United States District Court, S.D. New York
October 1, 2004.
GUERRILLA GIRLS, INC. f/k/a GUERRILLA GIRLS, JERILEA ZEMPEL and ERIKA ROTHENBERG, Plaintiffs,
DONNA KAZ, GUERRILLA GIRLS ON TOUR, INC. f/k/a GUERRILLA GIRLS THEATRE, JANE DOES 1-19, GUERRILLA GIRLS BROADBAND, INC., CATHERINE DOE 1 ALSO KNOWN BY THE PSEUDONYM "GERTRUDE STEIN," and CATHERINE DOES 2-12, Defendants.
The opinion of the court was delivered by: LOUIS STANTON, District Judge
OPINION and ORDER
Plaintiffs move to disqualify defendants' counsel, Barbara
Hoffman, Esq. ("Hoffman"). For the reasons that follow, the
motion is granted.
Starting in 1985 a group of women artists and art professionals
came together to protest restrictions on, and promote recognition
of, women in the arts. They called themselves, and their loose
organization, "the Guerrilla Girls." Among their founding members
were plaintiffs Rothenberg and Zempel, and defendant Catherine
Doe a/k/a "Gertrude Stein." In order to focus public attention on
their message, rather than their identities, the Girls decided to maintain personal anonymity, and each member adopted a
pseudonym of a prominent deceased female artist.
Hoffman was the attorney for the group from 1991 to 1996.
During this time she represented it in at least five matters,
including registration of multiple copyrights and several
successful and unsuccessful book contract negotiations. Zempel
and Rothenberg terminated her representation of the group in
From their inception in 1985 until 1999 the Guerrilla Girls
remained an unincorporated association. In the fall of 1999, amid
internal disagreements, some or all of the Guerrilla Girls
decided to formalize their organization, and formed an
incorporated entity Guerrilla Girls, Inc. Shortly thereafter
the discord increased, culminating with at least two factions
starting their own off-shoot groups the defendants Guerrilla
Girls on Tour, Inc. and Guerrilla Girls Broadband, Inc.
The complaint, filed October 16, 2003, alleges in part that the
Guerrilla Girls, Inc., formed in September 1999, is the
successor-in-interest to all the property belonging to the
unincorporated group. This property includes copyrights for at
least 27 posters and two books, Confessions of the Guerrilla
Girls and The Guerrilla Girls' Bedside Companion to the History
of Western Art. Plaintiffs further allege they are their true authors and that
defendants are making unauthorized use of these copyrighted
Plaintiffs move to disqualify Hoffman as attorney for the
present defendants and the proposed defendant-intervenors (all of
whom claim to be current or past members of the unincorporated
group), because of her prior representation of the plaintiffs and
the unincorporated group. Plaintiffs claim that representation
involved matters at issue in the current litigation.
Motions to disqualify counsel are "viewed with disfavor in this
Circuit." Bennett Silvershein Associates v. Furman,
776 F.Supp. 800, 802 (S.D.N.Y. 1991). Because a motion to disqualify an
attorney seeks to separate a party from her chosen counsel and
may be interposed for tactical reasons, the Second Circuit
requires that the moving party meet a "high standard of proof,"
The Government of India v. Cook, 569 F.2d 737, 739 (2d Cir.
1978), and "bear the heavy burden of proving the facts required
for disqualification." Evans v. Artek Systems Corp.,
715 F.2d 788, 794 (2d Cir. 1983). Any doubt, however, "is to be resolved
in favor of disqualification." Hull v. Celanese Corporation,
513 F.2d 568, 571 (2d Cir. 1975). A court deciding a motion to disqualify counsel must "be
solicitous of a client's right freely to choose his counsel a
right which of course must be balanced against the need to
maintain the highest standards of the profession". Gov't of
India, 569 F.2d at 739. The appearance of impropriety alone will
not disqualify an attorney, but disqualification should be
granted when "an attorney's conduct tends to `taint the
underlying trial.'" Board of Ed. of the City of New York v.
Nyquist, 590 F.2d 1241, 1246 (2d Cir. 1979) (quoting W.T. Grant
Co. v. Haines, 531 F.2d 671, 678 (2d Cir. 1976)). A risk of
trial taint "is encountered when an attorney . . . might benefit
a client in a lawsuit by using confidential information about an
adverse party obtained through prior representation of that
party." Glueck v. Jonathan Logan, Inc., 653 F.2d 746, 748 (2d
Plaintiffs rely on Disciplinary Rule 5-108(a) (1) of the Code
of Professional Responsibility (the "Code") as the basis for
their motion to disqualify Hoffman.*fn1 It provides that
. . . a lawyer who has represented a client in a
matter shall not, without the consent of the former
client after full disclosure: 1. Thereafter represent another person in the same or
a substantially related matter in which that person's
interests are materially adverse to the interests of
the former client.
