[00:00:00] Speaker 01: Good morning. [00:00:01] Speaker 01: I'd like to reserve three minutes for rebuttal. [00:00:04] Speaker 01: May it please the court. [00:00:12] Speaker 01: The decision below should be reversed for three reasons. [00:00:15] Speaker 01: One, Harmon's own pleadings. [00:00:18] Speaker 01: Two, the equities. [00:00:21] Speaker 01: And three, the errors of law and resolutions of material disputed facts. [00:00:26] Speaker 01: I'd like to start with Harmon's own pleadings. [00:00:29] Speaker 01: Harmon pled New York law claims. [00:00:32] Speaker 01: It specifically identified Jem's claims in New York and asked the California court to resolve those claims. [00:00:40] Speaker 01: It said Jem filed in New York and we should have a verdict in our favor on those claims. [00:00:46] Speaker 01: It expressly looked at New York law claims. [00:00:50] Speaker 01: We then asked for damages on those very issues. [00:00:53] Speaker 01: At 1803, we said we're entitled to damages on the very issues in the D.J. [00:00:58] Speaker 01: claims, and in our prayer for relief, we again asked for damages on the same page. [00:01:03] Speaker 01: As a result, since this is a choice of law issue and choice of law is resolved de novo, there should be no reason why any other laches period should be applied other than the New York laches period. [00:01:15] Speaker 01: The only reason that Harmon gives in its brief why the New York law period should not be applied because of its DJ claims is it claims that we did not move on the DJ claims. [00:01:27] Speaker 01: However, that's not true. [00:01:29] Speaker 01: In our brief, Emotions for Summary Judgment, docket 69, page 27 to 28, and in the footnote, we specifically moved on the DJ claims. [00:01:39] Speaker 01: We specifically said that Harmon identified New York law issues. [00:01:44] Speaker 01: Those come under a six-year statute. [00:01:46] Speaker 01: And it's undisputed that the filing was within six years. [00:01:51] Speaker 01: Since the court did not address this and Harmon does not rebut it, for that reason alone, the six years statute last year should not be applicable. [00:02:00] Speaker 02: Counsel, can I back you up for a second? [00:02:02] Speaker 02: As I read the complaint, it says, it's seeking a declaration that Harmon did not infringe marks alleged to be owned by Jem under the Lanham Act or any state law. [00:02:16] Speaker 02: There's no mention of New York. [00:02:17] Speaker 02: So why should we read the complaint to say that it was trying to adjudicate issues under New York law? [00:02:24] Speaker 01: A few reasons. [00:02:25] Speaker 01: One, any state law includes New York. [00:02:28] Speaker 01: Two, Harmon identified- Harmon includes Hawaii, too. [00:02:31] Speaker 04: So are you telling us we should cert the statute of limitations for all 50 states and maybe Puerto Rico and Guam and all the territories, because it could be any? [00:02:41] Speaker 01: I'm not saying that. [00:02:43] Speaker 01: I'm saying that Jem is in New York. [00:02:46] Speaker 01: Jem has a show in New York. [00:02:48] Speaker 01: It's in New Jersey and New York. [00:02:49] Speaker 01: And that Harmon specifically pointed to Jem's filing in New York, identified all those New York allegations, and said to the court, you should rule on those allegations in our favor. [00:03:01] Speaker 01: That was a New York law case. [00:03:02] Speaker 01: and harman's identifying it and even if it was specifically referring to it and referring to the new york cause of action and identifying new york law as a result since harmonies pointing specifically to new york claims and saying you should rule we don't infringe those claims the only law that could be applicable to those claims would be new york actually you know one of the things of the district court points out was that when you counter claimed you made counterclaims to arise only under federal or california law [00:03:31] Speaker 02: So should we read by implication that it should be California law based on your counterclaims? [00:03:36] Speaker 01: No, on 1803, we're specifically pointing back to Harman's claims and saying we're entitled to damages on those claims. [00:03:45] Speaker 01: So that has to apply under New York law. [00:03:47] Speaker 01: And likewise, in the prayer for relief on the very same page, we're saying we're entitled to damages. [00:03:52] Speaker 01: They do infringe. [00:03:53] Speaker 01: They're wrong, the DJ, that they're infringed. [00:03:55] Speaker 01: And we're entitled to damages. [00:03:57] Speaker 01: So we're specifically pointing to New York law claims that they identified, they pled, they specifically referred to. [00:04:04] Speaker 02: But I'm saying for your counterclaims, were your counterclaims arising under New York law? [00:04:10] Speaker 01: So we filed two counterclaims, federal claims, which were basically representing the claims from the New York case. [00:04:15] Speaker 01: And then we filed California state law claims. [00:04:18] Speaker 01: We didn't feel we needed to file, again, New York state law claims because Harmon had already presented it. [00:04:24] Speaker 01: And under this court's decisions, for example, Atlantic Richfield, [00:04:27] Speaker 01: Once you have a DJ claim, you don't have to counterclaim on the very same issue that was already in the DJ claim. [00:04:34] Speaker 01: So when they identified New York law, and we identified those claims and said, you do infringe and we're entitled to damages, that all falls under the New York glass use period as we submit, because there's no other way to read it than that they were identifying a New York