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

Filing 75

MEMORANDUM OF LAW in Support re: 73 MOTION to Preclude the Testimony of Defendant's Expert Witness E. Deborah Jay.. Document filed by Ipicturebooks LLC, J.Boyston & Company, J.T. Colby & Company, Inc., Publishers LLC. (Chattoraj, Partha)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
____________________________________
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Plaintiffs,
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-against)
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APPLE INC.,
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Defendant.
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____________________________________)
J.T. COLBY & COMPANY, INC. d/b/a/
BRICKTOWER PRESS, J. BOYLSTON &
COMPANY, PUBLISHERS LLC and
IPICTUREBOOKS LLC,

Case No. 11 Civ. 4060 (DLC)

MEMORANDUM OF LAW IN SUPPORT OF PLAINTIFFS’ MOTIONS TO EXCLUDE
THE TESTIMONY, INCLUDING AFFIDAVITS, DECLARATIONS, AND REPORTS,
OF (1) DEFENDANT’S EXPERT WITNESS E. DEBORAH JAY AND
(2) DEFENDANTS’ REBUTTAL EXPERT STEPHEN M. NOWLIS

ALLEGAERT BERGER & VOGEL LLP
111 Broadway, 20th Floor
New York, NY 10006
[phone]

TABLE OF CONTENTS
Page
PRELIMINARY STATEMENT .....................................................................................................1
ARGUMENT ...................................................................................................................................4
I.

THE JAY AND NOWLIS SURVEYS ARE SO FLAWED AS TO BE
UNRELIABLE, IMMATERIAL, AND INADMISSIBLE .................................................6
A.

The Jay Survey Is Fatally Flawed ............................................................................6
1.
2.

The Jay Survey’s Permission Question Was Inappropriate .......................12

4.

The Jay Survey Used Improper Stimuli .....................................................13

5.

II.

The Jay Survey Does Not Properly Measure for Confusion As To
Company Affiliation ....................................................................................9

3.

B.

The Universe in the Jay Survey Is Improperly Narrow ...............................6

The Jay Study Failed To Account For Post-Sale Confusion .....................15

The Nowlis Survey Is Similarly Fatally Flawed ....................................................16

THE COURT SHOULD PRECLUDE NOWLIS FROM SERVING AS AN
EXPERT AND EXCLUDE THE NOWLIS REPORT AS UNTIMELY AND
PREJUDICIAL ..................................................................................................................19
A.

Nowlis Is Not Qualified As An Expert ..................................................................19

B.

The Nowlis Survey Should Be Excluded Because it Constitutes Improper
Rebuttal and Was Not Timely Submitted as a Direct Expert Survey ....................21
1.

The Nowlis Survey Is Not Proper Rebuttal to Dr. McDonald’s
Survey ........................................................................................................21

2.

The Nowlis Survey Was Not Timely Disclosed and Should Be
Excluded ....................................................................................................23

CONCLUSION ..............................................................................................................................24

i

TABLE OF AUTHORITIES
Page
Cases
Baker v. Urban Outfitters, Inc.,
254 F. Supp. 2d 346 (S.D.N.Y. 2003)........................................................................................6
Big Dog Motorcycles, L.L.C. v. Big Dog Holdings, Inc.,
402 F. Supp. 2d 1312 (D. Kan. 2005) ........................................................................................7
Conopco, Inc. v. Cosmair, Inc.,
49 F. Supp. 2d 242 (S.D.N.Y. 1999)........................................................................................13
Daubert v. Merrell Dow Pharmaceuticals, Inc.,
509 U.S. 579 (1993) ...............................................................................................................4, 5
Ebbert v. Nassau County, No. CV 05-5445,
2008 WL 4443238 (E.D.N.Y. Sept. 26, 2008) ......................................................19, 22, 23, 24
First Years, Inc. v. Munchkin, Inc.,
575 F. Supp. 2d 1002 (W.D. Wis. 2008) .................................................................................24
Gen. Elec. Co. v. Joiner,
522 U.S. 136 (1997) ...................................................................................................................4
Gucci America, Inc. v. Guess?, Inc.,
831 F. Supp. 2d 723 (S.D.N.Y. 2011)................................................................................12, 16
I.P. Lund Trading ApS v. Kohler Co.,
118 F. Supp. 2d 92 (D. Mass. 2000) .......................................................................................22
John H. Harland Co. v. Clarke Checks, Inc.,
711 F.2d 966 (11th Cir. 1983) .................................................................................................20
Kumho Tire Co. v. Carmichael,
526 U.S. 137 (1999) .............................................................................................................4, 19
Mastercard Int’l, Inc. v. First Nat’l Bank of Omaha, Inc.,
No. 02-CV-3691, 2004 WL 326708 (S.D.N.Y. Feb. 23, 2004).......................................5, 6, 13
Medisim Ltd. v. BestMed LLC,
861 F. Supp. 2d 158 (S.D.N.Y. 2012)........................................................................................5
Nimely v. City of New York,
414 F.3d 381 (2d Cir. 2005).......................................................................................................5
Peaceable Planet v. Ty, Inc.,
No. 01-cv-7350, 2002 WL 33004467 (N.D. Ill. Oct. 8, 2002) ................................................14
Plumley v. Mockett,
836 F. Supp. 2d 1053 (C.D. Cal. 2010) .............................................................................22, 24

ii

Prince Mfg., Inc. v. Bard Int’l Assocs., Inc., No. CIV 88-3816,
1988 WL 142407 (D.N.J. Dec. 22, 1998) ................................................................................20
Schering Corp. v. Pfizer Inc.,
189 F.3d 218 (2d Cir. 1999)) .....................................................................................................6
Simm v. Louisiana State Bd. of Dentistry, No. CIV.A 01-2608,
2002 WL 257688 (E.D. La. Feb. 22, 2001), aff’d 57 F. App’x 212 (5th Cir. 2003) ...............20
Stagl v. Delta Air Lines, Inc.,
117 F.3d 76 (2d Cir. 1997).......................................................................................................19
Starbucks U.S. Brands, LLC v. Ruben,
78 U.S.P.Q. 2d 1741, 2006 WL 402564 (T.T.A.B. Feb. 9, 2006) ...........................................11
Sterling Drug, Inc. v. Bayer AG,
792 F. Supp. 1357 (S.D.N.Y. 1992).........................................................................................12
Sterling Drug, Inc. v. Bayer AG,
14 F.3d 733 (2d Cir. 1994).........................................................................................................7
THOIP v. Walt Disney Co.,
690 F. Supp. 2d 218 (S.D.N.Y. 2010)........................................................................................6
Troublé v. Wet Seal, Inc.,
179 F. Supp. 2d 291, 308 (S.D.N.Y. 2001)........................................................................13, 20
U.S. v. Williams,
506 F.3d 151 (2d Cir. 2007).......................................................................................................5
Union Carbide Corp. v. Ever-Ready, Inc.,
531 F.2d 366 (7th Cir. 1996) .....................................................................................................9
Universal City Studios, Inc. v. Nintendo Ltd.,
746 F.2d 112 (2d Cir. 1984).......................................................................................................8
Rules / Statutes
15 U.S.C. § 1125(a)(1)(A) .........................................................................................................9, 11
Fed. R. Civ. P. 26(a)(2)(C)(ii)........................................................................................................22
Fed. R. Civ. P. 37(c)(1) ..............................................................................................................4, 24
Fed. R. Evid. 401 .............................................................................................................4, 5, 17, 21
Fed. R. Evid. 402 ................................................................................................................... passim
Fed. R. Evid. 403 ................................................................................................................... passim
Fed. R. Evid. 702 ................................................................................................................... passim

