J.T. Colby & Company, Inc. et al v. Apple, Inc.
Filing
85
DECLARATION of Jennifer L. Barry in Support re: 83 MOTION in Limine to Exclude any Testimony, Argument or Evidence Regarding the Expert Reports and Opinions of Robert T. Scherer.. Document filed by Apple Inc.. (Attachments: # 1 Exhibit 1 (REDACTED), # 2 Exhibit 2 (REDACTED), # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12)(Cendali, Dale)
<![CDATA[
EXHIBIT 3
Page 1
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-------------------------------------X
JT COLBY AND COMPANY, INC., D/B/A
BRICK TOWER PRESS, J. BOYLESTON AND
COMPANY PUBLISHERS, LLC, AND IPICTURE
BOOKS, LLC,
Plaintiffs,
-against-
Index No.
11-CV-4060(DLC)
APPLE, INC.,
Defendant.
-------------------------------------X
VIDEOTAPED DEPOSITION OF ROBERT SCHERER
New York, New York
November 16, 2012, 9:06 a.m.
Reported By:
Nicole Sesta
Ref: 8577
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2
3
R. Scherer
Q
Do you have any expertise in the
book publishing industry?
4
MR. RASKOPF:
Note my
5
objection to the form of the
6
question.
7
A
You may answer.
In working for a company like Time
8
Warner we owned two or three publishers, and I
9
was somewhat familiar with the nature of their
10
11
12
business.
Q
Do you consider yourself an expert
in the book publishing industry?
13
A
No.
14
Q
Have you ever worked for a
15
computer hardware or software company?
16
A
No.
17
Q
Do you consider yourself an expert
18
on computer hardware or software?
19
A
No.
20
Q
In your view is your expertise
21
more in the magazine publishing industry than
22
the book publishing industry?
23
MR. RASKOPF:
Note my
24
objection to the form of the
25
question.
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2
Q
What was your next employment?
3
A
Time, Inc.
4
Q
How long did you work at Time,
A
Time, Inc. through various
5
Inc.?
6
7
iterations 22 years.
8
9
10
Q
When we say Time today I'll be
referring to Time, Inc. or Time Warner.
Are you
comfortable with that?
11
A
Yes, as I did earlier.
12
Q
Fair enough.
13
What years did you
work at Time?
14
A
From 1983 until 2005.
15
Q
Did you retire in 2005?
16
A
Yes.
17
Q
Have you now told me about all the
18
jobs you've had since graduating from law
19
school?
20
MR. RASKOPF:
21
Note my
objection to the form.
22
A
To the best of my recollection,
24
Q
What were your duties at Time?
25
A
I was effectively trademark
23
yes.
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deposition in a trademark infringement case?
3
MR. RASKOPF:
Objection to
4
the form of the question.
5
A
I don't recall.
6
Q
When is the last time you cleared
7
a trademark for use and registration?
8
MR. RASKOPF:
9
the form of the question.
10
A
Objection to
I don't know the exact date.
It
11
would have been toward the latter portion of my
12
time at Time Warner.
13
14
Q
Can you tell me the year in which
you last cleared a trademark?
15
MR. RASKOPF:
16
Objection.
Asked and answered.
17
A
2005.
18
Q
When I say cleared a trademark,
19
are you familiar with that terminology?
20
A
Yes, I am.
21
Q
What does that mean to you,
22
23
cleared a trademark?
A
Conducting all of the necessary
24
searches, evaluating search results, and
25
investigating those references that appear to be
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2
asked to be an expert witness in the Central
3
District of California case?
4
A
I don't recall.
5
Q
Was it within the last five years?
6
A
Yes.
7
Q
Do you recall who the judge was in
8
that case?
9
A
No.
10
Q
Other than the case involving
11
Manatt Phelps and this case here today, have you
12
ever been asked to be an expert witness in a
13
case?
14
A
No.
15
Q
Are those the only two cases where
16
you ever were retained as an expert witness?
17
A
Yes.
18
Q
Have you ever been qualified to
19
testify in court as an expert witness?
20
MR. RASKOPF:
21
Note my
objection to the form.
22
A
What do you mean by qualified?
