good afternoon your honors and may please the court i'm grateful to you go on behalf of the plaintiff market quest group inc which does business is all in one and joining me in the courtroom today are michael lane of were pleased to finally be here before you and again thank you for accommodating our scheduling issues our budget all we know this was a back breaking assignment so in comedy yes your honor many issues have been briefed in this case but there's really just the two or three observations that i would like to to make in the brief time that we have and focus really on two main overarching principles and one is the notion the supreme court's directive in kate the permanent makeup one that the overall fair use analysis must focus on whether the defendants use of the challenge designation was objective specifically pleaded let's assume for a moment that we have to do that in your judgment what would that requirement be and secondly would your pleading meet that requirement were we to adopt that issue pleading confusion and yes ok a quick and ok and what would be the elements of the pleading for  is to make an allegation of confusing it the important thing to realize is that we're not suing you reverse confusion is not a cause of action well let me just reprint the first circuit case on this one yes the want well first of all on the ninth circuit did affirm that in two thousand and four and it said that reversed confusion is and you may remember this from from the brief that reverse confusion is merely a descriptive term for certain circumstances giving rise to a likelihood of confusion element let me get some clarification from you then paragraph twenty nine of your first amendment complaint reads to me like a forward confusion allegation no question about it you know ok don't deny it also twenty eight little ambiguous thirty thirty one and so on more general but putting twenty eight aside for the minute what impact does an allegation in this case paragraph twenty nine have if it could only apply to a forward confusion and that muddy the waters a bit the cases that are out there so far say no and we gave three examples in our in our brief two from other circuits were only were very very of forward confusion only were made one was the trouble case one seventy nine f subsecond two ninety five where the plaintiff successfully changed its theory of confusion from forward to reverse after the close of discovery had never mentioned reverse confusion before then but what about just what about survivor media though survivor media i gotta be honest with you and when i was in the brief as that is an anomaly there's really no way for us to i know what the defendants have argued about it and what the court in survivor said as as as you know as they said well these guys have pled a crime of faith pleaded a prime facie case of reverse confusion but they haven't pleaded forward confusion so forward confusion isn't in the case so it's the exact opposite well and didn't they find that the other one was and i think with us it was not possible something to that effect that's right but we don't what we don't have and i tried to find it we don't have the complaint so we really don't know what it said so it's very hard to make out what they meant by it but i did propose we did propose in our brief a rationale that makes sense under the structure that we've been advocating and that is the this line of cases that say that whenever you make an allegation of likelihood of confusion because reverse confusion is that the courts that have accepted reverse confusion say that it is implied in two section one one one four so that is the basis for these court saying if you allege forward confusion as it's written in the statute since reverse confusion is implicit you get it automatically so all i can think of and we can only speculate really or i can on the survivor case is that it doesn't work in reverse since reverse confusion is not mentioned in improbable then you haven't played a cause of action why wouldn't that also be true in reverse that was a forward confusion case why wouldn't that be true in a reverse well i think that when like for example you were you refer to paragraph twenty nine and that's one specific allegation in the complaint but the complaint also has allegations of confusion as to source ponce or shipper origin which are certainly general enough to encompass reverse confusion and the again these these cases that the first of all at the outset i have to say which was said in our in our brief and i'm sure you saw it too is a we don't think that this issue is even properly before the court and that it's been waived and so i'm happy to talk about it because it's fascinating to me as well but this was first raised in a reply brief filed by the defendants on summary judgment below and plaintive was not permitted to respond to the arguments and as as i'm sure you all know arguments first presented in a reply brief are not admissible and eleven he treated this is a reverse confusion case and applied reverse confusing doctrine the judge was shocked when she had the case on summary judgment in the actions that that are under review right now the orders under review right now she spoke of reverse confusion and so i mean we do feel that it's very heavily waived we agree and can't defend survivor it's an anomaly and i really just talking with the tell you about it but we can point out all of the other cases nationwide that that you really don't have to plead anything with confusion and what i started to say the beginning if i can just repeat it right