iii

Other Authorities
Robert M. Groves et al., Survey Methodology 94 (2004) ..............................................................20
Leslie Kish, Survey Sampling (1965).............................................................................................20
6 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 32:174 ....9, 10, 11, 20
Lee Rainie et al., The Rise of E-Reading (Pew Research Ctr. 2012) .........................................8, 17
Shari Seidman Diamond & Jerre B. Swann, Trademark and Deceptive Advertising
Surveys: Law, Science and Design (2012) ...............................................................................10

iv

Plaintiffs J.T. Colby & Company, Inc. d/b/a Bricktower Press, J. Boylston & Company,
Publishers LLC and iPicturebooks, LLC (collectively, “Colby”) submit this memorandum of law
in support of their motions to exclude the testimony of E. Deborah Jay (“Jay”) and Stephen M.
Nowlis (“Nowlis”), including any affidavits, declarations, or reports proffered by Defendant
Apple Inc. (“Apple”) for all purposes, including trial.1
PRELIMINARY STATEMENT
In its proffering of the testimony of Jay and Nowlis, Apple has chosen to follow a
peculiar and improperly offbeat path. Apple seeks to rely on two separate surveys that purport to
measure the exact same thing—namely, to demonstrate that (purportedly) there is no likelihood
of confusion between Colby’s “ibooks”/”iBooks”-imprint digital books and Apple’s “iBooks” ereader and digital books software—yet both fail deliberately and/or by dint of inexperience to
target the issues at the heart of this case and to account for the unique nature of books as
consumer products (and of publishing imprints, such as ibooks/iBooks, as trademarks). These
surveys (the “Jay Survey” or “Jay Study” and the “Nowlis Survey” or “Nowlis Study,”
respectively) are not merely similar to each other—rather, the Nowlis Survey, presented under
the guise of a “rebuttal,” simply mimics Jay’s questions and is nothing more than a backdoor
attempt to rehabilitate the irrevocably flawed Jay Survey by using a different stimulus.2 Worse,
in an attempt to subvert the scheduling orders entered in this action on May 2 and September 7,
2012, the Nowlis Survey was prejudicially untimely without good cause. Nowlis’s “fixes” to the

1

In the interest of economy and to avoid duplicative briefing, Colby submits this joint brief in
support of both its motion to exclude the testimony of Jay and its motion to exclude the
testimony of Nowlis. Because Nowlis’s “rebuttal” survey utilized the questions and some of the
methodology designed and used by Jay, many of the fatal flaws in the Jay Survey are also
present in the Nowlis Survey, as discussed further below. See infra Part I.B.

2

In all other respects, the Jay and Nowlis Surveys are materially the same.

1

Jay Survey merely constituted a new affirmative survey, not a rebuttal to any of Plaintiffs’
experts. The sham nature of this “rebuttal” designation is made abundantly clear by the fact that
Nowlis fielded his survey before Colby served its affirmative expert reports. Clearly Nowlis
cannot have designed his survey to rebut a survey which he had not yet been seen. Therefore,
the Nowlis Survey was in no way a “rebuttal,” and should have been disclosed, if at all, on
September 17, 2012, along with the parties’ other case-in-chief experts. Such gamesmanship
should not be tolerated by this Court.
In any event, both surveys suffer from such fatal design flaws and so miss the mark in
attempting to reflect the issues presented by this case that they cannot offer any reliable
assistance to the finder of fact. They both fail to target perceptions as to the “ibooks” name, or to
capture them in a realistic manner modeled on how consumers would meaningfully encounter
the imprint name. Specifically, the Jay Survey: (1) uses an improper universe that was not
targeted to those e-reading consumers who represent the most highly relevant digital intersection
of Colby’s and Apple’s worlds; (2) fails to test for the affiliation confusion at issue in this case;
(3) does not properly measure sponsorship confusion in the publishing context; (4) uses an
improper stimulus; and (5) takes no account of post-sale confusion. The Nowlis Survey, which
is but a warmed-over, barely modified rehash of the Jay Survey, also (1) utilizes an improper
universe; (2) fails to test for true affiliation confusion; (3) does not measure sponsorship
confusion arising from the imprint name; and (4) does not represent post-sale confusion.3 Each
one of these flaws alone would be sufficient to exclude either survey and any opinions and
conclusions based on the surveys.

3

Additional flaws include, for Jay, an improper stimulus and control, and for Nowlis, a flawed
control.

2

Moreover, Nowlis is not qualified to critique, much less conduct, a likelihood-ofconfusion survey. Perhaps because of his inexperience, Nowlis did not design his own rebuttal
survey, but instead replicated the Jay Survey’s design, with the only material change being the
use of a different stimulus. Also, based on his report and testimony, Nowlis apparently does not
recognize that re-running the Jay Survey with no relationship whatsoever to the language or
methodology of Dr. Susan McDonald’s survey (the “McDonald Survey”) does not constitute a
proper rebuttal of Dr. McDonald. Because Nowlis’s opinions in this matter are not informed by
relevant experience, this Court should exclude his testimony in full.
As set forth above, while the Nowlis Study was submitted as part of a rebuttal report, it is
nothing more than an affirmative-expert survey in rebuttal clothing.

Though Nowlis was

charged with the task of rebutting Plaintiffs’ expert, Dr. McDonald, he could not tailor his study
to respond to the McDonald Survey, as he fielded his own survey, on which his report was based,
prior to Apple’s receipt of the McDonald Survey and Dr. McDonald’s accompanying report
(“McDonald Report”).

Instead, Nowlis simply re-ran the Jay Survey (with one minor

modification), failing to control for or respond to any of the alleged defects in the McDonald
Survey. In short, the Nowlis Survey does not speak directly to the McDonald Survey, and is
simply a backdoor attempt to introduce expert evidence that should and could have been
disclosed, if at all, during the initial expert phase, to avoid prejudice to Plaintiffs.

This

untimeliness provides a separate and independent reason to exclude the Nowlis Survey and
Nowlis’s testimony.

