but if that is the case that there is bad faith and a finding and it's we can't say it's clearly erroneous and i realize you're not conceding that if that's the case can you take advantage of fair use even though it wasn't dealt with by the court and was doesn't a finding of bad faith negate fair use no your honor doesn't it that the bad faith i'm sorry the fair use safe harbor under the act  a separate industry inquiry and it's clear i think from the case law that it must be separately considered but but if the court made a finding and a separate from the intent to profit aspect but the court made a finding and did that the defendants didn't have a good faith belief that the use was lawful based primarily on their having seen the website before hand see that someone else is using it and the district court said listen you did not it was not fair use because you had at least in part in the case law says at least in part enough i don't believe that you really had the good faith belief or the you really believe that your your use was lawful and having made that finding that really dooms your fair use does it not now you are i don't believe actually the court ever made such a finding but i would point you to the fair use standard which which which is when you chose that domain name in zero four you knew that there was there were was something out there for mr carnaby that used the same basically the same the same words sure appellants knew that there was something out there are lots of things on his website well sure but but almost every website has a footer at the bottom that says all rights reserved and it didn't specifically identify his claim to rights in the afford whilce but how can you say that the use of the almost precisely the exact same name if you know somebody else is using it that's totally in good faith that it's lawful i mean jumping to that presumption in the court clearly didn't buy  the the test and the various factors the court should have weighed them holistically and in the context of the purpose of the act the purpose of the act is to stop people from registering other people's trademarks and so we had we read the language of the act and you know we have cases where you know maybe the language of the act is very broad congress drafted very broadly and it maybe takes takes in some uses that you wouldn't anticipate and this happens to be one of them i think you're you're arguing about the purpose of the law you know someone is fits within the law we're not you know by its terms in the text we're not about to say oh but you know applying it to this person you know wasn't the intent if it fits well here it does story your honor i would dispute that i think the purpose of the law is very explicitly very narrow and if that's stated in the legislative history because there are other remedies under the lanham act for these type of situations if you believe you have a likelihood of confusion case then you can bring an actor infringement on fair competition this is just for that very narrow minded or just those who don't question how exactly is the stops use of affordable fair use it's a fair use because it's a descriptive use the affordable house dot com describes exactly what they posted at their website and because of their history with affordable housing from their careers it was reasonable for them to post a website concerning affordable housing in a pick a name that was descriptive of the content of their website except that someone else already was using that so but for that you're right they were they could pick that name that is no problem but when you know someone else is using it and using it in relation to a housing product or housing you know something having to do with housing  you know to jump to the conclusion oh it is it is you know automatically descriptive and it automatically means i can use it to and forty three other people can use it  know there are there that was taking a chance and of the court said i don't believe i'm a because they also said that their use was educational not commercial i mean i think i think judge robinson made some some credibility judgments along the way here  i think the fact that your people said they would cease and desist and then didn't you know i think she she probably drew some inferences from from the way people had conducted themselves and she didn't she didn't buy that that they really demean you didn't produce any evidence as to descriptive you know what the public believed this law for the affordable house or affordable house really meant didn't do you need to produce some evidence as to how the consumer viewed this language in these words in order to show that it was clearly a descriptor or generic or something other than  it was famous which is what talk of this court about that but let's say he's saying it's suggestive you're saying it's descriptive and if you are to get registration for this you have to have something descriptive plus something else that shows it's well known by the public what did you put in the show that it's descriptive and that the public really doesn't recognize this much at all is anything connected with mr card about what we put in evidence a third party use put in evidence books and other websites promoting affordable housing with terms like affordable housing affordable housing if you're asking for required to present survey evidence or something along that lines to to  you this right to to the use and when the first person who gets there and gets that does have some rights well there's two points there i'd like to address first of all your honor mr carneval wasn't hurst person there he got his registration