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

Filing 172

DECLARATION of Mary Mazzello in Opposition re: 77 MOTION to Preclude the Testimony of Defendant's Rebuttal Expert Witness Stephen M. Nowlis., 73 MOTION to Preclude the Testimony of Defendant's Expert Witness E. Deborah Jay.. Document filed by Apple Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Tab - Colby Dep, # 6 Tab - Jacoby Dep, # 7 Tab - Jay Dep, # 8 Tab - McDonald Dep, # 9 Tab - Nowlis Dep)(Cendali, Dale)

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

No. 11-cv-4060 (DLC)

APPLE, INC.,
Defendant.
-----------------------------X
VIDEOTAPED DEPOSITION OF E. DEBORAH JAY,
Ph.D, taken by Plaintiffs, pursuant to Agreement, at
the offices of Quinn Emanuel Urquhart & Sullivan
LLP, 51 Madison Avenue, New York, New York, on
Friday, November 30, 2012, commencing at 9:45 a.m.,
before Chandra D. Brown, a Registered Professional
Reporter and Notary Public within and for the State
of New York.

Job No: 27813

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E.D. Jay - 11/30/12

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received permission or approval to put out that

3

product.

4

Q

And how about affiliation confusion?

5

A

I believe, as measured in an Eveready

6

format, that they would believe that two

7

products are -- come from the same source, that

8

the makers, or the source of two products is

9

related or they come from -- so if you go to

10

the classic -- I ask the classic question,

11

sometimes described as the gold Standard, the

12

question in the Eveready where you ask

13

respondents were shown, I think they were lamps

14

and mini light bulbs, or actually two surveys

15

in the Union Carbide case, and they were asked

16

to name any other products put out by the

17

concern that put out the product that they were

18

shown.

19

So that's effectively the same question

20

that I asked to find out whether there was an

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affiliation.

22

Union Carbide, and supplemented them with an

23

additional question which Professor McCarthy

24

sometimes refers to as the standard format

25

where you augment the Union Carbide formulation

So I asked the questions asked in

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with one additional question about approval or

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sponsorship.

4

permission or approval is an easier term, are

5

easier terms for respondents to understand.

And I believe certainly

But, effectively, the approach I did

6
7

blends the well-established, repeatedly

8

reaffirmed formulation from the Union Carbide

9

case and augments it with an additional

10

question which Professor McCarthy describes as

11

the standard format for likelihood of confusion

12

surveys.

13

Q

14

affiliation is really almost product

15

affiliation, affiliation of the one product

16

with some other brand or product?

So is it your understanding, then, that

MS. CENDALI:

17

Objection to form.

18

Objection.

19

A

20

come from the same source and, therefore, they

21

are affiliated.

22

credited in the Union Carbide:

23

from the same source as "Murder Through the

24

Ages"; do iPods come from the same source as

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"The Stars My Destination."

No.

The issue is whether two products

And that was the formulation
Do iPads come

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her survey on an iPhone, for example, which

3

would lead to an impermissible side-by-side

4

comparison.

5

know the answers to those questions.

6

Q

7

used?

8

A

9

Complaint specifically said that the books

But I don't know, I just don't

How did you select the stimuli that you

In part based on the Complaint.

So the

10

listed a number of books and indicated that

11

they were sold, or a number of -- I think the

12

Complaint talked about over a thousand

13

paperback and hardback books, and that they are

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sold on the Amazon and Barnes & Noble website.

15

I actually tried to find some of the

16

titles listed in the Complaint in various

17

bookstores and could not find them.

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great book store in Menio Park, if you're ever

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there, Kepler's, a fabulous book store.

20

There's also Books, Inc.

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different bookstores, to the extent there were

22

brick-and-mortar bookstores, and was not able

23

to find -- I looked for the titles and -- but

24

what I was aware of is that the books were sold

25

on Amazon and -- on the Amazon website and the

There is a

I went to a number of

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Barnes & Noble website.
So then I did various searches actually

4

with the iBooks and various permutations of the

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imprint.

6

most hits, as it were, on the capital "I",

7

lowercase "books," Inc., and then all lowercase

8

"ibooks incorporated," and so -- and I also

9

sorted -- if you do searches on the various

And then I -- so I saw that I got the

10

websites, you can sort -- after you search on

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iBooks, for example, or iBooks Inc., you can

12

sort by relevant popularity, best seller.

13

So among the iBooks imprint, books that

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have the iBooks imprint, I was looking for

15

popular books and books that were, as I said,

16

not necessarily bestsellers in the publishing

17

industry, but bestsellers among the books that

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plaintiffs published.

19

So I did those searches, plus I also -- so

20

these books, at the time that I did the survey,

21

were among the most popular or the bestsellers

22

among those books published by plaintiffs.

