[00:00:00] Speaker 00:
Our next case for argument is 21-2301, Bertini versus Apple.

[00:00:07] Speaker 00:
Mr. Bertini, please proceed.

[00:00:10] Speaker 02:
May it please the court.

[00:00:11] Speaker 02:
My name is James Bertini, and I represent Charles Bertini, the appellant.

[00:00:15] Speaker 02:
Today, we ask this court to reverse the decision of the board and to deny registration of the Mark Apple music.

[00:00:23] Speaker 02:
In the decision, the board acknowledged that Apple Jazz Mark is inherently distinctive

[00:00:29] Speaker 02:
and Charles Bertini may claim priority as to its use of Apple Jazz since June of 1985.

[00:00:35] Speaker 02:
The board also found that Apple Music was used since June of 2015.

[00:00:42] Speaker 00:
Can I ask you, with regard to Apple Jazz going back to June of 85, what are the goods and services that that particular mark

[00:00:51] Speaker 00:
is permitted for?

[00:00:55] Speaker 02:
Yes, Judge.

[00:00:55] Speaker 02:
It's a lengthy list.

[00:00:58] Speaker 02:
It began with a concert, a jazz concert.

[00:01:02] Speaker 02:
And then it expanded to various other activities related to Class 41 entertainment services for producing, arranging, directing musical performances.

[00:01:17] Speaker 00:
But these were all live musical performances, correct?

[00:01:20] Speaker 02:
No, they were not all live.

[00:01:22] Speaker 02:
Some would be in a recording studio.

[00:01:26] Speaker 04:
OK, just so I understand, let me follow up.

[00:01:30] Speaker 04:
Did the board find that but for Apple, computer Apple's ability to claim priority back to Beatles Apple, you should be granted a trademark registration for Apple Jazz for all of the goods and services you identified in the trademark application for Apple Jazz?

[00:01:51] Speaker 02:
Judge, they didn't specifically say that any of those activities cannot be used.

[00:01:59] Speaker 02:
They implied, at least in my opinion, that the entire list that Bertini had sought registration of would be included, but they didn't get into the... Including musical recordings?

[00:02:18] Speaker 02:
I don't have the list in front of me, but yes.

[00:02:24] Speaker 02:
creating and arranging and directing musicals.

[00:02:31] Speaker 01:
Is your application, which I know is not in front of us, in the appendix?

[00:02:36] Speaker 02:
Yes, it is, Judge.

[00:02:37] Speaker 01:
What page, please?

[00:02:41] Speaker 00:
And just to be clear, while you're looking for this, I mean, this case has nothing to do with your application, per se, or whether it should be granted.

[00:02:48] Speaker 00:
This case is about your opposition to Apple.

[00:02:51] Speaker 00:
application, is that correct?

[00:02:53] Speaker 02:
Yes, it is.

[00:02:54] Speaker 02:
That was listed as one reason for the denial.

[00:02:59] Speaker 00:
So when you're saying you want us to reverse, you want us to reverse and say that your opposition to Apple's music is legitimate, that doesn't necessarily mean they need to issue your trademark.

[00:03:10] Speaker 00:
That would be a separate analysis.

[00:03:11] Speaker 02:
Correct.

[00:03:12] Speaker 00:
OK, now I'm sorry.

[00:03:13] Speaker 00:
Let me let you find that site for Judge Trump.

[00:03:41] Speaker 01:
Yes, it appears to be

[00:03:51] Speaker 01:
OK.

[00:03:53] Speaker 01:
In any event, back to this one.

[00:03:56] Speaker 01:
The board said that as to something, you had priority in 85, and then said the only reason that California Apple, Computer Apple, whatever one may want to call it, is going to prevail here is that it gets to borrow the priority date of

[00:04:19] Speaker 01:
London Apples now belongs to California Apples, activities which was limited to, well, which was limited in some way, right?

[00:04:34] Speaker 02:
Yes, Judge, they did allow 10.

[00:04:37] Speaker 01:
And you do argue here, I don't think there has been a forfeiture argument made in the red brief, but you do argue here, I think,

[00:04:49] Speaker 01:
that any priority that the Apple companies have based on the Beatles Apple activities doesn't extend to the full set of goods and services listed in the current Apple applications.

[00:05:15] Speaker 02:
Well, it doesn't extend to any of them, Judge.

[00:05:18] Speaker 01:
I'm trying to focus on this.

[00:05:23] Speaker 01:
Just for purposes of this question, let's assume that it does extend to the little phrase about sound recordings.

[00:05:33] Speaker 01:
I think you argue that that's not enough to warrant

[00:05:39] Speaker 01:
granting this registration, because this registration includes a whole set of activities that go beyond that little phrase about sound recordings.

[00:05:51] Speaker 02:
Yes, Judge.

[00:05:51] Speaker 02:
Sound recordings is a good.

[00:05:53] Speaker 02:
And correct me, Judge Chen, if I misspoke.

[00:05:57] Speaker 02:
I didn't intend to state that my client has created any goods but services.

[00:06:03] Speaker 02:
And in 1985, Apple,

[00:06:08] Speaker 02:
computer didn't create any services for music.

[00:06:14] Speaker 00:
Okay, stop with the services goods because it seems with all due respect to be a somewhat arbitrary distinction that you're drawing.

