dismissal of a complaint for trademark infringement trademark infringement complaint was dismissed based upon the district court's finding that there had been an assignment in gross of the also it's not her husband it was her her brother and and so but her brother worked at the company and and she because her brother was there she had none the company of camelot the sixty thousand dollars and and and it's true it it wasn't structured as a security interest because you can record a security interest as well against a trademark that wasn't the way it was structured and the parties are free to structure these deals as long as you don't end up with a simon and gross and so the key issue here is once they agreed to structure the deal this way in and understood in its own sales agreement that it would be licensing the rights and then the and then the rights would be assigned to ms parkinson and and therefore why that's the exact reason why this is not in and simon engross because of the bet the license or receives the benefit of the licensees use of the trademark that's just hornbook law for trademarks and so the fact that that to wreak eric to rise the transaction would not be appropriate to just simply say this was somehow a security interest and that's all we're talking about because if that's something that the and she did expect that she would be paid and she never was it's not it was it wasn't a provision that she had it's in the sales agreement so that it doesn't appear there that's a separate agreement that previews of the maryland trademark for a period of five years from the date without compensation or consideration paid to nina parkinson as it's registered all correct i'm not so she gets no consideration at all right correct she does not get consideration during those five that five year period but she does become the license or under section under that separate one under one point three but this is  problem with the assignment in gross she get the good will she don't get paid anything she has no ability to enforce it what you get you know she does have the ability to enforce it because in the licensing agreement period because section one point three specifically says that during this five year term buyer shall licens all of the rights so the buyer is entering into a sales agreement understanding that for the first they're buying the assets of the company they're then using the maryland mark to sell product and they understand that when they bought it they didn't pay full value for the company they they bought th ended up getting the the getting a license for the first five years understanding that over that five year term there would be additional payments we're not we're not arguing about the had to pay an extra sixty thousand dollars for the purchase of the company in order to acquire those rights they didn't want to pay that full amount there wasn't an agreement to pay that much more and so then that was structured in this separate asset purchase agreement i thought that the goodwill was separately conveyed in that document the the assignment was a document that was a part of the package an integrated referred to in the robot has obligations because they may know may have needed to sign off on it but who got the good will nina parkinson and you say she got it by virtue of the assignment of the trademark under the trademark so it so there it was clearly in a sign of that trademark and that was not simply a neck it i mean i could license a name in signing for us because she immediately think every ongoing business has a good will and so that good will and in the business was with respect to the trademark was sold to her if a business has other goodwill not associated with its symbolized by the mark correct so my question is in what way vivi assignment of the mark permit that to occur because because it was part of this sales agreement where the good will that camelot had built up that in its sales of the product was simply transferred to to respond to it continued those sales and and those sales continued pursuant to a lot simultaneous license to robot and of the trademark rights for five years and of the other five years and everything automatically went to robot that's correct assuming that everything goes ok during a like five back to judge run hard security question wasn't this really just a disguise curity grimaced they're basically no it's not as a sit disguise security agreement is a different do security agreement doesn't come with the ability to control the quality of the goods that are in the license but when you when you have an agreement that for where she is receiving no know she she is she is getting consideration and what she's getting consideration because she it's kind of like if she's fearing that if she does an album maybe get me to consider her license or right she has a license or but she's she's not she could someone could license their trademark for free and it would not be constitute and i simon and gross just because you chose to license after we should have to retain control right and so she does retain control she has absolute control over the quality of the goods because the licensing agreement specifies specific terms for her to exercise control over any new products that are reduced so be able to see those products to be able to see have samples sent to her during the term some of the five let me as you saw at the end of the hearing in front of judge real you asked for leave to  and he said no correct no way given what we've got here there is just it would be futile what would you what additional allegations would you add to the complaint if you had the opportunity and it came find that it's an assignment and gross that was his release the reasoning the factual underpinnings of his decision so in then i said and that same part of the transcript when i was going to make my offer of proof i said well then i'll show that so the fact that she does not she's not using they're selling herself does not mean that that she's not conducting these new standards trademark she is under get under the gala decision there doesn't have to be a complete transfer of the assets correct very well but in what way would you possibly damage if there'd been a breach of the license