after my clients register their domain well the domain name yes and second of all the trademark office does give you those rights it gives you it gives you a right to sue for infringement but it southwest dot com to promote this american southwest we wouldn't call that cyber sliding we call that a legitimate use they added the to the name and they're promoting the american southwest the name is very similarly to serially clearly two different all right well let's get let me get back to the southwest example per perhaps someone registers the southwest and it's a travel agency we still wouldn't call them the cybersquatter we might call them an infringer but we wouldn't call that travel agency a cybersqua because they wouldn't meet the factors under the test why don't you go to the factors under the bed faith intent to profit and where you see the court having made a mistake well i see the court having made a mistake in several places but you know factor number three the court clearly errored by talking about priority of use instead of prior use prior use goes in appellants favor because that goes to whether they were just parking the website or just having a pay per click site that you see in cyber spying cases versus making actual use which the record is clear they made two and a half years of actual use in connection with their legitimate educational purposes i also see factor for as a mistake there of factors and the fact that they all went in my client's favor as the most important set of factors when taken in consideration when as you say the last cent what are you talking the last set the failure of an offer to sell the failure to malta to register multiple dema and the fact that mr stubbs registered the domain name in his own name these are the most important factors i'd appointed to the lucas nursery case where the court recognized that and said that those are the factors that that go to the true purpose of the act these are the factors that should weigh in the balance and what about the diversion while there was no true finding of diversion it was just implied on the basis that my client registered wholesale the other side's trademark but once again they couldn't have done that because there was no such trademark registration at the time the domain name was registered i see my time is up your honor all right let's hear from young re required a quantum leap of imagination to distinguish between doesn't accord have to at least about the ball out of the air i'm sorry your honor doesn't the court have to at least deal with it well this is something new raised the trial if you found that were evidence of of bad faith exists or is the southern district in florida found even partial bad faith exists safe harbor is rejected as a defense unavailable to people that could it the court  florida found that those acting even partially in bad faith were not entitled to benefit from the safe harbor provision otherwise they went on to say claims to not having bad faith along w faith the district court in eastern pennsylvania pointed out the initial confusion of drawing the viewer to the site is the relevant confusion and they too rejected the defendants but when it wasn't wasn't part of the problem here is that there was a misunderstanding by the district court as to a presumption if the p t o registered your mark after the stops rest registered their domain name isn't technically there's no presumption that applies to you because they were using the mark in zero four there and you came along no six and it's really if you do it before the suit not before the use so they were before you sued or before the suit came about they were using it so i don't think there's a presumption that necessarily applies your way here your  have you believe this is soley a trademark case congress or a firing stamped it out when new criminal activities began to bubble up with the advent of the internet namely criminal impersonation zani on the web rather than there is not nothing criminal here that they were using for let's go to the the the type of mark you're or you said is this mark suggestive or is it descriptive merely descriptive and if it's merely descriptive is descriptive was it suggestive but if it's merely descriptive you get a lot less protection unless you have secondary meaning ironic judge robinson who proved to be there really conversant with all the facts in the minutia but i'm one i'm wondering if she's correct because it looks like i'm giving some examples of descriptive universal night site u s search entrepreneur thirst aid apple pie paper cutter cozy warm energy savers fish fry and i could go on and on an affordable house ounce like that as opposed to suggestive maybe the best way is that something that sort of is catchy you know movie  buff legs for the pantyhose it's something like that but this doesn't this doesn't have this is just the affordable house that if that's sounds on its face descriptive well you it passed all the other requisition exams she put it to and what was the basis for the finding of secondary meaning i believe it was confidence in the competency of the trademark office that was a prime that was a prime example ian i think it's the passage of time but if time passes and a lot of other people are using it that's not does it acquire secondary meaning the appellant's claim i don't defend my totally about the mark it's about the domain name yes and a appellants knew that the name was taken when they knowingly used the name whether it was driven or not is not sure whether it's taken or if it's merely descriptive  i mean i don't you know you google and you come up with things and