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

Filing 167

REPLY MEMORANDUM OF LAW in Support re: 114 MOTION in Limine to Exclude any Testimony, Argument or Evidence Regarding the Expert Reports and Opinions of Mike Shatzkin. REDACTED. Document filed by Apple Inc.. (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.

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.

TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES .......................................................................................................... ii
PRELIMINARY STATEMENT .....................................................................................................1
ARGUMENT ...................................................................................................................................2
I.

LEGAL STANDARD..........................................................................................................2

II.

MR. SHATZKIN DID NOT RELY ON SUFFICIENT FACTS OR DATA. .....................2
A.
B.

Mr. Shatzkin Unreasonably Relied On A Single Inadmissible Spreadsheet. ..........2
Mr. Shatzkin Did Not Conduct Any Independent Investigation..............................4

III.

MR. SHATZKIN FAILED TO ADDRESS WHETHER PLAINTIFFS’
ALLEGED MARK EVER ACQUIRED SECONDARY MEANING. ...............................6

IV.

“ibooks” IS A GENERAL TRADE PUBLISHER, NOT A NICHE PUBLISHER. ...........7
A.
B.
C.

V.

The Relevant Consumers Are Readers Of All Book Genres. ..................................7
Mr. Shatzkin’s Calculations Regarding Science Fiction “ibooks” Are
Flawed. .....................................................................................................................8
Mr. Shatzkin’s Opinion That Consumers Purchased Multiple Science
Fiction “ibooks” Books Is A Mere Assumption. .....................................................8

MR. SHATZKIN ADMITTED THAT PLAINTIFFS NEVER ENGAGED IN
ANY BRAND-BUILDING ACTIVITIES. .......................................................................10

CONCLUSION ..............................................................................................................................10

i

TABLE OF AUTHORITIES
Page
Cases
Atl. Monthly Co. v. Frederick Ungar Publ’g Co.,
197 F. Supp. 524 (S.D.N.Y. 1961).......................................................................................... 10
Berk v. St. Vincent’s Hosp. & Med. Ctr.,
380 F. Supp. 2d 334 (S.D.N.Y. 2005)....................................................................................... 2
Casa Editrice Bonechi, S.R.L. v. Irving Weisdorf & Co.,
No. 95 Civ. 4008 (AGS), 1995 WL 528001 (S.D.N.Y. Sept. 6, 1995) .................................. 10
Coach Servs., Inc. v. Triumph Learning LLC,
668 F.3d 1356 (Fed. Cir. 2012)................................................................................................. 4
Ergotron, Inc. v. Hergo Ergonomic Support Sys., Inc.,
No. 94 Civ. 2732, 1996 WL 143903 (S.D.N.Y. Mar. 29, 1996) .............................................. 5
Fed. Hous. Fin. Agency v. JPMorgan Chase & Co.,
No. 11 Civ. 6188 (DLC), 2012 WL 6000885 (S.D.N.Y. Dec. 3, 2012) ................................... 2
Figueroa v. Boston Scientific Corp.,
254 F. Supp. 2d 361 (S.D.N.Y. 2003)....................................................................................... 9
Gucci Am., Inc. v. Guess?, Inc.,
843 F. Supp. 2d 412 (S.D.N.Y. 2012)....................................................................................... 7
Harlequin Enters. Ltd. v. Gulf & W. Corp.,
644 F.2d 946 (2d Cir. 1981).................................................................................................... 10
In re Rezulin Prods. Liab. Litig.,
309 F. Supp. 2d 531 (S.D.N.Y. 2004).................................................................................... 8-9
Lidle v. Cirrus Design Corp.,
No. 08 Civ. 1253 (BSJ) (HBP), 2010 WL 2674584 (S.D.N.Y. July 6, 2010) .......................... 9
Lippe v. Bairnco Corp.,
288 B.R. 678 (S.D.N.Y. 2003).............................................................................................. 2, 9
Malletier v. Dooney & Bourke, Inc.,
525 F. Supp. 2d 558 (S.D.N.Y. 2007)....................................................................................... 4
Mastercard Int'l Inc. v. First Nat. Bank of Omaha, Inc.,
02 CIV. 3691 (DLC), 2004 WL 326708 (S.D.N.Y. Feb. 23, 2004) ......................................... 8

