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Case 4:18-cv-02573-YGR Document 55 Filed 10/12/18 Page 1 of 30

RAJ V. ABHYANKER, California SBN 233284


Email: ​raj@legalforcelaw.com
WENSHENG MA, California SBN 299961
Email: ​vincent@legalforcelaw.com

LEGALFORCE RAPC WORLDWIDE, P.C.


1580 W. El Camino Real, Suite 10
Mountain View, CA 94040
Telephone: (650) 965-8731
Facsimile: (650) 989-2131

Attorney for Plaintiffs,


LegalForce RAPC Worldwide, P.C. and
LegalForce, Inc.

UNITED STATES DISTRICT COURT


NORTHERN DISTRICT OF CALIFORNIA
OAKLAND DIVISION

LEGALFORCE RAPC WORLDWIDE, Case No.: 4:18-cv-02573-YGR


P.C. and LEGALFORCE, INC.,
PLAINTIFFS’ OPPOSITION TO
Plaintiffs, DEFENDANT’S MOTION TO DISMISS
FIRST AMENDED COMPLAINT
v.
Date: November 6, 2018
UPCOUNSEL, INC.; and DOES 1-1000, Time: 2:00 p.m.
INCLUSIVE, Dept.: Courtroom 1, Fourth Floor
Judge: Hon. Yvonne Gonzalez Rogers
Defendants.

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TABLE OF CONTENTS

I. INTRODUCTION 6

II. PROCEDURAL BACKGROUND 6

III. LEGAL STANDARD 7

IV. ARGUMENT 7
A. Plaintiffs Sufficiently Pleaded Plausible UCL Claims 7

1. California’s UCL creates its own private right of action 7


2. The FAC sufficiently pleaded UCL claims under the unlawful prong 10
3. The FAC also sufficiently pleaded UCL claims under the unfair prong 13

B. Plaintiffs Sufficiently Pleaded Plausible Lanham Act Claims 14

1. UpCounsel’s argument fails to understand website fundamentals— page titles,


descriptions and fake review ratings are statements 15
i. Fake Review Ratings Based on Types of Lawyers in Specific Cities 16
ii. False and Misleading Statements in Website Titles and Descriptions 17

2. None of the FAC Lanham Act Claims Statements are Mere Puffery 19
3. UpCounsel’s own failure to understand its fee structure is self-evident
of the degree to which it is misleading 23
4. UpCounsel admits that it lists non-attorneys on the lists of the Top 5%
of Lawyers in various cities for consumers to choose from when
selecting an attorney 26

C. As the Court previously determined, Plaintiffs sufficiently pleaded and have


standing for their FAL claim 27

D. Plaintiffs are entitled to the relief they seek 27

V. CONCLUSION 29

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TABLE OF AUTHORITIES
Cases
Adidas Am., Inc. v. Skechers USA, Inc.​,
890 F.3d 747 (9th Cir. 2018)
…….……...............……………………………….……....18

Allergan, Inc. v. Athena Cosmetics, Inc.,​


640 F.3d 1377 (Fed. Cir. 2011) …….…………………………....………….…….....…. 28
AngioScore, Inc. v. TriReme Med., Inc.​,
2015 U.S. Dist. LEXIS 86041 (N.D. Cal. July 1, 2015) ……......….…….…..……… 9, 29
Ashcroft v. Iqbal,
556 U.S. 662 (2009)​ .​ ........……….……...............……………………………….…….....7

Avid Identification Sys. v. Schering-Plough Corp.​,


33 F. App'x 854 (9th Cir. 2002) …….…………………………………….…............... 20

Acad. of Motion Picture Arts & Scis. v. GoDaddy.com, Inc.​,


2015 WL 5311085 (C.D. Cal. Sept. 10, 2015) ……………....….…….…..………… 18
Balukjian v. Virgin Am., Inc.,​
No. 18-cv-00185-SI, 2018 U.S. Dist. LEXIS 40387 (N.D. Cal. Mar. 9, 2018)..........….. 9
Bell Atlantic v. Twombly​,
550 U.S. 544 (2007) ………….…………….......…………….....…….…….…….....…. 7
Birdsong v. Apple, Inc.,​
590 F.3d 955 (9th Cir. 2009)….…………….......…………….....…….…….…….....….
28

Brown v. Grimes​,
192 Cal. App. 4th 265 (2011)………………………………………………………..….. 9
Brookfield Communs., Inc. v. W. Coast Entm't Corp.,​
174 F.3d 1036, 1045 (9th Cir. 1999) ………………………………………………..…
18

Cel-Tech Commc’ns, Inc. v. L.A. Cellular Tel. Co.​,


20 Cal. 4th 163 (1999) .……...………………………………….……....................... 8, 13
Delux Cab v. Uber Techs., Inc.​,
No. 16cv3057-CAB-JMA, 2017 U.S. Dist. LEXIS 57494 (S.D. Cal. Apr. 13, 2017)…. 20

Estakhrian v. Obenstine,​
320 F.R.D. 63 (C.D. Cal. 2017) ……………………………………........….…….… 9, 11
In re Nexus 6P Prods. Liab. Litig.​,
2018 U.S. Dist. LEXIS 35739 (N.D. Cal. Mar. 5, 2018) …………………………..…. 13

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Gafcon, Inc. v. Ponsor & Assocs.​,


98 Cal. App. 4th 1388 (2002)...………………………………….…….......................… 24

GhostBed, Inc. v. Casper Sleep, Inc.,​


No. 15-cv-62571-WPD, 2018 WL 2213002 (S.D. Fla. May 3, 2018) ……………..…. 17

Hoy v. Clinnin,​
No. 17-cv-788-BTM-KSC, 2017 U.S. Dist. LEXIS 96872 (S.D. Cal. June 22, 2017)... 9
Hutchins v. Mun. Court,​
61 Cal. App. 3d 77, 83 (1976) ……………………………………........….………… 14
In re Wright,​
290 B.R. 145 (Bankr. C.D. Cal. 2003)…………………………….……..…………… 24

iYogi Holding Pvt. Ltd. v. Secure Remote Support, Inc.​,


No. C-11-0592 CW, 2011 U.S. Dist. LEXIS 144425 (N.D. Cal. Oct. 24, 2011)……… 17

Kwikset Corp. v. Superior Court,​


51 Cal. 4th 310 (2011) ………….…………………………………........….…….... 27, 28
Law Offices of Matthew Higbee v. Expungement Assistance Servs.,​
214 Cal. App. 4th 544 (Cal. 4th 2013)…………………………………………… passim
Levitt v. Yelp! Inc.​,
No. C 10-1321 MHP, 2011 U.S. Dist. LEXIS 99372 (N.D. Cal. Mar. 22, 2011)……… 22

Linnick v. State Bar​,


62 Cal. 2d 17 (1964)..…….…................…………………………………..…….....….. 25

Lockyer v. Fremont Life Ins. Co.,​


104 Cal. App. 4th 508 (2002) .…………………………………….……..…………… 10

Lujan v. Defenders of Wildlife​,


504 U.S. 555 (1992) ...……….…................…………………………………..……..… 27

Newton v. Am. Debt Servs.​,


75 F. Supp. 3d 1048 (N.D. Cal. 2014)…………………………………….…………… 11

Ozeran v. Jacobs​,
No. CV 17-7965-DOC, 2018 U.S. Dist. LEXIS 70543 (C.D. Cal. Apr. 25, 2018) …11, 28
People ex rel. Herrera v Stender​,
212 Cal. App. 4th 614 (2012) ..……….…………………………………….…….....… 9
Playboy Enterprises, Inc. v. Terri Welles, Inc.​,
78 F. Supp. 2d 1066 (S.D. Cal. 1999) .…………………………………….…….....… 18

Powell v. McCormack​,
395 U.S. 486 (1969) ...…….…................…………………………………..…….....…. 29
Rojas v. Gen. Mills, Inc.​,
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2014 U.S. Dist. LEXIS 41315 (N.D. Cal. Mar. 26, 2014) ……....…………....….....… 20

Rubin v. Green​,
4 Cal. 4th 1187 (1993) ............……….…………………………………….……..... 8, 11
Southland Sod Farms v. Stover Seed Co​.,
108 F.3d 1134 (9th Cir. 1997) .……….…………………………………….…. 16, 20,
24
United States v. Standard,​
207 F.3d 1136 (9th Cir. 2000)……………………………....………....…….………… 12
Watson Labs., Inc. v. Rhone-Poulenc Rorer, Inc.,​
178 F. Supp. 2d 1099 (C.D. Cal. 2001) …………………....………....…….………… 13

