Theia Techs. LLC v. Theia Grp.
| Decision Date | 27 January 2021 |
| Docket Number | CIVIL ACTION No. 20-97 |
| Parties | THEIA TECHNOLOGIES LLC, Plaintiff v. THEIA GROUP, INC, et al., Defendants |
| Court | U.S. District Court — Eastern District of Pennsylvania |
"Space: the final frontier."1 "To infinity and beyond."2 Our fascination with space is grounded in part by a desire to understand our own world. Indeed, both parties in this trademark dispute appear to have that goal and that may be why both parties invoke "Theia"—the Titan goddess of sight and prophesy—as part of their names.
But even celestial pursuits must give way to earthly constraints, including the terrestrial bounds imposed by trademark law.
Plaintiff Theia Technologies LLC owns and uses the trademark THEIA for lenses and related software, which are used for a variety of applications, including infrastructure monitoring, traffic monitoring, security and surveillance, machine vision, and the monitoring of ports. Theia Technologies is currently developing lenses for satellites, and its lenses have been used on spacecraft. Defendants Theia Group, Inc. and Theia Holdings A, Inc.—collectively referred to as Theia Group)—also use a THEIA word mark in connection with a 112-satellite network they plan on launching and operating. Theia Group markets its network as being capable of spanning the globe to provide data analytics for a variety of uses, including atmospheric sciences, agriculture,natural resources exploration, insurance, infrastructure protection, and security. It anticipates that it will be the largest, most valuable company in the world in the coming decade.
In response to Theia Group's efforts, Theia Technologies alleges "reverse confusion" trademark infringement and unfair competition under both the Lanham Act, Pub. L. 79-489, 60 Stat. 427, and its common law counterparts.
Both parties have put in orbit several motions.3 Technologies seeks to enjoin Group from using the THEIA mark or any marks or designations which colorably imitate or are confusingly like the mark THEIA. Group then moved to dismiss the complaint. The parties conducted limited discovery related to the motion for preliminary injunction. The Court held two days of hearings, and the parties submitted findings of fact and conclusions of law. The parties then pursued a second phase of motions practice: Technologies moved to supplement the preliminary injunction record with various exhibits to supplement with its proposed findings of fact and conclusions of law. Group, in turn, moved to strike this evidence, as well as what it contends is newly requested relief first appearing in Technologies' proposed findings of fact and conclusions of law.
The Court denies Group's motion to dismiss and its motion to strike. The Court grants Technologies' motion to supplement the record and grants in part Technologies' motion for a preliminary injunction. The Court grants the relief initially requested by Technologies in its Motion for Preliminary Injunction, denies Technologies' additional request to cancel Group's pending trademarks and its request to enjoin Group from converting its International Registration into a Japanese national registration at this time.
The injunction shall not issue unless and until Technologies posts the bond.
The facts in this case are set forth in the Court's findings of facts concerning Technologies' motion for preliminary injunction.
Briefly, Technologies has owned its trademark THEIA for lenses and related software in the United States since at least November 2007 and October 2010, respectively. Technologies' THEIA mark appears on lenses used in high altitude drones and balloons, weather monitoring, and surveillance and security applications. Technologies sells its lenses and related software throughout the United States and around the world, including in Asia, the European Union, the Middle East, South America, Australia, Russia, and Eastern Europe. Technologies contends that its ownership of, and prior rights in, THEIA have been public since 2008 and that its use of the THEIA mark has been open and notorious since inception.
Group recently began using THEIA in advertising its 112-satellite network. It markets this network as capable of spanning the globe to deliver "data analytics" to a wide variety of customers in many industries, including atmospheric sciences, agriculture, natural resources exploration, insurance, infrastructure protection, and security. In May 2019, the Federal Communications Commission (FCC) granted in part Group's application for the THEIA satellite network. Group also has two U.S. trademark applications pending, one for the word mark THEIA and another for a THEIA design mark, for goods and services. Group also sought an International Registration under the Madrid Protocol to use the THEIA mark in member countries. Relevant here, Group's Madrid extension of its U.S. trademark application has blocked Technologies' efforts to register the THEIA mark in Japan.
Technologies argues that Group's mark overlaps with the capabilities of its THEIA lenses, optics, and related software. Moreover, it contends that use of the THEIA mark is likely to cause confusion for a variety of reasons, including that the parties' marks are the same, that the partiestarget similar customers in similar industries, and that the parties market their products and services through similar means. Technologies claims to be especially concerned about harm to its reputation given that the THEIA satellite network has already garnered negative press, including accusations of "spy satellites."