ii

Matter of Ollag Constr. Equip. Corp.,
665 F.2d 43 (2d Cir. 1981)........................................................................................................ 4
PaperCutter, Inc. v. Fay’s Drug Co.,
900 F.2d 558 (2d Cir. 1990)...................................................................................................... 7
Rockland Exposition, Inc. v. Alliance of Auto. Serv. Providers of N.J.,
No. 08-CV-7069 (KMK), 2012 WL 4049958 (S.D.N.Y. Sept. 19, 2012)................................ 7
Sports Traveler, Inc. v. Advance Magazine Publishers, Inc.,
25 F. Supp. 2d 154 (S.D.N.Y. 1998)......................................................................................... 5
Tri-Star Pictures, Inc. v. Unger,
14 F. Supp. 2d 339 (2d Cir. 1998) .......................................................................................... 10
United States v. Adefehinti,
510 F.3d 319 (D.C. Cir. 2007) .................................................................................................. 4
Weiner v. Snapple Beverage Corp.,
No. 07 Civ. 8742 (DLC), 2010 WL 3119452 (Aug. 5, 2010) .................................................. 6
Rules
Fed. R. Evid. 403 ........................................................................................................................ 7, 8
Fed. R. Evid. 702(b) .................................................................................................................... 2, 6
Fed. R. Evid. 703 ............................................................................................................................ 4

iii

PRELIMINARY STATEMENT
Contrary to Plaintiffs’ assertion, it is they, and not Apple, who must be “panicked” (Opp.,
1),1 as even their proffered expert, Mike Shatzkin, readily acknowledges that Plaintiffs have done
nothing to create consumer awareness of the “ibooks” imprint, largely because their owner John
Colby is a “bookstore guy” who is “behind the curve” when it comes to marketing.
Significantly, Mr. Shatzkin never opined, in his Report, during his deposition or in his eleventhhour declaration, that the “ibooks” imprint ever was recognized by consumers. Instead, he
offered his conditional opinion that sales during the mid-2000s “suggest[] the potential for a core
audience that would recognize [“ibooks”] as a publishing specialist.” (Shatzkin Rep., at 5
(emphasis added); Shatzkin Dec., ¶ 6 (emphasis added).)
By focusing on what might have been nearly ten years ago, Plaintiffs and Mr. Shatzkin
also obscure the central issue—whether consumers recognized the “ibooks” imprint in January
2010, at the time Apple adopted its iBooks mark. In fact, Plaintiffs cannot point to any
admissible evidence showing that the “ibooks” imprint has achieved secondary meaning. They
do not contest any of the facts or data that Apple’s expert, Gregory S. Carpenter, relied upon, nor
do they dispute that Mr. Shatzkin failed to conduct any independent investigation regarding use
of the “ibooks” imprint, miscalculated the number of science fiction books published under that
imprint, and presented no evidence to support the notion that any consumers ever purchased
multiple “ibooks” science fiction titles. Because Mr. Shatzkin did not base his opinions on

1

As used herein, “Opp.” refers to Plaintiffs’ brief in opposition to Defendant’s motion to exclude Mike Shatzkin,
dated 1/25/2013; “Shatzkin Dec.” refers to the Declaration of Mike Shatzkin, dated 1/25/2013; “MTE” refers to
Defendant’s brief in support of its motion to exclude Mike Shatzkin, dated 12/21/2012; “Carpenter Dec.” refers to
the Declaration of Gregory S. Carpenter, dated 12/21/2012; “Jarrett 2/5 Dec.” refers to the Declaration of Bonnie L.
Jarrett, dated 2/5/2013; “SUF” refers to Defendant’s Rule 56.1 statement, dated 12/21/2012; “Shatzkin Dep.” and
“Colby 30(b)(6) Dep.” refer to excerpts from the transcripts of the 12/4/2012 deposition of Mike Shatzkin and the
7/18/2012 Rule 30(b)(6) deposition of John Colby attached to the Jarrett 2/5 Dec.; and “Apple,” “Plaintiffs,”
“Shatzkin Spreadsheet,” “July Spreadsheet,” “August Spreadsheet,” “Report,” and “Shatzkin Report” are defined in
the MTE.

sufficient facts or data, ignored the events that occurred after Ibooks, Inc.’s 2006 liquidation, and
failed to address whether the “ibooks” imprint had secondary meaning in January 2010 (or ever),
his testimony and opinions should be excluded.
ARGUMENT
I.

