seventeen six two two one p d p l l c versus t p two l c at all arguments not to exceed fifteen minutes per side mr masters for the injunction because the district court applied settled law unlike with the confusion an error as will discuss the ruling to our understanding is really unprecedented we're not aware of any other ruling on these facts that that has denied a planetary injunction effectively what the court ruled is that the owner of a registered mark cannot stop an exclusive licensee who continues to use that same mark for the same services after the expiration of the license until it finds a new licensee and begins to compete with that former licensee in the marketplace i'd like to start facts the appellee has not cross appealed for as we know there's no challenge to the facts the facts are accurate what we're arguing is that the court misapplied the law and that constitutes a recent discretion in determining the likelihood of success on the merits this court i ask when you submitted your application or not you but your client for the trademark and service mac mark apps you said your client said no one had else had a right to use the believe that those rights were no longer valid that that the band had abandoned those rights based on multiple years of not performing as i thought they did perform periodic only in their brief performed periodic we even after they disbanded is that not accurate i'm not aware that the band performed between two thousand and eight and two thousand and thirteen did they not perform individually based on their trick pony relationship and find i don't know that the record has any indication of whether they performed individually and i thought the record indicated that they were they took on solo careers and continued to perform the songs if they had performed a straight and or wrong correct your out of your your honor is correct  it does say that in two thousand and nine they continued to perform separately and they performed trick pony songs as opposed to being a musical artist known as trick pony right i mean if anybody would come to pay me i could come and perform beatles songs but you would not have been the beatle that originally sung them correct but that doesn't give you rights in the performance songs that an artist has created doesn't give you trademark rights in that name right you have to perform as a band called trick pony to have rights for the services of being a band called trick pony and just like to have to be the beatles they have roads in the beatles if you didn't get this right by performing beatles songs and i asked you about the equities of this because it strikes me just set everything else aside it strikes me as patently unfair that the band built all the value in this mark and your guy was more sophisticated for lack of a better word than the band they're just performing their trust in your guy they they go their separate ways for a little bit then they get back together still trusting your guy right but in the meantime it seems to me like your guy who did nothing in essence to build this value troll rademark cases are littered and if you guys if encountered them with with cases involving bands and rights and it's often the case that there's a lot of dispute among band members managers others about who owns the rights here we have a case where a manager helped build a band he wasn't a performer he was a manager but he was certainly a part of creating the fame of this of this group actually they were pretty famous before he was hired i mean he was hired because they were becoming famous and i guess my concern is what he wants out of this i mean he says he wants the money he's not going to establish another trick pony band izzy well it's certainly possible that he can one of the three original members well yeah maybe it is possible that he can but that's not what he's got to do is it well it certainly is what he could do i mean at this point  asking him what he said in his deposition well there's no deposition but there's a declaration yes he i mean the license agreement with the band provides for a royalty to use the name he did not choose to collect that while he was managing the band he got paid as a manager he didn't charge them or collect them for them for the use of the name they fired him as a manager came up with the name of the band right not him correct and so it doesn't strike you as odd that they come up with the name they build the value in the name and he's going to charge them to use their own name well your honor no i don't and  is about the drifters right the beginning of their case tells you that the manager in that case treadwell in the fifty's forced the members of the band the original and the second members of the band to sign over than the rights to the name as part of  of joining what was a band the second members who joined after the first members were kicked out it's not a typical that men are jurors control certain rights they might control publishing rights of copyrighted music of names a question here is is what happened in this case and it's my understanding that mr graham said that he had merely acquired those rights to protect the brain and since they were on h just or however you want to describe it if that was what he wanted to do why didn't he just do what had been done before and file the section i def ago why would he take them to himself as opposed to continuing the protection that was available i don't know that he was in a position to file the affidavits the day the band was on hiatus so if he was prepared to protect the brand as he climbs then why would he not have let the band know that yet and simply ask for a section i def a davids again which would do the very same thing with  protected in the bands at the well you're right i'd i don't think that he was in a position to do that he's not an attorney he didn't he wasn't working with them at the time the section eight affidavits came came do what he did do was decide that that there was a void that these these perhaps these applications registrations were at risk so that he was going to file new applications