[00:06:21] Speaker 00:
Focus instead, I think, on Judge Toronto's precise question.

[00:06:25] Speaker 00:
Apple Jazz, according to the board, had priority in 1985 for arranging, organizing, conducting, presenting live concerts and live music performances.

[00:06:37] Speaker 00:
Forget everything else.

[00:06:38] Speaker 00:
The board has said that at least that by 1985 you had.

[00:06:42] Speaker 00:
So let's focus on live concerts and performances.

[00:06:45] Speaker 00:
Let's just stop there.

[00:06:47] Speaker 00:
Apple says it got

[00:06:50] Speaker 00:
Priority based on tacking to go back to the Beatles Apple's mark And it says it got it for what it's gramophone productions, right?

[00:07:02] Speaker 02:
Yes.

[00:07:02] Speaker 00:
Okay, and so gramophone productions are like could be like similar to a record or maybe it could extend to a cassette tape or maybe it could go to a CD as time evolves one might imagine and

[00:07:15] Speaker 00:
reasonable extension like that but the problem that I have with this case which I think is very similar to what judge trying was asking you is what they're seeking to obtain in this registration is the use of Apple Music for everything right down to

[00:07:33] Speaker 00:
live performances and sports, all sports apparently, not even sports memorabilia or sports music, but sports, just all sports.

[00:07:41] Speaker 00:
So their list, which includes more than a hundred different categories of things, goes way beyond, undisputedly beyond,

[00:07:53] Speaker 00:
what the Beatles Apples had a registration for.

[00:07:56] Speaker 00:
And I think that his question to you was trying to focus on that.

[00:08:00] Speaker 00:
In the tacking doctrine, is it fair to say I can tack back for gramophone recordings, which means I now have priority back to the 1960s for sports and live performances and everything else when none of that was encapsulated by the 1960 Beatles registration?

[00:08:20] Speaker 00:
Is that your argument?

[00:08:21] Speaker 00:
That's kind of what I understand part of your argument to be.

[00:08:23] Speaker 02:
Well, my argument is even prior to that argument is that you start with yes, and then tell me what else in addition to what I just said well Yes, that is a very broad Application and it would allow Apple through this tacking doctrine Where do we find the legal standards for that because that to me is the chief just sure?

[00:08:49] Speaker 01:
Well articulated what I'm getting at there's there's on its face

[00:08:53] Speaker 01:
a large mismatch between the subject of the tact earlier activity and the

[00:09:07] Speaker 01:
in this registration application.

[00:09:09] Speaker 01:
And it seems facially odd to say that having priority as to one little piece gives priority as to everything else, including perhaps activities as to which the board said you had priority.

[00:09:24] Speaker 01:
Where do I find the right legal standards for addressing that concern about the mismatch of scope of activities with respect to the priority claim?

[00:09:39] Speaker 02:
I think this court articulated it in a case called Van Dyne, where it stated that tacking is a very strict standard and can

[00:09:48] Speaker 02:
can only be issued very sparingly.

[00:09:50] Speaker 01:
Right.

[00:09:51] Speaker 01:
But one of the oddities, or at least, again, my questions I have is,

[00:09:57] Speaker 01:
many of the tacking cases, maybe even all of them, and I'd like you to tell me if there are some that are different from this, talk about, for example, the way Hanna Financial did, a change in the content of the mark.

[00:10:11] Speaker 01:
If the change in the content of the mark is not too big, that is, it's small enough that the relevant consumers would understand that

[00:10:20] Speaker 01:
the new one probably comes from the same source as the old one, then you can do tacking.

[00:10:26] Speaker 01:
And in that context, it's narrow.

[00:10:29] Speaker 01:
We're talking, or at least what I'm focused on, is a question about a change in the scope of activities covered by a mark that I will assume is close enough to the Apple and the Apple Music.

[00:10:46] Speaker 01:
Where do I find cases about that?

[00:10:50] Speaker 02:
Well, we don't find, I haven't been able to find cases that allow an expansion beyond what a judge has just described.

[00:11:00] Speaker 02:
Hannah Finn was the same services.

[00:11:02] Speaker 02:
There wasn't an expansion.

[00:11:05] Speaker 02:
And Big Blue, a presidential case at the Trademark Trial and Appeal Board stated,

[00:11:11] Speaker 02:
that you have to compare set to set.

[00:11:14] Speaker 02:
And that is set.

[00:11:16] Speaker 01:
Concerning the activities covered?

[00:11:17] Speaker 02:
The services are goods.

[00:11:19] Speaker 01:
Big blue?

[00:11:20] Speaker 02:
Big blue, yes.

[00:11:21] Speaker 02:
Is that it?

[00:11:24] Speaker 00:
OK.

[00:11:24] Speaker 00:
What about the natural expansion concept?

[00:11:28] Speaker 00:
And McCarthy on trademarks, and then there's a CCPA case called J. Wiss.

[00:11:33] Speaker 00:
I think that both talked about natural expansion.

[00:11:36] Speaker 00:
I guess what we're

[00:11:38] Speaker 00:
What I'm concerned about is that I'm troubled that the idea that you could tack back for one thing and now claim you're entitled to a whole universe of completely different things, which I think is what is going on here.

