thank you your honor may it please the court i'm petter been told and appearing on behalf of the appellate amusement art i'd like to begin this morning with the legal effect of the district court's fraud ruling we can talk about the merits and whether there was fraud in step but i'd like to start with the legal effect or the the consequences of the finding of fraud because that alone the choir's reversal and the district court granted the defendants a broad complete summary judgment but the fraud ruling doesn't justify complete relief distance the remedies are limited if fraud is proven there are two consequences first registrations are cancelled and second any claims for infringement of a registered mark are defeated but that's it all the other claims survive untouched what i'm talking about here i'm sorry what claim are we talking about here that you think survives because if it's an argument that there should be infringement claim based on i'm registered mark i don't really see any argument that there is power in unregistered mark nor do i see any basis for and claim i mean the the alleged fraud is the misstatement that these trademarks were in use notably think there's something to it i need to hear it otherwise it's argued but it seems to be purely theoretical so the your are if you look at the complaint paragraphs i don't class i don't ask whether you've played it are there any facts to support it if in fact this trademark was not in use how do you have an i registered client going to there's a couple questions there let me try to take them in and turn first we use the life is beautiful mark in connection with art shows and art installations and art exhibitions not just one of the other products that are submitted in those fake photographs i take it they're not fake but i'll come back ok they're real photographs of something that wasn't true so you can call them what you want but  you're out of those art exhibitions in art installations were under the name of the title of the show was life is beautiful which is about as generic a name as can be made when i think of life of juta fal i think of the film from twenty years ago i think of indeed want to thought about this the other day you may not be old enough but there was a hint of sorts in one thousand nine hundred sixty six by an artist purporting to be in a probably in the fourteenth they're coming to take me away ha ha and in there that phrase life of beautiful reappears several times so as your daughter knows context is canning and looking at marks and life is beautiful is neither generic nor addition are unfair competition claims don't rest on the use of any mark little register because i here's the problem i have with any other any unregistered lanham act claim for life is beautiful and i think the problem i have is that in the district court it seemed to me that what your team argued i think relied on exclusively was a presumption that a rose from the two thousand and fourteen registered mark isn't is not right your honor we did brief that extensively but the district court found and there's evidence in the record need help with that because that mark that registration post dates the allegedly infringing conduct yes and even if your honor accepts that there was still use of life is beautiful as a mark in connection with art shows and art installations ok then you get back i think to my other problem which is that's not what you played in the district court you pled reliance i think you lied on the twenty fourteen mark registered mark we did but we also put on evidence that we used life as beautiful as the title of seven art shows and the district work credited that evidence in its order your answer to my question is and i'm not trying to give you a hard time and trying to make sure i understand your answer to my question is that you did not exclusively rely on the twenty fourteen but just mark that's right even if you disregard that mark as evidence of use there was evidence of use as the district or credited on pages twelve to thirteen and footnote one of the excerpts of record in it's order now to get back to the unfair competition claim that claim surviv trademark no your honor that was only with respect to the pop art as to the trademark we use life is beautiful as the title of art shows and there's authority that when you use a title repetitively in a series of works over time but that can acquire trademark protection and that's exactly what we have here but independent of trademark we have an unclear petition theory that survives the unfair competition theory is that the defendants deceitful underhanded tactics to build a festival on the backs of all our hard work you know they took our images of our car off the internet put it into pitch documents they put on their social media accounts pictures of our that is an unfair or deceptive business practice that survives irrespective of any trademark that might be claimed in this case and as professor mccarthy's i mean we do not lose our common law rights we do not lose our state law rights and we don't lose our lanham act rights so long as they're not related to registered marks all of those claims survive and this court should reverse the summary judgment on that basis alone now as to come back to use just briefly because i want to make sure i answer all of judge clifton's questions the district court made a determination this is on pages twelve to thirteen of the excerpts  record and footnote one that we titled an art show in two thousand and eight life is beautiful and that thereafter there were six additional shows titled life is beautiful now because those titles are eligible to acquire trademark protection we pleaded aid unregistered claim for infringement of that mark that's our unregistered trademark claim that survives that is to court fraud really in addition we have the unfair competition claims so all of those claims should be reversed and we should be allowed to pursue those they weren't harmed and the public wasn't harmed and there's no evidence of that it's entirely speculative that there was any harm at all because no competitor came forward with evidence that they didn't illicit any evidence that somebody was deterred from entering the market we didn't go out and and and on the unregistered trademark theories of mention