case. [00:04:51] Speaker 02: Well, assuming we're working under the California limit, what is your argument as to why the transfer should have taken place? [00:05:02] Speaker 01: Yes, of course. [00:05:03] Speaker 01: Under two, the equities, even under the California latitudes period, GEM comes in under four years. [00:05:11] Speaker 01: If you look at the history below, GEM timely filed in its jurisdiction, and then [00:05:18] Speaker 01: Actions by Harmon and judicial delays were all counted against Jem as part of delay, which was not Jem's own delay. [00:05:26] Speaker 01: For example, the court below stayed the California proceedings. [00:05:30] Speaker 01: That's docket 31. [00:05:33] Speaker 01: It counted the entire period of stay against GEM as GEM's delay. [00:05:37] Speaker 01: But GEM did not delay. [00:05:38] Speaker 01: The court stayed the proceedings. [00:05:40] Speaker 01: Another example, DACA 18. [00:05:42] Speaker 01: The court turned to Harmon's case and said, you haven't prosecuted this case. [00:05:47] Speaker 01: I'm issuing an order to show cause why we should not dismiss for lack of prosecution. [00:05:52] Speaker 01: DACA 18, that delay counted against GEM. [00:05:55] Speaker 01: Likewise, motion practice in New York, motion practice in California to resolve all these issues. [00:06:00] Speaker 01: All of that delay was counted against GEM. [00:06:03] Speaker 01: It's not equitable, and this is about equity, for delays that are not GEM's delays to be counted against GEM. [00:06:09] Speaker 01: If you subtract all those delays, then there are 27 days from extra. [00:06:15] Speaker 02: I think that's Harmon's point, that even if you were to include all of those tolling arguments, you would still be outside of the limitations period. [00:06:22] Speaker 02: So what difference does it make? [00:06:23] Speaker 01: But they do that by fudging the numbers. [00:06:25] Speaker 01: If you look at the actual numbers, June of 2020 is when we filed in New York. [00:06:30] Speaker 01: If you subtract all the delays of tolling under Burnett, under FLIR, under Boston Dental Group, if you subtract all those delays from the point when all those issues were resolved, 27 days later, we filed in California. [00:06:44] Speaker 01: if you add twenty seven days to june of twenty twenty you come out in july twenty twenty which is still within four years uh... we have a type on our brief by the way we say july twenty twenty one but it should have been july twenty twenty both our briefs have that typo so if you look at four-year california period if you look at fairness and subtracting delays that weren't because of us uh... and they had noticed the entire time this entire period ever this is going on they had noticed from june twenty twenty onward [00:07:11] Speaker 01: then there is no laches, even under a California four-year period. [00:07:15] Speaker 01: Under the California period, we filed within four years when you toll, as the Supreme Court did in Burnett, as the court in this district, the district court in FLAR, as the court did in Boston Dental. [00:07:28] Speaker 01: If you toll all that, we're still within four years. [00:07:31] Speaker 02: Is there equitable tolling for an Atlanta Act claim? [00:07:35] Speaker 02: Has any case decided that one issue one way or the other? [00:07:39] Speaker 02: If the Lanham Act does not have a statute of limitations, does the equitable tolling doctrine even apply? [00:07:45] Speaker 01: So the Lanham Act is a latches issue equity, purely equity. [00:07:49] Speaker 01: Burnett is actually a strict statute of limitations. [00:07:52] Speaker 01: So our position is that a strict statute of limitations should be told, and obviously equity. [00:07:58] Speaker 01: But there is Boston Dental Group, which did toll, and that was a Lanham Act issue. [00:08:02] Speaker 01: Boston Dental Group told for the period that the proceedings were going on in the trademark office. [00:08:08] Speaker 01: It said that those proceedings should not be counted against the Latchy's clock. [00:08:12] Speaker 01: It told the entire period. [00:08:14] Speaker 01: And likewise, in FLAR, they talk about the fact that while motion practice is going on, that should not be counted against the party. [00:08:22] Speaker 01: The resolution of motion practice and the jury should not consider that. [00:08:25] Speaker 01: But Boston Dental Group is expressly under, is a Lanham Act issue. [00:08:29] Speaker 01: So for that second reason, the equities, we should not have a timely filing and tolling converted into an untimely filing by really a pretext, because if we really go back and look at the big picture, the only reason this case was allegedly filed in New York was because of the infinity claim, which was a complete pretext. [00:08:48] Speaker 01: Throughout discovery, not a single document was produced on infinity. [00:08:52] Speaker 01: And then later, [00:08:54] Speaker 01: they dismissed it and then in the brief they said infinity was inconsequential the only reason this case supposedly came to new york was because of a claim that wasn't even litigated that wasn't came to new york i'm confused i'm sorry they we filed in new york they filed here so you were talking about [00:09:13] Speaker 04: claim going to New York because of Infinity. [00:09:15] Speaker 04: That's what had me confused. [00:09:16] Speaker 01: I'm sorry. [00:09:16] Speaker 01: I misspoke. [00:09:17] Speaker 01: I misspoke. [00:09:17] Speaker 01: The claim was filed here because of Infinity. [00:09:20] Speaker 01: I misspoke. [00:09:20] Speaker 01: I apologize. [00:09:22] Speaker 01: They filed here because of the