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

Filing 89

DECLARATION of Partha P. Chattoraj in Support re: 87 MOTION for Partial Summary Judgment.. Document filed by Ipicturebooks LLC, J.Boyston & Company, J.T. Colby & Company, Inc., Publishers LLC. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 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, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15, # 16 Exhibit 16, # 17 Exhibit 17, # 18 Exhibit 18, # 19 Exhibit 19, # 20 Exhibit 20, # 21 Exhibit 21, # 22 Exhibit 22, # 23 Exhibit 23, # 24 Exhibit 24, # 25 Exhibit 25, # 26 Exhibit 26, # 27 Exhibit 27, # 28 Exhibit 28, # 29 Exhibit 29, # 30 Exhibit 30, # 31 Exhibit 31, # 32 Exhibit 32, # 33 Exhibit 33, # 34 Exhibit 34, # 35 Exhibit 35, # 36 Exhibit 36, # 37 Exhibit 37, # 38 Exhibit 38, # 39 Exhibit 39, # 40 Exhibit 40, # 41 Exhibit 41, # 42 Exhibit 42, # 43 Exhibit 43, # 44 Exhibit 44, # 45 Exhibit 45, # 46 Exhibit 46, # 47 Exhibit 47, # 48 Exhibit 48, # 49 Exhibit 49, # 50 Exhibit 50, # 51 Exhibit 51, # 52 Exhibit 52, # 53 Exhibit 53, # 54 Exhibit 54, # 55 Exhibit 55, # 56 Exhibit 56, # 57 Exhibit 57, # 58 Exhibit 58, # 59 Exhibit 59, # 60 Exhibit 60, # 61 Exhibit 61, # 62 Exhibit 62, # 63 Exhibit 63, # 64 Exhibit 64, # 65 Exhibit 65, # 66 Exhibit 66, # 67 Exhibit 67, # 68 Exhibit 68, # 69 Exhibit 69, # 70 Exhibit 70, # 71 Exhibit 71, # 72 Exhibit 72, # 73 Exhibit 73, # 74 Exhibit 74, # 75 Exhibit 75, # 76 Exhibit 76, # 77 Exhibit 77, # 78 Exhibit 78, # 79 Exhibit 79, # 80 Exhibit 80, # 81 Exhibit 81, # 82 Exhibit 82, # 83 Exhibit 83, # 84 Exhibit 84, # 85 Exhibit 85, # 86 Exhibit 86, # 87 Exhibit 87, # 88 Exhibit 88, # 89 Exhibit 89, # 90 Exhibit 90)(Chattoraj, Partha)

EXHIBIT 18

From:
To:
CC:
BCC:
Subject:
Sent:
Attachments:

Taylor, Brewster([e-mail])
Lupo, Anthony
Brian Reynolds
RE: ibook trademarks
01/26/2010 02:56:25 PM 0000 (GMT)

Tony,
We do not know what Apple's plans for IBOOK are. However, as I am sure you are aware, certainly one advantage to Apple in
obtaining our client's rights in IBOOK and under the 1999 Agreement is that Apple already has registrations of IBOOK around the world
which presumably have prevented registration of confusingly similar marks for related products. To the extent that there have been
registrations by others of IBOOK for software which issued because our client allowed its registrations to lapse, we would appreciate
your identifying those registrations.
Brewster

Brewster Taylor
Stites & Harbison, PLLC
1199 N. Fairfax Street
Suite 900
Alexandria, Virginia 22314
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From: Lupo, Anthony [mailto:[e-mail]]
Sent: Monday, January 25, 2010 11:14 PM
To: Taylor, Brewster; 'Brian Reynolds'
Cc: Panko, Ross; 'susan.mulholland'
Subject: RE: ibook trademarks
Brian,
I've been authorized to make a new offer to you of
This offer reflects the fact that your company has active trademark
registrations in only three countries, and the limited value of the domains to Apple. Contrary to your suggestion, it is not merely an
administrative matter to re-file for registration of the mark in the places where your registrations have lapsed. In Europe and Australia, a
number of parties have applied to register IBOOK-formative marks in recent years, and a new filing would be junior to these parties.
Having given up your rights in those places, you cannot simply reclaim them as if your registrations were still intact. Apple's offer
reflects the diminished scope of your portfolio of trademark registrations.
Please get back to me as soon as possible.
Tony

Anthony V. Lupo
Partner
Arent Fox LLP I Attorneys at Law
1050 Connecticut Avenue, NW
Washin~ton, DC 20036-5339

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APPLE-I BOOKS0023658