a grant of summary judgment dismissing petitions to cancel an opposition on the ground of collateral estoppel on the basis of a prior district court decision in the central district of california this morning i would like to focus on the third requirement for the application of the collateral estoppel defense namely that the allegedly addressed in a judge from an opposition or petition to cancel on the basis of prior district court litigation involving infringement is also a basic rule in this board that this is if the application of did not and i'll tell you why i first have to preface this we're going into the marriage now and that's pervaded the opposition to this appeal and it's the is the fallacy of the trademark wor the only issue is whether the four requirements are met under the collateral skeptical doctrine you have asked the question and i answer you know but it's in the merits and it's really for another day if we can survive collateral estop this case because there's a great deal of evidence but the question of the intent of the parties in the one nine hundred eighty three agreement is a question of fact and what's looked at in terms of fact this of course the language  good reason there was no basis for repeal because it was an alternative ground for that decision independent of that point and that ground was that our client did not retain the right to prevent its own grant he and make them an infringer that's that's the basic that's the crux of this was a charity claim for trademark infringement and if you're suing your own grantees and you don't have sufficient rights to me a minute ago that that eighty three contract didn't include trademark yes but in previous state litigation you've made precisely the other argument haven't you that in fact the zero yep contract did include  all of that is it for the merits it's not get into the merits but if the merits dispose of this case then the board was entirely correct that you had all chance to let a gating it's over and they here are allowed to rely on the district court the question that we did not have a full chance to litigate before the board was whether this this was a an assignment or a license the district  all of those rights could have been transferred or granted in an exclusive license to dissing on the eighty three agreement there's no mention in the agreement of trade watch there's mention of the language assignment is a mention of judge fearne meant concluded that it was frivolous in connection with her assessment of the sanction question to argue that that there was anything other than a complete assignment and that that decision was later a decision had she she could have decided to sign readily why it wouldn't let the issue was completely before the court was and it was but the question of whether the assignment license issue was essential to the court decision is what is not clear the decision once once judge cooper says you know you granted disney rights to use these trademarks they had use rights at that point there's no more trademark infringement you're suing somebody you gave the rights to use rights to determination was necessary in the order for the answer the answer is clearly no if disney had a license an exclusive license or even a non exclusive license to use those trademarks the trademark infringement counter cl is over anything beyond that as to whether the transaction was an assignment or a license is not something essential and necessary to the sentence after the nine hundred eighty three  for an assignment of a mark as i said there's no there where we're getting into the marriage now when we can i do miss if we've given a chance to before the board either in a motion for summary judgment there's evidence for example if we're going to go as a license we have all these things we have admissions all over the place and so we're where that is for the board which would be most suitable to hearing both sides we could lose but we can we have a right to get a chance before the means all race but it doesn't make it an assignment i mean these are legal requirements nobody saw and if you think disney after all these years and then involved in this whole thing wave is comes in to acquire his trademark they were being policed paid for those rights have said that it gave this me all rights or used the word the time and that that's an issue of fact really as to what this all means that it really is for the board and what you're doing to me this morning is trying the case our hands are tied behind our back i can't present to you all the evidence we've alluded to it some of the things i mentioned in our brief but we're getting ahead was it necessary and essential to judge cooper's decision to save the trademark  there's an answer to this motion is not on the basis of latches or kind of our failure to object this is a rule fifty six motion only on the basis of collateral estoppel we weren't presented with these arguments as the basis for this motion into the merits or the time they've gone on intent absolute absolutely right force which at page seven of their answering brief they say that slash and or was never a never asserted trademark rights and would never filed any specifically mentioned three george we think two on the side of the the court dealt with the argument that disney made that lessons or had no standing to bring a claim for infringement of traffic trademarks because slice and your didn't own anything and so this means argument was very simple and the court of granted the motion based on the two grounds in disney's argument argument number one the explicit language of the operative ranking instruments demonstrated that pleasanter owned nothing and number two the conda of such a major