23
Q
Have you ever been allowed by any
24
court to give an opinion as an expert witness in
25
a case?
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2
MR. RASKOPF:
3
Note my
objection to the form.
4
A
I don't know what you mean by
5
allowed by any court.
6
an expert in court as of this date.
7
Q
I have not testified as
Is it fair to say that when you
8
did testify in court it was as a witness as
9
opposed to an expert witness?
10
MR. RASKOPF:
11
Note my
objection to the form.
12
A
That's correct.
13
Q
You told me earlier about your
14
Time lawsuit in the Southern District of New
15
York.
16
that case, correct?
You were not testifying as an expert in
17
A
That's correct.
18
Q
When you worked at the trademark
19
20
21
office did they have a rotating schedule?
A
What do you mean by rotating
schedule?
22
MR. RASKOPF:
23
the form of the question.
24
25
Q
I object to
Have you ever heard the term
rotating schedule at the trademark office?
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currently used by the trademark office?
3
MR. RASKOPF:
4
Objection to
the form.
5
A
I don't know.
6
Q
Are you familiar with the term
7
full search in the trademark area?
8
MR. RASKOPF:
9
the form of the question.
10
11
12
A
Objection to
It's a term I have used in
referring to trademark searching, yes.
Q
When you're referring to trademark
13
searching and you use the term full search, what
14
do you mean by that?
15
A
Full search is a search that
16
includes the records of the US Patent and
17
Trademark Office, the 50 state trademark
18
offices, the domain name registers, common law
19
databases, search results from the internet,
20
some Shepard citations perhaps, and a listing of
21
owners of the marks disclosed by the search.
22
There may be other elements.
23
primary elements.
24
25
Q
Those are the
Have you ever written any articles
about trademark searching?
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2
searches in connection with the earlier
3
California case and I don't remember the mark.
4
Q
Is it fair to say that all of the
5
trademark searches that you conducted since 2005
6
were done in connection with your case for
7
Manatt or your case here involving Apple?
8
A
That's correct.
9
Q
When you did a search on the mark
10
iBooks did you conduct a full search?
11
MR. RASKOPF:
12
the form.
13
A
14
a full search.
15
Q
16
17
Objection to
You may answer.
It was not my intention to conduct
So I did a SAEGIS search.
Why was it not your intention to
conduct a full search on iBooks?
A
I wasn't trying to clear the mark
18
for use by my client.
I was trying to see what
19
uses of iBooks there were.
20
Q
What is a SAEGIS search?
21
A
A SAEGIS search is a proprietary
22
database maintained by Thomson Compumark and
23
it's a search vehicle designed for screening or
24
knockout searches.
25
Q
What is the difference between a
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2
law.
3
law school.
4
with John Colby and Boyleston purchasing the
5
assets of iBooks Inc.
6
I tried to avoid that like the plague in
Q
But the bidding process ended up
When I say INTA you know that I'm
7
referring to the International Trademark
8
Association, correct?
9
A
Yes.
10
Q
Did you ever attend any INTA
11
annual meetings?
12
A
Yes.
13
Q
Did you ever attend any INTA
14
leadership meetings?
15
A
No.
16
Q
When you attended INTA annual
17
meetings did you have occasion to talk to
18
numerous trademark practitioners?
19
A
Mostly foreign counsel but yes.
20
Q
In your practice over the years
21
did you have occasion to talk to other trademark
22
practitioners about clearing trademarks?
23
24
25
A
I can't think of any specific
instances where I had those conversations.
Q
So can you think of any
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2
conversations with other trademark lawyers about
3
how they clear trademarks?
4
A
I was familiar with the way in
5
which other companies conducted trademark
6
searches and clearances but I can't recall any
7
specifics.
8
9
10
Q
How were you aware of how other
companies cleared trademarks?
A
One of the ways was to read some
11
of the pamphlets that trademark owners create
12
for the benefit of generally in-house staff, so
13
that they can see what's involved in trademarks,
14
and how clients are supposed to notify trademark
15
counsel, and what information is to be provided.
16
Those booklets will quite often say what steps
17
were taken in terms of doing full searches.