Federal Statutes

15 U.S.C. § 1125(a)(1)(B)………….………………….…………………………………...… 15

State Statutes

Cal. Bus. & Prof. Code § 6125 .…………………...………………………………………..… 10


Cal. Bus. & Prof. Code § 6152 .…………………...…………………………………… 9, 11, 12
Cal. Bus. & Prof. Code § 6155 .…………………...……………………………………11, 12, 13
Cal. Bus. & Prof. Code § 6400 .…………………...………………………………………..… 10
Cal. Bus. & Prof. Code § 17200 .…………………...……………………………………… 9, 10

Federal Rules

Fed R. Civ. P. 12(b)(6)....………….…………………...…………………………………..… 6, 7

Other Sources
Adi Ayal, Uri Benoliel, ​Revitalizing the Case for Good Cause Statutes: the Role of Review
Sites,​
19 Stan. J.L. Bus. & Fin. 331 ………………...………………………………………… 22

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I. INTRODUCTION
UpCounsel’s motion to dismiss (“MTD”) Plaintiffs’ First Amended Complaint (“FAC”)
is a masterclass in flawed legal reasoning, ad hominem attack, and non-sequitur logic. Not only
is it full of bumbling and bluster, it boldly mischaracterizes the truth. UpCounsel’s MTD offers
no more than conclusory assertions that are objectively specious—although embellished with
additional hyperbole.
At best, even UpCounsel itself is confused about how it and the Internet works. At worst,
it is desperate attempt to manufacture “​alternate facts”​ to justify UpCounsel’s egregious and
illegal conduct. Tellingly, once Plaintiffs filed their FAC, UpCounsel began vigorously
changing their webpages leaving its own counsel without answers when confronted with
evidence of spoliation and evidence destruction (Exhibit 1, 2, 3).
Plaintiffs’ FAC sufficiently pleads all facts to state claims for relief that are plausible on
their face. Plaintiffs also have pleaded facts sufficient to show standing to bring the claims.
Therefore, UpCounsel’s motion to dismiss under Rule 12(b)(6) for failure to state a claim
should be denied for all of Plaintiffs’ claims.
UpCounsel’s MTD fails to show that Plaintiffs lack standing or have not sufficiently
pleaded the causes of action. To overcome these deficiencies, UpCounsel tries to argue partial
truths, and rely on broad tangential statements on how Plaintiffs are failing while UpCounsel is
succeeding. Perhaps that is the only thing that UpCounsel is right about. Like tens of thousands
of law abiding lawyers and law firms, Plaintiffs are failing and are harmed by UpCounsel’s
unfair competition. This harm is concretely traceable to UpCounsel’s unfair and unlawful
conduct. Plaintiffs have shown that they are devoted to upholding ethics obligations and
operating within the law. Plaintiffs merely refuse to be driven out of business by a competitor
like UpCounsel which competes unfairly through false and misleading advertising and
fee-sharing financial arrangements that California law has deemed illegal.
II. PROCEDURAL BACKGROUND
On May 2, 2018, Plaintiffs filed their complaint to initiate the present case and seek relief
from UpCounsel’s unfair and unlawful behavior. The initial complaint included state claims

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against some individual UpCounsel attorneys who use the platform to unfairly compete;
however, since those claims were all state claims and to promote judicial efficiency, RAPC
voluntarily dismissed the individual defendants on July 20, 2018, and brought a separate action
in California state court against the individual attorneys on July 27, 2018, (Case No.
18-CV-332509).
UpCounsel filed a motion to dismiss the initial complaint on July 20, 2018. After a
hearing on August 28, 2018, the Court denied in part UpCounsel’s motion to dismiss and
granted Plaintiffs leave to amend their complaint. Plaintiffs, then filed the FAC on September
11, 2018, to correct some deficiencies identified by the Court. On September 28, 2018,
UpCounsel again filed a motion to dismiss, which Plaintiffs now oppose.
III. LEGAL STANDARD
To overcome a motion to dismiss under Rule 12(b)(6), a complaint need only contain
sufficient facts, accepted as true, to state a claim for relief that is merely plausible on its face.
Ashcroft v. Iqbal,​ 556 U.S. 662, 678 (2009) (citing ​Bell Atlantic v. Twombly,​ 550 U.S. 544, 570
(2007); Fed R. Civ. P. 12(b)(6).
IV. ARGUMENT
UpCounsel’s deeply flawed MTD surprisingly seems to fail to comprehend not just
Plaintiffs’ FAC and its claims, but also basic Internet technology principles that are core to its
business as a legal services technology company. It is not clear if UpCounsel chose to ignore
entire factual pages of the FAC, which refute many of their own arguments, or they simply ran
out of arguments and decided to resort to blissful ignorance. It appears to be the latter, since the
theme throughout UpCounsel’s MTD is a careful manipulation of facts, quotes, and case law in
order to try to apply or portray them in ways that are clearly incongruous with the actual source
of information. However, as the saying goes, “​A hog in armour is still but a hog.​ ”
A. Plaintiffs Sufficiently Pleaded Plausible UCL Claims
1. California’s UCL creates its own private right of action
First up is UpCounsel’s ill-fated repeat assertion that a competitor1 cannot bring a

1
Even more perplexing is UpCounsel’s unsupported assertion that somehow Plaintiffs, as
competitors, should not be allowed to pursue a UCL claim against UpCounsel. (MTD 5:23;
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California Unfair ​Competition ​Law (“UCL”) claim when that claim is based on an underlying
law that does not have a private right of action. This position is not even supported by
UpCounsel’s own cited and quoted sources.
The California Supreme Court plainly explained in ​Cel-Tech Commc’ns, Inc. v. L.A.
Cellular Tel. Co. that the UCL creates an independent private right of action; not only for acts
that are unlawful, but even for unfair acts that are not specifically proscribed by some other law.
20 Cal. 4th 163, 180 (1999). The major purpose of the UCL is “the preservation of fair business
competition.” ​Id.​ To that end, the California legislature drafted the UCL with an intentionally
broad scope because it would otherwise be impossible to specifically proscribe all imagined
types of unfair activity. ​Id.​ at 181 (noting that “unfair or fraudulent business practices may run
the gamut of human ingenuity and chicanery”).
As UpCounsel notes, although the scope is broad, it is not unlimited. A claim under the
UCL cannot be brought where the legislature has created an immunity or provided a “safe
harbor” for that action. ​Id.​ at 182. UpCounsel dubiously claims that this means a UCL claim
cannot be brought where there is no private right of action for the underlying law. (MTD
5:22-23.) However, the quotes cited by UpCounsel describe instances where the underlying
action was specifically protected by the legislature. For example, in ​Cel-Tech​, the court goes on
to illustrate this principle by citing to a case where a plaintiff tried to bring a UCL claim for
activity that was protected under the litigation privilege of Cal. Civil Code section 47(b). 20
Cal. 4th at 182 (citing ​Rubin v. Green,​ 4 Cal. 4th 1187, 1201 (1993)).
That is what the court was referring to when it stated, “[a] plaintiff may thus not plead
around an absolute bar to relief simply by recasting the cause of action as one for unfair
competition.” 20 Cal. 4th at 182 (internal citation and edit marks omitted). Indeed, the next