there's a lot of stuff that's very similar and if it's merely descriptive and everyone is using it then who's to say that it's reserved to the first person who thought of using a descriptive term i mean that's not really the law as it were i have confidence in the p t o and so far no one's proven that it's been acting incompetently the defendants make a great deal out of the fact that i trademarked my name a number of years a couple years after i registered my domain name they would have you believe this is just a trademark case they've they forget to mention the fact that they continued to use my trademark that's not true they refused to stop until i got a five pound surprise package in the mail which was a copy of the federal lawsuit i was prepared to bring john stop said that all the good names are taken in any alteration would make his party would take action against the other that they would move to a different website change the name and following that they made not occasion to the p t o to have my trademark cancelled at that point they have a right to contes you your honor but they don't have a right to falsely accuse me of fraud the same and falsified cation of documents in that still fending petition before the p t o through john stop after three years of vigorous discovery attempts on my part to rest from them a scheme to tell a veterans that they had were unsuccessful when i had him on the witness stand and he couldn't escape i put it to him bluntly and he admitted when they made those charges they didn't have any evidence of any fraud to see or false with a cation of documents they said that they did it on advice of counsel for the ins did up and told the court that i just didn't understand how these things were done to which i replied to the court i didn't believe that knowingly falsely accusing someone of fraud deceit and false of cation of documents in a legal form was considered standard operating procedure let me ask you about bad faith intent to profit there's nothing here that that says they gained or tried to gain any kind of monetary benefit from using your mark i mean i really was no showing that the courts finding diversion of customers is more surmise than it is that's how i knew about the infringement these a sense of this case alone is is proof of that and as far as i know we were a local what proof is there  diversion of customers or intent to divert customers by their use of the name well your honor if i registered mickey a mouse i'm sure world disney would contact me so just the use of the identical name is saying that they were trying to yes but they didn't mention the appellant's site reciprocally except for a friend who was familiar with me my business and he called to say that he was no longer able to reach my website he kept getting misdirected to that of the  impersonators were just their live ten to a problem what they're what you're doing is talking about affordable housing generally what they're doing is they have a particular type of concrete that they believe that can help in connection with different areas public housing whatnot and can be socially good you're an architect they're not what it's hard for me to see how they would be stealing any business from you while you're on a you've been misled their website copies of which you have printout of show a plethora of other building types renovations of other older buildings please to get investors to construct new apartment houses they mention other projects that they've done it's not just area to concrete as they would have you believe and as far as the profit motive how if you lost business from if you lost business from back in your show are it's hard to prove a negative however two identical named websites by definition the value goes down by half for each one because half the people that would be looking for me would end up at their website and vice versa duracell looking for architectural plans there they're going to know they're there at the wrong place when i would give out a business card or mention my website and at a lecture i'd be giving or have it on my letterhead actual diversion mr action etc in the record well i think i would have to look in the record your honor but it's hard to prove who wasn't able to find you by definition if someone's impersonating you by name there is going to be confusion in fact i would think you'd have evidence of the people who were missed her wanted to get to you and couldn't get to you and said wait a minute why they are diverting civil if they're never knew their identities because they never found me with it yet just you testified at the trial of course did you not testify that someone specifically contact you and told you yes how they found out about the of that is true and that was what gave rise to my original in finding out about the infringement at the time i didn't own a computer i went to the library every few weeks and compile my statistics i went to the library with your eos it does the record i ndicate that the typing and affordable houses dot com which is your site come up when someone types and the affordable health or vice versa yes the since two thousand and seven in various memoranda that have been flung back and forth i have mentioned the fact numerous times that i learned of the infringement because someone from previously familiar with telephone mr mr john stop i sent them a copy of the the anti piracy and squatting laws i sent them a copy of my domain name registration my copyright for my book i sent them a copy right of my trademark and they would like you to forget the fact that even after being informed of my trademark they continue to still use