18
believe, I couldn't quote a section, but I
19
believe that McCarthy also makes mention of
20
trademark searching in his treatise.
21
22
23
24
25
Q
I
Do you recall who wrote those
pamphlets you're referring to in your testimony?
A
No, they come from a variety of
companies.
Q
Can you recall the name of any of
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those companies that wrote those pamphlets?
3
A
No.
4
Q
Were they outside law firms?
5
A
Most of them were corporations.
6
Q
Do you know whether other
7
trademark lawyers conduct full searches without
8
using third-party vendors?
9
A
I understand some firms are
10
beginning to do that but I would question the
11
efficacy of that practice.
12
Q
Why?
13
A
Because I think as in this case it
14
misses some potential references or information.
15
Q
How do you know that?
16
A
From this case I know that Dechert
17
did not, because of its limited efforts, did not
18
locate current uses of the iBooks mark by
19
plaintiffs which were clearly on the internet.
20
Q
But it's your understanding that
21
some law firms are now doing their own full
22
searches?
23
A
I don't have any information but
24
in reading some of the materials that's what
25
I've been told.
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2
Q
It's your understanding that it's
3
becoming more common now for companies and law
4
firms to conduct their own searches as opposed
5
to using commercial vendors, correct?
6
MR. RASKOPF:
Note my
7
objection to the form of the
8
question.
9
A
10
common.
11
do that.
12
Q
I don't know if it's becoming more
13
I just know some firms are beginning to
To your knowledge what firms are
beginning to conduct their full searches?
14
MR. RASKOPF:
15
Asked and
answered.
16
Q
Without using a commercial vendor?
17
A
Dechert.
18
Q
Any other law firms?
19
A
Not that I know of.
20
Q
In your numerous years as a
21
trademark lawyer were you aware of particular
22
trademark lawyers who had great reputations for
23
conducting trademark searches?
24
25
MR. RASKOPF:
Objection to
the form.
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2
A
Three or four weeks ago.
3
Q
What book did you buy?
4
A
John Grisham's the Racketeer.
5
Q
What is your understanding of how
6
7
Apple's iBooks application works today?
A
I don't know the technology.
8
magic to me.
9
turns up on my phone.
10
11
It's
I press some buttons and an E-book
An E-book that consists
of an existing, in this case, fictional work.
Q
Prior to preparing and submitting
12
your report in this case had you ever seen
13
Apple's iBooks application?
14
A
I had seen advertising for it but
15
I had not utilized it.
16
until a month ago.
17
18
Q
I didn't own an iPhone
So prior to submitting your report
in this case did you ever own an iPad or iPhone?
19
A
No.
20
Q
Did you ever download Apple's
21
iBook application?
22
A
No.
23
Q
Did you ever use Apple's iBook
24
25
application?
A
No.
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2
3
Q
Do you understand how Apple's
iBook application works?
4
A
I think I answered that but I
5
don't understand the technology of it, no, nor
6
do I need to to know that it works.
7
what I want.
8
9
Q
Do you know what computer code is
used to make Apple's iBook application work?
10
11
It gives me
A
No.
As I said earlier, I'm not an
expert in software coding.
12
Q
I believe you testified that you
13
recently downloaded one E-book.
Can you
14
describe what you did with that book after
15
downloading it?
16
A
After it appeared on the iBooks
17
shelf I tapped the cover and the first pages as
18
it appeared on the shelf the first pages showed
19
up.
20
started to read the book.
21
22
23
24
25
I began to flip through the pages and
Q
Did you do anything else with the
E-book since you've downloaded it?
A
I played around -MR. RASKOPF:
Let me object
to the form of the question.
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have appeared, Lisa Whittup.
3
Q
Anyone else?
4
A
And Steve Kadickian.
5
Q
Anyone else?
6
A
To the best of my recollection
7
that's it.
8
9
10
Q
Have you ever downloaded the
iBooks application on any device other than your
iPhone?
11
A
No.
12
Q
I believe you testified that
13
Family Systems has an application, correct?
14
A
They have computer software.
15
Q
Have you ever downloaded Family
16
Systems computer software?
