Hayes v. FM Broadcast Station Wett

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA

ALAN J. HAYES,
doing business as WETT,

Plaintiff,
Civil Action 12-740 (RC)
v.

FM BROADCAST STATION
WETT(FM), et al.,

Defendants.

MEMORANDUM OPINION

The plaintiff in this case brings suit against a radio station whose call sign, he claims,

infringes on his trademarks. There are difficult questions regarding the viability of that claim

and this court’s subject matter jurisdiction to hear it, but the plaintiff has not established the

court’s personal jurisdiction over the defendants. The court will therefore dismiss his case rather

than reaching those larger issues.

I. BACKGROUND

Alan Hayes, the plaintiff in this case, alleges that he owns, uses, and has registered a U.S.

trademark for “WETT” in the class of telecommunications (that is, international class 38). Am.

Compl. ¶¶ 9–11. He also claims ownership of a common-law mark for “WETT” for Internet

radio broadcasting and radio broadcasting. Id. ¶ 8. Mr. Hayes has his principal place of business

in Maryland. Id. ¶ 1.

Mr. Hayes has brought suit against the Withers Broadcasting Company of Bridgeport,

LLC (“Withers”). He alleges that Withers, which is based in Bridgeport, West Virginia, owns a

radio station with the call letters “WETT,” which broadcasts out of Bridgeport at 104.1 FM. Id.
¶¶ 3–4, 25–29. Mr. Hayes has named that radio station as a co-defendant. According to the

complaint, Withers has registered the “WETT” call sign with the Federal Communications

Commission, and has employed a lawyer based in Washington, D.C. to conduct its business with

the FCC. Id. ¶¶ 15–22. Mr. Hayes also alleges that Withers operates a website for the radio

station, from which users can communicate with station staff, “access Morning Show Prizes,”

and “purchase discount tickets.” Id. ¶¶ 28–29. That website is, of course, accessible in the

District of Columbia.

Mr. Hayes alleges that Withers and the radio station that it owns have violated his rights

in his “WETT” trademark under both the Lanham Act, 15 U.S.C. §§ 1051 et seq., and the

common law. The defendants have moved to dismiss the complaint for lack of personal

jurisdiction and subject matter jurisdiction, improper venue, and failure to state a claim on which

relief can be granted. Because the court finds that it lacks personal jurisdiction over the

defendants, it need not reach their other arguments.

II. LEGAL STANDARD

The plaintiff bears the burden of establishing personal jurisdiction over each defendant.

Crane v. N.Y. Zoological Soc’y, 894 F.2d 454, 456 (D.C. Cir. 1990). On a motion to dismiss for

lack of personal jurisdiction, a court may consider evidence outside of the pleadings. See Mwani

v. Bin Laden, 417 F.3d 1, 7 (D.C. Cir. 2005). Although the court must resolve any factual

discrepancies in favor of the plaintiff, Crane, 894 F.2d at 456, “[b]are allegations and conclusory

statements are insufficient.” Johns v. Newsmax Media, Inc., 2012 WL 3637147, at *2 (D.D.C.

Aug. 24, 2012); see Second Amendment Found. v. U.S. Conference of Mayors, 274 F.3d 521,

524 (D.C. Cir. 2001).

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 III. ANALYSIS

A. Personal Jurisdiction

“A personal jurisdiction analysis requires that a court determine whether jurisdiction over

a party is proper under the applicable long-arm statute and whether it accords with the demands

of due process.” United States v. Ferrara, 54 F.3d 825, 828 (D.C. Cir. 1995); accord GTE New

Media Servs. Inc. v. BellSouth Corp., 199 F.3d 1343, 1347 (D.C. Cir. 2000). When a federal

question case is brought in this court and “there is no applicable federal long-arm statute,

jurisdiction . . . must be determined by reference to District of Columbia law.” Ferrara, 54 F.3d

at 828; accord GTE New Media, 199 F.3d at 1347; Edmond v. U.S. Postal Serv. Gen. Counsel,

949 F.2d 415, 424 (D.C. Cir. 1991).

The plaintiff argues that the court can exercise personal jurisdiction by virtue of D.C.

