The opinion of the court was delivered by: Lewis A. Kaplan, United States District Judge
Defendants in this design patent infringement suit move to disqualify
plaintiff's counsel, Bruce E. Lilling, Esq., and his associate on the
ground that they previously represented one or more of the defendants in
matters substantially related to this one.
The principle governing the motion is plain enough. An attorney may not
represent a party in a matter adverse to a former client where there is a
substantial relationship between the subject matter of the prior
representation and the present matter and the attorney had, or likely
had. access to relevant confidential information in the course of the
prior engagement.*fn1 The litigants part company. however, on the
question whether the substantial relationship test is satisfied here.
Context always is important in determining motions such as this. The
defendants are small companies in the business of marketing inexpensive
consumer products, chiefly in the personal care area, such as the
magnifying mirror at issue in this case, an ionic hair wand, an
electronic blemish remover, and a plaque removal toothbrush. There is no
suggestion that any involves substantial technical information. The
patent here in suit, moreover, is a design patent. In consequence. there
is no reason to conclude from the fact that Mr. Lilling did patent and
other intellectual property work for the defendants some years ago that
he gained any technical or other specialized knowledge concerning any
products or technology significant to defendants' business.*fn2
In 1998, Sonex sued one or more of the defendants with respect to the
plaque remover toothbrush. and Mr. Lilling responded on defendants' behalf
to a preliminary injunction motion. But his relationship with Ms. Cohen
— and therefore his relationship with the defendants — came
to an end in September 1998. In consequence. he was not involved in the
subsequent litigation or resolution of the Sonex case.*fn3
The dispute between plaintiff and defendants appears to have arisen
earlier this year. In April and May 2002. Mr. Lilling and defendants'
general counsel had settlement discussions during which the defendants
raised the disqualification issue. The settlement talks, however, were
unsuccessful, and this case was filed on May 16, 2002. Certain of the
defendants then moved to dismiss without raising the issue of Mr.
Lilling's representation of the plaintiff. Indeed, the present motion was
not filed until November 7, 2002, almost six months after the
commencement of the action.
Determination of whether a prior representation is "substantially
related" to a current engagement does not yield to a or mechanical rule.
Nevertheless, the principles are relatively plain. As Judge Pauley
recently wrote in a case upon which defendants place principal reliance:
"As it has refined the standard, the Second Circuit
has determined that as a practical matter. motions to
disqualify should be granted only when `the
relationship between issues in the prior and present
cases is "patently clear"' or that the issues involved
are "identical" or "essentially the same." After a
thorough examination of the leading successive
representation cases, Judge Leisure of this court
articulated the relevant standard as follows: "if the
facts giving rise to an issue which is material in
both the former and the present litigations are as a
practical matter the same. then there is a
"substantial relationship" between the representations
for purposes of a disqualification."' Mitchell v.
Metro. Life Ins. Co., No. 01 Civ. 2112 (WHP), 2002 WL
441194, at *4 (S.D.N.Y. Mar. 21, 2002) (internal
Disqualification motions are subject to abuse for tactical purposes.
They may deprive a party of the counsel of its choice and otherwise delay
the resolution of the underlying legal dispute. Moreover, professional
disciplinary bodies are available to police the behavior of counsel.
Accordingly, the Second Circuit has made clear that disqualification is
appropriate only if a violation of the Code of Professional Responsibility
gives rise to "a significant risk of trial taint."*fn6 That is to say,
disqualification for an alleged conflict of interest is appropriate only
if there is a significant risk that the conflict will affect the
attorney's ability to represent his or her ...