LEGAL STANDARD.
Plaintiffs bear the “burden of establishing by a preponderance of the evidence that the

admissibility requirements of Rule 702 are satisfied.” Fed. Hous. Fin. Agency v. JPMorgan
Chase & Co., No. 11 Civ. 6188 (DLC), 2012 WL 6000885, at *6 (S.D.N.Y. Dec. 3, 2012)
(citation and quotation marks omitted). Plaintiffs cannot meet their burden.
II.

MR. SHATZKIN DID NOT RELY ON SUFFICIENT FACTS OR DATA.
Mr. Shatzkin admitted that the sole evidentiary basis for his opinions is the Shatzkin

Spreadsheet. (Shatzkin Dep., 71:9-15.) Because that undated spreadsheet is inherently
unreliable, his opinions are not “based on sufficient facts or data” as required by Rule 702(b).
See Fed. R. Evid. 702(b); Berk v. St. Vincent’s Hosp. & Med. Ctr., 380 F. Supp. 2d 334, 352-56
(S.D.N.Y. 2005) (expert testimony that was based on several factual errors was inadmissible);
Lippe v. Bairnco Corp., 288 B.R. 678, 685, 701 (S.D.N.Y. 2003) (excluding expert testimony
regarding business valuation where, among other things, the expert failed to rely on relevant data
that was available to him). Plaintiffs’ opposition papers only underscore this conclusion.
A.

Mr. Shatzkin Unreasonably Relied On A Single Inadmissible Spreadsheet.

Plaintiffs’ opposition brief confirms that all of Plaintiffs’ sales figures, including the
Shatzkin Spreadsheet, are unreliable. First, despite repeatedly testifying that he understood that
the Shatzkin Spreadsheet showed sales of “ibooks” books from approximately 2000 to 2004
(Shatzkin Dep., at 71:9-18; 141:7-16; 151:21-154:3; 159:25-160:4; 165:11-14; see also Report,
at 8), Plaintiffs now assert, implausibly, that the Shatzkin Spreadsheet actually covers 19992

2012.2 To be clear, this was no mere brief lapse of memory—Mr. Shatzkin consistently testified
to this time period at his deposition, Plaintiffs’ counsel never corrected Mr. Shatzkin, even
during their own questioning of him, and Mr. Shatzkin did not correct this so-called “error”
when he reviewed and signed his deposition transcript. (Jarrett 2/5 Dec., ¶¶ 4-6.)
Second, even if Plaintiffs’ belated assertion that the Shatzkin Spreadsheet covers the
period 1999-2012 is correct, there is a discrepancy of more than

over the 1999-2012

period (the difference between the Shatzkin Spreadsheet’s net sales of
August Spreadsheet’s net sales of
than the

and the

during the period 1999-2012)—even more

discrepancy that Apple had previously identified.3 (MTE, at 8; see also

Jarrett 2/5 Dec., ¶¶ 15, 26.) Plaintiffs make no effort to explain this dramatic difference, and thus
have done nothing to show that the Shatzkin Spreadsheet is reliable. It is simply impossible to
determine what sales actually occurred prior to the 2006 liquidation of Ibooks, Inc.
Finally, Plaintiffs cannot get around the hearsay issues with the Shatzkin Spreadsheet.
Mr. Colby submitted a declaration purporting to explain that the Shatzkin Spreadsheet is based
on Plaintiffs’ July Spreadsheet and August Spreadsheet, but he admittedly has no personal
knowledge of sales of “ibooks” books before he bought the assets of Ibooks, Inc. in its 2006
bankruptcy liquidation, and thus has no knowledge as to the “vast majority” of the sales shown
on the spreadsheet. (See, e.g., Colby 30(b)(6) Dep., 133:17-134:8.)

