[00:00:11] Speaker 01: Please proceed. [00:00:13] Speaker 04: Good morning, Your Honors. [00:00:14] Speaker 04: Adam Vickers for the appellate Tiger Air, Inc., and I respectfully request four minutes for rebuttal. [00:00:21] Speaker 04: Your Honors, Tiger Air seeks reversal of the district court's denial of Tiger Air's motion to dismiss because the district court does not have personal jurisdiction over Tiger Air, which is a Louisiana company. [00:00:35] Speaker 04: There are two reasons for that your honor first of all tiger is limited forum contacts did not cause harm in the forum much less harm that tiger air would likely have known to be caused in the forum admittedly, we're at a early point in the pleading but SDR clearly indicated that Tiger airs efforts would require them to rebrand [00:01:01] Speaker 03: Basically, as I understood it, throw away a bunch of materials and so on. [00:01:04] Speaker 03: They'd have to change everything, which would have had a financial cost. [00:01:08] Speaker 03: They also allege that your pivot to the golfing industry was a specific effort to create a trademark dispute. [00:01:16] Speaker 03: Assuming that's true. [00:01:18] Speaker 03: Why doesn't that support the exercise of personal jurisdiction in California? [00:01:24] Speaker 04: Yes, your honor. [00:01:25] Speaker 04: And this does get to the heart of the, of the harm element. [00:01:28] Speaker 04: So, uh, first of all, [00:01:31] Speaker 04: The harm that Sunday Red claims has not even manifested. [00:01:36] Speaker 04: It's not occurred yet. [00:01:37] Speaker 04: They've not taken any steps to change any of their sales. [00:01:42] Speaker 04: They're still selling products under their brand. [00:01:45] Speaker 03: Do they have to, excuse me, counsel, do they have to do that in order to have a viable response to what you're claiming? [00:01:53] Speaker 04: Yes, Your Honor, there must be harm in the forum and that harm must be caused by Tiger Air's forum contacts. [00:02:00] Speaker 04: We're reminded by what the Supreme Court said in Waldemar Fiore, which this court has acknowledged many times, that for personal jurisdiction to exist, the forum contacts must cause harm. [00:02:13] Speaker 02: Right. [00:02:13] Speaker 02: So Tiger Air sold some product. [00:02:16] Speaker 02: I think most of them were sold before the opposing counsel's client launched. [00:02:22] Speaker 04: That's correct your honor so the 239 told 239 products in California and attended a couple trade shows are there other form related contacts know your honor that's all Tiger era is is it operates out of Baton Rouge Louisiana it's always operated from there it's never had a presence in California it launched a website [00:02:44] Speaker 04: And as your honor pointed out, there have been roughly 2% of Tiger Air's total product sales that started doing business in 2020 have been to California buyers who bought online. [00:02:56] Speaker 02: What I'm trying to figure out, people talk in the briefing, they refer to this letter as a cease and desist letter. [00:03:02] Speaker 02: I'm not sure that that's a fair characterization of the letter. [00:03:05] Speaker 02: It didn't ask anybody to cease or desist anything or mention [00:03:12] Speaker 02: litigation but it did say sort of introduce Tiger Air, show the two logos which are very similar or take the position there have been some instances of actual confusion and then say, please contact us so we can discuss how to avoid confusion. [00:03:29] Speaker 02: So this is problematic for me because I think that's exactly what Yahoo, what we've said we want people to be doing. [00:03:36] Speaker 02: All right, so that's the first issue. [00:03:37] Speaker 02: But let's pretend it's a cease and desist letter, okay. [00:03:41] Speaker 02: And then we're looking at the other contacts, right? [00:03:45] Speaker 02: And I think their harm has to be, as Judge Smith indicated, that you are, your client is undertaking activities in California that are mark building. [00:03:57] Speaker 02: They say as much in their briefing, right? [00:04:00] Speaker 04: That is what they allege, Your Honor, and the reason why is because they want to draw this case into the impossible foods case construct. [00:04:08] Speaker 04: okay and and impossible foods is really different and I'll talk to the opposing counsel about impossible foods but impossible foods had a physical presence in Southern California and you never have I don't think I don't I don't see that in the record that's one of my questions that's correct your honor and that's why the impossible foods case in which the court really really stretched it seemed to define personal jurisdiction in that case and over a very strong dissent from Judge Van Dyke as well and very reasoned [00:04:36] Speaker 04: But Your Honor pointed out exactly our point is that this is more of a common declaratory judgment of non-infringement circumstances that the courts are seeing more and more of now with all the e-commerce is going on where you have an out-of-state declaratory judgment defendant who is actually the aggrieved party. [00:04:59] Speaker 02: Well, you both claim to be aggrieved parties, and in our