good morning morning if the court please my name is alan cooper i am counsel for the appellant american circuit breaker corp your honor this case involve territoriality of trademark rights trademark rights are created and the laws of each country so it is perfectly appropriate for two different companies to own the identical trademark in two different countries however with all due respect the district court in this instance ignored the principle of territoriality of pre marked rights and erroneously applied principles that relate to grey market products not to conventional infringement situations a great market situation is one where the same entity or different parts of the same entity own the same trademark in the united states and other countries and products bearing those matter of walk creates a conclusive right conclusive evidence of american circuit breakers the exclusive right to used them in the united states american circuit breaker does not have any owns the trademark stamp what right american circuit breaker is a matter of the agreement it controls the nature and the quality of the black circuit breakers the federal pioneer produces for it for sale in the united states and other manufactured by federal pioneer of according to american circuit breakers standards the question of whether or not those standards are exercise you know you appropriate way really is irrelevant to the disposition of this case even though it's not is a contested issue because these products have two different sources the source of the u s product is american circuit breaker because it owns the trademark here the source of the canadian product this federal need pioneer owns the trademark there then a five's ownership of the trademark an ownership of the goodwill symbolized by the trademark it does not imply the physical place of manufacture this court made that very clear in the monkey carlo case which the organ breakers relies on there are the produced for it on contract for future sale the shirts were not altered were changed from the date of their mean you fractured to the date of their sale and this is the critical point that it wants needs that their source whose monte carlo source is the owner of the trademark and not the literal place then of the of the company that produces the products it typical or example would be my key to my knowledge mikey is the largest manufacturer of athletic footwear in the world yet does not own a factory anywhere all of its products are produced in corning by and by some contractors according to your specifications yet nike owns the trademark nike and has  correct genuine product as genuine was defined in the district of thinking which says essentially that there is no material difference the reason that american circuit breaker entered into that stipulation is  conclusive evidence of an uncontested fact that the products are essentially the saying which is one of the factors that's considered under the sweet craft analysis and encouragement one of the eight confusion factors the competitive relationship or proximity of the products this establishes that factor to a fairly well the literal meaning of genuine in the district course is tenuous no material difference to attribute to that a legal meaning still on virtually indistinguishable products the only difference is the color black and the color great in the case and it is the person case of infringement it's difficult to imagine a more clear cut case and respectfully submit that the district you had this this dual distribution pattern because you had two different companies owning the same trade market to different countries they entered into an agreement in one nine hundred ninety three under which federal pioneer agreed to produce the black circuit breakers for american circuit breaker but according to american circuit breakers specifications and in recognition of that ownership right now requiring your agreed not to sell the great state of why circuit wrongful appropriation of my property it's my property until i sell it and that's the situation that we have to have it is the great circuit breaker it's manufactured in canada the get him and that trademark speaking to enforce its rights owns and controls both trademarks it's trying to restrict competition in the united states i mean for example the the same company owns the trademark in united states who produces a line of products that are sold in argentina they're sold in argentina middle me advise them brings them back in the us and i didn't end up with yeah that's that's that's the distinction here we have two different companies owning identical not what happened here was that in one thousand nine hundred ninety seven working breakers began applying these great circuit breakers from two canadian middleman who were paying them through sources in canada that were really not disposed the previous submission what the differences between conventional the bridgeman and grey market so i won't spend any more time on that except simply to note that the principal difference here is that unlike agree markets case opinion but it certainly is part of the record there are statements to that effect set forth in the uncontested declaration of robert steel who's the plaintiffs american sort of records principle witness  i indicated earlier american circuit breakers registration is inco conclusive evidence of an exclusive right to use the district court in this region that exclusive right by finding that the great state of what breakers were genuine parts of taken from a wholly different body of war and does physical place for the identity of the company who manufactures the product it is then a fire is the owner of the trademark and that is true as indicated in the money carlos case  the district court placed heavy emphasis on monte carlo and similar cases for this proposition that if there are no essential differences between the products then they're genuine and there's no liability for infringement but if you look