me is david castro he's an attorney in my office good morning morning so we have three we have three peels in front of the court at this point in time  as the court can see i only briefed one of those that was the the appeal on still heard it's still had gee i don't know why that incar california farmers association to avoid confusi kind of here's one of the interesting points about this your honor is that you know through the sands of time from when this case started and these cases all started you probably can tell back in two thousand and twelve in the state court and over in sacramento and then went into the federal court in sacramento with what we now call fed grange one that's what these appeals arise out of you probably understand there's a fed grange too that is still going on that is still litigating these issues that's in front of  to our attention here sure judge murphy what i'd like to talk about is the attorneys fees under fifteen u s c section one one one seven and they are you prepared to talk about whether or not the district court got it right when they found that the plaintiffs mark was protectable are you not going to talk about that and i yes i think that that is a debatable and but that's not your issue and tenable issue i think that the appeals from that are not frivolous because i think that there are if you can make the argument under f r c p fifty six that there were tribal issues of fact what i mean one of those issues for example was that california state grange was incorporated under that name in one thousand nine hundred six and continued to use that term grange within its corporate name for you know the fifty years you know out of that you argued that that was acquiescence and i just can't see why because they were then part of the national grange and they didn't lose their charter i can't remember whether that's right verbal formulation but  they didn't leave the grange the national grange until two thousand and thirteen so i can't see why anything before two thousand and thirteen shows acquiescence why i think that that is a plausible our argument also your honor all i'm saying is that during that intervening period of time you know no one from the national grange came to the california state grange and said you know you're using this in your corporate name not simply as well i'm way they got a sears roebuck store in town and it's part of the national sears now if they lost their franchise or whatever it is and they still kept calling themselves the sears store that is when it would start to be a problem i i understand and that's why i would like to address the arguments under fifteen years see one one one seven eight i mean i'm not trying to i'm not trying to dodge the question i just think the stronger thank you so we know that the that kind of sine qua non kind of a touchstone is that is the term exceptional circumstances we know and i've i've brief this that you this court and sun earth following the united states supreme court decisions now uses the totality of the circumstances as the and as the as the standard and my point in my briefing and my point this morning is that i just don't think the judge looked at the totality of the circumstances when you look at his order or would that be worse for you this summer makes gives the judge more discretion i think this on earth does and i think it also it clarifies the standard of review for the court to preponderance of the evidence but here's what judge didn't do and what judge shot didn't do is go through the evidence that have been put forth by the attorneys who then represented the guild and make a determination ultimately as to whether or not and i just want to i want to go through this i don't think there's at least i don't think there's any doubt that the evidence does not show there was malicious conduct by the killer i don't think there's any and i don't think there's any doubt that the evidence does not show fraudulent conduct by the guild i don't think there's any doubt that the evidence does not show deliberate conduct as that term is used in the cases inter breeding one one one seven i think the question here and this is really what the judge found was that there was will conduct in the question is i think to start off before i start talking about the evidence that you have in front of you is that the core the courts i think all across the country and here in the ninth circuit say although willful doesn't have to be overwhelmingly bad it doesn't have to it doesn't have to permeate the case and in some sense there is still some connotation of deceptive in that term i don't know about the septimus but the word fraudulent would certainly suggest deceptiveness but the liberal the words deliberate in the word willful and they're connected by and or so either one will do all they would seem to connote to me is on purpose and knowing you shouldn't and calling yourself by the name of  an association that you're no longer part of why wouldn't that be on purpose and no you shouldn't so this is where your honor think the timeline of what happens here come becomes really important and this could be a long winded way of answering your question i hope i don't annoy you by doing that but let me let let me let me see if i can do it so the motion for s file is is determined in july of two thousand and fifteen and you can find that at the excerpts of record page six sixteen a shortly thereafter the national grange dismissed the remaining claims for damages and there's some indication also that that was going to include attorney's fees i'm not going to argue that to hear enters a permanent injunction and says the defendants are enjoined open quote from using more containing the word open inside quote grange close inside quote close close quote that's at exercise record five ninety two five ninety seven the same time the court denied the use denied in injunction as to terms such as granger c s g and c g and that's at excerpts of record five ninety four and the court found that is because they had either not been raised in the complaint or not been raised in the summary judgment they can find that in the court's record at excerpts five