[00:11:53] Speaker 00:
But I do feel like there is some room for expansion, right?

[00:11:57] Speaker 00:
Maybe that's why I said maybe gramophone recordings become cassette tapes.

[00:12:01] Speaker 00:
You know what I mean?

[00:12:02] Speaker 00:
That's a natural zone of expansion.

[00:12:04] Speaker 00:
But I'm not sure gram recordings become sports or blogs or whatever.

[00:12:09] Speaker 00:
You see the point I'm making.

[00:12:11] Speaker 00:
So maybe there is some room in this hacking doctrine for something other than identity of goods.

[00:12:18] Speaker 00:
But I'm trying to get my hands around what that legal standard ought to be.

[00:12:23] Speaker 02:
Sure.

[00:12:23] Speaker 02:
Well, we start with the Lanham Act, which doesn't allow reservation of rights.

[00:12:27] Speaker 02:
However, this court has decided, notably in the Van Dyne case, that small change, as long as there's strict standard, is acceptable.

[00:12:38] Speaker 02:
And set to set doesn't mean that if you have 20 different services, they have to be exactly the same as 20 other services.

[00:12:49] Speaker 02:
I suppose there could be some variation.

[00:12:51] Speaker 02:
But if you've got one service,

[00:12:54] Speaker 02:
And you're trying to connect it to 20 other services that might not really be set.

[00:12:59] Speaker 04:
Are you familiar with the J. Wiss opinion that Chief Judge Moore just cited?

[00:13:04] Speaker 04:
It's a CCPA opinion that talks about natural expansion.

[00:13:09] Speaker 02:
I'm not familiar with that case, Judge.

[00:13:11] Speaker 00:
Do you want to save the remaining time for rebuttal?

[00:13:14] Speaker 02:
Yes, Judge.

[00:13:15] Speaker 00:
OK.

[00:13:17] Speaker 00:
Mr. Charns, am I saying that right?

[00:13:19] Speaker 00:
Well, tell me how to say it.

[00:13:21] Speaker 00:
Charnas.

[00:13:22] Speaker 00:
What is it?

[00:13:23] Speaker 03:
Charnas.

[00:13:24] Speaker 00:
Two syllables.

[00:13:25] Speaker 00:
Charnas.

[00:13:25] Speaker 00:
Got it.

[00:13:26] Speaker 00:
Mr. Charnas, please proceed.

[00:13:28] Speaker 03:
Good morning, and may it please the court.

[00:13:30] Speaker 03:
My name is Adam Charnas, and I represent Apple in this appeal, getting right to the issue that consumed, I think, all of my friend's time on the other side.

[00:13:38] Speaker 03:
The first point I wanted to make is a forfeiture point.

[00:13:41] Speaker 03:
I think if you saw counsel throughout the argument essentially resist the questions that the court made,

[00:13:47] Speaker 03:
Their argument is that no tacking is appropriate here as to any services back to Apple Corps' trademark.

[00:13:55] Speaker 01:
Let's assume that I think that the argument that says it has to be set to set certainly has been raised here.

[00:14:01] Speaker 01:
I don't remember seeing in your red brief an argument that says that argument was forfeited below.

[00:14:07] Speaker 01:
Did I hear that?

[00:14:07] Speaker 03:
I'm sorry.

[00:14:09] Speaker 03:
Yes.

[00:14:10] Speaker 03:
They made the set to set argument.

[00:14:11] Speaker 03:
I think that is somewhat different than the issue here as to how far within the list

[00:14:17] Speaker 03:
services in the Kramer application, it goes.

[00:14:19] Speaker 03:
I mean, the suggestion that the entire set must match the entire set cannot possibly be.

[00:14:26] Speaker 00:
Well, let's just assume there's no forfeiture.

[00:14:28] Speaker 00:
Why don't you focus on the legal issue that we have, which is what is the scope that ought to be permitted for tacking?

[00:14:34] Speaker 00:
There are very few cases on this doctrine, but the ones that exist give it a very narrow scope.

[00:14:39] Speaker 00:
So why don't you explain to us how it is

[00:14:42] Speaker 00:
that if you can claim priority for gramophone recordings, that ought to also give you priority for sports.

[00:14:49] Speaker 03:
Right.

[00:14:50] Speaker 03:
Well, what the cases say, and they're cases like Brunswick and Big Blue, which Council mentioned, what they say is that the services must be the same or substantially similar.

[00:14:59] Speaker 00:
And how are gramophone recordings the same as sports?

[00:15:02] Speaker 03:
Well, I think the question is you have to approach it from the perspective of the consumer.

[00:15:06] Speaker 03:
Now, gramophone recordings are.

[00:15:08] Speaker 00:
OK, so if I'm approaching it, well, I do want to hear your answer.

[00:15:11] Speaker 00:
Go ahead, and then I'll.

[00:15:12] Speaker 03:
Sure.

[00:15:13] Speaker 03:
Well, I think to step back, I think what the board said, and I think this is right.

[00:15:16] Speaker 00:
Do you think the consumers of Beatles gramophone recordings would know that current day sports that may bear an Apple mark is actually the same source as the Beatles recordings?

[00:15:29] Speaker 03:
I think what you do is you first look at the services or goods that are most likely to tack.

