[00:00:12] Speaker 00:
Good morning, Your Honors.

[00:00:14] Speaker 00:
The district court dismissed this complaint for trademark infringement for failure to adequately allege a likelihood of confusion.

[00:00:20] Speaker 00:
This court, however, has repeatedly held that with rare exception, likelihood of confusion is not meant to be resolved at the pleading stage, but instead is meant to be a factual determination under the various factors identified in Sleekcraft.

[00:00:37] Speaker 00:
Thus, it is highly unusual for a district court to dismiss a Lanham Act claim on this basis on the face of the pleadings.

[00:00:43] Speaker 00:
And that is the rare exception, except in cases that are obviously frivolous in their allegations.

[00:00:48] Speaker 00:
And this is certainly not such a case.

[00:00:50] Speaker 00:
Appellants have shown that their allegations of likelihood of confusion here are more than enough as a matter of law to allow them to proceed to discovery.

[00:00:58] Speaker 00:
And this court has made clear that in assessing a likelihood of confusion, the similarities are to be weighed more heavily than the differences.

[00:01:05] Speaker 00:
certainly at least at the pleading stage, actually it does not appear that this circuit has ever affirmed a rule 12b6 dismissal of a trademark claim for failure to adequately allege confusion, where the allegations have even remotely resembled those set forth here.

[00:01:21] Speaker 00:
So let me briefly review the key allegations here under the Sleevecraft criteria, starting with

[00:01:27] Speaker 00:
the similarities of the marks.

[00:01:30] Speaker 04:
Are you aware of any other case that involved a single book and the title of that book?

[00:01:36] Speaker 04:
I couldn't find any such cases.

[00:01:40] Speaker 00:
I'm sorry, a single book.

[00:01:42] Speaker 04:
A single book and the title of that book.

[00:01:47] Speaker 00:
Well, as I pointed out to this court when we were here last time on appeal, this court has never heard a case before in a title versus title context.

[00:02:00] Speaker 00:
So here we have a title of a book.

[00:02:03] Speaker 00:
against a title of a filth and on that basis this court last time in connection with Jack Daniels had reversed and remanded for application of the likelihood of confusion application in accordance with Jack Daniels applying

[00:02:20] Speaker 00:
the likelihood of confusion.

[00:02:22] Speaker 04:
That Daniels was a toy and there was of course all sorts of toys and it was a comparison to the to the liquor and I was just looking for some exemplar where the title of a book was given trademark status and are you aware of any because I didn't I didn't find any.

[00:02:43] Speaker 00:
Oh yes the the title of a book

[00:02:48] Speaker 00:
The title of the book, and I can give you the case on rebuttal, but yes, the brief does cite several cases where when secondary meaning is found, then there can be a trademark in a book.

[00:03:02] Speaker 00:
So while the trademark office does not register titles as books, once you show that there is secondary meaning,

[00:03:09] Speaker 00:
Then in that situation, you can have a protected title.

[00:03:16] Speaker 00:
I believe Rogers itself cites to that, but when I come back up, I can give you the exact pin site of a couple of cases.

[00:03:23] Speaker 03:
So it seems that your argument is skipping ahead a few points.

[00:03:27] Speaker 03:
Judge Akuta is raising the issue of whether your clients have a protectable interest, a protectable trademark to begin with, how we should characterize this title.

[00:03:39] Speaker 03:
Is it descriptive?

[00:03:40] Speaker 03:
Is it suggestive?

[00:03:41] Speaker 03:
Is it something else?

[00:03:42] Speaker 03:
And then, of course, there's the issue she's raised with whether a single title can be

[00:03:48] Speaker 03:
protected and whether that's the case if there's secondary meaning.

[00:03:53] Speaker 03:
Then there's the issue of whether the Rogers test even applies and then there's the issue of whether we go to Sleekcraft and the eight factors there.

[00:04:00] Speaker 03:
So the way you start your argument, I think you're just assuming there's a protectable interest and Rogers doesn't apply and we should just go straight to Sleekcraft?

[00:04:09] Speaker 00:
Well, I'm not assuming that on appeal here, that was the issue that was raised, whether the likelihood of confusion test was satisfied.