hundred sixty five ninety seven the appeals but the the the other two appeals that  before you today then get broad the cross appeal and the appeal shortly thereafter and this is the point that i'm getting at at in on october thirtieth two thousand and fifteen your honor the guild moved for a stay of the injunction so that's within say two and a half months when the summary judgment comes down it's within about a month and a half from when the permanent injunction gets enter and the case law is in the briefs with respect to there is when you are when you have a stay and you've asked for stay the question becomes whether or not during that time period while that is pending willfulness in terms of continuing to go forward or not to in this case which is really what this case is about the failure to remediate and take grange out of fifty years of business records right i mean that's that's that's what it is well i think i thought the district are pointing to a couple of public problems one was on the website there was still a reference to the history going back to the eighteen hundreds and then the other was when the receptionist answered the telephone at the guild's office and  it in a way that might mislead people who were calling right so how hard is it to make those two changes well so with the with the website what you're going to see in the end the evidence that's in the there was part of the record in front of judge was that you have a brick kills declaration and you have jim hoax declarations these are people who work for the guild and you know they talk about the effort that they were doing to try to get this done to remediate and and to dig these things out and so one thing was but i read that the district court's order on this point is essentially concluding that your client was dragging its feet in not moving faster to comply with the terms of the injunction i absolutely agree with you i think i think that's and that's really the point that i'm making in my brief in and i'd like to kind not come down and tell january twelfth of two thousand and sixteen and your honor twenty eight days later the contempt motion comes do you see my point my point is that we're talk we're talking about are very sure i know that your clients weren't bringing their feet that's right that's exactly right you know i don't see that i read the explanations like well we had to wait for a board meeting  and my first thought was if a judge tells you to stop doing something and you don't want it to mean stop doing it right now you've got to get the judge to agree to let you wait until it's convenient and practical otherwise what you do when the judge has stopped doing some build an emergency board meeting people hold emergency board meetings on all kinds of things all the time  all kinds of organizations right if the judge says stop the stop and if the board members say we don't want to be rushed we'll do it in the ordinary course you tell him then we might go to jail right so in opposition to the your honor i mean i guess how much just be a terrible advocate that i just agreeing with everything they don't you know that you folks are saying i think you've been a terrible advocate but but i guess my concern is the same as as judge kleinfeld them and you know as former practicing lawyers we've all been in the situation of of conveying to a client that here's what the court has ordered and then being somewhat disappointed that the client didn't do what the court told it to do as quickly as the court expected it to get done so don't have any of that in the record in fed grange one except in the excerpts of record here your honor if you go to look for example pages four thirty five and  m the court that they could not be changed or take the name out of the word out of the corporate name grange with out of vote of the entire guild and so a are four for four you see that they are there's evidence of how they're attempting to comply and a r four sixty three four sixty two you will see the disclaimer that they used in their communication saying that they were not the grange if you look at our five thirty three through five thirty five you'll see the declaration of attorney  jennifer wallace that talks about the communications that she was having it and you saw the salient points that i put in my brief for example in in the january twelfth two thousand and sixteen order judge shut himself says look they're tempted to comply i mean he states that he says that was one of the reasons why he denied this day because what he what he said was it looks like you folks are actually working diligently  to to comply with my order you'll see that there are letters e r five thirty eight you'll see that that's in october in fifth and in light of all that maybe it's worthwhile talking about this the standard a little bit because i mean at the end of the day the district judge who made all those rulings that you're citing ultimately looked at all the facts and awarded attorneys fees that he did and while your argument well you support your argument with factual matters in the orders and on the record the the the the fact is we're looking at what the judge did on the ground at the time and why do the facts that you're citing now support us overturning or reducing as a matter of law what the judge did on the fees so my answer judge murphy is that what we have in the record is him looking at he goes through all the things that the national grange the fact that they will what you don't see in the record in the three majors where he talks about attorneys fees are all the facts that i'm giving to you and you know completely sets forth you know ad nauseum all the factors that looked at we don't see any of these here and if you know we have all we see so we see some it looked to me like but especially to the judge off and made him think this was willful and deliberate misconduct was at least two things that he mentioned one was that even though the guild told the court it had not solicited any membership dues using the name grange actually the billing statements were for grange deuce and the other one was that the guild identified itself as being formerly known