2

Significantly, Plaintiffs and Mr. Shatzkin both admit that “the vast majority” of the almost 2 million units reflected
in the Shatzkin Spreadsheet “occurred during the Simon & Schuster sales-reporting period,” i.e., 1999-2005. (See
Shatzkin Dec., ¶ 4; Opp., 11.) Indeed, they admit that “relatively few units were sold after 2006,” amounting to
“fewer than 100,000 units.” (See Shatzkin Dec., ¶ 6; Opp., 11.) Thus, Plaintiffs have no basis to challenge Dr.
Carpenter’s conclusion that post-2006 sales have been negligible at best. (See Carpenter Dec., Ex. 1, ¶ 70.)
3

Plaintiffs plead ignorance regarding the net sales shown by the Shatzkin Spreadsheet, claiming that they are “at a
complete loss as to where [the figure cited by Apple] comes from. . . .” (Opp., at 10.) Apparently, they made no
effort to perform the straightforward calculation of subtracting the gross returns figures from the gross sales figures
shown on that spreadsheet (in both units and dollars) to determine net sales. (See Jarrett 2/5 Dec., ¶¶ 16-19.)

3

Moreover, Plaintiffs mischaracterize the law, and their own authorities, when they assert
that “this Circuit recognizes [that] when one company acquires another, the business records of
the acquired company become the business records of the purchasing company for the purposes
of Fed. R. Evid. 803(6).” (Opp., at 12.) The two cases Plaintiffs cite addressed whether
materials provided to banks by potential borrowers—not predecessor companies—became
business records of the bank once they were submitted. See Matter of Ollag Constr. Equip.
Corp., 665 F.2d 43, 46 (2d Cir. 1981); United States v. Adefehinti, 510 F.3d 319 (D.C. Cir.
2007). Neither case addresses whether the records of a predecessor company via a bankruptcy
sale become the successor’s records for purposes of satisfying a hearsay exception.
In any event, given the particular facts of this case—Plaintiffs changing their alleged
mark from “ibooks” to “iBooks,” touting a Park Avenue business address while representing in
this litigation that their business is on Shelter Island, and repeatedly changing their purported
historical sales data—the Court should not credit ever-changing sales figures that cannot be
corroborated by anyone with personal knowledge of the relevant data. Because the Shatzkin
Spreadsheet is inherently unreliable, any opinions or testimony based on that spreadsheet must
be excluded. See Fed. R. Evid. 703; see also Malletier v. Dooney & Bourke, Inc., 525 F. Supp.
2d 558, 666 (S.D.N.Y. 2007) (excluding testimony where expert relied on an unreliable
regression analysis; “a party cannot call an expert simply as a conduit for introducing hearsay”);
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1380-81 (Fed. Cir. 2012)
(Trademark Trial and Appeal Board gave improper weight to unauthenticated business records;
vacating the Board’s determination that defendant’s mark had acquired secondary meaning).
B.

Mr. Shatzkin Did Not Conduct Any Independent Investigation.

Mr. Shatzkin admitted that, in formulating his opinions, he failed to review any
documents related to Plaintiffs’ advertising, marketing and promotional activities, failed to run
4

any internet searches, and failed to conduct any independent investigations or research at all.
(Shatzkin Dep., 72:4-75:1; 162:19-23; 174:12-176:23.) Because they realize that Mr. Shatzkin’s
failures render his opinions inadmissible, Plaintiffs now argue that his opinions are supported by
sufficient data because he reviewed the pleadings, examples of Plaintiffs’ books, the deposition
transcripts of Dr. Carpenter, Mr. Colby and Richard Freese, and Dr. Carpenter’s “reports and
accompanying (many) exhibits.” (Opp., at 5-6.) But Mr. Shatzkin repeatedly testified that his
opinions are based only on the Shatzkin Spreadsheet, and never testified that he relied on any of
the other materials referenced by Plaintiffs. (Shatzkin Dep., 70:18-71:21; 157:22-25; 167:20168:19; 183:6-185:25; 190:18-191:17; 211:9-18; see also Shatzkin Rep., at 2.) Even his
declaration purporting to support Plaintiffs’ opposition to Apple’s motion to exclude does not
claim otherwise.
Faced with this reality, Plaintiffs claim that their sales data alone provided a sufficient
basis for Mr. Shatzkin’s supposed opinion that consumers recognize “ibooks” as a brand (see
Opp. at 6 & n. 3), and thus there was no need for him to consider any of the other factors that
courts look to in determining whether there is secondary meaning (i.e., (1) consumer surveys; (2)
advertising expenditures; (3) unsolicited media coverage; (4) third party attempts to plagiarize
the mark; and (5) the length and exclusivity of the use). See Sports Traveler, Inc. v. Advance
Magazine Publishers, Inc., 25 F. Supp. 2d 154, 164 (S.D.N.Y. 1998). But the law is clear that
evidence of sales, standing alone, is not sufficient to establish secondary meaning. See, e.g.,
Ergotron, Inc. v. Hergo Ergonomic Support Sys., Inc., No. 94 Civ. 2732, 1996 WL 143903, at *8
(S.D.N.Y. Mar. 29, 1996) (noting that the amount of sales “alone cannot provide dispositive
proof that consumers actually made the association” with the source of the goods).

