see what happens my client is asking this court to reverse the ruling on summary judgment in favor of mr d and herman and instead to grant him summary judgment on his motion as you know the court in its capacity reviewing these motions de novo essentially steps into the shoes of the district court and evaluates the motions fresh you have the opportunity to view the motions and the evidence provided in the statement of fact of the exhibits and so forth and determine whether you believe the decisions appropriate as you review the record you will see that my client provided essentially five bodies of evidence nine through the time of the case and he talked about his his various the various volumes that were issued and his actions in that regard also in the second body of evidence would be royalty statements describing payments to mr d and herman for their copyrights third would be actual copies of villains and vigilantes versions that are associated to mr d and herman either as an editor and author or an artist  fourth would be a body of these versions or are volumes that have nothing to do with mr de in mr herman and then finally is a group of what i would call statements against interest by mr d or mr herman acknowledgement also by mr d that they cannot take that away because they have no interest in the trademark in two thousand a similar web log entry and finally in two thousand and five another one so that is the body of the evidence my client submitted in connection with the motion for s judgment now standing alone we believe that if you look at that evidence it leads inevitably to the conclusion my client should win summary judgment on his trademark rights and so rule fifty six requires a party who opposes or controverts that to come forward with admissible evidence competent evidence that will contradict or as the rule says controvert that evidence that we have supplied in order to demonstrate that there is no justification for summary judgment so then we look at the body of evidence offered by mr d and herman they provide two affidavits unfortunately they have not listed any witnesses for trial discovery has closed all the disclosures or made no items for which they don't provide adequate foundation or basis for them to testify and our position to it below and to you is that those affidavit should not be admissible for considering and controverted ng our  motion and i believe in the responsive brief by mr d and herman they seem to acknowledge that those affidavits probably weren't considered below and probably shouldn't be considered now and we assert vigorously they should not be so we're back again at the body of evidence that my client supply and the body of evidence establish that since one nine hundred seventy nine forward my client published numerous volumes containing villains and vigilantes as the  trademark was published by his company and then later by himself personally he's the one that funded well but doesn't the one nine hundred seventy nine contract so that when the company is dissolved that's the end of it you don't have any rights they all  well i think your honor is probably referring to copyrights with respect to the one nine hundred seventy nine agreement that addresses the one nine hundred seventy nine publication but the copyrights are separate distinct from the trademark rights yes and so  hundred seventy nine agreement covers current copyright but not trademark exactly there's nothing in the agreement to reference or address trademark and as i mentioned to you the one nine hundred eighty six agreement with a third party clearly establishes that d n herman have the copyrights but that bizarre has the trademark rights so do whatever you will with the one nine hundred seventy nine agreement it may limit copyrights but it does not limit the trademark that my client established and over the course of time from hundred seventy nine through about two thousand and ten or eleven he had published approximately thirty different volumes using that trademark many of which do not involve mr dear mr herman either as an author or an artist or an editor any other form trademark but whether you abandon the trade but right i agree that that's what the district court evaluated it as i read the response you briefly kind of take in a different direction and seem to suggest perhaps that the in herman on the trade that there's simply no basis for that they raise that ever in the district court their ownership of the trademark never to my recollection i've gone back and looked and i don't see anything in the allegation in their complaint or in their motion the argument in the motion for summ judgment was that it was abandoned in one nine hundred eighty seven when my client stopped doing business in his corporate status but as i said after the corporation closed what client continued to publish and to maintain those volumes in commerce and and so the interest of the corporation devolved to him he continued forward clear through two thousand and ten and on the issue of abandonment since then since you've raised that point in in the magistrate's decision below he indicated that he appeared to believe that my client own the trademark up until about one nine hundred ninety i think is what he indicated and then because he didn't see some royalty statements from ninety to ninety four and because he didn't see some realty statements from one nine hundred ninety nine to two thousand and three i think he concluded because there's a period of times where i don't see royalty statements there must be  in order for him to reach that conclusion he had to completely reject my client's affidavit which stated that he had continuously from seventy nine forward published in the worst case viewing the evidence in my client's favor there question for me well i mean let's say that we agreed with you on this on this main point but not to the extent that we were convinced that you your motion for summary judgment should have been granted a right because if i remember these were cross on i wouldn't just recall in that book but we can because i mean i listen i don't have any questions for you on this point i think you're right that there wasn't enough certainly in the record didn't allow entry of summary judgment against your client on on this issue of ownership of the mark but so does that then that then means what that the trying member the other three claims that then would have to be sent back for further proceedings presumably a trial ok if i'm following where you're what you're asking me here judgment should not have been in against my client because he presented statements of fact