so there was no extra harm to them from being sued not to mention the fact that it would raise serious first men nor pennington problems if this court were to hold that merely being sued being subjected to suit having to defend against a suit is itself enough of a defense to defeat all of the plaintiffs claims i mean this court held in the traffic school dot com case that a review from one sentence if i may using litigation to shut down a competitor who uses unfair trade practices is precisely what the lanham act seeks to incur so the idea that we could be responsible for filing and maintaining a lawsuit and causing harm is inconsistent with this court's process i have a couple questions  about fees that i've been given a chance to answer before you sit down my first question is whether your complaint was ever amended to drop the claims the limit claims arising from the eight registered mark i don't believe so you're out of those were responded by surrendering it registered my arms that's for at the complaint wasn't amended that's correct because they moved for summary judgment within a matter of weeks after that surrender or withdrawal and at that point the summary district judge's ruling cancels the registrations not the ninth and there may be some confusion in the briefing on that but the order doesn't touch the ninth but the district court's order does cancel the eight registrations in our view that's moot because we've surrendered and withdrawn products identified in the trademark resident registrations are never so and he disputed that your honor if i would answer the question this way it's not disputed that those registrations the applications were inaccurate we acknowledge that but those photos for example were were real photos of real pieces of art the mistake was in wrecking the failure to recognize on the part of my clients executives that they were that they were supposed to put on if they had evidence that they sold the products as products as opposed to objects of art you know take the spray can for example that spray can was a piece of art mr brainwash created it was for sale like all of his artwork but it wasn't the sale it wasn't going to be good morning may it please the court cameraman godly monger tolls and all sin on behalf of life is beautiful l l c and downtown las vegas management l l c referred to both collectively as a light beer life is beautiful music art claims to have used the life is beautiful mark and over two hundred fifty cuts they claimed to support its claim of use they mocked up and submitted photographs to the p t o purporting to show use of the with the sale of goods is then disputed that those photos did not show say oh they had to make up tags and put them on pieces of merchandise that they never sell in m and two hundred fifty goods over a period of years but it means when art did not stop there it uses those registrations as the first claim and the centerpiece of its suit against life is beautiful and of the  the judge over here asked that unless it is impossible for them to re new or to reapply for those registrations then the cancellation the summary judgment on the cancellation motion was proper i think so counsel applications we're talking about the existing applications right but those it wouldn't change their rights it would change the ruling it would change the a so it wouldn't be race or comma it would be it would be a new application so they could if they they said they'd just voluntary surrender them then they could go the next day and file again and try and get those registrations applications and exact wording materials counsel so do you have any authority supporting the notion that this would be truly capable of repetition within the meaning of doctrine while it is well established that like one can it is very common in trademark you submit an application and you decide oh you want to do it for  want to change some of the facts that you put in a new one but what you end up at the end of the day is a registration for the same or i'm just going to be one more chance because i don't think you've answered my question at all i'm talking about what would happen if they went back in if anybody went cancellation too i'm just waiting for an answer the question i really appreciate the limited nature of the question but it is significant to me so on that cancellation it's well established that if they can't go forward which we've talked about if they if they could on their own go back in and reapply for the same marks then it's no not moot and the patent and trademark office the t t p follows this same continue to determine whether it was cancelled so that that is resolved once and for all and that is what we're saying here that on that cancellation it wasn't moot because they could go back and apply for the same trademarks for the same set of goods and services which they cannot now that they have been cancelled and even as counsel said they said we don't intend to but that doesn't the aster the question i think only way that not intending to doesn't end it but i think those would clearly be new not use the mark with those goods and services and yet it prosecuted those claims for two years only when its witnesses admitted under penalty of perjury that they had not sold the goods with the mark or it  because they are you've been surrendered is there anything else on the life is beautiful forget the heart for a minute on life is beautiful lanham act is there anything else about those claims that would make them exceptional that would make them exceptional for  yes so it is the entire course of conduct it is not so this is a really important point that i want the court determined and the cases that i counsel relies on are cancellation cases but this is not just a cancellation case there we did have counterclaims for cancellation the court found that their entire course of conduct the fraudulent registration the prosecution of those claims for two years of litigation were such what i'm asking you is what about those claims was special or exceptional or what's your strongest authority for that so the fraud and perpetuating that fraud is exceptional so it mean you can't just say oh well we we can't the court concluded and regularly where there is unclean hands the cases say that that is an exceptional case