5

Mr. Shatzin’s reliance on sales data alone is particularly inappropriate here given the
unreliable nature of the data and the objective affirmative evidence demonstrating that all of the
other factors show that the “ibooks” imprint lacks secondary meaning. (See, e.g., Carpenter
Dec., Ex. 1, ¶¶ 38-50, 65-69, 73-89, 95-101.) Because there was an insufficient basis for Mr.
Shatzkin’s opinions, his testimony and opinions should be excluded. See Weiner v. Snapple
Beverage Corp., No. 07 Civ. 8742 (DLC), 2010 WL 3119452, at *8 (Aug. 5, 2010) (excluding
expert testimony where purported expert reviewed only two of more than 200 documents
produced by defendant, and none that “would have provided critical context”); see also Fed. R.
Evid. 702(b).
III.

MR. SHATZKIN FAILED TO ADDRESS WHETHER PLAINTIFFS’ ALLEGED
MARK EVER ACQUIRED SECONDARY MEANING.
Plaintiffs claim Mr. Shatzkin opined that “the “‘ibooks’ imprint acquired consumer

recognition” (Opp., at 1), “the ibooks imprint already acquired recognition among science-fiction
readers” (id., at 2), the sales of “ibooks” science fiction books “demonstrates consumer
recognition of ‘ibooks’” (id., at 6), and “ibooks” had “established brand recognition among
[science fiction] readers” by 2006 (id., at 11-12). None of these assertions are supported by any
cites to the Shatzkin Report or to Mr. Shatzkin’s deposition testimony, and for good reason, as
they are not present in either place.
Mr. Shatzkin never stated in his Report or at his deposition that “ibooks” was actually
recognized by consumers in January 2010, when Apple adopted its iBooks mark. Instead, he
issued a tentative report couching his opinions in conditional terms—stating, for example, that if
some consumers “make many repeat purchases” of science fiction “ibooks” books, there is “the
potential for a core audience that would recognize it as a publishing specialist.” (Shatzkin Rep.,
at 5 (emphasis added); see also Shatzkin Dec., ¶ 6 (same).) He likewise testified at his
6

deposition that “if the right strategies were employed . . . they would have a real opportunity to
turn that into something that would be a long way from being Harlequin, but would be on its way
to being something like Harlequin or Baen or Tor or Orbit.” (Shatzkin Dep., at 222:8-223:6
(emphasis added).) Mr. Shatzkin never opines, however, that consumers actually recognized the
“ibooks” imprint as a designation of source in January 2010, when Apple announced its iBooks
software app. Thus, his Report and opinions fail to address the relevant question and should be
excluded. See Gucci Am., Inc. v. Guess?, Inc., 843 F. Supp. 2d 412, 428 (S.D.N.Y. 2012) (where
expert “consistently couche[d] his opinions [regarding dilution] in conditional terms,” his report
did not raise an issue of fact as to actual dilution); see also Fed. R. Evid. 403; PaperCutter, Inc.
v. Fay’s Drug Co., 900 F.2d 558, 564 (2d Cir. 1990) (plaintiff’s descriptive mark must have
acquired secondary meaning before the defendant adopted its mark).
IV.

“ibooks” IS A GENERAL TRADE PUBLISHER, NOT A NICHE PUBLISHER.
A.