[00:15:36] Speaker 03:
That's what the board said.

[00:15:38] Speaker 03:
So you look first in their primary argument.

[00:15:40] Speaker 00:
I don't care what the board said, because this is a question of first impression.

[00:15:43] Speaker 00:
It's a legal standard, and there's not a lot on tacking.

[00:15:46] Speaker 00:
So I want you to help me figure it out, because as you can probably tell, my questions aren't of the friendly variety.

[00:15:53] Speaker 03:
I didn't notice that, Your Honor.

[00:15:55] Speaker 03:
But I think the forfeiture question then comes back to that, because you start with, is there any tacking at all?

[00:16:00] Speaker 03:
And I think here, as Your Honor alluded to, I think there clearly is tacking with respect to, for example,

[00:16:05] Speaker 03:
Apple Corps gramophone records to the more modern set of services through which musical recordings are transmitted to consumers.

[00:16:14] Speaker 03:
You can't buy a record anymore.

[00:16:18] Speaker 03:
The overwhelming way that you get music anymore is through streaming, where there is no good in service.

[00:16:23] Speaker 03:
And then you look at it from the perspective.

[00:16:25] Speaker 03:
So that's the first question.

[00:16:26] Speaker 03:
Can there be tacking here at all?

[00:16:28] Speaker 03:
And I think the answer is yes, and that's what the award said.

[00:16:30] Speaker 03:
Now, they're not making the argument that they're doing sports for Apple using Apple Jazz.

[00:16:35] Speaker 00:
It's irrelevant whether they're doing sports.

[00:16:37] Speaker 00:
If they can prove that your application as sought is not entitled to the priority date, the whole thing's dead.

[00:16:43] Speaker 00:
It's not a line item veto.

[00:16:47] Speaker 03:
I agree with that in part, but I think we are entitled to tacking for some of the things that are listed in the application.

[00:16:55] Speaker 04:
That's the question I have.

[00:16:56] Speaker 04:
What if we were to agree that for one of the listed items, I don't know how many there are.

[00:17:02] Speaker 04:
Let's say there are 100 items listed in your application.

[00:17:06] Speaker 04:
For one of them, you could enjoy tacking.

[00:17:11] Speaker 04:
But the other 99, you cannot.

[00:17:14] Speaker 04:
What happens to your application gets denied right?

[00:17:17] Speaker 03:
No, I don't think that's right.

[00:17:18] Speaker 03:
I think well first of all I think that they are

[00:17:21] Speaker 03:
The question is whether it's sufficiently related that a consumer.

[00:17:24] Speaker 01:
Now you're fighting the premise.

[00:17:26] Speaker 01:
And I guess there's a legal question that, as I understand it, we're all asking.

[00:17:31] Speaker 01:
Take the premise.

[00:17:32] Speaker 01:
You're entitled to tacking as to item number one.

[00:17:35] Speaker 01:
You're not entitled to tacking as to two through 100.

[00:17:40] Speaker 01:
What does the PTO do with an application like that?

[00:17:44] Speaker 01:
Reject it?

[00:17:45] Speaker 01:
Or does it say, we'll give it to you, but only if your race number is two and two through 100?

[00:17:51] Speaker 03:
Well, given those two options, I think the latter, certainly.

[00:17:54] Speaker 03:
Is that PTO practice, or are you just speculating?

[00:17:58] Speaker 03:
Well, I think it's not PTO practice, as this example showed.

[00:18:02] Speaker 04:
Well, let me keep driving away at it, because I keep hearing different things coming out of you when I ask you a question.

[00:18:11] Speaker 04:
Is it PTO practice to permit trademark applicants to amend their application to cross out whole bunches of goods and services that they have listed while still preserving others?

[00:18:25] Speaker 04:
Or do you have to file a new application?

[00:18:28] Speaker 04:
Honestly, I'm not sure of the answer to that question.

[00:18:29] Speaker 04:
OK, then that's the answer to the question that I asked and Judge Toronto reiterated.

[00:18:35] Speaker 03:
I think the question here, though, and this is the approach that the board took, is the first question is whether there's hacking that's permissible with respect to the services that are overlapping between the parties.

[00:18:45] Speaker 03:
And that's the first issue the court looked at.

[00:18:48] Speaker 03:
And the board said that there was.

[00:18:51] Speaker 03:
And that's the argument that Bertini has made here.

[00:18:55] Speaker 04:
Let's assume for the moment I read the board's decision as saying,

[00:19:00] Speaker 04:
All I have to do is find one common thing between the old Beatles trademark registration and the current Apple application.

[00:19:10] Speaker 04:
And I do find that one thing.

[00:19:12] Speaker 04:
And that's enough.

[00:19:13] Speaker 04:
I don't have to look any deeper, any further as to whether there's any commonality or substantial similarity or natural expansion of

[00:19:23] Speaker 04:
using the Beatles registration as a source to all the things that have been recited in the current Apple application.

[00:19:33] Speaker 04:
What I want to know is why is that legally correct under the doctrine of tagging?

[00:19:39] Speaker 03:
Well, I think it is correct, because there certainly is no authority that says it's not correct.

