happily predecessor in interest obtained rights to a narrow unregistered logo of the black hills motor classic logo and that logo has no less than eight features that comprise the overall impression of  logo the plane of told the trademark office at the time of prosecution that the word sturgis which shows up as one of those features wasn't functioning as a trademark and i was in one thousand nine hundred five that that w sturgis indicated to consumers the event in the town now by nine hundred eighty seven hundreds of others had already been using sturgis products they were selling sturgis products and the record is replete with evidence of that sturgis trademark registration in the words of one of s m r i's witnesses jim burgess they were going to get that mark no matter what it took and in fact that's exactly what they did but there's no justification for it in the record so fourteen years after they got the logo they filed an intent to use application for sturgis with full knowledge that hundreds of others have been using sturgis for two decades before promptly after they filed their registration motorcycle filed trademark appliqued trademark opposition and they submitted declarations establishing the prior use by they and many others on dozens of products going back to the seventy's in the eighty's millions of dollars worth of sales  f products the parties fought for about ten years in the trademark office and then as m r i got tired of the fight and cut sweetheart deals with their two opposers one of them they gave a perpetual royalty free license and the other one they gave a cut of the future royalties and the ability to control sub licensing going forward so that they could limit their competition and jerry berkowitz who was the gentleman who got t testified that's one of the reasons why he settled because he wanted to control competition so the opposition ended with those deals the lawsuit was filed shortly after but the facts never changed and by that what i mean is at trial mr berkowitz and mr burgess from those two companies came in and said hey what we said all along is still true we were first we were the we were before the chamber and s m r i really wasn't the first to use the sturgis mark now it's important to note that those folks are affiliated with us m r i now and they're still this lack of evidence by referring to their marks collectively as the sturgis marks and it's a clever tactic actually because it allows them to pull evidence from say the logo and say that it applies to the store just mark when in fact one has nothing to do with the other the confusion that interjected by that kind of tactic explains why the verdict is the way it is even though there's no evidence to support it  m r i is entitle to the narrow logo and not much else and so i'm going to address my remarks to two things here one is the lack of evidence of secondary meaning on the marks in the second is the lack of evidence to support the finding on the logo now with respect to the sturgis mark it's a registered mark but it was registered under two out which means that it only gets the presumption of secondary meaning upon registration in two thousand and eleven but there was an accusation of infringement five years before so much like the case in a romantic the presumption goes away if you q s an infringement before registration you don't have the benefit of this of the presumption that's what happened here and there's a bunch of other evidence that rebuts the presumption as well but the net effect is a samurai had to come in with evidence of secondary meaning and they failed at that page three of our reply brief there's a chart it's worth all the evidence prior use by others and as i said it's dozens of products hundreds of vendors millions of dollars back to the seventies and eighties predating any evidence that s m r ever submitted a trial affiliates so when we look at the post from the district court there's no evidence suggesting that summer i was earlier what he says is well the evidence came in the play of said this the defendant said that in the jury gets to decide but he didn't justify the verdict is the timing relevant to the secondary meaning it seems are you conflating couple of the issues here is secondary meaning is determining whether based on consumer perception a number of other things whether it has that distinctiveness well they have to show secondary meaning before first use by others and so the timing is critical here so you're focusing more here on the timing to to defeat that writing and what are some or i will say as we had millions of dollars of sales and revenue by a licensee is royalties but that evidence really if you take a close look at it  the evidence is two thousand and later for us and one so while they spent a lot of money it was too late and i think if you look at the briefs on appeal  if you look at our reply brief we delineate their evidence quite clearly and all of the evidence for sturgis is two thousand and later all of it is that the focus then of your argument really if we if we look at the circumstantial evidence there is evidence of royalties and and revenues by licensees and so on so forth but the fact the matter is and you can say well don't wiggle inference from that can they get an inference of secondary meaning they can in the case law supports that but it has to be a reasonable inference and here it's not reasonable for three reasons one they have no and forget about a long period of substantial exclusive use they have no period of a substantially exclusive use i mean without that they can't get the presumption the second thing is as i just mentioned the evidence of the royalties and the revenues are from two thousand and evidence to support this finding validity because there's no secondary meaning the same is true in spades for the two common lamarck's sturgis motorcycle rally and surges rally in races since the they don't even enjoy the presumption secondary meaning there isn't evidence that