Infinity. [00:09:24] Speaker 01: Allegedly, it had to be here. [00:09:26] Speaker 01: But Infinity was, again, not a single document of discovery. [00:09:29] Speaker 01: It was so important they would have produced discovery on it. [00:09:32] Speaker 01: They wouldn't have dismissed it. [00:09:33] Speaker 04: My sense is that the California district judge [00:09:37] Speaker 04: basically turn to the New York district judge, and we'll wait to see where he decides the case should be when he dismissed on the ground of mis-joinder. [00:09:47] Speaker 04: Comment, okay, the party's going to have to figure out where this case should be, and as best I can tell, the next thing that happens is that your client files a counterclaim in California, which makes [00:09:58] Speaker 04: california the logical place for it to proceed thereafter mean was there any appeal from the new york district court decision so my understanding is that not it was an appeal but was this missile without prejudice and even if the appeal trust me they can be appealed a bit if it disposes of the case it's without prejudice because you have an extinguish your claims but if you're out of court [00:10:18] Speaker 04: I've gotten those appeals. [00:10:20] Speaker 04: I take it there was not an appeal to the Second Circuit. [00:10:23] Speaker 01: That is correct. [00:10:24] Speaker 01: There was not an appeal. [00:10:24] Speaker 04: Thereafter, why shouldn't California be just perceived as well? [00:10:28] Speaker 04: That's where the parties, as the New York District Judge said, the parties had to figure out whether this case is going to continue. [00:10:34] Speaker 04: It looks like the answer is the Central District of California. [00:10:37] Speaker 01: Well, because when they sued here, they said that they wanted to adjudicate the New York claims. [00:10:42] Speaker 01: They never said, we're not going to adjudicate the New York claims. [00:10:45] Speaker 01: So we understood that we were going to be, it's just whether the Second Circuit and the Ninth Circuit are equally able to adjudicate New York law claims. [00:10:52] Speaker 01: They never said until after discovery closed that they say this is entirely under California law. [00:10:57] Speaker 01: There was no notice to us of that of all. [00:10:59] Speaker 01: That itself is inequitable. [00:11:01] Speaker 01: And likewise, in terms of the first to file rule, we filed in New York, and then they filed here asking that the New York issues be adjudicated. [00:11:10] Speaker 01: And then when you take out all the tolling, even under the California period, we're still timely. [00:11:14] Speaker 01: So whether or not it was in New York or here, we never anticipated that they would basically ambush us after Discovery was closed and say, no, no, this is completely under California law, despite all of the delays that we caused and despite the fact that we pled New York law. [00:11:28] Speaker 02: But if, you know, if Harman was dismissed for mis-joinder, why not just immediately refile a separate claim against Harman in New York? [00:11:38] Speaker 02: I mean, that was the risk that you ran, wasn't it? [00:11:41] Speaker 01: We believe that would be subject to the first-file rule that now California is first to file, because after the dismissal in New York, this case was first. [00:11:49] Speaker 01: We thought we were obligated to proceed here. [00:11:52] Speaker 01: I'd also just like to briefly mention, I only have a few seconds left before the rebuttal time, that the court made numerous errors of law. [00:11:59] Speaker 01: They did not take into account issues in forcibility, for example, which are subject to, in this court, there are numerous disputed material issues of fact and law that the court, the court says, for example, enforcing our mark for years doesn't count. [00:12:14] Speaker 01: But this court has said the opposite. [00:12:16] Speaker 01: This court has said that it does count in that American International Group and so forth. [00:12:20] Speaker 01: And there are numerous, many issues brought up in our papers of how disputed issues of fact, even if it was after four years, were resolved against Jim Brett when they're really jury issues. [00:12:29] Speaker 01: All of these factual issues that are raised at length when confusion arose, those are all jury issues. [00:12:35] Speaker 01: I'd like to reserve my remaining time. [00:12:37] Speaker 04: Can latches be a jury issue? [00:12:39] Speaker 01: Yes, yes, Your Honor. [00:12:40] Speaker 01: I believe it can be. [00:12:41] Speaker 01: Based on all the factual issues here, I believe it would be if it's not under four years or under the New York statute, Latchez period. [00:12:51] Speaker 01: I'd like to reserve my remaining time. [00:12:53] Speaker 01: Thank you. [00:13:01] Speaker 03: Good morning, Your Honors. [00:13:02] Speaker 03: May it please the Court? [00:13:07] Speaker 03: Jim has appealed two different rulings here. [00:13:11] Speaker 03: The first ruling was the venue decision where the district court denied its motion to transfer. [00:13:17] Speaker 03: The district court didn't abuse its discretion when it did that. [00:13:21] Speaker 03: Jim filed that based on the first to file rule. [00:13:25] Speaker 03: At the time, the district court [00:13:27] Speaker 03: denied Jem's motion to transfer the first file, the pending New York action was no longer pending anymore and therefore it rejected the first file rule and at that point dismissed the case, the New York case. [00:13:44] Speaker 03: Instead of, as Your Honor suggested, instead of refiling the case in New York, which they could have done, [00:13:51] Speaker 03: Jem