You are on page 1of 26

UNITED STATES DISTRICT COURT

DISTRICT OF CONNECTICUT

:
RIO BRANDS, LLC, : CIVIL ACTION NO.
Plaintiff, : 3:17-CV-786 (JCH)
:
v. :
:
GCI OUTDOOR, INC., : MAY 22, 2018
Defendants. :

RULING RE: MOTION TO DISQUALIFY COUNSEL (DOC. NO. 49)

I. INTRODUCTION

The plaintiff, Rio Brands, LLC (“Rio Brands”), filed a Complaint against the

defendant, GCI Outdoor, Inc. (“GCI”), on May 12, 2017, alleging that GCI infringed its

patent. See Complaint (“Compl.”) (Doc. No. 1). On March 5, 2018, Rio Brands filed a

Motion to Disqualify the law firm of McCormick, Paulding & Huber, LLP (“McCormick”)

from representing GCI. See Motion to Disqualify Counsel (“Mot. to Disqualify”) (Doc.

No. 49). GCI opposed the Motion. See Memorandum in Opposition to Mot. to

Disqualify (“Mem. in Opp.”) (Doc. No. 52).

For the reasons stated below, the plaintiff’s Motion to Disqualify is DENIED.

II. FACTS

According to the Amended Complaint, Rio Brands is the owner of U.S. Patent

No. RE39,022 (“the ‘022 Patent”), which covers backpack chairs. See Amended

Complaint (“Am. Compl.”) (Doc. No. 47) at ¶ 6. Rio Brands alleges that GCI sold

products, including the Sunshade Backpack Beach Chair and the Waterside Backpack

Beach Chair, which infringe the ‘022 Patent. See id. at ¶ 31. The Amended Complaint

contains seven counts against GCI for patent infringement, federal trade dress dilution,

1
federal trade dress infringement, federal unfair competition, common law unfair

competition, violation of the Connecticut Unfair Trade Practices Act, and tortious

interference with business contacts. See id. at ¶¶ 28–78. The court only discusses

here the facts relevant to McCormick’s representation of Rio Brands and GCI.

GCI asserts that McCormick had previously represented GCI on intellectual

property issues for 20 years prior to the current case. See Mem. in Opp. at 2. The

parties agree that in 2009, Rio Brands and GCI entered into a joint venture as Integrity

Outdoor Brands (“IOB”). See Memorandum in Support of Mot. to Disqualify (“Mem. in

Supp.”) (Doc. No. 49-1) at 2; Mem. in Opp. at 2. IOB dissolved in 2013, and the rights

to the three patents invented by Daniel Grace, GCI’s owner and co-President, were

assigned to Rio Brands. See id. The parties present slightly different portrayals of the

nature of McCormick’s relationship with Rio Brands regarding the prosecution of these

three patents.

The parties agree that McCormick, through Attorney Wm. Tucker Griffith,

prosecuted the three patents, owned by Rio Brands. See Mem. in Supp. at 3; Mem. in

Opp. at 4. The patents were issued on August 6, 2013, March 11, 2014, and February

2, 2016. See Mem. in Opp. at 4. The parties further agree that Rio Brands paid

McCormick for its work on the patent prosecutions, and that McCormick opened a client

file in Rio Brands’s name. See Mem. in Supp. at 2; Mem. in Opp. at 3–4.

Rio Brands therefore asserts that McCormick represented Rio Brands in these

matters. See Mem. in Supp. at 2. Rio Brands further introduces the Declaration of

Warren Cohen, the principal of Rio Brands, which avers that Cohen interviewed Griffith

and engaged him to represent Rio based on that interview. See Declaration of Warren

2
Cohen (“Cohen Decl.”) (Doc. No. 49-2) at ¶ 5. Cohen further avers that he had several

telephone conversations with Griffith “to have questions answered regarding [their]

patent and trademark applications.” Id. Rio Brands also asserts that McCormick held

powers of attorney with respect to the patents. See Mem. in Supp at 4; Mot. to

Disqualify, Declaration of Neelaabh Shankar (“Shankar Decl.”) (Doc. No. 49-3), Ex. D.

GCI presents additional facts and argues that McCormick never represented Rio

Brands “independently of GCI.” See Mem. in Opp. at 8. GCI asserts that all technical

questions and patent strategy was done with GCI and Grace. See id. at 3. Although

GCI acknowledges that McCormick had correspondence with Rio Brands, it argues that

this correspondence was “strictly reserved for business decisions—namely, whether Rio

Brands authorized charges associated with the prosecution of the case, including filing

of responses and payment of issue fees, and after issuance, the payment of applicable

maintenance fees.” See id. at 4. GCI maintains that McCormick had no access to

confidential or privileged information from Rio Brands. See id. at 5. GCI also disputes

that McCormick had power of attorney on behalf of Rio Brands, arguing that the power

of attorney documents were signed by Grace and no new powers of attorney were

issued after Rio Brands acquired the patents. See id. at 4. Finally, GCI represents that

no engagement letter was entered between McCormick and Rio Brands. See id.