6:2.) This position completely ignores the entire origin and purpose of the UCL, which was
historically meant as a means for competitors to seek redress for unfair business practices. It has
since been expanded to protect competitors ​and ​consumers from unfair commercial practices,
but still covers competitors. ​See Law Offices of Mathew Higbee v. Expungement Assistance
Servs.,​ 214 Cal. App. 4th 544, 551-52, 61 (2013) (“Although the UCL was ultimately expanded
to provide equitable relief to consumers . . . this does not mean that the UCL no longer protects
business competitors”).
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sentence explains, “[t]he rule does not, however, prohibit an action under the unfair competition
law merely because some other statute on the subject does not, itself, provide for the action or
prohibit the challenged conduct.”2 ​Id​. at 182-83. There is significant difference between the
legislature creating a safe harbor or immunity for an activity and simply not providing a private
right of action for violations of a law.
As this Court clearly stated in a 2015 opinion by Hon. Yvonne Gonzalez Rogers, “[b]y
proscribing ​any u​ nlawful business practice, Section 17200 borrows violations of other laws and
treats them as unlawful practices that the unfair competition law makes ​independently
actionable.​ Virtually any law—federal, state or local—can serve as a predicate for a UCL
action.” ​AngioScore, Inc. v. TriReme Med., Inc.​, 2015 U.S. Dist. LEXIS 86041, *95 (N.D. Cal.
July 1, 2015) (emphasis added and internal edits omitted) (citing ​Law Offices of Mathew Higbee
v. Expungement Assistance Servs.​, 214 Cal. App. 4th 544, 553 (2013)).
Importantly, several California state and federal court decisions have already determined
that UCL claims can be brought for violations of both the California Rules of Professional
Conduct and the California Business and Professions Code. ​See e.g.,​ ​Balukjian v. Virgin Am.,
Inc.,​ No. 18-cv-00185-SI, 2018 U.S. Dist. LEXIS 40387, at *19 (N.D. Cal. Mar. 9, 2018)
(stating that UCL claims can be brought for violations of statutes, common laws, and rules of
professional conduct; specifically citing examples of UCL claims for violations of California
Rules of Professional Conduct and the California Business and Professions Code); ​Estakhrian v.
Obenstine​, 320 F.R.D. 63, 87-88 (C.D. Cal. 2017) (Unlawful UCL claim based on unauthorized
practice of law under California Rule of Professional Conduct 1-300 and unlawful attorney
solicitation under California Bus. & Profs. Code § 6152); ​Hoy v. Clinnin​, No.
17-cv-788-BTM-KSC, 2017 U.S. Dist. LEXIS 96872, at *5-6 (S.D. Cal. June 22, 2017) (noting
that a violation of the California Rules of Professional Conduct can be the basis of an unlawful
UCL claim); ​People ex rel. Herrera v. Stender, 212 Cal. App. 4th 614, 632 (2012) (rejecting the

2
UpCounsel also cites to ​Brown v. Grimes for support; however, that case does not address
anything with respect to UCL claims and merely recites that Rule 1-100(A) of the Rules of
Professional Conduct states that the rules do not intend to create new civil causes of action.
(MTD 5:25 (citing ​Brown v. Grimes,​ 192 Cal. App. 4th 265, 285 (2011)).)
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argument that since the Rules of Professional Conduct are not intended to create new civil
causes of action they cannot be the basis of a UCL claim—“here, the complaint alleges
unlawful business practices under section 17200, using violation of the Rules of Professional
Conduct . . . . It is well established that a section 17200 claim may be based on violation of a
statute that the plaintiff could not directly enforce with a private action.”) (citations omitted);
Lockyer v. Fremont Life Ins. Co.,​ 104 Cal. App. 4th 508, 517 (2002) (UCL “unlawful” claim
based on statute regulating practice of law); ​Higbee,​ 214 Cal. App. 4th at 553 (UCL claim by an
attorney against an online legal services provider based on alleged violations of Cal. Bus. &
Prof. Code §§ 6125 & 6400 et. seq., and Penal Code § 4852.2).
Lastly, UpCounsel boldly reasserts its primary jurisdiction argument as a reason that no
private right of action exists, despite the Court flatly rejecting the primary jurisdiction doctrine
in this case and instructing UpCounsel to not bring it again. (MTD 5:27-6:9 H’rg Tr. (Aug. 28,
2018), 22:11-16.) It is well established that a UCL claim may be based on violations of statute,
common law, and ethics rules, including California Rules of Professional Conduct and the
California Business and Professions Code. This is true even when a plaintiff could not enforce
those rules directly through a private action. Undeniably, as in ​Higbee​, Plaintiffs are bringing
the current action not as a direct enforcement of the underlying laws, but in pursuit of relief
from UpCounsel’s unfair competition. ​See ​Higbee​, 214 Cal. App. 4th at 554. The FAC
sufficiently alleges that UpCounsel has violated several statutes and rules, detailed the actions
that violate those rules, and properly brought the action under the UCL which provides an
independent right of action. UpCounsel’s MTD on this point should also be denied and
Plaintiffs should be allowed to fully pursue their claims under the unlawful prong of
California’s UCL.
2. The FAC sufficiently pleaded UCL claims under the unlawful prong
UpCounsel admits that it describes itself as being equivalent to the world’s largest virtual
law firm. At the same time, it says it is ​not ​a law firm.
Confusing as that might be, UpCounsel through its own actions operates like a law firm,

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brags when others say it is one,3 and therefore it is one. While implicitly admitting it might be
perceived as a law firm, UpCounsel tries to evade liability by complaining that two of the
regulations4 that govern the legal profession, and which the FAC claims UpCounsel violated,
are just “two little-known regulations.” (MTD 6:14.) Bless their heart.
UpCounsel then falsely argues that “neither regulation has ever been the basis of a
lawsuit brought by a competitor,” but slips in a contradictory footnote later in the MTD
acknowledging that the assertion is false and that it was able to find one such case. (MTD
6:16-17; 7:5, n. 3.) Such an assertion is simply false and could only have been made in bad
faith. Ultimately, whether or not UpCounsel’s “searches” can locate a case identical to the
current case is not relevant to the actual merits of the claim and is merely another misdirection.
Regardless, even without the significant resources of UpCounsel and its counsel, Plaintiffs ran a
quick search, limited only to opinions on these two regulations and limited the search even
further to where the regulations were the basis of UCL claims. Plaintiffs easily determined this
is false and located multiple examples of both published and unpublished decisions from
California and federal courts. The published cases are as follows:
● Ozeran v. Jacobs​, No. CV 17-7965-DOC (JDEx), 2018 U.S. Dist. LEXIS 70543 (C.D.
Cal. Apr. 25, 2018);
● Estakhrian v. Obenstine​, 233 F. Supp. 3d 824 (C.D. Cal. 2017); and
● Rubin v. Green,​ 4 Cal. 4th 1187 (1993).
UpCounsel argues again (without any support) that a pleading alleging UpCounsel aided
and abetted a violation is not sufficient to support a UCL claim. (MTD 6:26.) Another quick
search shows that this argument has already been emphatically rejected by this Court and many
other California courts. ​See Newton v. Am. Debt Servs.​, 75 F. Supp. 3d 1048, 1064 (N.D. Cal.

3
​UpCounsel boasted on Twitter “Thanks to @atlblog for recognizing #UpCounsel as among the
top 20 legal services providers in Boston!” when the AboveTheLaw.com website wrote a
“sponsored” article featuring UpCounsel with the big heading “Rt. 128 Elite: The Go-To Law
Firms of Boston” along with numerous other prominent Boston law firms.
https://twitter.com/upcounsel/status/780541509280096256?s=21​;
https://abovethelaw.com/2016/09/rt-128-elite-the-go-to-law-firms-of-boston/?rf=1​.
4
Cal. Bus. & Prof. Code §§ 6152 and 6155
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2014) ​(conclusively stating, “[t]his argument . . . has also been rejected by numerous California
courts that have expressly found that aiding-and-abetting liability exists for UCL claims”)
(citations omitted). This is one more example that UpCounsel is merely attempting to waste the
Court’s and Plaintiffs’ time on meritless arguments rather than working toward an efficient
resolution of the current dispute.
Unfortunately, UpCounsel further deceptively claims that the FAC contradicts its claim
that UpCounsel violated Bus. Prof. Code § 6155(a) and acknowledges it is not a referral service.
(MTD 7:6.) However, UpCounsel merely quotes sections of the FAC that describe UpCounsel’s
own attempts to disclaim being a referral service on its website. (MTD 7:8-9, citing FAC ¶ 90.)
Despite this attempt to hide behind quoted disclaimers about not being a referral service,
UpCounsel’s MTD goes on to describe how it acts as a referral service for attorneys.
As the FAC explains, UpCounsel is contacted by customers looking for an attorney and
the website refers (“matches” is UpCounsel’s preferred term) the customers to a list of
attorneys, from which the customer engages an attorney through the website. (FAC ¶ 90, Ex.
70.) Despite its fine print claiming otherwise, UpCounsel is clearly operating “for the direct or
indirect purpose, in whole or in part, of referring potential clients to attorneys.” Cal. Bus. &
Prof. Code § 6155(a). Indeed, UpCounsel’s argument here that it does not violate Section 6155,
essentially amounts to citing all the places where it announces that it is not a duck, while
describing that itself as just a waterfowl, with webbed feet, and a bill like a platypus.
Regarding UpCounsel’s violations of Cal. Bus. & Prof. Code § 6152, again lacking any
real substantive argument, UpCounsel focuses its argument on the part of the statute regarding
location of attorney solicitations and characterizing it as an “ambulance chasing” statute. (MTD
7:17-24.) This argument intentionally avoids the allegations in the FAC that UpCounsel is
unlawfully acting as a “runner or capper” for attorneys. (FAC ¶ 92.) Importantly, section 6152
also makes it illegal to act as an agent in soliciting business on behalf of attorneys. ​See United
States v. Standard,​ 207 F.3d 1136, 1139-40 (9th Cir. 2000). In fact, UpCounsel admits that they
are soliciting on behalf of the attorneys. (​See MTD 8:7, n. 5.) UpCounsel further twists itself
into knots making nonsensical circular arguments, stating that application of the statute to

