Employment Law Group, P.C. v. San Diego Employment Law Group

CourtDistrict Court, District of Columbia
DecidedJanuary 4, 2022
DocketCivil Action No. 2020-1852
StatusPublished

This text of Employment Law Group, P.C. v. San Diego Employment Law Group (Employment Law Group, P.C. v. San Diego Employment Law Group) is published on Counsel Stack Legal Research, covering District Court, District of Columbia primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Employment Law Group, P.C. v. San Diego Employment Law Group, (D.D.C. 2022).

Opinion

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA

THE EMPLOYMENT LAW GROUP, P.C., Plaintiff, v. Civil Action No. 20-1852 (JDB)

DENNIS BRADY d/b/a SAN DIEGO EMPLOYMENT LAW GROUP, Defendant.

MEMORANDUM OPINION

Before the Court is a motion to dismiss filed by defendant Dennis Brady d/b/a San Diego

Employment Law Group. Brady raises a variety of grounds for dismissing plaintiff The

Employment Law Group, P.C.’s complaint, including that the Court lacks personal jurisdiction

over him. For the reasons stated below, the Court agrees: this Court does not possess personal

jurisdiction over Brady in the present matter. Rather than dismiss, however, the Court will transfer

this case to the Southern District of California pursuant to 28 U.S.C. § 1406(a).

Background

The Employment Law Group, P.C., (“TELG”) is a legal services provider headquartered

in Washington, D.C., specializing in (as one might expect) employment law matters such as

whistleblower representation and workplace discrimination. See Compl. [ECF No. 3-1] ¶¶ 2, 11;

Compl. Ex. 3 [ECF No. 1-2] at 8–9; 1 see also Mem. in Opp’n to Def.’s Mot. to Dismiss [ECF No.

27] (“Pl.’s Opp’n”) at 1. TELG has used that name since 2000, and it registered trademarks on

1 TELG’s exhibits were filed in one combined document, docketed at ECF No. 1-2, which is not internally paginated. To aid in finding the relevant exhibit, the Court will include the page numbers generated by the ECF system and located in the top right corner of each page.

1 the name and an associated logo in 2008. Compl. ¶ 7; Compl. Exs. 1 & 2 at 2, 5. TELG alleges

that, “[a]s a result of [its] expenditures and efforts, [its mark] has come to signify the high quality

of the services designated by the mark, and has acquired incalculable distinction, reputation, and

goodwill belonging exclusively to TELG.” Compl. ¶ 13.

Defendant Dennis Brady is an attorney in San Diego, California, and one of his several

trade names is “San Diego Employment Law Group” (“SDELG”). See, e.g., Compl. Ex. 4 at 12–

13 (listing other names under which Brady conducts business); Compl. Ex. 5 at 15–16 (screenshots

of the SDELG website). Brady registered the SDELG name with the state of California in

November 2017, many years after TELG registered its trademark. Compl. Ex. 4 at 12–13. Under

the SDELG moniker, Brady seeks out clients in the San Diego area and the Imperial Valley for a

variety of employment law matters, Mem. of P. & A. in Supp of Def.’s Mot. to Dismiss [ECF No.

25-1] (“Def.’s Mot.”) at 1 & n.2, including (like TELG) “wrongful termination, discrimination,

sexual harassment, wage and hour claims, [and] whistleblowing,” Compl. Ex. 5 at 15.