[00:04:16] Speaker 00:
The court below has found that Rogers does not apply because the defendants are using the plaintiff's mark here as a source identifier, and source identifiers are required to meet on the usual battlefield of likelihood confusion pursuant to Jack Daniels.

[00:04:35] Speaker 03:
So the issue here that was raised on appeal was just as to the likelihood of confusion, not as to the... But don't they challenge the district court's conclusion that Rogers doesn't apply under Jack Daniels?

[00:04:51] Speaker 00:
They do, but they did it in a in an odd way.

[00:04:54] Speaker 00:
They didn't cross appeal just in their opposition to our appeal.

[00:04:57] Speaker 00:
In the likelihood of confusion, they just re-raised all of Rogers again, but that wasn't actually the subject of our appeal.

[00:05:04] Speaker 00:
It was the subject of

[00:05:07] Speaker 00:
by whatever means they felt they could raise in an opposition on the likelihood of confusion issue, re-raising the whole issue again of Rogers.

[00:05:19] Speaker 00:
But as far as secondary meaning, the secondary meaning issue was decided three orders ago at the lower level.

[00:05:24] Speaker 00:
And so any issue as to that would have already been waived because when this court remanded, what can be brought up again is only

[00:05:31] Speaker 00:
what was either remanded or issues that weren't decided but had been raised in the prior appeal.

[00:05:36] Speaker 00:
So the issue of secondary meaning, my understanding is that that had been resolved and is the law of the case, and that here we were only talking about likelihood of confusion.

[00:05:49] Speaker 00:
But as far as secondary meaning here,

[00:05:59] Speaker 00:
As I said before, once that is shown, it's a protectable mark, even if you couldn't register a title of a movie or book in the first place.

[00:06:14] Speaker 00:
And so the court had found that that was shown here in secondary meaning.

[00:06:19] Speaker 03:
But this isn't the issue.

[00:06:22] Speaker 03:
at this stage in the proceedings and at the procedural posture before the district court, whether you've plausibly alleged secondary meaning, that secondary meaning can be shown.

[00:06:33] Speaker 03:
So you have allegations in your complaint about the book being favorably reviewed, Amazon reviews.

[00:06:42] Speaker 03:
I think there's allegations that they deliberately changed the title of the film to mimic the book, that the author is recognized on the street.

[00:06:52] Speaker 03:
And how do all of those things support that you've plausibly alleged that a trior effect could find secondary meaning?

[00:07:02] Speaker 00:
Well, in the first instance, yes, for instance,

[00:07:11] Speaker 00:
Those various allegations show secondary meaning because they show that there was a widespread recognition in terms of the public's understanding of the association between the gringo title with the gringo book and its authors, and particularly on Amazon, where it reached number one bestseller status.

[00:07:27] Speaker 00:
So all the reviews on Amazon, all the reviews in the publications,

[00:07:31] Speaker 00:
its achievement on the bestseller list.

[00:07:33] Speaker 00:
All of that shows the criteria to meet secondary meaning, which the district court had found even from the beginning before this case was even ever appealed the first time on the Rogers issue that was pled.

[00:07:47] Speaker 00:
And so I'm not sure respectfully if that is one of the things that

[00:07:53] Speaker 00:
can be heard now considering that it was not raised in the first appeal.

[00:07:56] Speaker 00:
It was never raised until now in this opposition by the defendants.

[00:08:00] Speaker 00:
But in any event, for those reasons, the court below has found that there's secondary meaning.

[00:08:05] Speaker 00:
And I submit again for the same reasons that there are.

[00:08:07] Speaker 04:
Did we on appeal find there was secondary?

[00:08:13] Speaker 04:
Excuse me?

[00:08:13] Speaker 04:
In the first appeal, did the court find there was secondary meaning?

[00:08:18] Speaker 00:
The court, that was not before the court on the first appeal.

[00:08:22] Speaker 04:
Okay, so we have not ruled on that issue.

[00:08:25] Speaker 04:
Is that correct?

[00:08:26] Speaker 00:
Correct.

[00:08:26] Speaker 00:
It was never appealed by, it was never appealed the first time around.

[00:08:29] Speaker 00:
The court remanded last time just in, I think it was one sentence saying on the basis of Jack Daniels and put it back down for that determination.

[00:08:37] Speaker 04:
So we didn't limit what the district court could find.