Code §§ 13-423(a)(1), (a)(3), and (a)(4). As relevant here, the statute provides:

(a) A District of Columbia court may exercise personal jurisdiction over a
person, who acts directly or by an agent, as to a claim for relief arising from
the person’s—
(1) transacting any business in the District of Columbia;
...
(3) causing tortious injury in the District of Columbia by an act or
omission in the District of Columbia;
(4) causing tortious injury in the District of Columbia by an act or
omission outside the District of Columbia if he regularly does or
solicits business, engages in any other persistent course of conduct,
or derives substantial revenue from goods used or consumed, or
services rendered, in the District of Columbia[.]
(b) When jurisdiction over a person is based solely upon this section, only a
claim for relief arising from acts enumerated in this section may be asserted
against him.

Only “specific jurisdiction” is authorized by this section, see Koteen v. Bermuda Cablevision,

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Ltd., 913 F.2d 973, 974–75 (D.C. Cir. 1990) (per curiam); Wills v. Wills, 655 F.2d 1333, 1336

(D.C. Cir. 1981), and the plaintiff does not argue that the court may exercise “general

jurisdiction” under D.C. Code § 13-334(a), which provides for such jurisdiction over a foreign

corporation “doing business in the District.”

i. Government Contacts

Mr. Hayes first argues that the court can exercise personal jurisdiction over the

defendants by virtue of their D.C. lawyer’s interactions with the Federal Communications

Commission. The defendants do not dispute that submitting reports and applications to the FCC

is “transacting business” within the meaning of D.C. Code § 13-423(a)(1). Instead they argue

that business transacted with the federal government generally does not give rise to personal

jurisdiction in the courts of the capital. Because of “the ‘unique character of the District as the

seat of national government and . . . the correlative need for unfettered access to federal

departments and agencies for the entire national citizenry,’” the District of Columbia Court of

Appeals has “held that ‘entry into the District of Columbia by nonresidents for the purpose of

contacting federal governmental agencies is not a basis for the assertion of in personam

jurisdiction.’” Companhia Brasileira Carbureto de Calcio—CBCC v. Applied Indus. Materials

Corp., 35 A.3d 1127, 1131 (D.C. 2012) (quoting Envtl. Research Int’l, Inc. v. Lockwood Greene

Eng’rs, Inc., 355 A.2d 808, 813 (D.C. 1976) (en banc)). Although this court has said that

“[s]tated simply, a party’s contacts with government agencies do not enter the jurisdictional

calculus,” LG Display Co. Ltd. v. Obayashi Seikou Co., Ltd., 2013 WL 314760, at *6 (D.D.C.

Jan. 28, 2013), there may be complexities in the government contacts doctrine that are not

captured by that simple formulation. The D.C. Circuit and the D.C. Court of Appeals have both

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noted the uncertainty surrounding the government contacts exception to personal jurisdiction.

See Companhia Brasileira Carbureto de Calicio v. Applied Indus. Materials Corp., 640 F.3d

369, 371 (D.C. Cir. 2011) (“The scope of the government contacts exception is unsettled . . .

under the D.C. Court of Appeals’ precedents.”); Companhia Brasileira, 35 A.3d at 1133 n.5.1 It

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For a discussion of the history of the government contacts principle, which began as an
interpretation of an earlier version of the D.C. long-arm statute, see Lex Tex Ltd., Inc. v.
Skillman, 579 A.2d 244, 246–47 (D.C. 1990), and Rose v. Silver, 394 A.2d 1368, 1373 (D.C.
1978). The long-arm statute was amended in 1970. Pub. L. No. 91-358, § 132(a), 84 Stat. 549.
In Environmental Research, the en banc D.C. Court of Appeals held that the government
contacts principle survived that amendment. 355 A.2d at 813. The court said that the doctrine
“finds its source in the unique character of the District as the seat of national government and in
the correlative need for unfettered access to federal departments and agencies for the entire
national citizenry,” explaining that “[t]o permit our local courts to assert personal jurisdiction
over nonresidents whose sole contact with the District consists of dealing with a federal
instrumentality not only would pose a threat to free public participation in government, but also
would threaten to convert the District of Columbia into a national judicial forum.” Id. The court
suggested that some version of the government contacts principle was required by the First
Amendment. Id. at 813 n.11.