now and finish that part are cases for trademark infringement right it's not an action for reverse confusion it's not the action for forward confusion it's an action for trademark infringement trademark infringement has to involve confusion of some sort and reverse confusion is just one theory of confusion and forward confusion is another and they should be equally available at any time that can you explain briefly what your theory of damages is if this is a reverse confusion case yes briefly i can't i don't have a lot of in depth knowledge about it but my understanding and if i'm wrong i'll correct myself on rebuttal but my understanding about it is that that because the public started to confuse plaintiff with defendant in reverse and plant the defendants rather norwood at all were having some pretty serious financial dips at a time when the overall market in the promotional product industry was skyrocketing that their reputation actually hurt ok the plaintive and damage does the other question i had for you is that this is a summary judgment case yes and i'm trying to find case law that talks about applying summary judgment to fair use in confusion where you have to balance the two and the same question one half or the other side when he has an opportunity i found one published case sorenson vs w d forty on the seventh circuit thank granted summary judgment or a fungus under m judgment at the fair use stage or fair use argument are you aware of any cases that talk about how courts in summary judgment are supposed to reconcile and make some sort of balancing finding at the summary judgment stage or the other th they've the the ninth circuit has said that that confusion is an enterable part of the fair use to fancy and you have to decide it and there is there's kind of a scale that the higher the degree of likelihood of confusion than the lower the possibility is that we're dealing with fair use perhaps i misunderstood what my colleague asked you maybe i did too i thought he was asking how can this be decided in the summary judgment context is that what you're asking  rebuttal into it you can't reserve out of nothing you've got to reserve it out of your time so if you want to reserve it now and come back and give us the balance later on you certainly may well i didn't die i'm saying that may have been may not ok standing if you want you want to stop the clock and save you three minutes right i  the panel raised but i would start out by saying there are two as i read the appellate brief there are two main criticisms that  the appellant makes the district court decision criticism number one is that according to them judge the shant conflated i'm not even sure what that word means two factors descriptive in this and use other than as a trademark she may not get a pulitzer prize for her writing it jumps around a little bit but i think it's clear from the district court his record sixteen seventeen it was crazy are you talking now about all in one or the right choice both your own ok the second and i think the major focus of the second criticism is that the district court did not consider the likelihood of confusion and i'm going to get to that it makes no difference whether it's reverse or forward  confusion and i as an aside i believe reverse confusion does have to be specifically alleged i think that's the murray versus cable n b c case which we've cited in our briefs that's a ninth circuit it's simply not true that the district court did not consider a likelihood of confusion first of all the appellant never scuse me counsel correct me if i'm wrong about this but i thought i was going to check my notes here i thought in the all in one portion of the opinion that the district court concluded that  client was protected by fair use without fully addressing whether confusion was likely is that mistaken i believe that the court the district court said that it was on necessary be brought the ice that's what i thought to the district  not necessary because this for years but did not weigh whether there was likely hood of confusion right it did not get into the sleep factors your honor ok and also on the right choice if i understood that correctly that  the district court plied for use analysis after determining that there was no evidence of likely confusion isn't that also correct i think that's right your honor and the reason is that the permanent as sort of a confusion or reverse confusion that the if you will the primary grob amount of that and of course the trademark act itself is the likelihood of confusion in either one  the with respect to the essence of the fair use defense is that people are entitled to use descriptive terms in the english language and in fact the u s supreme court told us in the k p permanent case that some level of confusion and there isn't any here the evidence for lho is completely defective and wasn't even before the district court on the summary judgment the supreme court said that some level of confusion is acceptable and compatible with fair use where the plaintiff picks a mark that is basically descriptive ok does that go to the the craft  strength of the mark factor or is it something separate i think it's something separate your honor i think it goes to the descriptive inus of the mark and what we have here in both cases were something is all in one you put everything together in one one of my clients norwood had eight separate catalogues that didn't work commercially so they decided to put them all in one and my other client book had sold its round  stickpin for thirty years and they used the not very