[00:08:41] Speaker 00:
They, well, the court remanded on the basis of Jack Daniels, and so the district, and so my understanding.

[00:08:46] Speaker 04:
So you read that as being limited to the Jack Daniels, but we didn't say that, is that right?

[00:08:53] Speaker 00:
That was my understanding from the remand citing that.

[00:08:56] Speaker 04:
We'll assume that we have a question about secondary meaning, and that's why I asked what was the best case you had that a single book title had secondary meaning and could have a protectable trademark.

[00:09:11] Speaker 00:
Yes, and and that's and what I wanted to get you the exact pin sight which I have here But when I come back for a bottle, I will give that to you But I do think it's important to highlight some elements of the sleet craft factors in particular Judge Selma found that the that the marks were very different, but in fact they are very similar plaintiffs alleged in particular Plaintiffs alleged in particular here

[00:09:41] Speaker 00:
that they use the same term gringo in all capital letters for the same purpose the title of their work to refer to the same thing the protagonist with the same meaning a non-Spanish speaking American out of his element south of the border for a story with a similar theme a protagonist on the run after being set up for selling marijuana with typeface and cover art that furthers the similar theme and both with Amazon endorsements

[00:10:04] Speaker 04:
The Court has been clear that for the purpose— Well, the other side points out that gringo is a single word that's very often used and that there are lots of other books and material that are named gringo.

[00:10:19] Speaker 04:
What's your response to that?

[00:10:21] Speaker 00:
That none of that there's before the record here on a motion to dismiss and there's nothing in the record that shows that any other titles with the one word gringo, which is what the court below found we have secondary meaning in has ever also achieved secondary meaning and the case law is clear.

[00:10:37] Speaker 00:
that it is not a matter of whether there's any third parties that have ever used the word before.

[00:10:43] Speaker 00:
It's a matter, first, of whether there's been secondary meaning in your use of the mark, and secondly, it's a matter of whether you have priority over the defendant.

[00:10:53] Speaker 04:
Are you assuming there's secondary meaning, or are you saying that I think there were 500 reviews on Amazon that that is enough to create secondary

[00:11:04] Speaker 04:
I guess I'm confused about that.

[00:11:07] Speaker 00:
I was saying that the court below found that the allegations that we reviewed just a moment before upon the other question about all the reviews on Amazon, all the reviews in national publication, the number one Amazon bestseller list amongst others, those are what gave the book secondary meaning.

[00:11:27] Speaker 00:
and that's what the court below had based its opinion on.

[00:11:30] Speaker 00:
I'd also like to point out to the court that the entire issue here is that the evidence ultimately might go one way or the other, but it's that the court below and the defendants are using emotion to dismiss the pleading stage to dispute whether things should be one way or things should be the other way or people might think this or people might think that.

[00:11:49] Speaker 00:
That's all interesting, but that's on the evidence.

[00:11:52] Speaker 00:
The allegations must be taken as true here.

[00:11:54] Speaker 00:
It can't be the judges below subjective opinion.

[00:11:57] Speaker 04:
The plausible allegations.

[00:11:57] Speaker 00:
Correct.

[00:11:58] Speaker 00:
But here, when we say that, when the court below says that the title of the book is Gringo Cole and My Life on the Edge is an international fugitive,

[00:12:05] Speaker 00:
For instance, that does seem to be a subjective interpretation because right here there's no colon on the first page, the subtitles below.

[00:12:12] Speaker 00:
On the actual title page in black and white, only the word gringo appears, not the subtitle.

[00:12:17] Speaker 00:
And if you go to the third title page, the word gringo appears in big letters separated by a big line that then has in different font below the subtitle.

[00:12:26] Speaker 00:
So perhaps if you had a fact finder they could

[00:12:29] Speaker 00:
make a different determination, but right here there's plausible allegations that Gringo is the title.

[00:12:34] Speaker 00:
The court below found that it had secondary meaning, that there's a bunch of reasons why the font, the all capital lettering, the similar common themes in the book, all of these point towards similarities.

[00:12:46] Speaker 00:
And the one thing I want to stress in particular is the presumption that intent, we allege intent, we allege that they retitled the book Gringo, they retitled the movie rather, Gringo,

[00:12:56] Speaker 00:
after we had achieved number one bestseller status, that they knowingly did it and moreover that they intentionally did it to deceive.