decided, no, we're not going to file the case in New York. [00:13:55] Speaker 03: Instead, we're going to go to the California court and we're going to ask the California court to lift the stay and then adjudicate the pending motion in California, their pending motion to dismissal for lack of personal jurisdiction or to transfer based on the first to file rule. [00:14:17] Speaker 04: The explanation we just heard is to acknowledge there was no appeal to the Second Circuit, acknowledge that didn't file a new lawsuit in New York. [00:14:27] Speaker 04: I don't have the New York record in front of me, so I haven't explored this. [00:14:31] Speaker 04: I'm curious. [00:14:34] Speaker 04: The New York judge dismissed based on misjoinder because there was [00:14:38] Speaker 04: I've now forgotten who is the other party. [00:14:40] Speaker 04: Just JVC, Your Honor. [00:14:41] Speaker 04: JVC, okay. [00:14:43] Speaker 04: Was there any argument to the New York judge that, well, if somebody gets dismissed for misjoined or dismiss JVC because we want to be able to proceed against Harmon and [00:14:57] Speaker 04: that would have solved the problem because they still would be the first to file. [00:15:00] Speaker 04: Did that come up to the New York judge? [00:15:02] Speaker 03: No, Your Honor, that argument or that issue never came up. [00:15:04] Speaker 03: And the reason, another thing to point out here which is really critical is that JEM had actual knowledge of this starting on August 1st, 2016. [00:15:14] Speaker 03: And actually there's a lot of evidence in the record that it should have had constructive knowledge of our sales long before that. [00:15:20] Speaker 03: But just if you start with August 1, 2016, actual knowledge, it then waited basically three years and 11 months to file the lawsuit. [00:15:29] Speaker 03: And where did it file the lawsuit after three years and 11 months? [00:15:34] Speaker 03: It filed it in the Southern District of New York. [00:15:36] Speaker 03: And JEM made the decision, so JEM made first the decision to wait that long. [00:15:41] Speaker 03: The record's clear. [00:15:42] Speaker 03: It said it wanted to sue five minutes after it first found out about our use. [00:15:47] Speaker 03: waited three years and 11 months, and then it decided to file in New York, and then it decided, instead of filing an action against Harmon and an action against GAVC, which is an unrelated party to us, it decided to join us together in the same action. [00:16:05] Speaker 03: And that was improper. [00:16:06] Speaker 03: And why was it improper? [00:16:08] Speaker 03: One of the reasons, as the district court in New York found in dismissing for mis-joinder, is because it was prejudicial to Harmon, because it was trying to paint Harmon with all the evidence of alleged infringement by JVC. [00:16:22] Speaker 03: JVC and Harmon have absolutely no connection with one another. [00:16:27] Speaker 03: There was no basis to join them in the same lawsuit other than to prejudice Harmon or to prejudice JVC. [00:16:35] Speaker 03: So that's why Harmon moved for mis-joinder. [00:16:37] Speaker 03: Again, that was the decision that GEM made. [00:16:40] Speaker 03: GEM decided not to file separate actions. [00:16:43] Speaker 02: So then the—then the— Well, Counselor, do you agree that if GEM had filed an SDNY separately just against Harmon, it would have been within the four-year statute of limitations, correct? [00:16:55] Speaker 02: That's correct. [00:16:56] Speaker 02: But then it's just it's the misjointed dismissal that adds this big wrinkle to it, I guess. [00:17:02] Speaker 03: That's correct, but the applicable statute of limitations in New York is six years. [00:17:07] Speaker 03: So at that point in time, the allegations that they made in that complaint against us were under federal law and New York law. [00:17:15] Speaker 03: So yes, it would have been if they would have decided to file within separate actions, as Your Honor suggested. [00:17:23] Speaker 03: It would have been well within the New York statute. [00:17:25] Speaker 03: But they again made a strategic decision. [00:17:27] Speaker 03: Let's not do that. [00:17:29] Speaker 03: Let's file them together. [00:17:32] Speaker 02: Then, but doesn't that cut against your argument a little bit then that, you know, why wait three months, you know, three years, 11 months if they think they've got a six year window, they're filing well within that time period. [00:17:43] Speaker 03: Well, because I think it's a litigation strategy, I respectfully disagree. [00:17:47] Speaker 03: I mean, they decided, they made the decision, right? [00:17:49] Speaker 03: They made the decision to wait, to file. [00:17:53] Speaker 03: And by the way, there's evidence in the record that I hope I'll have a chance to get to, that shows they made that decision not to notify us of the infringement because they didn't want, they were fearful that we would file a declaratory judgment action. [00:18:08] Speaker 03: They didn't want us to have the ability [00:18:11] Speaker 03: to try to limit our exposure or get a judicial determination on our exposure. [00:18:16] Speaker 03: So they filed the case in New York, but they decided to join the parties. [00:18:25] Speaker 03: There was no basis for it. [00:18:27] Speaker 03: then it was dismissed. [00:18:29] Speaker 03: Instead of refiling in New York, which they could have done, they decided, no, we're not going to refile in New York. [00:18:36] Speaker 03: Instead, we're going to make the deliberate decision to ask the California court to lift the state and adjudicate their motion. [00:18:43] Speaker 00: Then when their