vacation tours incorporated mr rash could it please the court my name is no a ration with law in fisher on behalf of the appellant's your honour's the district court erred when it granted summary judgment where there were genuine issues of material fact in dispute particularly with respect to the safe harbor provision in a number of the affirmative defenses not the least of which acquiescence in latches subsequent to that order the court  again when it denied appellants the right to a jury trial and statutory damages where there had been a demand for a jury trial and that demand an up and waived and finally the court  erred when it found that this case was exceptional of the purposes of a working attorney's fees i don't know that the court needs to reach a decision as to the nd and rd issues if the court agrees that this case should be sent back because summary judgment was granted  error but i'll refer to those nd and rd issues in turn let me jump in for a nd i i think one of your strong arguments i don't know yet that it gets you past the line but i think one of your strong arguments is that in applying the summary judgment standards the district court relied on factual findings made by the magistrate judge at an earlier point in the proceeding following an evidentiary hearing yes you was and i think that's that's a potential problem because whatever facts were made whatever factual findings were made by the magistrate judge following contested testimony doesn't mean that those facts can be used that summary judgment if there's a dispute about them at least not necessarily but my question to you is this what evidence what additional evidence on these issues for example on the issue of bad was presented after the initial preliminary injunction hearing there was no additional evidence there was the document eighty nine dollars which was the mendez declaration which would have been presented at the time of the prelimi injunction hearing that was weighed in and dismissed both at the preliminary injunction stage as well as at the summary judgment stage and that was that was where ms mendez  essentially laid out why this was not why there was no bad faith parties had been in business essentially together for approximately fifteen years under a wholesale contract appellants were selling hotel rooms using these domains that they had owned and been using with pen with palaces knowledge permission and input for a number of years and continued to do that after the wholesale contract was terminated in two thousand and fourteen with an agreement with gogo tours so there a this declaration outlines why that there is why there is no bad faith this declaration outlines why there would be acquiescence and why there why there would be latches there's certainly more than a scintilla of evidence here to are you saying that bad faith was an issue that should have been decided by the jury yes your honor and that's because there was evidence on both sides of the i beg your pardon there was evidence both ways yes your honor and that's  were purchased and never used they were included the words victoria and secret they were purchased with the intent to create adult oriented websites they were never actually  used and then they were offered they offer to sell those domains to victoria's secret during the course of that proceeding during the course of that summary judgment proceeding evidence was a by the person who had purchased those domains that there was no bad faith intent and the the district court determined and i think probably  lee that that evidence should not have been enough to escape summary judgment there is certainly more evidence here of a lack of bad faith through that through that mendez declaration and so i think this case is unlike the victorious you could see if we found by and faith was a jury issue what would you have to send a case back for a jury trial on liability now with regards to the jury trial issue the safe harbor provision says unless the court determines how does that affect your jury trial argument well the there are any cases addressing whether or not that safe harbor provision is a matter tried to the jury or tried to the court certainly that's a very good question i don't know that the court needs to reach that because in order for there to be an a c p a violation there needs to be a finding by jury that there was bad faith not just the and so there's a safe harbor provision that says if the court finds but also before you were to even to reach that safe harbor for provision there's also just in the in the wording of the statute itself that there needs to be bad faith and then you look at these factors to determine whether there's bad faith that should be done by a jury there's no no but but it but the words of the safe harbor provision are that bad faith quote unquote shall not be found in any case so what happens the district court steps in if finds that the criteria of the safe harbor provision have been met even if the juries come back with a contrary finding that would be my understanding i under a traditional judgment as a matter of law standard or what i think so but i don't know that judgment would do that here i think this all to ultimately would be decided by the jury and so i think that the district judge has already given us an idea of where he would go if a jury was to find that there was liability he wouldn't invoke this safe harbor provision but certainly this is even before you get to the safe harbor provision you there's a requirement for bad faith that that must be proven to a jury before you even get to that safe