17
A
No.
18
Q
Have you ever used Family Systems
19
computer software?
20
A
No.
21
Q
Have you ever reviewed the code
22
underlying Family Systems computer software?
23
A
No.
24
Q
How many versions of the software
25
does Family Systems have?
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application?
3
4
A
I may have
prepared a design patent in the past.
5
6
Not a utility patent.
Q
How many design patents have you
designed in your entire career?
7
A
If any, one or two.
8
Q
Have you ever litigated a utility
10
A
No.
11
Q
Do you own any utility patents?
12
A
No.
13
Q
Do you own any design patents?
14
A
No.
15
Q
Have you ever been trained as a
16
patent attorney?
17
A
No.
18
Q
Do you feel like you're an expert
19
on patent law?
20
A
No.
21
Q
Do you feel like you're an expert
9
22
23
24
25
patent?
on copyright law?
A
I'm conversant in copyrights but
not an expert, no.
Q
What is your field of expertise?
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elements and I would say since none of them went
3
to Apple with the trademark, that there was no
4
transfer of goodwill because Apple was not in a
5
position to continue to conduct the business in
6
substantially the same manner as Family Systems
7
had done it.
8
9
Q
So it's your testimony that of all
the tangible assets that could have been
10
transferred the patent is the most important
11
tangible asset?
12
MR. RASKOPF:
13
the characterization of the
14
witness' prior testimony.
15
A
Objection to
I would say it's one of the most
16
important because it covered the entirety of the
17
Family Systems computer software product
18
identified by the iBooks mark.
19
receive that patent in an assignment Apple
20
couldn't use the mark on the same goods and
21
services in which it had used before because it
22
would be infringing that patent.
23
patent is terribly important in terms of what
24
needed to be transferred, but it's one of
25
several indicia of goodwill.
If Apple did not
I think the
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2
3
Q
Did you ever analyze whether that
patent that you've testified about was valid?
4
A
5
did not.
6
Q
7
Did you ever analyze whether that
patent you testified about was enforceable?
8
9
No, I'm not a patent attorney so I
A
I don't know what you mean by
enforceable.
10
Q
Did you ever analyze whether that
11
patent that you testified about had any prior
12
art?
13
MR. RASKOPF:
14
Objection to
the form.
15
Q
That invalidated the patent.
16
A
The validity of the patent is an
17
issue that has to be determined by a court after
18
a lengthy trial.
19
I analyzed that patent to make sure that it was
20
valid.
21
the iBooks computer software product and it
22
wasn't transferred to Apple.
23
conclusion with respect to the patent.
24
25
I can't sit here and say that
It was an existing patent that covered
Q
I mean that's my
But you have no idea whether that
patent is valid or not, correct?
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2
A
No.
3
Q
Did you order the file history on
4
that patent?
5
A
I did not.
6
Q
Did you interview the attorney who
7
prepared that patent?
8
A
No.
9
Q
Do you know if it's a blocking
11
A
I don't know what that means.
12
Q
Did you ever analyze whether
10
patent?
13
Family Systems was actually using that patent in
14
any way?
15
A
We covered the iBooks computer
16
system.
17
that.
18
under the iBooks brand.
19
20
I think Richard Goldhor talked about
I have to believe they were using it
Q
Do you know whether Family Systems
ever litigated that patent?
21
A
I do not know.
22
Q
Do you know whether they ever
23
licensed that patent?
24
A
I don't know.
25
Q
Do you know whether they ever
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2
about the transfer of trademarks out of
3
bankruptcy.
4
5
Q
Did you look at any other
documents in forming opinion number five?
6
A
Not that I recall.
7
Q
I believe you testified that there
8
may be a sixth expert opinion that you were
9
asked to provide.
10
opinion may be?
11
A
Do you recall what that sixth
Not without looking at my report.
12
I'll think about it but not that I can recall
13
right now.
14
15
Q
Have you now told me about all the
opinions you were asked to render in this case?
16
MR. RASKOPF:
17
Asked and
answered.
18
A
19
I don't recall.
20
I thought there were six.
21
mentioned five.
22
one.
23
addressed yet.
