Tdata Inc. v. Aircraft Technical Publishers

• Decision Date: 23 January 2006
• Docket Number: No. 2:04 CV 1072.,No. 2:03 CV 264.,2:03 CV 264.,2:04 CV 1072.
• Citation: 411 F.Supp.2d 901
• Parties: TDATA INC. Plaintiff, v. AIRCRAFT TECHNICAL PUBLISHERS, Defendant. Aircraft Technical Publishers, Plaintiff, v. Tdata Inc. Defendant.
• Court: U.S. District Court — Southern District of Ohio

Page 901

411 F.Supp.2d 901

TDATA INC. Plaintiff, v. AIRCRAFT TECHNICAL PUBLISHERS, Defendant.

Aircraft Technical Publishers, Plaintiff, v. Tdata Inc. Defendant.

No. 2:03 CV 264.

No. 2:04 CV 1072.

United States District Court, S.D. Ohio, Eastern Division.

January 23, 2006.

D. Wesley Newhouse, II, William H. Prophater, Jr, Lane Alton & Horst, Thomas Edward O'Connor, Jr., Calfee Halter & Griswold LLP, Mark A. Losey, Columbus, OH, Matthew Jon Smith, Smith Rolfes & Skavdahl Co., LPA, Cincinnati, OH, for Plaintiff.

Theodore R. Remaklus, Wood Herron & Evans, Cincinnati, OH, Jerry Alan Eichenberger, Eichenberger & Associates, Dublin, OH, Tim Hale, Russo & Hale LLP, Palo Alto, CA, for Defendant.

OPINION AND ORDER

FROST, District Judge.

This matter is before the Court for consideration of the following filings:

(1) a motion for summary judgment (Doc. # 99) filed by Aircraft Technical Publishers ("ATP"), a memorandum in opposition (Doc. # 112) filed by Tdata Incorporated ("Tdata"), and a reply (Doc. # 113) filed by ATP;¹ and

(2) a motion for summary judgment (Doc. # 130) filed by Tdata, a memorandum in opposition (Doc. # 138) filed by ATP, and a reply (Doc. # 151) filed by Tdata.

For the reasons that follow, the Court GRANTS ATP's motion for summary judgment (Doc. # 99) and DENIES Tdata's motion for summary judgment (Doc. # 130).

I. Background

In several prior Orders, this Court has described the nature and circumstances of this consolidated litigation. For purposes of the record, the Court shall again briefly describe here the essential facts of this litigation.

Tdata Incorporated ("Tdata") is a company that produces and sells a software product called "Iapproach," which is a resource used for managing aircraft maintenance and repair. Aircraft Technical Publishers ("ATP") is the holder of three patents that are involved in these two consolidated cases. The companies became embroiled in a dispute over these patents, and on March 27, 2003, Tdata filed case No. 2:03-cv-264 in this Court, seeking to invalidate two of the patents. ATP filed a counterclaim asserting infringement of these same patents.

Various procedural developments ensued while ATP proceeded to file a second action — this one targeting the remaining third patent — in the United States District Court for the Northern District of California. By then, the parties' dispute also encompassed alleged trademark infringement by Tdata. Following much procedural maneuvering both in this Court and in the Northern District of California, which included an order of transfer that created case No. 2:04-cv-1072, both actions were eventually consolidated on this Court's docket before the undersigned judge.

In an effort to clarify and focus these proceedings, the Court permitted ATP to file an Amended Complaint on December 7, 2004. (Doc. # 60.) That amended pleading asserted four claims: willful patent infringement, patent infringement, trademark infringement, and unfair competition. (Doc. # 60, at 5-11.) Tdata in turn filed a January 6, 2005 answer containing two counterclaims, the first of which asks for declaratory relief, while the second counterclaim asserts an antitrust violation asserting that ATP had violated antitrust laws by attempting to unlawfully restrain trade, by attempting to fix prices, and by attempting to enforce an invalid patent in an effort to create a monopoly. (Doc. # 66, at 9 ¶¶ 40-46.) ATP filed a reply to the counterclaims on January 21, 2005. (Doc. # 70.) The consolidated actions thus present three basic causes of action: patent infringement, trademark infringement, and antitrust. The motions with which this decision is concerned address, however, only the trademark infringement issues.²