motion was denied... Just to be clear, by the time they got dismissed by the federal district court in New York, your complaint was already filed. [00:18:53] Speaker 03: That's correct, Your Honor. [00:18:54] Speaker 00: And your complaint did refer to both the federal and New York state law claims at issue in that other action. [00:19:02] Speaker 03: It referred to those claims, but it sought infringement of the infinity mark, which were the first five counts, and then a declaratory judgment of non-infringement with respect to the extreme mark under federal and state law. [00:19:19] Speaker 03: It doesn't specifically say New York. [00:19:23] Speaker 03: And so those were the claims. [00:19:26] Speaker 00: In the New York action, you say in paragraph 73 that Jim brought claims under federal and New York common law. [00:19:36] Speaker 00: And then you're looking for declaratory judgment under the Lanham Act or any state law. [00:19:44] Speaker 03: Any state law. [00:19:45] Speaker 00: Correct, Your Honor. [00:19:48] Speaker 00: But there's an argument that that's just as inclusive of a New York action as it is of California. [00:19:55] Speaker 03: Fair enough. [00:19:56] Speaker 03: But let me go back to the timeline. [00:19:58] Speaker 03: When the New York district court decided to dismiss the New York action, instead of refiling in New York, they asked the California court, let the state decide our motion to get back to New York. [00:20:17] Speaker 03: the California court rejected that motion. [00:20:21] Speaker 03: And then instead of then filing, they could have then refiled in York, they decided not to. [00:20:26] Speaker 03: Instead, they filed counterclaims in the California court. [00:20:30] Speaker 03: So they invoked the jurisdiction of the California court. [00:20:34] Speaker 03: And those counterclaims allege four counts, two counts under the federal law, and two counts under the state law. [00:20:41] Speaker 03: Those are the only counts they allege. [00:20:43] Speaker 03: In summary judgment, [00:20:45] Speaker 03: We move for summary judgment on their four counterclaims. [00:20:50] Speaker 03: They move for summary judgment on their four counterclaims. [00:20:55] Speaker 03: My friend says that he moved for summary judgment on the declaratory judgment action for damages. [00:21:01] Speaker 03: I don't know what he's referring to there. [00:21:04] Speaker 03: I don't even know how you can get damages for a declaratory judgment claim. [00:21:09] Speaker 03: But in any event, he's never appealed the denial of his summary judgment motion in the district court. [00:21:18] Speaker 03: So the only thing on appeal, Your Honor, [00:21:20] Speaker 03: the district court's decision, which was correct, to apply the four-year statute of limitations that applies in New York [00:21:29] Speaker 03: to California claims, because those were the claims that were being adjudicated. [00:21:34] Speaker 03: And those are the only claims that have been adjudicated. [00:21:36] Speaker 04: There's a four-year statute of limitations that applies in New York. [00:21:38] Speaker 03: Pardon me. [00:21:39] Speaker 04: California. [00:21:39] Speaker 04: Apologize. [00:21:40] Speaker 04: Thank you, Your Honor. [00:21:41] Speaker 04: Multiple mistakes, but it's got me confused. [00:21:43] Speaker 03: Apologize. [00:21:43] Speaker 03: Yes, the four-year statute of limitations that applies in California. [00:21:47] Speaker 03: That's correct. [00:21:48] Speaker 03: The California court applied that, because that's where it was sitting. [00:21:53] Speaker 03: Those were the claims under the federal law and the California law, and that's what all the case law does. [00:22:00] Speaker 03: And they've cited no case that says that the federal court, the federal court that was in the position that the district court was here, should apply the statute of limitations, should analogize the latches defense and use the statute of limitations of a different court in which it's not sitting. [00:22:23] Speaker 00: And the latches issue, latches is an equitable doctrine. [00:22:27] Speaker 00: So why can you address the equitable tolling argument? [00:22:31] Speaker 03: Yes, I can. [00:22:31] Speaker 03: That's very important. [00:22:38] Speaker 03: The equitable tolling is a very important issue. [00:22:43] Speaker 03: My friend on the other side has said they've applied this old Supreme Court case and said, oh, the New York case, when we filed the New York case, that should have told the statute of the latches period from running. [00:22:59] Speaker 03: As we cited in our reply brief, that Supreme Court case has been modified or updated by [00:23:11] Speaker 03: a new Supreme Court case, which came out in 2016, which is, if you'll bear with me, the Manaho Indian case, which we've cited in our brief. [00:23:24] Speaker 03: It's very critical. [00:23:25] Speaker 03: In that case, they say the only time you can have equitable tolling is if there is extraordinary circumstances [00:23:36] Speaker 03: beyond the litigant's control that prevented the timely filing, okay? [00:23:44] Speaker 03: GEM, if you look at its brief, it doesn't even argue that it could possibly meet that standard. [00:23:50] Speaker 03: Again, the timely filing, the reason why it could not timely file was extraordinary circumstances beyond its control that prevented it from timely filing. [00:24:02] Speaker 03: There's no evidence in the record that there was any extraordinary evidence beyond its control that prevented the timely filing. [00:24:10] Speaker 03: It chose to wait three years and 11 months before filing in the first place. [00:24:16] Speaker 04: So equitably look at both sides. [00:24:18] Speaker 04: What's the impact? [00:24:19] Speaker 04: I mean, Harmon's known that something was out there for at least some period of time before the California action was filed. [00:24:29] Speaker 04: And prejudice to Harmon is one of the factors we're supposed to weigh. [00:24:33] Speaker 04: How was Harmon prejudiced by the delay? [00:24:37] Speaker 03: Well, Harmon continued to build up its business around this JBL extreme mark, Your Honor. [00:24:45] Speaker 03: And if you look at the district court's decision, it talks about that additional [00:24:54] Speaker 03: versions of this JBL extreme speaker came out during the time of this delay. [00:25:01] Speaker 03: Harmon has hundreds of millions of dollars have been in revenues have been made during the time of this delay. [00:25:09] Speaker 04: If the action had stayed in New York, if it hadn't been mis-joined in the first place, Harmon would have been exposed to those claims. [00:25:19] Speaker 03: Harmon may have been Harmon would well the latches period there would not be a strong presumption that latches would apply. [00:25:27] Speaker 03: In California in New York there's a six year statute of limitations in which. [00:25:34] Speaker 03: If you file after that, then there's a strong presumption that latches apply to California. [00:25:40] Speaker 03: You said California, six years. [00:25:41] Speaker 03: I'm part, pardon me, New York. [00:25:43] Speaker 03: New York, six years. [00:25:44] Speaker 03: I apologize. [00:25:45] Speaker 03: It's critical. [00:25:46] Speaker 03: New York, six years. [00:25:47] Speaker 04: I feel like we've got to go to New York and do a hearing there, too, so we can see both coasts. [00:25:51] Speaker 03: So New York, six years. [00:25:53] Speaker 03: California, four years. [00:25:56] Speaker 03: So California, if you file four years after the claim has arisen or you have actual constructive knowledge, then there is a quote-unquote strong presumption that latches applies. [00:26:09] Speaker 03: And here, they filed clearly after the four-year period. [00:26:14] Speaker 03: And there's a strong presumption of latches. [00:26:17] Speaker 04: I'm not questioning the application of the California presumption in this case by the Central District of California. [00:26:22] Speaker 04: That's where forum courts customarily start. [00:26:25] Speaker 04: But in identifying prejudice, you've identified things that had the case stayed in New York wouldn't have had the same impact. [00:26:36] Speaker 04: Harman couldn't claim prejudice for at least the first part of the delay if the action had proceeded in New York. [00:26:45] Speaker 04: I'm not saying that's determinative, but I'm trying to figure out exactly what is the prejudice Harmon suffered. [00:26:50] Speaker 03: Well, I think the prejudice would be at least the prejudice before the time, since the actual knowledge, which the district court found was August 1st. [00:27:02] Speaker 03: I think there's constructive knowledge on disputed going way before that. [00:27:07] Speaker 03: But actual knowledge from August 1st, 2016 until the June 20th, [00:27:12] Speaker 03: filing in California, that sales, those advertising, including the launch of the [00:27:20] Speaker 03: the major product that is now the flagship product of JBL, pardon me, of Harman, the JBL Extreme product. [00:27:33] Speaker 03: The JBL Extreme product was launched in September of 2015. [00:27:41] Speaker 03: So that prejudice, we still would have suffered in all the sales and all the advertising [00:27:49] Speaker 03: that occurred in essentially three years and 11 months before they filed, even in New York, Your Honor. [00:27:56] Speaker 00: So I just want to make sure I understand, because the district court essentially didn't reach your arguments about constructive notice. [00:28:05] Speaker 00: And just so I and Eve, assuming for the sake of argument that we were to agree that there was an error in the finding of [00:28:18] Speaker 00: Latches or the untimeliness on the ground that the district court reached it. [00:28:23] Speaker 00: It would still have to go back For the district court to reach your other arguments. [00:28:27] Speaker 03: Is that correct? [00:28:32] Speaker 00: So you're saying we could reach it [00:28:34] Speaker 03: I believe you could find constructive knowledge way before the actual knowledge day. [00:28:39] Speaker 00: Did you argue that, Ted, that we could reach that? [00:28:42] Speaker 03: Yes, we did. [00:28:43] Speaker 03: We did in our brief, Your Honor. [00:28:44] Speaker 03: I mean, the JBL Extreme product that was launched in September of 2015, [00:28:55] Speaker 03: to great fanfare. [00:28:57] Speaker 03: It was sold all over the United States. [00:29:00] Speaker 03: These were in the same industry. [00:29:02] Speaker 03: There's no way they didn't. [00:29:04] Speaker 03: They should be deemed under the case law that we've cited under the evidence that we've cited to have constructive knowledge long before August 1st of 2016. [00:29:16] Speaker 03: And that evidence is documented in our brief and in the record. [00:29:22] Speaker 03: Any further questions? [00:29:23] Speaker 03: Thank you. [00:29:30] Speaker 01: A few issues. [00:29:32] Speaker 01: One, Harmon does not deny that it specifically identified the New York claims and asked the California court to adjudicate them. [00:29:40] Speaker 01: That alone should be fatal to its position. [00:29:42] Speaker 01: There's a six-year New York laches period, and they identified and were looking towards those New York claims. [00:29:48] Speaker 01: To go to the issue now, so