line of work, we see that a lot. [00:05:04] Speaker 02: But I think their argument has to be, because they're not claiming infringement. [00:05:09] Speaker 04: That's right. [00:05:10] Speaker 02: They haven't claimed infringement. [00:05:12] Speaker 02: I think they have to be arguing, as Judge Smith indicated, that your client has had contacts in California that is encroaching, eroding their mark, their common law mark. [00:05:27] Speaker 03: And to that point, [00:05:29] Speaker 03: you had some serious discussions, monetary discussions where people tried to settle, which of course the courts like, but from their perspective, you made outrageous demands. [00:05:42] Speaker 03: You thought you had a hold on this market and they didn't like it. [00:05:45] Speaker 03: You were talking about Taylor, uh, Taylor would, and this is a big company. [00:05:50] Speaker 03: Uh, and basically everybody walked away because they thought you were making a strong ploy to get into golfing in California. [00:05:57] Speaker 03: What are we supposed to do to that? [00:06:00] Speaker 03: Does the fact that you all met, discussed, there were high dollar value claims and nothing got settled. [00:06:08] Speaker 03: Does that play into our analysis of whether there should be personal jurisdiction? [00:06:12] Speaker 04: No, Your Honor. [00:06:13] Speaker 04: The settlement discussions between the parties were, as Your Honor characterized, they were trying to resolve [00:06:19] Speaker 04: the case. [00:06:20] Speaker 04: Now, as Judge Christin pointed out, the letter that we sent in, which triggered those settlement negotiations, was not a fire and brimstone threatening, you better stop doing this now or else down comes the hammer. [00:06:36] Speaker 04: It invited the discussion to try and avoid any sort of infringement. [00:06:41] Speaker 03: But clearly, SDR viewed it as a threat. [00:06:45] Speaker 03: Otherwise, it would not have entered into these discussions. [00:06:47] Speaker 03: And you all made some [00:06:49] Speaker 03: I don't remember the exact dollar, but you made some very serious claims. [00:06:53] Speaker 03: If you want us to go away, basically, you got to pay us X. Isn't that correct? [00:06:58] Speaker 04: That is one way to characterize what brought us to the table and start discussing early settlement before litigation. [00:07:08] Speaker 04: But if this court is to hold that an out-of-state party's [00:07:16] Speaker 04: nominal commercial activities directed at the forum that otherwise do not cause any harm. [00:07:23] Speaker 04: If you were to hold that personal jurisdiction, it is simply because that out of state party sends a cease and desist, what can be characterized as a cease and desist letter or a letter asserting their trademark rights, then practically speaking, what you're going to have is every out of state party who has launched a website or who has attended a trade show in California, instead of seeking early resolution of the conflict, [00:07:51] Speaker 04: They are going to sue first and ask questions later. [00:07:55] Speaker 00: So counsel, there's another way to look at this case different than my colleagues have been talking about it. [00:07:59] Speaker 00: I'm not quite sure it's the right way to look at this case, but I want to present it to you and give you a chance to respond to it. [00:08:04] Speaker 00: So going through the complaint, I think that you could, I think that there are facts alleged that your client targeted Sunday Red specifically. [00:08:13] Speaker 00: So here are some of the facts. [00:08:16] Speaker 00: That there were other people out there using a similar mark. [00:08:19] Speaker 00: no enforcement action taken against them, that it wasn't until after the Sunday retch launched that your client's website changed to feature golf and apparel, that there was no selling of this mark by your client on apparel until after the demand letter or cease and desist letter or whatever letter we're going to call that happened. [00:08:43] Speaker 00: And then there are sales in California of apparel after that point. [00:08:47] Speaker 00: Well, actually, I don't know if we know exactly when the sale of apparel of California happened, but it was in 2024, somewhere in that window of time. [00:08:55] Speaker 00: So all of that looks like you could put it together, and an inference can be drawn, that your client saw that this is another actor out there with a similar mark. [00:09:05] Speaker 00: in the apparel space decides we're going to go into the apparel space and we're going to assert superior rights to them and make a huge monetary demand to get them to settle with us or go away or something like that. [00:09:18] Speaker 00: Why doesn't that look like Panavision? [00:09:22] Speaker 04: Well, Panavision, Your Honor, in that case, that was, first of all, a direct infringement case, okay? [00:09:28] Speaker 04: You had an out-of-forum party who was allegedly infringing the forum party's copyrights. [00:09:39] Speaker 00: Well, if you accept the allegations here as true, I mean, trademark is all about not when did you design it first, but when did you use it first. [00:09:45] Speaker 00: And so their