Rio Brands filed this suit against GCI on May 12, 2017. See Compl. McCormick,

through Griffith, entered an appearance for GCI on June 8, 2017. See Notice of

Appearance (Doc. No. 14). Griffith filed an Answer with Affirmative Defenses and

Counterclaims on behalf of GCI on July 10, 2017. See Answer (Doc. No. 18). On July

21, 2017, GCI moved to stay the case because Rio Brands had filed a Complaint before

3
the United States International Trade Commission (“ITC”). See Motion to Stay (Doc.

No. 19). Rio Brands did not oppose the Motion, and the court granted the stay on July

28, 2017. See Response to Order to Show Cause (Doc. No. 21); Order Granting

Motion to Stay (Doc. No. 22). The case was administratively closed with the right of

either party to reopen at any time up to 30 days after the conclusion of the ITC

investigation. See Order Granting Motion to Stay.

Rio Brands claims that, after this case was filed and while the case was stayed,

Griffith continued to represent Rio Brands in its patent prosecution matters. On August

2, 2017, Rio Brands paid McCormick’s March 24, 2017 invoice. See Reply in Support

of Mot. to Disqualify (“Reply in Supp.”) (Doc. No. 54) at 2; Shankar Decl., Ex. C at 11.

On August 4, 2017, McCormick paid a patent maintenance fee to the United States

Patent and Trademark Office (“USPTO”) on behalf of Rio Brands. See Reply in Supp.

at 2; Shankar Decl., Ex. E. GCI does not dispute that these payments occurred. See

Mem. in Opp. at 9.

On December 1, 2017, McCormick withdrew from representing Rio Brands with

respect to the three patents. See Shankar Decl., Ex. A; Mem. in Opp. at 5. GCI’s

Memorandum indicates that this was in response to a letter sent by Rio Brands on

November 30, 2017, which alerted McCormick that the case before this court would

soon be reopened. See Mem. in Opp. at 10. On December 8, 2017, Rio Brands moved

to reopen this case because the ITC investigation had been terminated without

resolving the claims made before this court. See Motion to Reopen Case (Doc. No. 33).

The court granted the Motion, and the case was reopened on December 12, 2017. See

4
Order Granting Motion to Reopen Case (Doc. No. 34). Rio Brands filed the current

Motion to Disqualify Counsel on March 5, 2018. See Mot. to Disqualify.

III. LEGAL STANDARD

“The disqualification of an attorney in order to forestall violation of ethical

principles is a matter committed to the sound discretion of the district court.” Karlen v.

Westport Bd. of Educ., No. 3:07-CV-309(CFD), 2009 WL 801632, at *1 (D. Conn. Mar.

24, 2009) (citing Cresswell v. Sullivan & Cromwell, 922 F.2d 60, 72 (2d Cir. 1990)).

“The authority of federal courts to disqualify attorneys derives from their inherent power

to ‘preserve the integrity of the adversary process.’” Hempstead Video, Inc. v. Inc. Vill.

of Valley Stream, 409 F.3d 127, 132 (2d Cir. 2005) (quoting Bd. of Educ. v. Nyquist, 590

F.2d 1241, 1246 (2d Cir. 1979)). In deciding a Motion to Disqualify, the court must

“balance ‘a client’s right freely to choose his counsel’ against ‘the need to maintain the

highest standards of the profession.’” Id. (quoting Gov't of India v. Cook Indus., Inc.,

569 F.2d 737, 739 (2d Cir. 1978)). American Bar Association and state disciplinary

rules can serve as general guidance for decisions on disqualification, but “not every

violation of a disciplinary rule will necessarily lead to disqualification.” Id. Rather,

“disqualification is warranted only if ‘an attorney’s conduct tends to taint the underlying

trial.’” GSI Commerce Solutions, Inc. v. Babycenter, LLC, 618 F.3d 204, 209 (2d Cir.

2010) (quoting Nyquist, 590 F.2d at 1246).

The court notes that courts should generally be “reluctant to grant motions to

disqualify because such motions may be tactivally motivated and impinge on a party’s

right to employ the counsel of its choice.” Karlen, 2009 WL 801632, at *1. Additionally,

motions to disqualify “inevitably result in delay and added expense.” Id. Therefore, the

moving party bears a “heavy burden of proving facts required for disqualification.”
5
Evans v. Artek Sys. Corp., 715 F.2d 788, 794 (2d Cir. 1983). However, although

disqualification is a disfavored remedy in the Second Circuit, see Tyco Healthcare

Group, LP v. Ethicon Endo-Surgery, Inc., No. 3:10-CV-60 (JBA), 2011 WL 12910725, at

*5 (D. Conn. Dec. 30, 2011), “any doubt is to be resolved in favor of disqualification,”

Hull v. Celanese Corp., 513 F.2d 568, 571 (2d Cir. 1975).

