# The Maher Law Firm, P.A. v. Daniel J. Newlin, P.A.

> District Court, M.D. Florida · August 16, 2019

URL: https://www.frixlaw.com/law-library/cases/10103467

## Case

- **Court:** District Court, M.D. Florida
- **Decided:** August 16, 2019
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

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## Opinion text

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
ORLANDO DIVISION

THE MAHER LAW FIRM, P.A.,

Plaintiff,

v. Case No. 6:19-cv-407-Orl-37EJK

DANIEL J. NEWLIN, P.A.,

Defendant.

ORDER
Before the Court is Defendant’s motion to dismiss for lack of subject matter
jurisdiction. (Doc. 14 (“Motion”).) Plaintiff responded. (Doc. 15.) The Motion is denied.
I. BACKGROUND
This case involves an anticipated coercive action between two local law firms.
(Doc. 6, ¶¶ 1–14.) Plaintiff seeks declaratory relief that its advertisements on Google Ads
using keywords does not infringe with Defendant’s trademark, as Defendant has alleged
and threatened litigation over. (See id. ¶¶ 6–14.) Plaintiff alleges this Court has subject
matter jurisdiction under 28 U.S.C. § 1331 because this declaratory judgment action arises
under the Lanham Act, 17 U.S.C. § 1051. (Id. ¶ 3.) Defendant now seeks dismissal for lack
of subject matter jurisdiction. (Doc. 14.) With Plaintiff’s response (Doc. 15), the matter is
ripe.
II. LEGAL STANDARDS
Rule 12(b)(1) attacks on subject matter jurisdiction may be facial or factual.
Carmichael v. Kellogg, Brown & Root Servs., Inc., 572 F.3d 1271, 1279 (11th Cir. 2009). For
facial attacks, the Court accepts the complaint’s allegations as true. Stalley ex rel. U.S. v.

Orlando Reg’l Healthcare Sys. Inc., 524 F.3d 1229, 1232 (11th Cir. 2008). Factual attacks, in
contrast, allow a court “to consider extrinsic evidence such as deposition testimony and
affidavits.” Carmichael, 572 F.3d at 1279. Factual attacks place the burden on the plaintiff
to show that jurisdiction exists. OSI, Inc. v. United States, 285 F.3d 947, 951 (11th Cir. 2002).
III. ANALYSIS
Defendant moves to dismiss for lack of subject matter jurisdiction, arguing the

underlying threatened coercive action consists entirely of state-law claims so federal
jurisdiction is lacking. (Doc. 14, pp. 2–6.) In response, Plaintiff points out that the facts as
pled in the Amended Complaint support a claim under the Lanham Act for service mark
infringement, and because Defendant’s anticipated coercive action rests on the same
facts, this Court has subject matter jurisdiction. (Doc. 15, pp. 4–7.) Plaintiff is right.

In Household Bank v. JFS Group, 320 F.3d 1249 (11th Cir. 2003), the U.S. Court of
Appeals for the Eleventh Circuit concluded “that federal-question jurisdiction exists in a
declaratory judgment action if the plaintiff has alleged facts in a well-pleaded complaint
which demonstrate that the defendant could file a coercive action arising under federal
law.” Id. at 1251. Where, as here, the plaintiff seeks relief under the Declaratory Judgment

Act, 28 U.S.C. § 2201(a), since that Act does not provide an independent basis for federal
jurisdiction, the plaintiff must allege facts showing the controversy is within the court’s
original jurisdiction. Id. at 1253. To that end, the Amended Complaint points to the
Lanham Act, 17 U.S.C. § 1051, as Plaintiff seeks a declaration that its conduct does not
constitute trademark infringement and unfair competition under 15 U.S.C. §§ 1114(a),
1125, and pleaded those claims accordingly. (Doc. 6, [] 3-5, 10-23; Doc. 15, pp. 4-6.) This
demonstrates that Defendant, even though its anticipated coercive action presented state-
law claims alone, could allege a coercive action under federal law. See Household Bank, 320
F.3d at 1259. Thus, this Court’s subject matter jurisdiction under 28 U.S.C. §§ 1331 and
1338 over Plaintiff's Lanham Act claim is not defeated by the type of claim Defendant
alleged in its threatened coercive action. See id. The Motion is denied.
IV. CONCLUSION
Accordingly, it is hereby ORDERED AND ADJUDGED that Defendant’s Motion
to Dismiss for Lack of Subject Matter Jurisdiction (Doc. 14) is DENIED.
DONE AND ORDERED in Chambers in Orlando, Florida, on August 16, 2019.

Yj,
ROY B. DALTON JR:
United States District Judge

Copies to:
Counsel of Record

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10103467. Public record. Not legal advice.