that alone should dispose of the issue. [00:29:53] Speaker 01: To look at the issue now, prejudice. [00:29:55] Speaker 01: They admitted below [00:29:56] Speaker 01: the predicate of non-prejudice. [00:29:59] Speaker 01: Prejudice requires, under internet specialties, Pinquete Grupo Gigante requires that they prove that they built a valuable business around the mark. [00:30:07] Speaker 01: They admitted below they did not build the business around the extreme mark. [00:30:11] Speaker 01: They built it around the JBL mark. [00:30:13] Speaker 04: That alone evis- They're assuming those are mutually exclusive. [00:30:16] Speaker 04: I mean, Ford is the big trademark, but they care about Mustang and they care about F-150. [00:30:24] Speaker 04: Why can't they care about both the top label and the model label? [00:30:31] Speaker 01: Because here they said the opposite. [00:30:32] Speaker 01: They said they phase marks out every two to three years. [00:30:34] Speaker 01: These are merely descriptors. [00:30:36] Speaker 01: They said this is not important to them in terms of extreme. [00:30:39] Speaker 01: JBL is important to them. [00:30:40] Speaker 01: But they have many descriptors. [00:30:42] Speaker 01: They phase them out two to three years. [00:30:43] Speaker 01: They're not significant. [00:30:44] Speaker 01: That's what they admitted. [00:30:45] Speaker 01: They're witnesses. [00:30:46] Speaker 01: At worst, that's a factual issue. [00:30:48] Speaker 04: Infinity seems to have been around for a while. [00:30:50] Speaker 01: uh... for a rather uh... extreme see i can use that all of us can qualify on that one extreme seems to have been about around for a while i understand that at worst that's a factual issue for a jury that's not an issue that the court should have resolved it's a disputed issue of material fact uh... and likewise in terms of the issue of notice and so forth it's undisputed that in a deposition under oath our client said in two thousand sixteen that he did not view them as competitors two thousand sixteen they were not competitive [00:31:20] Speaker 01: The progressive encroachment then occurred. [00:31:23] Speaker 04: That's a two-way street as well. [00:31:25] Speaker 04: I mean, as Harmon is reaching additional parts of the market, so is Jem. [00:31:32] Speaker 04: And so in 2016, why would the Jem, I forget, was he president, CEO, not anticipate, hey, we're going to try to reach out to higher price points, and that's where the competition's going to hit. [00:31:44] Speaker 01: right so we all we have is what he thought and he said that he did not consider them competitors that's expressed statement at worst now that's a factual issue whether he should have known something different made a decision later on the also on the speaking you have progressive encroachment where the encroachment is on both sides [00:32:00] Speaker 01: Well, here, the importance is that the price differential changed. [00:32:04] Speaker 01: And that was mainly from JBL, from Harmon. [00:32:08] Speaker 01: There was a 15-fold difference, undisputed. [00:32:11] Speaker 01: And then they kept coming down to come into our area and then dispute. [00:32:14] Speaker 04: But that's also the speaker market. [00:32:16] Speaker 04: I still have big speakers back when I was younger. [00:32:20] Speaker 04: And they all get replaced by these little tiny things that are a lot cheaper. [00:32:23] Speaker 04: I'm grateful not many things have gotten cheaper. [00:32:26] Speaker 04: But I'm not sure that's. [00:32:28] Speaker 04: That can be described as some calculation on the part of Harmon when I don't know that they can sell those big speakers at the high price point anymore. [00:32:38] Speaker 01: Well, it doesn't require calculation. [00:32:39] Speaker 01: It just requires progressive encroachment. [00:32:41] Speaker 01: And it's a factual issue. [00:32:42] Speaker 01: Was there progressive encroachment that the district court shouldn't have addressed? [00:32:46] Speaker 01: A jury can decide. [00:32:47] Speaker 01: Is there progressive encroachment? [00:32:48] Speaker 01: Is not. [00:32:49] Speaker 01: Should it be anticipated? [00:32:50] Speaker 01: Should it not? [00:32:50] Speaker 01: These are all questions. [00:32:51] Speaker 01: In 2018, actual confusion emerged. [00:32:55] Speaker 01: Under prudential, that's something that means that there was no laches beforehand. [00:32:59] Speaker 01: when the junior user moves into direct competition, selling the same product, the same channels, and causing actual confusion, latches doesn't apply. [00:33:07] Speaker 01: That's what this court said in Prudential. [00:33:09] Speaker 01: At worst, these are factual questions. [00:33:11] Speaker 01: At best, though, the case law under Prudential regarding progressive encroachment, under all-state price differential, there's no infringement in 2016, at worst, those are issues of law that were decided in error. [00:33:25] Speaker 01: And the fact is that GEM was enforcing its mark [00:33:28] Speaker 01: And the court said, that doesn't matter. [00:33:30] Speaker 01: Another error. [00:33:31] Speaker 01: It said, that makes no difference to the analysis. [00:33:34] Speaker 01: This court said, in an American international group, it does make a difference. [00:33:38] Speaker 01: So the many issues of error of law and the fact are such that she's not been resolved. [00:33:43] Speaker 01: At best, there's a New York cause of action. [00:33:48] Speaker 01: or tolling, which equitably. [00:33:51] Speaker 00: By tolling, can you respond to the argument that the Supreme Court set the standard as argued by your opposing