allegation is, we started using it on apparel, we launched, they heard that we launched, they started using it on apparel, we have superior rights. [00:09:54] Speaker 00: So they're not suing for infringement, but they are suing to say, court, resolve everybody's respective rights to these trademarks so that we can know how to go forward and do business. [00:10:04] Speaker 00: So under that theory, it's the same idea. [00:10:07] Speaker 00: You're using the mark that we used first, so we have superior rights to it. [00:10:13] Speaker 04: First of all, they do make that allegation, I agree. [00:10:16] Speaker 04: The district court rejected that allegation. [00:10:18] Speaker 04: The district court found that Tiger Air's letter or enforcement efforts, that there was nothing wrongful or abusive or torsious about this. [00:10:26] Speaker 00: Right, but we review this de novo, so that's what I'm trying to get at. [00:10:30] Speaker 00: What do you do with that theory and why? [00:10:32] Speaker 00: I guess to restate the question, why isn't this analogous to Panavision? [00:10:39] Speaker 04: Because in Panavision, it was not a declaratory judgment case, okay? [00:10:44] Speaker 04: And in Panavision, you have a direct infringer, okay, who was the defendant. [00:10:49] Speaker 04: The defendant was being sued for infringement. [00:10:52] Speaker 04: In this case, Sunday Red filed a deck action and Tiger Air, [00:10:58] Speaker 04: Who's the party who's being infringed is the one that that's that's the defendant here, right? [00:11:05] Speaker 00: Who's infringing whom is up for grabs at this moment? [00:11:08] Speaker 04: Nobody knows well your honor respectfully there are no Sunday red makes no allegations that tiger has infringed their mark at all It's just a deck action of non infringement here your honor and you think that the material difference is that they didn't also ask for a declaration that [00:11:23] Speaker 00: Your company is infringing. [00:11:25] Speaker 04: There are no allegations that our company is infringing. [00:11:28] Speaker 00: If they had asked for a declaration of not only we are not infringing, but those guys are, would it make a difference? [00:11:33] Speaker 04: Well, Your Honor, I mean, that's not the question that's before the court. [00:11:36] Speaker 00: Play it out for me. [00:11:38] Speaker 00: Would it make a difference? [00:11:39] Speaker 04: Well, to be honest with you, Your Honor, I don't know. [00:11:42] Speaker 04: I don't know what those allegations would look like. [00:11:44] Speaker 00: I'm trying to figure out what you think the material difference is. [00:11:46] Speaker 00: Is it the nature of the allegations? [00:11:47] Speaker 00: Is it the nature of the action? [00:11:49] Speaker 00: Is it the combination of the two? [00:11:50] Speaker 00: I don't know what your position is. [00:11:52] Speaker 04: Combination of the two, Your Honor. [00:11:53] Speaker 04: And the court made a factual finding which is reviewable for clear error and which Sunday Red has not challenged that there was nothing wrongful or tortuous about Tiger Air's assertion of its rights. [00:12:06] Speaker 04: So there are allegations of bad faith trademark rights creation, OK, which is there's no tort claim. [00:12:17] Speaker 04: for that in there. [00:12:18] Speaker 04: This is just a deck action of non-infringement. [00:12:20] Speaker 04: That allegation, the district court rejected on a factual determination, which is reviewable for clear, which they did not challenge. [00:12:30] Speaker 04: Also, Your Honor, and this court has acknowledged many times recently in Yamashita, that in a personal jurisdiction context, bear allegations alone cannot support [00:12:44] Speaker 04: jurisdiction. [00:12:45] Speaker 04: Only uncontroverted allegations can support personal jurisdiction. [00:12:50] Speaker 04: The parties did some informal discovery in this in the motion practice before, and, you know, Tiger, I'm sorry, Sunday Reds Council submitted a declaration to the court [00:13:02] Speaker 00: I'm not remembering from the record that your client disputes that its website didn't change to feature golf until after this. [00:13:09] Speaker 04: We did, Your Honor. [00:13:10] Speaker 04: I'll find the record citation for you as well. [00:13:16] Speaker 04: But our client, the CEO of our client, Mr. Karavich, submitted a declaration and submitted evidence to support the declaration. [00:13:24] Speaker 04: that shows that Tiger Air started selling apparel before Sunday Red ever started doing business, and Tiger Air targeted the golf industry, Tiger Air attended golf tournaments before Sunday Red ever started doing business. [00:13:38] Speaker 04: So those are controverted allegations supported only by Sunday Red's counsel's declaration and a few printouts that he got from the internet. [00:13:47] Speaker 04: Okay, that that controverted allegation cannot support personal jurisdiction alone. [00:13:55] Speaker 04: The court is bound to only look at the uncontroverted allegations. [00:13:59] Speaker 04: That's clear in the Yamashita case and in the cases that Yamashita cites. [00:14:06] Speaker 04: So, Your Honor, what we're left with now is