A. Concurrent Representation

One form of conduct that may taint the underlying trial is a conflict of interest in

which “an attorney places himself in a position where he could use a client’s privileged

information against that client.” See Hempstead Video, 409 F.3d at 133. “The standard

for disqualification varies depending on whether the representation is concurrent or

successive.” Id. Rule 1.7 of the Connecticut Rules of Professional Conduct governs

concurrent conflicts of interest.1 Rule 1.7 states that “a lawyer shall not represent a

client if the representation involves a concurrent conflict of interest.” Conn. R. Prof.

Conduct 1.7(a). This rule is based in the duty of loyalty and independent judgment

owed by the attorney to the client. See Conn. R. Prof. Conduct 1.7 Commentary.

Rule 1.7 defines a concurrent conflict of interest to exist if:

(1) the representation of one client will be directly adverse


to another client; or

(2) there is a significant risk that the representation of one


or more clients will be materially limited by the lawyer’s
responsibilities to another client, a former client or a third
person or by a personal interest of the lawyer.

1By Local Rule, the District of Connecticut has adopted most of the Connecticut Rules of
Professional Conduct. See L. R. Civ. Proc. 83.2(a)(1).

6
Conn. R. Prof. Conduct 1.7(a). The Commentary to Rule 1.7 indicates that the

representation is directly adverse if the lawyer acts as an advocate in one matter

against a client the lawyer represents in another matter, even if the matters are wholly

unrelated. See Conn. R. Prof. Conduct 1.7 Commentary.

Rule 1.7(b) permits concurrent representation if:

(1) the lawyer reasonably believes that the lawyer will be


able to provide competent and diligent representation to
each affected client;

(2) the representation is not prohibited by law;

(3) the representation does not involve the assertion of a


claim by one client against another client represented by
the lawyer in the same litigation or the same proceeding
before any tribunal; and

(4) each affected client gives informed consent, confirmed


in writing.

Conn. R. Prof. Conduct 1.7(b). Absent the exception under Rule 1.7(b), the Connecticut

Rules of Professional Conduct advise that an attorney must decline the representation if

a conflict of interest exists before representation is undertaken, and must withdraw from

the representation if a conflict of interest arises after the representation has been

undertaken. See Conn. R. Prof. Conduct 1.7 Commentary.

Although a violation of a disciplinary rule does not always lead to disqualification,

the Second Circuit has stated that, “[i]n cases of concurrent representation, we have

ruled it is ‘prima facie improper’ for an attorney to simultaneously represent a client and

another party with interests directly adverse to that client.” Hempstead Video, 409 F.3d

at 133 (quoting Cinema 5, Ltd. v. Cinerama, Inc., 528 F.2d 1384, 1387 (2d Cir. 1976));

see also Bank of Am., N.A. v. Klein, No. 3:10-CV-987 (MRK), 2011 WL 63910, at *4 (D.

Conn. Jan. 3, 2011) (“Under that standard, there is a virtual per se bar on concurrent

7
representation in this Circuit.”). To overcome this prima facie determination, the

attorney “must be prepared to show, at the very least, that there will be no actual or

apparent conflict in loyalties or diminution in the vigor of his representation.”

Hempstead Video, 409 F.3d at 133. The Second Circuit has described this as a “heavy

burden.” See Cinema 5, 528 F.2d at 1387.

B. Successive Representation

Rule 1.9 of the Connecticut Rules of Professional Conduct governs successive

representation and lays out a less exacting standard than Rule 1.7. Under Rule 1.9, “[a]

lawyer who has formerly represented a client in a matter shall not 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 unless the former

client gives informed consent, confirmed in writing.” Conn. R. Prof. Conduct 1.9(a).

The Second Circuit has held that an attorney may be disqualified in cases of

successive representation 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.

Hempstead Video, 409 F.3d at 133 (quoting Evans, 715 F.2d at 791).

IV. DISCUSSION

Rio Brands argues that McCormick should be disqualified because Attorney

Griffith represents GCI in the current litigation against Rio Brands while it concurrently

8
represented Rio Brands in its patent prosecution matters until McCormick withdrew from

representing Rio Brands on December 1, 2017. See Mem. in Supp. at 10. Rio Brands

further argues that McCormick’s withdrawal on December 1, 2017, was improper

because an attorney or law firm cannot avoid a concurrent representation problem by

dropping “like a hot potato” one client in order to continue representation of the more

lucrative client.2 See id. at 9–10. Rio Brands argues that disqualification is appropriate

because concurrent representation is prima facie improper. See id.

GCI argues to the contrary that the legal standard for disqualification in cases of

concurrent representation is not applicable to this case because McCormick does not

concurrently represent Rio Brands and GCI. See Mem. in Opp. at 8–12. It is unclear

from GCI’s Memorandum whether it disputes that McCormick ever represented Rio

Brands. Compare, e.g., Mem. in Opp. at 4 (introducing facts, such as the lack of an

engagement letter, appearing to undermine the existence of an attorney-client

relationship); with id. at 12 (referring to “McCormick’s prior representation of Rio

Brands”). GCI does argue that McCormick’s activity on behalf of Rio Brands terminated

when the patents were issued, except for “administrative tasks.” See id. at 9. GCI

further argues that McCormick did not drop Rio Brands “like a hot potato” when it

formally withdrew on December 1, 2017. See id. GCI therefore argues that the case is

one of successive, not concurrent representation, and the standard for disqualification in

2 Because Rio Brands argues that this case should be treated as a case of concurrent

representation, Rio Brands does not make any arguments addressing whether disqualification is
warranted if the case is to be treated instead as an instance of successive representation. See Mem. in
Supp. at 9–10.