the question is whether or not judgment should have been entered in his favor and that's what i'm doubting exactly ok and so now we look again at the body of evidence that was before the judge and which is now before you as you have stepped into the shoes ok and my question back in this is rhetorical what have you seen to controvert my client's affidavit where he says he continually did this and yeah but then i guess that's what i started to ask was that it's not enough that you just make some sort of de minimus use you know periodically just to preserve the mark right you've got a camera with the phrases that you're more familiar with than i am but i didn't i guess i didn't see evidence that there was you know ok as i understand the cases my client cannot do acts simply for preservation of the market he's to that question correct now so then the next step is my client entitled to summary judgment based on what he presented and i would take you back again to the universe of the evidence that you have you have my client's affidavit that is uncontroverted now we have royalty statements and i grant you we have some gaps in those royalty statements but my client explains part of of the reason for first of all in one thousand nine hundred five he had a problem where an employee just writes records and you should find that the affidavit as well where everything from ninety five prior is completely lost and we're relying upon mr d and herman to come forward and present us what they have unfortunately they didn't present us what they had through that point and so all we have is that block of records and so there's that window of time my client can't produce and remember again ninety five this is fifteen years prior to the lawsuit can i ask one question on a slightly different topic if you've completed your answer to i hadn't quite finish the ok so that answers that portion but in addition i want to take you back again to the three statements again interest by mr d and herman in one nine hundred eighty eight supposedly just before he supposedly stopped doing it they  it in two thousand right in the midst of the time when he's supposed to stop publishing mr herman says we can't do anything he still publishing by the way if you want to know how others are i'm sorry not lawyers or maybe not but but if a guy who has an interest says i've talked to my lawyer which is what he puts in his web log and i can can't touch it because it's still in print and by the way if you want to go order a copy here's how you get it and this is in his web logs and then again in two thousand and five it's repeated it's pretty far fetched to suggest that multiple times he's saying we don't have it because it's in print with mr bazaar and it's during the same time frame and he's not should have used new york law to deal with the state law claims of unfair competition and misappropriation ok well if you're to this point and i think you've already accepted my argument that we that we are the owners of the trademark and so if you've accepted that argument then the question is why should state law apply this is a tort claim this is not the contract claim the tort happened on my client had been in arizona for twenty three years as of one thousand nine hundred seventy he's out of new york and not related to new york the fact that there's a contract with a copyright issue in new york doesn't mean that a tort claim lies within the state in new york simply because it's the same parties i haven't seen the law that suggests that that would be the case now if this was strictly the beach of breach of contract line i would agree new york law should apply interpretation that contract but as to the tort i submit it does not and i'm down to seven minutes if you don't mind i'll sit down and re court my name is alex reese and i represent the police and cross appellants jeffrey d and jack herman we're here this morning to talk about three consolidated appeals that arise from a dispute over who owns the rights to a roleplaying game that my clients created called the villains and a vigilante s i thought it would be helpful to begin just with a quick roadmap of each of those three appeals and the issues involved with before discussing some of those issues and more detail may run out of t that i'll do my best to get through it quickly so the first appeal is number twelve dash one seven eight two six and there are my clients appeal the entry of a default judgment and damages awarded against them relating to mr used the one the one that was raised most clearly and my client's motion to set aside the default was a lack of personal jurisdiction and but as to the if i remember of the two claims of defamation and commercial disparagement that's correct and i guess i just didn't see how that had any chance of winning under our case law provided that your clients knew that mr abuser was in arizona and was there some indication of that in the record how they would win on the know basically have directed your activities toward the form state that's how i read our washington hsu case there's a couple of others but the defendant certainly has to know that the plaintiff is located there and i wasn't sure if there was evidence that your clients knew that mr beecher had relocated to arizona well first of all i think we would we would disagree with that understanding the case law and the nuance here is that these statements were supposedly made online and in the internet cont the personal jurisdiction analysis is somewhat different than some of the traditional analyses that are applied in the cases cited mr starr's brief in particular there are several cases in the circuit holding simple knowledge where the victim of the statements lives is not sufficient to establish personal jurisdiction over the person who supposedly made the statement online there's another issue that occurs to me with respect to the question of personal interesting question and it relates back to your saying there's a whole bundle of these cases there was another case that had been found and had already been transferred to her zona by the time you file your motion to set aside the default same parties an essentially the same transactions where you had have appeared without arguing about jurisdiction so why isn't bad enough to waive any objection to personal jurisdiction so this is the timeline here is a little bit complicated so if i can just walk through that quickly this whole litigation began when my clients filed suit in florida as your honor noted that was in july two thousand eleven mr bizarre move to transfer the case to arizona and we you're correct that that my