[00:19:44] Speaker 03:
But the board's approach is, as you indicated... Well, if you count Big Blue, the trademark decision, as authority,

[00:19:52] Speaker 04:
That one seems to ask for whether there's substantial identity.

[00:19:57] Speaker 03:
Right.

[00:19:58] Speaker 03:
Well, I concede, Your Honor, that that is the standard.

[00:20:00] Speaker 03:
I think we disagree, as we explained in our brief.

[00:20:03] Speaker 04:
Did the board do that substantial identity test when looking at all 100 items you've listed as goods slash services in your application?

[00:20:13] Speaker 03:
No, because that wasn't Bertini's argument.

[00:20:15] Speaker 03:
Bertini didn't pick out sports and say they can't.

[00:20:17] Speaker 04:
Well, Bertini made below, and to us in its blue brief here, a set-to-set argument.

[00:20:23] Speaker 04:
And that, I think we can all agree, did not happen at the board level.

[00:20:28] Speaker 04:
I think that's right.

[00:20:29] Speaker 04:
The board rejected that interpretation of Big Blue.

[00:20:32] Speaker 00:
Right.

[00:20:32] Speaker 04:
And so again, why is that correct to reject that?

[00:20:37] Speaker 04:
Just thinking about what are the principles underlying the tacking doctrine?

[00:20:42] Speaker 04:
Why should it be OK to recite 100 different things and essentially drive an elephant into a mouse hole to tack back to an earlier registration that is only directed at one goods or service?

[00:20:58] Speaker 04:
Right.

[00:20:58] Speaker 03:
I think the bottom line question is whether the services and goods are substantially identical or the same.

[00:21:06] Speaker 03:
So we agree that that is the standard here.

[00:21:08] Speaker 04:
So then you do do a comparison of all the items listed in your current application against

[00:21:14] Speaker 03:
Whatever the items that were identified in the earlier mark registration Well, I think it depends on what the what the opposer argues here now the opposer here Let's assume that was argued here, right?

[00:21:25] Speaker 04:
Okay, so then it's been argued.

[00:21:27] Speaker 04:
It's got to be done, right?

[00:21:28] Speaker 03:
I think if they come into the board and said sports is

[00:21:34] Speaker 03:
is not substantially similar, then we would have brought in evidence at trial that showed how, in the minds of consumers... Well, who has the burden of proof to establish tacking or disprove that tacking is entitled?

[00:21:47] Speaker 04:
The burden is on your side, right?

[00:21:49] Speaker 03:
It's an affirmative defense, so at the board we had that

[00:21:51] Speaker 04:
So then it's up to you to establish and explain and justify why you get to run all the way back to 1968 Beatles Apple for all the multitude of goods and services you're identifying today in your current application.

[00:22:04] Speaker 04:
Is that right?

[00:22:05] Speaker 04:
Well, I think that the burden is on you.

[00:22:06] Speaker 03:
The burden is on us.

[00:22:07] Speaker 03:
On the other hand, we do have an adversarial process.

[00:22:10] Speaker 00:
Let me help you.

[00:22:11] Speaker 00:
This is actually friendly.

[00:22:12] Speaker 00:
I'm going to be honest, friendly, OK?

[00:22:14] Speaker 00:
And I'm going to go hospital after that.

[00:22:15] Speaker 00:
So just keep track.

[00:22:16] Speaker 00:
So the friendly question that I'm starting with is why isn't your argument to us the following?

[00:22:23] Speaker 00:
We only have to be able to tack back for that which somebody else may have priority before us for.

[00:22:31] Speaker 00:
We don't have to tack back or demonstrate tacking with regard to sports or blogs or anything else, because no opposition has come forward challenging our entitlement to those categories.

[00:22:42] Speaker 00:
So all we have to show priority for Judge Jen, Judge Moore, and Judge Toronto are something that goes back and covers

[00:22:52] Speaker 00:
the production and distribution of sound recordings and live music performances, because those are the two categories that Mr. Bertini claims that he preceded Apple for.

[00:23:03] Speaker 00:
You don't have to prove entitlement to all the rest, because nobody's challenging your entitlement to that, even based on today.

[00:23:08] Speaker 00:
You don't have to even tack for the rest.

[00:23:10] Speaker 00:
The tacking doesn't give you priority necessarily for the whole application.

[00:23:14] Speaker 00:
And if the board said it did, that was their legal error, Your Honor.

[00:23:18] Speaker 00:
That's my friendly question.

[00:23:19] Speaker 03:
Yes, that is the point, part of the point I was trying to get out unsuccessfully for the last 10 minutes or so, yes.

[00:23:25] Speaker 03:
What Bertini was doing is recorded sound and live music.

[00:23:29] Speaker 03:
That's why the board focused on that.

[00:23:31] Speaker 00:
Okay, fair enough.

[00:23:33] Speaker 00:
So your argument might be that for tacking, we don't have to prove entitlement to 1968 for everything.

[00:23:38] Speaker 00:
We just have to prove it for the things that he's claiming he can go back to 85 for.

[00:23:42] Speaker 03:
I think that's right.

[00:23:43] Speaker 03:
If there's somebody else that comes to court or comes before the board that is doing sports under the Apple mark and is claiming that it's an impermissible attack, that would be a different case with different evidence.