Two years later, a panel of the D.C. Court of Appeals perceived an unresolved tension in
its Environmental Research opinion. The Rose court suggested two possible interpretations of
the government contacts principle. On the one hand, the doctrine could be a gloss on
constitutional due process. If that were so, it would simply mean that when government contacts
were not “minimum contacts” sufficient to satisfy the Fifth Amendment, then personal
jurisdiction was unavailable. On the other hand, the government contacts principle might
provide an exemption from jurisdiction in some cases where “minimum contacts” had been
established. 394 A.2d at 1373. The Rose court concluded that such an exemption does exist,
that “the First Amendment provides the only principled basis” for it, and that to invoke the
government contacts principle in a case where minimum contacts had otherwise been established
would therefore require a defendant to show “that long-arm jurisdiction would violate the First
Amendment.” Id. at 1374. In doing so it seemed to narrow the scope of the en banc decision in
Environmental Research, which had said that “jurisdiction over nonresidents” could not be based
on their “dealing[s] with a federal instrumentality.” 355 A.2d at 813. The Rose court suggested
that such dealings could give rise to jurisdiction if they established minimum contacts and were
not protected by the First Amendment. Two judges dissented from the denial of the petition to
hear Rose en banc, with Judge Harris (who wrote the opinion in Environmental Research) stating
that “in my view, the division opinion [in Rose] is directly in conflict with Environmental
Research (as well as with all other relevant authority).” Rose v. Silver, 398 A.2d 787, 787 (D.C.
1979) (Harris, J., dissenting).

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is, however, clear that the doctrine at least precludes personal jurisdiction that would be

predicated on the submission of non-fraudulent petitions (within the meaning of the First

Amendment) to the federal government. See Companhia Brasileira, 35 A.3d at 1132–35.

Mr. Hayes does not argue that the defendants were doing anything other than petitioning

the FCC within the meaning of the First Amendment, nor that those petitions were fraudulent.

Instead, he asserts that there is an “agent exception” to the government contacts doctrine—that

hiring an agent to petition the federal government subjects one to jurisdiction in the District,

even if personally petitioning would not. That argument is contradicted by the plain text of the

long-arm statute, which applies equally to one “who acts directly or by an agent.” D.C. Code

§ 13-423(a). But Mr. Hayes insists that Rose v. Silver, 394 A.2d 1368 (D.C. 1978), establishes

the “agent exception” that he describes. To parse his argument requires a brief review of the two

cases from which the modern government contacts doctrine emerged.

In Environmental Research, a District of Columbia consulting firm brought suit against

The conflict between Rose and Environmental Research, which was first noted by the
D.C. Circuit in 1983, has never been fully resolved. See Naartex Consulting Corp. v. Watt, 722
F.2d 779, 786 (D.C. Cir. 1983) (stating that, since Rose “the court has failed to clarify any
possible conflict” between the two opinions). The D.C. Circuit has twice certified a question
about the scope of the government contacts principle rather than attempt to apply the doctrine
itself. See Companhia Brasileira, 640 F.3d at 373 (certifying question); Lex Tex, 579 A.2d at
248–49 (responding to certified question). When it did so most recently, the Circuit explained
that the apparent holding in Environmental Research—“ that entry into the District of Columbia
by nonresidents for the purpose of contacting federal governmental agencies is not a basis for the
assertion of in personam jurisdiction,” Companhia Brasileira, 640 F.3d at 372 (quoting
Environmental Research, 355 A.2d at 813)—was not “the end of the case law,” because the Rose
“panel may have limited the government contacts exception to cases in which the contacts with
the federal government were an exercise of First Amendment rights,” id. In response, the D.C.
Court of Appeals acknowledged that Rose had “generated controversy and uncertainty,” but
“d[id] not attempt to resolve that uncertainty.” Companhia Brasileira, 35 A.3d at 1133 n.5
(citations omitted). Instead it explicitly left open the question of whether “rationales apart from
the First Amendment support the government contacts doctrine.” Id.

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two foreign corporations that had hired it to help prepare an application to be submitted to the

United States Environmental Protection Agency. The D.C. Court of Appeals concluded that the

consulting firm’s activities in the District could not form the basis for personal jurisdiction, in

part because the firm was an independent contractor rather than an agent of its clients. See

Envt’l Research, 355 A.2d at 812 n.7. The court then turned to the clients’ other contacts with

the District, which consisted of visits by officials of the client corporations to consult with EPA

staff. The court held that those “government contacts” did not support personal jurisdiction,

either. Id. at 813.

