United States District Court, D. Colorado
OPINION AND ORDER GRANTING IN PART AND DENYING IN PART MOTION TO DISMISS
MARCIA S. KRIEGER, Chief District Judge.
THIS MATTER comes before the Court pursuant to Defendants' Motion to Dismiss (# 18), Plaintiff's response (# 21), and Defendant's Reply (# 22). Having considered the same, the Court
FINDS and CONCLUDES that:
This Court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1367.
II. ISSUES PRESENTED
In the Amended Complaint (# 5), DesignSense asserts a claim for false designation of origin under the Lanham Act, 15 U.S.C. § 1125, based on Defendants' claim of authorship over specifications created by DesignSense. DesignSense also asserts state law claims for (1) tortious interference with current and prospective business advantages; (2) fraud; (3) conversion; (4) negligent misrepresentation; (5) negligence; (6) common law false designation of origin; and (7) common law unfair competition.
In the Motion to Dismiss, Defendants argue that: (1) res judicata bars the Lanham Act claim as well as the claims for fraud, conversion, negligent misrepresentation, negligence, common law false designation of origin, and common law unfair competition; and (2) all the claims should be dismissed for failure to state a claim.
The Defendants manage and operate the U.S. Department of Energy's National Renewable Energy Lab ("NREL"). In 2007, DesignSense and the Defendants entered into a contract calling for DesignSense to prepare and deliver to the Defendants "detailed specifications for an RFP" - essentially, a document that would, in turn, be used by the Defendants to direct the construction of a new building at NREL, to be known as the Research Support Facility ("RSF"). DesignSense created the specifications using a proprietary process it calls "the 3PQ Format." DesignSense completed its work and delivered the RFP specifications in 2008.
DesignSense contends that the Defendants thereafter made various public statements in which they claimed that "we" - meaning the Defendants - wrote the specification documents, essentially claiming credit for DesignSense's work. The Complaint alleges that the Defendants took credit for creating the specification documents: (i) in a November 2010 speech by a representative of the Defendants named Ron Judikoff,  (ii) in a Summer 2010 NREL newsletter, (iii) in several papers presented to conferences in 2009 and 2010, and (iv) in an undated NREL publication, among others. DesignSense contends that the Defendants market themselves as being able to "develop performance criteria, building characteristics, and assess the energy and economic impacts of various technologies, " which are the same services that DesignSense offers. Thus, DesignSense alleges, the Defendants are advertising their ability to perform work that DesignSense does, to potential DesignSense clients, and representing that the Defendants, rather than DesignSense, authored the specification documents for the successful construction of the RSF.
In 2011, DesignSense commenced an action entitled David M. Shelton and DesignSense, Inc. v. MRIGlobal and Alliance for Sustainable Energy, LLC, D.C. Colo. Civ. Case No. 11-cv-2891-PAB-MJW ("NREL I"). The original Complaint in that action also alleged that the Defendants' publication of the RFP specifications document on NREL's website, without any attribution to DesignSense, constituted a violation of the Lanham Act. See Docket # 1, ¶ 39 ("The failure of MRI to properly attribute the 3PQ process to Shelton is a misrepresentation to the marking place [of] the development, ownership, and intellectual property behind the 3PQ process"). The plaintiffs subsequently amended their Complaint to add allegations that "DesignSense has identified several [additional] instances where Defendants have claimed that the 3PQ RFP was [the Defendants'] work product..., " although the plaintiffs did not specifically identify those instances. Docket # 25, ¶ 36. On September 28, 2012, Judge Brimmer granted the defendants' motion to dismiss that action, finding (as relevant here) that the plaintiffs' contention that the defendants "used a derivative work' of their copyrighted material without proper attribution" failed to allege a colorable claim for false designation of origin under the Lanham Act. Docket # 63. (Judge Brimmer also dismissed the plaintiffs' copyright infringement claim for failure to state a claim and declined to exercise supplemental jurisdiction over the plaintiffs' remaining state law claims.)
A. Lanham ...