good morning good morning your honors in the please the court my name is jared back on behalf of the palin crony you and with me a counsel table is my co counsel calling o'bri arbitration has not commenced your honour's i think that the jurisdictional question is for closed by this court's decision in hill vs rent a center three ninety eight f third twelve eighty six eleventh circuit two thousand and five which holds very squarely that when in order compels arbitration against a  party it constitutes constitutes a final decision for purposes of appeal and so under the reasoning of hill versus rent a center when the court left in the case other than the car dash in sisters at the time it entered summary judgment for the car dash ians because with respect to tell it the claims had been sent to arbitration depending on how the is there a possibility that your client could receive a double recovery in this case of would personally with this  know i don't believe that is a possibility because i believe that the counter claim of set off would apply in that proceeding to reduce any award at  under by the corps but the district court itself never entered a default judgment as defined by the rue wright was that the problem of jurisdiction no i don't believe so and i think that the  and i think it's because they cited two cases from the eleventh circuit including a case called a rango and when you look at a rango rainbows relying on a decision from the supreme court separate judgment rule under the federal rules as as something that does not have to be taken to the end when there is a default in order to construe the secure the just in speedy an inexpensive determination of every action and found jurisdiction under twenty eight us c twelve ninety one in quite similar circumstances so i think  on contractual standing when it seems to me like looking at this record that own until it as the license will or have the responsibility under the license of these contract language  deprive my client of standing to sue for trademark infringement when in fact the contract knows no deal does no such thing i thought the only responsibility given your client under the contract was to inform tillett of any illegal use of the troika in the european market was that not what the contracts it gives my client the obligation to do that but in no way does the provision obligation to one party deprive that same party of a statutory right to sue and i would emphasize to this court that the source of standing it is the statute itself the lan which confers standing to sue for trademark infringement on any person with a reasonable interest to protect and that's the holding of the quad bug rubber case from the first circuit and so while it is true that a contract can waive standing relinquish a party standing which is provided under what the lanham act sets forth it has to do so in clear acts of infringement and till it in turn was obliged to file a suit if it chose to do so what do you think they had in mind when they said that i think that the contract they are surplusage i think that the contract had in mind to place a primary responsibility for enforcing the trademark but in the event that that primary resort if there was still some residual right right why would they have said this why would they have said this because why would they have said anything about the obligations of tillage force mark against any infringer because if the contract wanted to shift primary responsibility to tell it as the maker of the product wouldn't it be more natural to read this is they understood the till it would be required to enforce if there be an enforcement action and that the other party or me you was obliged to report so that they could make such steps and take such legal action as they decide yes but reading the contract to state just that does not exclude the right to sue by the license see unless there is explicit language which for bids an action by the licensee unless certain steps are conditions are taken and we went through those cases in some detail in our approach the reply brief would specifically direct the court to page five of our reply brief where we went through every every case that the other side relied for their proposition interpret ing the contract in this way that they are john appeal and in which the lower court was vases for their decision we went through every case and showed how the contract explicitly waives the right or explicitly sets forth a precondition that must happen in order for the  the licensee to have a cause of action and that's just simply not this contract and the contract cannot be filled in by suppositions or inferences it's the court's duty as this court knows to read and interpret the contract fully within the four corners of the document unless there's an ambiguity and no ambiguity i think this is very important no ambiguity has ever been pointed to by any side in this case in the exclusive import contract which could form a basis for an interpretive approach that looks outside the four corners of the meritorious for reasons that were previously disposed of by the lower court in denying the motion to dismiss originally and for the reasons discussed in our brief we believe we have strong stoppel arguments based on the fact that a preliminary injunction was issued in the california litigation finding infringement by the car dash ins and so based on that and the undisputed record evidence in the record showing that there wasn't for enjoyment intentional infringement by the car dash ians we urge the court to vacate the order on appeal with directions to enter summary judgment a question we raised in our bruce that they simply ignored i just received this case that they cited i think of the rules under twenty they're really supposed to file that with me and i just received that