agreement how could she possibly be damaged she she's exercised her ability to exercise control over her property over the license is essential to the in fact the ness of that license and and and the issue is as far as the damage the damages arise  five years you're absolutely correct john and i cannot dispute that language but what i can refer you to is the e r fifty which has the actual trademark a sign that which is the accurate representation of what was assigned and that that it's clear that it expressly says that the good will symbolize to associate the business conducted under the trademark that that could well has been assigned when we do have if those are in conflict that there is this license that they are that they are licensing it so you have a third document that says that but also the courts already pointed out of way around that problem which is just to recognize that there's more goodwill associated with the business than just the good parkinson split this deal three or four different ways he had the a p a which is part of the primary exhibit here about the purchase of the brushes the marilyn line the goodwill being  trademark and then he also had a personal services agreement i don't know why no one really knows why for him to be paid for a period of five years after which the trademark would in there too to remember there was an underlying litigation here arbitration which after decided against mr parkinson on matters related to that personal services it means only after that decision attempt to enforce her trademark assignment the problem with anything related to this trademark assignment is that it's not valid because the goodwill was transferred very clearly in the with it didn't there is no such agreement that gives her the good the goodwill the trademark assignment the purported trademark assignment is when calling it and after her first two thousand and eight the council referred to that happened a month before the date of this asset purchase agreement re cited the transfer of good will but recent resuscitation of the transfer of goodwill is not enough under the law that's clear and mr dunn and that's clear in the other the other cases that that talk about what really needs to happen for a transfer to be valid now we don't really know what if anything was transferred in that assignment you know parkinson didn't control the company  agreement when we look at that that informs us that nothing was transferred because you can't split the goodwill of this business and you can't first transfer it purportedly to your sister and take that same goodwill and sell it to my client that shows us that nothing was actually transferred that in fact as your honour's i think correctly pointed out mr parkinson was trying to retain some sort of security for his know my point is that they simultaneously they must it when they signed that asset purchase agreement they must have known then that camelot had assigned the mark whomever may have kept whomever may have controlled or not controlled the license to them in this agreement as long as they were getting the right to use it and didn't have to make you know payments except to camelot and that's what's contained in the room and that's all they cared about and move on now if that assignment was invalid it doesn't matter whether it's referenced here and it doesn't matter whether they were aware at this time of the trademark from the october first purported assignment  said he said no goodwill was transferred and i think without trying to read his mind because we only have a trance truck transcript from the hearing if you look at what was alleged in the complaint the complaint talked about the  and the goodwill being transferred that's not disputed well goodwill the way i understand from gallo is that goodwill can be transferred if there's sufficient control is retained by the license or yes but this isn't the reason this isn't gallo ok and gala there's a settlement agreement in which the wine company owners and julio gallo received ownership of the trademark they then assigned it with a license back a direct transfer between owner and licensee here you have owner who transfers goodwill here and then a month later goes try to transfer that same goodwill here it's not it's not a direct assignment my slightest way to scale i mean why isn't the same principle apply them if she as long as she has or can allege that she has sufficient can she the owner has the mark and has control why isn't that sufficient if that had been the way the deal was supposed to be structured if that's the way the act arms actually did it they said you know we're going to transfer all the assets and the goodwill the business we have this is simon so she's going to control the quality that's nowhere in the paper says no where in their complaint decided that he had been paid everything he was owed lo and behold a month later a letter come saying we're pulling the trademark that is that you can't do that it's not a tool to be used to get where the license is in paragraph one point three of the asset purchase agreement it says that during this five year term buyer shall license all rights for use and distribution there under under a separate agreement attached as exhibit one is the letter that judge rinehart keeps you from going to is that exhibit one is that the license very possibly well again we have we have these this document  has the one that was in the arbitration for example didn't have all the exhibits with it so there's all different versions of this i'm not i'm not trying to hide that knowing that if that was the kid that i was reading this and i like well i think i read then i thought well let me right i don't know if the death of the makes sense i could figure out what was going on but but of the bottom line from from from your perspective you can't transfer the trademark without transferring the goodwill so in this case they allegedly transferred from camelot to nina parkinson the trademark with goodwill then you have another agreement a month later where the same entity purports to transfer the good will and the assets to robot there right correct so at the very least if the allegation is correct then you've got a double transfer of the same asset which in and