United States District Court, Southern District of New York
December 17, 2002
ETNA PRODUCTS CO., INC., PLAINTIFF.
TACTICA INTERNATIONAL, INC. ET AL. DEFENDANTS.
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
This is borne out by consideration of the details of the defendants'
prior relationship with Mr. Lilling, which was quite limited. Defendants'
attorney at the time they came into contact with Mr. Lilling was Susan
L. Cohen, Esq. In 1997, Ms. Cohen became "of counsel" to Mr. Lilling's
firm. Lilling & Lilling, P.C. During that year,
she involved Mr.
Lilling in counseling defendants on three occasions. The First involved
advice regarding the scope of certain patents owned by Sonex
International Corporation ("Sonex"). which, in light of subsequent
events, the Court infers elated to a plaque removal toothbrush. The
second concerned advice regarding whether defendants ionic hair wand
infringed another patent. Finally. Mr. Lilling prepared a U.S. patent
application for an electronic blemish remover.
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
As the foregoing demonstration suggests, there is precious little basis
for supposing that the substantial relationship test is satisfied here.
The nature of the prior representation — brief episodic. and
limited — does not suggest a strong likelihood that relevant
confidential information passed from defendants to Mr. Lilling.*fn4
There has been no showing that there is any connection between the design
patent and products here in suit and the patents, products, and other
matters that were involved in Mr. Lilling's prior representation of the
defendants. Certainly, there is no reason to suppose that "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."*fn5 The
suggestion that Mr. Lilling has used confidential information acquired in
his former representation to further this lawsuit is unsubstantiated.
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 client with vigor or if the
attorney is in a position to use privileged information acquired in the
representation of a former client against that client in another
Defendants have not persuaded this Court that there is a meaningful
risk that Mr. Lilling and his associate possess any privileged or
confidential information concerning defendants, much less, given the lack
of relationship between the subject matters of this and the prior
representations, that they would be in a position to use it against
defendants even if they did. Moreover, both the lapse of time between the
commencement of this case and the filing of this motion and defendants'
counsel's virtual admission at oral argument that the impetus for the
filing of the motion was defendants' perception that Mr. Lilling's
settlement Posture is unreasonable suggest that the principal factor
motivating this motion is tactical.
In all the circumstances, the motion to disqualify plaintiff's counsel
is denied. As typically is the case in ruling on such motions, the Court
makes no definitive determination concerning whether plaintiff's counsel
have acted consistently with the Code of Professional Responsibility, a
matter that ultimately lies within the province of other bodies. Rather.
it determines only that defendants have not satisfied their burden of
persuading the Court that the risk of trial taint is sufficiently great to