In Rose, a Colorado lawyer brought suit against his clients, a Connecticut corporation and

its president. The clients had hired the lawyer to represent them before the Food and Drug

Administration, authorizing him to rent an office and an apartment at the company’s expense.

He moved to the District of Columbia and did so. He was apparently successful in persuading

the FDA to adopt the company’s position. After the representation had ended, there was a

dispute over legal fees. The lawyer sued his clients in the Superior Court for the District of

Columbia, which dismissed the case for lack of personal jurisdiction. Rose, 394 A.2d at 1369.

The D.C. Court of Appeals reversed, explaining that, unlike the consulting firm in

Environmental Research, the lawyer who brought suit in Rose was the agent of his clients, and

that the clients had therefore been vicariously “transacting business” in the District by means of

the lawyer. Id. at 1371–72. “Thus, since the plaintiff’s claim arose out of business vicariously

transacted by the defendants in the District, the defendants were reachable under the ‘long-arm’

statute ‘consistent with traditional due process analysis.’” Lex Tex Ltd. v. Skillman, 579 A.2d

244, 248 (D.C. 1990) (discussing and quoting Rose, 394 A.2d at 1373). The court then turned to

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the question of whether the lawyer, “despite being an agent transacting business in the District

within the usual meaning of that concept, is nevertheless precluded from obtaining jurisdiction

over [his former clients] by virtue of the ‘government contacts’ principle.” Rose, 394 A.2d at

1372. The Rose court did not answer that question, but suggested that the answer would turn on

whether subjecting the former clients to jurisdiction would violate their First Amendment rights;

it remanded the case for consideration of that question. Id. at 1374.

The salient difference between Environmental Research and Rose is that the consulting

firm in the former case was an independent contractor, whose clients therefore did not act

vicariously through it, while the lawyer in the latter case was an agent for his clients. Because

the clients were acting vicariously through their lawyer, his actions in the forum were effectively

their actions. The actions of an agent, Rose teaches, can give rise to personal jurisdiction over

the principal so long as those actions are not “government contacts.” There is no suggestion, in

Rose or elsewhere, that actions taken by an agent can give rise to jurisdiction over the principal

even if they are “government contacts,” see Lex Tex, 579 A.2d at 249 (discussing Rose), and Mr.

Hayes offers no citations beyond Rose. He has therefore failed to establish that personal

jurisdiction can be based upon the interactions between the defendants’ lawyer and the

FCC—and personal jurisdiction is his burden to establish. Edmond, 949 F.2d at 424; see also

Citadel Inv. Group, LLC v. Citadel Capital Co., 699 F.2d 303, 308 (D.D.C. 2010).

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 ii. The Defendants’ Website

Mr. Hayes next argues that the defendants’ website allows this court to exercise specific

personal jurisdiction over them. The defendants respond, in effect, that he has alleged only that

District residents can access the website, not that they actually do—much less that the

defendants are “transacting . . . business in the District of Columbia” by means of their website,

D.C. CODE § 13-423(a)(1).2

“With limited exceptions,” notably the government contacts doctrine discussed above,

“the Code’s ‘transacting any business’ clause has been interpreted to provide jurisdiction to the

full extent allowed by the Due Process Clause.” Ferrara, 54 F.3d at 828; accord Helmer v.

Doletskaya, 393 F.3d 201, 205 (D.C. Cir. 2004). “Consequently, the statutory and constitutional

questions, which are usually distinct, merge into a single query here.” Ferrara, 54 F.3d at 828.

That query is whether the plaintiff has adequately alleged, see Edmond, 949 F.2d at 424 (citing

First Chicago Int’l v. United Exch. Co., 836 F.2d 1375, 1378 (D.C. Cir. 1988)), that the

defendants, through their website, “purposefully established ‘minimum contacts with [the

District of Columbia] such that the maintenance of the suit does not offend “traditional notions

of fair play and substantial justice,”’” Helmer, 393 F.3d at 205 (quoting Int’l Shoe Co. v.