[00:13:04] Speaker 00:
This court has made clear that there is a presumption that once intent can be inferred, that there is a presumption of confusion.

[00:13:13] Speaker 00:
And the court must engage then at that point to see do the other factors heavily weigh against the confusion here that doesn't seem that that's what happened at the lower level.

[00:13:21] Speaker 00:
Instead of accepting that presumption, the court seemed to just look at the other factors, engage in its subjective opinions, adopt the defendant's arguments over things that might be borne out in the evidence on summary judgment, but did not stop before actually engaging in fact-finding and did not even honor the presumption to say,

[00:13:43] Speaker 00:
Okay, the balance of the factors, do these actually overcome the presumption raised by intent?

[00:13:49] Speaker 04:
You want to save some time for rebuttal?

[00:13:51] Speaker 00:
Yes, Your Honor, thank you.

[00:14:06] Speaker 02:
Good morning, Your Honors, and may it please the Court, Moez Caba on behalf of

[00:14:12] Speaker 02:
the appellees in this case.

[00:14:16] Speaker 02:
And I'd like to start by really making sure everyone is on the same page about the steps that Judge Beatty was identifying.

[00:14:26] Speaker 02:
Sleecraft is sort of the third

[00:14:29] Speaker 02:
The first step, and the court has been trying to tease out, is you have to establish you have a valid trademark interest, a protectable interest in this word.

[00:14:45] Speaker 02:
have picked a single word, commonly used, gringo.

[00:14:50] Speaker 02:
It is just but one word that appears in the title of their book and now seek to lay claim to any other expressive art that also chooses to use that word.

[00:15:01] Speaker 02:
The Federal Circuit in Herbco...

[00:15:03] Speaker 01:
I wonder if their complaint has to go that far, that they could challenge anybody, anytime whoever used the word gringo.

[00:15:10] Speaker 01:
One of the things that's striking about this is sort of the proximity of the movie to the book.

[00:15:20] Speaker 01:
are contemporaneous, but they certainly are contemporaries.

[00:15:25] Speaker 01:
And that feels a little different from some other things.

[00:15:27] Speaker 02:
I think temporally, there are years in between.

[00:15:31] Speaker 02:
The movie actually began being developed before the book was published.

[00:15:34] Speaker 02:
That's the complaint that alleges that.

[00:15:36] Speaker 02:
The movie began before the book.

[00:15:38] Speaker 02:
The stories, even as defined by the complaint,

[00:15:41] Speaker 02:
are different.

[00:15:43] Speaker 02:
Sure, there is a commonality.

[00:15:44] Speaker 02:
I understand that using the word gringo the same way.

[00:15:46] Speaker 02:
Well, because gringo is a defined word.

[00:15:48] Speaker 02:
The case law has been clear, Judge Bybee.

[00:15:52] Speaker 02:
For the very reason that I think Judge Akuta was trying to probe, the titles of single works are generally not protectable as a matter of law unless

[00:16:03] Speaker 03:
There's some splits in the circuit over this issue.

[00:16:07] Speaker 03:
There's a second circuit's position, the federal circuit's position, the fifth circuit's position.

[00:16:10] Speaker 03:
I don't think the ninth circuit has taken position, not that I could find.

[00:16:13] Speaker 03:
But I did not read your briefs to argue that there's a per se prohibition that a single work, its title, can never have trademark protection because the case law seems to suggest that if we conclude that it is descriptive, nonetheless, if it has secondary meaning,

[00:16:31] Speaker 03:
it can have trademark protection under the Lanham Act.

[00:16:34] Speaker 02:
That is consistent with our view, Judge Beatty.

[00:16:36] Speaker 02:
We're not appearing before this court to say you ought to adopt a per se prohibition or a per se rule here.

[00:16:43] Speaker 02:
The reason we cite to these cases, however, that because they are animating the very

[00:16:49] Speaker 02:
reason why it is hard to get secondary meaning.

[00:16:53] Speaker 02:
We agree that if even the title of a single work, it is difficult, particularly when the title is descriptive as it is here about Gringo, acquire secondary meaning.