it so regardless of when i trademarked it i was always protected by the domain name being registered that's why congress set up the system and that's why i participated in it at the dawn of the internet when i first learned it was possible i did everything i could think of as as time went on to protect my name i  just and then someone mentioned to me in passing that you know david you can register those names and that happened around in one thousand nine hundred ninety six wasn't the gun of the internet well very few people had computers in  and i would say that it was still only called the world wide web it wasn't even generally referred to as the internet in ninety four i read an article in the new york times which first mentioned the world war wide web in hundred three where they said that someday people were going to have computers in their homes and that's when it occurred to me to prepare the books to be put on this new thing called this world wide web in those days because years were were introduced with respect to homes but back in the eighty's i was the first architect on earth to have a website there were no other architects my my web host and i searched the rudimentary web at that time for anything because i was looking for some press and i wanted to see how to do it and back in those days it took them for ever to translate my book into a website all right we have heard your argument and ok thank you your honor i really appreciate the honor of being here it was nerve wracking but very memorable thank you you thank mr smith the bottle the chief thing you have at this point that's that hurts your case is that there was a trial on bad faith and the court found that your clients were acting in bad faith what go over for me again what it is that you suggest that we should glom onto to reverse that finding of well the know within those factors it's a pretty delicate balance that judge robinson did well i'm not i'm sure three five or whatever it is how are you going to how should we say a couple of those factors are wrong so wrongly analyzed so we sent it back that's what i don't think even need to send it back i think you can reverse it because the key purpose of the act as it says in all the legislative history and several sort of said the same thing the purpose of the act is to stop people from registering other or other people's trademarks as their meanings and trying to sell them that didn't happen here and lucas nursery says i'm going to ask you again to focus on what judge amber i think once you to focus on there are nine factors here i'll go through all nine doctors for judge those or are factors that go to good faith or exculpatory factors the next set of factors is designed to show bad that's what it says in lucas industry that's what it says not what is there question ok let's let's go for example factor one which was is that sobs intellectual property rights in the  district court concluded that you have no intellectual property rights and that's right in a fair use case it's impossible intellectual property and so that's why the utah lighthouse case would say that if the other side doesn't have intellectual property it either or no factor is generally known as did was stall in in in the domain but the way the judge looked at it was does the domain name have any relation at all to what's being done at the website and she incorrectly said no but she said it didn't and then later found an attempt to divert or how could you divert if there's no relationship it doesn't make any sense or to a strike three is just absolutely wrong she applied the priority of used and her from the from the general trademark law which isn't the test the test is prior use in these factors at all or to the litigation so you're isn't that the argument you would make here but the only presumption doesn't apply here it does not apply in this factor works in our favor because we were making legitimate prior use prior to the litigation prior to the complaint from the domain name the next to the next factor is bona fide noncommercial a fair use again she assumed that because the use had some commercial element to it that it couldn't be fair use that that's not the test and she actually cited the part of the statute that says  can be she excited in her opinion that fair use can arise where you have even to profit that's exactly what i'm sorry it's not that she flips that history so she decided that in her opinion when she discussed factor for intent to divert factor five she just implied it based on our army corp of the other side's trademark but yet the other side's trademark like i said before came along after my clients register the to suggest that it was is another huge error and it goes to this goes to the description as for suggestions issue there's two problems one is she found a stake in this soley on the basis of the registration she never applied the test to how does the market compare to the goods and services but for factor nine she has to think about when you hit it on an earlier judge ever she has to talk about the extent of the dissing to miss the well known factors advertising sales consumer sales although i will say my knowledge your argument in the in front of the district court about distinctiveness is about ten lines long so i mean for us to tell her that she really didn't address what needed to be addressed as a little difficult well in any event but she even acknowledged in her footnote that that it's more it is potentially descriptive she just never went the next mile in her footnote in her summary judgment whether she said this mark might be descriptive of the blueprints and the online sales