9
cases of successive representation has not been met. See id. at 12–15. Finally, GCI

argues that there is no risk of trial taint in this case. See id. at 15.

The court begins by finding that McCormick had an attorney-client relationship

with Rio Brands when it represented Rio Brands in the prosecution of the three patents

it acquired from the joint venture as IOB. Under Connecticut law, “[a]n attorney-client

relationship is established when the advice and assistance of the attorney is sought and

received in matters pertinent to his profession.” DiStefano v. Milardo, 276 Conn. 416,

422 (2005); Matthews v. Lynch, No. CIV 3:07-CV-739 (WWE), 2009 WL 2407363, at *4

(D. Conn. Aug. 6, 2009) (recognizing “Connecticut state law’s interpretation of what

constitutes an attorney-client relationship”).

In this case, the parties agree that McCormick prosecuted patents owned by Rio

Brands, that Rio Brands paid McCormick for that work, and that McCormick opened a

client file in Rio Brands’s name. See Mem. in Supp. at 2–3; Mem. in Opp. at 3–4.

Although McCormick also consulted with Grace and GCI, GCI agrees that McCormick

had some correspondence with Rio Brands involving “whether Rio Brands authorized

charges associated with prosecution of the case.” See Mem. in Op. at 4. Although

Cohen’s Declaration does not state that confidential information was shared with

McCormick, it does include facts indicating that he reasonably intended to and believed

he had entered into an attorney-client relationship with McCormick. See Cohen Decl. at

¶ 5. Additionally, McCormick’s formal withdrawal from representation on December 1,

2017, indicates that it believed that an attorney-client relationship existed from which

withdrawal was required. See Shankar Decl., Ex. A, at 1 (“We . . . have determined that

we must withdraw from representing Rio Brands with respect to these matters . . . .”).

10
As noted above, it is not clear from GCI’s Memorandum whether it disputes that

an attorney-client relationship existed between McCormick and Rio Brands for the

purposes of the patent prosecutions. Compare Mem. in Opp. at 6 (“Rio Brands’

arguments require this court to ignore the ‘representation’ that McCormick actually

provided to Rio Brands . . . .”); with id. at 12 (acknowledging that “Rio Brands may argue

that it was a former client of McCormick”). GCI’s argument may be more appropriately

construed as an argument that “this is not a case where McCormick represented Rio

Brands independently of GCI.” Id. at 8 (emphasis added). To the extent that GCI

characterizes McCormick’s representation of Rio Brands as a common representation

of both Rio Brands and GCI, the Commentary to Rule 1.7 makes clear that an attorney-

client relationship nonetheless existed between McCormick and Rio Brands. See Conn.

R. Prof. Conduct 1.7 Commentary (“[E]ach client in the common representation has the

right to loyal and diligent representation and the protection of Rule 1.9 concerning the

obligations to a former client.”); see also id. (“Ordinarily, the lawyer will be forced to

withdraw from representing all of the clients if the common representation fails.”).

Having established that an attorney-client relationship existed between

McCormick and Rio Brands, the court now turns to the question of when that

relationship terminated. The parties agree that, after the case was initiated in May

2017, Rio Brands paid an invoice to McCormick, and McCormick paid a patent

maintenance fee to the USPTO on behalf of Rio Brands. See Shankar Decl., Ex. C, at

11; Shankar Decl., Ex. E; Mem. in Opp. at 9. Rio Brands argues that these payments

are evidence that McCormick continued to represent Rio Brands. See Mem. in Supp. at

4. GCI argues to the contrary that this activity was “related solely to administrative

11
tasks” and thus was “wholly unrelated to the subject matter of the related patents and

involve[d] minimal correspondence between counsel and client.” Mem. in Opp. at 9.

The Commentary to Connecticut Rule of Professional Conduct 1.3 states:

Unless the relationship is terminated as provided in Rule 1.16,


a lawyer should carry through to conclusion all matters
undertaken for a client. If a lawyer’s employment is limited to
a specific matter, the relationship terminates when the matter
has been resolved. . . . Doubt about whether a client-lawyer
relationship still exists should be clarified by the lawyer,
preferably in writing, so that the client will not mistakenly
suppose the lawyer is looking after the client’s affairs when
the lawyer has ceased to do so.

Conn. R. Prof. Conduct 1.3 Commentary. Neither party has identified any Second

Circuit precedent indicating whether representation for purposes of patent prosecution

terminates when the patent is issued or whether payment of maintenance fees is

sufficient to indicate an ongoing relationship. Nor is there an engagement letter in this

case detailing the specific scope of the representation. See Mem. in Opp. at 4.