[00:17:04] Speaker 03:
So then you rely on materials outside of the pleadings.

[00:17:07] Speaker 03:
So you rely on screenshots from Amazon showing books and movies or other things with the title Gringo.

[00:17:14] Speaker 03:
But the district court didn't consider that.

[00:17:17] Speaker 03:
The district court did not take judicial notice of those materials, and so I think what we're looking at is whether the district court abused its discretion in deciding not to go outside the pleadings on this motion to dismiss, and not to consider that.

[00:17:28] Speaker 03:
I mean, the district court incorporated the book and the movie, but did not then take judicial notice of other materials.

[00:17:33] Speaker 02:
The district court decided it didn't need to.

[00:17:36] Speaker 02:
So two things happened.

[00:17:37] Speaker 02:
The first time we went down, the district court applied Rogers and Mattel, and I'd like to talk to the panel about that in a moment.

[00:17:46] Speaker 02:
But of course, you only get there if you establish secondary meaning, which is their burden.

[00:17:50] Speaker 02:
The district court in the first instance said, I don't even need to go there.

[00:17:53] Speaker 02:
I don't need to take judicial notice of it because I would dismiss, regardless, essentially, assuming you've established the secondary meaning.

[00:18:02] Speaker 02:
In this case, the district court actually- Because of Rogers.

[00:18:04] Speaker 02:
Because of Rogers.

[00:18:05] Speaker 02:
In the second time we went down, the district court didn't rule on the request at all.

[00:18:11] Speaker 02:
And there are cases, and I can pull some sites if it would be helpful to the panel, where the Ninth Circuit

[00:18:18] Speaker 02:
has taken judicial notice of things.

[00:18:20] Speaker 02:
The Ninth Circuit says under the Iqbal Twombly plausibility standard, we don't have to be blind to the existence of other things out there.

[00:18:27] Speaker 02:
And here we argue, and it is in the record and we put it in, the word gringo has been used in lots of creative expressions preceding plaintiff's use of that word.

[00:18:39] Speaker 02:
obviously post-stating plaintiff's use of that word, which is why the real question is, okay, so does a substantial portion of the public associate that word, that one word of your title, with the publisher, the source?

[00:18:54] Speaker 02:
That is the test for secondary meaning here.

[00:18:57] Speaker 02:
And all plaintiffs have pointed out, and Judge Beatty, you were sort of identifying it in the complaint, is we

[00:19:03] Speaker 02:
It was sort of popular and some people associate the author with the book.

[00:19:07] Speaker 02:
But that doesn't necessarily mean that the public, and there are not allegations to this effect, associate the word with the source.

[00:19:17] Speaker 02:
That is the word gringo with the source.

[00:19:19] Speaker 02:
And I think Judge Akuta's point about is it 500 Amazon reviews?

[00:19:22] Speaker 02:
Surely that could not be enough to satisfy secondary meaning.

[00:19:26] Speaker 02:
But even if they establish secondary meaning, you still, under both the Supreme Court's decision in Jack Daniels and this court's recent decision in AJ Press that maintained the pre-Jack Daniels Rogers analysis in this circuit, they still have to establish that Rogers does not apply here.

[00:19:49] Speaker 02:
And what the Jack Daniels court said and what the AJ Press, what this court said in AJ Press is you get out of Rogers if the title, if that is the defendant is using the mark as a mark, if the defendant is using the mark here, gringo, to serve a source identifying function.

[00:20:11] Speaker 02:
In that realm, it is absolutely correct.

[00:20:14] Speaker 02:
You go to sleep craft.

[00:20:15] Speaker 03:
And that's where the district court concluded that the defendant was using gringo to identify the source, the book.

[00:20:22] Speaker 02:
That is what the district court, we believe, erroneously concluded.

[00:20:27] Speaker 02:
Of course, on appeal, this panel under Hall, we've cited

[00:20:31] Speaker 02:
the case is footnote two in our answering brief.

[00:20:34] Speaker 02:
The court can affirm on any basis.

[00:20:35] Speaker 02:
It doesn't have to only affirm on the Sleekcraft basis, even though we believe the court could affirm on Sleekcraft as well.

[00:20:42] Speaker 02:
But here, I think what the court should be looking at is this circuit's opinion in some two decades

[00:20:51] Speaker 02:
ago in Mattel.