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online advertising would implicate ​every law firm in the country with a website (​Id.​ at 8:2-3);
however, this dishonestly omits that the statute does not apply to firms soliciting clients on their
own behalf, or entities that are not paid for solicited referrals. Additionally, UpCounsel’s lament
that such application is beyond the legislative intent is amusingly misplaced, because the
legislature has created a method for lawful paid solicitation of clients on behalf of attorneys—it
can register as a referral service pursuant to Cal. Bus. & Prof. Code § 6155.
3. The FAC also sufficiently pleaded UCL claims under the unfair prong
“The unfair prong of the UCL creates a cause of action for a business practice that is
unfair even if not proscribed by some other law.” ​In re Nexus 6P Prods. Liab. Litig.,​ 293 F.
Supp. 3d 888, 929 (N.D. Cal. Mar. 5, 2018). UpCounsel cites to ​Cel-Tech Commc’ns, Inc. v.
L.A. Cellular Tel. Co​., 20 Cal. 4th 163 to support its assertion that a UCL claim under the unfair
prong requires “conduct that threatens an incipient violation of an antitrust law, or violates the
policy or spirit of one of those laws . . . or otherwise significantly threatens or harms
competition.” (MTD 8:16-19 (citing ​Cel-Tech,​ at 187).)
Indeed, as noted earlier this year, one test for determining what is unfair under
California’s UCL is the FTC Act section 5 test: “a practice is unfair when it offends an
established public policy or when the practice is immoral, unethical, oppressive, unscrupulous
or substantially injurious to consumers.” ​Nexus 6P at 930 (internal citation and edits omitted);
see also Watson Labs., Inc. v. Rhone-Poulenc Rorer, Inc.​, 178 F. Supp. 2d 1099, 1119 (C.D.
Cal. 2001) (analyzing the unfair test from ​Cel-Tech and noting that the FTC Act section 5 test is
a sound and appropriate standard for analyzing unfair business act claims for competitors).
Under this test, for a practice to be unfair “(1) the consumer injury must be substantial; (2) the
injury must not be outweighed by any countervailing benefits to consumers or competition; and
(3) it must be an injury that consumers themselves could not reasonably have avoided.” ​Id. This
test also is in accordance with the language cited by UpCounsel, requiring conduct that
threatens the policy or spirit of the antitrust laws. (MTD 8:16-19 (citing ​Cel-Tech,​ at 187).)
Each of these elements of the FTC section 5 test is specifically pleaded in the FAC.
b. The consumer injury caused by UpCounsel violating the state laws, federal regulations
and ethics rules is substantial. As these laws, regulations and ethics rules regulate lawyer

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referral, solicitation and fee sharing with nonlawyers, they are there to ensure that a
lawyer’s independent professional judgment is not interfered with by nonlawyers, and
they are there to protect the interest of the public at large. When they are violated by
UpCounsel, consumers become susceptible to the harm of bad legal advice given by
attorneys whose independent professional judgment may be tainted. The contract for
legal service between consumers and UpCounsel may be voided by the operation of law.
The public interest is greatly harmed.
c. Providing legal advice to clients by the means of violating state laws, federal regulations
and ethics rules offers no countervailing benefits to consumers or the competition.
d. Consumers themselves cannot reasonably avoid the injury because reasonable consumers
are not aware of the these laws, regulations and ethics rules and are not aware that they
are being harmed or will be harmed.

(FAC ¶ 139.)
Additionally, the FAC pleads sufficient facts under this test and the general competition
harm asserted by UpCounsel. UpCounsel’s business practice is to illegally solicit referrals for
attorneys without registering as a referral service and to illegally fee-share with the attorneys.
(FAC ¶ 138.) These actions violate rules and statutes meant to protect the public and the legal
services industry. ​Hutchins v. Mun. Court​, 61 Cal. App. 3d 77, 83 (1976). Furthermore,
competition in the marketplace in general is reduced because “UpCounsel has brazenly ignored
law, ethics, and common sense in defiance of healthy competition . . . . [therefore] Plaintiffs,
law firms, and legal technology companies across the United States are unable to fairly compete
with UpCounsel.” (FAC ¶ 5.) The only increase in competition that Plaintiffs have faced is that
of unethical and illegal entrants into trademark law. Entities, such as UpCounsel, engage in
unfair and unlawful behavior in order to harm competition and drive out legitimate competitors
like Plaintiffs who uphold all statutory and ethical duties.
UpCounsel rests its argument on the false assertion that Plaintiffs “have not even tried to
allege harm to general market competition . . .” (MTD 9:4.) However, as shown above, this
statement is easily shown to be false and should be denied.
B. Plaintiffs Sufficiently Pleaded Plausible Lanham Act Claims
Next up, UpCounsel either fundamentally does not understand website and Internet
technology, or is grossly misrepresenting the FAC and UpCounsel’s practices. The Lanham Act
claim with respect to keywords was dismissed without leave to amend, and was the only part of

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the Lanham Act claims to be dismissed without leave. (Order Granting in Part and Den. in Part
Mot. to Dismiss, (“Order”) 1:21-2:4.) Accordingly, Plaintiffs did not raise that argument again.
The FAC retains the arguments regarding UpCounsel’s fee disclosures and “Top 5%” claims
which survived dismissal, and the FAC expands on the “largest virtual law firm” assertion in
accordance with the Order. Additionally, the FAC provides other commercial advertising
examples supporting its Lanham Act claims, in the form of how UpCounsel has coded its
website pages show consumers false and misleading statements in Internet search results and on
the page title in the browser. None of these are related to keywords and all involve false or
misleading statements made by UpCounsel in commercial speech.
1. UpCounsel’s argument fails to understand website fundamentals—
page titles, descriptions and fake review ratings are statements
UpCounsel claims to be a legal technology company but does not seem to understand
how the Internet works. Despite UpCounsel’s assertions to the contrary, none of the assertions
in the FAC are anything like the keywords theory that was dismissed previously. The Court
dismissed the Lanham Act claim with respect to UpCounsel’s use and/or purchase of keywords
for online searches, such as “trademark attorney” and “trademark lawyer” with the Court stating
that keywords involved the payment for more exposure, not the content of what UpCounsel is
saying. (Order 1:28-2:2; and H’rg Tr. (Aug. 28, 2018) at 15:8-17.) The FAC asserts that
UpCounsel purposefully manipulates how the pages on its website appear to consumers using a
search engine. More than just the “means,” the end results of UpCounsel’s actions are the false
and misleading statements. UpCounsel’s tactics result in actual false and misleading statements
meant to influence consumers to choose their service over competitors.
The sections of the FAC that UpCounsel asserts are the same keyword theory as before
are ​entirely ​different (MTD 10:9-14 (citing FAC ¶¶ 49-54)) because they concern not the words
a consumer uses to search for a website, but the actual text and statements that are presented by
UpCounsel to consumers conducting those searches. To plead a claim under the Lanham Act for
false advertising, a plaintiff need only allege a false statement of fact made by a defendant in
commercial speech. 15 U.S.C. § 1125(a)(1)(B). A false statement means that it is either