3

For these reasons, the Court should (1) exclude the entirety of Jay’s testimony, including
any opinions presented in her report (the “Jay Report” or “Jay Rep.”)4 as prejudicial; (2) exclude
the entirety of Nowlis’s testimony, including any opinions presented in his report (the “Nowlis
Report” or “Nowlis Rep.”)5 based on his lack of qualifications; and also (3) exclude the Nowlis
Survey and any of Nowlis’s testimony relating to it as both fatally flawed and untimely, under
the controlling scheduling orders entered in this action. See Fed. R. Evid. 401, 402, 403, 702
(“Rule 401,” “Rule 402,” “Rule 403” and “Rule 702,” respectively); see also Fed. R. Civ. P.
26(a)(2)(D)(ii), 37(c)(1).
ARGUMENT
The Supreme Court has exhorted trial courts to scrutinize expert testimony and to exclude
unreliable expert evidence. Kumho Tire Co. v. Carmichael, 526 U.S. 137, 147-49 (1999); Gen.
Elec. Co. v. Joiner, 522 U.S. 136, 142 (1997). Under Daubert v. Merrell Dow Pharmaceuticals,
Inc., 509 U.S. 579 (1993), district courts must act as “gatekeepers” with respect to expert
testimony in order to ensure that speculative or unreliable expert testimony does not reach the
fact finder.

The guidelines from Daubert are equally applicable to all expert testimony,

including that based on scientific, technical, or other specialized knowledge. See Kumho Tire,
526 U.S. at 147-49.
Under Rule 702, a witness “who is qualified as an expert by knowledge, skill, experience,
training or education” may testify in the form of an opinion regarding technical or other
specialized knowledge when such testimony will “help the trier of fact to understand that

4

Declaration of Claudia T. Bogdanos in Support of Plaintiff’s Motions to Exclude the
Testimony of (1) Defendant’s Expert Witness E. Deborah Jay and (2) Defendant’s Rebuttal
Expert Witness Stephen M. Nowlis (“Bogdanos Decl.”), Ex. A.

5

Bogdanos Decl., Ex. B.

4

evidence or to determine a fact in issue.” Rule 702. In addition, Rule 702 requires that: (1) the
testimony is based on sufficient facts or data; (2) the testimony is the product of reliable
principles and methods; (3) the expert has reliably applied the principles and methods to the facts
of the case. Id.; see also Nimely v. City of New York, 414 F.3d 381, 396-97 (2d Cir. 2005)
(“[W]hen an expert opinion is based on data, a methodology, or studies that are simply
inadequate to support the conclusions reached, Daubert and Rule 702 mandate the exclusion of
that unreliable opinion testimony.”) (internal quotation marks and citation omitted). In other
words, the expert testimony must be both rigorous and reliable, and the burden is on the
proponent of this testimony to establish that it satisfies the requirements of Rule 702. See U.S. v.
Williams, 506 F.3d 151, 160 (2d Cir. 2007).
In addition to satisfying Daubert’s reliability requirement, expert evidence must also
satisfy the basic standards of relevance set forth in the Federal Rules. See Rules 401, 402, 403.
Rule 402’s explicit statement that “[i]rrelevant evidence is inadmissible” is echoed in Daubert’s
requirement that the expert evidence be “relevant to the task at hand.” Daubert, 509 U.S. at 597;
see also Medisim Ltd. v. BestMed LLC, 861 F. Supp. 2d 158, 165-66 (S.D.N.Y. 2012). Together,
Rules 402 and 702 operate to weed out expert testimony that is not sufficiently tied to the facts of
the case in order to assist the fact finder in the resolution of factual disputes. See Daubert, 509
U.S. at 587, 597. In addition, Rule 403 works to exclude evidence any relevancy of which is
outweighed by its potential to prejudice, mislead, or confuse the finder of fact. See Rule 403.
And because of the particular danger that expert evidence—including expert surveys—will
mislead the jury, “a court weighing admissibility under Rule 403 exercises more control over
experts than lay witnesses.” Mastercard Int’l, Inc. v. First Nat’l Bank of Omaha, Inc., No. 02CV-3691, 2004 WL 326708, at *7 (S.D.N.Y. Feb. 23, 2004) (Cote, J.). Apple bears the burden

5

of establishing by a preponderance of proof that the expert testimony it seeks to offer is
admissible. Baker v. Urban Outfitters, Inc., 254 F. Supp. 2d 346, 353 (S.D.N.Y. 2003). It
cannot meet that burden here.
I.

THE JAY AND NOWLIS SURVEYS ARE SO FLAWED AS TO BE
UNRELIABLE, IMMATERIAL, AND INADMISSIBLE
Jay and Nowlis should not be permitted to testify regarding their respective studies,

because their opinions, based on irredeemably flawed surveys, are consequentially meaningless
and irrelevant to the issues in this case. When assessing the validity and reliability of a survey,
courts consider various criteria, including, among others, whether: (1) the proper universe was
examined and a representative sample was drawn from that sample; (2) the survey’s
methodology and execution were in accordance with generally accepted standards of objective
procedure and statistics in the field of such surveys; (3) the questions were leading or suggestive;
and (4) the person conducting the survey was a recognized expert. See THOIP v. Walt Disney
Co., 690 F. Supp. 2d 218, 230-31 (S.D.N.Y. 2010); Mastercard Int’l., 2004 WL 326708, at *8
(citing Schering Corp. v. Pfizer Inc., 189 F.3d 218, 225 (2d Cir. 1999)).
The Jay and Nowlis Surveys fail such judicial assessment—both, inter alia, examined an
incomplete, overly narrow universe and did not measure post-sale affiliation confusion and
sponsorship confusion, as these issues pertain to the facts of this case. The Jay Survey also
employed improper and distracting stimuli. These errors render the Jay and Nowlis Surveys—
and any testimony based on these surveys—wholly unreliable and incapable of providing any
meaningful assistance to the finder of fact, and the Court accordingly should exclude them. See
Rules 402, 702.
A.

The Jay Survey Is Fatally Flawed
1.

The Universe in the Jay Survey Is Improperly Narrow

6

The Jay Survey is fundamentally flawed because its respondents were selected from a
universe that is not representative of the potential customers who are likely to be confused.
Where, as here, a survey is testing for reverse confusion, the survey respondents should be
selected from the universe of prospective customers of the senior user’s mark. See Sterling
Drug, Inc. v. Bayer AG, 14 F.3d 733, 741 (2d Cir. 1994). In addition, survey respondents must
“adequately represent the opinions which are relevant to the litigation.” Big Dog Motorcycles,
L.L.C. v. Big Dog Holdings, Inc., 402 F. Supp. 2d 1312, 1334 (D. Kan. 2005) (citation omitted).
Because the Jay Survey failed to select, or measure or account for the perceptions of, the
appropriate universe, its results are skewed and irrelevant.
In order to qualify for the Jay Study, respondents had to report that they would buy a
paperback or hardcover book from either Amazon.com or the Barnes and Noble website during
the next six months. (Jay Rep. at 16.) Jay never tried to identify or survey potential customers
of Colby’s electronic books. Yet because Colby publishes both digital and print books and
Apple’s product is a digital-book reader software with readable e-books, the real-world
marketplace intersection—and therefore the survey universe most relevant—lies with people
who read digital books.
Not only did Jay fail to select the correct universe, she also failed to provide a means to
extrapolate her survey data to the appropriate e-book-consuming universe. First, because Jay
did not include any follow-up questions probing respondents’ usage, purchase, or awareness of
electronic books, there is no way to determine which of her respondents might be members of
the relevant universe—i.e. readers of digital books. Second, even if the results of the Jay Survey
could be extrapolated to the universe of digital-book consumers using statistical data on the
percentage of print-book consumers who also purchase e-books, when questioned about such

7

data, Jay was unable to provide it.6 Instead, Jay acknowledged that “many people who buy
hardcover and softcover books do not buy digital books, but most people who buy digital books
also buy hardcover and softcover books” and that “[a] lot of people [in her universe] would not
buy digital books.” (Deposition of E. Deborah Jay, November 30, 2012 (“Jay Tr.”),7 144:21-24,
145:4-6.)
In other words, although Jay believes there may be some overlap between consumers of
digital books and print books, she has done no work to quantify how much (if any) overlap
exists.