[00:23:53] Speaker 00:
But now, let's fast forward.

[00:23:54] Speaker 00:
This is where I'm flipping.

[00:23:56] Speaker 00:
I gave you notice.

[00:23:58] Speaker 00:
Mr. Bertini's mark, according to the board, gave him priority back to the 80s for live music performances.

[00:24:05] Speaker 00:
The only thing you can claim back to 68 for is gramophone recordings, audio compact discs featuring music.

[00:24:13] Speaker 00:
Why doesn't he have priority for live musical performances?

[00:24:18] Speaker 03:
Well, the question is, as I've said several times, is whether live performances are substantially the same as the recorded music.

[00:24:26] Speaker 00:
I believe you said substantially identical.

[00:24:28] Speaker 03:
Substantially identical in the eyes of consumers of music.

[00:24:32] Speaker 03:
And the whole point of the Latin Max

[00:24:34] Speaker 03:
is to protect consumers from being confused about the source of the goods and services that they're receiving.

[00:24:39] Speaker 00:
Well, let me tell you, if that's the point of Atlanta Mac, which I agree with you it is, I don't understand how the tackling doctrine could ever apply in this case.

[00:24:45] Speaker 00:
Here is why.

[00:24:46] Speaker 00:
You're claiming that everyone in the universe is going to believe that everything you're doing under the Mark Apple music is really the same producer as the Beatles.

[00:24:59] Speaker 03:
No, I don't think that's the same identity of goods or services.

[00:25:02] Speaker 00:
You're claiming and most hacking cases, by the way, involved the same company, right?

[00:25:07] Speaker 00:
Most hacking cases that have ever been decided are the same company tweaking their mark and claiming the consumer will still understand it's the same company.

[00:25:16] Speaker 00:
This is one of the few cases where you went out and bought somebody

[00:25:19] Speaker 00:
in order to be able to claim their priority and not have a problem.

[00:25:23] Speaker 00:
So if the point is that consumers need to think it's the same source, which is what you just said, what consumer thinks that Apple Music came from the Beatles?

[00:25:35] Speaker 03:
My kids know.

[00:25:36] Speaker 03:
First of all, not all cases involve the same.

[00:25:40] Speaker 03:
Brunswick, for example, is a situation where the mark was used first

[00:25:43] Speaker 03:
for various types of bowling equipment, and then decades later was applied to bowling balls.

[00:25:50] Speaker 03:
So there are cases where the services differ over time.

[00:25:54] Speaker 03:
Same company, though?

[00:25:54] Speaker 03:
Same company.

[00:25:55] Speaker 03:
It was the same company, yes.

[00:25:56] Speaker 03:
All right.

[00:25:57] Speaker 04:
So that's different than what the chief just asked you about.

[00:26:00] Speaker 03:
It's slightly different, because one difference is not too different.

[00:26:04] Speaker 00:
Trademark law is focused on source identifier.

[00:26:06] Speaker 03:
That's right.

[00:26:07] Speaker 00:
Who in the world thinks Apple Music

[00:26:12] Speaker 00:
And anything at all that it does came from the Beatles.

[00:26:16] Speaker 03:
Well, I would quibble with how you phrase that.

[00:26:19] Speaker 03:
So Apple Core Limited was the music company for the Beatles.

[00:26:25] Speaker 03:
They used the mark Apple for music.

[00:26:28] Speaker 03:
Not only the Beatles music, but other music as well.

[00:26:32] Speaker 01:
All music that they produced?

[00:26:36] Speaker 01:
And it seems to me one fairly large difference is that Apple Music is like the electronic equivalent of Tower Records.

[00:26:46] Speaker 01:
I assume practically none of the actual content offered on Apple Music does the Cupertino company produce.

[00:26:55] Speaker 03:
I think the record is silent on that, but I think that's probably correct.

[00:26:59] Speaker 03:
I'm not sure why that makes a difference.

[00:27:01] Speaker 03:
Apple Music is distributing the music of various artists.

[00:27:06] Speaker 01:
If the question is whether consumers would think

[00:27:11] Speaker 01:
upon the introduction into the marketplace of the Apple music service, that it was not the computer company already distributing other kinds of online products of a variety, connecting with people on their own devices, but instead was a company that distributed in various ways, its own produced music.

[00:27:40] Speaker 01:
Doesn't the board have to face that?

[00:27:41] Speaker 01:
And isn't it somewhat implausible?

[00:27:45] Speaker 03:
Well, it's not an argument that Bertini made.

[00:27:47] Speaker 03:
So I don't know if the board had to face it for that reason alone.

[00:27:51] Speaker 03:
The question is, I don't think that when the mark Apple is used for music, that is the source identifier.

[00:27:59] Speaker 03:
It's not suggesting that Apple, that company, whether Apple Core or later Apple Inc,

[00:28:06] Speaker 03:
is producing the music itself, it's distributing the music and getting it to consumers to listen to.

[00:28:12] Speaker 03:
I think that's the representation that's being made.

[00:28:15] Speaker 03:
And I think consumers of music, consumers of the Beatles' music knew.

[00:28:19] Speaker 01:
What is the time period at which the question of what consumers are likely to understand about source should be asked?