harbor provision guess what what we're asking is what would be the point of putting it to a jury if the judge determined there was that the safe harbor provision was made it what would be the point of putting it to the jury in other words if that summary judgment if it's summary judgment let's say that there's disputed evidence on bad faith ok as you as you contend yes but the safe harbor provision talks about the court making the determination those that upset the traditional summary judgment standard or what you know i don't know your honor i would suggest that the safe harbor provision can be should be decided by by a trier of fact i understand the wording of that makes it so that the court perhaps could decide it but the alternative could be true if the court determined it summary judgment of the safe harbor provision should have been should have applied then appellants would have been successful on the summary on summary judgment and perhaps that would have ended the case but the opposite happened here found that there was no safe safe harbor because there was bad faith but that in order to reach that conclusion the court had to weigh the evidence and weighed judge weighed the mendez declaration and disregarded it or didn't give it any weight but there was clearly evidence that that was in the record that was considered that should have stopped this this this from becoming a in order granting summary judgment as  you want to talk about whether or not the case was exceptional yes so this case was not exceptional for a number of reasons not the least of which  district court found that this that there was bad faith in the case that was one of the issues that the court found was relevant to whether this case was exceptional the problem with that is in every single case there needs to be bad faith so one the  standard for whether a case is exceptional is whether it stands out from the rest either in the manner in which the case was litigated or the strength of the case to use bad faith as a as a reason for this case being exceptional it doesn't make any sense because in the trial court by appellants counsel a number of which were cited by both lees and then also the court but they were extension requests that occurred prior to this plaintiff being in the case they apply to a hear ample is provided is am i correct that the district court has not decided the amount of fees the amount of fees has been decided but there is a pending motion for reconsideration so that's not was that was the amount of fees determined the same time the judge found the case was exceptional or in a later order there was a later order prieur post appeal that was posed appeal so it's not an issue in this case not an issue of the amount is not an issue in this case is the is the entitlement to fees final then i would say yes and i think that issues before the court properly because the the trial order document to eighty that was a final order that said that attorneys fees should be awarded and you appealed t correct this was a this was an issue that was raised later this was did you did you lose you yeah i mean did you wave that defense at least with regard to the consideration the partial summary judgment by not raising it in the motion for summary judgment in the safe harbor provision i do i do not believe so it was ultimately asserted and the court it was a started after the summary judgment opinion was issued wasn't long after i'm sorry no the summary judgment order included this discussion about the safe harbor provision so that that would have been some thought that was the trial i believe you're right i stand corrected i think you're right it so if you did not know it was raised in your i think in your answer in your responses early on in from the magistrate judge but you did not raise it to the district court when it's considering the summary judgment motion that you i'm talking about the safe harbor provision in all candor i don't recall whether that was asserted in response so if you didn't and we feel like it was not properly before the district judge we just would ignore were the safe harbor provision and only talk about whether or not you are correct on your analysis with regard to the bad faith being a jury i don't know that that's true because i just like the opponents in this case who registered domain name containing trademarks owned by others just for some factual content background pallisers works in all exclusive beach hotel resort and several properties they own thirteen trademarks eleven of which are in contest which are associated with those parties with those properties rather the palestinian resorts they broker aims in their own commissions on the on the rooms that they sell houses were never authorized to poems to register domain names will but also didn't object for a while that's that's at least disputed evidence right i take your point that that's disputed evidence now what we know is that there is a wholesaler contract between the parties and you can look at that documentary seventy three eight it specifically prohibited opponents from registering the domain name specific that's not way i phrased the point a little bit differently here the point is that there is at least some evidence in the record that despite the language in the agreements for a while your clients did not object although they purportedly had knowledge and so the question is whether or not that is the sort of issue that might require a trial before either a jury or a judge on the issue of bad faith we don't think we don't think that it does and yet the magistrate's report