all without contacting them to whom he had been a representative d he took the the rights to himself without notice i mean isn't that what the record and the record shows that he filed trademark applications in his name there's no indication that there was communication with the at that time the only thing he's done with the name is to is to facilitate the tour of the band under that name the that this dispute isn't precipitated because he's tried to change the situation of him managing and representing the precipitated because they no longer want to work with him but they want to use the name right so he's not done anything to try to create conflict or to exploit the name without them now th you know there's three members of this group they've operated in various permutations over the years it's certainly possible that if this dispute can't resolve itself if there's an injunction a resolution a trial that some other combination or others may be able to perform it is that that happens all the time and once you have a chance of likelihood of confusion here the evidence likely the confusion your honor is that an authorized user is now an authorised and the public is now deceived as to the ability of the public always assume that trick pony is this band there's no one else performing his trick pony right currently correct can ask you one other question matt your client as you we talked about  royalties what's the euro parable injury and why can't let's assume you're right on the merits why can't they just pay if they lose it it's in it this is consistent with your typical franchise licensing situation right what you lack control you are seeks royalties but but i mean all franchise places in arrangements typically see if i'm a burger king franchisee you have to pay the debate to be the best the reverse right you've built the brand value now you're going to burger king and say home burger king now you paid me even though you built the entire value in it because and you stop using your name which seems i mean it just it seems a little ridiculous frankly i respectfully disagree but your if i could if i could answer the question i mean you're i understand you have issues with the equities but in terms of the issue of confusion if i'm a brand owner if i'm burger king upon dunkin donuts i'm a brand owner regardless of whether you think i should be or not i have a reputation i have control i decide you know what kind of coffee you buy you know what i was just open how clean your restaurant is right i'm not saying that they're necessarily going to do anything but you know where are they going to play what songs are they going to play how are they going to dress what the is that b s if trick pony owned their own name and you were trying to perform his trick pony that's what you're saying because burger king owns their own name it's not like someone's taken their name and now saying cease and desist brief and i thank i think it's a legitimate point that the court said it but an offhand comment without any analysis by the court is that entitled to clearer view under our precedent i believe it is your honor it's supported by the record the record the record certainly could have found other facts but the rest there have to be analysis for us to give a clearer view or not that's my question simple yeah i'm not aware that you need to have underlined analysis is long as the record is supported by the facts and i don't think there's any  used the marks in commerce visa his arrangement with the band under license he himself head nodding in the use of the brand independently of what the bandy it on behalf of itself that's correct and the stallion needed to know what the statute in section ten fifty five of the land at the federal trade mark statute specifically provides that the first use or only use of a mark can be by a licensee and that use counts as used by the applicant registrant owner so that you know the statute contemplates that owners will own rights that they don't use themselves that they only use visa v licenses that section ten fifty five of the state thank you thank you good morning and may it please the court i'm rob dealing with me is jim thomas we're both from the law firm and you and horrible national we represent the appellee is t p to keep burns and heidi newfield who are the parties that came up with the name trick pony and have been using it for nearly twenty years now their managers tell them that they can't this court should affirm the decision district court as that court did not abuse its discretion which has been defined as it's been described as equitable or considerable discretion and injunction that extraordinary remedy never granted as of right and i disagree with opposing counsel these are not common facts that these are extraordinary facts it's that the district court find that mr graham on the mark no your honor if you read the opinion closely heat uses the term trick pony trademarks capital t is a defined term for no one of the opinion defines trick pony trademarks as the registrations the registrations maybe perhaps are prima facia evidence but that can be rebutted the common law ownership of the trademark it's just the opinions silent as the common law rights of course they own the registrations the band knew ultimately found out that he had taken the registrations but the registrations are not the underlying property there's no property right merely in a registration it's use in commerce and the good will and you know the lack of confusion so the order should be affirmed because one is a non practicing context we have a manager a fiduciary who is abusing his principle so as to the likelihood of success of the marriage the district court probably determined that there's there's no possibility of confusion on these facts because there are no authorize uses there are no other uses there's no possibility of confusion or even any viable theory is there how there could be confusion the only confusion you could imagine is if some fans bought tickets to a trick pony show and expected to see how do you feel keith burns and then there's just three unknown