24
Q
25
With the exception of the one that
There could be another one but
I think I've only
So I think there's a missing
There might be another one I haven't
Do you anticipate rendering any
further expert opinions in this case?
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2
A
Other than a trial, no.
3
Q
When you say other than a trial,
4
do you mean rendering the same opinions that
5
you've mentioned today?
6
7
8
9
10
A
It would be related to the same
opinions that I've expressed, yes.
Q
To be clear, other than those
opinions do you anticipate rendering any
opinions?
11
A
I do not.
12
Q
As an expert witness.
13
MR. VISCOUNTY:
The
14
videographer is out of tape so why
15
don't we take a break and go off
16
the record.
17
THE VIDEOGRAPHER:
The time
18
is 1:19 p.m. on November 16, 2012.
19
This completes tape number two.
20
(Recess taken.)
21
THE VIDEOGRAPHER:
The time
22
is 1:54 p.m. on November 16, 2012.
23
This is tape number three.
24
25
Q
Mr. Scherer, you understand you're
still under oath, correct?
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2
Family Systems."
3
A
Yes.
4
Q
On what expertise do you make that
5
Correct?
conclusion?
6
MR. RASKOPF:
7
8
9
Asked and
answered.
A
I've talked about this two or
three times before.
I don't think you need a
10
specific expertise to be able to determine if
11
goods listed the way they are and used the way
12
they are are similar or dissimilar.
13
can make that determination without any
14
specialized expertise.
15
16
Q
But you'll agree that both
products are software, correct?
17
MR. RASKOPF:
18
19
I think you
Objection to
the form.
A
Family Systems is referred to in
20
the registration, their iBook mark as computer
21
software.
22
necessarily call it software.
23
an application or it's a system or a product.
24
25
Q
The Apple iBooks use, I wouldn't
I would say it's
So you believe that Apple's iBooks
application is not computer software?
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2
A
If I press the appropriate buttons
3
and pay the appropriate fee, yes, an electronic
4
book will show up on my iPhone.
5
happens or why that happens, I don't know.
6
Q
How that
So when Apple's iBooks software
7
creates that E-book you're able to flip through
8
pages?
9
A
Yes.
10
Q
Have you ever read Apple's iBooks
11
terms of service?
12
A
13
wife.
14
haven't.
15
That's like do you ever beat your
Q
16
17
You have to be careful with that.
No, I
Have you ever read Family Systems
software terms of use?
A
I read materials that describe how
18
it's used in some of the various components, but
19
I have not read their terms of service.
20
Q
Do you know whether the terms of
21
use for Apple's iBooks app refers to it as
22
software?
23
A
I do not know.
24
Q
Do you know whether Apple's iBooks
25
app is a software program available for
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2
3
the form of the question.
A
You would refuse renewal of the
4
registration.
5
statements made in the declaration are true.
6
Q
That assumes of course that the
Is it your conclusion that the
7
trademark examiner that reviewed Apple's section
8
eight and nine submission made the wrong
9
conclusion in accepting the specimen?
10
MR. RASKOPF:
11
the form of the question.
12
A
Objection to
No, I think the examiner in
13
renewing this registration relied on the
14
statements in the declaration of use not knowing
15
that they weren't accurate.
16
Q
In your report you claim that part
17
of Apple's fraudulent actions are demonstrated
18
by the fact that it purchased Family Systems'
19
mark to gain priority over plaintiffs' mark,
20
correct?
21
MR. RASKOPF:
Objection to
22
the characterization of what's in
23
the witness' report.
24
A
Can you repeat that, please?
25
Q
Let me rephrase it.
Do you
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3
Q
Do you know how many claims are
contained within that patent?
4
A
Several but I don't know the
6
Q
Did you analyze the claims?
7
A
I did not.
8
Q
What is your understanding of what
5
9
number.
the claims portion of the patent mean?
10
A
11
invention to be.
12
by the patent once it's issued.
13
14
Q
It's what you're claiming the
That's what would be covered
Do you know whether there were any
independent claims in that patent?
15
A
I do not know.
16
Q
Do you know whether there were any
17
dependent claims in that patent?
18
A
I do not know.