This failure is particularly critical because the digital space represents the neutral

intersection between Colby’s and Apple’s markets and is a fast and ever-growing marketplace
for book consumption. Lee Rainie et al., The Rise of E-Reading (Pew Research Ctr. 2012) (“Pew
Study”),8 at 4-5, (noting that, while at present print books remain the most prevalent form of
books read, “[t]he prevalence of e-book reading is markedly growing.”); id. at 13 (reporting the
e-book “surge” in concluding that “[a]ll this ferment is changing the way many people discover
and read books”); id. at 23 (“the number of adults reading e-books on any given day has jumped
dramatically since 2010”); see Universal City Studios, Inc. v. Nintendo Ltd., 746 F.2d 112, 118
(2d Cir. 1984) (“To be probative and meaningful . . . surveys . . . must rely upon responses by
6

In an ex post facto attempt to introduce e-reading consumers into her universe, Jay implies
through her deposition testimony that because a large percentage of e-book-reading consumers
also read print books, the converse must necessarily be true: that many print-book readers also
read digital books and that therefore some of her survey respondents must have been e-book
readers. (Jay Tr. 142:20-24 (“[M]y universe certainly includes people who read digital books
because the majority of people who read digital books also purchased hardcover and softcover
books.”); id. 144:25-143:3 (“So to the extent the universe includes people who buy hardcover
and softcover books, it would include people who buy digital books.”).) Jay’s by-extension
assumption is logically incorrect, and her print-book-buying universe does not necessarily
encompass readers of e-books.
7

Bogdanos Decl., Ex. C.

8

Bogdanos Decl., Ex. D.

8

potential consumers of the products in question.”) (internal quotation marks and citation
omitted). Because Jay surveyed an overly narrow universe of putative customers, and has
provided no means by which a finder of fact could even attempt to estimate relevancy, the Jay
Survey is fatally flawed and must be excluded. Rules 402, 702.
2.

The Jay Survey Does Not Properly Measure for Confusion As To
Company Affiliation

The Jay Survey is also irreparably flawed because it failed to ask an appropriate question
to measure for confusion as to company affiliation—the type of confusion most at issue in this
case. Section 43(a) of the Lanham Act prohibits, in part, the use in commerce of a word, term,
name, or symbol, by a person or corporate entity, which “is likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation, connection, or association of such person with another
person.”

15 U.S.C. § 1125(a)(1)(A) (emphasis added).

With corporate parties, affiliation

confusion can be shown by demonstrating that a product’s source company is perceived as
affiliated, connected, or associated with another company.
Survey questions designed to test for Lanham Act affiliation confusion are separate and
distinct from another type of question in which the corporate source can be identified only
through naming its products—especially pertinent to the scenario where the corporate name may
be unknown or unfamiliar to respondents. This variety of question, often referred to as an
Eveready “anonymous-source” question,9 does not address the Lanham Act issue of affiliation
between persons or companies, but rather fleshes out perceptions of source by examining
9

Named for the case in which such a question first gained acceptance, the Eveready format
originated in Union Carbide Corp. v. Ever-Ready, Inc., 531 F. 2d 366 (7th Cir. 1996), as a way
to identify confusion as to the source of the defendant’s (or, in a reverse confusion case, the
plaintiff’s) products. 6 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition
§ 32:174 (4th ed.) (“McCarthy”). The particular “anonymous source” question is used when the
name of that source (but not its identity) was likely not known. Id.

9

product associations. It is not a true affiliation question, designed to capture the Lanham Act’s
prohibition against use suggestive of corporate affiliation, but more aptly an additional sourceconfusion question.10 Yet although a salient issue in this case is whether or not consumers would
be confused as to a company-level affiliation between Plaintiffs and Apple—not whether Apple,
a company known for technology products not books, had “put out” or published the book—the
Jay Survey asked only irrelevant questions designed to investigate product-level source
confusion.
In order to measure confusion as to affiliation, Jay simplistically explained that her
survey’s Series 2 questions “ask[ed] the classic question . . .the gold Standard, the question in the
Eveready . . . [respondents] were asked to name any other products put out by the concern that
put out the product that they were shown. So that’s effectively the same question that I asked to
find out whether there was an affiliation.” (Jay Tr. 66:10-21; see Jay Rep. App’x B, “Consumer
Opinion Survey,” at 4 (listing the Jay Survey questions).) Jay’s Series 2 questions may well be
“classic” anonymous-source confusion questions, 11 but they are no “gold standard” for
affiliation confusion. Instead, they amount to an additional form of source-confusion question
10

Expert commentary setting forth the “anonymous-source,” or product-affiliation, variety of
source-confusion question treat it as a separate question from Lanham Act affiliation, positing
that affiliation and sponsorship questions may permissibly follow the “anonymous source”
question. See Shari Seidman Diamond & Jerre B. Swann, Trademark and Deceptive Advertising
Surveys: Law, Science and Design, 57-58 (2012) (“Swann”) (providing an example of such an
affiliation question); id. at 57 n.30 (distinguishing between confusion as to affiliation and
confusion as to origin or source); 6 McCarthy § 32:174 (presenting the Eveready survey format
as a test for source confusion, with separate and distinct affiliation questions permissibly
following); id. § 32:175 (illustrating that affiliation questions are something other than the who
makes or “puts out” questions).
11

Jay’s Q2a asks “Now, with respect to the company or companies that printed, released, or put
out this book . . .Do you think . . .that they have [or have not] made or put out other things,
besides books.” Q2b asks respondents who answer affirmatively to Q2a, “What else besides
books do you think they have made or put out?” And Q2c-e are designed to determine the
reasons for respondents answers to Q2b. (Jay Rep. App’x B, “Consumer Opinion Survey,” at 4.)