what Judge Christian was talking about, which is just Tiger Air's commercial activities, its sales of products, and its two weekend trade show attendances in California to support harm. [00:14:25] Speaker 02: Well, wait a minute. [00:14:26] Speaker 02: Judge, if you could, Judge Smith asked something else, which is the subsequent activity that occurred after [00:14:35] Speaker 02: what I'm going to call a cease and desist letter for purposes of this question, that there were negotiations, that there was a demand, and so on and so forth. [00:14:41] Speaker 02: Is there any case law supporting that kind of contact in a personal jurisdiction analysis? [00:14:47] Speaker 04: Not that I am aware of, Your Honor. [00:14:49] Speaker 04: I mean, I don't believe Sunday Red cited any case law that says that if there's some torsive activity that would give rise to personal jurisdiction because the parties weren't able to reach an accord on what a settlement would look like [00:15:04] Speaker 04: before the case is filed. [00:15:06] Speaker 04: They have their opinion that Tiger Air made some demand that was too high, but in our view, the demand is along the lines of what the award would be, if not lower, if Tiger Air is to prevail. [00:15:20] Speaker 02: You're over your time, so I'm going to ask you to stop there. [00:15:22] Speaker 02: We'll put a minute on the clock when you come back. [00:15:24] Speaker 04: Thank you, Your Honor. [00:15:25] Speaker 02: You're welcome, and we'd like to hear from the opposing counsel, please. [00:15:32] Speaker 05: Maury, may it please the court? [00:15:33] Speaker 05: My name is Adam Charnas and I represent Sunday Red in this case. [00:15:37] Speaker 05: Now, I think it's important to focus on exactly what their argument is on the harm element, which is what counsel focused on. [00:15:46] Speaker 05: Because if you look at their reply brief, they don't dispute the fact that if we suffered harm, that it was in California. [00:15:53] Speaker 05: They put all their eggs in the basket of there was no harm at all. [00:15:56] Speaker 02: But you're not alleging infringement, right? [00:15:58] Speaker 05: At this point, we're not alleging infringement, but the key point here is that they acclaimed [00:16:05] Speaker 05: in their demand letter to us, or whatever you want to call it, the April 2024 letter. [00:16:09] Speaker 02: We can call it sea synthesis as long as we know what we're talking about. [00:16:11] Speaker 02: There's one letter. [00:16:12] Speaker 05: It didn't use those words. [00:16:13] Speaker 05: That letter. [00:16:14] Speaker 05: They asserted they had common law rights. [00:16:16] Speaker 05: Common law rights arise from use, more than day, minimalist use. [00:16:20] Speaker 05: So they're saying is you, Sunday Red, in California, your only operation, we have a website, but your only physical operations, your marketing activities, [00:16:29] Speaker 05: are all focused on California. [00:16:30] Speaker 05: And those things are violating our common law rights in California. [00:16:35] Speaker 05: And that is an admission. [00:16:36] Speaker 05: It's assertion. [00:16:37] Speaker 02: It's more than... Council, it's exactly what we've asked people to do in Yahoo, right? [00:16:41] Speaker 02: And then we've reaffirmed that recently in Impossible Foods. [00:16:43] Speaker 02: That's what is, as a threshold matter, it seems to me that you're now asking us to treat that as a contact that is very impactful for this analysis. [00:16:55] Speaker 05: Yes or no. [00:16:56] Speaker 05: Yahoo says that a demand letter ceases and decelerates by itself, if it's not abusive or cannot be the basis of personal jurisdiction. [00:17:03] Speaker 05: It doesn't say, as part of a panoply of evidence, it's not wrong. [00:17:07] Speaker 02: So what's the panoply? [00:17:08] Speaker 02: What else have you got? [00:17:08] Speaker 05: What we've got here is their assertion that they have common law rights over their mark in California. [00:17:14] Speaker 02: Here's my problem. [00:17:15] Speaker 02: My concern is that [00:17:18] Speaker 02: I don't see a limiting principle for your analysis. [00:17:21] Speaker 02: This seems to me to be a serious expansion of our case law regarding jurisdiction, because if people send the kind of letter that we have encouraged here, and there's not an allegation of harm in the form of infringement, then my concern is anybody who's selling a product in another state can be held into court. [00:17:43] Speaker 05: I completely agree with you that's not our argument at all. [00:17:46] Speaker 05: Our argument here is that they began as, I think it was Judge Smith said, [00:17:51] Speaker 05: They've got a campaign to attack our trademark. [00:17:55] Speaker 05: And that is sufficient harm. [00:17:56] Speaker 05: Yahoo itself. [00:17:57] Speaker 02: Hold on. [00:17:57] Speaker 02: Hold on. [00:17:58] Speaker 02: Let's break that down. [00:17:59] Speaker 02: Judge Smith was asking you questions that had to do with the, I think, the conversations that went on after the, I'll call the cease and desist letter. [00:18:08] Speaker 02: And you would agree, wouldn't you? [00:18:10] Speaker 02: That's not part