we don't think that people should come into the court and tr press fraudulent claims and i perceive that you know that you but you just keep missing my question i grant you that absolutely and i certainly agree with the that the evidence here was extraordinary i'm trying to figure out though it seems to me that close to fraud on the p t o goes back to judge clifton his first question was a fraud on a registered marks but if there had never been any registration there would have been these other common law claims on the california unfair competition claim and what not i'm trying to figure out what's your best argument those exceptional cases you just read this wash over a notion that the so that we have to take the case that was fact so the case that wasn't filed if they didn't come in and say i'm we're bringing a forty three a registration which they relied on your honor you know did in particular that what they relied on for use before the district court is very clear they say relied entirely on the ninth registration and i can read based on e r eleven thirty six thirty seven i've taken up a lot of your time but i think i think you're right and so i asked opposing counsel about that he's relying on the twenty fourteen registered mark which post race the allegedly infringing condom with you right right and so then i asked him  and i said he said that's not exclusively what we relied upon is your read that i get when i go back to the record i'll confirm that that was the x so yes argument it says that's by demonstrating this is they have one paragraph where they there's the ownership claims are exceptional are you going to tell me that is this going to relate to fees or just to affirming the judgement on those well basically affirming that the judgment on this that what they relied on was just a two thousand and fourteen appellate papers you have to go back to them because those were not called life is beautiful at the time the show now everything they've done is called but we know that they didn't use it like this because marcus when they applied in two thousand and two thousand and twelve they didn't apply for class forty one and instead they applied in eight other categories and they put in fake q s we know well that doesn't mean they didn't  across the board for everything they didn't even use the mark with if they thought that they were using life is beautiful as a mark with vessels they would have applied then and they did not so that lack speaks for its self they noted there's confusion in the record what the court said is under unclean hands they are barred in this courtroom from any claims against l ib the forty one that registration is subject cancellation unclean hands of works and there is not at all of the cases they rely on are only cancellation cases where there are unclean hands the court can go forward and balance the equities and say that your inequitable conduct has harmed l i b has harmed the public and i'm balancing the equities based on undisputed evidence you are barred from continuing their claims against life is beautiful in this courtroom that's how unclean hands work and it goes beyond the notion that unclean hands just means you lose your registrations then there would be no impediment to people fake representations of use when it's another type as statement and in those cases where the courts say well they can continue on with their come my claims as you noted that's because there is evidence in the record that there was use and they're relying on that so the courts say well it's not it's not equitable to buy them for all their claims but here are the very essence of what they lied about was us and the court sa that bars your entire set of trademark and unfair competition claims against l i be in this court room and that they balance the equities based on the undisputed facts and i think it's important to note that the court is not required to comb through the records and pick out their views when they had the opportunity to tell the court what their use was they said we are relying on the presumption of the two thousand and fourteen deal with when you just say services rendered these go through in detail and the time that was spent everything that we did to six minute increments showing exactly what we did so they do go through in detail what we did on the case was like this response to discovery so up about three core i forget the exact numbers but like eighty of their requests for production were trademark related and were copyright or whatever the numbers are we have that in our briefing  we would just say you know responding to discovery so in that case it is not separated out supporting evidence is insufficient to create a genuine issue of material fact and here they said they were not native english speakers they filed the trademark applications without the assistance of attorney and they believed all the statements were true that's just conclusively saying i didn't lie they didn't explain why they mocked up how the pictures got mucked up they didn't say that they didn't understand the words they didn't say that they start a statement  application didn't require use they didn't state any of that so those concludes their allegations cannot throw off a finding of of summary judgment here if that was the case they knew we would never have summary judgement someone would just thank you i'd like to start with the unclean hands point that council made the mccarthy treatise that this court has cited approvingly in o t r which we sent the court a twenty eight year letter on before that in far out productions that treat says that whether it's a fraud on the p t o defense or it's an unclean hands defense where its underling hands based on fraud in the p t o your common law claims survive all that is cancelled or registrations and any claim that depends on a registered mark is good but i think again going back to doug's clifton's may be a first question maybe a second question theoretically but you still have to show that there was used as a source identifier you still have to stop the claim and this is pretty thin what's your best shot at the competition i think the unfair competition claim is the cleanest focus on your honor but there's an important procedural point to keep in mind as well the failure to use life is