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“literally false . . . or that the statement was literally true but likely to mislead or confuse
consumers.” ​Southland Sod Farms v. Stover Seed Co.​ , 108 F.3d 1134, 1139 (9th Cir. 1997).
Admittedly, the FAC goes into technical detail about UpCounsel’s misleading advertising
practices, but this was to provide sufficiently detailed information to allow UpCounsel to
understand and defend itself against the allegations. Unfortunately, UpCounsel did not grasp or
did not want to address those specific allegations.5 The paragraphs of the FAC that are cited by
UpCounsel in its MTD concern ​fabricated ​review numbers and ratings. UpCounsel publishes
these on its website pages and carefully tags the statements in the website coding so that Google
includes the false and misleading statements in search results for consumers.
Since UpCounsel mischaracterizes how Google search results and titles of those results
are published, it is useful to look at how Google describes that process. Google notes that a
websites page titles describe the topic or purpose of that page.
https://support.google.com/webmasters/answer/35624?hl=en​. “[Titles are] often the primary
piece of information used to decide which result to click on, so it’s important to use high-quality
titles on your web pages.” ​Id. Google notes that the titles displayed for pages cannot be
manually changed for sites and are automated based on a “a number of different sources for this
information, including descriptive information in the title and meta tags for each page.” ​Id.
Google also notes that the HTML title tag “is often used together with the ‘description’. . . [and
is] generally shown as the title in search results (and of course in the user’s browser).”
https://support.google.com/webmasters/answer/79812?hl=en
Page titles are an important part of our search results: they’re the first line of each
result and they’re the actual links our searchers click to reach websites. Our
advice to webmasters has always been to write unique, descriptive page titles (and
meta descriptions for the snippets) to describe to searchers what the page is about.

https://webmasters.googleblog.com/2012/01/better-page-titles-in-search-results.html​.

i. Fake Review Ratings Based on Types of Lawyers in Specific Cities


FAC, Paragraph forty-nine (49) explains that UpCounsel manipulates the search results

5
Due to the almost hourly disappearances and modifications of the pages cited by Plaintiffs
from UpCounsel’s website, it appears that UpCounsel sufficiently understands Plaintiffs’
technical arguments.
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by both keeping its pages at the top of search results ​and c​ reates false and misleading
statements about the number of 5.0 star reviews for specific geographic locations, e.g., 5.0 star
rating based on 5,450 reviews of UpCounsel’s “Cotati Intellectual Property Lawyers” in Cotati,
California (a city of only 7,455 people, none of whom are actually UpCounsel attorneys).
UpCounsel’s actions determine ​both ​the location (top of search results) and content (XX
number of 5.0 star reviews for a specific location). These ratings are clearly false and
misleading statements given the population of the example location and the lack of any
UpCounsel attorneys there. ​See ​iYogi Holding Pvt. Ltd. v. Secure Remote Support, Inc.,​ No.
C-11-0592 CW, 2011 U.S. Dist. LEXIS 144425, at *48-49 (N.D. Cal. Oct. 24, 2011) (holding
that a defendant’s posting of shill reviews was sufficient to plead a Lanham Act claim).
Paragraphs fifty (50) to fifty-four (54) of the FAC go into technical detail about how
Plaintiffs can identify that UpCounsel is the entity using false information to publish fake
review ratings for the pages on its website. In summary, the code used by UpCounsel for its
website pages tricks search engines into displaying fake review ratings for every location.
UpCounsel’s argument that this use of HTML code as a means to advertising rather than the end
is like blaming the program sent to an electronic display board for displaying a false
advertisement. Plaintiffs have merely shown in the FAC that the source of the false advertising
statements is clearly UpCounsel (the sender of the code) rather than the search engines (the
electronic displays). The Florida federal district court case cited by UpCounsel also is not
applicable here, because that case denied a plaintiff’s Lanham Act claim that was based only on
SEO tactics that impacted the visibility of reviews, not the falsity or content of the reviews or
any statement. ​GhostBed, Inc. v. Casper Sleep, Inc.,​ No. 15-cv-62571-WPD, 2018 WL 2213002
at *7 (S.D. Fla. May 3, 2018).
ii. False and Misleading Statements in Website Titles and Descriptions
Although this Court already upheld Plaintiffs’ Lanham Act claim regarding the “Top 5%
of Trademark Attorneys” advertisement, UpCounsel (like groundhog day) now takes issue with
the exhibits offered as support for the FAC. Contrary to UpCounsel’s assertions, neither Google
nor Plaintiffs can change UpCounsel’s own website pages.

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UpCounsel noted in its first motion to dismiss, “a growing consensus . . . that keyword
advertising does not violate the Lanham Act” and cited to a case discussing keyword advertising
with respect to trademark infringement under the Lanham Act. (Dkt. 25 (Def. Mot. to Dismiss
Compl.) 8:20-21 (citing ​Acad. of Motion Picture Arts & Scis. v. GoDaddy.com, Inc.,​ No. CV
10-03738 AB (CWx), 2015 U.S. Dist. LEXIS 120871, at *150 (C.D. Cal. Sep. 10, 2015)).)
The Ninth Circuit did not come to the same conclusion for website titles, title tags, and
descriptions that are displayed in search results, also collectively referred to as metatags. The
court explained that “description metatags are intended to describe the web site” and concluded
that use of any term in defendant’s metatags that is confusingly similar to plaintiff’s mark is
barred by the Lanham Act. ​Brookfield Communs., Inc. v. W. Coast Entm't Corp.,​ 174 F.3d 1036,
1045 (9th Cir. 1999); ​see also Playboy Enterprises, Inc. v. Terri Welles, Inc.,​ 78 F. Supp. 2d
1066, 1092 (S.D. Cal. 1999) (explaining that another metatag, the title tag, “is text that is used
as the title of a web page in the listings of a crawler-based search engine”) ​reversed in part on
other grounds apart from the definition​, 279 F.3d 796 (9th Cir. 2002). Earlier this year, the
Ninth Circuit reiterated that “[u]sing another’s trademark in one’s metatags is much like posting
a sign with another’s trademark in front of one’s store.” ​Adidas Am., Inc. v. Skechers USA, Inc.​,
890 F.3d 747, 755 (9th Cir. 2018) (quoting ​Brookfield​ 174 F.3d at 1064).
The descriptions and titles are listed by search engines in the search results but that
information is published by UpCounsel on its website. Search engines, like Google, merely
publish the descriptions and title information that is already present on UpCounsel’s website
pages. None of Plaintiffs’ search terms or Google’s algorithms insert the false advertising
statements into the search results; those can only derive from UpCounsel, as explained
extensively in the FAC. To be clear, despite UpCounsel’s distracting focus on “AdWords-type
advertisements” and keyword arguments (MTD 11:8-11), Plaintiffs are alleging that the website
titles and descriptions themselves are the false and misleading advertising statements by
UpCounsel. The statements and descriptions are on UpCounsel’s website pages and UpCounsel
is the one responsible for how they are described and appear in the search results. None of
Plaintiffs’ claims are related to AdWords, keywords or Google Ads.

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Plaintiffs provided an exhibit showing that the search results are for pages of
UpCounsel’s website. (FAC ¶ 28, Ex. 61.) The multiple exhibits of search results provided with
the FAC serve to put the extent of UpCounsel’s false advertising into perspective because it
would have been impossible (and silly) to include the tens of thousands of pages from
UpCounsel’s website as exhibits, so Plaintiffs used a narrowly tailored search string, as
UpCounsel noted, to limit the search results to only show pages from UpCounsel’s website.6
(​See MTD 11:13-14; ​see also FAC ¶ 28, Ex. 33-G (showing a generic search that a consumer of
legal services would conduct, displaying UpCounsel’s false “Top 5%” statement near the top of
the results); FAC ¶¶ 27-30, Exs. 26-30 (showing that there are tens of thousands of
UpCounsel’s “Top 5%” pages created to mislead consumers and carefully limiting the search to
only show pages from UpCounsel’s website).)
Plaintiffs’ Lanham Act claims based on the “Top 5% of Trademark Attorneys” already
​ he only difference in the FAC is that Plaintiffs provided more evidence to
survived dismissal. T
show that UpCounsel’s actions are even more egregious, widespread, and bombastic then
initially thought—extending to every major city and town across the United States, for tens of
thousands of pages on UpCounsel’s website and across many legal practice areas. ​The scope
and geographical extent of UpCounsel’s misleading web advertising is simply both reckless and
unprecedented f​ or anyone, much less a sophisticated venture backed company that has raised
approximately $26 million in venture funding. (FAC ¶ 9). UpCounsel should have known
better. Each claim relates to thousands of false or misleading commercial statements hyper
targeted by UpCounsel to mislead, deceive, and cheat innocent American small businesses
seeking legal services. As such, UpCounsel’s MTD should be denied.
2. None of the FAC Lanham Act Claims Statements are Mere Puffery