of the analysis here. [00:18:11] Speaker 02: I think you've conceded that point. [00:18:15] Speaker 05: Well, no. [00:18:17] Speaker 02: The settlement discussions are now part of the minimum context? [00:18:21] Speaker 05: Yahoo says that the discussions to settle a cease and desist letter of demand by itself is not sufficient for policy reasons. [00:18:29] Speaker 02: So I asked a different question, counsel, and the fact that you're not wanting to answer it is concerning to me. [00:18:33] Speaker 05: No, Your Honor, I will answer it directly. [00:18:36] Speaker 05: The discussions afterwards in which they threaten our mark and they say we have common law rights in California, [00:18:42] Speaker 05: based on our prior conduct in California. [00:18:46] Speaker 05: It has to be in California. [00:18:47] Speaker 05: It's location specific. [00:18:48] Speaker 05: That is an assertion that there mark Trump's hours in California. [00:18:53] Speaker 02: Counsel, I'm waiting for an answer to my question. [00:18:54] Speaker 05: I'm sorry, Your Honor. [00:18:55] Speaker 02: The question is, we've encouraged, I read Yahoo to say we've encouraged this kind of letter. [00:19:00] Speaker 02: Yes. [00:19:00] Speaker 02: Okay, and we certainly don't want to discourage this kind of letter. [00:19:03] Speaker 02: Agreed. [00:19:03] Speaker 02: And then after that letter, in this case, what we understand from the pleadings is that the party's engaged in some negotiations. [00:19:10] Speaker 05: Discussions, correct. [00:19:11] Speaker 02: Okay, whatever. [00:19:13] Speaker 02: I'm not trying to be flip, it's just whatever that was. [00:19:16] Speaker 02: I'm trying to figure out whether you think those communications contribute to the minimum context analysis here. [00:19:22] Speaker 05: I think the answer is no with one exception. [00:19:25] Speaker 05: And the exception is that they made an extortionate demand. [00:19:29] Speaker 05: And they basically said, and the amount is not in the record, Judge Smith, but they said, unless you pay this extremely large amount, we're going to keep on going after your mark. [00:19:37] Speaker 05: And that sort of creates the actual controversy under the Declaratory Judgment Act in Article III to allow it to be in court. [00:19:45] Speaker 02: But I think what gives the court- Would you make that determination because we want to look at the exchange of the settlement discussions? [00:19:52] Speaker 05: Well, I think it made an actual controversy, but that's not what supports the personal jurisdiction. [00:19:58] Speaker 02: Okay, let's get to that part. [00:19:59] Speaker 02: What supports personal jurisdiction? [00:20:00] Speaker 02: How is this not a significant expansion of our case law? [00:20:03] Speaker 05: Well, it's just panavision. [00:20:05] Speaker 05: This court is... Not panavision. [00:20:06] Speaker 02: There's no allegation of infringement here. [00:20:09] Speaker 05: Well, there's no allegation of infringement by us against them. [00:20:11] Speaker 05: There is an allegation of infringement by them against us based... But you brought a deck action. [00:20:17] Speaker 05: Correct, because based on their allegation that they had established common law rights in California, and common law rights were established based on more than de minimis use. [00:20:28] Speaker 05: That could have only happened based on their sales in California. [00:20:32] Speaker 05: And to make it perfectly clear, they had a t-shirt, and this is controverted by affidavits in the record. [00:20:40] Speaker 05: I think the law in the Ninth Circuit is still that when there's controverted facts, [00:20:44] Speaker 05: without an evidentiary hearing at a motion dismissed for personal jurisdiction that all inferences are go to the plaintiff and they had a t-shirt on the website at some point in the past it was listed for years as being not available and then it disappeared and magically these are allegations after Sunday Red launched they all of a sudden had golf shirts and a whole bunch of attire and they started marketing in in the golf industry including in [00:21:13] Speaker 05: including in California. [00:21:15] Speaker 05: Now, and we know that because they assert common law rights in California. [00:21:18] Speaker 02: Judge Smith's trying to ask a question. [00:21:20] Speaker 03: I'm sorry. [00:21:21] Speaker 03: I want to be sure I understand what happened in these negotiations. [00:21:25] Speaker 03: As my colleague has pointed out, we encourage negotiations. [00:21:29] Speaker 03: That's not a problem. [00:21:31] Speaker 03: But you seem to be saying that the jurisdictional issue is resolved by virtue of the fact [00:21:39] Speaker 03: that Tiger Sunday rather basically asserted common law rights in various things like t-shirts and so on. [00:21:49] Speaker 03: And that that occurred in California prior to anything else. [00:21:54] Speaker 03: Is that the basis of your personal jurisdiction claim? [00:21:59] Speaker 05: Well, we're asserting that Tiger Air claimed their letter and I apologize. [00:22:04] Speaker 03: I misspoke. [00:22:05] Speaker 03: Tiger Air claimed that. [00:22:06] Speaker 05: Yes, that's one element