counsel? [00:34:00] Speaker 00: And do you agree that that's the standard? [00:34:02] Speaker 00: And if so, how you meet it? [00:34:05] Speaker 01: We don't agree that's applicable. [00:34:07] Speaker 01: He's looking at habeas petitions, which are not analogous at all. [00:34:11] Speaker 01: The Burnett case that we're referring to is a venue issue. [00:34:13] Speaker 01: Something was dismissed for improper venue, and then it was moved to another venue. [00:34:18] Speaker 01: That's actually pretty close to what happened here. [00:34:20] Speaker 01: It was dismissed in another jurisdiction, and then it was moved here. [00:34:24] Speaker 01: And all of this nefarious intent, there's no evidence of it whatsoever. [00:34:28] Speaker 01: The court merely below said that it could be prejudicial to have two defendants in the same case. [00:34:33] Speaker 02: Really, what it was... Tolling usually has some kind of extraordinary circumstances element or flavor to that sort of analysis. [00:34:42] Speaker 02: Do you think that that would apply here? [00:34:45] Speaker 02: And if so, how would you meet that? [00:34:46] Speaker 01: We don't think it has to be extraordinary circumstances. [00:34:49] Speaker 01: Under FLAR, Boston Dental Group, motion practice, other proceedings, that's enough for tolling. [00:34:54] Speaker 01: Likewise, under Burnett, another action, that's enough for tolling. [00:34:59] Speaker 01: So we don't think extraordinary circumstances are required. [00:35:03] Speaker 01: And they had notice. [00:35:04] Speaker 01: The entire time they had notice. [00:35:06] Speaker 01: And the delays that they're talking about are their delays, not our delays. [00:35:10] Speaker 01: It's actually rather extraordinary. [00:35:12] Speaker 01: They don't deny there was a pretext of infinity. [00:35:14] Speaker 01: And then they want to use their delays and judicial delays, which are understandable. [00:35:19] Speaker 01: It takes the court time to roll out motions, against us. [00:35:23] Speaker 01: We did not cause those delays. [00:35:24] Speaker 01: And yet all of that time has been counted against us. [00:35:27] Speaker 01: That's not equitable. [00:35:28] Speaker 00: you cause those delays by doing impermissible jointer? [00:35:32] Speaker 00: So how do you respond to that? [00:35:34] Speaker 01: Right. [00:35:35] Speaker 01: That's what the Supreme Court said in Burnett. [00:35:38] Speaker 01: Justice defeating technicalities, that a procedural misstep should not be the cause of loss of substantive rights. [00:35:45] Speaker 01: That's what Burnett specifically said. [00:35:47] Speaker 01: And there was a venue issue they filed [00:35:49] Speaker 01: in a venue, and then it was dismissed for improper venue. [00:35:52] Speaker 01: And then when they refiled, it was too late. [00:35:54] Speaker 01: And the Supreme Court said, sure, you may have filed in the wrong venue initially, but justice defeating technicalities should not be the cause of this loss of substantive rights. [00:36:02] Speaker 01: That's exactly what we rely on here. [00:36:05] Speaker 00: Latches is an equitable doctrine. [00:36:07] Speaker 00: So if I understand your argument would be, we can't stand on technicalities when employing [00:36:13] Speaker 01: That's exactly right. [00:36:14] Speaker 01: A Statue of Limitations is strictly construed. [00:36:17] Speaker 01: So if in Burnett, the Statue of Limitations was told here, where it's lachis, where it's an equitable doctrine, there's all the more reason why the circumstances should be taken into account in terms of fairness. [00:36:27] Speaker 01: Because we timely filed in New York, and we weren't sitting for six years. [00:36:32] Speaker 01: Three years, ten months plus, we filed. [00:36:36] Speaker 01: And then because of their machinations, all of a sudden now it's untimely. [00:36:39] Speaker 01: It would be rather extraordinary for [00:36:41] Speaker 01: a timely pursuit of rights to be upended due to machinations and pretext by the other side and due to understandable delays which happened in the course of litigation, but none of which were our fault. [00:36:54] Speaker 01: They're pointed to issues and really [00:36:59] Speaker 01: We pursued it. [00:37:01] Speaker 01: We had actual confusion emerge in 2018 or so. [00:37:04] Speaker 01: We pursued it within two years, if you look at the actual circumstances of when we actually became at the competition. [00:37:10] Speaker 01: At worst, these are factual issues. [00:37:12] Speaker 01: But at best, there are numerous legal reasons, such as the fact that they identified New York claims, which they don't deny, and which we did move on. [00:37:19] Speaker 01: My colleague on the other side is incorrect. [00:37:22] Speaker 01: Docket 69 [00:37:24] Speaker 01: page 27 at the top of the page, that's where we said that there's no latches because of their claims. [00:37:31] Speaker 01: And we quoted in the footnote all of the references to the New York action saying that, Jim filed in New York and we want a ruling on those claims. [00:37:39] Speaker 01: Your Honor referred to that before, paragraph 73 and so forth. [00:37:42] Speaker 01: They specifically looked at the New York claims and said, all the way through discovery and in the pleadings, [00:37:49] Speaker 01: We don't infringe those claims. [00:37:51] Speaker 01: That latches period is six years. [00:37:53] Speaker 00: Thank you. [00:37:57] Speaker 00: Thank you, Your Honest. [00:37:59] Speaker 00: I appreciate it. [00:38:03] Speaker 00: You can submit a 22. [00:38:08] Speaker 00: Thank you, Council, for your helpful arguments. [00:38:10] Speaker 00: This matter is submitted.