as i walked in but that being said i can tell you that case isn't on point let me tell you what i think we need to do and you tell me why this is wrong before we reach the merits in this case we need to enter an order and direct the we need to dismiss this a player for lack of jurisdiction if the district court issues the fifty four and i think we can reach the merits would you agree with that judge peanut absolutely agree that's exactly what we said in the brief that should be done and there's precedent for this court to do it we cited it published opinion and ten versus pumpin zero nine sixty three s second three twenty one i think that's the easiest way to deal with this and i would urge the court to do that rather than dismiss the appeal and start all over again but just that medicine or case the reason why i can't shaping it more precisely we would be giving him a leave to seek fifty four b certification from the judge resume a plea if he chose not to do that that would be the end that absolutely correct i think i mean i would view it as you're asking the district court to clarify whether intended to do it now a fifty four it's the certification has to be expressed in that the rules are clear on that but i think the district court's intent really well i guess what i'm saying is we wouldn't direct the district court to issue a fifty four b certification if he didn't want that before the certification if he wanted to rely simply on the argument in the case he cited to us this morning he would be free to do that too and we would have to rule on it certainly correct certainly and which case the ballgame would turn on whether we have jurisdiction absolutely so i think that the suggestion of a judge to be known in our brief makes the most sense which is and i think in the in the case we cited it was thirty days which i think is right so i want to go right to the heart of the issue let's assume for our purposes that a fifty four b certification or in fact issued by the trial court ship and let's get to which case we'd be right back where we were with the same panel with the same issue and hopefully we could rule on after this without really argument yes and the district court unsurprisingly got it correct in my view on standing this question of standing literally speaking or statutory interpretation it is absolutely statutory interpretation the only reason i quarrel with it is the supreme court has told us recently that  their opinions in ours have been modeled for years we've missed apprehended what standing is by standing article three standing we ask whether the court has the power to entertain the case the answer here is clearly we do the issue is whether the statute interprete mean you probably gave them a cause of action given what the contract said it's not as it's not a question of standing literally although we used to call it statutory standing i don't know that we do that anymore or to be saying it that way examine to be quibbling no no no and it's an it's a fair point deal with the supreme court in multiple cases and for our court in the number of cases exactly the supreme court's commented on this also with its use of jurisdictions and times and now they've cleaned that up there's claims processing rules and jurisdiction but absolutely it is a question of statutory interpretation and i was going to cite you that case from the supreme court which which actually says this which is the  case five seventy two us one a so let's just assume we're using the right terminology we're not talking about statutory standing and whether or not the lanham act gives them a cause of action to pursue it based upon the contract precisely and that supreme court tells us that that question is whether the plaintiff is within the quote zone of interests of plaintiffs that are protected by the statute and  case that i cited was about section forty three at the lanham act but it was not about a false designation of origin which is a separate cause of action it was about false advertising which is a very different cause of action under forty three eight and the supreme court in that case and this court as well as said that many times that these are two different causes of action and we have to say well what is the zone of interests for a trademark claiming the zone of interests for a trademark claim as well what's  trademark and i think this is the one thing i think we could have fleshed out a little bit better in our briefs and i'm taking judge marcus's admonition seriously that you've read our bruce i'm not going to repeat what i said in my brief but the zone of interests of a trademark is a trademark you can't just own a name and i know you guys on this but a trademark is a name associated with goodwill it's about source identification and it's about identification with a single source now under my friend's interpretation of the contract here they had met that it is our obligation to sue it is our obligation to protect the trademark but what they're saying is that they also have a right to do that well when we're talking about trademarks which is they're supposed to represent a single source of goodwill a single brand under their proposed regime where both the licensee am licensed or could sue and we i can't find a single case by the way where that where that's happened but under that regime the license or would lose control of its trademark because litigation that is efforts to protect the trademark go to the heart of defining what is protected by the trademark nevertheless they could bargain to do that if they wanted to absolutely could bargain russian is what did they bargain to do given the language they used sure and the case that my friend c contract there did give the licensee the right to sue in the united states it went out of its way to say that the only case that and