Rio Brands cites to an Oregon Formal Opinion to support its argument that

maintenance fees are indicative of an ongoing relationship.3 See Reply in Supp., Ex. B

(“Oregon Op. 2005-146”). The Oregon Formal Opinion states that, when a lawyer

“maintains a long-term docket and sends periodic reminders to past clients regarding

the possible need for further action with respect to otherwise completed matters,” such

as reminders to pay maintenance fees for patents, the clients to whom those notices are

sent are current clients. See id. at 1. Although the Oregon Formal Opinion is not

3 Rio Brands also cites a case in the Northern District of California. See Mindscape, Inc. v. Media

Depot, Inc., 973 F. Supp. 1130, 1132 (N.D. Cal. 1997). However, in that case, the attorney had not
corrected an error in the name on the patent and therefore had not completed the task for which he had
been retained. See id. at 1132 (“Until Chan completes its task of recording Mindscape’s name on the
‘398 patent, however, Chan has an ongoing relationship with Mindscape.”). Therefore, the case was not
based solely on the payment of maintenance fees and therefore has limited relevance to this case.

12
binding on this court, GCI cites no case law to the contrary stating that the payment of

maintenance fees on a patent is not sufficient to indicate an ongoing relationship.

For the purposes of this Motion to Disqualify, the court assumes, without deciding

that the payment of maintenance fees was evidence that McCormick continued to

represent Rio Brands. The court need not decide this question as a matter of law

because other evidence indicates that the parties intended and believed the

representation to continue until December 1, 2017. The Commentary to Connecticut

Rule of Professional conduct 1.3 clearly places the burden on the lawyer, not the client

to clarify the termination of the relationship when there may be doubt about whether the

relationship still exists. See Conn. R. Prof. Conduct 1.3 Commentary. Because there

was no engagement letter specifying the scope of the representation, see Mem. in Opp.

at 4, Rio Brands could reasonably have believed that McCormick’s representation for

purposes of the patent prosecution continued through monitoring payment of

maintenance fees. Thus, if McCormick believed the relationship had terminated

because the subject matter of the representation had been completed, it should have

informed Rio Brands of the termination. McCormick did this on December 1, 2017. See

Shankar Decl., Ex. A. The fact that McCormick felt it necessary to withdraw from

representation on December 1, 2017, is evidence that neither party considered the

representation to have been terminated prior to that date.

Therefore, the court proceeds as though McCormick was representing Rio

Brands until December 1, 2017. Thus, for at least some portion of the current litigation,

McCormick was concurrently representing Rio Brands and GCI.4 That concurrent

4
Rio Brands argues that the period of concurrent representation lasted from June 8, 2017, when
McCormick entered an appearance for GCI, until December 1, 2017, when McCormick withdrew from

13
representation was in violation of Rule 1.7 because McCormick’s representation of GCI

was directly adverse to Rio Brands. See Conn. R. Prof. Conduct 1.7 Commentary

(indicating that matters are directly adverse when a lawyer acts as an “advocate in one

matter against a person the lawyer represents in some other matter, even when the

matters are wholly unrelated”). The exception in Rule 1.7(b) is inapplicable here

because there is no evidence that Rio Brands consented to the concurrent

representation and, even if it had, Rule 1.7(b) “prohibits representation of opposing

parties in the same litigation, regardless of the clients’ consent.” See id.

GCI’s argument that there was no concurrent representation after it withdrew on

December 1, 2017, and, therefore, that Rule 1.9 should apply instead is unavailing.

See Mem. in Opp. at 12–15. “[W]here counsel have simultaneously represented clients

with differing interests, the standard for concurrent representation applies even if the

representation ceases prior to the filing of a disqualification motion.” Merck Eprova AG

v. ProThera, Inc., 670 F. Supp. 2d 201, 209 (S.D.N.Y. 2009). “This principle is based

on the rationale that ‘if the rule was otherwise, an attorney could always convert a

present client into a former client by choosing when to cease to represent the disfavored

client.” Id. (quoting Ehrich v. Binghamton City School District, 210 F.R.D. 17, 25

(N.D.N.Y. 2002)). “[T]his is referred to as the ‘hot potato’ rule, which holds that counsel

representing Rio Brands. See Mem. in Supp. at 10. GCI notes that the case was stayed from July 28,
2017, until December 12, 2017, and, therefore, that there was no actual conflict during that time. See
Mem. in Opp. at 10; Order Granting Motion to Stay; Order Granting Motion to Reopen. The court
addresses the timing of the stay below in its discussion on whether McCormick dropped Rio Brands “like
a hot potato.” Here, it is sufficient to note that McCormick at least represented GCI and Rio Brands
concurrently for the period from June 8, 2017, until July 28, 2017, during which time it filed an Answer on
behalf of GCI on July 10, 2017. See Answer.

14
may not avoid a disqualifying conflict by dropping the less desirable client like a ‘hot

potato.’” Id.