recommendation specifically dealt with these issues it found that all of the affirmative defense were  l but that that's the big problem in this case at least for me the magistrate judge makes those findings look factual and legal after an evidentiary hearing in which he properly weighs evidence so he takes the evidence on this issue pro and con and he decides no the evidence leads me to this factual finding this conclusion the district judge and that was proper for the magistrate judge to do at that point with regard to the preliminary proceedings the beginning but then later the district judge i think incorporates some of those factual findings in the partial summary judgment order i'm not sure that that's procedurally correct maybe it's harmless error but i'm not sure it's procedurally correct because you can't take a magistrate judge's findings made on disputed evidence where the magistrate judges essentially the fact finder and use those as conclusive that summary issue of fact for whoever's going to try the case as opposed to relying on a factual finding made by the magistrate judge after weighing of evidence i think judgment properly applied the stand the summary judgment standard he went through this in his summary judgment order he said that the houses were had met its burden of establishing that there was no genuine issue of material fact and at that point the burden shifted back to the appellants in the fact of the matter is they didn't to  domain names to obtain customers for you to have in your on that they would have for sure and wasn't that one of the factors that a court could consider and weighing whether or not it was bad faith their conduct the fact that you knew they were doing that your client knew that they had registered those to my names and that your client continued to allow them to market writings that your client had empty isn't that one of the issues that we are supposed to consider when we're deciding whether or not there's bad faith i think that might be one of the issues but i think in the if there is one issue that is contrary to being one issue that points against bad faith would we have to present that to a jury following the law is haven't we said bad faith is one of those issues that's going to have to be determined by the jury if there's conflicting evidence i'm not sure that there is conflicting don't know what explanation will be given a trial but if the explanation is they knew we were doing this we spend our money and lawyer time registering these domains so that we could easily market their business for them they knew it the whole time and so it's only fair that when they demand that we give them to them that they have to pay the expense we have been setting up those domains what if that's the evidence is that not something that the jury is free to don't they don't they argue that your client knew they did that they mark they do market argument as in isn't that one of the issues that we should consider in determining whether or not they acted in bad faith i'm not asking you does the act allow them to do it because the test is whether or not they did it in bad faith right court judge without a jury when there's a jury demand or does bad faith when the evidence conflicts does that have to go to a jury st the jury the jury members waive i think that's that's pretty c the record will show the record shows that in response the nd minute complaint there was a jury demand apologize for without a jury the judge becomes the fact finder but both sides have the right to put on testimony at trial would you agree with that yes witnesses so isn't it something that then has to go to trial if they had met their burden in opposing summary judgment it would have but they did not to do so any evidence to contradict that we were entitled to summary judgment on these issues here's here's part of my concern that when the district court discusses bad faith there is no discussion whatsoever of the mendez affidavit for example or any other evidence presented by the defendants it looks like a factual finding as a matter of fact the district court says that the evidence overwhelmingly indicates and then list six reasons the evidence overwhelmingly indicates and if you're doing a waiting of evidence and you have a lot of evidence on this side and a little bit of evidence on this side you can easily see why a fact finder my conclude that the more outweighs the less but there's no indication that the district court considered the mendez affidavit or other evidence that pushed against a fine the of bad faith i don't i don't dispute that the order doesn't specifically addressed in the end as affidavit that it does say that it reviewed the record in its entirety and that it based its judgment in view of the record i know i know or so along the same lines when you get to the defendant's affirmative defenses that this record expressed lee says on page seventeen of the order that it is relying on the magistrate judge's conclusions those conclusions were made after factual errors that what you're saying are did did the defendants invite the error did they make any complaint to the judge at that point judge you can't do this or no ok let me make it as stark as i can for you ok let's say you've got something very different and bad faith ok say let's think of a battery case ok you and i are in a train and one of us jostles the other and the other falls down and his hurt we won the victim sues ok there's a preliminary hearing of some kind whatever it may be it may be a bad hypothetical but just follow with me there's a preliminary hearing before