the district court know it says it can't find a single case where allocation was expressly given to the license or which which makes sense under this single source trademark a rule where the license or was given the right to sue expressly inexpressive says that's your obligation that's what you got do you got to protect this mark which is what  till it did by the way she got an injunction stopping this infringement by boldface but and but there's not a single case that says that and that the licensee can still sue now they do cite one the contract doesn't bar them from suing the contractors even if it says you will sue you are deserve the right to sue and they're obliged to tell you if there's an infringement it doesn't say they can't no it doesn't say that it would have been a lot easier unclear if you just said we will you can't end of story that's the contract you know this is not the best written contract in the world i would say and it could i think a belt and suspenders  approach such as you're saying and such as in the seven circuits case and some of the other cases that we cited where it does say that would have been much preferable but we are left with this situation and we've got to determine what do we do when it's expressly says that till it has to sue and it says nothing about their rights and i think when you look at the contract as a whole as a whole you will see that this clearly was not meant to grant them the right to sue and let me just point this out and this was pointed out by the district court as well but i think it's very important which is that document one eighteen six which is the contract and at page three of that document section four point one point four says that the trademark always remains the exclusive and alienable property of till it and then if you turn the page it defines what couldn't be the exclusive property or kill it and they still would have a right to sue for an infringement it could be wouldn't necessarily because you've conceded they could have said quite expressly they reserve the right to sue was well from intrenchments even though you had this other one which are not well i would actually argue that i don't think it's a license agreement that gave both parties the right to sue without some very serious limitations on when the licensee can sue or when the license or could sue that just gave them both the the ability to sue without any restrictions on it would raise very serious and they could licensing problems because the licensee then could go out and sue in ways that the license or doesn't approve of and that would create serious and they call them let me ask the question this way could not the trademark owner decide that it was going to give a company or a crony you the right to sue to protect the market as well they could have done that by contract they could have they put that out necessarily undermining their ownership the more they could have given them the right the exclusive right to sue not not what i'm asking ok i understand they could have done that i'm asking whether they could have given them the right to sue as well not without restrictions on what kind of restrictions would they have well for example if they said you can only sue for  infringement in your exclusive territory that would make sense because that would be a restriction such that but wouldn't that be implicit enjoy argue that that even if they didn't put that console in there everybody understood they could protect their market only in their own area weren't afraid to go off to melbourne and sydney in fact the more well it was no business and advertise nothing there and had nothing in the world to do with you know with australia well they're not suing the that's the one of the bigger protests and other problems that arise they're not suing in england in the u k i understand and yes well i don't think it would be implicit no i think that the default rule again when we're when we're when we're going  default rule of what a trademark is is that the license or is the owner of all the goodwill in the mark and the license or hast to exercise some control over the licensee the default rule assuming nothing else in the contract would be it's a license or its right to sue absent either some an exclusive license such as in the an exclusive license where for example in the hot gold med case that they cite which is a decision from the middle district of the opposition is for such a contract provision to be enforceable that is to say to give them the right to sue in a certain geographic area they would have to say that they were did neutered of the right to sue as well that would they have to relinquish their right to sue with the like owner of the mark what i'm asking is whether or not by contract the two parties could agree for whatever reason in the course of an arm's l and that's what i'm asking you when you say is geography is there any other oh sure categories for example if i own the coca cola mark ok so they say it has to bear upon these categories and this g geography yes and i suppose the contract didn't if the contract contract gave if you will concurrent ownership in the right to sue but didn't have a limitation about geography or category that that was a contract came before a court i know that's not what we have and that came to a court to be in force with that being forcible contract it in my view obviously you don't have to reach that issue but in as you recognize but my view forcible but more importantly if there's a naked licensing issue it could raise questions that the trademark is no longer valid if the license or is not exercising sufficient control over the licensees use of the mark and is just giving them a free right to go out and sue concurrently that raises very serious abandonment issues under and under the doctrine of naked