Rio Brands cites a number of cases supporting the “hot potato” rule, see Mem. in

Supp. at 9, but GCI argues that none of those cases are Second Circuit cases that

would be binding on this court, see Mem. in Opp. at 11. While this is true, the court

believes that the “hot potato” rule is likewise applicable in this District. Although GCI

notes that the Connecticut Superior Court in Philbrick v. Chase departed from applying

the “hot potato” rule because the attorney in that case did not knowingly enter into the

adverse representation,5 Philbrick does recognize that “[t]he general rule applied by

courts is that ‘[a] lawyer may not avoid the automatic disqualification rule applicable to

concurrent representation of conflicting interests by unilaterally converting a present

client into a former client.’” Philbrick v. Chase, No. CV980262264, 2003 WL 21384532,

at *3 (Conn. Super. Ct. June 3, 2003) (quoting American Airlines, Inc. v. Sheppard,

Mullin, Richter & Hampton, 96 Cal. App. 4th 1017, 1037 (2002)). Likewise, interpreting

the Connecticut Rules of Professional Conduct, a Massachusetts state court reached

the same conclusion. See Ferguson Elec. Co. v. Suffolk Const. Co., No. CIV. A. 96-

5 Rio Brands appropriately distinguishes the outcome of Philbrick from this case. In Philbrick, the
court applied the successive representation standard because it was “not a situation where a law firm
consciously created a conflict or manipulated client relationships for financial gain,” but rather one in
which the attorney had inadvertently and unknowingly entered into the conflict. See Philbrick, 2003 WL
21384532, at *5. In contrast, the Philbrick court discusses Florida Insurance Guaranty Ass’n, Inc. v.
Carey Canada, Inc., 749 F. Supp. 255, 261 (S.D. Fla. 2003), which Philbrick distinguishes as applying the
concurrent representation standard “because the law firm did not withdraw from representing the plaintiff
until long after discovery of the conflict. See Philbrick, 2003 WL 21384532, at *5. McCormick’s case is
more like Florida Insurance than Philbrick because there is no evidence that the conflict was inadvertent,
as Attorney Griffith was the attorney involved in both representations, and because he did not respond
immediately to remedy the situation, but waited until December 1, 2017. See Mem. in Supp. at 3.

15
5885-E, 1998 WL 140101, at *3 (Mass. Super. Mar. 20, 1998) (“Neither the Connecticut

Rules of Professional Conduct nor this court will countenance such conduct.”).

Furthermore, the court notes that a number of other district courts in this Circuit

have described the rule as “well settled.” See Burda Media, Inc. v. Blumenberg, No. 97

CIV. 7167 (RWS), 1999 WL 1021104, at *3 n.1 (S.D.N.Y. Nov. 8, 1999) (“It is well

settled that whether an adverse attorney-client relationship is simultaneous or

continuing is to be determined as of the time that the conflict arises, and not at the time

the motion to disqualify is finally brought before the court.”); see also Universal City

Studios, Inc. v. Reimerdes, 98 F. Supp. 2d 449, 453 (S.D.N.Y. 2000) (“It is . . .

established law that an attorney cannot avoid disqualification under the Cinema 5 rule

merely by ‘firing’ the disfavored client, dropping the client like a hot potato, and

transforming a continuing relationship to a former relationship by way of client

abandonment.” (citation omitted)).

Therefore, under the “hot potato” rule, the court concludes that McCormick’s

representation of GCI must be assessed under the concurrent representation rule rather

than the successive representation rule. As such, McCormick has violated the

Connecticut Rules of Professional Conduct, the December 2017 withdrawal

notwithstanding. However, not every violation of the Rules of Professional Conduct

warrants disqualification. See Bd. of Ed. v. Nyquist, 590 F.2d 1241, 1246 (2d Cir.

1979). Rather, disqualification is only appropriate when the attorney misconduct “tends

to taint the underlying trial.” See id.; Hempstead, 409 F.3d at 132.

Before addressing the appropriate standard for determining whether there is risk

of trial taint in cases where the client was dropped like a “hot potato,” the court notes

16
that this case differs from typical “hot potato” cases in two ways. While this does not

excuse McCormick’s behavior, it does place it in context. First, it appears that

McCormick has represented GCI “in connection with intellectual property matters for

over 20 years,” and its representation of Rio Brands began more recently in 2013,

arising out of a common representation for GCI and Rio Brands when they undertook a

joint venture. See Mem. in Opp. at 2. This does not in any way diminish the duties of

loyalty owed by McCormick to Rio Brands. See Stratagem Dev. Corp. v. Heron Int'l

N.V., 756 F. Supp. 789, 794 (S.D.N.Y. 1991) (“[The attorney’s] obligations to Stratagem

do not trump those it owes to FSC, even if they predated them. Once [the attorney]

undertook to represent FSC, it assumed the full panoply of duties that a law firm owes

to its client.”). However, it does make McCormick’s actions more understandable than

most instances in which an attorney drops a client “‘like a hot potato’ in order to ‘keep

happy a far more lucrative client.’” See Eaton v. Coca-Cola Co., 640 F. Supp. 2d 203,

207 (D. Conn. 2009) (“Moreover, Pepsi, not the Defendant, was [the attorney’s] client

first. The ‘hot potato’/‘lucrative client’ analysis seems to be more aptly applied in

situations where firms drop older clients in favor of newer, more profitable clients, not

where firms are attempting to salvage their relationships with long-standing clients.”).

