The opinion of the court was delivered by: PIERCE
This action is brought by plaintiff ("UAW") International Union, United Automobile, Aerospace and Agricultural Implement Workers of America to recover damages for trademark infringement, unfair competition and prima facie tort. The core of the action is the alleged infringement of the name "Solidarity" in plaintiff's publication by defendants' use of the name "New Solidarity" in their publication. Defendants are the National Caucus of Labor Committees ("NCLC") and various individuals allegedly related to this organization. Defendants have counterclaimed essentially alleging malicious conduct on the part of plaintiff and violations of defendants' civil rights.
The trademark infringement and unfair competition claims were severed from the other claims and counterclaims, and were placed on the Court's ready trial calendar for trial in summer 1977.
By letter of July 17, 1977, defendants' attorney, David S. Heller, informed the Court of alleged unethical conduct on the part of plaintiff's attorneys. The allegations were eventually presented in the form of a motion to disqualify ("the first motion") which was referred to Magistrate Kent Sinclair.
In the first motion, defendants essentially asserted that one of plaintiff's potential trial witnesses, Gregory Rose, was a Federal Bureau of Investigation informant who allegedly infiltrated the NCLC security staff. Defendants alleged that Rose functioned in a legal or semi-legal capacity with NCLC and even stole legal papers from NCLC which he then allegedly transmitted to plaintiff's counsel and to the FBI. This information is set forth in affidavits from defendant's counsel (Heller) and NCLC officers (Spannaus; Inch). In an opposing affidavit, Rose denied these allegations and also denied having access to any privileged communications. In their affidavits plaintiff's trial counsel, Roger Zissu, and Stephen Schlossberg, general counsel to UAW, also denied receiving the privileged communications alleged by defendants.
On December 2, 1977, Magistrate Sinclair recommended that defendants' motion be granted insofar as disqualifying Roger Zissu, and his firm, Cowan, Liebowitz & Latman, as well as Schlossberg. Voluminous papers objecting and supporting the Magistrate's report were submitted to the Court. Plaintiff requested D. Robert Owen of the firm, Patterson, Belknap, Webb and Tyler, to represent it on the first motion. No objection was initially voiced by defendants and an order was signed on March 23, 1978 adding Owen and his firm as counsel. On March 30, 1978, while objections to the Magistrate's report were Sub judice, Heller advised the Court of possible ethical problems in Owen's appearance. Specifically, he objected to Owen's appearance because two members of Owen's firm, Harold R. Tyler, Jr. and Rudolph W. Giuliani, were formerly United States Deputy Attorney General and Associate Deputy Attorney General, respectively, in the Justice Department. It is apparently undisputed that the FBI conducted an investigation of the NCLC during the period Tyler and Giuliani were with the Justice Department. Defendants allege that because of their positions Tyler and Giuliani had access to confidential information about the defendants. On this basis, defendants now move to disqualify Owen and his firm for alleged violations of Canon 9 and Disciplinary Rule 9-101(B) ("the second motion").
Canon 9 of the American Bar Association's Code of Professional Responsibility ("the Code") states as an axiomatic norm that "(a) lawyer should avoid even the appearance of impropriety." The two statements which deal specifically with former governmental employees are Ethical Consideration 9-3 and Disciplinary Rule 9-101(B). Ethical Consideration 9-3 states:
"After a lawyer leaves judicial office or other public employment, he should not accept employment in connection with any matter in which he had substantial responsibility prior to his leaving, since to accept employment would give the appearance of impropriety even if none exists."
Disciplinary Rule 9-101(B) states:
"A lawyer shall not accept private employment in a Matter in which he had Substantial responsibility while he was a public employee." (Emphasis supplied).
The Code explains that "(t)he Disciplinary Rules state the minimum level of conduct below which no lawyer can fall without being subject to disciplinary action." Courts have traditionally looked to the Code in determining disqualification motions. See Fund of Funds, Ltd. v. Arthur Andersen & Co., 567 F.2d 225, 227 n. 2 (2d Cir. 1977); Handelman v. Weiss, 368 F. Supp. 258, 261 n. 4 & 263 (S.D.N.Y.1973) and cases cited therein.
As a starting point, the Court heeds the admonition of Chief Judge Kaufman:
"When dealing with ethical principles, . . . we cannot paint with broad strokes. The lines are fine and must be so marked. Guideposts can be established when virgin ground is being explored, and the conclusion in a particular case can be reached only after painstaking analysis of the facts and the precise application of precedent." Fund of Funds, Ltd. v. Arthur Andersen & Co., 567 F.2d 225, 227 (2d Cir. 1977), quoting United States v. Standard Oil Co., 136 F. Supp. 345, 367 (S.D.N.Y.1955).
Further, it is noted that particularly in a case such as this which has engendered such bitterly contested litigation during its four years