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United States District Court, S.D. New York

October 1, 2004.


The opinion of the court was delivered by: LOUIS STANTON, District Judge


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 1996.

  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 works.

  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 Cir. 1981).

  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 lawsuit; and
  (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 copyrighted works.

  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 envelope.

  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 future?
Zempel Decl. Exhibit 1 at 1. Upon receipt of Sheedy's letter, Hoffman discussed these matters with a committee of the unincorporated group.*fn3

  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.

  So ordered.

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