[00:20:53] Speaker 02:
And in Mattel, the court, Judge Kaczynski writing for the panel, said titles of expressive works are not source identifying.

[00:21:03] Speaker 02:
They are conveying a different message about the artistic expression.

[00:21:09] Speaker 02:
In that case, it was a title song.

[00:21:11] Speaker 02:
It was the Barbie Girl song.

[00:21:13] Speaker 02:
And this court said, no, this is the problem when you are trying to

[00:21:18] Speaker 02:
limit, essentially take hold of a word that can be used in creative expression.

[00:21:24] Speaker 02:
Because Gringo, in this case, the title of the movie, is not identifying a source at all.

[00:21:30] Speaker 02:
It is quite literally what the Mattel court said was conveying a different message.

[00:21:36] Speaker 02:
And of course, the Supreme Court in Jack Daniels cited Mattel approvingly saying, yeah, that is the kind of case in which Rogers applies.

[00:21:44] Speaker 02:
Here and the court can look at the complaint.

[00:21:47] Speaker 02:
I mean, they held up the book.

[00:21:49] Speaker 02:
But if you had titled your movie Star Wars, would that be source identifying?

[00:21:54] Speaker 02:
It's two words.

[00:21:56] Speaker 02:
Well, there is a difference, Judge Bybee, and we address this very hypothetical in our papers.

[00:22:03] Speaker 02:
Rocky is another example that folks have often used.

[00:22:06] Speaker 02:
Star Wars would both have gotten through the first gateway because it does have secondary meaning.

[00:22:12] Speaker 02:
Also, it is not a single work.

[00:22:15] Speaker 02:
It is a series of works, and the case law recognizes a difference between a single work and a series of works.

[00:22:21] Speaker 02:
And then I think you would have to look to how the defendant uses it.

[00:22:26] Speaker 02:
So the secondary meaning analysis of course is what does the public view associate the word with.

[00:22:34] Speaker 02:
The source identifying analysis is what is the defendant intending to convey by use of the word.

[00:22:40] Speaker 02:
Here if you look at paragraph 25 of the complaint where they actually put up the book and the DVD, the movie, the film side by side,

[00:22:48] Speaker 02:
The film actually above Gringo says Amazon Original.

[00:22:52] Speaker 02:
That is the source identifier with respect to this book.

[00:22:55] Speaker 02:
It is not the title of the book, Gringo.

[00:22:59] Speaker 02:
And that's why you have cases like Mattel, like Dr. Seuss, like Fox dealing with the Empire TV show and the use of Empire in both the title of the TV show and that was a trademark, an actual trademark.

[00:23:16] Speaker 02:
of a record company the court says no no no that's that's not enough to use that word you have to get through this rogers analysis and i think uh my friend on the other side said there's never been a title versus title case i mean dr seuss was a title versus title case and doc the the plaintiff and dr seuss said we own the trademark to uh

[00:23:38] Speaker 02:
Oh, the place is you'll go and the defendant in that case added the word boldly and Intended to copy dr. Seuss the font the color the typeface the way that the words were strung together And this court said no that does not pass muster under Rogers that that case would be dismissed one of the things that you said in your analysis of the use of Star Wars and rocky which I thought was a very good point was That the public certainly would would view that and I think that there there would be some

[00:24:06] Speaker 01:
easily obtainable evidence, you pointed out a minute ago that they did not plead anything about the public perception outside of the 500 Amazon reviews.

[00:24:16] Speaker 01:
Is that a Twombly error on their part?

[00:24:18] Speaker 01:
Is that a pleading error that they didn't provide some kind of a survey conducted by some reputable polling?

[00:24:24] Speaker 01:
a group that could connect these two?

[00:24:26] Speaker 02:
I don't think, Judge Bybee, I'm not here to tell you that plaintiffs must conduct surveys before filing every one of these complaints.

[00:24:33] Speaker 02:
I think they could be helpful, but they are never, never dispositive.

[00:24:37] Speaker 02:
And we have that from the case law.

[00:24:40] Speaker 02:
The problem here is even saying the book is popular, even if the book had 5,000 reviews, that doesn't mean that a substantial portion of the public associate the title

[00:24:51] Speaker 02:
gringo with the producer, that is the publisher of the book.