10

and do not properly measure affiliation—itself a separate question that often follows the
source/anonymous-source series. Swann, supra, at 57-58; 6 McCarthy § 32:174.
In fact, Swann suggests an exact formulation of an affiliation question that would have
captured the true affiliation issue here:
“Do you believe that whoever makes or puts out ________:
ONE, has a business affiliation or connection with another company?
TWO, does not have a business affiliation or connection with another company? or
THREE, you don’t know or have no opinion?
[If ONE] With what other company?
Swann, supra, at 57-58; see, e.g., Starbucks U.S. Brands, LLC v. Ruben, 78 U.S.P.Q. 2d 1741,
2006 WL 402564, at *10 n. 32 (T.T.A.B. Feb. 9, 2006) (In survey designed to test confusion as
to affiliation between Starbucks brand and LessBucks Coffee brand, appropriate addition to
Eveready format was “[d]o you think the company that owns this retail establishment is
connected or affiliated with any other company?”).
Jay herself never asked such a question, nor any other question designed to ascertain
whether Colby’s ibooks/iBooks imprint “is likely to cause confusion, or to cause mistake, or to
deceive as to the affiliation, connection, or association of [Colby] with [Apple].” 15 U.S.C. §
1125(a)(1)(A). Had she done so, her survey would have properly probed for affiliations with the
publisher of the book (or whoever else respondents thought “put out” the book),12 rather than

12

Notably, Jay never asked about who published the books depicted in her stimuli, but rather
asked who “printed, released, or put out” the books, despite ibooks/iBooks being identified in
both stimuli as “publisher.” (Jay Rep., App’x B, “Consumer Opinion Survey,” at 3-5 (setting
forth the Jay Survey questions); id. at App’x B, “Website A,” App’x B, “Website X” (showing
ibooks/iBooks listed as a “publisher” in the text of the Jay Survey stimuli).)

11

testing for the source of the book itself.13 Because the Jay Survey did not ask the appropriate
affiliation question, it failed to test for a key form of confusion in this case, where Apple’s
primary business is not as a book publisher. The Court should therefore exclude the Jay Study,
and all related testimony, as irrelevant to the inquiry at hand and consequently prejudicial. Rules
402, 403, 702; cf. Gucci America, Inc. v. Guess?, Inc., 831 F. Supp. 2d 723, 747 (S.D.N.Y. 2011)
(finding survey designed to measure point-of-sale confusion was not admissible on issue of a
different type of confusion); Sterling Drug, Inc. v. Bayer AG, 792 F. Supp. 1357, 1373 (S.D.N.Y.
1992) (minimizing survey evidence where survey questions were not properly drafted to test for
actual confusion).
3.

The Jay Survey’s Permission Question Was Inappropriate

Not mindful of the nature of book publishing, the Jay Survey asked respondents whether
they thought that the company that “printed, released or put out” the book (on the website page
they were shown) had received permission or approval from some other company to print,
release or put out the book. In asking about permission for “print[ing], releas[ing], or put[ting]
out the book,” the question is overly broad, ambiguous, and ill-suited to a content-driven
industry such as publishing. Because so many aspects go into “putting out” a book and because
various content or copyright-related permissions may be required to publish a book, such a
question is not specific enough to test for permissions related to use of the name ibooks/iBooks
(the relevant issue), rather than permissions related to the content of the written work itself.14 As

13

The Jay Study also asked about sponsorship and approval, (Jay Rep., App’x B, “Consumer
Opinion Survey,” at 5), but, as discussed in Section I.A.3 infra, did so without regard to the
nature of books and their written content, rendering the data generated from those questions
meaningless.
14

This misdirection is illustrated by respondent 2188 (in Jay’s iLit control cell) who indeed
identified “Ilit, Inc.” as needing to provide permission—for content-based reasons: “They are
(footnote continued)

12

such, the Jay Survey does not provide any relevant or reliable information on the issue of
sponsorship confusion. Especially when coupled with an inappropriate affiliation question, the
Jay Study’s failure to hone in on or capture impressions of ibooks/iBooks sponsorship renders its
data contextually meaningless and inadmissible. Rules 402, 702. Particularly in view of the
effect that the data from these inapt questions could have on jurors, the Court should exclude the
Jay Survey. Rule 403. See Mastercard Int’l, 2004 WL 326708, at *7 (noting that courts have
more control over experts than lay witnesses, because of the danger that expert testimony can
mislead the jury).
4.

The Jay Survey Used Improper Stimuli

The Jay Survey is further flawed by its use of inappropriate stimuli. Generally, confusion
surveys use stimuli “that directly expose potential consumers to the products or the marks in
question.” Troublé v. Wet Seal, Inc., 179 F. Supp. 2d 291, 308 (S.D.N.Y. 2001); see also
Conopco, Inc. v. Cosmair, Inc., 49 F. Supp. 2d 242, 253-54 (S.D.N.Y. 1999) (finding stimuli
flawed because the pre-launch product, not the for-sale product, was used). Rather than using as
a stimulus an ibooks/iBooks-imprinted print or digital book, or pages therefrom, or asking them
to envision the same, the Jay Survey utilized Amazon or Barnes and Noble product webpages for
copywritten. The author has to sell rights to the book to a publisher.” (Jay Rep., App’x. H, at 8.)
Jay clearly recognized this problem, as she coded for answers relating to approval from the
“author” when tabulating her results. (Jay Rep. App’x U, at 39 (Table 33 ).) However, Jay did
not appropriately code for all content-related permissions—for example, she failed to code for
“writer,” despite the fact that her verbatims indicate she received such responses, (id. App’x. H,
at 4, 6 (IDs 2092, 2147)), and she has recognized that “writer” conveys the same copyright-rights
sensibilities as “author,” (Jay Tr. 190:22-192:10.) Further, because Jay tabulated her permission
data based only on Q3a and Q3b, her tables did not include those respondents whose answers to
Q3a and/or Q3b were not content-related, but whose subsequent answers to Q3c-e indicated
perceptions relating to content. (Jay Rep., at 28-20, App’x U (Tables 33-35).) In addition,
because the Jay Survey did not ask follow-up questions of respondents who indicated that no
permission was needed in response to Q3a, there is no way to identify how many respondents
answered this way because of content-based, not trademark-based, assumptions.

13

Colby’s paperback or hardcover books (“Amazon Stimulus” and “BN Stimulus,” respectively).
(Jay Rep. at 17.) Given that, as Jay admits, her survey asked questions about the books depicted
on the web sites, books (either in print or digital format, in actual or conceptual form) would
have been more appropriate stimuli than internet pages.
Jay’s webpage stimuli are especially problematic because they operated essentially to
conceal the mark at issue amidst a range of extraneous information not seen in a book itself. In
both the Amazon and BN Stimuli, Colby’s ibooks/iBooks mark is in very small print, buried in
the middle of the webpage, and completely divorced from the product that the Jay Survey was
“asking questions about”—the book itself.15 (See Jay Rep. App’x B, “Website A,” “Website
X.”)
Significantly, neither the Amazon Stimulus nor the BN Stimulus displayed the mark in
the format in which it appears on ibooks/iBooks-imprinted books.

The Amazon Stimulus

presents the mark as “Ibooks, inc.,” although Colby has never used a capital-I when using the
mark as an imprint. The BN Stimulus presents the mark as “ibooks, Incorporated,” dwarfing the
“ibooks” portion with the lengthy—and unrepresentative—”Incorporated.”