of it. [00:22:07] Speaker 05: Yes, because because common law rights only arise from more than day minimus use. [00:22:14] Speaker 05: So it's a concession that they had. [00:22:16] Speaker 05: that they had those activities in California. [00:22:19] Speaker 05: And we know that they had other activities. [00:22:21] Speaker 05: We know that they sold products, thousands of dollars of products in California. [00:22:25] Speaker 05: We know they attended train shows. [00:22:27] Speaker 05: And what Panavision says and what this court's decision in Delphic says is if you attack a company's trademark, the harm from that attack arises where the company has its principal place of business. [00:22:41] Speaker 03: OK. [00:22:41] Speaker 03: We're talking about this meeting. [00:22:42] Speaker 03: Does the record reflect in writing [00:22:46] Speaker 03: Everything that was said in the meeting and the discussions or is that just hearsay on all sides. [00:22:52] Speaker 05: No, the record does not the record reflect the record has the April twenty twenty four letter and it has an affidavit from council for Sunday read saying that a large demand for settlement was made. [00:23:05] Speaker 05: What what we would. [00:23:07] Speaker 05: What we told the district court was that because of Rule 408, we were not putting in actually that, but if the court wanted us to, we would submit it in camera or under seal or whatever the court directed in the court. [00:23:19] Speaker 02: Because there was settlement discussion. [00:23:20] Speaker 05: Because there was settlement discussion. [00:23:22] Speaker 05: Right. [00:23:22] Speaker 05: So the actual back and forth is not in the record, other than the fact that there was the April letter and that there was a large, which we considered extortion and settlement. [00:23:31] Speaker 03: But it was the common law claim that was the [00:23:35] Speaker 03: jurisdictional hook, as far as you're concerned? [00:23:38] Speaker 05: It was the main jurisdictional hook which gets us in California, because in order to have a common law right in California, you must have more than de minimis use in California. [00:23:47] Speaker 05: And we know that there were sales in California, and we know that there were appearances in California. [00:23:53] Speaker 00: And just as importantly- What discovery did you do on jurisdiction? [00:23:57] Speaker 05: There was no formal discovery. [00:24:02] Speaker 05: The parties had an informal request, so we asked them for their sales in California, and they produced that data to us informally. [00:24:10] Speaker 05: That was the extent of the discovery. [00:24:12] Speaker 05: Sorry, go ahead, please. [00:24:15] Speaker 03: I'm sorry, Your Honor. [00:24:16] Speaker 03: The discussions had not occurred between Tiger Air and Sunday Red in terms of settlement. [00:24:26] Speaker 03: Would you still claim there was personal jurisdiction in California? [00:24:31] Speaker 05: Yes, to the extent that there are certain common law rights in California, then personal jurisdiction would still exist. [00:24:38] Speaker 05: Now, if they hadn't reached out to us, I'm not sure we necessarily would have known that they were out there to file it. [00:24:45] Speaker 05: But once they said, we're out here, we're claiming infringement, we want a large sum of money, and we're going to fight you, don't forget also they filed a TTAB opposition to our notice of registration. [00:24:55] Speaker 05: And this court in Delphic's [00:24:57] Speaker 05: clearly said that TTAB opposition to a trademark registration causes harm to the registrant in its place of business. [00:25:07] Speaker 05: And Delphix was a declaratory judgment case. [00:25:12] Speaker 02: How many of the 239 products were sold in California before Sunday Red launched? [00:25:20] Speaker 02: It looks to me like the bulk of them were. [00:25:22] Speaker 02: Is that fair? [00:25:23] Speaker 05: That is fair. [00:25:25] Speaker 02: What is the strongest case law supporting your position? [00:25:28] Speaker 02: You cite Impossible Foods, you cite, well, what is the strongest case law? [00:25:32] Speaker 05: Well, I think there are three cases that are all slightly different. [00:25:35] Speaker 05: Dole Food, Panavision, and Delphix. [00:25:37] Speaker 05: Dole Food says companies suffers harm where its principal place of business is located. [00:25:43] Speaker 05: Panavision says you suffer trademark with an allegation about your trademark. [00:25:48] Speaker 02: Are these all infringement cases? [00:25:50] Speaker 05: Delphix was not an infringement case. [00:25:51] Speaker 05: I believe Delphix was a [00:25:54] Speaker 02: You think it's a deck action? [00:25:56] Speaker 05: I believe it was a deck action. [00:25:58] Speaker 05: But I don't think that the standard doesn't change. [00:26:01] Speaker 05: I mean, Impossible Foods was a declaratory judgment action. [00:26:05] Speaker 05: It applied the ordinary, you know, purposeful direction test from Caller versus Jones. [00:26:10] Speaker 02: Yes, but to much more significant context. [00:26:12] Speaker 02: That is my preoccupation here. [00:26:15] Speaker 02: I think this is a real expansion of our case