summary judgment and before trial you testify about the state of events i testify about the state of events the district judge or the magistrate judge makes factual findings about what happened you say x i say y and the trier of fact decides one of us is more credible than the other and or some preliminary relief of some kind maybe for one of us to stay away from the other then the case goes to summary judgment since there were only the two of us in the train you rely on your testimony i rely on my testimony goes up for summary judgment what is a district judge supposed to do they're not supposed to engage in weighing of the evidence and what does he do with his prior finding about who was telling the truth i still think it's part of the record and he may consider it in connection with making his ruling you can't do that that's not what summary judgment teaches you to do you can't do a evident record i did say way i didn't say when asked that but i don't think yes to ignore the prior order but how can you ignore it if you're applying different standards and you're sitting in a different position with a different hat do this here's i'll tell you how this this case feels to me procedurally having been a district judge and judge who are can tell me if i forgotten what that was like this feels to me like the district court felt comfortable doing what it did because it had found that there had been a waiver of a jury trial right and it was essentially functioning as a trier of fact and it felt comfortable relying on prior factual findings made before what you thought were correct and did so but did so through the prism of rule fifty six which may have caused a problem maybe maybe not so yeah and i agree actually with judge jordan but i've had situations where i had cases that i've had before me at deposition testimony and it was a case where someone had done something and it was disputed evidence and they wanted me to try the jury i have asked do you all have any problem with us doing this where i read the depositions or do you actually want to have a trial where i see the witnesses testify which is totally different than reading a deposition i think every one of them said absolutely that would be great but i always put it in the record that everyone was agreeing that i should read the depositions and that would be the submission i would like to try the decision about the fact on did that occur in this instance did the judge because i'm this is a very good judge really really smart far smarter than everybody but did at some time the judge say something along the lines that look as why don't we do it this way why don't i look at the the record that exist up to this point and make determinations because you're letting me do it anyway as the trier of fact did the judge say that essentially he did say that  you think that at the at the calendar call or the pretrial conference the district court discuss with the parties hey can i do this through summary judgment based on the record i have before me and so no that's not that's not what i'm saying i'm saying a counter call what we're going to do going forward after summary judgment had been great granted on the three issues that remained there was a there was a waiver at that time right with regard to issues like statutory i think the court did just clarify what i wanted to what i what i wanted to clarify but just in case it was not clarified any purported jury trial waiver would have occurred after the summary judgment there was  no trial because summary judgment had been granted as to the a c p a and although i don't agree that a jury trial was waived as to statutory damages that issue didn't come up until later so i wanted to make that i just make that your point is that if you waived if your client away denny thing it waived a trial for example on statutory damages post liability correct i don't agree that it was waived i know i know you're saying if there was a waiver it was limited to that that's correct because that issue didn't come up until after the summary judgment order had come out so a you're what you're saying is the bad faith the season of whether or not there was bad faith should have been made by a jury under the position the case was in at the time a summary judgment that's correct i think that bad faith perhaps comes up twice it comes up by the jury deciding whether there was bad faith using those factors that we've we've not discussed but that are we do we discuss in our in our briefs regardless of what the jury might find if the court was to determine that there was no bad faith because a reasonable person believed either they were using these domains are registering those deemed those domains in good faith or they were otherwise lawful lawfully permitted to do so then the court could short circuit the finding of a jury perhaps maybe in the same way as a stand your ground law might work where a case perhaps doesn't proceed to a jury if a efface if a judge determines that a person acted in self defense  doesn't actually go to a jury perhaps that is the purpose for that portion of the statute being there to have short short circuits i might say for i'm talking about safe harbor so i think perhaps bad faith comes up twice yeah but he ruled against your own say for he did he did rule against us on the safe harbor but even before you get to safe harbor there still needs to be a determination as to whether there's bad faith using those nine factors i otherwise if the court doesn't have any additional questions either way stand on birth right thank you very much  in recess until tomorrow morning