United States District Court, N.D. Georgia, Atlanta Division
AT&T INTELLECTUAL PROPERTY II, L.P. and AIO WIRELESS LLC, Plaintiffs,
AIOTV, INC., Defendant.
RICHARD W. STORY, District Judge.
This matter is before the court on Plaintiffs' motion to enjoin Defendant aioTV from prosecuting second-filed action in District of Colorado ; Defendant's motion to dismiss or in the alternative transfer venue ; and Defendant's motion for leave to file supplemental declaration of Michael Earle .
A. Procedural History
Plaintiffs, AT&T Intellectual Property II, L.P. and Aio Wireless LLC, filed the instant declaratory judgment action against Defendant aioTV Inc. ("AIO") on June 6, 2013 seeking a declaration that Plaintiffs' use of the brand "aio" did not infringe any alleged common law trademark rights to the term. Five days later, Defendant filed a lawsuit in the United States District Court for the District of Colorado ("the Colorado action"). In that suit, Defendant alleges various causes of action against Plaintiffs, including trademark infringement under the Lanham Act, and unfair competition, trademark disparagement, violations of consumer protection, and unjust enrichment under Colorado law.
Plaintiffs filed a motion to stay in the Colorado action and filed a similar motion to enjoin Defendant from prosecuting the Colorado action in the instant case. Defendant filed a motion here to dismiss Plaintiffs' complaint for lack of personal jurisdiction, or in the alternative, to transfer the case to the District of Colorado. Given that it is generally accepted in the law that the court holding the "first-filed" case decides which of two parallel federal lawsuits should proceed, the parties did agree to stay the Colorado action until this court decides both the motion to enjoin and the motion to dismiss. See Notice, Docket Entry .
Plaintiffs then filed a motion for leave to conduct jurisdictional discovery to address some of the arguments made by Defendant in its motion to dismiss for lack of personal jurisdiction. The court granted that motion permitting Plaintiffs to propound interrogatories and requests for production, as well as take the deposition of Defendant's Chief Operating Officer, Michael Earle. The parties engaged in that discovery and Plaintiffs then filed their response to Defendant's motion to dismiss. Because the court ultimately decides that this case should proceed under the Colorado action, the court focuses its discussion on matters related to the "first filed" doctrine.
Defendant AIO resides and is incorporated in Colorado. AIO provides a "cloud-based" service that streams video content to its subscribers' wireless mobile devices and personal computers. AIO has offered this service under the "aio" (pronounced "A-O") trademark and uses brands such as "aioTV, " "Myaio, " "aioPro, " and "aioBasic." AIO contends that it has used the "aio" trademark in the United States for three years preceding Plaintiffs' use. Defendant claims precedence of use pursuant to common law trademark theory. Defendant has not registered any of these brands.
Plaintiffs launched their new "aio wireless" service on May 9, 2013, beginning in Texas and Florida and with the website www.aiowireless.com. Plaintiffs decided to use the "aio" brand after hiring a "brand creation company" to develop a brand name. Defendant believes this brand creation company is located in Colorado and is managed by an individual who is also the head of public relations and communications for Plaintiff Aio Wireless.
On May 13, 2013, Defendant's attorneys sent a "cease and desist" letter to Plaintiffs' attorneys. After reviewing Defendant's and Plaintiffs' use of the brand "aio" and related terms, Defendant's counsel wrote:
Since our clients are sophisticated and represented by counsel I will dispense with the usual case and statute citations and other "cease and desist" form-letter demands. However, it is probably a requirement that I request, on behalf of aioTV Inc., that AT&T cease and desist any further use of the "aio" mark, and notify you that AT&T's use of the identical trademark in connection with nearly the same goods and services that are offered by AIO under its "aio" marks constitutes trademark infringement, false designation of origin, and unfair competition in violation of the federal Trademark Act of 1946 (Lanham Act), 15 U.S.C. Section 1501 et seq.
I suggest that AT&T counsel contact the undersigned as soon as possible so that we can understand AT&T's thinking on these marks, and see if this matter can be resolved.
See Hamilton Decl., Exh. 2-C, Cease and Desist Letter, dated May 13, 2013, at 2. On May 15, 2013, Defendant's counsel began preparing a verified complaint to be filed in Colorado. See Hamilton Decl., ¶ 8. On May 21, 2013, AT&T's counsel called AIO's counsel to discuss the May 13th letter, the dispute, and possibilities of settlement. Id., ¶ 10. By May 24, 2013, AIO's ...