Both of these

typographies are visually much less similar to Defendant’s “iBooks” than is Plaintiffs’ actual
“ibooks”/”iBooks” usage. By thus failing to replicate, or even approximate, the mark as used in

15

Jay did not even attempt to focus respondents on the imprint name, which roughly 75% of
respondents may never have noticed in the morass of text on the four or six-page website stimuli.
(Jay Rep. at 24 (Table 5).) Jay maintains that her survey did not direct respondents’ attention to
the ibooks name because supposedly doing so is improper. (Jay Tr. 154:3-6 (“[y]ou do not
focus, when you do a survey in a trademark like confusion, respondents’ attention on any
particular portion of the product, of a label, of a page.” [sic]).) However, in previous confusion
surveys, Jay herself has directed respondents to particular and relevant product information.
Report of E. Deborah Jay, Peaceable Planet v. Ty, Inc., No. 01-cv-7350, 2002 WL 33004467
(N.D. Ill. Oct. 8, 2002) (focusing respondents in confusion survey on name of toy printed on
inside of tag).

14

the marketplace, the Jay stimuli generated irrelevant, unreliable, and inadmissible data. Rules
402, 702; see Rule 403.
5.

The Jay Study Failed To Account For Post-Sale Confusion

Further, because the Jay Survey tested for point-of-sale reactions at a particular moment
in time, it does not fully capture the manner in which books and publishing imprints are
encountered in the real world. A survey robotically designed to test on-sale confusion at a set
instant in time fails to take account of the unique manner by which book imprints are observed
by, and become known to, consumers.16 “[T]he value of the brand is created over time by the
experiences readers and consumers have with the published books.” (Shatzkin Rep. at 5-6
(emphasis in original); see Shatzkin Tr. 202:15-20 (“It is my testimony that all brands, that is
author brands, . . . imprint brands, series brands and publishing house brands are the sum total of
awareness created by the books sold and read under those brands.”); id. at 93:8-12 (“consistency
of topic or subject or presentation of some kind”“ gives “meaning [to] a publishing brand”); id.
at 97:6-12; Freese Tr. 105:2-7 (“Basically what happens is, when [an imprint] brand becomes a
16

It is no coincidence that imprints aren’t marketed per se and certainly not in the traditional
ways that potato-chip and shampoo products are advertised and promoted. (Deposition of Mike
Shatzkin, December 4, 2012 (“Shatzkin Tr.”) (Bogdanos Decl., Ex. E) 127:19-128:6 (“Book
publishing companies . . . do not advertise their brands, period. They advertise their books, only
their books, and they mention their brand within the advertising of their books but brand
recognition is based on the cumulative book recognition.”); id. at 202:22 - 203:24; Expert Report
of Mike Shatzkin (“Shatzkin Rep.”) (Bogdanos Decl., Ex. F) at 6 (In publishing, “[a]dvertising
for brand building is virtually non-existent, as is brand-focused marketing.”); id. at 7; see
Shatzkin Tr. 202:15-21 (Consumers’ experiences with books generate brand awareness, and
“[t]here is very, very minimal impact of anything else.”); see also Deposition of Richard Freese,
September 25, 2012 (“Freese Tr.”) (Bogdanos Decl., Ex. G) 106:21-107:2; cf. Deposition of
John T. Colby, Jr., July 18, 2012 (“Colby Tr.”) (Bogdanos Decl., Ex. H) 313:10-11 (Colby’s
“website is designed to help the authors market their own books”).) In the world of publishing,
publishers promote the books—an imprint’s authors and titles—not the imprint name itself.
(See id.) That an imprint’s brand identity comes about through the accretion of consumers’
personal experiences, over time and following their initial purchase of a book under that imprint,
is precisely because imprints are not designed to be recognized in an instant. (Id.)

15

trusted brand and you are looking for something else, you know, if you have read books by that
publisher, that brand, before, you will look at it and say . . . I know that publisher, I like their
books.”); id. at 106:21-107:2 (“[I]f you lock up authors and you have the right authors, the
authors define the brand and then the brand begins to define the new authors.”); id. at 92:593:19; 102:7-107:2.)
The shopping frame of mind that Jay’s survey experiment attempted to replicate ignores
that a book is a post-sale experience. The laboratory of Jay’s on-sale study virtually eliminates
serious consideration of the imprint, because shopping is not how consumers meaningfully
encounter and process publishers’ imprints. It is only after a book has been read and experienced
that the reader may be drawn to learn more about the book, and that certain subtleties, such as the
imprint, come into play. (Id.) A standard shopping scenario, typical of simple consumer-product
purchases, does not do justice to the plethora of post-sale interactions between consumers and
books. See Gucci America, 831 F. Supp. 2d at 745-47 (excluding a point-of-sale survey because
it was irrelevant to the post-sale confusion at issue in the case, where consumers may have been
confused by glimpsing a handbag logo in passing in a post-sale environment). Thus limited, the
Jay Study was inappropriate for the product and garnered incomplete and—in totality—
irrelevant, unreliable and prejudicial results. Rules 402, 403, 702.
B.

The Nowlis Survey Is Similarly Fatally Flawed

Rather than designing his own survey questions and methodology, Nowlis simply
adopted the questions and instructions from Jay’s survey, changing only the stimuli.
Accordingly, the Nowlis Survey has many of the same fatal flaws as the Jay Survey, specifically
(1) an overly narrow universe; (2) improper affiliation questions; and (3) an inapt measure of
permission. Again, any one of these defects is on its own is fatal to the efficacy of the survey,

16

and the Nowlis Survey must thus be excluded for the same reasons as the Jay Survey. Rules 401,
402, 702.
Nowlis’s own admissions regarding these methodological flaws further detract from his
study, as well as from the Jay Survey, which he copied in “creating” his survey:
1.

In straining to defend his/Jay’s overly narrow universe, Nowlis testified,

incorrectly, to an 88% “overlap” between print-book and e-book-reading individuals,
(Deposition of Stephen M. Nowlis, December 14, 2012 (“Nowlis Tr.”) 17 209:18-214:23
(emphasis added).) What the Pew Study actually shows is that 88% of people reading digital
books also read print books, not the converse, which is far less—a distinction which Nowlis fails
to grasp. Pew Study at 1, 3, 4, 8, 19 (finding that 21% of Americans have ever read an e-book
and that 17% of American adults had read an e-book in the December 2010-2011 calendar year).
2.

Defining affiliation confusion as “whether [consumers] think the companies are

affiliated,” (Nowlis Tr. 38:7-8), and acceding to popular recognition of Apple as “a computer
company” not as a book publisher, 18 (id. 45:17, 20, 25; 46:5-6,10,12,14; 240:2-6; 249:7-11),
Nowlis conceded that his/Jay’s Question 2 “affiliation” series asked about “the same company”
as the source, (id. 230:7-8), and measured responses “affiliating a company through its
products,” (id. 232:1-5 (emphasis added); see id. 229-234, 246-247, 246:24-25 – 247:2-7.)
Admitting the near-identity of purpose between the source and his purported “affiliation”
questions, Nowlis acknowledged that an answer to Question 2 “gives more information about

17

Bogdanos Decl., Ex. I.