The focus of this decision is thus three trademarks held by ATP for "ATP," "ATP Navigator," and "ATP Maintenance Director."³ ATP asserts that Tdata has improperly used these trademarks on one or more Tdata websites — including using them as "metatags" and "title tags"⁴ in the programming code of the sites, and without providing proper registration designation — which draws potential ATP customers to Tdata websites.⁵ According to ATP, this has created confusion over the ownership of the marks and constitutes unfair competition. Both parties have moved for summary judgment, and with briefing complete, the motions are ripe for disposition.

II. Discussion

A. Standard Involved

Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). The Court must therefore grant a motion for summary judgment here if the nonmoving party, who has the burden of proof at trial, fails to make a showing sufficient to establish the existence of an element that is essential to his case. See Muncie Power Prods., Inc. v. United Techs. Auto., Inc., 328 F.3d 870, 873 (6th Cir.2003) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)).

In viewing the evidence, the Court must draw all reasonable inferences in favor of the non-moving party, who must set forth specific facts showing that there is a genuine issue of material fact for trial. Id. (citing Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986)); Hamad v. Woodcrest Condo. Ass'n, 328 F.3d 224, 234 (6th Cir.2003). A genuine issue of material fact exists "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Muncie, 328 F.3d at 873 (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). Consequently, the central issue is "`whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law.'" Hamad, 328 F.3d at 234-35 (quoting Anderson, 477 U.S. at 251-52, 106 S.Ct. 2505.)

B. Analysis

Inexplicably, neither the pleadings nor the briefing in this litigation identify the precise portions of the Lanham Act at the heart of this litigation. It appears that ATP asserts a claim in its third count for trademark infringement in violation of 15 U.S.C. § 1114(1) and a claim in its fourth count for unfair competition in violation of 15 U.S.C. § 1125(a).

The former statute on trademark infringement provides in relevant part:

Any person who shall, without the consent of the registrant —

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,

shall be liable in a civil action by the registrant for the remedies hereinafter provided.

15 U.S.C. § 1114(1). The Sixth Circuit had held that "[i]n federal trademark infringement claims under 15 U.S.C. § 1114, the `touchstone of liability ... is whether the defendant's use of the disputed mark is likely to cause confusion among consumers regarding the origin of the goods offered by the parties.'" Allard Enters., Inc. v. Advanced Programming Res., Inc., 146 F.3d 350, 355 (6th Cir.1998) (quoting Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109 F.3d 275, 280 (6th Cir.1997)). See also PACCAR Inc., 319 F.3d at 249. The central focus is whether "the unauthorized use of a registered trademark when selling or advertising a good or service using the trademark is likely to confuse or deceive consumers." U.S. Structures, Inc. v. J.P. Structures, Inc., 130 F.3d 1185, 1188 (6th Cir.1997).

The latter statute referenced above, under which ATP's claim for unfair competition presumably falls, codifies § 43(a) of the Lanham Act. The statute provides in pertinent part:

() Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which —

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

15 U.S.C. § 1125(a). Additionally, to the extent ATP might have intended to assert a state law claim for unfair competition, the Court notes that the analysis is the same. See ETW Corp. v. Jireh Publ'g, Inc., 332 F.3d 915, 920 (6th Cir.2003) ("Because trademark claims under Ohio law follow the same analysis as those under the Lanham Act, our discussion of the federal trademark claims will therefore encompass the state trademark claims as well"); Allard Enters., Inc. v. Advanced Programming Res., 146 F.3d 350, 354-55 (quoting Rock & Roll Hall of Fame & Museum, Inc. v. Gentile Prods., 134 F.3d 749, 754 (6th...