Washington, 326 U.S. 310, 316 (1945) (quoting Milliken v. Meyer, 311 U.S. 457, 463 (1940)))

(alteration in original). “[I]t is essential . . . that there be some act by which the defendant

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The defendants argue that, in order for their website to give rise to jurisdiction in this
forum, District residents must use the website in a “continuous and systematic” way. Defs.’
Mot. [Dkt. #12-1] at 9–10. That standard applies to claims of general jurisdiction under D.C.
Code § 13-334(a). See FCI Inv. Grp. LC v. IFX Mkts., Ltd., 529 F.3d 1087, 1092 (D.C. Cir.
2008); Gorman v. Ameritrade Holding Corp., 293 F.3d 506, 509–13 (D.C. Cir. 2002). As noted
above, the plaintiff argues only for specific jurisdiction in this case.

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purposefully avails itself of the privilege of conducting activities within the forum . . . , thus

invoking the benefits and protections of its laws.” Hanson v. Denckla, 357 U.S. 235, 253

(1958); see also World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297 (1980) (“[T]he

defendant’s conduct and connection with the forum . . . [must be] such that he should reasonably

anticipate being haled into court there.”).

It is Mr. Hayes’s burden to “allege specific acts connecting [the] defendant with the

forum.” First Chicago, 836 F.2d at 1378 (quoting Greenspun v. Del E. Webb Corp., 634 F.2d

1204, 1208 n.5 (9th Cir. 1980)) (alteration in original). But Mr. Hayes does not allege that the

defendants purposefully availed themselves of the District of Columbia any more than they

availed themselves of every other jurisdiction in which their website was accessible. As the

Circuit has held, “personal jurisdiction surely cannot be based solely on the ability of District

residents to access the defendants’ websites.” GTE New Media, 199 F.3d at 1349. The theory

that “mere accessibility of the defendants’ websites establishes the necessary ‘minimum

contacts’ with this forum. . . . simply cannot hold water” because “under this view, personal

jurisdiction in Internet-related cases would almost always be found in any forum in the country.”

Id. at 1350.

Mr. Hayes argues that he is entitled to jurisdictional discovery without plausibly alleging

purposeful availment of the forum, because only such discovery could show whether the

defendants are transacting business in the District via their website. That is not the law. “In

order to engage in jurisdictional discovery, the plaintiff ‘must have at least a good faith belief

that such discovery will enable it to show that the court has personal jurisdiction over the

defendant.’ Such a request for jurisdictional discovery cannot be based on mere conjecture or

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speculation.” FCI Inv. Grp. LC v. IFX Mkts., Ltd., 529 F.3d 1087, 1093–94 (D.C. Cir. 2008)

(quoting Caribbean Broad. Sys., Ltd. v. Cable & Wireless PLC, 148 F.3d 1080, 1090 (D.C. Cir.

1998)). After making plausible allegations connecting the defendants to the forum, Mr. Hayes

would be entitled to discovery so that he could prove them. But he is not entitled to

jurisdictional discovery just because he hopes that it might turn something up.

iii. Other Sources of Personal Jurisdiction

Mr. Hayes cites D.C. Code §§ 13-423(a)(3) and (a)(4), but he does not make any

argument that those provisions allow for personal jurisdiction on the facts alleged. In any case,

they do not. Sections 13-423(a)(3) and (a)(4) both allow for personal jurisdiction over a

defendant who “caus[es] tortious injury in the District of Columbia.” “Courts have taken several

different approaches in positioning where a plaintiff’s injury occurs in cases,” such as this one,

which involve allegations “of trademark infringement and unfair competition.” Citadel, 699 F.

Supp. 2d at 313. “Some courts assert that ‘in cases of trademark infringement and unfair

competition, the wrong takes place . . . where the passing off occurs, i.e., where the deceived

customer buys the defendant’s product in the belief that he is buying the plaintiff’s.’” Id.