19
Q
Do you know what aspect of the
20
Family Systems software were covered by that
21
utility patent?
22
A
In reading the abstract and
23
reading Richard Goldhor's deposition transcript,
24
it's my understanding without getting into
25
specific claims, but it's my understanding that
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marked for identification, as of
3
this date.)
4
5
Q
Mr. Scherer, do you recognize what
has been marked as Exhibit 5?
6
A
I do.
7
Q
What is it?
8
A
It's my expert report in the
9
subject lawsuit.
10
Q
11
Sir, will you turn to page 44 and
45 for me?
12
A
Yes.
13
Q
Do you see paragraph 16 that says
14
opinions?
15
A
I do.
16
Q
Are all the opinions you intend to
17
offer in this lawsuit contained in paragraph 16?
18
Take your time and read it.
19
MR. RASKOPF:
20
paragraph 16.
21
MR. VISCOUNTY:
22
25
Page 44.
It's marked number 16, opinions.
23
24
Let me get to
MR. RASKOPF:
Q
Okay.
Are all the opinions you intend to
offer in this lawsuit contained within paragraph
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16?
3
A
Yes.
4
Q
Do you intend to offer any other
5
expert opinions, other than what's contained
6
here in section 16 on pages 44 and 45 of your
7
report?
8
9
A
I should say throughout this
report there are, in terms of reaching these
10
opinions, there are various opinions expressed.
11
So I guess I can answer by saying that it's not
12
my -- I don't anticipate testifying to anything
13
beyond the scope of this report.
14
Q
And the opinions contained in your
15
report, which has been marked as Exhibit 5,
16
correct?
17
A
That's correct.
18
Q
Do you know whether Family Systems
19
was required to stop using the iBooks trademark
20
on -- iBook trademark in connection with the
21
sale of that mark to Apple?
22
MR. RASKOPF:
23
answered.
Asked and
You may answer.
24
A
Yes.
25
Q
Did you ever follow-up and look at
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the iBook mark from Family Systems to Apple?
3
MR. RASKOPF:
4
Objection to
the form.
5
A
No.
6
Q
Do you recall preparing a rebuttal
7
report in this lawsuit?
8
A
Yes.
9
Q
In your rebuttal report you say
10
that any determination of the validity or
11
effectiveness of a purported assignment will be
12
decided by the court, do you recall that
13
statement?
14
A
I do.
15
Q
Do you still agree that any
16
determination of the validity or effectiveness
17
of a purported assignment should be decided by a
18
court because that's a question of law?
19
MR. RASKOPF:
20
the form of the question.
21
A
Objection to
I think I addressed that before,
22
but not being a litigator, per se, I consider
23
that to be a question to be decided by the
24
court, yes.
25
Q
Because it's a question of law,
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correct?
3
A
Yes.
4
MR. RASKOPF:
5
6
Objection to
the form.
Q
Whether an assignment constitutes
7
an assignment in gross is a question of law for
8
the court, correct?
9
MR. RASKOPF:
Objection to
10
the form of the question.
11
A
Yes.
12
Q
Whether an assignment is valid is
13
a question of law for the court, correct?
14
MR. RASKOPF:
Objection to
15
the form of the question.
16
A
Yes.
17
Q
And whether fraud on the trademark
18
office has been committed is a question of law
19
for the court, correct?
20
MR. RASKOPF:
21
the form of the question.
22
A
Objection to
I think I answered that before.
23
And as I recall I said no, but I'm not sure if
24
it's a question of law for the court.
25
Q
And whether a specimen submitted
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Q
Were you aware that Byron Preiss
3
visual publications launched a new imprint that
4
focused on books with content appropriate for
5
marketing on the internet?
6
MR. RASKOPF:
Objection to
7
the form of the question.
8
Q
Did you ever hear that before?
9
A
I believe I've heard that before.
10
Q
Did you ever read any marketing
11
materials in connection with your work in this
12
case that said that Byron Preiss launched a new
13
imprint under the name iBooks for the purpose of
14
marketing books on the internet?
15
MR. RASKOPF:
16
the form of the question.
17
A
Objection to
That statement sounds familiar.