law. [00:26:18] Speaker 02: You don't seem to be denying that. [00:26:20] Speaker 02: But could I ask you to address that directly? [00:26:24] Speaker 05: Well, let me answer in two ways. [00:26:25] Speaker 05: Number one, it is much different than Impossible Foods. [00:26:27] Speaker 05: The facts are different. [00:26:29] Speaker 05: I don't think it's an expansion of the court's jurisprudence because of Panavision and DelFix, which say if you attack a trademark, and DelFix says that you attack a trademark by filing an opposition at the TTAB, that causes harm where the trademark registrant, the applicant has its principal place of business, and Sunday Red's principal place of business is California. [00:26:50] Speaker 00: What if the facts had been, you know, one of the facts that I mentioned before was, [00:26:54] Speaker 00: The allegation is that there were many people out there using leaping tiger designs, and Tiger Air only cares about Sunday Red's use of this and only takes aggressive enforcement action against them. [00:27:05] Speaker 00: What if it had been different? [00:27:06] Speaker 00: What if Tiger Air had been going after all of them? [00:27:09] Speaker 00: Would you still be able to say personal jurisdiction in this case? [00:27:12] Speaker 05: Yes, because of the campaign that Tiger Air went on, as alleged. [00:27:17] Speaker 05: the campaign that they went on to attack our trademark. [00:27:20] Speaker 05: Now, if they did that with five companies instead of just us, they still would have had that campaign aimed at California to harm our trademark, which would have caused harm in California. [00:27:34] Speaker 05: Now, I think the fact that they didn't go after these five little companies, I think, supports our argument that this was sort of an extortionate demand to try and get a lot of money from us. [00:27:43] Speaker 05: But I don't think it would if they had gone after others [00:27:46] Speaker 05: for similar leaping tiger marks, I don't think it would have undermined our claim for jurisdiction in California. [00:27:57] Speaker 00: For me, I listed a laundry list of things that perhaps relate to [00:28:03] Speaker 00: contacts going to California. [00:28:05] Speaker 00: What is your laundry list? [00:28:06] Speaker 00: Give me the whole list that you think that we should rely on for these are the contacts. [00:28:10] Speaker 05: Well, Your Honor, I think you could have been me speaking when you were speaking to my friend on the other side about giving sort of the whole theory that we have. [00:28:19] Speaker 05: And it's not only the sales to California over a number of years, which they allege established common law rights. [00:28:24] Speaker 02: Number of years? [00:28:26] Speaker 05: Three, four years. [00:28:28] Speaker 02: But the bulk of the sales were before Sunday Red launched. [00:28:30] Speaker 05: Right. [00:28:31] Speaker 05: But Your Honor, that's what they are basing their assertion of common law rights on, right? [00:28:36] Speaker 05: Common law rights are, because you're using the mark in commerce more than they know. [00:28:40] Speaker 05: I understand. [00:28:41] Speaker 05: So that's why the sales before are relevant, because that's the only, in April of 2024, they sent a letter saying. [00:28:47] Speaker 01: Counsel, calm down. [00:28:47] Speaker 01: I understand. [00:28:48] Speaker 01: Okay. [00:28:49] Speaker 01: Okay. [00:28:49] Speaker 01: Go ahead and answer, Judge, the question, please. [00:28:52] Speaker 05: So it's the sales in California over several years before and after. [00:28:56] Speaker 05: It's attending the trade shows in California before. [00:28:59] Speaker 05: It's pivoting toward the golf industry and the apparel industry once they became aware of the registration of our mark. [00:29:09] Speaker 05: And then it was the filing, ultimately, of the TTAB opposition in September of 2024, which precipitated the lawsuit, the declaratory judgment action that we file next day. [00:29:20] Speaker 05: And it just seems to me, since their only argument is, and they say this in their reply brief, [00:29:27] Speaker 05: Their argument is not as to the situs of the harm, but the existence of harm. [00:29:32] Speaker 05: And they say there's no harm at all. [00:29:34] Speaker 05: It seems to me to be remarkable to argue that you can attack someone's trademark in all these ways, by selling goods and commerce, by filing a TTAB opposition, and not impose harm on that party. [00:29:49] Speaker 00: One other thing I wanted to- If those were to work for an affirmative tort claim of infringement, our case law sort of treats it as a tort. [00:29:57] Speaker 00: an affirmative claim of wrongdoing. [00:30:01] Speaker 00: Maybe that laundry list works for there. [00:30:03] Speaker 00: But why does it also work in the deck action when we're all reversed? [00:30:07] Speaker 00: And you're not actually seeking a declaration of your rights being impaired, infringed? [00:30:16] Speaker 05: Well, I think Impossible Foods deals with that question directly. [00:30:20] Speaker 00: Well, Impossible Foods is different in this case [00:30:22] Speaker 00: There's sort of the two categories, the trademark building