as the california state grange well formerly known as means where the same outfit we just changed our name and they're not the same outfit i don't disagree and that it looked to me like the judge was especially influenced by those two things that he articulated clearly the problem was is that they were not focusing all of the time period and so there are other excerpts in the record and i just want to give these to you while still you can infer from what somebody does today what he was doing yesterday it may not be as compelling as showing what he did yesterday to prove what he did yesterday but it it's something you can infer from so the point becomes because the attorney's fees judge murphy just to get and i don't want to answer your your question or observation to judge kleinfeld the attorney's fees are really from from from two pieces of litigation one is the contempt motion right which was denied and of course you know the case law that is developed here says you don't have to win all the time to get your attorney's fees but it was denied and in fact during the during the hearing that occurred on march seventh judgeships as well maybe i made a mistake maybe my maybe my injunctive relief was too narrow he repeats that again by the way on a full eighty so the second thing that was based upon was the renewed injunction motion which was morning morning please the court my name is jim by coffee and i'm representing the national grange of the order patrons of husbandry and the california state grange and in this appeal proceeding i just want to mention that the national grange was founded in one thousand nine hundred sixty seven it is the oldest co fraternal cooperative council we were very familiar comment on that and also on the cross appeal you can talk about anything very ok so i should be five or six minutes and then mr mcdonald was mcdonald's who's my partner will take up the rest of the mark grange is merely descriptive and will lack secondary meaning to gild argues that the district court only considered whether the grange term was generic and not merely descriptive well let me ask you about that because the district court starts out by declaring that the market is protectable because it's not generic right but as i understand trademark law and it's a tricky area i'm not into an area mark is not necessarily protectable correct but here tell me where the district court as i understand it then we have to ask we have to determine if if it's inherently distinctive or descriptive and has secondary meaning and the district judge didn't do that your honor the reason for that is that a registered mark that becomes incontest immune to challenge on certain grounds including descriptive ness the park and fly case it was a five year limitation on it and it was you have to to register it within five years we have these these registrations go back twenty years ok so there's no there's no contest among minorities as to whether or not the markets register now and besides that your honor the name and mark range has been used since eight hundred sixty seven and the markers acquired  over one hundred fifty years of use so i don't think there's any question there the second affirmative defense that's being contested is the would you then say as to the second element that it's either descriptive or has acquired a secondary well i would say that the mark is certainly not descriptive but has acquired a secondary meaning we have approximately twenty registrations for the grange mark none of them were you know use the mark on all sorts of products and services the second defense was on the affirmative defense of acquiescence and this was i think referred to a little bit  whatever the date was in two thousand and thirteen i guess when the charter was revoked clearly they were affiliated or charter member of the nationwide grain ok so i guess i have the inexcusable the way since it was only for five months to bring the suit after notice you look like your climate pretty quickly when things kind of blew up between the california folks and the national that's your honor i believe we did so if there were no other questions i would move to the cross appeal put on the cross appeal first of all i would say that the guild never responded to our brief and u the under federal rule appellate procedures twenty eight requires a guild to file a brief in response to our opening brief they didn't do that so i wouldn't assume the decision would be made on the basis of our brief in the record  i'm happy to make a few comments on that first of all i think the district court i think erred in refusing to enjoined the defendant from using confusingly similar marks and unfairly competing against the national grange by capitalizing on the party's former relationship when i went to end to see school they told me if you've got a brief on  and please the court i'm whose mcdonald died since partner and your honor on attorney fees we'd like to say that this this is never been about mere foot dragging this is about gas let me ask you about your honor factor here so the bothered me is if the california association can only change its name by a vote of the full membership  why doesn't that cut strongly against deliberateness it bothers me because it would take time to conduct the vote of the whole membership well you're out of the short answer to that question as once you've been ordered to do something a federal judge you don't need to have that order ratified by your members some some orders are impossible if the judge orders you to jump six feet high and you can't do  that then you can't be held in contempt for your failure to do that well are let's assume let's assume that's true for purposes of argument the fact here is that the defendants went to the plaintiffs members to all of the california grange as and pointed to the records of the california secretary of state said look we are the california state grange cell looked to the secretary you're not addressing my  question let me rephrase that is it true that under their article some bylaws they needed a vote of the full membership to change their name and if so why shouldn't their failure to act