18
It may be in my report, I'm not sure, but I
19
believe I've heard that before, yes.
20
21
Q
Have you read the most recent
version of the TMEP?
22
A
No.
23
Q
Do you know whether the TMEP has a
24
25
section in it related to I descriptive marks?
A
I am now.
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Q
Prior to this case were you aware
3
of that?
4
A
No.
5
Q
When you worked at the trademark
6
office you never reviewed any applications
7
because of the time that you worked there
8
involving I descriptive marks, correct?
9
MR. RASKOPF:
10
Objection to
the form.
11
A
I can't -- I could stand for a lot
12
of things.
13
I may have.
14
15
Q
I can't answer that.
I don't know.
Have you ever worked on any
trademark applications for I descriptive marks?
16
MR. RASKOPF:
17
Objection to
the form.
18
A
Not that I can recall.
19
Q
Have you ever prosecuted a
20
trademark application involving an I descriptive
21
mark?
22
MR. RASKOPF:
23
Objection to
the form.
24
A
Not that I recall.
25
Q
Prior to your work in this case
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A
Yes, it is.
As I think one of
3
either Hampton or someone's I recall talked
4
about the change in perception of trademark as
5
time goes on.
6
didn't mean a whole lot, just in the context of
7
the internet, but the perception since then has
8
changed.
9
Q
Have you ever done a trademark
11
A
In this case or ever?
12
Q
Ever.
13
A
I've been involved with trademark
14
surveys.
I've hired outside vendors to conduct
15
them.
10
16
As you pointed out in 1999 the I
survey?
Q
Did you rely on any surveys in
17
making your conclusion that plaintiffs' iBooks
18
mark had acquired secondary meaning?
19
A
No.
20
Q
Do you know if anyone conducted a
21
survey regarding whether plaintiffs' iBooks mark
22
had acquired secondary meaning?
23
A
No.
24
Q
So is it fair to say you didn't
25
rely on any surveys in coming to that conclusion
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that plaintiffs' mark has acquired secondary
3
meaning?
4
A
That's correct.
I looked at the
5
language in the trademark rules of practice of
6
the Lanham Act.
7
practice.
8
was filed, the office action that was filed in
9
the earlier iBooks application, and then I read
I relied on trademark rules of
I also reviewed the file history that
10
elements of the, I guess, Shatskin and Frieze
11
deposition transcripts and learned additional
12
information in terms of the industry and
13
secondary meaning in the publishing industry.
14
15
Q
trademark has obtained secondary meaning?
16
MR. RASKOPF:
17
18
19
20
Do you believe that Apple's
Asked and
answered.
A
We talked about that, yes, I do
but the patent and trademark office doesn't.
Q
On page 35 of your expert report
21
you state that between 1999 and 2002 the
22
plaintiffs had iBook sales of more than $5
23
million.
24
A
25
Where did you get that information?
That information, as I was
mentioning a moment ago, was in response to an
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office action in connection with the iBooks
3
application filed by iBooks, Inc.
4
Q
And in that response to the office
5
action the applicant stated that it would later
6
file a declaration showing those sales, correct?
7
8
9
A
Correct.
Showing that use had
been made of the mark, yes.
Q
To your knowledge did the
10
applicant ever file a declaration with the
11
trademark office showing those sales?
12
A
To the best of my knowledge, no.
13
Q
And also on that same page you
14
state that the plaintiffs spent more than
15
$250,000 in advertising, correct?
16
A
Yes.
17
Q
Where did you get that
18
information?
19
A
It came from the same office
20
action response.
21
Q
And again, the applicant never
22
followed up and filed a declaration with the
23
trademark office showing the advertising,
24
correct?
25
A
That's correct.
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looking at, and all of a sudden you get a letter
3
which explains that someone else is claiming
4
earlier rights to that same mark, I'd be very
5
alarmed by that.
6
Q
What would you as someone with
7
reams of experience insofar as it relates to
8
being the head of a trademark department in a
9
major Fortune 500 company, probably way under
10
Fortune 500, I'll say Fortune 100, I really
11
can't say, maybe Fortune 5 at some point in time
12
especially when you were there, what would you
13
say about the manner in which Apple addressed
14
this cease and desist letter insofar as it
15
relates to good corporate behavior?