(quoting Vanity Fair Mills, Inc. v. T. Eaton Co., 234 F.2d 633, 639 (2d Cir. 1956), and collecting

other cases) (alteration in original). “Other courts conclude that the place of injury in a

trademark case is the forum where a plaintiff ‘mainly’ uses the trademarks at issue—defined

alternatively as the place where the plaintiff does the majority of its business or the state where

the plaintiff’s primary office is located.” Id. (collecting cases). Mr. Hayes has not alleged

“tortious injury in the District of Columbia” under either theory. He has not alleged that any

sales were made in the District, nor that he “mainly” uses the trademark “WETT” in this forum,

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nor that his primary office is located here. He therefore has not established that D.C. Code

§§ 13-423(a)(3) or (a)(4) authorize this court’s jurisdiction over the defendants.

Because Mr. Hayes has not met his burden of establishing this court’s personal

jurisdiction over the defendants, the court will grant the defendants’ motion to dismiss his case.

B. Attorney Fees

The Lanham Act provides that “[t]he court in exceptional cases may award reasonable

attorney fees to the prevailing party.” 15 U.S.C. § 1117(a). The defendants argue that this is

such an exceptional case and they are prevailing parties. The question of whether a party that

wins a dismissal for lack of personal jurisdiction has prevailed for the purpose of attorney fees is

currently unsettled. Although the D.C. Circuit has held that a court may award fees under 15

U.S.C. § 1117(a) to a litigant who has won a dismissal for improper venue, see Noxell Corp. v.

Firehouse No. 1 Bar-B-Que Rest., 771 F.2d 521, 524 (D.C. Cir. 1985)—a holding that would

presumably also apply to dismissals for lack of personal jurisdiction—that case may no longer be

good law. See Buckhannon Bd. & Care Home, Inc. v. W.V. Dep’t of Health & Human Res., 532

U.S. 598 (2001); District of Columbia v. Jeppsen ex rel. Jeppsen, 514 F.3d 1287, 1290–91 (D.C.

Cir. 2008) (discussing the tension between Noxell and Buckhannon). Some circuits have held

that, after Buckhannon, a defendant “prevails” only if it succeeds on the merits; the D.C. Circuit

has noted the issue but not yet addressed it. Jeppsen, 514 F.3d at 1290 (citing Torres-Negron v.

J & N Records, LLC, 504 F.3d 151, 164–65 (1st Cir. 2007); Dattner v. Conagra Foods, Inc., 458

F.3d 98, 101–02 (2d Cir. 2006)). The court need not resolve the question, because it concludes

that this is not an “exceptional case” within the meaning of the Lanham Act.

“Congress and the federal appellate courts have provided minimal guidance as to what

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constitutes an ‘exceptional’ case under” the Lanham Act. Newborn v. Yahoo! Inc., 437 F. Supp.

2d 1, 7 (D.D.C. 2006); see also Stephen W. Boney, Inc. v. Boney Servs., Inc., 127 F.3d 821, 825

(9th Cir. 1997) (“The Lanham Act nowhere defines what makes a case ‘exceptional.’”). In

Noxell, the D.C. Circuit suggested that “‘exceptional,’ as Congress used the word in . . . the

Lanham Act, is most reasonably read to mean what the word is generally understood to

indicate—uncommon, not run-of-the-mine.” Noxell, 771 F.2d at 526. “Something less than ‘bad

faith’ . . . suffices to mark a case as ‘exceptional.’” Id.

Whatever the precise contours of the phrase, it does not encompass this case. Mr. Hayes

misunderstood an unsettled area of D.C. personal jurisdiction law; because of the government

contacts doctrine, his case must be dismissed. As the discussion above should demonstrate, to

misconstrue that doctrine is nearer the rule than the exception. Moreover, the defendants have

not shown that the case was brought in the District of Columbia for the purpose of harassing

them. Cf. Noxell, 771 F.2d at 526–27 (suit brought in D.C. against small business based in

California and doing most of its business there was “exceptional”). Nor have they demonstrated

“economic coercion” on the part of the plaintiff, id. at 526, nor that litigating in the District

“entailed not merely inconvenience but hardship” for them, id. at 527. This is a run-of-the-mill

case, brought in an arguably—though not actually—appropriate jurisdiction. The defendants’

motion for attorney fees will therefore be denied.

IV. CONCLUSION

For the reasons set out above, the defendants’ motion to dismiss the case for lack of

personal jurisdiction will be granted, and their motion for attorney fees denied.

Rudolph Contreras
United States District Judge
Date: March 18, 2013

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