[00:28:29] Speaker 03:
Well, I think it should be asked, if I'm following the question correctly,

[00:28:35] Speaker 03:
When the application is submitted and ruled on, that's when the question is asked about whether.

[00:28:42] Speaker 01:
So you think that the question is whether consumers in this application is 2015?

[00:28:49] Speaker 01:
Yes, I think so.

[00:28:50] Speaker 01:
In 2015, would think that the same company that produced music, recorded it, distributed its own produced music,

[00:29:04] Speaker 01:
is almost unheard of by 2015, ask any 20-year-old, is the likely source of the Apple Music electronic service?

[00:29:20] Speaker 01:
I think you just said that is, in fact, the question.

[00:29:24] Speaker 01:
And if that's the question, that's kind of a problem for you, isn't it?

[00:29:30] Speaker 03:
May I answer, Your Honor?

[00:29:32] Speaker 00:
Yeah, yeah.

[00:29:33] Speaker 03:
OK, the red light's on.

[00:29:33] Speaker 03:
That's why I asked.

[00:29:35] Speaker 03:
So I think the answer is, I don't think that's true.

[00:29:38] Speaker 03:
I think consumers of music who are familiar with the Beatles know that they produce their music and distribute their music under the Apple mark.

[00:29:46] Speaker 03:
So I think they would attribute the same source to other music distributed by Apple through Apple Music to the same source.

[00:29:56] Speaker 03:
And I think the suggestion that somehow if you purchase a trademark, it's sort of of less

[00:30:01] Speaker 00:
It's of less value than the original.

[00:30:05] Speaker 00:
No, I don't think that they would think that

[00:30:15] Speaker 03:
Beatles are responsible for Apple Music.

[00:30:17] Speaker 00:
I think that they would think that... But isn't source identifier the point?

[00:30:21] Speaker 03:
Well, I think they would think that the music distributed under the mark Apple Music and the Beatles music distributed under the mark Apple was from the same source and after the purchase of the trademark it is.

[00:30:33] Speaker 03:
Apple Core now distributes the Beatles music pursuant to a license from Apple, the computer company.

[00:30:39] Speaker 00:
Can I ask you to back up because I never really got a satisfactory answer to one other question I had which is

[00:30:45] Speaker 00:
If Bertini really can predate you for live music, because I don't believe you can tack back for live music, I only believe you can tack back for gramophone recordings, which maybe include CDs or cassettes.

[00:30:59] Speaker 00:
And assuming that argument is not forfeited, which I don't think it is, if Bertini claims live music, why isn't your entire application have to be rejected under those circumstances?

[00:31:08] Speaker 03:
Because live music is substantially similar or substantially identical to recorded music.

[00:31:13] Speaker 00:
The question is, if a consumer going... You don't have all recorded music.

[00:31:17] Speaker 00:
You have gramophone records, which I said I would maybe say a natural zone of expansion would be CDs or cassettes.

[00:31:23] Speaker 00:
How is the natural zone of expansion live performances?

[00:31:26] Speaker 03:
Well, I think I would get there in two steps.

[00:31:30] Speaker 03:
The first is streaming, which is how

[00:31:34] Speaker 03:
I don't know the exact percentage, but probably 99% of music consumers obtain their music today.

[00:31:39] Speaker 03:
So you have the full panoply of the ways that music consumers get their music.

[00:31:44] Speaker 00:
Does the board make this fact-finding?

[00:31:45] Speaker 00:
Because my clerk, brilliant as she is, just said the board never made that fact-finding, Judge.

[00:31:49] Speaker 00:
That's what this computer's good for.

[00:31:51] Speaker 00:
So isn't that a problem?

[00:31:53] Speaker 00:
If Bertini has sound recordings or live music, and you only have gramophone records, and the board did not find as a factual matter that live performances are the natural expansion of gramophone records, why don't you lose?

[00:32:08] Speaker 03:
No, no.

[00:32:08] Speaker 03:
I said that.

[00:32:09] Speaker 03:
I said streaming is the natural expansion of gramophone records, eight-track tapes.

[00:32:16] Speaker 00:
I don't know that that's true, and I don't know that the board found that, but that's irrelevant because they don't have streaming.

[00:32:20] Speaker 00:
They've got live music.

[00:32:22] Speaker 03:
Right.

[00:32:22] Speaker 03:
Well, they have both.

[00:32:23] Speaker 03:
I think both is included.

[00:32:24] Speaker 00:
It's irrelevant.

[00:32:25] Speaker 00:
The only thing that matters is the thing they got that you don't have.

[00:32:28] Speaker 03:
Well, the question is, what would music consumers believe about live music?

[00:32:33] Speaker 00:
And the board didn't make a fact finding to that effect.

[00:32:36] Speaker 03:
Well, that's true.

[00:32:37] Speaker 03:
I agree with that.

[00:32:38] Speaker 03:
The board focused on

[00:32:41] Speaker 03:
the service of, basically, Apple Music Service, distributing music, and didn't focus on live performances.

[00:32:49] Speaker 03:
But I think the same principle applies.

[00:32:50] Speaker 03:
And I'd go back to what you're on.

[00:32:52] Speaker 00:
In fact, they gave you priority, didn't they, for production and distribution?

[00:32:56] Speaker 03:
Correct.

