exhibit 1 (Part 3 of 5), # 4 Exhibit 1 (Part 4 of 5), # 5 Exhibit 1 (Part 5 of 5), # 6 Exhibit 2, # 7 Exhibit 3, # 8 Tab - Colby 30(b)(6) Dep, # 9 Tab - Jacoby Dep, # 10 Tab - McDonald Dep, # 11 Tab - Nowlis Dep)(Cendali, Dale)

Dale M. Cendali
Claudia Ray
Bonnie L. Jarrett
KIRKLAND & ELLIS LLP
601 Lexington Avenue
New York, New York 10022

Perry J. Viscounty
LATHAM & WATKINS LLP
140 Scott Drive
Menlo Park, CA 94025
Jennifer L. Barry
LATHAM & WATKINS LLP
600 West Broadway, Suite 1800
San Diego, CA 92101-3375

Attorneys for Defendant
APPLE INC.
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
J.T. COLBY & COMPANY, INC. d/b/a BRICK
TOWER PRESS, J. BOYLSTON & COMPANY,
PUBLISHERS LLC and IPICTUREBOOKS LLC,
Plaintiffs,

Case No. 11-CIV-4060 (DLC)
ECF Case

- against APPLE INC.,
Defendant.

DECLARATION OF MARY MAZZELLO IN SUPPORT OF
DEFENDANT’S REPLY TO PLAINTIFFS’ OPPOSITION TO DEFENDANT’S
MOTION TO EXCLUDE THE EXPERT REPORT AND TESTIMONY
OF DR. SUSAN SCHWARTZ MCDONALD

I, Mary Mazzello, declare as follows:
1.

I am an associate at the law firm of Kirkland & Ellis LLP. I am duly licensed in

the State of New York. I submit this declaration in support of Defendant’s Reply to Plaintiffs’
Opposition to Defendant’s Motion to Exclude the Expert Testimony of Dr. Susan Schwartz
McDonald.
Source-Identifying Information within Plaintiffs’ Books
2.

I have reviewed the books produced by Plaintiffs in this case.

3.

All of the books Plaintiffs produced in this litigation contain source-identifying

information in addition to the word “ibooks.” I am not aware of any book published by Plaintiffs
in which the word “ibooks” appears alone, without surrounding contextual information.
4.

Based on my review, with rare exceptions, every book that Plaintiffs produced

contains at least the following information: (1) the publisher’s name; (2) the publisher’s New
York location; (3) the publisher’s website; and (4) Plaintiffs’ “ibooks” logo.
5.

Annexed hereto as Exhibit 1 are true and correct copies of the copyright and title

pages of several of Plaintiffs’ books.
Plaintiffs’ Choice to Begin Displaying their Imprint as “iBooks”
6.

Plaintiffs allege that they began depicting their imprint as “iBooks” because

Amazon.com began depicting the imprint in this way and Mr. Colby’s efforts to get Amazon to
depict the mark as “ibooks” failed. (See Colby Dec. ¶ 4-5.)
7.

I have reviewed Plaintiffs’ production and I am unaware of any documents they

have produced showing that Amazon unilaterally began referring to the imprint as “iBooks.” I
also am unaware of any documents Plaintiffs have produced regarding their alleged attempt to
persuade Amazon not to display the name as “ibooks.”

Calculation of the Confusion Rate in the Sur-rebuttal Survey
8.

Dr. McDonald stated that in her sur-rebuttal report that 55% of respondents in the

test group named Apple or iTunes and no other company while 2% in the control group named
Apple or iTunes and no other company. (McDonald Sur-Rebuttal Rep., 3.) Thus, she calculated
a confusion rate of 53% ± 6%. (Id.)
9.

Based on Tables II-3 and II-4 of Dr. McDonald’s sur-rebuttal report, only 157 of

294 people in the test group of Dr. McDonald’s sur-rebuttal survey named Apple or iTunes and
no other company as the source of the product. (McDonald Sur-Rebuttal Rep., 4-5.) Based on
my calculation, this is 53.4%, not 55% as Dr. McDonald reported (Id at 3.).
10.

After subtracting the control rate of confusion from 53.4%, the net confusion rate

is 51.4%, or 51% rounding to the nearest whole number, not 53% as Dr. McDonald reported.
(Id.)
11.

The net rate of confusion includes all individuals whom Dr. McDonald counted as

confused, including individuals who guessed or named Apple only because of the letter “i.”
Deposition Testimony
12.

Annexed hereto behind the tab “McDonald Dep.” is a true and correct copy of

excerpts from the Deposition of Dr. Susan Schwartz McDonald dated December 12, 2012.
13.

Annexed hereto behind the tab “Colby 30(b)(6) Dep.” is a true and correct copy

of excerpts from the 30(b)(6) Deposition of John T. Colby dated July 18, 2012 and Exhibit 18
thereto.
14.

Annexed hereto behind the tab “Jacoby Dep.” is a true and correct copy of

excerpts from the Deposition of Dr. Jacob Jacoby dated December 6, 2012.