UNITED STATES DISTRICT COURT

DISTRICT OF NEW HAMPSHIRE

Alan F. Beane and

Mii Technologies, LLC,

Plaintiff and 

Nominal Plaintiff

v. Civil No. 06-cv-446-SM

Opinion No. 2008 DNH 007

Glenn L. Beane and

Glenn Beane, LLC,

Defendants and 

Third-Party Plaintiffs

v.

Alan F. Beane; Mii

Technologies, LLC;

and Sara E. Beane,

Counterdefendants and

Third-Party Defendants

O R D E R

Several motions to dismiss are currently pending in this

case. However, examination of plaintiffs’ amended verified

complaint (document no. 14) reveals significant jurisdictional

issues that ought to be addressed before turning to the merits. 

See Espinal-Dominguez v. Commw. of P.R., 352 F.3d 490, 495 (1st

Cir. 2003) (“Because federal courts are powerless to act in the

absence of subject matter jurisdiction, [they] have an unflagging

obligation to notice jurisdictional defects and to pursue them on

[their] own initiative.”) (citations omitted). 

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In paragraph 62 of their complaint, plaintiffs state that

jurisdiction is proper under 28 U.S.C. 1332 because “Plaintiff

Alan Beane is a resident of a different state than the other

Parties to this Action.” But, in paragraph 63, plaintiffs state

that “[t]he Defendants and Plaintiff Mii are residents of the

State of New Hampshire.” The co-residence of one plaintiff and

all defendants in the same state defeats diversity jurisdiction

under 28 U.S.C. § 1332. “The diversity requirement of § 1332

must be complete. In cases involving multiple plaintiffs or

defendants, the presence of but one nondiverse party divests the

district court of original jurisdiction over the entire action.” 

In re Olympic Mills Corp., 477 F.3d 1, 6 (1st Cir. 2007) (citing

Strawbridge v. Curtiss, 7 U.S. (3 Cranch) 267, 267 (1806)). 

Without complete diversity, this court has subject matter

jurisdiction only if plaintiff has raised a federal question. 

See 28 U.S.C. §§ 1331. The only potential federal question

appears in Count IX of plaintiffs’ amended complaint, captioned

“Lanham Act § 43(a) Unfair Competition/False Designation of

Origin.” 

In Count IX, plaintiffs assert that “Glenn Beane

misrepresented that he is the source of the press technology and

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1 Regarding the actual ownership of the intellectual

property, plaintiffs allege: “Glenn Beane was named as an

inventor on all patents and patent applications related to the

press technology developed by Mii and, prior to 2004, executed

formal assignments of his rights in all such inventions to

Materials [Innovation, Inc.], who has exclusively licensed those

patents to Mii.” (Am. Compl. ¶ 12.)

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that he owns the intellectual property relating thereto.” (Am.

Compl. ¶ 112.) That assertion appears to be based upon the

following factual allegation: “During the course of negotiations

[between Mii and Lovejoy], Lovejoy confirmed that it had entered

into an agreement with Glenn Beane and that Glenn Beane had

represented that he owned all the intellectual property used in

the press systems and held clear title thereto.”1 (Id. ¶ 55.) 

According to plaintiffs, “Glenn Beane’s misrepresentation that he

is the source of the press technology and that he owns the

intellectual property relating thereto constitutes a false

designation of origin that is an unfair and deceptive trade

practice in violation of 15 U.S.C. § 1125(a).” (Id. ¶ 113.)

Plaintiffs’ theory of Lanham Act liability is untenable. In

Digigan, Inc. v. iValidate, Inc., No. 02 Civ. 420(RCC), 2004 WL

203010 (S.D.N.Y. Feb. 3, 2004), the district court explained:

The Amended Complaint alleges that Defendants

violated section 43(a) of the Lanham Act by making

false and misleading representations concerning

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Defendants’ rights in one of the patents. (Compl. ¶

36.) These misrepresentations allegedly were made in

the course of Defendants’ website advertising of

products protected by the patent. (Id.) The gravamen

of Plaintiff’s claim is that Defendants, in marketing

their products, falsely stated that they owned the

patent that Plaintiff received from iValidate under the

security agreement. Thus, the alleged

misrepresentations concerned the patent, not any

products or services. A patent is not a “good or

service” as those terms are used in the Lanham Act. 

See Hans-Jurgen Laube & Oxidwerk HJL AG v. KM Europa

Metal AG, No. 96 Civ. 8147(PKL), 1998 WL 148427, at *2

(S.D.N.Y. Mar. 27, 1998) (citing Pro-Mold & Tool Co. v.

Great Lakes Plastics, Inc., 75 F.3d 1568, 1574-75 (Fed.

Cir. 1996)).

In Hans-Jurgen, the plaintiffs alleged that the

defendant violated section 43(a) when it falsely

claimed ownership of a patent. Id. Judge Leisure

concluded that the cause of action arose out of

misrepresentations regarding ownership of the patent,

and noted that the Federal Circuit has held that a

patent is not a “good or service” under section 43(a)

of the Lanham Act. See id.

Plaintiff responds that its Lanham Act claim is

valid because Defendants advertised “products embodying

technology protected by the Patent.” (Compl. ¶ 36.)

However, drawing all reasonable inferences in

Plaintiff’s favor, the Amended Complaint does not

allege any “false or misleading representation of fact”

“in connection with any goods or services.” See 15

U.S.C. § 1125. The patent, and not any product or

service, is at the center of the controversy between

the parties.

First, the only misrepresentations alleged

occurred when Defendants claimed to own the patent or

to be licensees of the patent. (See Compl. ¶ 35.)

Second, the reason that Plaintiff claims the statements

were false was that it, and not Defendants, actually

own the patent. (See id. ¶ 37.) Finally, Plaintiff’s

vague reference to Defendants’ “products embodying

technology” does not allege the necessary connection

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between the misrepresentations of fact and goods or

services. Even paragraph 36 of the Amended Complaint,

in which Plaintiff mentions Defendants’ products, only

alleges misrepresentations in connection with

Defendants’ rights to the patent, not with the products

themselves. Thus, the Court concludes that Plaintiff

has alleged misrepresentations of fact in connection

with a patent, not goods or services. Therefore, the

Lanham Act claim is dismissed.

Id. at *5.

Conclusion

The persuasive reasoning of Digigan, applied to the facts of

this case, would require dismissal of plaintiffs’ Lanham Act

claim, which is the sole federal question presented in the

amended complaint. Since the parties have not identified the

issue and have not had an opportunity to address it, plaintiffs

may either seek voluntary dismissal of their complaint, or show

cause on or before February 10, 2008, why their Lanham Act claim

should not be dismissed, and why, if it is, this court should

exercise supplemental jurisdiction over their state law claims. 

(The prevailing rule is that “[w]hen federal claims are dismissed

before trial, state claims are normally dismissed as well.” 

McInnis-Misenor v. Me. Med. Ctr., 319 F.3d 63, 74 (1st Cir. 2003)

(citing Camelio v. Am. Fed’n, 137 F.3d 666, 672 (1st Cir.

1998))). In the meantime, the pending motions to dismiss for

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lack of standing, etc. (document nos. 15, 16, 17, 44, and 46) are

denied, without prejudice.

SO ORDERED.

____________________________

Steven J. McAuliffe

Chief Judge

January 15, 2008

cc: William S. Gannon, Esq.

W.E. Whittington, Esq.

Michael J. Persson, Esq.

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