The opinion of the court was delivered by: William J. Martini, U.S.D.J.
This matter comes before the Court on Defendant Exceptional Products Inc. ("EPI")'s motion to dismiss. Plaintiff Telebrands Corp. ("Telebrands") filed an action against EPI seeking, among other relief, a declaration of non-infringement. EPI seeks to dismiss the entire Amended Complaint pursuant to Federal Rule of Civil Procedure 12(b)(1) for lack of subject matter jurisdiction.*fn1
For the reasons stated below, the Court will deny the motion in part and grant it in part.
I.Factual and Procedural Background
Telebrands and EPI are both direct marketing companies that market and sell a variety of consumer products. Telebrands sells an oral care product for pets known as DR. GEORGE'S PLAQUE BLAST; EPI sells a competitive product in association with the mark PLAQUE ATTACK (U.S. Trademark Registration No. 3,921,968). Both parties use video commercials that air on television to sell these competing products. According to the allegations of the Amended Complaint, on April 19, 2011, Stephanie Stewart, President of EPI, called AJ Khubani, President and Founder of Telebrands, and alleged that Telebrand's commercial selling its oral care product is a direct copy of EPI's commercial selling its oral care product. EPI's president allegedly further stated that EPI had a number of causes of action against Telebrands. The parties dispute the actual details of the conversation, although Ms. Stewart admits in her declaration that she called Khubani and "told him that [she] perceived Telebrand's [sic] actions in trademarking and marketing Plaque Blast using a very similar commercial . . . to be hostile and inconsistent with the historically friendly competition within the business."
On April 20, 2011, Telebrands filed this action seeking declaratory relief. Thereafter, the parties attempted settlement. On June 20, 2011, EPI moved to dismiss the complaint, and Telebrands sought leave to amend. After Telebrands filed the Amended Complaint, EPI renewed its motion to dismiss.
A. Motion to Dismiss Standard
Federal Rule of Civil Procedure 12(b)(1) allows a party to move for dismissal of claims based on a lack of subject matter jurisdiction. Where a defendant challenges the jurisdiction on the face of the complaint, the Court must assume the veracity of plaintiff's allegations; in contrast, a factual challenge to a Court's jurisdiction does not require a court to afford plaintiff's allegations the presumption of truthfulness. See Mortensen v. First Fed. Sav. & Loan Ass'n, 549 F.2d 884, 891 (3d Cir. 1977); Dasrath v. Continental Airlines, Inc., 228 F.Supp.2d 531, 534 (D.N.J. 2002); Med. Soc'y of New Jersey v. Herr, 191 F.Supp.2d 574, 578 (D.N.J. 2002) ("A facial attack on jurisdiction is directed to the sufficiency of the pleading as a basis for subject matter jurisdiction," while a factual attack "calls into question the essential facts underlying a claim of subject matter jurisdiction."). In adjudicating a factual 12(b) (1) challenge, the court may consider affidavits, depositions, and testimony to resolve factual issues, and weigh the evidence to satisfy itself as to the existence of its power to hear the case. Iwanowa v. Ford Motor Co., 67 F.Supp.2d 424, 438 (D.N.J. 1999).
EPI raises several issues that bear on whether this Court may or should exercise jurisdiction over this action: (1) whether, generally, an actual controversy exists between the parties; (2) whether the fact that EPI has not registered its copyright in the commercial defeats Telebrand's request for a declaratory judgment on that point; (3) whether Telebrand's allegations regarding unfair competition are sufficient to show that a controversy exists as to those claims; (4) whether settlement discussions have mooted the controversy; and (5) whether this Court should decline to exercise jurisdiction even if a sufficient controversy exists. The Court will consider each in turn.
B. Actual Controversy under the Declaratory Judgment Act
EPI argues that no actual controversy exists between the parties and therefore this Court lacks jurisdiction under the Declaratory Judgment Act, 28 U.S.C. §2201(a). Section 2201 provides that "[i]n a case of actual controversy within its jurisdiction . . . any court of the United States . . . may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought." To determine whether the allegations meet the actual controversy requirement of Section 2201(a), the Court must decide "whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment." MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007) (quotations omitted).
The facts alleged, taken in sum, show the existence of an actual
controversy. The parties have adverse legal interests because they
have potentially conflicting claims to certain, articulated
intellectual properties. The controversy is substantial because it
affects the business of both parties and their respective abilities to
sell their products. And the controversy is of sufficient immediacy
and reality because the events that could result in Telebrands
incurring liability -- the broadcast of the possibly infringing
commercial and the sale of the potentially infringing products -- have
already occurred and indeed, continue to occur. See, e.g., Sea Tow
Services Intern., Inc. v. Pontin, 472 F. Supp. 2d 349, 357 (E.D.N.Y.
2007) (finding actual controversy exists where alleged infringement
already occurred); see alsoPrasco, LLC v. Medicis
Pharmaceutical Corp., 537 F.3d 1329, 1336 (Fed. Cir. 2008) (holding
that "whether there has been potentially infringing activity or
meaningful preparation to conduct potentially infringing activity" is
one important factor in determining whether actual controversy
exists). And, the dispute ...