with the court's permission i would like to reserve three minutes for a bottle to set forth in our brief in this matter we feel that there are two main issues before the court one whether the district court erred in dismissing j when it found the gibson failed to state a claim against back as a matter of law for secondary trademark infringement with regard to j h s dismissal for lack of subject matter jurisdiction you know hours after our initial brief in this matter additionally your honor we agree with j h s in this matter they concede subject matter jurisdiction and its answering brief on pages one and two and its jurisdictional statement in its use presented and in heading for its summary of argument and page nine of that answer brief we believe that that leaves two alternate arguments from j h s in this matter that this court dismiss this case for failure to sta claim or on summary judgment with regard to the failure to state a claim your honor we believe that the district court in this case than i do address the issue of a twelve b six motion to dismiss for fa claim and into that then we believe that if they did consider it that they would reach a different conclusion if the if they could not consider the disputed factual claims contained in a document outside of the  declaration of dentist drom a principle in j h s that indicated that j jest did not distribute the sponge bob flying the ukulele and us connor's with regard to the alternate argument for just missile under summary judgment we believe that this is just a premature issue in your honor's because as the moving party j h s is not answered in this case and therefore forward on the contributory issue on twelve b six are we at liberty to the court did have it will be six motion before it to construe the on the issue of whether a cause of action has been stated just a straight out violation based upon the way the complaint itself was worded in terms of the use in commerce other words can we we believe your honor that it was adequately pleading and that as i said the district court would reach if they couldn't rely on the state and i get your point i know that's your position and my question is are we at liberty under the case law  basically put aside the court's trial be one ruling consider the complaint on a trial be six basis the district court went to a different element admittedly in its twelve b six analysis but then we look at the complaint to determine whether it states because of action or just straight violation of off your honor i believe i believe that you can i don't have the cite in front of believe that we played an adequate facts for a  jest to infringe on the gibson flying v trademarks and or to then viacom continued to supply its trademark after being placed on notice the j h s was using the sponge bob flying  to engage in trademark infringement also when a defendant supplies an infringer with a service rather then a product the court must consider each stand of control exercised by the defendant over the that you had basically everything was occurring offshore the only us involvement in just came from counsel's request for something as i understand it if the court had that before it would that not be enough to make a determination about the use and commerce requirement we're on our position is that we're i guess we're not ready to that point yet in the fact finding of the case all we have here is we believe a well well pleaded complaint and then a motion to dismiss with without anything further we have the only thing contrary to our complaint which alleges the secondary infringement is this declaration that there was no use in us then they moved to dismiss the trial be six right correct natalie and the contributory issues but enough for the court to make the determination yes your hon judge prager's and in fact relied upon in his order dismiss we argue gibson argues that it's more than just a plain vanilla greenman with limited control to protect the the trademarks and in fact the record shows that there were at least two trademark agreements in this matter the heavily redacted trademark agreement and trademark separate trademark adream agreement with with different terms the game by concentra will over the design the promotion the timeline the release of the product the location of manufacturing control over quality control location of testing frequency of testing right of rescission the location of the sale the language in the materials the product sampling the product inspecting the governmental law the control the license agreement which was new york city or new york state apologize and the copyright placement on the product which direct control over the instrumentality and means of infringement by the control that i just stated from the additional license agreement in the case of district court we believe  requesting the gibson also establish by removing viacom's trademark that there would be more than a practical fact on stopping the infringement we believe that that was more than the lockheed case gives and believes that by account trademarks are not an ancillary service in this case your honour's if the we have a single product here you have the sponge bob flying v ukulele there's not an ancillary moved for dismissal pursuant to twelve b six and as a presented additional facts also requested if it wasn't enough to dismiss on twelve the sec's that it be converted to a rule fifty six motion these motions were fully briefed gibson never made any objection about the conversion of the will fifty six motion essentially what will happen if this court remands is that the district court's going to make the same factual  under rule fifty six what would the civic declarations or documents would you root for the court to our determination of whether the cause of action has been pleaded the websites where they claim these were offered for sale besides being referenced in the complaint therefore being important to the complaint i believe perhaps were attached and those documents alone and then think those are the most important points under twelve b six and then if you extend it to look at this under a rule fifty six analysis there are the is it clear from the district court's order that when he granted when the court granted the twelve that he only looked at the documents you you just articulated that were know what you can learn just from visiting those websites that they're all in foreign currency that they were all located overseas that the  into those two sections that this is what the court found that would be allowable under twelve b six and here are the additional facts that would be considered under rule fifty six well it looks like he ruled under twelve  no when it came to g h s he ruled under twelve b one which at the time well be one right which the time was was pre la quinta right and but he did not rule on twelve b six he because the court reached that there was no subject matter jurisdiction which was the law at the time the court declined to rule on the twelve b six motion at all which means that it's a guess that he was reluctant in light of all the factual record that you put in front of him that he was reluctant to say on the complaint they failed to stated clearly no i think it was situation where since that we since the first portion the