licensing because a trademark on our unlike a copyright owner unlike a patent owner has an absolute obligation to exercise some control over the licensees use of the mark and there couldn't be anything more important to the mark and how to enforce it how to define its scope where he asked you were just a final argument for me to help me understand this to the extent one were to say th ambiguity here and one looked to extrinsic evidence is there any oh absolutely and that's something the district where pointed to which is my friends did not put in any extrinsic evidence we put it wanted you put in the game i would have suggested that you and you alone have the power to sue the entire history of the litigation in the central district of california where the principal of chroma was putting in declarations where judge collins on the district court when she entered the injunction specifically cited to those declarations specifically said that there were that one of the reasons she was granting an injunction was because of confusion in the k specifically said and i could give you the cites if you want but you can look at the opinion specifically said that one of the reasons that there was irreparable harm here was because of a alleged loss of contract of a contract rights from the  from the chroma e u in the u k so that course of conduct certainly lends itself to the idea that chroma e u was to support the litigation but didn't have standing and there's a second piece of extr evidence if you want me to address it but it very briefly very briefly there was a there was a declaration from ms till it was it was not my claim but who put it in there who explained no this was my intent was to was to make sure that i controlled the good will of this market so that only i had the right to sue and by the way this does not leave them without a remedy they have that remedy which is there are betrayed and and just as a final point i just i i just have to say it which is that the judge collins fact as to whether there was vicarious liability at all so my friend's statement that the card actions were found to have intentionally and willfully infringes trademark is just false the record doesn't support it and i would i would point your honour's to her i think we've got it ok we've got and thank you thank you who's on the issue if you were given leave to go back to the district court to get a certification hundred fifty four people to do that i don't know that we could make it do that if i were i suppose if you didn't we could say we don't have jurisdiction if this court i mean if this court were to issue an order saying you have leave to go back down and request a fifty four b i would do it without waiving the argument that it's not necessary no i understand your position would be we have jurisdiction anyway even if he didn't it and if the district court shows that the only reason i raise and you had to do being that it is just speaking for myself i have a real then we said yeah we have jurisdiction subject to challenge later anywhere anytime by anyone on the grounds we didn't have the power to do anything ok well then the problem with doing that i understand it and i would just might my last word on that would be that before the court issues anything including an invitation for us to go down and request a fifty four b just to have a look at the hill evidence i think the biggest extrinsic evidence is that they didn't get our client to sign any sort of settlement agreement nor did they make the proceedings binding as to our client and but i don't think this court should go into strings of evidence because there's no ambiguity in the exclusive import contract and i think he agrees with that right so you just see the same thing in a different way right so we're we're left without a word you're right we're left with the four corners of the whatsoever and in fact licensees are deemed to have standing to sue all the time the jewish state and the heiko med cases both from district courts within the circuit make that clear and i think med's words are especially relevant to the issues before this court in which they committed said quote while the agreement does not grant heiko med usa the specific ability to enforce the trademark rights neither does it restrict the ability to enforce and that's the key part of the analysis that has to be performed here which is to determine whether the licensing agreement restricts the ability to enforce and i would submit to this court that placing primary responsibility for certain enforcement actions or conduct in a contract does not equate to restricting the ability to enforce restricting the ability in force means you you eliminate that ability you will eliminate that right to bring a trademark infringement action all together and there is nothing in  four point three zero point one four point three point two or four point three point three the only provisions of this contract that are relied on by my friend that restricts the ability of chrome  to bring a trademark infringement action to its under the rights granted to it under the contract and there's just no this naked licensing concept that my friend brings up is a complete red herring on the geographic issue i know my friend alluded to that that issue was resolved the first order for substance order that the district court issued in this case which found that my client has standing to bring a land in mclean in this country based on infringement happening abroad so to call that a problem in this case when the car dashing  have not challenge that ruling in any way shape or form i think is completely untrue and so unless or any further questions all you'll need time are i guess i'm out of time thank you very much thank you both for your efforts thank your this court will be in recess until nine am tomorrow morning