i hire a tradesman to stencil on my office doors pete ross ford motor company president the tradesmen subcontracts the job i can't sue the sub for trademark infringement not all agreements that involve the trademark are license agreements so how about the bream and here i think i have the perfect analogy executive recruiters sometimes we hire them to fill a position for us sometimes they just call out of the blue i have someone to fill the opening you have for a plant manager and we can't sue them for trademark infringement just because they used our trade name to solicit candidates if you enter into an agreement with the candidate the recruiter gets paid if not the or she doesn't get paid in this case mean renee acted as an executive recruiter excepting the candidate it's not a trademark license the marks are an even described in the agreements no copies of the marks are attached no references are made to their is stopped or waived its right in my view the answer is yes the primary issue raised by elites is whether they knew of the assignment in my view the evidence is sufficient to create a triable issue about whether they knew first we have the june two thousand and ten email from renee as a bag were something anything i me ask you this question is this true regardless of whether or not you went on the first issue in other words if you're right that it's not a trademark license but a simon or some sort of another contract do  still say let's go back for a trial on these issues if if we win on that issue then i think we can proceed to a jury if we don't win on the trademark licensing issue if this court were to find it is a license agreement that's what you're now talking about there are a lot of issues with respect to consent and waiver yes factual issues yes and i referred it to emails in particular one is the one sent by rene as a bag in june of two thousand and ten which says and i quote i did speak to jimmy and i got authorization to self schools but i'm still working on getting assigned contracted with him transferring me those rights and how to analyze that for a moment from indulging in all inferences in my favor and assignment doesn't have to be in contract then we have the response from the leet paul johnston not to that email but to a different email where he says and i  together it sure sounds as if he got the message that me rene was the s n e of the license and he's not objecting and that's understandable he's not objecting where he should have and he's an attorney he's their general counsel in my view that's a waiver well that a waiver or a different well i think it could be both waivers  they approved the assignment to me renee so my argument there is they knew of the assignment based on these two emails and they allowed me renee to go out and perform for several years without saying anything about it that would remain out to an unstoppable they allowed us to change our position to our detriment spent a lot of time and effort if we agree with you do we have to decide whether it was a stop or a waiver and we just have to decide there's a tribal issue of fact over knowledge and consent and what the district court decide what legal principles apply to those facts if developed i would say the la finally i have the thrive the fraud theory or theories simple that elite never intended to honor the settlement agreement with l h gene all right sunder that agreement were signed to me rene including the fraud cause of action that assignment of a claim didn't require anybody's approval on the fraud claim right judge real dismissed that in the room and yes he did specifically was the lack of specificity with respect to the time place and identity of the speaker of the allegedly fraudulent representative is fatal to this cause of action but we can before it was removed to the federal court we amended once as a matter of right to add two parties so no one had answered and we just added two parties no want to challenge the fraud claim no one had said it lacks specifications specification we weren't amending to enhance the specification the first time it was challenged was in front of judge real the say you have an alleged time place and manner if i'm reading his opinion correctly well a very last paragraph he says an amendment with respect to the parties are being dismissed for lack of personal jurisdiction and fail to do so leave to him and therefore is denied he said nothing about time place or anything else he just said you had two bites at the apple and you didn't him and  didn't state a fraud crime and you say yeah we had two bites at the apple but that was in state court when we had a parties before an answer was even filed and we didn't have to allege was particularly and he didn't give us a chance to do it and he never explained his reasons and that's correct in the reference to the record i was looking at was wine appellants excerpts of the records or that one accepts the regs at twenty eight and do that they were alleging the fraudulent representation is were made in a meeting where certain people were present and they reached an agreement and we asked for the opportunity then i think was wrong good morning your honour's at one for the police and as you can imagine this is going to sound a little different coming from me there is more than these two emails from june two thousand and ten and march two thousand and twelve to this case there undisputed facts that relate to the correspondence between the parties for a period of two years and miss as a baggs deposition testimony in this case and when you look at that in the totality of circumstances the picture emerges that it was miss s a bag the original parties to the new license agreement through l h d mr s a bag mr berger knew and their counsel trying to conceal the fact that they tried to sign this trademark license and we begin in may of two thousand and twelve e mails from miss s a bag claiming that she is representing with respect to the new license agreement and those e mails begin at page three thirty one of the record there follow up again may two thousand and eleven where she's making the same representations eventually mr ross gets involved and he sends letters to lead on behalf of in two thousand and eleven july in september telling a leak that he's representing with respect to the new license agreement mr answer back in october two thousand and eleven corresponds with the lead claiming it is on behalf of l h d and this is a year after the license was purportedly exchanged with me wouldn't say no one at that point had told believed that there was any purported to change the license and this goes on it's even with proposed someplace and sees miss s a bag is telling them signed this is consistent with her deposition testimony in this case we asked her if she ever sent copies of either one of the two purported assignment agreements to she says she didn't send copies but she didn't say i never told anyone there's a follow up we asked her if she ever called anyone at leat and told them that there was an assignment and her response to that question was no and that appears i think on page three or ninety three eleven of the record  excerpts of her deposition testimony so we have a course of conduct of two years in which ms as a bag is reporting not just to leak but to the world that she's representing l h jeep the party that it will be thought it was doing from the time they entered into the new license agreement in two thousand and nine and i do believe that is a trademark license the test to determine if an agreement is a trademark license in the ninth circuit involves two things one the right to use  retaining quality control over the market by the owner of the trademark and i think we have both of those here if we look at section d one of the new license agreement and that's on page three twenty seven of the record is granted the right to act as difference between the scenario that mr ross mentioned during his argument if you look at the preceding section in the license agreement section d to it talks about sort of the finders fee the type of idea where you would have a recruiter