18

Like Jay, Nowlis testified that the words used in his study “printed, released, and put out”
convey the concept of “publishing,” (Nowlis Tr. 47:20-22; 249:2-6)—a term that he, like Jay,
fastidiously avoided despite (or as he would have it, because of, (id. 91:10-25)) the statement in
his stimulus: “an Original Publication of ibooks, inc.” (Nowlis Rep. at 35.)

17

the products that that company puts out so you would be affiliated through those products.”19
(Id. 247:4-7 (emphasis added).) Expressing a degree of uncertainty, Nowlis stated that it was his
“understanding” that his/Jay’s Question 2 series had been asked in the Eveready case, (id. at
234:3-5), yet acknowledged his belief that another form of affiliation-confusion question exists,
(id. at 234:15-18). Indeed, Nowlis cites Swann with approval numerous times throughout his
report, and Swann himself has proffered an appropriate way of directly asking about affiliation
confusion.

Swann, supra, at 57-58 (suggesting a question as to “business affiliation or

connection”).
3.

Nowlis defined sponsorship confusion, properly, in terms of approval of the mark

at issue: “whether [consumers] thought another company had sponsored the use of this term.”
(Nowlis Tr. 18:18-22.) Yet nowhere in his/Jay’s survey questions are respondents asked about
approval to use the “ibooks” name.
4.

While Nowlis professes that his study applies to post-sale confusion, the plain

language of the instructions in the Nowlis Survey belie his strained claim. The Nowlis Survey
placed respondents in a shopping, on-sale mindset, explicitly instructing them to “look at or
browse this book the way you normally do when you are deciding whether to buy a book.”
(Nowlis Rep. App’x C, “Hardcover Book Survey, Main Questionnaire,” Instruction D (emphasis
added).) Just like the Jay Survey in its over-strict adherence to standard survey constructs, the
Nowlis Survey blindly ignored the relevant post-sale experience that is so meaningful here.

19

Nowlis further testified, when asked whether his study in any way captured the idea of
separate companies perceived by respondents as related because of the trademark used: “No.
That is not what . . . it was designed to test.” (Nowlis Tr. 251:7-8.) This concept of affiliation,
however, is squarely embodied by Section 43 of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A),
and is at the core of this case.

18

II.

THE COURT SHOULD PRECLUDE NOWLIS FROM SERVING AS AN
EXPERT AND EXCLUDE THE NOWLIS REPORT AS UNTIMELY AND
PREJUDICIAL
The Court should exclude Nowlis’ testimony because he lacks relevant, reliable expertise

in consumer-confusion surveys for trademark litigation. See Rule 403, 702. In addition, Dr.
Nowlis’ Report and Survey are improper rebuttals, as evidence by the fact that his survey was
fielded before the report Nowlis alleges to rebut was served, and so should be excluded because
submitted past the date for disclosure of initial expert reports. Ebbert v. Nassau County, No. CV
05-5445, 2008 WL 4443238, at *14 (E.D.N.Y. Sept. 26, 2008) (excluding portions of a rebuttal
report that should have been included in the party’s initial expert reports).
A.

Nowlis Is Not Qualified As An Expert

Nowlis lacks the qualifications necessary to opine on survey measurements of consumer
confusion. Only a “witness qualified as an expert by knowledge, skill, experience, training or
education” may offer expert opinion testimony, and judges must evaluate whether an expert has
“sufficient specialized knowledge to assist the jurors in deciding the particular issues in the
case.” Rule 702; Kumho Tire, 526 U.S. at 156 (internal quotation marks and citations omitted).
By its plain language, Rule 702 does not afford experts unlimited license to testify on any topic.
Rather, courts may exclude the testimony of an expert whose “expertise is too general or too
deficient,” even if his or her proffered testimony is relevant to the case. Stagl v. Delta Air Lines,
Inc., 117 F.3d 76, 81 (2d Cir. 1997).
While Nowlis may have expertise in the general fields of marketing and consumer
psychology, he lacks the specific expertise necessary to conduct or critique surveys designed to
measure consumer confusion. In the trademark context, courts have excluded expert testimony
as to consumer confusion when the purported expert had no experience in confusion
19

determination or measurement. Troublé, 179 F. Supp. 2d at 302-303; see also John H. Harland
Co. v. Clarke Checks, Inc., 711 F.2d 966, 979 n. 23 (11th Cir. 1983). Nowlis admittedly has
scant experience in, or familiarity with, surveying consumer confusion. Most critically, Nowlis
has never had any of his (at most) four prior confusion studies subjected to judicial review or
comment. (Nowlis Tr. at 19:9-16.)
He is also unfamiliar with basic terms of art related to trademark surveys. He was
uncertain of a standard term in the context of mall-intercept surveys: “probability study.”20 (Id.
at 178-189; see id. at 183:10-12 (“I don’t think that’s true” that “there is a technical meaning that
everybody ascribes to it.”).) Cf. Robert M. Groves et al., Survey Methodology 94 (2004) (“When
chance methods . . . are applied to all elements of the sampling frame, the samples are referred to
as ‘probability samples.’”); 6 McCarthy § 32:165 (comparing probability and nonprobability
studies); Leslie Kish, Survey Sampling 20 (1965) (“In probability sampling, every element in the
population has a known nonzero probability of being selected.”). He was similarly unaware of
the meaning of the phrase “puts out,” though it is commonly used in consumer-product,
trademark-confusion studies. (Nowlis Tr. at 48:5-8; see id. at 59:11-60:5 (unable to recall if he
had ever used that term before and unable to name any such study of his that did, while freely
admitting that he looked to the language employed by others, including Jay).)
In addition, he is unable to comprehend basic statistical concepts to such a degree that his
ability to extrapolate from or opine based on any of his survey data is severely undermined.

20

A mall-intercept study is well-recognized to be a non-probability study. See Simm v.
Louisiana State Bd. of Dentistry, No. CIV.A 01-2608, 2002 WL 257688, at *6 (E.D. La. Feb. 22,
2001), aff’d 57 F. App’x 212 (5th Cir. 2003) (describing mall-intercept studies that are not
random probability studies); Prince Mfg., Inc. v. Bard Int’l Assocs., Inc., No. CIV 88-3816, 1988
WL 142407 (D.N.J. Dec. 22, 1998) (describing a mall-intercept survey as a “‘non-probability’
study”).

20

Specifically, as mentioned above, Nowlis improperly conflated the percentage of e-books readers
who also read print books with the percentage of print book readers who also read e-books. He
testified that “[his] interpretation” of the statement that 88% of e-book readers also read printed
books was that there was “an overlap between the two groups of 88%,” and that therefore “we
can extrapolate from [the Nowlis Survey] results [to] people who would also buy electronic
books. (Id. at 211:2-6; 212:17-25.) This is simply wrong—you cannot extrapolate to data about
a given situation based on statistics representative of the converse situation—as anyone with
even a basic understanding of statistical analysis and survey data should know.