they had a long and exclusive use for those marks either the court cites to some evidence that's pretty thin but take it on behalf they have no evidence of what consumers thought about these marks there just isn't evidence to demonstrate that anyone view these as a single source identifier is that the long and exclusive use is just one factor though correct yeah in that sort of was an issue with the jury instruction but the way the jury was instructed on that issue that's one one thing that they can consider the yeah i think the law is that there has to be there can be de minimis used by others but there has to be some period of substantially exclusive use you can't come in after the rest of the public has been using marks for ten fifteen if we look at the docket for twenty which is the court's order on the jama while the pages fourteen to fifteen that's where he talks about this issue and the only thing he says is this he says motor classic in sturgis rally which are in the logo are substantially indistinguishable from sturgis motor classic in sturgis rally that is the sum total of his analysis the problem with that is both of the phrases that he wants to use were disclaimed apart from the mark during prosecution so you're not even supposed to be looking at those apart from the mark as a whole so that's the first area made the second areas he's clearly just looking at individual features there's no discussion about other similarities other differences the fact that more than half of the eight features are absent that the size the font the arrangement the perspectives are different or that the there are additional features that were added so that's what the court said supported the jury verdict and it's legally incorrect there's nothing else that the court said the jury could have relied on on appeal apple e doesn't identify much else the best they can come up with and we put pictures in our reply brief we're some t shirts just say the same thing sturges smaller classes that's it and they say that's a counterfeit of the logo but they don't look anything out light and the only other piece of evidence is that shot glass and we detail that in our brief our moving brief there are scads of differences and what they do again is they focus on just the features that they want to say are the same with and i guess what i was saying to your question judge kelly has yes we have to give deference to the truth to the jury verdict but the fact of the matter is six of the features are not present in the shot glass and as a matter of law if you get down to that level of granularity you're looking at individual features and is frankly no other way to to look at it you are not looking at the overall impression so with that i'd like to reserve the rest of my time defendants rushmore photo in the name and make their living selling geographically themed merchandise throughout the western states they sell south dakota t shirts deadwood shot glasses wyoming ball caps but when in one nine hundred ninety nine they sought to use sturgis on merchandise in connection with motorcycle rally goods where did they go they came to the sturgis chamber of commerce the source of authentic sturgis motorcycle rally goods they filed they they submitted a license application which was approved and they entered into a contract with a store just chamber the license agreement in which they solicited for the right they obtained the right to use the sturgis composite design mark the logo in connection with you know the ownership of unregistered marks arises out of the used by the sturgis chamber of commerce and and its successor in interest my client s m r argument what's the evidence for the evidence is extensive the the the trademark the the so the city licenses the sturgis trademark the city of sturgis licenses the store destroyed money whether there's such a thing as an ownership of this rally is that we know if that's a reasonable question you're o the rally is certainly organized and administer that is that's what happening it is a happening yes or very much so and like other festivals and events there are activities that happen around where the event is centrally located the city goes to great pains we heard the testimony of daniel ainslie the city manager at trial about the extensive activities a city undertakes to put on the rally from arranging its has to do that as a matter of providing municipal services  public the public certainly is able to use the sturgis term and a geographic purely geographic sense businesses located in sturgis such as the sturgis coffee company can use sturgis to get out the geographic location of the business companies can use the sturgis term to refer fairly to the event such as in a magazine if they're doing an article on the sturgis rally but where my client draws the line is when sturgis is used in an unflinching manner to sell motorcycle rally goods to the public my client is has over many years seventy million dollars of goods over five million dollars in royalties received use over several decades question i was going to ask maybe this is the key to it  fifteen and what we established was that under their romantic scenario yes we have a presumption of validity in our sturgis registration from the date of registration but we sought to prove and did prove secondary meaning in the sturdiest marks as associated with the sturgis motorcycle rally and its predecessor in interest the chamber of commerce going back many decades now we would say as far as the defendants are concerned we only had to establish distinctiveness in the sturgis mark prior to two and informing in the reminding them of their licensee a stoppel and licensee obligations they're acknowledging of sturgis rally and races as my clients mark now at trial they would refer to the mark sturgis rally in races as the blood of my client's rights since the cease and desist letter in two thousand and six the banner came down and the store closed and then what happened over the winter in