at the facts you see it's a different situation the defendant in money carlo produced the shirts for the plaintiff according to the plaintiff specifications the plaintiff refused to accept the livery of one shipment of shirts because they were late too late for the christmas season the policy considerations underlying federal trademark law is the protection of the trademark owner's goodwill and his investment in the mark weeks of myth that this decision here an analysis of the craft confusion factors in our brief i think that the principal ones that established the confusion is likely are the identity of the markets the identity of the products the fact that these are sold through the same channels of trade determination as to why the leaker conventional infringement right there would be with obviously mccourt's pair would you say that i do so i don't think it's necessary because of the confusion factors that are that are controlling in dispositive in this situation  understand that when we were going to be making our judgment on appeal except there are no genuine issues of material fact with respect to any of those elements so i think that the court can make that determination on appeal i would like to close and i think i am out of town and out of time we may i have thirty seconds you may thank you one of the arguments presented on appeal by the defendants is that we are in the point of this not in cycle to recover compensatory damages without some showing of intentional infringement the law that is relied on for this deals with the and this will be the in the pan and the mayor brewing company case fights with cases deals compensatory damages which is intended to compensate the plate at the make the plaintiff whole these are a legal remedy risks that equitable remedy and the equitable considerations really don't come into play the organ breakers here with simply be a slap on the wrist they've already started selling this product we reap the gain as between the plaintiff and the defendant in the situation i think the greater equity lies with the plaintiff and i would like to close with a what i think is is no defense to trademark infringement in through the looking glass we're told that the walrus showed copious tears as he devoured the innocent oysters who would accept that his invitation to stroll along the beach he meant them no harm of course he merely wished to eat them in this situation organ breakers obviously meant no warmth all they wanted to do was to make a profit at american circuit breakers expense by selling the identical product under a trademark as to lawfully applied to a good and those goods are put in the stream of commerce that they take on a life of their own the goods might wind up down the street across town or even across the ocean and problems arise as this case illustrates when those goods reach a territory the territory of another and that brings us to a question what law controls for both trademark in the united states whether you have a trademark whether there's a trademark in canada or anywhere else if somebody is selling goods in the united states that are black ro and that's what they're trying to protect so when you bring when you basically go head to head competition using the same trademark i'm at a loss to know why and i don't know if they  can say it's the goodwill factor the real question is this really isn't a grain market situation where it's an art arised product and then it just comes into the cases and none of those cases out there right now profess to represent or describe all the possibilities if you wanted to proceed with that approach though you would find that you might find that that represents all of the cases so it just describes how these cases can come up and incidentally the ability to control the trade that interdependence between the parties on both sides of the the second part of that is again resolved by the genuine stipulation if you look at the idea case there was some discussion about whether the lack of a quality control somehow created a material difference between the two products the court this term and it that in that case the second circuit decided that that that the quality control measures that were employed by the plaintiff in that case were not substantial enough to lead to a material difference therefore products are genuine in this case before you we've already agreed that the products are genuine so any concerns about quality control or anything like that and then resolved by that stand view that i'm trying to make clear to you isn't is that federal there's no issue the federal pioneer had the authority to put that mark on every record that made whether they whether it genuineness can go away just as across the border and the problem with that is that who is the no who's who's to know when they look at a product for example how is my client supposed to know when this canadian wholesaler immature invalid where the trademark became invalid it isn't doesn't our her very workable system that the cases that i that we've referred you to seem to have a way of dealing with that which honor's question about creating situation is that american circuit breakers should have have some notion that these products that the circuit breakers are going to continue to be made by by the canadian company are going to continue to flow and they could have as anybody in their situation when they entered into this relationship could have required manufacture of a product that has a material differen simple as that and i would leave it up to the engineers or somebody to come up with what that difference would be but if there is a material difference between the circuit breakers that are purchased by american circuit breakers and the circuit breakers that are manufactured by the canadian by federal pioneer problem solved and also then we don't have a problem with with the innocent people downstream who don't know about whether something's going to become invalid just because it's crossing