beautiful as a mark is a point that they raise as an alternate ground for court didn't address it and procedural in the district court recognized no your honor on pages twelve to thirteen of the excerpts of record just a court said that we used life is beautiful as the title as the name as our mark in other words for seven art shows that's protectable had nothing to do with the registration fees the other eight registration correct has nothing to do with the other eight registrations but it is a claim for unregistered trademark infringement that's in the complaint and if you cannot affirm on alternate grounds that are only partial right has to be a complete alternate ground for months and whether we did or didn't use it as a mark doesn't touch our unfair competition claims that's the point and the ecological rights foundation case this court recognized you can't partly affirm an alternate ground you can only wholly affirm and alter why can't i can't we affirm on the ground of unclean hands your honor unclean hands as professor mccarthy x well i'm going to be more specific than that because i don't understand how ethical relief can't be denied based on misconduct by the party that seeks relief rahner the second element of unclean hands is the requirement that there be a match come grooms between the arj fraud on the one hand and the plaintiff's claims on the other hand and here they don't match because the unfair competition claim that we have does not depend on using any mark let alone a registered mark so even if you accept the for the district court's finding that we committed fraud in the p t o it wouldn't touch the the basis for the unfair competition theory that's the claim that you know what what keeps the court from not recognizing that a party that conducts fraudulent activity should not be allowed to step sideways and say well that was there but this is here and i still have this claim here why can't the court say look you're misconduct bar you from relief period because there has to be why something tell me what why there has  decide that your your clients are fraudster why do i have to listen to any of his requests your honor if you don't separate out and require that match then the defense of fraud in the p t o and unclean hands which the lanham act recognize are separate and distinct have collapsed into each other there's no difference between them any longer be one eleven fifteen b one is the fraud in the p t o defense eleven fifteen b nine is equitable principles like on clean hands this court has never before recognized that you can take fraud in the p t o and make it the basis for unclean hands but even if we're going to assume that you know who ever said that you can't now but well that doesn't then what and then they need to persuade me why we can't because professor mccarthy explains that was not the intent of the drafters of the lanham act he says that ends in section thirty one coal and sixty the idea is we have claims against them for their infringing acts they shouldn't get off scot free simply because of fraud in the registration process if indeed fraud is people at all that there are separate distinct actions that they have undertaken that are not touched by fraud on the p t o their only case that they that they can cite as an example of where fraud in the p t o as a lead to a defense of unclean hands that has swept away all of the plaintiffs claims is this northern district of illinois case and that's a case where the plaintiff publisher acted as a monopolist and went out and it threatened parties it coerced other parties into stopping their use of a mark we have none of that here we never used the mark as a monopolist we gathered these eight registrations in accurately we made mistakes and as soon as we learned about it we withdrew them and we surrendered those marks because now we're here talking about unfair competition which is based on a theory that is utterly distinct from our trademark claims we don't have to have any mark at all let alone a registered mark in order to prevail all those claims and that's the reason why the just reports fraud finding even if you accept it as accurate cannot justify  complete summary judgment you need to reverse for those claims that are not touched by the fraud of the b t o the second point i'd like to make is that as to the use of the mark apart from the part of the inability of this court to partially affirm an alternate grounds we did  mark and that's the title of the archos i've made that point finally i think it's agreed between the parties that there was no cancellation of the ninth registration that one third just ration was not listed in the complaint it wasn't the basis of any motion nothing in the just a court's ruling says that all minor are cancelled and if you look at the fees ruling this is page three of the excerpts of record in the fees appeals the court says i've only cancelled eight of the nine registrations so we know that the ninth registration has not been counsel and the final point i want to make then is with respect to fees they're not entitled to fees on common law claims as judge kristen you are asking about so the basis for fees stands or falls on the merits if you reverse as we've asked them the fees ruling necessarily falls alternatively the court did not abuse its ample discretion in looking at the fees issues just walk question about the other frees the unregistered lanham act time i asked you earlier whether or not you defendant in  honor made a determination in its order that we did use the mark and we're free to rest on that monday the life is beautiful mark as used with art shows an art installation a common law mark now are you talking about the twenty fourteen what mark we're talking about it's the same mark life if you know what i'm trying to be could get a careful because i think you are and in case my questions are difficult to follow i apologize but i think your response to the summary judgment motion setting sun registered marks is that is that all of the other  sequitur your honor i don't disagree with what you've said but that is not a reason to affirm because there is evidence of use and the district court martialled it on pages twelve to thirteen of the excerpts of record all right the district court said we use the mark in connection with