22 N.Y.C.R.R. § 1200.27(a)(1). While federal courts are not bound
by the Code, they often look to it, as well as the American Bar
Association's Code of Professional Responsibility, for guidance
when deciding disqualification motions. See Blue Planet
Software, Inc, v. Games International, LLC, No. 03 Civ. 8904,
2004 U.S. Dist. LEXIS 17047, at *4-5 (S.D.N.Y. August 25, 2004);
Papyrus Technology Corp. v. New York Stock Exchange, Inc., No.
04 Civ. 625, 2004 U.S. Dist. LEXIS 11926, at *12-13 (S.D.N.Y.
June 29, 2004). As the Second Circuit stated in Evans v. Artek:
Ordinarily an attorney may not knowingly reveal a
confidence of his client or use a confidence of his
client to the disadvantage of the client. To ensure
faithful adherence to this principle, an attorney may
be disqualified from representing a client in a
particular case if
(1) the moving party is a former client of the
adverse party's counsel;
(2) there is a substantial relationship between the
subject matter of the counsel's prior representation
of the moving party and the issues in the present
(3) the attorney whose disqualification is sought had
access to, or was likely to have had access to,
relevant privileged information in the course of his
prior representation of the client.
715 F.2d at 791 (citations and footnotes omitted). Each of these
factors is examined below.
1. Former Client
To meet their burden, plaintiffs must first prove that they had
a prior attorney-client relationship with Hoffman. It is
undisputed that Hoffman represented the unincorporated group from
1991 to 1996. During this period she represented, counseled and
advised the unincorporated group on a variety of legal matters.
Defendants argue that Hoffman represented only the group, and
that its members Zempel and Rothenberg individually were thus not
themselves Hoffman's former clients.*fn2 This argument fails
for several reasons.
Because "an unincorporated association is not a legal entity
separate from the persons who compose it," T.D. Holding Corp. v.
Hanley, No. 92 Civ. 6213, 1992 U.S. Dist. LEXIS 20801, at *4
(S.D.N.Y 1992), Hoffman's representation of the unincorporated
Guerrilla Girls as a group is tantamount to her representation of
each of its members. This is obvious with respect to Zempel and
Rothenberg, who were Hoffman's primary contacts within the
unincorporated group while she was its attorney, and who acted as
liaisons between Hoffman and the rest of the persons who composed the
group. As Hoffman herself states: "I also currently represent my
former clients, the Guerrilla Girls who were active in the
unincorporated association from 1985-1996." Hoffman Decl. ¶ 94.
Unlike SMI Industries Canada Ltd. v. Caelter Industries,
Inc., 586 F.Supp. 808 (N.D.N.Y. 1984), Zempel and Rothenberg do
not claim to be Hoffman's former clients merely as successors to
the interests of the unincorporated group, but because they have
an extensive prior relationship with Hoffman as the liaisons
between Hoffman and the rest of the unincorporated group, and in
connection with her obtaining copyrights on, and negotiating with
publishers for, their own works.
2. Substantial Relationship
To prevail under the substantial relationship test, the movant
must demonstrate that "the relationship between issues in the
prior and present cases is `patently clear' . . . `identical' or
`essentially the same.'" Gov't of India, 569 F.2d at 739-40
(citations omitted). "It is the congruence of factual matters,
rather than areas of law, that establishes a substantial
relationship between representations for disqualification
purposes." United States Football League v. National Football
League, 605 F.Supp. 1448, 1460 fn.26 (S.D.N.Y 1985) (emphasis in original).
This standard is easily applied to cases where both the prior and
present representation involve litigation: "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 motion." Id. at 1459.
Difficulty arises, however, when determining whether a
substantial relationship exists when the prior representation was
of a more general nature. In such a case, the test is "whether
facts which were necessary to the first representation are
necessary to the present litigation." Id. at 1449.
Defendants argue that there is no factual issue common to
Hoffman's prior representation of the unincorporated group and
the current litigation.
Plaintiffs Zempel and Rothenberg claim that they own the
posters and books, because they wrote them and created them.
Addressing the fact that all those materials were copyrighted by
the "Guerrilla Girls" and not by them, they argue that (a)
Hoffman knew perfectly well that they were the Guerrilla Girls to
whom the copyright referred, and (b) that the corporate
plaintiff, the Guerrilla Girls, Inc., is in any event the successor-in-interest to the "Guerrilla Girls"
group. They protest the use being made of those materials by the
off-shoot defendants Guerrilla Girls On Tour, Inc. and Guerrilla
Girls Broadband, Inc.
Defendants argue that plaintiffs Zempel and Rothenberg are not
the sole authors of those works. They claim that those works were
collaborative efforts by numerous members of the group.
Defendants maintain that the unincorporated group still exists
today, disputing the plaintiffs' contention that the
unincorporated group ceased to exist when the Guerrilla Girls,
Inc. was formed. They further assert that the unincorporated
group, whose members include the defendants, share rights in the
Hoffman was integrally involved in the registration of those
copyrights. In 1993, as the authorized agent of the
unincorporated group, she registered the 27 copyrights with the
U.S. Copyright Office and listed "Guerrilla Girls" as their
author. While Hoffman claims that she was never told the
identities of the true authors, she does not dispute that she
filed the copyrights with "Guerrilla Girls" named as the author.