and the trademark enforcing conduct. [00:30:28] Speaker 00: Right. [00:30:28] Speaker 00: Impossible Foods is all about trademark building. [00:30:30] Speaker 00: You have very skinny trademark building here and more trademark enforcing. [00:30:35] Speaker 00: And so one of the questions that we have to figure out in this case is to what extent can trademark enforcing contact ever be relevant to a personal jurisdiction analysis in a DEC situation? [00:30:48] Speaker 00: And maybe any situation. [00:30:50] Speaker 00: May answer the question. [00:30:51] Speaker 05: Well, a couple of points. [00:30:52] Speaker 05: First of all, there's not a bright line between trademark enforcement and trademark building. [00:30:57] Speaker 00: Our case law has made a distinction. [00:30:58] Speaker 05: Well, there is a distinction. [00:30:59] Speaker 00: And there's a policy preference that goes to the trademark enforcing side that doesn't go to the trademark building side in terms of all this encouraging people to settle. [00:31:06] Speaker 00: their disputes. [00:31:07] Speaker 05: Absolutely. [00:31:08] Speaker 05: My point is, it's not a hard and fast, bright line, and that's shown by the fact that they assert a common law right here. [00:31:14] Speaker 05: So you can say when they're building, when they're trademark building, getting to the common law right that they asserted in the letter, that has the effect of allowing them to enforce that against us. [00:31:26] Speaker 05: So I think that that's sort of how I would say that. [00:31:30] Speaker 05: But Impossible Foods also says expressly, it deals with the question [00:31:34] Speaker 05: about the jurisdictional issue, it says the defendants, that's impossible, exes trademark building activities in California were integral to the scope of the rights that are to be clad in the case. [00:31:45] Speaker 05: So their trademark building activities in California, the development of the common law rights that they asserted are integral to the scope of how broad or narrow those rights are in California. [00:31:57] Speaker 05: And that's what gives this court or gives the district court jurisdiction in that context. [00:32:02] Speaker 02: Judge Smith, do you have any other questions? [00:32:03] Speaker 03: No, thank you. [00:32:06] Speaker 02: It looks like we're out of questions. [00:32:07] Speaker 02: Thank you so much for your patience with our questions, sir. [00:32:09] Speaker 02: Come on back, please. [00:32:13] Speaker 04: Thank you, Your Honors. [00:32:15] Speaker 04: First of all, housekeeping measure, I owe the court a citation to the record. [00:32:19] Speaker 04: Mr. Karavich's declaration is ER 233 through 237. [00:32:27] Speaker 00: And I'm looking at it. [00:32:29] Speaker 00: So that's the only counter evidence that I should look at in the record in terms of [00:32:33] Speaker 04: your disagreement with [00:32:53] Speaker 04: before Sunday Red started doing business and that Tiger Air targeted the golf industry, attended golf tournaments before Sunday Red. [00:33:02] Speaker 00: Was that in California? [00:33:05] Speaker 04: No, Your Honor, it wasn't. [00:33:08] Speaker 04: The golf tournament, if I recall correctly, was in Orlando. [00:33:15] Speaker 04: I'll be honest with the court, I don't know where they sold apparel. [00:33:18] Speaker 04: I don't know from whom they bought or sold apparel. [00:33:21] Speaker 00: Does the declaration dispute the fact that the website's changing right around the time Sunday Red is launching? [00:33:26] Speaker 04: No, Your Honor. [00:33:28] Speaker 00: But the declaration does show that before Sunday Red started doing business, Tiger Air did have... At that point, but I think when I was asking you before and I gave you my list of things, I understood you to say that the allegation about the change of the website now featuring Gulp was... [00:33:44] Speaker 00: disputed and therefore we couldn't rely on it in the complaint and now I hear you saying something different. [00:33:50] Speaker 04: I'm sorry if I misspoke your honor, I didn't mean to mislead the court. [00:33:53] Speaker 00: What is your position? [00:33:54] Speaker 04: Our position is that Tiger Air targeted the golf industry and was selling apparel before Sunday Red started doing business. [00:34:04] Speaker 04: So there is no way that Sunday Red can support its allegation that Tiger Air then, after Sunday Red formed, rushed to manufacture some dispute. [00:34:15] Speaker 02: It was in response to the launch. [00:34:16] Speaker 02: It was not in response to the launch, is what you're saying. [00:34:18] Speaker 02: That's right, Your Honor. [00:34:20] Speaker 02: You are over time again, but we keep taking you over time. [00:34:23] Speaker 02: Judge Smith, do you have any additional questions? [00:34:25] Speaker 03: No, I don't. [00:34:26] Speaker 03: Thank you. [00:34:26] Speaker 02: Judge Forrest, are you set? [00:34:28] Speaker 02: Okay. [00:34:28] Speaker 02: Thank you both for your argument. [00:34:30] Speaker 02: Thank you. [00:34:31] Speaker 02: And for your advocacy. [00:34:32] Speaker 02: We appreciate it very much. [00:34:34] Speaker 02: We'll take that case under advisement.