16
MR. VISCOUNTY:
17
A
Objection.
From what I've seen in reviewing
18
transcripts and the like it didn't appear to
19
create even a wave of concern because they went
20
ahead and adopted the iBooks mark even after
21
launching the product after receiving this
22
notification.
23
Q
Would you consider Apple's
24
behavior in this case at a minimum from the date
25
of receipt of the cease and desist letter to be
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bad faith?
3
4
MR. VISCOUNTY:
A
Yes, I would.
Objection.
I think it's a
5
disregard of the trademark rights of others
6
including in this case John Colby.
7
Q
8
Do you intend to offer that
opinion?
9
MR. VISCOUNTY:
Objection.
10
A
Yes.
11
Q
I have nothing further.
12
EXAMINATION BY
13
MR. VISCOUNTY:
14
Q
15
What is the basis for your opinion
that Apple acted in bad faith?
16
MR. RASKOPF:
17
18
Already asked
and answered ad nauseam.
A
It depends where we're starting in
19
terms of my answering that question, but I will
20
start with where we are right now in the record.
21
They received -- they knew about our abandoned
22
applications way back in January, January 12th,
23
I believe, 2010.
24
of searching through Dechert, which wasn't
25
necessarily targeted or appropriate.
They allegedly did all sorts
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Then they received a letter on
3
January 29, 2010 informing them of a claim of
4
rights by John Colby.
5
eight weeks before the actual launch of the
6
product, and they did nothing, even though they
7
had another mark potentially in their hip
8
pocket, they did nothing to try to work out
9
something with Colby or to change the name of
They still had seven or
10
the product.
11
early April of 2010, which I find irresponsible.
12
Q
They went ahead and launched it in
Isn't it true you don't mention
13
your bad faith opinion in either of your expert
14
reports in this case?
15
MR. RASKOPF:
16
the characterization of the
17
witness' report.
18
19
20
A
Objection to
There are several places in there
where I discuss bad faith.
Q
It's there.
Why don't you show me in what
21
parts of your report do you render this opinion
22
of bad faith?
23
A
I looked at this bad faith as kind
24
of a corporate culture in respect to trademarks.
25
At the end of section five I mentioned this
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failure to follow the customary steps including
3
the iBooks mark was a glaring omission, and
4
evidences a total disregard for the trademark
5
rights of others.
6
Q
Anything else?
7
A
I'm going to find it.
8
MR. RASKOPF:
9
the report speaks for itself.
10
11
I want to say
Go
ahead.
A
I think it's clear from my claim
12
of fraud on the Patent and Trademark Office that
13
that is an act of bad faith.
14
Q
Anything else?
15
A
I'm going to get there.
At the
16
end of section 15 I mention that Apple's pattern
17
of adopting new trademarks and after the fact
18
repeatedly encountering conflicting claims can
19
only be the result of either shoddy clearance
20
procedures, corporate arrogance, or a blatant
21
disregard for the trademark rights of others.
22
Q
Anything else?
23
A
I think looking at it quickly
24
25
those three may be it.
Q
Do you mention this opinion of bad
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faith in section 16 of your report on pages 44
3
and 45?
4
MR. RASKOPF:
5
Did you say on page?
6
MR. VISCOUNTY:
7
10
44 and 45,
yes, section 16.
8
9
Objection.
A
In page -- in opinion or section
16, opinions and number one, I stated that Apple
disregarded the trademark rights of others.
11
Q
Anything else?
12
A
In section eight I don't use those
13
words but I specifically refer to the Colby
14
letter having been sent to Apple informing him
15
of plaintiffs' prior rights in the mark, and
16
it's clear from the facts of the case that
17
despite that they went ahead and used the mark.
18
19
20
Q
I have nothing further.
Thank
you.
THE VIDEOGRAPHER:
The time
21
is 5:41 p.m. on November 16, 2012.
22
This completes the videotaped
23
deposition of Mr. Robert Scherer.
24
(Time noted:
5:41 p.m.)
25
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