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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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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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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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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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

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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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