good pun frankly the right pen choice for thirty years they didn't even use the right choice to use the right pen choice in both cases your honor every instance of the use was not only descriptive on its face but will use used in conjunction with my clients on trademarks and you know didn't see any case law that backs this up but you're going to give me some i'm sure is it your position that even if as the court found here if your client knew of and  and that the norwood mark and the victim mark and other things were put on there to make clear that this was a descriptive use and not the trademark but that's enough to basically do away with any other analysis and that's the end of the story sorenson case the pac man case and the freedom card case all of which are cited in our brief say that mere knowledge of the other side's mark does not equal  intent and all that but that has to go with the course of the issue of good faith bad faith does it not which is only a part of the whole issue but in terms of the infringement and confusion concept how does that deal with that forgive me your honor i'm not otherwise if i'm understanding you correctly the freedom card packman and so on cases if i recall them correctly what you're talking about in terms of mere knowledge is not enough per  conclude that there is bad faith on the part of someone who uses a mark but that's a different question than the one i'm raising which is does a district court without finding confusion have the right to terminate the case basically without making any of this leap crap findings or any of the other findings that are typically made to make a determination of good faith and fair use  just by that alone is that is that what you're advocating in certain cases yes your honor and in this case in this case yes your honor and not just one district judge two district judges  martino denied preliminary injunction in this case because she found that there was likelihood of success on a fair use defense and what followed was three years frankly of scorched  litigation and world war three discovery because the other go at it and i'm just weaker for myself if i don't find in our case law that i mean that i have the greatest regard for these district judges they're fine people find judges but if they're wrong about the law then i can't i can't leave it at that so i'm looking for a case not not at their reputation because we're in no way criticizing either one of their fine people but we need to i need to see a case that says you can leap frog over the analysis that at least i understand is required before you can make a good faith a rather a a fair use determination just off the top of the head would say the lesson of those cases are that some confusion will now listens may be allowed but it is not required for a fair use defense because a fair use defense is a complete says that the district court can basically over like or not undertake any kind of analysis under such a slick craft or any of the other cases if he or she determines fair use is ultimately going to work i just go right to it three responses are ok number one if i were smarter and had photographic memory i could give you the pin side for where the u s supreme court did say that some level of confusion is acceptable and compatible with the fair use defense number two i would put to this panel that a fair reading of the supreme court decision  confusion analysis goes down as the obvious descriptive notice of the phrases use but again this gets back to what my colleague asked if you're talking about something in a summary judgment setting the very fact that you're weighing isn't that something needs to be done in other than a summary judgment context not necessarily your honor and that gets to my third point ok it is often said that disfavored in trademark infringement cases but nevertheless it does get granted and the summary judgment standard where insufficient evidence is presented to raise a material issue of about here is a an analysis of a scale by definition if that if the central point of that is one of those confusion which is the central point of  infringement how can that be a anything other than a material fact that cannot be decided the summary judgment stage because that is not the central point the infringement and the confusion is not the central point of a case like this where the focus is fair use where it doesn't matter if there is some degree of confusion where the marks are descriptive on their face where they used descriptively on their face that is a complete defense and you do not get to the sleep craft analysis in the first place it seems to me the best case for that argument is sorenson from the seventh circuit because in that case the seventh circuit to go straight to fair use and for their statutory copyright or trademark claim they did not engage in and the seven circus version of the sleep craft is that correct i think that is correct other than sorenson which i think is a very good case for you on this point can you think of any other cases like sorenson where they went to court went straight to fair use and actually granted summary judgment so that's why i think it's a very good case for you i have to be honest with you off the top of my head i can't  think if if the court would like us to submit bench briefs after the fact we have it will you always from in the rule twenty a j to submit case law so you can certainly do that according to that rule and i have i have i have fifty one seconds i would i would i would finish with a policy argument and the policy argument is as i understand