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)
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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-------------------------------------X
JT COLBY AND COMPANY, INC., D/B/A
BRICK TOWER PRESS, J. BOYLESTON AND
COMPANY PUBLISHERS, LLC, AND
IPICTUREBOOKS, LLC,
Plaintiffs,
-against-
Index No.
11-CV-4060(DLC)
APPLE, INC.,
Defendant.
-------------------------------------X
VIDEOTAPED DEPOSITION OF
SUSAN SCHWARTZ MCDONALD
New York, New York
December 12, 2012, 9:56 a.m.
Reported By:
Nicole Sesta
Ref: 8606
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2
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S. Schwartz McDonald
Q
And what was said in that initial
conversation?
A
The case was described.
I think
5
some of the general same areas of discussion
6
were recapitulated.
7
both refresh and amplify for me the facts that
8
-- what had transpired in this case, the history
9
of Mr. Colby's company.
10
Q
And that really was
pretty much it.
11
There was an opportunity to
At that time, were you again
12
relying on what counsel told you orally, or were
13
you presented with any additional documents?
14
A
I can't recall -- earlier, I
15
think, before meeting with the attorneys from
16
Quinn Emanuel, I did have -- had received a
17
couple of documents from Mr. Morrison and may
18
have skimmed them, didn't necessarily read them
19
with great care at the time because I really
20
didn't have a mission statement for myself.
21
Q
Do you recall what documents you
22
were provided?
23
A
I think there was -- I'm guessing
24
now because I really just don't have the
25
chronology.
I believe that I had some response
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to a trademark office action from Apple, and I
3
believe I was given, at some point, the
4
complaint that had been filed, but I'm not --
5
beyond that, I don't know.
6
of ancient history for me.
7
8
Q
Okay.
This is really kind
Do you know when in the
spring you were contacted by Quinn Emanuel?
9
A
The closest I can come is around
11
Q
Okay.
12
contacted you?
13
A
10
14
15
16
17
18
19
April.
And who at Quinn Emanuel
I don't recall actually.
I don't
recall who I heard from first.
Q
Okay.
When did you begin working
on a survey design?
A
Sometime during the summer, I
would say, I started to or very late spring.
Q
Did you consider other survey
20
designs other than the one you ultimately
21
reported on?
22
MR. RASKOPF:
Note my
23
objection to the form of the
24
question.
25
A
Well, that -- the process of
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S. Schwartz McDonald
Colby's warehouse.
3
Q
Did you ask for any particular
4
type of book, or did you just simply say give me
5
some books?
6
A
I was just looking for examples.
7
Q
Do you still have copies of these
A
I have -- they've kind of
8
books?
9
10
distributed themselves.
There might been one at
11
home.
12
They've probably been put away, most of them, by
13
my administrative assistant.
14
them in a while.
I know there is one in my office.
15
I haven't seen
MS. CENDALI:
I call for
16
the production of the books that
17
were actually provided to Dr.
18
McDonald, both physical and
19
electronic.
20
MR. RASKOPF:
21
22
23
24
25
We'll address
your letter when we receive it.
Q
Did you review the deposition
testimony of any witness in this case?
A
I mentioned at the outset that I
reviewed the deposition of Dr. Jay and I
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S. Schwartz McDonald
reviewed the deposition of Dr. Jacoby.
Q
Okay.
plaintiffs' marketing materials?
5
MR. RASKOPF:
6
7
Did you review any of
Objection to
the form.
A
I'm not sure what you mean by
8
"marketing materials."
9
going to have to say no pending some
10
11
So at the moment, I'm
clarification on that.
Q
Okay.
Other than the complaint,
12
did you review any -- in the documents you
13
previously identified, did you review any other
14
documents relating to plaintiffs' business?
15
MR. RASKOPF:
16
Objection to
the form.
17
A
Not that I'm aware of.
18
Q
Do you know how much money
19
plaintiffs have spent on advertising since it
20
acquired the iBooks imprint in 2006?
21
MR. RASKOPF:
22
Objection to
the form.
23
A
I have no idea.
24
Q
Do you know whether it was
25
collectively less than $50,000 during this
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I may not have done all my homework, but I don't
3
recall.
4
5
Q
A
10
11
I don't think I've seen it.
I
don't think I've seen it.
8
9
So you don't recall one way or the
other or you think you didn't see it?
6
7
I don't recall seeing it.
Q
Can you recall the titles of any
of plaintiffs' electronic books that you did
see?