demonstrated that lessons are on nothing and therefore could not bring argument which was the first argument we made in our brief which is that thirteen sixty six of the appendix that plus your had no rights and had no standing it couldn't bring a plane for infringement we we weren't talking about the by disney in material breach that would give grounds for sless injured to rescind or terminate the transaction for example that's because the payments wrongdoing correct and that was the that was the position that's less  payment of royalties it did not have any ownership rights in the underlying property it could not go out and sue anybody for infringement it could not go out and act as an owner in fact the absence of that kind of over fifty years is what we pointed to to demonstrate that's less danger had no one or ship interest i mean our motion was very simple it didn't know anything you didn't have a right to bring an infringement so less and or came back in oppose our motion say no that's wrong we do on all the rights we just need for a license than to you and the court rejected that position the entirety of the court's opinion is a rejection of that opinion of that position it says right on page six ninety two of the record if it summarizes disney's positions and then says that the court agrees with both propositions and then he goes on and walks assigned at page six ninety five of the appendix your honour's it says the court specifically concludes that's less than your retaining no rights no rights it says she's not referring there to the right to bring a lawsuit for nonpayment of money we're talking about the ownership rights because the whole credit predicate of our motion was that they had no they could make no threshold is the same issue that's presented here and as such it or conceived of the same issue and really what they're now trying to argue is that it wasn't necessary for the court to have decided that issue but that was the issue that was presented in was the issue on which the court's decision rested and there are pieces of the could the district court had made it seem from human binding or non appointment finding on the basis of a license let's say not fall within the scope so it would have had to lay all of that out it never reached those other issues it never compared the uses of disney to the alleged help with a license because it never found there was a license and furthermore decision talks about rights in general is because these arguments were made collectively in our motion as to both trademarks and copyrights we were making the same argument as to both as a body copyright infringement buying and a broader trademark infringement cla at the record in that a person you don't just look at the district court opinion you look at the underlying record including the motions that lead to the opinion that we're under the case if you look at the parties briefing result whole subject that was breathed was whether or was entered on this but this is essentially the findings of fact and conclusions of law that led to the judgment let me let me make one other thing clear about your license issue your honor has a poor it is the argument of m isee that you one could construe this a thing as being consistent with a license in which the court found that the scope was not infringed i disagree with that because i don't think there's the less than your position in the view that your honour's is quizzing me about the court would not have and could not have denied with prejudice that claim for declaratory relief in paragraph one thirty seven court would have had to either deny our motion with respect to that declaration or the court would have had to defer consideration of that and say that they were going to litigate another day or it might have denied it without prejudice but the court denied the entirety of the trademark claim including paragraph seven is request for declaratory relief and that is definitively inconsistent with any flatly rejects the idea that any rights and the rights we're talking about are ownership rights on which a party has standing to bring either a trademark or copyright infringement plain in this case but that is the subject of the motion that's why the motion was granted the board goes on to say the undead knew its nature of the contract is strongly supported by the conduct of the parties over the nearly fifty years of their relationship both case by this court called ballot incher national corporation whether a transfer constitutes a sale or licenses determined by the substance of the transaction the transfer will suffice of the sale if it appears in the agreement in the surrounding circumstances of the party  cannot believe with all due respect that that is what the court is saying at all that is inconsistent with the force for earlier statements accessing your can't even point to a like what the court is simply saying there is that it has no rights and therefore can't claim infringement of any rights because it has not that power i believe that was intended to read thank you i'm out of time and thank you very much mean necessary and essential what it means is the issue had to have been decided apart from anything else in the case and it's just not true here it did not have to be decided to throw out this counte once the counterclaim is thrown out on the merits because disney is licensed everything else falls by the wayside everything else the district judge said is in the alternative and the fact that judge cooper a district judge highly respected very experienced she never mentioned the assignment and license issue which was teed up and given prominence it's not an action it's a judge cooper left the route she decided not to decide that