people up there singing the songs that how do you feel they keep burns made famous songs they continue to perform and they continue to capitalize on the goodwill goodwill during that hiatus so graham's argument is cheated you fair and square kind of argument it's a hyper technical overly legal list argument and it relies exclusively on the alleged licenses the position as i understand it is if you merely allege the existence if you invoke a license that you win because an alleged licensors entitled to an injunction apparently as a matter of law and the licensee and even not signatories to any license because remember how do you feel that keith burns never signed any license in their individual capacity to the extent the licenses ever work were valid enough orders so this per se rule would apply under this line of questioning it is a question of fact as the authenticity it applies of the license or does not own the mark and it's never made a bona fide use of the mark it would apply even if the license was a product of fragile inducement even if it's a product of flagrant self dealing by fiduciary even if one of three defendants was even a part of the license even if there's zero evidence of any customer confusion or no possibility of viable theory of how anyone could be confused and since it is so the position is that if you just invoke a license you're entitled to extraordinary leaf and the only role the district court in this instance would be just great the application with a rubber stamp so if you have a license according to this theory you have automatic confusion which then means you have automatic irreparable harm and of course because likelihood of success the merits may be read you know by this court what p done so in the copyright context this circuit has not yet taken up that issue of the trademark context but the first third fourth fifth ninth and eleven circuits have applied e bay to trademark cases and to be clear we've found no circuits that have rejected the application just many have not reached it we should read we respectfully submit that this circuit should join that list and reaffirm that in the trademark context judges still have the discretion still have to go through the four factors and bounce them into the cases mean what they say now as the licenses themselves as we explained in our brief there's there's a host of reasons why they are not dispositive first there's good reason to believe they're forgeries but i don't want to get bogged down  that because even if yours into your opponent's argument that we can't consider the band's prior use based on the license merger oh yes you're the license merger all first and foremost they can't get around the fact that burned is a new field never saw the licenses they never seen the licenses so p g p graham has chosen to sue t p to the entity and then also ms newfield to mr burns ms newfield to mr burns their individual capacity and when they try to defend themselves by showing that this roger pick your moment he asserts the murder rule as a sword and not a shield and there's no there's no support for the case that we can find no cases where there's been such application going to the members of an entity like this further this is not the kind of cases in which the merger doctors applied and it's been applied some would have passed really this is not where there's a local affiliate has broken off from a national affiliate this is not what there's a case where there's just two competing users or one has at some point recognized the other's superior use there's no competing use there's no unauthorized or there's not authorized how do you deal with this argument so i understand that about the competing use but one of the arguments is it it's ridiculous that burger king couldn't stop someone from calling themselves burger king that is they own it they own the trademark and someone else wants to call themselves the potential for confusion and the potential for irreparable harm is there if someone opens a restaurant called burger king that doesn't produce the quality products that burger king produces absolutely your honor that's right and  difference in this case is that the band they came up with this name they created the good will they have been the ones performing they've controlled the quality of the goods and services in the mark it newfield left right or was she back she left she did leave the band your honor and then so could there be an argument that if two of them were performing instead of three or was it all three i'm sorry at first that was three and then it went to two went back to three and then to  right so it's now it to yes or so could there be an argument that that it's essentially van hagar instead of van halen you you could make that argument  you know the evidence is what's the public thinking what what's the in the public side who is trick pony and if you look even a gram submissions even the manager submissions what did he submit he submitted album covers and who's and if she's the one who's had the biggest hits she's the one that sing the songs and keith burns who is my client has never left the band he's continuously been a member of trick pony from one thousand nine hundred six until the present i guess my point is if you if trick pony is the brand and the brand assumes that miss newfield is a part of it then are you diluting it by not having her and could he be protecting that does that make sense so my question makes sense yes your hon understand the question i guess given that all he wants and as was stated in argument on this very motion all he wants is a new license that does nothing for the brain just it's transparent the public whether or not someone is  g this thing out and as we mentioned our brief if there's any harm that he's suffering from this it's fairly easily calculated as a percentage assuming he were to be  did did they perform at all it trick as kirk pommy yes your honor and well they did it once but it's a very significant date so when they go on hiatus they embark on the solo careers and there's evidence the record that before sometime during the hiatus