23

They used the imprint the same way it was used

24

in the Complaint or the way it was used most

25

often on those websites.

And, in fact, one of

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the books was a book that was mentioned in the

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Complaint.

4

Yakubowski or Jakubowski, "Murder Through the

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Ages, and his anthology was specifically

6

mentioned in the Complaint.

I don't know whether it's

So I considered a lot of factors, but the

7
8

most important was to show the book, how it

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is -- appears when it's -- when you're deciding

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whether to purchase it on either the Barnes &

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Noble or on the Amazon websites.

12

Q

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be?
Is it an advertisement, an offer of sale;

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15

What would you describe your stimulus to

is there a noun that you would use?
MS. CENDALI:

16

Objection.

17

A

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point of purchase when you're purchasing a book

19

on the Internet from the Amazon or the Barnes &

20

Noble website.

21

the point of purchase.

22

Q

23
24
25

It's exactly what you would see at the

That's what you would see at

Okay.
In your -- in the instructions in your

study, I think you describe it as a web page.
Is that right?
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people who purchased digital books tend to be

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purchasers of a lot of books, and the majority

4

of them also purchase hardback and paperback

5

books.

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be virtually the same had they been showed a

7

web page for a digital book.

8
9

And the stimulus they would see would

I do find it completely unsupported that
Professor Jacoby claims that somehow purchasers

10

of digital books would be more likely to be

11

confused, because it doesn't appear that he's

12

read a lot about readers of digital books.

13

Research Center has done extensive research,

14

and people who read digital books read more

15

books, on average, and they tend to purchase

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and read books in multiple forms and not just

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single forms.

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PEW

So if I were to hypothesize, I would say

19

that readers of digital books are more

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sophisticated.

21

certainly includes people who read digital

22

books because the majority of people who read

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digital books also purchased hardcover and

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softcover books.

25

they would be thinking about books, it's clear

And, regardless, my universe

And so to the extent that

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hardcover or softcover books.
How about the converse; have you seen data

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4

showing what the percentage of people who buy

5

hardcover and softcover books, what percentage

6

of those also buy digital books?

7

A

8

buying books.

9

have shown that about 72 percent of adults

You can just look at the universe for
And I believe the recent surveys

10

purchased a hardcover or softcover book in the

11

last 12 months.

12

hardcover and softcover books.

13

17 percent of adults purchased digital books.

14

And based on data I've seen, is about

15

two-thirds of the people who purchase digital

16

books have also, or read softcover and

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hardcover books.

18

So there's a large market for
About

But if you're going to the universe of

19

book buyers, no question, the largest universe

20

for books are people who buy hardcover and

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softcover books.

22

hardcover and softcover books do not buy

23

digital books, but most people who buy digital

24

books also buy hardcover and softcover books.

25

So many people who buy

So to the extent the universe includes
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450 Seventh Avenue - Ste 500, New York, NY 10123 [phone]

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people who buy hardcover and softcover books,

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it would include people who buy digital books.

4

A lot of people would not buy digital books,

5

but that's merely because that's what the

6

universe is.

7

to the majority of people who buy books in the

8

United States, it is hardcover and softcover

9

books.

If you want to project your data

Interestingly, if -- purchasers of

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11

digital, or people who have Apple products were

12

more apt to be confused.

13

some differences by age, but yet young people

14

were no more apt to mention Apple or an Apple

15

product than were middle-aged adults and,

16

rather than saying "older," let's just say

17

mature adults, and that difference simply did

18

not exist.

I would have expected

So I think I am ready for a break now.

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20

Q

Just one final question.

21

A

Sure.

22

Q

The PEW data, is that referenced anyplace

23

in your report?

24

A

25

No.

It's not referenced in my report.

I am a reader of PEW data.

As I testified

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books were the bestsellers, you used sales data

3

from Barnes & Noble and Amazon.com respectively

4

for each stimulus?

5

A

6

a sort based on bestseller, yes.

7

Q

10

Okay.
On your stimuli, you never called

8
9

Well, however they determined when you do

respondents' attention to the iBooks name, did
you?

11

MS. CENDALI:

Objection.

12

You can answer.

13

A

14

didn't focus respondents' attention on any

15

particular part of the page.

16

recall from the Louie Vuitton-Gucci case, that

17

a survey was specifically excluded in the

18

Second Circuit where -- no, it was not Gucci --

19

Louie Vuitton-Dooney & Burke, where the survey

20

done by, I believe, Mr. Reitter, R-E-I-T-T-E-R,

21

where the ad showed respondents a Coach purse,

22

pointed at the name, and then asked who made or

23

put out the purse.

24

considered by Judge Schiendlin.

25

As is proper in a trademark survey, we

As you might

That was excluded -- was

If my memory is correct, it's been a long
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450 Seventh Avenue - Ste 500, New York, NY 10123 [phone]

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day, but I believe that that would be entirely

3

inappropriate.