[00:24:56] Speaker 01:
But couldn't such evidence be adduced on, before we went to summary judgment?

[00:25:00] Speaker 02:
But they have to still make the sufficient allegations to even establish that their non-registered mark, a single word from a single publication has achieved secondary meaning.

[00:25:12] Speaker 02:
And that gateway is an important gateway before you get to even either Roger's Horsley class.

[00:25:18] Speaker 01:
Outside of a, outside of a,

[00:25:20] Speaker 02:
of a survey, how would you establish that?

[00:25:22] Speaker 02:
Well, so what the cases have said is you've talked about the amount of marketing in specifics, how many dollars you have spent to associate the public, the widespread public recognition.

[00:25:36] Speaker 02:
Some cases, Your Honor, have cited, actually cited to actual consumer feedback saying, oh, I thought that this was your book, for example.

[00:25:47] Speaker 03:
But didn't they make those allegations where they

[00:25:49] Speaker 03:
They alleged that people were not purchasing the book because they thought the movie had been adapted from the book and they didn't like the movie and so this sort of negative pushback on the book.

[00:26:03] Speaker 02:
I think that they make certain allegations about depressed sales of the book, Judge Beatty.

[00:26:09] Speaker 02:
I don't think they're tying it to the actual secondary meeting test, which is the substantial portion of the public believing that other things titled gringo necessarily come from this same source.

[00:26:27] Speaker 02:
even if you get past that though, and I do want to address Sleekcraft for a moment, even if you get them to secondary meaning, it still does not establish that we use the mark as source identifying to get us out of Rogers.

[00:26:41] Speaker 02:
And if you apply Rogers, it's a pretty straightforward analysis that this court has done repeatedly in these cases to kick out precisely these sorts of complaints.

[00:26:53] Speaker 02:
Judge Kuda, I do want to be very specific because you asked this question.

[00:26:58] Speaker 02:
The previous panel did not rule on any of the issues.

[00:27:01] Speaker 02:
The previous panel, we had a fairly robust argument.

[00:27:05] Speaker 02:
A lot of time was spent talking about Rogers.

[00:27:08] Speaker 02:
The Star Wars question had also come up.

[00:27:11] Speaker 02:
We talked about secondary meaning, certainly.

[00:27:13] Speaker 02:
What the previous panel did, they asked me.

[00:27:15] Speaker 02:
They said, Jack Daniels is pending.

[00:27:16] Speaker 02:
What are we supposed to do with that?

[00:27:18] Speaker 02:
And I said, you should probably wait and see what happens.

[00:27:21] Speaker 02:
And then you may have to remand.

[00:27:22] Speaker 02:
And that's what they did.

[00:27:23] Speaker 02:
They didn't reverse.

[00:27:24] Speaker 02:
They vacated and remanded, which is why we went back to the district court to kind of go through these issues again, which is why this panel now is going to have an opportunity to address these issues substantively.

[00:27:35] Speaker 02:
So, assuming plaintiffs can even get, they get secondary meaning, assuming they... Well, they don't get secondary meaning here, that they plausibly allege it.

[00:27:44] Speaker 02:
That they plausibly allege secondary meaning, notwithstanding the case law that has explained titles are generally not tied to publishers, notwithstanding the case law that says that single titles generally don't get trademark protection without establishing secondary meaning, and notwithstanding

[00:28:04] Speaker 02:
the fact that this word, gringo, has been used multiple times before and after this book, assuming that this court says, fine, you've plausibly alleged secondary meaning for our purposes.

[00:28:15] Speaker 02:
And they then get out of Roger's land because they are able to, you believe that they have plausibly alleged that we use the title in a source identifying way, again, notwithstanding Mattel, notwithstanding Dr. Seuss.

[00:28:32] Speaker 02:
and then you get to Sleekcraft, I think here that is yet another basis to affirm the district court because the district court did not go outside of the pleadings, Judge Beatty, looked at the complaint, the allegations in the complaint, and looked at the book and the film and said that a majority of these Sleekcraft factors actually weigh in favor of the defendant and against likelihood of confusion.

[00:28:56] Speaker 02:
The one that they have seized upon and they have argued

[00:29:00] Speaker 02:
or that the defendant somehow intended to do something, intended to confuse, one, that those allegations are an information and belief.