[00:32:56] Speaker 00:
And that doesn't include

[00:32:57] Speaker 00:
live performances, or it wasn't discussed anyway.

[00:33:00] Speaker 03:
It wasn't discussed because, again, Bertini didn't make that argument.

[00:33:02] Speaker 03:
He made a broad general argument.

[00:33:04] Speaker 00:
No, they definitely made the argument that they were doing live music performances.

[00:33:08] Speaker 03:
No, no.

[00:33:09] Speaker 03:
I agree with that.

[00:33:10] Speaker 03:
They made the, you must tack all the services to all the goods argument.

[00:33:15] Speaker 03:
They didn't say, even if you have it as to production and distribution, you don't have it as to live music.

[00:33:22] Speaker 03:
That's the argument they didn't make before the board.

[00:33:23] Speaker 03:
And that's why the board didn't make any findings about that.

[00:33:26] Speaker 04:
Just one last question for me.

[00:33:30] Speaker 04:
I'm sorry.

[00:33:31] Speaker 02:
It's too many questions.

[00:33:32] Speaker 02:
Should I go first?

[00:33:33] Speaker 04:
OK.

[00:33:36] Speaker 04:
So just so I get clarity on something that we already discussed, in 2015, when the application was applied for,

[00:33:45] Speaker 04:
Is it your view that a consumer would likely see that application for Apple Music for all those listed goods and services as connecting back to the Beatles Apple mark?

[00:34:01] Speaker 04:
Well, I wouldn't phrase it that way.

[00:34:02] Speaker 04:
I think the question is... Well, how about just answering that question?

[00:34:06] Speaker 04:
And then you can rephrase it and then answer your rephrased question.

[00:34:10] Speaker 03:
The 15-year-old Taylor Swift fan buying her music is not going to... Or me.

[00:34:15] Speaker 00:
Go ahead.

[00:34:15] Speaker 00:
Keep going.

[00:34:16] Speaker 04:
Okay, anybody buying telescope music is not gonna so then you agree that someone looking at your 2015 application in 2015 would not look at the Apple music mark as Being connected back to the Beatles Apple.

[00:34:31] Speaker 04:
Well, I think what the board took her I think I think not everybody I agree with you.

[00:34:35] Speaker 04:
I heard you say yes.

[00:34:37] Speaker 04:
Okay.

[00:34:37] Speaker 04:
Now go ahead and rephrase your question and answer that I

[00:34:41] Speaker 03:
Well, I'm not going to rephrase the question, but I think the point is the board looked at the marks and said, from a consumer's perspective, this Apple music provide the same information as Apple.

[00:34:55] Speaker 03:
consumer looking at the market.

[00:34:56] Speaker 00:
This feels like an excellent vehicle to clarify this tacking doctrine.

[00:35:00] Speaker 00:
Dr. Stronto, did you have a last-minute question?

[00:35:03] Speaker 01:
I did.

[00:35:03] Speaker 01:
It's incredibly small and non-doctrinal and record-specific, so I do want to ask you this.

[00:35:09] Speaker 00:
Record-specific, as in gramophone?

[00:35:12] Speaker 01:
Very funny.

[00:35:14] Speaker 01:
Mr. Jones said, I think this is that page, appendix page 2727, paragraph 21, the Beatles recordings are evergreen, quote unquote, meaning versions of the Beatles recordings have been available continuously every year after their original release.

[00:35:39] Speaker 01:
And I guess that contained a

[00:35:43] Speaker 01:
some uncertainty about what that meant.

[00:35:46] Speaker 01:
Did that mean that used record stores were selling Beatles albums for a long time?

[00:35:55] Speaker 01:
In which case I wouldn't think that that would be in any way traceable to, I guess it was at Apple Corp.

[00:36:05] Speaker 01:
Does it mean that there were other companies re-releasing

[00:36:13] Speaker 01:
Beatles albums without any contractual relationship to Apple Corps.

[00:36:21] Speaker 01:
I couldn't tell what that sentence meant because it seems to me only if Apple Corps was itself authorizing by contract people to put out Beatles albums would

[00:36:42] Speaker 01:
that point stand as a, I think what it was used for, an objection to abandon?

[00:36:50] Speaker 03:
Yes, I agree with the end of what you just said, and I think that's what he meant.

[00:36:56] Speaker 03:
If you look at the rest of his declaration, he points to numerous releases under the apple mark throughout the late 70s, 80s, and 90s during the

[00:37:06] Speaker 03:
the period when Bertini says there was an activity.

[00:37:08] Speaker 03:
I told you that was very small.

[00:37:10] Speaker 03:
Yes.

[00:37:11] Speaker 00:
OK.

[00:37:11] Speaker 00:
Thank you.

[00:37:12] Speaker 00:
So Mr. Bertini, rebuttal time is entirely optional.

[00:37:15] Speaker 00:
Feel free to use it if you'd like.

[00:37:17] Speaker 00:
And technically, he went over by seven minutes, so you could have nine minutes.

[00:37:20] Speaker 02:
It's not necessary, Judge.

[00:37:22] Speaker 02:
I'll close unless the court has any questions.

[00:37:25] Speaker 00:
OK.

[00:37:26] Speaker 00:
Thank you, Mr. Bertini.