4

survey in a trademark like confusion,

5

respondents' attention on any particular

6

portion of the product, of a label, of a page.

7

You do not focus, when you do a

Rather, as we instructed, and I want to

8

get the instructions clear, we said we wanted

9

to show respondents a page in Instruction C.

10

I'm looking at deposition Exhibit 1, and it's

11

Appendix B.

12

So we showed respondents the page.

We

13

asked people -- we told people:

14

going to show you concerns a book sold on the

15

Amazon.com website.

16

the keyboard or mouse to look at or browse this

17

page the way you normally do when you are

18

deciding whether to buy a book.

19

The page I'm

We told respondents to use

We told them to take as long as they would

20

like to look at or browse this page, and then

21

we told them we were asking them questions

22

about the book described on the page.

23

So we did not direct respondents'

24

attention to the top of the paper, the bottom

25

of page, any particular portion of the page.
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450 Seventh Avenue - Ste 500, New York, NY 10123 [phone]

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We allowed respondents to look at or browse the

3

page the way they normally do when they are

4

deciding whether to buy a book.
To do otherwise would be leading, would be

5
6

inappropriate, would be a reading test, and it

7

has been -- such methodologies would be

8

inappropriate.

9

marketplace.

You want to replicate the

10

Q

11

"I would like to ask you a few questions about

12

the book described on the page," and then it

13

goes on.

14

In Instruction J, the instruction reads:

Did you consider that instruction -- did

15

you consider a version of that instruction

16

perhaps that would have simply read:

17

would like to ask you a few questions about the

18

page from the Amazon.com website?

19

Now I

It seems as though your other instructions

20

reference the page.

And here, plainly the word

21

"page" is there as well.

22

with that.

23

asking a few questions about the book.

24

the first time in the instructions that you

25

kind of bring respondents in to the book

I'm not quibbling

But you describe the questions as
This is

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companies named their camels Niles.

3

different than the current case.

4

That's

same case.

It's not the

Apple does not publish digital books, and

5
6

Apple does not publish hardcover or softcover

7

books, and I am not aware that plaintiffs make

8

computers or software for e-readers that allows

9

you to create or modify books.

10

Q

Your testimony, however, was that it's

11

never proper or appropriate, no matter what the

12

products or what the context, to focus

13

respondents' attention on a particular element

14

of the stimulus.

15

Wasn't that right?

16

MS. CENDALI:

Objection.

17

A

I don't remember my exact testimony.

I

18

know the last question in this survey, I asked

19

people -- I've only done that once, I've never

20

done it again that I can recall -- what the

21

name Niles means to you.

22

it was the name of the product.

23

focus people on anything when I asked the

24

source, sponsorship, or affiliation questions

25

in that survey, and I didn't do it in the

And people said that
But I did not

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survey in this case.
So I was talking about the source,

4

sponsor, and affiliation questions that are the

5

standard questions that I normally ask.

6

ask and I didn't find the information

7

particularly useful in that case.

8

certainly after that case there was the Louie

9

Vuitton-Dooney & Burke case.

10

I did

And

And so, again, pointing at the name on the

11

product was considered inappropriate.

12

not -- I don't recall doing that since.

13

regardless, when I asked the source, sponsor,

14

and affiliation, I don't remember all the exact

15

questions I asked, I did not ask, when I asked

16

people who made or put out the product, ask

17

them to look at any particular part of the

18

product.

19

I have
But

And when I showed respondent the name

20

Niles, it was on the animal itself.

Unlike

21

showing the name e-books, that's not on any --

22

or iBooks -- on any product whatsoever.

23

the last question was not the source, sponsor,

24

or affiliation question that -- it's different

25

because it's a different product, and there the

But

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issue really related to whether Niles was the

3

name of the camel or the source of the camel.

4

And clearly the source, sponsor, and

5

affiliation questions did not focus respondents

6

on the name Niles in that survey.

7

entirely consistent with the way I have asked

8

the source, sponsor, and affiliation questions

9

in this case, and in other cases that have been

And it was

10

credited in Lanham Act cases.

11

Q

12

of your testimony in Peaceable Planet, which is

13

Exhibit 6.

14

If I could call your attention to Page 15

And also, just so the record is clear, it

15

seems to me that this is actually your direct

16

examination in court.

17

deposition but appears to be part of the court

18

transcript.

19

that.

20

So this is not a

Just so the record is clear on

MS. CENDALI:

Do we think this was from

21

2001, or you don't have a date for the court

22

testimony?

23
24
25

MS. BOGDANOS:

I do not have a date for

the court testimony.
MS. CENDALI:

But it says -- do you think

DAVID FELDMAN WORLDWIDE, INC.
450 Seventh Avenue - Ste 500, New York, NY 10123 [phone]