The Relevant Consumers Are Readers Of All Book Genres.

Plaintiffs acknowledge that no one has ever referred to “ibooks” as a niche science fiction
imprint, including Mr. Preiss, Plaintiffs or any third party. (Opp., at 20.) Instead, they argue that
science fiction readers are “the relevant unit of analysis for Mr. Shatzkin’s opinions” because
science fiction supposedly is “the largest genre of books released under the ibooks imprint.”
(See id.) But Plaintiffs ignore their own (albeit unreliable) data showing that 66% of the
“ibooks” books sold to distributors were not science fiction. (Shatzkin Dep., 147:24-148:6
(admitting that 34% of books sold bearing “ibooks” imprint were science fiction).) Thus, the
relevant consumer group includes readers of all genres published under the “ibooks” imprint, not
just science fiction. See Rockland Exposition, Inc. v. Alliance of Auto. Serv. Providers of N.J.,
No. 08-CV-7069 (KMK), 2012 WL 4049958, at *14 (S.D.N.Y. Sept. 19, 2012) (secondary
meaning “analysis focuses . . . on the consumer group relevant to the product or services at
7

issue”). Mr. Shatzkin did not consider whether readers of history, fiction, and graphic novels—
all of which are published under the “ibooks” imprint (see, e.g., Am. Compl., ¶¶ 15-16, 18)—
recognize the imprint, and thus even his conditional opinions are irrelevant. See Fed. R. Evid.
403.
B.

Mr. Shatzkin’s Calculations Regarding Science Fiction “ibooks” Are Flawed.

Apple’s opening brief explained that Mr. Shatzkin over-counted the number of science
fiction titles listed on the Shatzkin Spreadsheet by failing to account for duplicate titles and
unique book identifiers, known as ISBNs. (MTE, at 18.) Mr. Shatzkin admits that he
improperly included 106 science fiction titles in his analysis. (Shatzkin Dec., ¶¶ 8-9.) This
miscalculation is not surprising, as Mr. Shatzkin admitted at his deposition that he “didn’t really
pour over the spreadsheets themselves [him]self,” but instead had his staff “massage” those
numbers. (Shatzkin Dep., 158:15-159:4; 11:19-12:11.)
Mr. Shatzkin has now accounted for duplicate ISBNs (Shatzkin Dec., ¶ 9), but he still
includes duplicate titles in his analysis. (Jarrett 2/5 Dec., ¶ 27-28.) Mr. Shatzkin’s continuing
error shows that he has not used “the same level of intellectual rigor that characterizes the
practice of an expert in the relevant field,” and thus his opinions should be excluded.
Mastercard Int’l Inc. v. First Nat. Bank of Omaha, Inc., 02 CIV. 3691 (DLC), 2004 WL 326708,
at *7 (S.D.N.Y. Feb. 23, 2004) (citation and quotation marks omitted).
C.

Mr. Shatzkin’s Opinion That Consumers Purchased Multiple Science Fiction
“ibooks” Books Is A Mere Assumption.

Plaintiffs admit that the only basis for Mr. Shatzkin’s opinion that some number of
consumers purchased more than one science fiction “ibooks” book and thus would recognize
“ibooks” as a brand is his “real-life field experience” and that the jury should “credit” that
experience. (Opp., at 23.) Because Mr. Shatzkin’s opinion that consumers purchased multiple
8