clients did not oppose that motion he then filed his own affirmative case in arizona in october of two thousand and eleven so at this time there's the case in florida and there's the case in arizona and the florida case was transferred and it had just seedings that went on before the date that you filed your motion well the only proceedings the only proceedings  are words that are florida counsel my clients florida counsel did interim motion for pro hockey chait in the separate lawsuit that they had filed in florida which was then transferred to arizona so two separate cases still at that time very shortly thereafter the default was taken in my client's contested personal jurisdiction and their very first motion appearing in arizona in this case that i was like the companion case involving the same transactions the same people all they have not objected to personal jurisdiction that's correct so why why isn't that a waiver as to this intimately related matter so i think the answer your honor is that the personal jurisdiction analysis occurs at the time the complaint is filed and actually more precisely as of the time the actions that are complained of in the complaint occurred so we can only look at contacts with the forum state my client's contacts that has nothing to do with waiver it's away from will defense and you can whatever the complaint says you can me in a month later and say no problem we waive it so when you're looking at waiver it really isn't a power what you could have argued had you not waiting to sure ok well so then so then the question is was the fact that my client's florida counsel entered didn't contest personal jurisdiction in a completely separate case and entered a motion for pro hockey ha was that enough to waive their their personal jurisdiction defense in a completely separate case and the cases that i've seen  them have super facts like that they all involve a party who tried to affirmatively sought relief in the same forum either through a counter claim or by filing a motion to dismiss or something of that nature here my clients filed a suit and florida and they did they didn't contest the transfer that's correct but that the mere fact that their attorney filed a motion for pro hockey jets not the only thing that happened there was a motion to  before the motion to set aside the fall or the motion about personal jurisdiction i don't believe that's correct and i could be wrong but the way that i have the time line and i will check the time line and yes but would that have any effect on the analysis would it have any effect whether they yes if you're if if your clients affirmatively requested that the action that they have not objected to having transferred to arizona be consolidated with this other action i think that once the cases were consolidated and my clients began litigating in the same case then the argument for waiver is much stronger and it relates more closely to the fact pattern seen in the cases cited by mr bizarre and i believe the motion by d n a herman to consolidate was filed on march sixth twenty twelve your motion to set aside the fall was in january yes two months earlier a month and a half earlier and the case was transferred back in november so a motion that consolidated was in march correct to senators right so their motion to set aside and their based i can give you the lexus citation if you like publish or probably not going to look at it as published on what we have published authority that deals i thought with internet related activities but maybe you're telling me i'm wrong and that the cases i'm thinking of line or not if the if the defendant knows that the plaintiff resides in a particular state and does all it can all he or she can to destroy that person's reputation why i thought our cases were very clear that yeah that's directing purposely directing  that form think that's enough for general personal jurisdiction but for specific as to the i suppose claim well all i can say is that it's seems that the courts have struck a different balance for statements made online and there's a reference in one of the cases we cited to why that might be the case and this is likely a published case eccentrics venturous versus byrd district court of arizona case published at six eighty three f subsecond ten sixty eight and the the court says basically that asserting first personal jurisdiction that broadly for statements made online could chill free speech and i think that's a reasonable reason to distinguish between for example one of the cases cited in mr bazaars briefing brainard where it was a letter sent to the forum state phone calls to the forum state in which the defendant talks with the victim's employer that's very different than somebody making a statement you know ten states away online which could be read by anybody and those those cases that we've cited hold that merely knowing where the subject of the statement resides is not certain something else you have to do you have to send us into the forms they you have to in the context of a site in europe but no one in the context of the internet yes that the statement has to be directed toward the form or somehow call attention to residence in the form that it's targeted toward them so here again i'm quoting mueller versus g m a see mortgage district court of arizona case and i'm quoting unless a website has unique ties to a particular forum or the content of the offensive comment is somehow form specific there is no personal jurisdiction the content of the allegedly defamatory communication  here the court found that it was not enough that in that particular case the statements were actually made on the plaintiff's own website that the defendant went on to the plaintiff's web site and left it supposedly defamatory comment on that it on the plaintiff well my clients also can test whether they even made the statements and i'd be remiss if i didn't know that which would also be in their meritorious defense it's got bigger fish to fry than fifty three thousand dollars  and this case strikes me there's a lot of emotional content to what's happened between these parties have the parties considered or have they tried using the mediation better sense of whether the extent you know you know when you come back it's just a thought if if you have made efforts and they have failed that's great that's what we're here for but if you are if you haven't we can always allow the parties time to consider that option sure so continuing with the default for just a couple minutes and then there are larger issues but even if there was personal jurisdiction the default was still improper under