Technologies moved to enjoin Group from using the mark THEIA or any marks or designations which colorably imitate or are confusingly like the mark THEIA. Shortly thereafter, Group moved to dismiss the complaint under Federal Rules of Civil Procedure 12(b)(1) and 12(b)(6). The parties engaged in limited informal discovery efforts in preparation for the preliminary injunction hearing. The Court conducted a preliminary injunction hearing and heard oral argument on July 15 and 16, 2020. During the hearing, one witness testified on behalf of Theia Technologies and two witnesses appeared on behalf of Group. Various exhibits were also admitted into the record. After the hearing, the Court instructed the parties to submit proposed findings of fact and conclusions of law.
Accompanying its proposal, Technologies also submitted a declaration of its attorney, attaching various exhibits which were not admitted into the record. Technologies frequently cited these exhibits in its proposed findings and conclusions. The Court held a phone conference with the parties to discuss the filing, as well as sealing issues which the Court has since resolved. Technologies then moved to supplement the record with the additional exhibits. In turn, Group moved to strike these exhibits and the relief requested in Technologies' proposed findings and conclusions. Because Technologies requested additional relief in its findings and conclusions to which Group did not have the opportunity to respond, the Court granted the parties yet another round of briefing limited to addressing Technologies' newly requested relief.
Group moves to dismiss Technologies' complaint under Rules 12(b)(1) and 12(b)(6). Group contends that the Court lacks subject matter jurisdiction, that the claims are not ripe, and that Technologies fails to state a claim.
A district court can dismiss for lack of subject matter jurisdiction based on the legal insufficiency of a claim. Kehr Packages, Inc. v. Fidelcor, Inc., 926 F.2d 1406, 1408 (3d Cir. 1991). A claim can be dismissed under Rule 12(b)(1), however, "only if it 'clearly appears to be immaterial and made solely for the purpose of obtaining jurisdiction' or is 'wholly insubstantial and frivolous.'" Gould Elecs. Inc v. United States, 220 F.3d 169, 178 (3d Cir. 2000) (quoting Kehr Packages, 926 F.2d at 1409). In other words, dismissal is appropriate where the claim is "so insubstantial, implausible, foreclosed by prior decisions of this Court, or otherwise completely devoid of merit as not to involve a federal controversy." Kulick v. Pocono Downs Racing Ass'n, Inc., 816 F.2d 895, 899 (3d Cir. 1987) (quoting Oneida Indian Nation v. Cty. of Oneida, 414 U.S. 661, 666 (1974)).
Rule 12(b)(1) challenges to subject matter jurisdiction may be either facial or factual. A facial attack does not dispute the facts as alleged in the complaint and requires a court to "consider the allegations of the complaint as true." Petruska v. Gannon Univ., 462 F.3d 294,302 n.3 (3d Cir. 2006) (quoting Mortensen v. First Fed. Sav. & Loan Ass'n, 549 F.2d 884, 891 (3d Cir. 1977)). So,the court applies the same standard of review here as when considering a motion to dismiss under Rule 12(b)(6). Const. Party of Pa. v. Aichele, 757 F.3d 347, 358 (3d Cir. 2014).
By contrast, a factual attack challenges the allegations underlying the complaint's assertion of jurisdiction, "either through the filing of an answer or 'otherwise present[ing] competing facts.'"5 Davis v. Wells Fargo, 824 F.3d 333, 346 (3d Cir. 2016) (quoting Aichele, 757 F.3d 347, 358 (3d Cir. 2014)). When assessing a factual challenge, the court may consider evidence outside the pleadings. Aichele, 757 F.3d at 358 (internal quotation marks omitted). Hence, the non-moving party does not have the same procedural safeguards that it enjoys under Rule 12(b)(6). Instead, the plaintiff has the burden of proof on a factual challenge to demonstrate that jurisdiction does in fact exist. Mortensen, 549 F.2d at 891.
A Rule 12(b)(6) motion to dismiss tests the sufficiency of a complaint. Rule 8 of the Federal Rules of Civil Procedure requires only "a short and plain statement of the claim showing that the pleader is entitled to relief." Fed. R. Civ. P. 8(a)(2). However, the plaintiff must give fair notice of the claim and...
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