twelve the six analysis was dispositive there was no reason to reach he didn't so can we should we take a look at the complaint in only the documents that are appropriate on a twelve and say well none the less he failed you fail this plan to fail the state a claim for relief against your client yes your honor the ninth circuit has made it clear it has the authority to do that under johnson v riverside health care system by far we have the authority but infringement against your client absolutely your honor the the the finding the holding that would have to occur is that an individual in the united states could go to any website and he from any retailer anywhere in the world purchased something jump through hoops to have it shipped to the united states and that would be use in u s commerce effectively that finding would eliminate the territorial nature of trademarks which cannot be disputed what makes this situation even more egregious is that a finding of use in commerce would mean that a party or its council can go to any website in the world purchase a product that could be completely not infringing in that territory ship it to the united states and then that would create use in commerce this is very analogous to well settled case law that if american citizens buy something abroad and brings it good morning your honor is my name is jonathan save and i'm representing viacom in this matter of first just on to clear up the procedural confusion viacom's motion with respect to the first minute complaint was just the twelve the six motion mode on on the contributory on contributory infringement so viacom moved against the first to many complaint on soley on contributory infringement because i was all that was alleged  infringement but you're saying that for for your purposes you believe that the court should affirm the district court's ruling under twelve b six on the collateral claims which would go away if ultimately sponge bob whatever his name is a sponge bob square pants you are bunch of i'm the wrong generation also your honor i sympathize with the problem i don't seem that particular cartoon or whatever it is you have i haven't really seen it yet but you know i'm after my kids i'm sorry your honor the question was you know so it's ok the district as i understand the district court dismissed it based primarily based on the fact that its counsel said this was nothing more than a plain vanilla yes you lie with one other except which requires the license or to it to reserve some control to protect the trademark that's correct and all of the control was directed at e viacom j h s manufactures many musical instruments in all styles by com and could well of manufacture this exact same musical instrument without the sponge bob trademark on it but by comes controls like any license or the concern is the use of its mark and that's what all the controls are aimed at that's what the license showed and i think what judge progress and looked at was the terms of license and the against your client or for contributory infringement or vicarious infringement right that's correct here and here i gather you're saying that whatever we do in terms of analyzing whether we should make it will be six determination on straight infringement you want us to affirm the district court's ruling on twelve b six on the contributory infringement and vicarious vets correct your honor there are they are two different questions should i think i believe with all due respect  to find that there is a claim for infringement here because i think there is a subject matters to question still remaining even after we came to i think that there is certainly question whether the use in commerce but irrespective if you kept the use of the mark explicitly outside of the united states one of the things that viacom is being accused of is failing to prevent infringement you know this goes to the contributory vicarious infringement failing prevent infringing the united states when the license itself specifically said if anything containing the viacom market cannot be marketed or sold within the united states and do this because trademarks and copyrights are licensed church by territory throughout the world this is the way the business world works because countries have different copyright regimes they have different trademark regimes and you have different licensees in these various territories black companies very specifically not licensing in the united states and yet the council for plaintiff simply by going on the internet in a number of countries i don't remember who was seven different countries and causing these to be shipped back into the united states and this is the only allegation of any commerce in the united states or any sales they're saying that somehow viacom caused this infringement  party sellers either with this it which he would give him is looking to do is basically say a u s trademark and presumably a copyright is in forcible everywhere in the world because given modern world of internet and travel you couldn't license by territory any more all of this would fall away individual national copyright and trademark regimes would fall away that's that's the i think the court may want to consider the subject matter jurisdiction because i think look into did not overrule starkest and there are very different issues involved when you're talking about jurors with the court has subject matter jurisdiction which says the jurisdiction must arise under the laws of the united states and for soli foreign activity here if the court extends jurisdiction to this since we're talking about the power of the court to act well we're going to the court does have jurisdiction of the trademark act the question is whether or not the trademark act extends extraterritorial well it under start it has to end it may not under certain certain probably in slim it is circumstances it might if you meet the death starkest seem to indicate your honor which was this court which is not overruled by look into that the analysis of territoriality was subject matter jurisdiction when the court should exercise subject matter jurisdiction and it is important just purely for an activity to go through discovery to resolve something it should be resolved right in the beginning but i thank you  the record i think i indicated that judge what is the general rule of the federal public court that if that you do not consider issues that were passed upon below in council and i guess what i struggle with here is admittedly the judge trademark other words i'm wondering whether the district court hasn't already analyze the issues that we would need to analyze were we to have where the district court to have considered  circumstance he may have judged but but i believe that if you rely on his order document that he would not have been able to rely upon all k so you're so you're saying that he considered in that analysis items that he would not normally evidence whether it was played where there was a lads he addresses whether the evidence was provided and that would not be the standard it would be whether we played use in u s commerce which we did in or just briefly address by counts contention that we're asking this to apply to any foreign seller again we've alleged to use in the united states we've shown the control