the fall versus allen test that's a ninth circuit case published at seven thirty nine f second for sixty one my clients litigated the entire default proceedings pro se and under that three part test there was no culpable conduct on their part they had meritorious defenses as we've discussed and setting aside the default would not have prejudiced mr bizarre so we still believe that default was improper even if there was personal  and then the last point i'd make about the default is even if it's proper under the fall forces alan part next fall back argument is that it should still fail for a failure of proof if you look at the complaint that mr bizarre filed in this action there's element so moving on to the second appeal which is thirteen dash one five three six one that's the appeal that mr three addressed in which mr bizarre appeals the district court summary judgment ruling and th district court granted granted summary judgment in my client's favor both on their copyright infringement claims against mr bizarre and on mr bazaars trademark common law misappropriation and unfair competition claims against my clients the standard of review here is to know though and we'd submit that the court should affirm in all respects as the copyright claims my clients created this game they created villains and vi and under that nine hundred seventy nine contract which came up during counsel's opening argument they retained all rights to the game except for those that were explicitly granted to mr bazaars former company called fantasy games unlimited inc there is also i believe one of your honor's referred to this there as a referred or in that contract that if mr bazaars former company ceased doing business for any reason all  don't know where that comes from there's nothing in the argument to excuse me there's nothing in the contract to suggest that it's limited to copyrights there's a fairly specific provision  appears at excerpts of record four zero six paragraph fourteen of the one nine hundred seventy nine contract all rights not explicitly given to fantasy games unlimited in the contract are reserved to my clients or hear paragraph fourteen in your four of six and earlier in the contract the only rights that my clients granted to fantasy games unlimited was publication and distribution rights they didn't grant entitled to summary john but i certainly don't think that your client was something just so i think the issue here is it was these were mr bazaars affirmative trademark infringement claims and it was there for his burden to come forward with evidence proving his ownership and we have to start with the presumption that my clients owned the trademark to begin with they created the game it was their idea they owned all the rights to it from the beginning and they had a publication and distribution agreement with mr desires former company that did not create mr bizarre himself any rights but he was he was i mean tell me if i'm wrong on this i thought the evidence was undisputed that he most certainly was using the mark on works that had nothing that you know for which your client had no involvement basically and you know i mean so whether your clients were asserting ownership or not i mean he started using it for at least some periods now you might argue that while he abandoned this point but there are definitely periods where he was using the market acquired ownership rights right i would dispute whether whether he acquired ownership rights if if the question you're asking is did my client's on the market again was and then lose it because he started using it his use was all under the knowledge that mark was there speaking with so i don't think that he could have acquired the right to the trademark knowing that his only right to distribute the game is me right so this would be an alternative grounds on which you could a for the district court's ruling and just to clarify one thing about what your honor said the district court never found that mr bas are actually on the mark it found that even if he owned the mark he abandoned it so never reach the issue of his ownership and how he could acquire such ownership knowing that his only rights her to his former company's rights to distribute and publish how he could then go acquire the mark simply and and so i don't even remember in your summary judgment paper in your but your client's summary judgment people don't even remember a request for an award of statutory damages i thought that was the really the defect procedurally the way this case is coming to us is that your client's former lawyer perhaps you know should have done more to assert affirmatively that hey if you rule for us as the court did on our copyright infringement claims we want at least the statutory damages and perhaps  i agree with you that it would have been ideal if the summary judgment motion at included a request for damages i c m of my time but i'll just say that there are since they're often motion for summary judgment that only a liability question and reserve the remedy question to intend to argue that they were not entitle to damages and your honor you're correct that the complaint asks for both damages and statutory damages in particular and my clients raise that issue again in their will fifty nine  remember looking at that and being quite startled to see a request tell me if i'm wrong i thought they were basically saying look what we really want is just give us enough damages to offset the amount of the just man who called it that and then presented no evidence to substantiate t fifty two thousand dollars figure i don't remember there being any request even in the motion for reconsideration for an award of statutory damages in x amount i agree that there was no amount listed but they did but they did refer in their rule fifty nine briefing it may have been in the statutory to their entitlement to statutory damages and i think i think what your honor is getting hit on this issue is the rule fifty nine request it could have been stated more clearly and i think the district court misinterpreted it as a request that the fifty two thousand dollars judgment against us simply be transferred over to us and that is that's not what my clients requested in their opening brief on the rule fifty nine motion they said there is there is a lot of evidence of damages in this record already for example and then they listed some of the elements of the damages that make up the fifty two thousand dollars some of which relate to mr bazaars infringing sales and they liability and damages don't have to be resolved all at the same time and they have a statutory right at