their two thousand and seven catalog they launched a new brand unbeknown to the sturgis chamber at the time and that new brand was just motor classic or its abbreviation s m c and we see in their two thousand and seven product catalog and on their product hang tags those items are littered with designations motor classic officially licensed sturgis and authentic sturgis which are false designations and false advertising so my client brought suit as some are i brought suit after it acquired these rights in two thousand and eleven and four years later this matter came on for trial and the jury found every single claim in my client's favor that it had protectable registered trademark that were infringed that the defendants engaged in false advertising by their sale of quote officially licensed sturgis products that they can that they engage in bad faith domain name registration under the a c p a and that they diluted the famous sturgis mark which was associated with my client after trial however and the jury awarded my client a damage award of nine hundred twelve thousand dollars in damages after trial however the case went off the rails frankly and the district court unfortunately entered a post trial order granting the the defendants rule fifty two motion now that motion was granted in error in many ways not the least of them that a defendant must come to the court in equity on defenses of latches and acquiescence with clean hands now definitive to have been found liable for falsely advertising liable for committing willful trademark infringement and the jury verdict form a special verdict form that has boxes to be checked if the infringement was a willful and the jury checked those boxes that the defendants infringement was willful in each case so defendants to willfully infringed falsely advertise and committed domain name cybersquatting in bad faith which is an element of that claim as per the jury instructions then come to the court in equity and the court improvidently granted their post rule fifty two motion now we can so the defendants cannot come to the court in equity when they lack clean hands and we would say that the defendants clearly lacked clean hands by the jury verdict moreover we can find no example where a district court following a jury trial has even entered a rule fifty two order to enter additional findings of fact we find no example of that in fact rule fifty two exists to allow district courts to enter findings of fact when there was no jury or when there was a merely advisory jury how would you have how do you think the district court should have handled the equitable defenses the court should have refused to come lacking clean hands and refused them in equity entirely i understand the result that you're seeking but as a procedural matter you're saying that rule fifty two is not the proper way to do this what was the proper way of the proper way would have been for the defendants to have posed the jury instructions or elements on the jury verdict form to address the factual underpinning for the equitable defenses they sought for example there was no jury instruction posed by the defendants in fact they decided not to submit one on the issue of did estimate unreadably delay in bringing suit against rushmore photo they had every opportunity to do so and chose not to they can then come to the court under rule fifty two following a jury verdict in our favor and ask for that for the court to make that finding as unreasonable or a common law for the fish to go to   lawyers action or is it just an equitable well they characterize it as an equitable defense it can be a part of a fair use defense i would think of trademark infringement and they spoke that's what i'm wondering how it could become a part of the fair use in korea and that as part of seeking to establish that the the trademark owner has not protected its marks or enforced its mark appropriately or within as it is bound to do as a trademark owner but my client in fact brought this case against rushmore photo it perceived that it had to act because of their blatant infringement and false advertising with respect to my client's  and the defendants elected not to take those to the jury or they took them to the jury and they were rejected because they heard some facts are relevant only to equity that do not have to be submitted to the jury on the court but there may be allow me to address if you would your honor and the latter is an equity ashlands issues that the court found in this case because both of those were were based on clearly erroneous district court findings and that p credible on issues about rushmore alleged prior use of sturgis dozen nations on motorcycle rally products now he found the testimony of mr newman to be credible but the jury did not in fact mr ne was repeatedly cross examined a trial on these issues of his claims of a prayer use of the sturgis mark and a manner and then a call to my client's trademark rights some of the use that he claimed was made  was geographic use it's the kind of postcards of the city of sturgis or of the hillside behind the city with the house sturgis on it that is not motorcycle rally goods it's a kind of some of the used that he testified to trial that was an m a call to my class rights was in fact licensees use rushmore photo made a practice of selling other companies goods such as the the goods of the searchers chambers licensee turkey graphics some of the harmful to my client's rights some of this was in consequential or even helpful to my client's rights so the jury found his testimony on creditable board of the proceedings during the opposition to this your group say that there had been widespread use i think those are the testimony of others and we addressed that at trial as well your honor but if there was widespread use what was the basis of your client's claim for  opposition proceeding decorations but as we had them on the stand and asked them they said they got the seven hundred vendors number from city