6
UpCounsel’s distracting reference to a Google search for Coca-Cola would be amusing if it
was not so disingenuous. Not only does a Google search of “Coca-cola is number 1” not return
the first result that UpCounsel claims, but that search is not narrowly tailored like Plaintiffs’ in
this case to only display statements by the company on the company’s website. Additionally,
many of the organic search results were actually by independent sources, like NBC news,
Fortune, and Business Insider, offering facts about that company’s position as the leader in the
soda market, which highlights the question, where are the independent sources supporting
UpCounsel’s assertions for having the top 5% or top ten trademark attorneys in all these cities?
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The Ninth Circuit explained that non-actionable puffery under the Lanham Act is
“exaggerated advertising, blustering, and boasting upon which no reasonable buyer would rely.”
Southland Sod Farms,​ 108 F.3d at 1145 (internal citations and quotation marks omitted).
However, beyond generalized boasting, a specific and measurable advertisement of product
superiority is not puffery and is actionable. ​See id. ​(noting that claims of “50% Less Mowing”
was actionable); ​see also Avid Identification Sys. v. Schering-Plough Corp.​, 33 F. App'x 854
(9th Cir. 2002) (determining that various statements representing “market share to be 86%,
90%, 92%, and 98%, are specific and measurable claims of the type we have held actionable
under the Lanham Act.”); and ​Delux Cab v. Uber Techs., Inc.,​ No. 16cv3057-CAB-JMA, 2017
U.S. Dist. LEXIS 57494, at *14 (S.D. Cal. Apr. 13, 2017) (determining that a ridesharing
company’s statement of “best in class safety” could not be dismissed as mere puffery).
In fact, the court of appeals in the ​Southland Sod Farms case clarified that there does not
need to be any direct comparisons to a competitor for a specific claim of superiority to be
actionable. ​Southland Sod Farms,​ 108 F.3d at 1145. “Courts analyzing whether a statement
constitutes puffery examine whether the statements are general assertions that say nothing about
the specific characteristics or components of the products or whether they are specific factual
assertions.” ​Rojas v. Gen. Mills, Inc.,​ 2014 U.S. Dist. LEXIS 41315, at *16 (N.D. Cal. Mar. 26,
2014).
In the present case, UpCounsel’s specific and measurable claims of superiority are the
exact type of misrepresentations that have been held actionable in the Ninth Circuit under the
Lanham Act. First, like the ​Southland Sod Farms claims of 50% Less Mowing, and the ​Avid
Identification Sys.​ , statements of specific percentages of market share, UpCounsel’s links to the
top 5% of trademark lawyers in an area, such as the “Top 5% of Trademark Lawyers in San
Francisco, California,” or “Top 5% Trademark Lawyers in Mountain View, California” are
specific and measurable claims of superiority within a very specific defined geographic area.7

7
UpCounsel tries to again resurrect its defeated argument that the “Top 5%” statements are
mere puffery. (MTD 12:19-13:3.) This argument was already rejected by the Court and should
not be allowed to stand again. (Order 2:3-4; ​see also Dkt. 25 8:26-27(asserting the same
argument that the statement is puffery).) UpCounsel merely wastes the Court’s and Plaintiffs’
time and resources by raising it again for the same statement. Additionally, as explained above,
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This type of superiority statement is clearly measurable, particularly where UpCounsel


continues to assert it for various limited geographic areas with a limited number of trademark
attorneys. Furthermore, clients would reasonably rely on these specific geographically limited
claims, particularly in the present era where all types of businesses and people are ranked online
by user reviews or organizations. A client would reasonably believe that some kind of metric is
behind the list of the top 5% of trademark lawyers in their city. This goes beyond general claims
of excellent performance or getting more for less, it is measurable and clearly a false statement
of fact that should not be allowed to continue at the expense of consumers and competitors, like
RAPC.
UpCounsel appears to understand that specific and measurable claims are not puffery
because it mischaracterizes the statement complained of in the FAC by only quoting a small
generic part, asserting that Plaintiffs only take issue with the “best patent lawyers” in a city.
(MTD 12:11.) However, the actual statement that Plaintiffs claim is false and misleading is
“The 10 Best {Practice Area} Lawyers in {State} NEAR ME.” (FAC ¶¶ 33-35.) As with the
Top 5% statements, these are specific and measurable. UpCounsel is advertising a top ten list of
the best attorneys practicing a specific area of law in a geographically limited area. It is very
likely that a consumer would rely on that assertion when selecting an attorney even though the
consumer would be deceived because the attorneys are often not at all ​near the consumer and
​ AC ¶ 35.)
not one of the ten best practicing that type of law in that geographic area. (​See F
Similar to consumers relying on a rideshare service being the “best in class safety” a reasonable
consumer would likely rely on a top ten list of trademark attorneys in a specific city when
choosing an attorney for their specific needs.
UpCounsel’s 5.0 star ratings8 are clearly an influential tool that UpCounsel uses to attract

the statements are made by UpCounsel, not any other third party.
8
UpCounsel again engages in a side show about Plaintiffs and claims that the Trademarkia
website ratings are somehow equivalent to UpCounsel’s because Mr. Abhyanker has five stars
and another attorney, Ms. Rajan, has a five-star rating “despite offering zero services.” (MTD
12, n. 7.) Not surprisingly, this argument is without any merit because the ratings are given by
actual human users of the Trademarkia website, and the “zero services offered” language just
means Ms. Rajan has not created specialized services beyond what RAPC offers on the
Trademarkia website. Moreover, public records can confirm that she is one of the top trademark
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consumers to its services.


I also think there has been a shift generally in consumer behavior. People are far
more comfortable now going online to find a trusted service or product than they
ever have been before. In many cases, over a great recommendation. Let’s take an
example most people can related to. You get a restaurant recommendation from a
trusted friend. So you go into your Yelp App to check out the restaurant and you
see the establishment only has 2 stars. In this day and age, a lot of people,
including myself, would question the friend’s recommendation and going to the
restaurant. This technology driven behavior will only strengthen with time.

https://abovethelaw.com/2015/04/can-tech-disrupt-the-legal-industry-a-conversation-with-
upcounsel-ceo-matt-faustman/.
Review ratings, particularly those that appear trustworthy from many other consumers,
are a well known and reliable tool for getting consumers to purchase from a particular seller.
One article looking at the impact of reviews and ratings on the marketplace noted that an
empirical study looking at hotels showed that “consumers are willing to pay 38% more for
hotels receiving an ‘Excellent’ or ​five-star rating than for a hotel receiving a ‘Good,’ or
four-star rating.” Adi Ayal, Uri Benoliel, ​Revitalizing the Case for Good Cause Statutes: the
Role of Review Sites,​ 19 Stan. J.L. Bus. & Fin. 331, 351-52 (emphasis added). In a case against
an online review and rating website, one business noted that a drop from a 4.5 to 3.5 star rating
resulted in a 40% decreases in customers to his website and a general harm to his reputation.
Levitt v. Yelp! Inc.,​ No. C 10-1321 MHP, 2011 U.S. Dist. LEXIS 99372, at *8 (N.D. Cal. Mar.
22, 2011).
As the FAC thoroughly explains, UpCounsel fabricates its 5.0 star ratings (FAC ¶¶
38-64) which it causes to be published in search results to mislead consumers into relying on its
attorneys as a “trusted service.” UpCounsel further misleads consumers to trust the rating by
providing an inflated number for the reviews that it claims the rating is based on. To illustrate
this with one example, the FAC looks at UpCounsel’s advertisement showing a cumulative 5.0
out of 5.0 star rating for the “Top 5% of Intellectual Property Lawyers in Cotati, CA.” (FAC ¶
43.) However, Cotati, California only has a population of 7,455, with only 21 attorneys; none of

