LegalForce RAPC Worldwide P.C. v. Swyers ( 2019 )

1 2 3 4 IN THE UNITED STATES DISTRICT COURT 5 FOR THE NORTHERN DISTRICT OF CALIFORNIA 6 7 LEGALFORCE RAPC WORLDWIDE Case No. 17-cv-07318-MMC P.C., 8 Plaintiff, ORDER DENYING PLAINTIFF'S 9 MOTION FOR PARTIAL SUMMARY v. JUDGMENT; VACATING HEARING 10 TTC BUSINESS SOLUTIONS, LLC, Re: Dkt. Nos. 131, 134 11 Defendant. 12 13 Before the Court is plaintiff LegalForce RAPC Worldwide P.C.'s "Motion for Partial 14 Summary Judgment on Its Third Claim for Relief for California Unfair Competition," filed 15 November 22, 2019.1 Defendant TTC Business Solutions, LLC has not filed an 16 opposition or other response to the motion. Having read and considered the papers filed 17 in support of the motion, the Court finds the matter appropriate for determination thereon, 18 VACATES the hearing scheduled for December 27, 2019, and rules as follows. 19 In the operative complaint, the Second Amended Complaint ("SAC"), plaintiff 20 alleges defendant, a company with offices located in North Carolina (see SAC ¶ 11), has 21 engaged in the "unauthorized practice of law" (see SAC ¶ 29), in violation of § 6125 of 22 the California Business & Professions Code, which provides that "[n]o person shall 23 practice law in California unless the person is an active member of the State Bar," see 24 Cal. Bus. & Prof. Code § 6125, and in violation of § 6126, pursuant to which a violation of 25 § 6125 is a "misdemeanor," see Cal. Bus. & Prof. Code § 6126(a). Plaintiff further 26 1On November 22, 2019, plaintiff served the motion on defendant and filed a 27 redacted form of the motion in the public record. On December 6, 2019, plaintiff, upon 1 alleges that, by violating § 6125 and § 6126, defendant has, in turn, "violated the unlawful 2 prong" of § 17200 of the California Business & Professions Code. (See SAC ¶ 75.) 3 By the instant motion, plaintiff seeks summary judgment on its claim that 4 defendant engaged in unlawful conduct in violation of § 17200. In particular, plaintiff 5 argues, defendant's "preparing substantive responses to office actions"2 constitutes the 6 unauthorized practice of law (see Pl.'s Mem. of P. & A. at 6:12-14), and that, 7 consequently, plaintiff is entitled to an injunction that would permanently enjoin defendant 8 from engaging in said activity (see id. at 7:12-13). 9 Pursuant to Rule 56 of the Federal Rules of Civil Procedure, a "court shall grant 10 summary judgment if the movant shows that there is no genuine issue as to any material 11 fact and that the movant is entitled to judgment as a matter of law." See Fed. R. Civ. P. 12 56(a); see also Martinez v. Stanford, 323 F.3d 1178, 1183 (9th Cir. 2003) (holding 13 movant must make such showing "regardless of whether" non-movant files opposition). 14 Where, as here, the moving party "bears the burden of proof at trial, [it] must come 15 forward with evidence which would entitle [it] to a directed verdict if the evidence went 16 uncontroverted at trial." See Houghton v. South, 965 F.2d 1532, 1536 (9th Cir. 1992) 17 (internal citation and quotation omitted); see also Fontenot v. Upjohn, 780 F.2d 1190, 18 1194 (5th Cir. 1986) (holding where plaintiff moves for summary judgment on issue upon 19 which it bears burden of proof, it "must establish beyond peradventure all of the essential 20 elements of the claim") (emphasis in original). 21 To be entitled to injunctive relief under § 17200, a plaintiff must show the 22 defendant has engaged in an "unlawful, unfair, or fraudulent business act or practice," 23 see Cal. Bus. & Prof. Code § 17200, and that the plaintiff "has suffered injury in fact and 24 has lost money or property as a result of the unfair competition," see Cal. Bus. & Prof. 25 Code § 17204. 26 2As described by plaintiff, an "office action is a letter issued by the USPTO refusing 27 registration of a trademark application based on one or more substantive legal grounds." 1 Here, assuming defendant has prepared substantive responses to office actions 2 and further assuming said activity constitutes the unauthorized practice of law, plaintiff's 3 claim nonetheless fails as plaintiff has offered no evidence to support a finding that any of 4 defendant's officers or employees engaged in such activity in California, or that any of 5 them prepared such responses for California residents. See Birbrower, Montalbano, 6 Condon & Frank v. Superior Court, 17 Cal. 4th 119, 128 (1998) (holding, for purposes of 7 § 6126, "the practice of law 'in California' entails sufficient contact with [a] California client 8 to render the nature of the legal service a clear legal representation"; noting "primary 9 inquiry is whether the unlicensed lawyer engaged in sufficient activities in the state, or 10 created a continuing relationship with the California client that included legal duties and 11 obligations"); see also Norwest Mortgage, Inc. v. Superior Court, 72 Cal. App. 4th 214, 12 222 (1999) (holding § 17200 "was not intended to regulate conduct unconnected to 13 California"). 14 In its motion, plaintiff asserts that, in addition to alleged violations of § 6125 and 15 § 6126, its § 17200 claim is based on defendant's alleged violations of 37 C.F.R. § 11.14, 16 which provides that "[i]ndividuals who are not attorneys are not recognized to practice 17 before the [USPTO] in trademark and other non-patent matters." See 37 C.F.R. 18 § 11.14(b). A claim based on § 11.14, however, is not pleaded in the SAC. Moreover, to 19 the extent plaintiff may be arguing such claim is implicitly included therein, plaintiff offers 20 no evidence to support a finding that defendant's preparation of substantive responses to 21 office actions has any connection to California, and, as noted, § 17200 does not regulate 22 conduct "unconnected to California." See Norwest, 72 Cal. App. 4th at 222. 23 In addition, even assuming defendant has engaged in conduct subject to 24 regulation under California law, specifically, the unauthorized practice of law in a manner 25 connected to California, plaintiff has failed to offer evidence to demonstrate it has lost 26 money or property as a result thereof, and, consequently, has failed to show it is entitled 27 to relief under § 17200. 1 to California that has caused plaintiff to lose money or property, plaintiff has failed to 2 explain why issuance of a permanent injunction is warranted, let alone offer evidence in 3 || support thereof. See eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006) 4 || (holding plaintiff seeking permanent injunction must show, inter alia, that it "suffered an 5 || irreparable injury," that other remedies are "inadequate," and that, "considering the 6 || balance of hardships between the plaintiff and defendant, a remedy in equity is 7 || warranted"). 8 Accordingly, plaintiff's motion is hereby DENIED. 9 IT IS SO ORDERED. 10 11 Dated: December 17, 2019 , . INE M. CHESNEY 12 United States District Judge — 13 16 17 18 19 20 21 22 23 24 25 26 27 28