On June 9, 2020, TELG’s attorneys sent Brady a cease-and-desist letter, informing him

that the SDELG name “infringes TELG’s rights and is likely to cause confusion with TELG’s

marks due to the phonetic and visual similarity of these terms, as well as the fact[] that you are

offering identical or similar legal services through the same market channels in overlapping

geographic markets.” Compl. Ex. 12 at 57–58. The letter demanded that Brady stop using the

name while also indicating that TELG “prefers not to resort to the courts[] and is therefore open

to an amicable settlement of its claims.” Id. at 58. Brady responded with a letter of his own, dated

June 15, 2020 and delivered to TELG’s counsel in North Carolina. See Compl. Ex. 6 (the “June

15 Letter”) at 19–21. In that letter, Brady denied that any “reasonable prospective client is likely

to confuse ‘San Diego Employment Law Group’ with [TELG’s] trademarks,” id. at 20–21; he

2 claimed that TELG had “waived its opportunity to bring a trademark enforcement action” by

failing to object to newspaper notices regarding Brady’s use of the SDELG name, id. at 20; and he

accused TELG of violating various state laws and bar rules, infractions which, Brady claimed, call

into question the validity of TELG’s trademark and/or render the firm unauthorized to practice law

in California, id. at 19–20. He also suggested that he might file a class action lawsuit against

TELG, stating that he “know[s] many California employment law attorneys who will not look

kindly upon a remote, out of state law firm engaging in the unauthorized practice of law to invade

our client base.” Id. at 21.

On July 9, 2020, TELG brought the present suit against Brady, 2 alleging willful

infringement of its trademark and unfair competition, both in violation of the Lanham Act, 15

U.S.C. §§ 1114, 1125. See Compl. ¶¶ 35–52. The following month, Brady sought the Court’s

permission to proceed pro se, explaining that he is the sole proprietor of SDELG. See generally

Def.’s Mot. for Leave to Represent on a Pro Se Basis SDELG [ECF No. 10]. The Court granted

this motion six days later, Min. Order, Aug. 26, 2020, but TELG promptly moved for

reconsideration, explaining that it opposed Brady’s request on the grounds that he had not

adequately demonstrated that SDELG was a sole proprietorship and that his unprofessional

conduct up to that point “provides significant concern and an independent basis for the Court not

to allow the pro se motion,” see Mem. in Supp. of Pl.’s Mot. for Recons. of the Ct.’s Order Granting

Dennis Brady’s Mot. for Leave to Appear Pro Se [ECF No. 14-1] at 1–2. The Court eventually

denied TELG’s motion for reconsideration and permitted Brady to proceed pro se, though not

2 The named defendant in this suit was originally San Diego Law Employment Group in its corporate capacity, but Brady later averred to the Court’s satisfaction that SDELG is in fact Brady’s sole proprietorship. As a consequence, alongside its order permitting Brady to proceed pro se in this matter, the Court ordered that “Dennis Brady d/b/a San Diego Employment Law Group” be substituted as the defendant in this action. See Order, Sept. 2, 2021 [ECF No. 23] at 11.

3 before expressing concern about Brady’s conduct and admonishing both parties to “proceed

amicably, professionally, and with redoubled attention to all relevant rules and ethical duties.”

Order, Sept. 2, 2021, at 10.

Brady filed the present motion on September 23, 2021. He moves for dismissal on three

different grounds: (1) the Court lacks personal jurisdiction over him, Def.’s Mot. at 5–8; (2) venue

is improper in this District, id. at 8–11; and (3) TELG’s complaint fails to state a claim upon which

relief can be granted, since the SDELG name does not plausibly infringe on TELG’s mark at issue,

id. at 12–18, and, according to Brady, “plaintiff is ineligible to practice law in California,” id. at

15 (cleaned up). He also asks, in the alternative, that the Court transfer the case to the Southern

District of California under 28 U.S.C. § 1404(a). Id. at 18–22.

TELG, naturally, opposes every aspect of Brady’s motion, contending that the Court does

have personal jurisdiction over Brady, asserting that venue is proper, and vigorously denying

Brady’s claims that TELG is not authorized to practice law in California. See Pl.’s Opp’n at 5–

19. In the alternative, TELG asks that, should the Court identify a deficiency in personal

jurisdiction or venue, it transfer the case to the Southern District of California under 28 U.S.C.

§ 1406(a). Pl.’s Opp’n at 19–20.

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