filing attorneys in the United States and helped RAPC assist more than 1,000 client trademarks
in the year 2017 alone for satisfied clients.
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whom are listed on UpCounsel and only 1 is shown by the USPTO as licensed to practice patent
law. (FAC ¶¶ 46-47.) Despite these facts, UpCounsel’s advertisement states that the 5.0 star
rating for all the “Top 5% of Intellectual Property Lawyers in Cotati, CA” is based off of 5,174
customer reviews, which increased by 276 reviews in just three days to 5,450—all for a small
town of only 7,455. (FAC ¶ 43, n. 7.) This is clearly false and intentionally misleading, meant to
promote UpCounsel’s desired image of a trusted service that is equivalent to the world’s largest
virtual law firm.
In an act of ultimate hypocrisy, UpCounsel wants to convey to the court an image that it
is not a law firm; asserting that it is not a law firm in fine print and legal documents. As support,
UpCounsel purports to quote sections of the FAC stating the same, but upon inspection, these
quotes are actually merely circular references to UpCounsel’s own fine print text disclaiming it
is not a law firm. (MTD 7:8-9, citing FAC ¶ 90.) Despite that, UpCounsel promotes itself
publicly as “equivalent to the world’s largest law firm” and encourages consumers to “come
meet our attorneys,” all in a concerted marketing scheme to promote a specific image of
qualifications and quality of work to consumers who are familiar with the concept of a law firm
and would reasonably rely on that when choosing an attorney.9 Unsurprisingly, UpCounsel
proposes that any of the commercial speech describing it as a law firm is mere puffery. (MTD ¶
12:9-14.) However, consumers are likely to rely on these specific assertions and UpCounsel
should not be allowed to present itself to the public in a way that leads consumers to think of it
as the largest virtual law firm with its own attorneys while at the same time glibly disclaiming
that exact characterization in court filings, stating that is only a marketplace or a facilitator of
communication. (​See​ Dkt. 25 1:12-13.)
3. UpCounsel’s own failure to understand its fee structure is self-evident
of the degree to which it is misleading

9
Another example contradicting UpCounsel’s statements in its MTD that it is not a law firm is
shown in the public relations messages by UpCounsel. For example, on September 26, 2108,
UpCounsel sent a tweet thanking Above The Law for listing them as a top twenty go-to law
firm in Boston and included a link to the article that lists UpCounsel as the “Best Firm for
Incorporating Your Two-Person Company Because Somebody Told You There Were Tax
Benefits.” ​https://twitter.com/upcounsel/status/780541509280096256?s=21​;
https://abovethelaw.com/2016/09/rt-128-elite-the-go-to-law-firms-of-boston/?rf=1​.
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As mentioned above, a false advertisement under the Lanham Act means that the
statement is “literally false . . . or that the statement was literally true but likely to mislead or
confuse consumers.” ​Southland Sod Farms​, 108 F.3d at 1139. UpCounsel’s explanation in the
MTD of its fee structure and process is not only confusing but also literally false. If UpCounsel
cannot itself understand and clearly explain the fee structure it uses, then it is obvious that it
would likely mislead or confuse consumers. First, UpCounsel states that 15% and 24% are just
two different services. (MTD 13:14-15.) UpCounsel then describes the first as a ​referral fee that
a consumer pays to UpCounsel if they decide to hire an attorney that it met through UpCounsel,
but only “in the event that a Consultant User accepts an ​offer of employment made by a User,
whether for an indefinite or fixed term at some point ​after t​ he Consultant User commences the
initial Job.” (MTD 13:21-23 (internal edits and citation omitted; emphasis in original).)
UpCounsel neglects to mention that the fee is not always 15% and varies for nearly two years
from 15% to 5%. (FAC ¶ 77.)
UpCounsel then states that UpCounsel “makes clear that its ‘processing fee’—not a
referral fee—‘amounts to 24% of your total invoice.’” (MTD 13:24-25 (citation omitted).) This
clarification is despite UpCounsel’s explanation of this fee in its first motion to dismiss as
follows: “[a]nd by signing UpCounsel’s Terms of Service, attorney users agree to pay a
percentage of their earnings from the platform to UpCounsel.” (Dkt. 25 8:13-14.) Again
UpCounsel is attempting to disclaim a label while also describing actions that fall exactly under
that label. Fee-splitting has been defined to occur where “the outside lawyer is paid a portion of
the fee that is paid by the client to law office, which generally is through a percentage
payment.” ​In re Wright,​ 290 B.R. 145, 151 (Bankr. C.D. Cal. 2003) (edit marks omitted).
Irrespective of how UpCounsel wants to label the fee, it is clear that UpCounsel receives a
portion of the fee paid by the legal services client for the attorney’s work and that is a form of
fee-sharing or fee-splitting.
This is precisely one of the policies underlying the rules against improper fee splitting,
“to avoid facilitating a layperson intermediary’s tendency to select attorneys who will
compensate him and not the most competent attorney for the client.” ​See Gafcon, Inc. v. Ponsor

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& Assocs.​, 98 Cal. App. 4th 1388, 1418 (2002) (citing ​Linnick v. State Bar,​ 62 Cal. 2d 17, 21
(1964)). UpCounsel is a layperson intermediary who selects attorneys that will compensate
UpCounsel by violating fee sharing rules, not the most competent top 5% attorney for the client.
Therefore, UpCounsel is a nothing more than an Internet-age ambulance chaser.
Moreover, despite the obvious, UpCounsel is either confused again or intentionally
obfuscating the truth of how the fees are seen and paid by consumers. UpCounsel stumbles over
itself when trying explain that “if an attorney performs an hour’s work for an UpCounsel client
and charges $250, the client pays that attorney $250 and, in addition, pays UpCounsel 24% (or
$60) in processing fees.” (MTD 13:25-27.) Using UpCounsel’s numbers from the MTD, if an
attorney bills $250 for an hour for services, then the client receives an UpCounsel invoice
showing that he or she owes UpCounsel $310 (assuming no expenses or filing fees) for one
hour of work. That is a ​head-scratcher.​ Even more, it is a lie.
In reality, consumers actually just pay the one total amount to UpCounsel. The invoice
does not differentiate between the total UpCounsel amount and the amount paid to the attorney,
it just contains fine print noting that the total includes the attorney’s discounted rate and
UpCounsel fees amounting to 24% of the total invoice. (FAC ¶ 78, n. 8.) The attorney also has
his or her own dashboard that displays one hour of work performed at an attorney pay rate of
$250 and a client rate of $310. To summarize, the client pays UpCounsel the total amount and
then UpCounsel takes its commission from that total and pays the attorney at a lower rate.
Now it starts to get more confusing because the preceding paragraph only includes the
referral commission that UpCounsel labels as a processing fee. At what point is that “success
fee,” or what UpCounsel now labels a “referral fee,” paid by the consumer to UpCounsel? The
Terms of Service incoherently states the following:
If Start Date occurs on or before the following number of days after the
commencement of the initial Employer User-User Consultant Job Base Salary
Percentage
1-182 days 15%
183-365 days 10%
366-550 days 5%
≥ 551 days 0%

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(FAC ¶ 77.)
The language in the terms of service do not make it clear what the number of days is
calculated from or whether a separate invoice is sent or whether this is all combined into the
final invoice, which would then make the disclaimer on the invoice of only 24% in fees
inaccurate. The fees and fee structure are not nearly as straightforward as UpCounsel attempts
to portray and would clearly confuse consumers.
4. UpCounsel admits that it lists non-attorneys on the lists of the Top
5% of Lawyers in various cities for consumers to choose from when selecting
an attorney
UpCounsel again argues a point that is different from the one made in the FAC. The FAC
clearly states that UpCounsel is advertising non-attorneys as attorneys and in locations far from
where they are located. (FAC ¶¶ 65-68.) Rather than address why UpCounsel improperly lists
patent agents under the title of lawyers available to hire in specific geographic areas, it instead
agrees with Plaintiffs that the referenced individuals are not attorneys, but argues that they can
still provide patent prosecution services. (MTD 14:4-25.) UpCounsel labels Plaintiffs’
assertions as inflammatory and then either negligently or dishonestly states that there is no false
statement by UpCounsel.
As explained ​supra i​ n Section IV.B.1., UpCounsel’s denial that UpCounsel is responsible
for the statements shown in the Google results is made in bad faith because it is baseless and not
supported by any facts or evidence. The search results were crafted to only show statements by
UpCounsel. (MTD 14:26-27.) UpCounsel admits that the individuals used as examples are
patent agents and not patent attorneys, as shown on their UpCounsel profiles. (​Id.​ at 14:24.)
However, Plaintiffs do not take issue with the accuracy of the individual profiles, but rather
with UpCounsel listing the patent agents as lawyers. For example, the FAC cross lists one
patent agent in California as an immigration lawyer in Blackfoot, Idaho. (FAC ¶ 66-68.)
Although patent agents can assist engineers in technical preparation an analysis of patent
applications, they cannot give legal advice in any state, cannot represent clients in any litigation,
and often have no formal law school training. In contrast, they are often engineers that pass a