the appellant's argument it boils down to the mere knowledge  that the other side claims a mark is sufficient to establish bad intent and i would suggest to the panel that cannot be because then all somebody could would have to do they could ara gate descriptive word as a trademark with respect they don't necessarily have to be advocating that they can simply be saying hey the court didn't do an analysis of whether there was confusion here and under either mark if you haven't done that you can't get to  analysis at least under some people's readings at the case but your honor what they're saying is that the the necessary element of bad intent on my client's marg is established would be established merely we were we were prejudiced being precluded from addressing this issue on the summary judgment motions below had we been given that opportunity i'm confident that we would have shown there was no merit to it it's not right that we have to face this issue for the first time on appeal and what would happen if we agreed with you would we would be when we remember would leave to replete i don't think your thirteen i believe you are sixteen where he talks about the defendants primarily marquess argues that showing defendants knowledge of the trademarks alone is insufficient mean well in that case i would contend that the issues already been addressed and and to be clear your honor i have to be honest with you i don't think it really makes much difference whether the confusion is forward reverse or sideways you don't get into that depth of analysis under the fair use defense where the uses here are so obviously descriptive and objectively fair all my clients did was tell their clients what they were doing they were consolidating their catalogs and you should pick this pen because it's the right choice they always did both of those things with their own trademarks there's no conceivable or possible confusion  and frankly i think it would be very unfair to my clients to force them to go to trial and engage now in a fifty year of litigation where the uses here are objectively fair and descriptive dynamic and i know that's what you were getting at it is absolutely an error it was an error and remained as required for this reason alone for a judge to shant to issue without it going to a jury and a summ judgment on fair use without considering likelihood of confusion moreover that directly what what the defendants have been arguing in their briefs and what judge has shot argued in her decision directly contravenes both the precedent of the u s supreme court and this court because in cave the permanent one the whole case was convened to resolve the conflict between the circuits as you know the ninth circuit for years didn't allow any fair use in the end you know to be played as a defense until you had if there was any likelihood of confusion and then other circuits were the opposite the supreme court resolved it k p permanent two i'm going to actually because i have a little time k p permit to reaffirm that said confusion is relevant and then your case of page one thousand and thirty one pretty much said they had to do it you have to go over to do confusion and every case since then that is dealt with this issue they had do have to do it and in your case they also said they have to go to the jury i would like to there's so much alike talk about but i'd like to give you one analogy that you won't get anywhere else that i think is helpful on this issue of whether their use was descriptive and all because we feel that this whole argument about the does the script of use and so forth is just another example of the defendant's bad faith which i haven't had an opportunity to talk to you about that but just consider this one analogy and i think it's clear there's a speaker company in there called acoustic research and they make speakers acoustic search is a registered trademark it is suggestive and it's not descriptive because you can't tell when you see acoustic research whether you're talking about a speaker or what you're talking let's say somebody else i came out and i market a pamphlet and i said and it had acoustic research on the top of it and underneath it it said to a speaker's one way speaker car speaker and then on the back page page one or page fourteen like the defendants put in their brochures we put a whole explanatory page and use it and we said our speakers are so good because they're the they're the fruition of the years of acoustic research what the defendants are trying to do which we believe respectfully don't know a better word for it is a scam is they are trying to convert a discuss suggestive use into something descriptive by adding explanatory verbiage to it and we you can't do that your honor because when you examine a mark you go to the person you say what does this mark mean to you what would you believe this mark to be if you were faced with what product is it and that they have to exercise their imagination it's suggestive you don't get to show them all kind of explanatory verbiage  we just want the law we'll be able to consider if they let me ask my colleagues whether any of them have an additional questions how about judge harman and healing and eliminate every junction opinion the district court did discuss th both and we appreciate that sometimes these cases can be hotly litigated but i assure you that we will be and analyzing this based upon the law and the facts and not any of the hot feelings that may exist so we thank you both the case just argued is submitted in the case and the court stands adjourned for the day