Thus

inexperienced and untrained in consumer-confusion surveys, Nowlis’s commentary on and
critique of the McDonald Survey lacks reliability. Moreover, his duping of the survey methods
designed by Jay resulted in invalid, unreliable, and irrelevant conclusions. The Court should
preclude the entirety of his testimony under Rules 402 and 702.
B.

The Nowlis Survey Should Be Excluded Because it Constitutes Improper
Rebuttal and Was Not Timely Submitted as a Direct Expert Survey

Even if this Court finds Nowlis to be qualified to provide expert testimony as to the
nuances of confusion surveys, the Nowlis Survey itself is actually an affirmative study
masquerading as rebuttal to the McDonald Survey. As such, and because the it was improperly
submitted after the deadline for affirmative expert disclosures, the Nowlis Survey should be
excluded as untimely and prejudicial.
1.

The Nowlis Survey Is Not Proper Rebuttal to Dr. McDonald’s Survey

As purported rebuttal to the McDonald Survey, the Nowlis Survey is irrelevant and
inadmissible. See Rules 401, 402, 403. The Nowlis Survey does not respond to perceived
methodological or linguistic flaws in the McDonald Survey, but rather constitutes an entirely
new survey that was not designed to re-field the McDonald Survey with a few altered

21

parameters. The Nowlis Survey does not counter any of the alleged defects in the McDonald
Survey, and therefore cannot speak to its value.
Rebuttal reports are limited to evidence “intended solely to contradict or rebut evidence
on the same subject matter identified by another party” in an expert report. Fed. R. Civ. P.
26(a)(2)(C)(ii). A rebuttal report must be responsive to the report that it purports to rebut, see
Plumley v. Mockett, 836 F. Supp. 2d 1053, 1065 (C.D. Cal. 2010) (finding non-responsive
portions of an expert report to be improper in a rebuttal report), it should not go beyond the
scope of the report submitted with the initial disclosure, and should generally not present new
arguments, Ebbert, 2008 WL 4443238 (citing cases). A proper rebuttal survey must be similarly
responsive. Cf. I.P. Lund Trading ApS v. Kohler Co., 118 F. Supp. 2d 92, 110-11 (D. Mass.
2000) (describing a rebuttal report that “essentially replicated” the criticized report, but with
“important modifications” designed to “test the proposition that [the expert] would have found
different results had he conducted his study with these modifications”).
However, the Nowlis Survey is entirely devoid of any responsiveness to the McDonald
Survey, which is unsurprising given that the Nowlis Survey was fielded beginning on September
14, 2012 three days before the parties disclosed their affirmative experts and before Apple was
served with the McDonald Survey. (Letter from Bonnie L. Jarrett to David Shaiman dated
December 20, 2012;21 McDonald Report at 1922.) Because he could not possibly have seen the
McDonald Survey when he designed and began fielding his survey, the Nowlis Survey clearly
could not have been designed to modify and rebut the McDonald Survey. Rather, the Nowlis
Survey is a transparent attempt to shore up defects in the stimuli used in the Jay Survey. It

21

Bogdanos Decl., Ex. J.

22

Bogdanos Decl., Ex K

22

adopted wholesale the questions and methodology of the Jay Survey, varying from that survey
only in the use of different stimuli, and making no attempt to tailor the questions or methodology
to even the most basic elements of the McDonald Survey.23 (See Jay Tr. 210:6-12.) The Nowlis
Survey is in no way related to the McDonald Survey and so does not shed any light on the
validity and strength of Dr. McDonald’s results, as a rebuttal study should do.
As a notable example, Nowlis did not replicate Dr. McDonald’s universe of people likely
to purchase digital books. Nowlis also did not employ any version of Dr. McDonald’s principal
question, 24 which he might have done by substituting the words “made or put out” for Dr.
McDonald’s phrase “made available.” (See Nowlis Rep. ¶ 50-51.) As these examples make
clear, the Nowlis Survey was not designed to test the alleged flaws in the McDonald Survey and
therefore cannot be said to contradict or rebut Dr. McDonald’s survey results. It is instead a
wholly separate survey that purports to show the likelihood of reverse confusion between
Plaintiffs’ and Defendant’s mark—a survey which, admissibility aside, should have been
disclosed as direct expert evidence.
Because the Nowlis Survey was not designed as a rebuttal to and does not respond to the
McDonald Survey, it is improper “new argument” in a rebuttal report. This inclusion of new
argument is not justified and prejudices Plaintiffs. See Ebbert, 2008 WL 4443238, at *13.
2.

The Nowlis Survey Was Not Timely Disclosed and Should Be
Excluded

As improper rebuttal evidence, the Nowlis Survey was not timely disclosed and should be
excluded. The deadline for affirmative expert disclosures was September 17, 2012, but Nowlis
23

Nowlis himself does not customarily conduct rebuttal surveys , and the instant “rebuttal
study” is quite possibly his first attempt to do so. (Nowlis Tr. at 53:25; 54:4; 61:18-21.)
24

The main question in Dr. McDonald’s study asked: “[W]hat company or companies would
you think had made the book available?” (McDonald Report at 11.)

23

was not disclosed until October 26, 2012.

The Court should not countenance Apple’s

gamesmanship and should exclude the Nowlis Study as an untimely affirmative expert
submission. Fed. R. Civ. P. 37(c)(1); see, e.g., Ebbert, 2008 WL 4443238, at *14 (excluding
portions of a rebuttal report that should have been included in the party’s initial expert reports);
Plumley, 836 F. Supp. 2d at 1066 (excluding non-responsive opinions in a rebuttal expert report
as a sanction for failure of timely disclosure under Rule 37(c)); First Years, Inc. v. Munchkin,
Inc., 575 F. Supp. 2d 1002, 1008 (W.D. Wis. 2008) (excluding from evidence portions of
defendant’s expert report that discussed issues different from those the report was purportedly
submitted to rebut).
CONCLUSION
For the foregoing reasons, Plaintiffs respectfully request that this Court grant their
motions to exclude the expert evidence, including all testimony, affidavits, or reports, of E.
Deborah Jay and Stephen M. Nowlis.

Dated: New York, New York
December 21, 2012
Respectfully submitted,
ALLEGAERT BERGER & VOGEL LLP

By:

s/ Partha P. Chattoraj
Partha P. Chattoraj
David A. Shaiman

111 Broadway, 20th Floor
New York, New York 10006
[phone]
Attorneys for Plaintiffs J.T. Colby & Co., Inc. d/b/a
Brick Tower Press, J. Boylston & Co., Publishers,
LLC, and ipicturebooks, LLC

24

Of counsel:
Robert L. Raskopf
Claudia T. Bogdanos
QUINN EMANUEL URQUHART & SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, New York 10010
Telephone: [phone]
Facsimile: [phone]

25