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IN THE UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF PENNSYLVANIA

MUNICIPAL REVENUE : Case No.: 4:05CV671

SERVICES, INC. :

:

Plaintiff : Judge Jones

:

v. :

:

XSPAND, INC., :

:

Defendant :

MEMORANDUM AND ORDER

June 8, 2005

THE BACKGROUND OF THIS ORDER IS AS FOLLOWS:

Pending before the Court is a Motion to Dismiss Pursuant to Fed.R.Civ.P.

12(b)(6) (“the Motion”)(doc. 22) filed by Defendant Xspand, Inc. (“Defendant” or

“Xspand”) on May 2, 2005. For the reasons that follow, the Motion will be denied. 

FACTUAL BACKGROUND/PROCEDURAL HISTORY:

On April 1, 2005, Plaintiff Municipal Revenue Services, Inc. (“Plaintiff” or

“MRS”) filed a complaint in the United States District Court for the Middle District

of Pennsylvania seeking injunctive relief and damages for alleged violations of the

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Lanham Act, common law unfair competition, commercial disparagement, tortious

interference with contractual relations, and defamation. (See Rec. Doc. 1). 

On May 2, 2005, the instant Motion to Dismiss was filed, which has been

briefed by the parties. The matter is therefore ripe for disposition. 

STANDARD OF REVIEW:

In considering a motion to dismiss, a court must accept the veracity of a

plaintiff's allegations. See Scheuer v. Rhodes, 416 U.S. 232, 236 (1974); see also

White v. Napoleon, 897 F.2d 103, 106 (3d Cir. 1990). In Nami v. Fauver, 82 F.3d

63, 65 (3d Cir. 1996), our Court of Appeals for the Third Circuit added that in

considering a motion to dismiss based on a failure to state a claim argument, a

court should "not inquire whether the plaintiffs will ultimately prevail, only whether

they are entitled to offer evidence to support their claims." Furthermore, "a

complaint should not be dismissed for failure to state a claim unless it appears

beyond doubt that the plaintiff can prove no set of facts in support of his claim

which would entitle him to relief." Conley v. Gibson, 355 U.S. 41, 45-46 (1957);

see also District Council 47 v. Bradley, 795 F.2d 310 (3d Cir. 1986). 

DISCUSSION:

We initially note that Plaintiff argues that Defendant’s Motion to Dismiss

must be denied because it was filed after Defendant answered the complaint. (See

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Pl.’s Br. Opp. Def.’s Mot. Dismiss at 5). Defendant accurately submits however,

that if a party files a Rule 12(b)(6) motion after filing its answer, the district court

should simply treat the motion as one for judgment on the pleadings under Rule

12(c). Turbe v. Government of Virgin Islands, 938 F.2d 427, 428 (3d Cir. 1991);

DeBraun v. Meissner, 958 F.Supp. 227, 229 (E.D. Pa. 1997). The standard

governing Rule 12(c) motions is the same as that governing Rule 12(b)(6) motions,

which we previously set forth. Id. We will therefore treat Defendant’s Motion to

Dismiss as a Motion for Judgment on the Pleadings. 

In the Motion, Defendant asserts that its communications with government

officials including the “taxing entities” described in the complaint are entitled to

immunity under the Noerr-Pennington immunity doctrine. (Def.’s Mot. Dismiss at

¶ 6). Defendant asserts that Noerr-Pennington immunity protects conduct such as

that alleged in the complaint and it bars causes of action such as those asserted in

the complaint. Id. at ¶ 7. In response, Plaintiff asserts that the Motion must be

denied as no precedent supports the dismissal of its Lanham Act claim or its other

claims, at this stage of the litigation, based upon the Noerr/Pennington doctrine. 

(Pl.’s Br. Opp. Def.’s Mot. Dismiss at 6). 

After careful consideration of Defendant’s Motion, we conclude that it shall

be denied for the reasons that follow. First, by Defendant’s own admission, neither

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the United States Supreme Court, nor the Third Circuit Court of Appeals has

addressed the applicability of the Noerr/Pennington doctrine to claims that arise

under Section 43(a) of the Lanham Act. (See Def.’s Br. Supp. Mot. Dismiss at 5). 

There is therefore a paucity of authority on the issue. 

In that vein, Defendant places considerable reliance upon our colleague Chief

Judge Vanaskie’s analysis in Santana Products Inc. v. Bobrick Washroom

Equipment, 249 F.Supp.2d 463 (M.D. Pa. 2003)(Vanaskie, C.J.), aff’d in part,

vacated in part, 401 F.3d 123 (3d Cir. 2005), and argues that it compels the

conclusion that the doctrine applies to Lanham Act claims, as well as the others in

MRS’ complaint. Notably however, upon the appeal of Santana Products, the

Third Circuit did not reach the issue of whether the Noerr/Pennington doctrine

applies to Lanham Act claims because it determined that the Lanham Act claim and

several others were barred by laches. In that regard, the Third Circuit stated the

following, “We will not address at this time the Noerr/Pennington doctrine’s

applicability to Lanham Act claims because we conclude that Santana’s Lanham

Act claim is barred by laches.” Id. at 135. Defendant argues that although the

Third Circuit vacated the above-referenced portion of Chief Judge Vanaskie’s

opinion, it did not do so based upon a determination that Chief Judge Vanaskie was

mistaken, but because there was another, broader reason for dismissing Santana’s

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Lanham Act claim. (Def.’s Br. Supp. Mot. Dismiss at 8). 

Although we conclude that in his customary fashion Chief Judge Vanaskie

provided a comprehensive and well-reasoned analysis in the Santana Products

case, we also note that he applied the Noerr/Pennington doctrine in resolving a

motion for summary judgment, after an extensive factual record had been

developed. Although we may ultimately determine that the Noerr/Pennington

doctrine has applicability to this case, we are unable to make that determination at

this early stage and before a more developed record has been placed before the

Court. Defendant therefore reserves the right to re-assert its Noerr/Pennington

immunity argument when the factual record has been sufficiently developed in this

case. 

Accordingly, Defendant’s Motion to Dismiss is denied.

NOW, THEREFORE, IT IS ORDERED THAT:

1. Defendant’s Motion to Dismiss (doc. 22) is DENIED. 

s/ John E. Jones III

John E. Jones III

United States District Judge

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