Second, at the time that McCormick withdrew on December 1, 2017, the case

had been stayed and administratively closed since July 28, 2017, and had not yet been

reopened. See Order Granting Motion to Stay (Doc. No. 22). Thus, there were no

actively pending adverse matters between the two parties at the time of the withdrawal.

The court is not aware of any Second Circuit precedent indicating whether or not a

stayed, administratively closed case remains a directly adverse concurrent

17
representation during the period of the stay. One case in the Eastern District of Texas

at least implies that a stay may have the effect of mooting the conflict of interest. See

Microsoft Corp. v. Commonwealth Sci. & Indus. Research Organisation, No. 6:06 CV

549, 2007 WL 4376104, at *1 (E.D. Tex. Dec. 13, 2007), aff'd sub nom. Commonwealth

Sci. & Indus. Research Organisation v. Toshiba Am. Info. Sys., Inc., 297 Fed. App'x 970

(Fed. Cir. 2008) (acknowledging the argument that “if the Court stays certain claims,

disqualification becomes unnecessary as Townsend will no longer be directly adverse to

Marvell”). Given the absence of precedent in this Circuit, the court does not go so far as

to hold that the conflict was mooted at the time of withdrawal, especially as the parties

could reasonably have anticipated that the case would be reopened if the ITC did not

sufficiently resolve the issues. However, the absence of any actively pending adverse

actions between GCI and Rio Brands is noteworthy because it also differentiates this

case from the typical case in which a client is dropped “like a hot potato.”

Having acknowledged these two mitigating circumstances, the court now turns to

the determination of whether McCormick’s conflict of interest and subsequent

withdrawal from representing Rio Brands would tend to taint the trial, thereby warranting

disqualification. The Second Circuit has stated:

[W]ith rare exceptions disqualification has been ordered only


in essentially two kinds of cases: (1) where an attorney’s
conflict of interests in violation of Canons 5 and 96 of the Code
of Professional Responsibility undermines the court’s
confidence in the vigor of the attorney’s representation of his
client; or more commonly (2) where the attorney is at least
potentially in a position to use privileged information
concerning the other side through prior representation, for

6 “Canon 5 provides: A lawyer should exercise independent judgment on behalf of a client.

Canon 9 provides: A lawyer should avoid even the appearance of professional impropriety.” Nyquist, 590
F.2d at 1245 n.6.

18
example, in violation of Canons 47 and 9, thus giving his
present client an unfair advantage.

Nyquist, 590 F.2d at 1246. Generally, the party seeking disqualification bears the

“heavy burden of proving facts required for disqualification.” Evans v. Artek Sys. Corp.,

715 F.2d 788, 794 (2d Cir. 1983).

However, the rule is different in cases of concurrent representation. “Where the

relationship is a continuing one, adverse representation is prima facie improper, and the

attorney must be prepared to show, at the very least, that there will be no actual or

apparent conflict in loyalties or diminution in the vigor of his representation.” Cinema 5,

Ltd. v. Cinerama, Inc., 528 F.2d 1384, 1387 (2d Cir. 1976); see also GSI Commerce

Sols., Inc. v. BabyCenter, LLC, 618 F.3d 204, 209 (2d Cir. 2010). This places the

burden—“a burden so heavy that it will rarely be met”—on the attorney opposing

disqualification. See GSI Commerce Sols., 618 F.3d at 209.

Because the Second Circuit has not opined on cases involving the “hot potato”

rule, it has likewise not addressed whether, in such cases, trial taint should be assessed

under the general rule or the Cinema 5 rule applied to concurrent representation.8 Nor

7 “Canon 4 provides: A lawyer should preserve the confidences and secrets of a client.” Nyquist,

590 F.2d at 1245 n.7.

8 The court notes that the Second Circuit has not, however, held that the Cinema 5 rule applies in
all instances of concurrent adverse representation. See Glueck v. Jonathan Logan, Inc., 653 F.2d 746,
749 (2d Cir. 1981) (holding that “the strict standards of Cinema 5” do not apply to an attorney who
represents a party against a member of an association that the attorney’s firm represents). The Glueck
court stated, “That burden [under Cinema 5] is properly imposed when a lawyer undertakes to represent
two adverse parties, both of which are his clients in the traditional sense. But when an adverse party is
only a vicarious client by virtue of membership in an association, the risks against which Canon 5 guards
will not inevitably arise.” Id. Although the facts of vicarious representation are distinct from the “hot
potato” scenario addressed in this case, Glueck indicates that the Cinema 5 standard does not
necessarily apply to all cases that could technically be treated as cases of concurrent representation if the
same risks are not inherently present. Id.