rally statistics these are just numbers of vendors this could be a vendor selling chicken on a stick vendor offering but it put on a great deal of other evidence that consumers associated sturgis with the service chamber and including a lot of look for the tag advertising billboards along i ninety  extensive licensing in which companies large and small such as coca cola jack daniels budweiser all agreed in in contract that my client own the rights to the store just mark a licensing revenues where other people people as associated goods were the surges rally rather than where their particular source well that is not correct i think again where we were as a different kind of  we were we need to be careful about that because that is a different kind of thing it would be do people associate a a good with the super bowl or the n f l or sometimes the source is not a known particular source but  prove to the jury and this was a hotly contested issue each of the defendants attempts to show the invalidity of any of the sturgis marks was rebuffed and so even there's even a mistaken e chamber took to court back in the early two thousand and obtained a consent judgment in a preliminary injunction against it because it was selling sturgis rally and races licenses without permission after its own contract had been turned down and so eventually they settled with that company and and that was resolved in those rights that were claimed by sturgis bike week inc were purchased so far from being a predecessor an interest  the district court says wrongfully erroneous lee in its report the acquiescence has no foundation based on the evidence of the case the jury heard all the evidence and did not in any way state that s while a geographic term certainly is available as a geographic term others can appropriate a geographic term for their use and ownership and in connection with certain goods and services like my client has done over many years of trial and argued stoppel it's important to note that that the the apple e did not follow rule fifty of emotion on equitable stoppel it was waived they cannot it's not something that's properly to be considered here appeal  the testimony was clearly addressed some of the issues that your honour's asked nobody owns the rally and in fact the testimony was also clear that what what people associated these  marks with was the rally not not as m r i and in fact not some faceless nameless source it was the rally it was the event and the town and they said the same thing remember in one thousand nine hundred five when they were trying to get the logo they said that sturgis to the consuming public is indicative of the city in the of that not a source i got a fire and now they want to have a different because they want to have a broader  licensing campaign control over all of the money and how it's distributed and who gets it that's what this is all about one final comment the notion that my client didn't have any use of stories before two thousand and six is not supported by the record at all rushmore wasn't doing anything until after two thousand and six just isn't true now on equity to answer your question judge arnold here's what's clear if you have a right to a jury trial and there are common issues of fact the jury gets the most it doesn't mean the court doesn't get to decide things in equity but when the jury makes fact findings the the judge is bound by those  here there was no right to a jury trial on the equitable issues and the and the plaintiff happily didn't ever ask to have it or their common facts there were not common facts the issue on latches and ac is inexcusable delay prejudice knowledge and front of act with consent none of those are elements of any legal claims and the apple e never identifies into briefs never identifies what common issues there were they just say that the defendants messed up by not submitting things to the jury but there was no reason to submit it to the jury and this issue of the court  did correct and the issue of so many in the equitable issues to the court came up in the pretrial charge conference in the court judge wright and has been around for a while he knows what he's doing and he even said with regard to their equitable a stop or their license to stop argument he said i'm not giving that to the jury but if a fact issue comes up and we need to instruct i will and then we never did because there were no fact issues the argument about docket three seventy one and judge by can identify that in his jamel order they weren't talking about anything else now they seem to want to talk about anti cybersquatting and other things but the argument post trial was he couldn't do on clean hands because of willful infringement and what they're asking for here is a bright line rule if you have willful infringement you don't get equity there's no it's circuit precedent for that and in fact is contrary to the supreme court press and the keystone cases no rigid formulas so the court has the as long as it's not preempted because of common issues of fact the court does get to decide these issues and even even if there's a willful violation and that is explicitly laid out in the statute so so even if he says unclean hands he can still limit the damages or get rid of them and in fact we we asked the court to do that docket three fifty two page thirteen we cited the three i'm case here from the district of minnesota judge to hime and he said although that was in a different frame it was a summary judgment determination but he said even if you don't prove latches the damages  be limited that sentiment is also set forth in the gaffer a case that we submitted yesterday afternoon as a supplemental authority in that case the course that even if i found complete bar i would limit the damages before the verdict because you waited so long to bring this lawsuit so with that i have nothing else unless you have questions you know well we thank you for thank you for your argument and for the arguments on both sides