The authorship and ownership of the 27 copyrighted posters is a
matter this litigation may have to resolve. In early 1994 Hoffman represented the unincorporated group in
contract negotiations with HarperCollins Publishers, Inc. for
Confessions of the Guerrilla Girls. Zempel and Rothenberg were
Hoffman's only contacts within the unincorporated group. She
corresponded with each of them, using their true names and not
their pseudonyms. Plaintiffs assert that because all
correspondence concerning the book was with Zempel and
Rothenberg, Hoffman understood that Zempel and Rothenberg were
its true authors. Hoffman claims that she did not know who the
true authors were. However, Exhibit A of the HarperCollins
contract signed by Hoffman contains the following language: "5. I
know the true identities of the artists and authors comprising
GG." Zempel Decl. Exhibit 25 at 14. The book was copyrighted by
HarperCollins under the name "The Guerrilla Girls." Nobody claims
that Hoffman intended to deceive or make misrepresentations to
HarperCollins when she said she knew the identities of the
artists and authors. She had in her possession a sealed envelope
which she believed contained these names and identities, which
she retains to this day. It was her access to that information
that justified the representation she made on behalf of the
Guerrilla Girls in the contract. A year later, in 1995, Hoffman again represented the
unincorporated group in contract negotiations, this time with
Viking Penguin for The Guerrilla Girls' Bedside Companion to the
History of Western Art. Under the same circumstances, Hoffman
signed the Viking Penguin contract which contains a clause
identical to that in the HarperCollins contract: "I know the true
identities of the artists and authors comprising GG." Zempel
Decl. Exhibit 29 at 1. Viking Penguin copyrighted that book under
the name "The Guerrilla Girls."
The language in both of these contracts was taken from an
earlier failed contract negotiation with Harry N. Abrams in which
Hoffman represented the unincorporated group. Amid concerns over
the unincorporated group's legal liability, Barbara Hoffman was
asked to represent and warrant that:
(c) she knows the true identities of the artists and
authors comprising the Author; (d) she has prepared a
schedule setting forth each of the posters included
in the Posters and the true identities of the artists
and authors who have created and prepared each of
such posters (and will properly prepare such a
schedule for all other posters that Publisher intends
to include in the Work and will promptly attach such
schedule to the previously prepared schedule)
Zempel Decl. Exhibit 12 at 1-2. Without that representation,
Abrams would not go forward with the negotiation.
Hoffman requested that Zempel provide her with the information
requested in (c). Zempel provided the information to Hoffman; the
parties disagree over whether or not she provided it in a sealed
The current litigation raises the issues of ownership and
authorship of 27 copyrighted posters and two books. Hoffman was
integrally involved in the copyright of the posters and the
contract negotiations for both books. She signed a contract
stating that she knew the identities of the authors and would
prepare a schedule listing these authors. Although she never did
so, it is clear that there is a substantial relationship between
Hoffman's specific representation of the unincorporated group and
the issues in the current case.
Indeed, the issue of successorship was contemplated and
discussed in 1991 when Hoffman was first retained by the
unincorporated group to represent them in book negotiations with
an author, Abby Robinson, and her literary agent, Charlotte
Sheedy. During these negotiations Sheedy voiced concern about the
legal status of the incorporated group. In a letter to Hoffman, Sheedy
reiterated her concerns:
Are the Guerrilla Girls a legal entity? Would they be
jointly liable or is their legal liability limited?
What happens in the event of a suit or a copyright
infringement and what would happen if at some time in
the future the group splits? Who would receive
monies? Who would have control? . . . And what
happens in the future? . . . Who will be authorized
to receive money longterm or be called upon to make
decisions or act for the group so many years in the
Zempel Decl. Exhibit 1 at 1. Upon receipt of Sheedy's letter,
Hoffman discussed these matters with a committee of the
3. Access to Privileged Information
Satisfaction of the third element does not require "proof that
an attorney actually had access to or received privileged
information while representing the client in a prior case."
Gov't of India, 569 F.2d at 740. To do so "would put the former
client to the Hobson's choice of either having to disclose his
privileged information in order to disqualify his former attorney
or having to refrain from the disqualification motion
altogether." Id. Instead, finding a substantial relationship
leads to the presumption "that the former client of the
challenged firm imparted to the firm confidential information
relevant to the present suit." United States Football League,
605 F.Supp. at 1461.
No such presumption is necessary in this case. The fact that
Hoffman had such access is demonstrated by her representations to
publishers that she knew the identities of the authors
(information which is at the heart of this litigation) supported
by their delivery to her of an envelope containing their names,
to be used by her if necessary to the defense of any legal claims
brought against the publisher.
For the reasons set forth above, plaintiff's motion to
disqualify defendants' counsel is granted.