The opinion of the court was delivered by: David G. Larimer United States District Judge
On October 27, 2010, Blom ASA ("Blom") filed in this Court a petition for injunctive relief pending arbitration ("petition") (Dkt. #1), along with a motion for a preliminary injunction (Dkt. #3). Blom and respondent Pictometry International Corp. ("Pictometry") are engaged in a dispute involving a contract between them concerning Pictometry's licensing to Blom of certain technology created by Pictometry. Pursuant to the terms of that contract, Blom has filed a request for arbitration with the International Chamber of Commerce ("ICC"), asserting claims for breach of contract against Pictometry.
Blom's motion in this Court seeks an order enjoining Pictometry from engaging in certain actions, and directing Pictometry to perform certain acts, pending the outcome of the parties' arbitration before the ICC. Pictometry has filed a cross-motion (Dkt. #18) preliminarily enjoining Blom from continuing to use, or transferring, Pictometry's technology, also pending arbitration. The
Court heard oral argument on the motions on November 12, 2010.*fn1
Blom is a Norwegian corporation that provides its customers with geographic mapping and imagery services. Pictometry, a Delaware corporation with its principal place of business in Rochester, New York, owns certain patented technology that can be used to create aerial mapping images. That technology uses five digital cameras mounted in an aircraft to create "oblique" ground images with a three-dimensional view. Pictometry has licensed that technology to a number of users, including Blom, as well as software that allows users to view and manipulate those oblique images.
In January 2009, Blom and Pictometry entered into an agreement ("License Agreement"), which consolidated three prior agreements that Pictometry had entered into in 2005 with Blom and two other corporations that Blom later acquired. Under that agreement, Pictometry granted to Blom an exclusive, non-transferable license to use Pictometry's technology within a defined geographic area in Europe. In exchange, Blom agreed to pay Pictometry license fees and royalties. The license was for a nine-year term, ending in 2018.
The License Agreement also provided that in the event of a dispute between the parties, the dispute would be settled by an arbitration panel in London, England, under the Rules of Conciliation and Arbitration of the ICC ("ICC Rules"). Dkt. #3-3 at 35. Under Article 23 of the ICC Rules, "as soon as the file has been transmitted to it, the Arbitral Tribunal may, at the request of a party, order any interim or conservatory measure it deems appropriate."*fn2
The License Agreement further provided that "[n]otwithstanding the foregoing, nothing in this license agreement shall be construed as precluding either Party from seeking injunctive relief from any U.S. court of competent jurisdiction in the State of New York in the event the nature of the dispute will or could give rise to irreparable injury." Id. Likewise, Article 23 of the ICC Rules provides that
[b]efore the file is transmitted to the Arbitral Tribunal, and in appropriate circumstances even thereafter, the parties may apply to any competent judicial authority for interim or conservatory measures. The application of a party to a judicial authority for such measures or for the implementation of any such measures ordered by an Arbitral Tribunal shall not be deemed to be an infringement or a waiver of the arbitration agreement and shall not affect the relevant powers reserved to the Arbitral Tribunal.
In February 2010, Blom entered into a "Cooperation Agreement" with Infoterra Limited, an English corporation that is described in the petition as "a leading provider of geographic image solutions," Petition ¶ 21, whereby they agreed to jointly combine and market each other's products within Europe, "to establish a consolidated European and global dataset by combining Infoterra's global high-resolution satellite imagery with Blom's extensive archive of airborne imagery and three-dimensional city models." Petition ¶ 23. It is this agreement that has caused the rift between Blom and Pictometry.
By letter dated October 18, 2010, Pictometry gave Blom written notice that Pictometry was terminating the License Agreement effective immediately, with no opportunity to cure. Dkt. #3-3 at 41. The letter stated that Blom's execution of the Cooperation Agreement with Infoterra had breached several provisions of the Licensing Agreement, including: § 2.1, granting Blom an exclusive non-transferable license, without the right to sublicense, Pictometry's technology in Europe; § 4.1, granting Blom a license to use Pictometry's licensed trademarks, without the right to sublicense; and § 14.3.1, prohibiting Blom from delegating its duties under the licensing agreement without the prior written consent of Pictometry.
Blom responded to Pictometry by letter the following day, insisting that Blom had "in no way been in breach" of the Licensing Agreement, and alleging that Pictometry's "unlawful termination" of the Licensing Agreement was itself a breach of that agreement. Dkt. #3-3 at 44, 45.
On October 25, 2010, Blom filed a request for arbitration with the ICC, alleging that Pictometry had wrongfully terminated the License Agreement. Blom filed its petition and injunction motion in this Court two days later. Blom seeks an order enjoining Pictometry from "dishonoring its contractual obligations and commitments" under the Licensing Agreement, "denying Blom's license, rights and privileges under the License Agreement," soliciting Blom's customers or making false disparaging statements about Blom, and making false ...