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one-time test administered by the USPTO. They have no continuing legal education
requirements. They have no ability to give legal advice on laws in any state. More importantly,
patent agents also cannot perform various legal services that the federal government would
consider as the practice of immigration law. UpCounsel offers no explanation for why a patent
agent in California is listed as an elite immigration attorney or how this is anywhere related to a
patent agent’s ability to be a scrivener for engineers at the USPTO.
C. As the Court previously determined, Plaintiffs sufficiently pleaded and have
standing for their FAL claim
As Plaintiffs have shown in the preceding sections, the FAC sufficiently pleads its claims
and supports those allegations with significant detail to demonstrate a legitimate claim for
UpCounsel’s extensive false and misleading advertising campaign. As such the California False
Advertising Law (“FAL”) claim also is sufficiently pleaded in the FAC. Although UpCounsel
once again raises a denied argument, wasting Plaintiffs’ and this Court’s time, it was determined
that Plaintiffs have standing for their FAL and UCL claims. (Order 1:21-22, 2:5-6.) Nothing
with respect to standing for the UCL and FAL claims has changed in the FAC. This is addressed
again more thoroughly in the following section.
D. Plaintiffs are entitled to the relief they seek
This Court already held that Plaintiffs have standing for their UCL, Lanham Act, and
FAL claims. (Order 1:21-22, 2:5-6.) The FAC, like the original complaint, sufficiently pleads
standing for the UCL and FAL claims.
The complaint sufficiently pleads statutory standing and Article III standing for the
California state UCL and FAL claims. To have standing to bring a claim under the UCL a
plaintiff must assert that he or she suffered an economic injury due to the alleged unfair
competition. ​Kwikset Corp. v. Superior Court,​ 51 Cal. 4th 310, 323 (Cal. 2011) (noting that an
economic injury “is itself a classic form of injury in fact”). Article III standing requires a current
case or controversy, meaning an injury in fact traceable to defendant’s conduct and likely to be
redressed by a favorable decision. ​Lujan v. Defenders of Wildlife,​ 504 U.S. 555, 560-61 (1992).
The Ninth Circuit noted that the statutory standing requirements in the UCL are narrower and

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incorporate the Article III standing requirements for federal jurisdiction. ​Birdsong v. Apple,
Inc.,​ 590 F.3d 955, 960, n.4 (9th Cir. 2009); ​see also Kwikset at 323 (noting that an economic
injury “is itself a classic form of injury in fact.”). Therefore, Plaintiffs’ pleaded allegations of
economic harm from UpCounsel’s conduct are sufficient to establish both statutory and Article
III standing for the UCL claims.
Additionally, The California FAL contains the same statutory standing requirement as the
UCL. ​See Kwikset,​ at 321. Courts have interpreted the statutory standing requirements in the
FAL and UCL interchangeably. ​Id​. Therefore, under the FAL also, Plaintiffs’ pleaded
allegations of economic harm from UpCounsel’s conduct are sufficient to establish both
statutory and Article III standing.
UpCounsel argues that Plaintiffs lack standing, arguing that they did not identify specific
lost customers; however, that position is not supported by the relevant case law. In a case very
similar to the present case, a California attorney brought a UCL claim against his competitor, an
online legal services provider. ​Law Offices of Mathew Higbee v. Expungement Assistance
Servs.,​ 214 Cal. App. 4th 544, 548 (2013). The court determined that the attorney plaintiff in
that case had standing to bring the UCL claim and survive dismissal where he alleged an
identifiable trifle of injury, specifically lost market share, lost revenue, increased advertising
costs, and diminished value of his firm. ​Id.​ at 548, 556. District courts in California have also
cited ​Higbee as support for decreases in revenue, market share and asset value as sufficient
economic injuries to satisfy the standing requirement for a UCL claim. ​See ​Ozeran v. Jacobs,​
2018 U.S. Dist. LEXIS 70543 at *14-15; ​see also Allergan, Inc. v. Athena Cosmetics, Inc.,​ 640
F.3d 1377, 1382 (Fed. Cir. 2011) (holding that alleging lost sales, revenue, market share, and
asset value are sufficient to satisfy the required economic injury standing under the UCL). Since
statutory standing for FAL claims are interpreted the same as UCL claims, this same type of
allegation of a trifle of economic harm by a competitor is also sufficient for standing under the
FAL.
Plaintiffs have clearly and sufficiently asserted UCL and FAL claims in their complaint
with adequate alleged harm to establish statutory and Article III standing to bring the claims.

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Plaintiffs alleged specific damages consisting of total lost sales in excess of $1,000,000, lost
market share of 1.2%, decreased revenue of around $1 million per year, and increased
advertising costs of approximately 30%. (FAC ¶¶ 114-16.) These asserted injuries are the exact
type of economic harm that was found to be sufficient to establish standing in ​Higbee to avoid
dismissal and Plaintiffs should be afforded the same opportunity to move forward to prove their
claims again.
As noted by this Court, Plaintiffs do not seek declaratory judgment but rather a remedy of
declaratory relief. (Order 1:17-19.) A court may consider declaratory relief independently even
if there are other appropriate forms of relief and it “may grant declaratory relief even though it
chooses not to issue an injunction.” ​Powell v. McCormack​, 395 U.S. 486, 499 (1969). Plaintiffs
properly request injunctive and declaratory relief rather than a declaratory judgment claim.
Lastly, as discussed ​supra in Section IV.A.1. and as held previously by this Court, the
UCL “borrows violations of other laws and treats them as unlawful practices that the unfair
competition law makes ​independently actionable.​ ” ​AngioScore, Inc. ​2015 U.S. Dist. LEXIS
86041, *95 (emphasis added and internal edits omitted) (citing ​Higbee at 553). An underlying
private right of action is not required since the UCL creates an independent right of action.
V. CONCLUSION
As technology advances and opens up new opportunities for efficiency and cost-savings,
legal professionals must work within the existing professional framework until necessary
precautions and changes are made to facilitate change that protects members of the legal
profession and clients that rely on the legal services. ​In an America where few average
citizens can afford hourly rates of lawyers, it is a noble and worthwhile cause to improve
access to justice and access to law through the web and through the Internet. ​That is what
Plaintiffs have precisely done.
However, opening up access to law and justice should not mean abandoning fundamental
principles of ethics and integrity that are the bedrock of the American legal system. While
Plaintiffs have served this higher purpose within the current regulatory framework, UpCounsel
is willing to take unscrupulous advantage of innocent small businesses, using technology to

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ignore current ethical rules and turning a blind eye to common sense in pursuit of outsized
profits.
Through its actions, UpCounsel seeks to create an effective monopoly for themselves by
deftly ignoring law and rules to snuff out competition from licensed California law firms and
lawyers by serving up a smorgasbord of inapplicable case law and inaccurate “factual”
assertions to justify their conduct.
UpCounsel’s illogical and ever-shifting theories do not entitle them to prevent any cause
of action in this FAC from advancing past the pleading stage nor do they warrant the Court to
providing UpCounsel with another bite of the apple to further delay this important case from
proceeding to resolution. Simply put, UpCounsel not only “quacks like a duck,” they are a duck.
For the foregoing reasons Plaintiffs respectfully submit that UpCounsel’s Motion to
Dismiss should be denied. If the Court finds any part of the complaint insufficient, Plaintiffs
request the Court grant leave to amend to cure the defect.

Dated: October 12, 2018 Respectfully submitted,


LEGALFORCE RAPC WORLDWIDE P.C.

_/s/ Raj V. Abhyanker______


Raj V. Abhyanker (233284)
Attorney for Plaintiff:
LegalForce RAPC Worldwide P.C.

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