science fiction “ibooks” is nothing more than rank speculation, it should be excluded. See, e.g.,
In re Rezulin Prods. Liab. Litig., 309 F. Supp. 2d 531, 540 (S.D.N.Y. 2004) (excluding expert
testimony because the court is not required to “admit opinion evidence which is connected to
existing data only by the ipse dixit of the expert”); Lippe, 288 B.R. 686 (excluding expert
testimony that was speculative, unrealistic, and based solely on the experts’ ipse dixit).
The issue is whether Mr. Shatzkin has a basis for his assumption that certain consumers
ever purchased more than one “ibooks” book. Mr. Shatzkin admitted that he does not have any
such evidence. (Shatzkin Dep., 149:19-22; 152:18-23.) Plaintiffs presented no evidence of
consumer recognition such as fan sites, chat rooms or blogs about “ibooks.” Furthermore, Mr.
Shatzkin had never heard of Plaintiffs or Mr. Colby before this litigation, and never mentioned
“ibooks” (or Plaintiffs) on his own blog, despite having written 300-400 blog posts since
February 2008. (Shatzkin Dep., 24:23-26:17; 214:12-215:3.) The only evidence in the record—
including extensive Google search results from January 2010 and a February 2012 Thomson
Compumark common law search report (SUF, ¶¶ 95; 230-231)—demonstrates that consumers do
not recognize the “ibooks” imprint. Because he assumed the existence of multiple purchases,
Mr. Shatzkin “was relying not on facts or data but instead was engaging in rank speculation,”
and his testimony should be excluded. See Lippe, 288 B.R. at 698 (emphasis in original).
As for Plaintiffs’ claim that “experts routinely provide testimony regarding trends based
on experience rather than data” (Opp., at 23), the two cases Plaintiffs cite do not support that
position. In fact, both of those cases involved expert testimony that was based on theories that
could be tested, and which were supported by extensive facts and data. See Lidle v. Cirrus
Design Corp., No. 08 Civ. 1253 (BSJ) (HBP), 2010 WL 2674584, at *6 (S.D.N.Y. July 6, 2010);
Figueroa v. Boston Scientific Corp., 254 F. Supp. 2d 361, 364, 368-69 (S.D.N.Y. 2003).

9

V.

MR. SHATZKIN ADMITTED THAT PLAINTIFFS NEVER ENGAGED IN ANY
BRAND-BUILDING ACTIVITIES.
Finally, in an effort to downplay the importance of Mr. Shatzkin’s admissions that neither

Plaintiffs nor Ibooks, Inc. ever engaged in brand-building activities, and that Mr. Colby is a
“bookstore guy” who is “behind the curve” when it comes to marketing (see Shatzkin Dep., at
172:17-173:3; see also id., 191:18-192:14; 212:17-19; 224:10-16), Plaintiffs argue that “the lack
of [imprint-specific] expenditures for Plaintiffs’ ibooks imprint is thoroughly unremarkable. . . .”
(Opp., at 25.) But Plaintiffs have offered no basis for concluding that courts do, or should, assess
marketing in the publishing industry differently from any other industry and ignore their de
minimis marketing activity. Courts apply the same standards to publishing as they do to any
other industry. See, e.g., Harlequin Enters. Ltd. v. Gulf & W. Corp., 644 F.2d 946, 949-50 (2d
Cir. 1981) (addressing secondary meaning of “Harlequin Presents” cover); Casa Editrice
Bonechi, S.R.L. v. Irving Weisdorf & Co., No. 95 Civ. 4008 (AGS), 1995 WL 528001, at *7-8
(S.D.N.Y. Sept. 6, 1995) (determining strength of guide books’ trade dress); Atl. Monthly Co. v.
Frederick Ungar Publ’g Co., 197 F. Supp. 524, 528-30 (S.D.N.Y. 1961) (finding ATLANTIC
had achieved secondary meaning as an imprint for books). While Plaintiffs argue that they
should be excused from being judged by their lack of advertising expenditures, the law holds
otherwise. See Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339, 349 (2d Cir. 1998) (holding
that if the owner of a mark purposefully does not engage in advertising activities, that fact
weighs against finding secondary meaning).
CONCLUSION
Mr. Shatzkin’s Report and opinions, and testimony, evidence or argument relating
thereto, should be excluded.

10

Date: February 5, 2013

Respectfully submitted,
s/ Dale M. Cendali
Dale M. Cendali
Claudia Ray
Bonnie L. Jarrett
KIRKLAND & ELLIS LLP
601 Lexington Avenue
New York, New York 10022
Tel: [phone]
Fax: [phone]

Perry J. Viscounty
LATHAM & WATKINS LLP
140 Scott Drive
Menlo Park, CA 94025
Tel: [phone]
Fax: [phone]

Jennifer L. Barry
LATHAM & WATKINS LLP
600 West Broadway, Suite 1800
San Diego, CA 92101-3375
Tel: [phone]
Fax: [phone]
ATTORNEYS FOR DEFENDANT

11