A
Dawn of Amber.
12
book by Clarke that I did see.
13
the name of it.
14
Q
There's another
I'm blocking on
Another one is Sentinel.
I'll represent to you that this is
15
in fact an excerpt of one of plaintiffs'
16
electronic books.
17
at this exhibit, Arthur C. Clarke's Venus Prime,
18
excerpts from McDonald 2, and let me know what
19
type of source information do you see in the
20
document?
21
A
Could you please take a look
Well, other than the author, which
22
I will consider to be source information, I'm
23
using the word source rather broadly.
24
that that's acceptable, iBooks.
25
Q
I hope
Can you do it by page?
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2
A
They're not numbered.
So if I go
3
through on the first page all I can see is the
4
author and title, and then there's a quote from
5
the Chicago Sun Times, so it's setting aside the
6
author as source information.
7
what Paul Preuss has to do with this, because I
8
can't read it.
9
Q
So then turning to the second
A
I'm assuming this would not be
10
And I'm not sure
It's the lower left-hand corner.
page.
11
12
something you consider to be potentially
13
relevant or information I should be commenting
14
on.
15
Q
Fair enough.
16
A
I want to make that clear.
17
Q
Honest question and fair enough.
18
A
So then we see Arthur Clarke and
19
Paul Preuss on the first inside page and then we
20
get to the third inside page and I see iBooks
21
science fiction, and then I see some other
22
books.
23
Q
So you're saying at the top of
24
this third page in there's a reference to iBooks
25
science fiction, is that what you're referring
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to?
3
A
Yes.
And then at the bottom of
4
the book after there's other volumes that
5
referenced by other authors.
6
reference to www.iBooksInc.com.
7
next page there's another kind of an inside
8
title page and here's reference to iBooks with a
9
light bulb and the lower case "I" in it and
There is a
Then on the
10
there's reference to iBooks, Inc., www again and
11
then there's Simon & Schuster as the
12
distributor.
13
copyright for Byron Preiss Visual Publications.
14
There is an iBooks, Inc., ebooks reference.
15
There's an iBooks, Inc. reference and then more
16
iBooks.
17
through --
18
Then on the next page there is a
So I think I've probably gone
Q
On the last page is there after
19
under iBooks, Inc. is there a New York, New York
20
address?
21
A
Yes.
I didn't mention that
22
because the address isn't normally material to
23
me relating to source.
24
source.
25
Q
It's more location, not
In some circumstances the source
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2
could provide a clue as to, excuse me, in some
3
situations an address could provide a clue as to
4
source; is that fair to say?
5
MR. RASKOPF:
6
Objection to
the form.
7
A
That wouldn't really be my thought
8
actually.
I mean I think in general addresses,
9
companies have many, potential many addresses
10
and satellite offices and so on.
11
think about it in that way.
12
may be it's a characteristics or a fact about
13
the source, but I don't think of the address in
14
the same way as the source, not the way I would
15
think of an author, a distributor, or a
16
publisher.
17
18
Q
So I don't
It's something that
Do you think logos as being source
identifying material?
19
A
Potentially, yes.
20
Q
And have you seen this light bulb
21
logo before in the course of your work on this
22
case?
23
A
Yes.
24
Q
Are you aware that plaintiffs
25
typically include this logo on their books?
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A
Well, I don't know about
3
typically.
4
things that didn't have it but I have seen it.
5
Q
I've seen it.
I believe I've seen
Have you ever undertaken to
6
analyze how often plaintiffs' light bulb logo is
7
used on their books?
8
A
I have not.
9
Q
If I told you that it's used
10
virtually all the time on their books would you
11
have reason to believe that's not true?
12
A
13
truthful woman.
14
Q
15
I will stipulate that you are a
Fair enough.
Let's take a look at
what we'll mark as McDonald 4.
16
(McDonald Exhibit 4, Dawn
17
of Amber excerpt, marked for
18
identification, as of this date.)
19
Q
Is McDonald Exhibit 4 an excerpt
20
from the Roger Zelazny the Dawn of Amber
21
electronic book that was published by plaintiffs
22
that you referred to earlier?
23
A
Yes, I have this on my Kindle.
24
Q
And in terms of this particular
25
book, McDonald 4, could you take us through once
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again what you believe to be source identifying
3
information?
4
5
A
Before we do this, I think I
remember now why I didn't actually see this.