of itself i suppose is a form of fraud that's not before us allowing the trademark to be used by robot correct is that an issue that we should be thinking about in other words do you have a valid contract without consideration i don't believe you do you  because you have something that we sites good will transfer but it isn't actually it's not it's not enough to reciting these cases say you have to show that it occurred and that it could not have occurred because the entire product line that camelot was selling that was purportedly transferring the goodwill to nina parkinson a month earlier was transferred to rob banda who went out and made these brushes who went out and sold these products as part of a purchase agreement where they bought it f parkinson's brother so i think when you try and trust me i've tried for years and ravel this transaction it's not that easy but when you piece it apart a little bit i think what you see what's revealed is that mr parkinson had trying to create this is simon in order to create nothing more than a security interest for his salary or his money he was supposedly getting into the separate other agreement that he have a broadband out for personal services when that agreement ended up going south on any and get end up getting a judge ruling against him his sister tried to pull the trademark but that original assignment was never valid it was it's a it's a legal nullity it really never happened references that it was never transferred the argument was that because it was transferred later in the purchase agreement could not have been transferred well that's really a good argument i mean the argument to transfer something and then you later sell it to a second person doesn't make the first  vandyke's company out of south america who partnered with mr parkinson prior to any of this happening has a recorded assignment to them claiming that they also own this trademark they're not a party here perhaps because service  the line is doing ok the lines not doing great my client i think is interested in possibly trying to find a buyer for it he he they they take old lines especially make up and stuff and they try to make the new we're going to try to make them viable they take who has put us through every ringer of litigation possible and the underlying cases i don't expect this to be different i don't expect him to want to settle this without extracting more than a pound of flesh on this thing and i don't well i don't think i mean i'm not saying that he couldn't resolve it before or after the i'm not involved in the arbitration i believe it was after i believe the arbitration was decided awhile ago that my client was not involved the arbitration she had nothing to do settlement at any point you don't have all the parties represented right no we do because it because this case has nothing to do with tony parkinson nothing at all what about a ploy it's not a party to this not a party to want about the what about the person who has the registration on the trademark that know that that was a case in florida and it's actually referred to in this agreement that they have to pursue the litigation and that was one of the obligations of the seller to continue the litigation on that and i believe that that was been resolved and and so there they are no longer have a claim and he wasn't his partner it was a company he had worked for it was his brother was it and they don't  and all of you know and all of these things are are outside the scope of the pleading this is a motion to dismiss on a twelve b sex and these are all issues that go far beyond that but i would really appreciate if i can just have one moment to explain a key issue that keeps coming up with respect to the resolution of the issue of the assignment of the good will to repond is once again in the first sentence and only referred to the second sentence of section one point three the first sentence of and the buyer does not acquire the trademark until the end of five years so therefore that does require the goodwill well it can't require the goodwill if it for the trademark if the trademark has been assigned you or you just you just english the goodwill of the trademark whatever that may be and the goodwill of the company there can be separate goodwill associate with other aspects of a come to what what's an assignment a gross an assignment and i'm glad you asked that i am too and an assignment of gross the policy behind it is that people don't own words and can't simply have a word separate from the sale of a product  commerce and when someone tries to own a word through the trademark laws they can't do that it needs to be associated with sales in commerce with respect to specific goods then it becomes a trademark in protectable that assignment engrosses not been violated here because side with all these agreements together she was the licens or of the licensee who was continuing the point two no four point three you will see that they knew that there was going to be an assignment of the trademark because the buyer might have to sign off on that document and then in section seven point six it talks about transfers of all third party agreements so it talks that seller shall execute all documents and right right so their way which according to you has already transferred everything there is to be transferred in the trademark assignment to nina parkinson correct to submit this document this is the sellers of the agreement asset purchase agreement contemplates and makes it an obligation for the seller to transfer those rights to provide the documents associated with the transfer of a third party and great party agreement robot and has purchased the inventory and goodwill of the maryland brand so you know the license or nina parkinson is saying you robot to have purchased that from camelot be out of the complaint if you're relying upon it to show there was a valid transfer of the trademark well if that becomes the issue then i should have a right turn then to say so so it's dismissal on  completely out of time but dismissal on a first motion to dismiss on a situation like this where we can't even agree completely on everything clearly was improper thinking ok all right thank you very much for a very entertaining argument