before that vote be treated as non willful and non deliberate well there are no we do not agree that this was required and the machinations that they went through through with their with this process are all you're saying they did not need to vote under the articles and bylaws no your honor we don't believe that they did but even if they did that you have only one don't have to have any quotes one way or the other no so when you say they didn't need a boat you can't point to anything well your honor we simply we are relying on the evidence of record there and in the articles and bylaws aren't in here i mean judge kleinfeld me in to be entirely correct but the district court found otherwise in awarded the fees so can we look at this  have to employ here well the reviews down or should be whether there was an abuse of discretion clearly so is the failure to award of attorney's fees  light of the good faith efforts of the california guild to get its officers and members together to vote an abuse of discretion no your honor by not well because there are the other  even if the defendants or required to go through an ornate process with their with their numbers in order to formally change the name they were using this as a  reason to advertise to the party's members that they were the successor to the california state crane's by reason of the articles of incorporation that they now claim that they you didn't answer my question listen to the question i want to know if the judge commented on the need for  using using the us pact as a as an excuse to cause confusion mistake and deception among the party's members and the more the more the no question the judge thought that it was just that everything the california organization was doing was a bunch of foot dragging to evade compliance responsibilities  that was plain what i wanted to know is i'm focusing more on was compliance possible compliance was possibly on or compliance was possible because it wasn't the mirror it wasn't the mere existence authorized unlawful represented of any california grange that hasn't expressly disaffiliated from our organization that the local granges would suffer overwhelmingly adverse tax state range including stating so overly and repeatedly so there are that there are there their argument makes no sense because they they argue that the district court so judge murphy let me let me go back to the standard and address question because i don't think that i addressed it or i don't think mike my questions but i think you'd be better off talking about whether or not compliance was possible because i was kind of getting to the judge's findings on the foot dragging in judge klinefelter and i agree that clearly the judge made his his feelings known on that but was it possible to get the membership to go to vote in comply with the order and i think that's where the issues joint right end up and the membership to get together there was a vote in may of two thousand and sixteen and the name was formally changed to the california state guild should we send it back if we find that that's compliance was not possible do we send it back to to cut the fees or do we make a fee computation or so who or how does it work so your honor i'm not challenge where either the fees i think existed one hundred forty four thousand i don't think there was any again i was not the guy and i don't mean to this to sound defensive because i don't mean it but i was not the attorney at that time and there was really no for the guild at that time and there's no attack on the reasonable most of the fees per se it's whether you pass the initial threshold of whether they're entitled or not and here's what i do want to say and kind of leaving what we do know about fifteen us c one one one seven because it has it's a prevailing party obviously but it's not prevailing party reasonable in this it has a threshold it says it has to be exceptional and the question is may that's the term that is used in there so it's we know that it's always discretionary and so when i look at the cases and there is one sided in my brief and for the life of me right now your honors i can't think of the name but i think it was a it was a case where in the in the infringement area in the trademark infringement people had entered into an agreement not to in french not to use the same name it went on for three years and in that case whatever standard you wanted to use you would say that that was an exceptional circumstance but i do think that's got to be something more than you win or you get an injunction or even you get some damages for this to be taken out and put into an exceptional circumstance was there any argument made to the district judge that compliance is impossible until we get a vote of membership well yeah sure it was in the briefs and so the district judge yeah to to to just show you know it was in the briefs dealing with judge kleinfeld if if you go to excerpt a record for thirty five you're going to see those arguments you're going to you're going to see the factual bases that support that you will see that the the  guild's what is now the guild's records i would r and bylaws are in there i would also say if you're looking at excerpts of record two eighty three to ninety eight through three of three t eighty six two eighty eight three two ninety seven you're going to see all of this evidence that weighed against willfulness and your honors let me just i don't have any problem with the district judge for resolving that  he weighed the evidence for and against and he thought it was willful and deliberate and for all i know the district judge thought well this argument that they needed a vote of the membership it really didn't matter they just weren't trying to comply they were trying to avoid compliance and that and and that may be what he thought i don't know that because all i see in the three pages is the evidence against us and none of the evidence force and i cite a fifth circuit of appeals ny state court of appeals case where at least in that circuit they say that they want a judge to fully document on the record what his reasoning is for and and will get to the answers as we can we are