the section of the settlement agreement immediately prior to the new i phone that's not that's not part of the new license agreement correct the new license agreement is the following section right yes that's right but the scenario mr austin mentioned where you would have a finders fee or not critter is more like which laid out in sections to see here and i think the fact that you have section see that sort of the finer sphere the recruiter and then there's a difference in the language when you get to section d and it's dealing with the trademark license found appropriate someplace and how do they use the trademark when they approach people i mean they say i've got an agreement with elite and i want to talk to you about opening academies to use their name is that the use of the trademark in the discussion and that's part of it you would be using the marks in conjunction with finding the sub licensees showing them how you could run a fashion academy and having the marx involved in the marketing for the fashion academies as well and they would necessarily have to use some of the marks to do that in terms of marketing the opportunity and working with the sub licensees but but neither they nor the sub licensees could actually you know use the mark by putting it up on a store front saying i'm a fashion academy affiliated with the elite into you all approve the new people yes and we  still need to approve the use for a particular fashion academy and i think that's consistent with the purpose of the trademark license which requires the mark owner to maintain quality control of the market and ensure and maintain the bran good will so when someone would go to one of these fashion academies it met the standards of elite and that's one of the core principles behind trademark licenses that actual owner of the license can't give up that control they have to maintain but you're not giving up any control until l h g or me renee comes back to you and says i've identified these people who want to create a fashion academy and use your market and be part of your network and here's the proposal what do you think and if you say no those new people aren't using your mark for any purpose so l h d could use the marks in that interim step in order to actually own and operate the fashion economies so what is used or exploit the trademark mean in terms of a term of are those words are not used in the new license agreement they're used elsewhere in the settlement agreement yet so in the recitals of the settlement agreement they referenced the prior license agreement and that is where the expl well that's a good deal eaton to do but is it enough to use your exploitive trademark by saying to someone or even writing a letter to someone saying i have this agreement with  e and i'm trying to people to open fashion academies who could then use that use the elite reputation and trademark and whatever it is th enough to constitute the use of a trademark i think it depends on the circumstances that the import here of the new license agreement is it is actually giving them explicit permission to do just that and then if there are any other questions about the trademark license the next issue is that i still have an problem with the language of the new license agreement and how it gives them permission to do just that so in  use for the fashion academies so i think the step there is they're giving whether or not they actually do they have permission to use the marks in terms of marketing the proposed sub licensees and we see there are examples of right to find the supply since he's including the rights to use the trademarks for these purposes mentioned in earlier that year from february or march of two thousand and twelve and if you look at the entirety of that e mail and it begins on page two thirty five of the record it's a two page e mail from mr johnson and the email not just the one from two thousand and twelve of his other ones there's consistent references to l h g being the contract in party and the master licensee of the elite trademarks for the fashion academies so as is the point that before what happened when you learned about these some you break off relations yes so all of this earlier stuff is you were you're saying leave you out we're relying on the fact that you're still the owner of l h g up through  correspondence from mr s a bag purporting to be from l h g and this is all for a period of up to two years after the new license agreement was purportedly assigned and so the issue of knowledge and consent doesn't really arise until the affirmative representation in october two thousand and twelve when ms that's about told mr johnson that she believed she had an ownership interest in the new license agreement and that's consistent with her deposition you have to have that factual predicate that there was knowledge of the true state of affairs and there wasn't knowledge of the purported assignment until october two thousand and twelve and at that point there were no more proposed someplace and cs and the relationship with the parties was effectively done  agree on the fact that the assignment needs to be approved by elite there's no harm in denying leave to amend because you would have standing to assert the fraud claim without a valid assignment secondly there were two prior amendments and lastly one of the requirements that was included in the bone in case by this court is which has been in vo and i and had cited in our brief the party seeking we demand has to explain to either this court or the district court the actual changes to the allegations they would make in order to be able to state a fraud claim under nine b and they didn't do that in the motion to dismiss briefing and they didn't do that in their a unless you have any further questions thank you very much for your time  but you maybe start by addressing his last point that you did not i get your point about your two prior amendments enough for the do with my b but he also makes the point that in the motion to dismiss arguments and briefing you failed met all the requirements and we weren't sure what ground there would be i mean you thought your complaint before the district court with adequate i didn't think that because we identified who earlier in the complaint who was that the meetings and so the representatives of elite were there and it was bernard and they saying doing the talking so we thought there was sufficient information in there  did you learn that either your opponents or the judge had may have had a different view at they i presume at the hearing that day because judge real's practices that have his his order written out and everything including these claims in our view and the claims was simon who claims it doesn't have to be approved by anybody and we were free to pursue the fraud claim on behalf of yes and in under that agreement just a couple other points that occurred to me while i was listening to opposing counsel he said with regard to their knowledge of the assignment if you looked at the totality of the circumstances you could conclude that they didn't have knowledge of the assignment but our response is that's not the standard i'm summary judgment we think we have credible evidence that they did know including the two thousand and ten e mail where she's saying to bernard had a good say you know the district could say even though there's competing evidence so  that no trial no trial that could ever really europe you know and i don't think that's the case here where you have an email where she's saying i've gotten permission to sell the account the schools and i'm looking think a reasonable juror could conclude based on that evidence that there they knew of any simon and so last point is i'm picking up on what judge friedman said and how did they how did they use the trademark and i think that's the key it's not an infringing use we were using it just like doing cruder recruiter we're looking for people who want to operate a lead fashion cademy will propose you actually and unless and until there's a further written agreement signed there is no license that anybody has and there's no