least to statutory damages under the copyright act there's simply no reason that they shouldn't be able to obtain damages from mr b'sahrs infringement especially with a record like this one that contains quite a bit of evidence of his infringing sales and the profits he made from those sales so what's the amount of statutory damages that i'm looking at now the motion for reconsideration and does definitely does not state a figure so what's the figure that should've been obvious to the court as to how much in statutory damages your client requests i think it would have to go back there and there would have to be and that's what i'm saying and that was the burden of your client's had at this point in time if you want to tell the district court that it errored and you need to fix it it seems to me know it seems hard to fault that especially given that a review here is for abuse of discretion that's all you gave the district court were supposed it was an abuse of discretion not to figure out that x number of dollars should have been awarded in damages  in the reply i think mentioned the figure of eighty five thousand dollars minimum that was demonstrably wrong from where it had been presented earlier yes i believe that's correct your honor has a better memory that briefing than i do i think  first of all facts that were not included in this discussion about about whether or not the rule fifty nine motion should be granted our motion for summary judgment specifically alleged they could not damages they had not disclosed any they had not not disclosed any damage witnesses no experts nothing we asserted that in our motion for summary judgment and there was no response to that motion so the judge had that in front of him on the motion for s nothing offered by mr de herman his decision was not an abuse of discretion based on that context next thing to correct the record one cannot trademark the title to a single book it can't be done therefore the one nine hundred seventy nine book could not be trademark trademark rights could not be established agreed upon in that contract it's only by a succession of publications or books that you can create a trademark in a series of books and we cite the authority in our brief so it takes a series of books in order to create a trademark in the name of the series my client did that they did not the suggestion you should start with the assumption that they owned a trademark i unsupported by the record and by the law only by my client continually publishing numerous and a brief address approximately thirty different volumes that my client published to create that trademark nothing published by mr dear mr herman and nothing in the record contradicts that that's those are the facts in this case ok jurisdiction i would disagree with counsel that there is a different test to be applied merely because there is some kind of publication on the internet as opposed to other situations the test is the same however you look at things a little different when you have some type of internet posting or web log the problem is this we're not talking about generically we're talking about what was in front of the judge as of the time he was considering their motion to set aside the default judgment and so at that time there was no evidentiary hearing there were no affidavits there was no development of the facts in any way which means the only thing the judge had in front of him was my client's complaint and their motion to set aside yes set aside the default in their motion to set aside they assert two facts number one they don't live in arizona number two they don't want any property in arizona they do not assert any other facts so then we look back to the complaint and when the court is determining whether my client has met the burden on jurisdiction the court has to assume that the allegations of the complaint are true which means the look at the complaint does the complaint allege sufficiently to establish well the sea it's it's the lake decision i believe that talks about yes the late decision from this court talks about purposefully directing to the state so the question is does the complaint alleges a purposefully directing these definite defamatory comments to the state my client's complaint alleges that i don't have  could facts be presented to support that complaint and if facts could be supported then you must accept this allegation the complaint has been correct because again as i said there was no evidentiary hearing there was no development of the facts beyond that so we look at the complaint to say does it allege sufficient for jurisdiction but there not been a default judgment then the defendant is going to come in and move to dismiss for lack of personal jurisdiction on the issue or been joined in all of this kind of discussion we're having now would have been developed right presumably and presumably they could have attached affidavits that raid specific points they could have brought these things forward or asked for an evidentiary hearing i suppose but we don't have that we just have the paperwork and the paperwork is assumed to be true  and you must assume that put to the test my client could bring forward the witnesses the affidavits the evidence and so forth to establish that that was the case now i understand we're talking about this in a vacuum but that's the element that is the standard you're looking at here in this particular situation if you look at each of the cases what about ok i mean i think i got a get your point on that but what about this backup argument which is that they did finally assert i can't remember exactly when in the process that actually we never even made any of these  answer that they gave or that or the statement they make is we just viewed everything that doesn't give anything for that for the judge to sink his teeth into and say yeah you know you're right this is really something we need to fight over they don't present any meritorious the fans and the tests motion but you know viewed more importantly is their jurisdiction there is based on the complaint and of course reference in her questions certainly there's waiver after the fact i mean we can't accept counsel's position that when you have  same parties same judge same forum same basic issues all in the in the same context that they haven't waived that jurisdictional if you want to say anything at all about our court mediation of the motion we had a definite impasse we were invited to go through the mediation again by the court staff which by the way this is an excellent course that has been wonderful to work with but at that point in speaking with posing