it was actually in july of two thousand and eight after bennett separated graham the well to back up the attorney who filed the applications for the band was one that was arranged by their manager mr green go to the manager say this is one of the things we need to do here ranges and it's going cave this law firm to file these trademarks remember this is the same law firm that goes a preacher's these marks for for mr graham and the band starts talking they decide to get together they get together in july of two thousand and thirteen and july of twenty thirteen they he'd already applied for the trademark but he applies for the files the certificate of use and contest ability on the trademark after he's been told about his performance and then he actually files his application his application for the service marked remember the service markets for live musical performances after he's been told there's a live musical performance that just happened we're back and in that application he says no one else has a right to use this there's no there's no other explanation for that other than what he wanted to do was grab his licenses and hold him over and have some sort of control over the thought about your ponit argument that this happens all the time you're out of the only case we can find that that was remotely similar was the crystal entertainment eleventh circuit case the expos case and in short the court made short work of that and they said well you know there were licenses in that case there was a abusive manager and the court decided that the product denoted by the market is in fact the members of the band and the same is true here they own the common the rights and there particularly unclean hands defense now p g p claim this defense is invalid claiming that the defendants had unclean hands because of their quote blatant infringement which is an interesting argument because if infringement year it's the defense of unclean hands why would congress specifically enumerate unclean hands as a defense to infringement we respectfully submit the better position is that an alleged infringer can assert unclean hands as an affirmative defense says the common law sense of the statute would indicate very most of claims that this defense is foreclosed by delay but as this court pointed out in the yellow book case unclean hands as an equitable principle and it can only be used defensively against a specific part and that's what happened here when they were sued they sort of unclean hands as a defense per section b court found to where the registered owner of the mark and they were and the district court found that the defendants had entered into three license agreements those license agreements explicitly disclaim any ability to challenge the validity of that mark there's other equitable the challenge that those were procured by fraud and they argued that below and that was not found by the district court and we do not believe that they were prepared by fraud that the the agreement district court did not find that there was no fraud doesn't have a sentence that says i find it wasn't fraud but if you make an argument below and you don't make a finding supporting that argument that argument is rejected i mean it was it was available o correct that the court made a decision on a legal basis right that in order if you're an exclusive licensee right that means that that the plaintiff can use the market exclusive license right even the owner can use the mark it's only this one license and that's the way the world works in a lot of industries right where you economically for going into to a license you're going to invest in capital you know build a business you don't want to be competing against somebody else undercutting your read so it's very common to have exclusive licenses the blue cross blue if you're a diskless of licensee you have less protection than if your non exclusive licensee because and in an exclusive arrangement i can compete with you i can have multiple users out there and exclusive license in arrangement if there's a violation of the license until i can persuade somebody to invest capital take on the risk and whatever of going into the marketplace i can't i can't stop the other user right that's never been the law and that's why the law in fact is that when you have a license in arrangement and the license t ends for the reasons that your honor had had you know suggested you you almost per se have an in issue of confusion i prefer it that you don't you think there are reasons why the plane if you shouldn't be the owner of the mark but the point is that the court found that we are so if we're the registered owner of a mark where somebody's enjoyed the benefit of a license with a license explicitly said you're not going to challenge the mark where the merger rule says when you get a license agreements that quiets title as to everything that happens before the license that's the way that's the way we want licensing arrangements and we don't want to be looking back we want to we want to be looking forward after a license agreement right under those circumstances the law does not support creating this direct competition requirement  don't mention the lanham act about exclusive licensees being users i mentioned the lanham act about the exclusive right to use the mark eleven twenty five fifteen us eleven twenty five which is the infringement section talks about confusion as to affiliation connection or association with another person as to origin sponsorship or approval those are those are the direct issues that are that are at play in a license in a range of right as you said everybody thinks of burger king is controlled by burger king here people may not know the trick pony is controlled by another entity but they certainly understand the trick pony is subject to it is a certain thing as a certain ser and without that control the trademark owner is at risk for losing the equity the value of the goodwill there's no reason to believe that they're going to do this but it without that ability to control it there's a rep of uom my time is up thank you very much for your time