[00:29:08] Speaker 02:
They are not actually pled apart from information and belief allegations, and they're not plausible in that regard, and the court doesn't need to

[00:29:16] Speaker 02:
consider them.

[00:29:17] Speaker 02:
But even if you accept those, that is but one of the sleep craft factors.

[00:29:22] Speaker 02:
That factor does not usurp the work of all of the others.

[00:29:26] Speaker 02:
And with respect to that factor, the district court actually credited their information belief allegations and said, that one we will weigh in favor of plaintiffs and still dismiss.

[00:29:37] Speaker 02:
I see the light flashing and Judge Akut is about to tell me to sit down.

[00:29:41] Speaker 02:
No further questions.

[00:29:42] Speaker 04:
Thank you for your argument and you have a few notes for rebuttal.

[00:30:34] Speaker 00:
Okay, so to answer about secondary confusion, the Rogers Grimaldi case itself at 997 through 98 addresses the fact that it's well established that where a title of a movie or a book has acquired secondary meaning, that is, where the title is sufficiently well known, that the customer is associated with the particular author's work,

[00:30:51] Speaker 00:
the holder's right to that title and prevent use of the same or similarly confusing titles by other authors.

[00:30:59] Speaker 00:
Also, in the brief that was submitted below, we cited to the case from this court, Hawkins v. Portal Publications, 189F3D473, which says the same.

[00:31:15] Speaker 00:
If in the record, if you're honest, would like to look at that page seven and eight of that brief, there's a whole bunch of cases citing that this court saying the same thing.

[00:31:21] Speaker 00:
But what I want to boil everything down to here is that in the end of the day, if this case doesn't state a claim for trademark infringement where somebody has

[00:31:30] Speaker 00:
Gringo, in all block letters, the same title, we're alleging it's the same, a similar theme.

[00:31:36] Speaker 00:
We're saying that they retitled it when they said there's no plausible allegations.

[00:31:39] Speaker 00:
We're saying they retitled it, which should draw the inference that they did it deliberately, right as we were a number one Amazon bestseller when they released an Amazon original movie.

[00:31:47] Speaker 00:
Everything that everyone keeps saying about, look at the book, look at the movie, look at the covers, what about surveys?

[00:31:51] Speaker 00:
All this stuff is exactly what should go on at the discovery stage.

[00:31:55] Speaker 00:
But we've had no chance to put this forward because we're dealing with the actual pleading itself.

[00:32:00] Speaker 00:
And so in the end of the day, if this court is going to say that when someone pleads these things, that it's not enough to have secondary meaning.

[00:32:09] Speaker 00:
If somebody is going to say that, well, no, we can't get to the sleek craft factors because Rogers Grimaldi applies because they're not using it as a source identifier.

[00:32:17] Speaker 00:
I want to remind the court that all the things they're doing to get public recognition are the exact same things that we did to actually get secondary meaning.

[00:32:25] Speaker 00:
So they are obviously using it as a source identifier.

[00:32:28] Speaker 00:
Or else, what is all this marketing that they're doing?

[00:32:30] Speaker 00:
And then in the end, I guess I'll leave you with this.

[00:32:35] Speaker 00:
In the end, there's the idea of the intent to with the presumptions, you know, we have to look at what the cover of the book and movie is and what I want to leave you with here.

[00:32:45] Speaker 00:
is that the movie they actually submitted to you guys is a different cover than what's in the complaint, which furthers the factual issue.

[00:32:51] Speaker 00:
But I just want to leave the court with the idea that on Sleekcraft, in Rogers, if we're going to start to allow people to intentionally do things and not get to discovery to actually show it and shut it down here, well, then less a confession, we can never really advance.

[00:33:07] Speaker 00:
I'll rely on my brief for the rest.

[00:33:09] Speaker 00:
Thank you, Your Honor.

[00:33:10] Speaker 04:
We thank both parties for their argument.

[00:33:12] Speaker 04:
The case of Daniel Davis versus Blue Tongue Films is submitted and the court for this session stands adjourned.

[00:33:21] Speaker 01:
All rise.

[00:33:29] Speaker 04:
This court for this session stands adjourned.