6
MR. RASKOPF:
Referring to
7
Exhibit 2 which is Arthur C.
8
Clarke's Venus Prime online book
9
allegedly referred to in Exhibit 3
10
or allegedly sent to counsel under
11
Exhibit 3.
12
A
I think I can solve this mystery.
13
When it arrived in my inbox it was corrupt and I
14
couldn't open it and forgot to do anything about
15
it because it wasn't represented to me as
16
something I absolutely had to have seen to
17
arrive at any conclusion or determination.
18
it's why the name sounded familiar and it just
19
at this moment came back to me with a little
20
message on my screen.
21
Q
So
The mystery is solved.
Fair enough.
So going back to
22
McDonald 4, the Roger Zalazny Dawn of Amber book
23
that was published by plaintiffs, could you
24
please take us through page by page once again
25
the source identifying information?
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A
The first page has nothing.
The
3
second page is a list of other books by
4
Betancourt, which has -- and I have to say I
5
don't really know, understand sort of the
6
hierarchy of authors and authors authoring
7
authors' materials.
8
on the relationship between Zelazny and
9
Betancourt.
So I'm not going to comment
The next page inside is more
10
repetition of the title and then there's iBooks
11
New York.
12
13
14
Q
You understand that to be source
information?
A
Yes.
I'll try to be more
15
explicit.
16
last page, I believe, there is reference to the
17
original publication of iBooks with reference to
18
a copyright and iBooks is repeated.
19
there's reference to iPicturebooks and there's
20
an address, which I think is of interest to you
21
but I would not have thought to mention as a
22
source, per se.
23
And then there is on the next and
Then
Then there's reference to Brick
24
Tower Press and then there's the printer, Weston
25
and Company, which is listed as publishers but
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the printer in this case.
Then there's
3
reference if you read in the fine print the
4
iPicturebooks Calfon is a registered trademark
5
of J. Boyleston and Company.
6
to the reference to the first iBooks printing,
7
and I think that probably is the sum of anything
8
other than credits given to editors and jacket
9
designers, that's the only thing that's
Then we come down
10
contained here that I would think is at all
11
relevant.
12
Q
You mentioned that there is a
13
reference to iPicturebooks.
14
opinions in this case with regard to
15
iPicturebooks?
16
A
I have not been asked to, no.
17
Q
Do you know in what circumstances
18
Did you render any
plaintiffs use the imprint iPicturebooks?
19
A
Well, it's my understanding that
20
they have a library of children's titles but
21
they also have other titles which are graphic in
22
nature.
23
just know that not only children's books but
24
some adult books with presumably graphic
25
elements are housed within that.
I cannot be more specific than that.
I'm not sure
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Because there is usually I think
3
an analog of that page in most books and that's
4
referenced to the by convention.
5
alluding earlier in the paragraph that I read to
6
you when we discussed, it was a discussion of
7
how typically and certainly it's easy to
8
visualize in print books, where the most copious
9
amounts of information about source are housed
10
11
What I was
about a book.
Q
So you wanted then the respondents
12
to envision this page but you didn't actually
13
provide them with any of the source information
14
that they might find on one of plaintiffs'
15
actual iBooks, right?
16
A
That's correct, yes.
17
Q
Why did you say to look at a
18
particular page as opposed to look at an
19
electronic book as a whole?
20
A
It was a point of reference, just
21
simply to set the stage for information about
22
the book source.
23
respondents.
24
respondents a particular piece of information
25
and assuming they received that information on
Essentially I was obliging
I was putting in mind for
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that page.
3
the book too.
4
there might be a lot of information and asking
5
them to stipulate that they had seen iBooks on
6
that page.
7
Q
I could have said on the spine of
I was referencing a page in which
But the respondents are not
8
provided with what that actual contextual
9
information would be?
10
A
11
correct.
12
That's correct.
Q
That's absolutely
Turning, if you would turn, to
13
McDonald Exhibit 2, which of the pages on that
14
exhibit would you have wanted the respondents to
15
envision?
16
A
I didn't have this in mind.
In
17
fact, the multiplicity, the incredibly diverse
18
ways in which information can appear was
19
precisely the problem.
20
anyone to imagine Venus Prime.
21
them to imagine the Dawn of Amber.
22
them to put in mind a page in the book or a
23
screen, as it happens with digital books, where
24
there is information about the source of the
25
book and to actually place in front of them the
So I wasn't asking
I wasn't asking
I was asking
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