19
has the District of Connecticut answered this question.9 Other district courts within the

Circuit are split. Some district courts in New York have applied the prima facie improper

standard in Cinema 5 to cases in which the attorney dropped the client “like a hot

potato.” See, e.g., First NBC Bank v. Murex, LLC, 259 F. Supp. 3d 38, 68 (S.D.N.Y.

2017); Akagi v. Turin Hous. Dev. Fund Co., No. 13 CIV. 5258 (KPF), 2017 WL 1076345,

at *12–*13 (S.D.N.Y. Mar. 22, 2017); Burda Media, 1999 WL 1021104, at *3 n.1 (“It is

also established law that an attorney cannot avoid disqualification under the Cinema 5

rule merely by ‘firing’ the disfavored client, dropping the client like a hot potato, and

transforming a continuing relationship to a former relationship by way of client

abandonment.” (emphasis added)).

Other courts, however, have nonetheless required the moving party to meet its

burden of proving a trial taint. See In re Agway, Inc., No. 02-65872, 2005 WL 3806043,

at *2–5 (Bankr. N.D.N.Y. Dec. 9, 2005); Pfizer v. Stryker Corp., 256 F. Supp. 2d 224,

225–27 (S.D.N.Y. 2003); Universal City Studios, 98 F. Supp. 2d at 455–56. In essence,

such cases treat the “hot potato” rule as requiring the application of the concurrent

representation standard rather than the successive representation standard for

determining whether a violation has occurred, but not for determining whether that

violation requires disqualification. For example, in Pfizer, the court rejected the

argument that “there always is a significant risk of trial taint when an attorney sues a

current client.” Pfizer, 256 F. Supp. 2d at 227. Instead, the Pfizer court recognized that

9 Language in Philbrick implies that a Connecticut Superior Court may also have applied the

stricter Cinema 5 rule to “hot potato” cases, but Philbrick did not find the “hot potato” rule applicable in
that case and therefore was not actually faced with deciding whether to apply the Cinema 5 rule to such
cases. See Philbrick, 2003 WL 21384532, at *3 (“[T]he general rule applied by courts is that ‘[a] lawyer
may not avoid the automatic disqualification rule applicable to concurrent representation of conflicting
interests by unilaterally converting a present client into a former client.’”).

20
“there are unusual instances in which the nature of the first attorney-client relationship

will be such as to eliminate any risk of trial taint. . . . There is nothing in Glueck or its

progeny that suggests that the virtually per se rule of disqualification in Cinema 5

survives even in such circumstances.” Id.

Here, the court need not decide this unsettled question of law because it finds

disqualification to be inappropriate under either standard. Under the “trial taint”

analysis, Rio Brands bears the heavy burden of proving that McCormick’s conflict would

“impair the ability of the court to reach a fair and just result.” See In re Agway, 2005 WL

3806043, at *3 (citing Pfizer, 256 F. Supp. 2d at 227). Rio Brands has not met this

burden. In its briefings, Rio Brands devotes its attention to arguing that McCormick has

acted improperly by withdrawing from representing Rio Brands and continuing to

represent GCI. Rio Brands has not, however, made any effort to identify any way in

which it has been prejudiced or negatively affected by McCormick’s actions, let alone in

a way significant enough to taint the integrity of the trial. Without doing so, Rio Brands

has not proven that disqualification is warranted under this standard.

Even under the Cinema 5 standard, which places the heavy burden instead on

GCI and McCormick, the court finds that GCI and McCormick have met this burden of

showing that “there will be no actual or apparent conflict in loyalties or diminution in the

vigor of representation.” See Cinema 5, 528 F.2d at 1387. Although the court

recognizes that this is a “burden so heavy that it will rarely be met,” see GSI Commerce

Sols., 618 F.3d at 209, the Second Circuit found that burden to be met in Victorinox AG

v. B&F Sys., Inc., 709 Fed. App'x 44, 53 (2d Cir. 2017), as amended (Oct. 4, 2017). In

Victorinox, the Second Circuit upheld the district court’s conclusion that there was “no

21
actual or apparent conflict justifying disqualification,” citing in part the fact that “there

was no evidence that Plaintiff’s litigation team obtained any material information from

the [other client’s] litigation team.” Id. Likewise, the district court for the Southern

District of New York in Pfizer also stated that, if the Cinema 5 standard were to apply, it

nonetheless found that “no actual or apparent conflict” existed where the plaintiff never

provided confidential information to the conflicted firm. See Pfizer, 256 F. Supp. 2d at

226–27.

Here, as with Victorinox and Pfizer, there is no evidence that McCormick

obtained any confidential information from Rio Brands in the course of its representation

regarding the patent prosecutions. GCI and McCormick assert that all confidential

information regarding the patents was in the possession of Grace, the sole inventor of

the patented technology and co-President of GCI, and therefore was shared by both

GCI and Rio Brands. See Mem. in Opp. at 5. They state that all substantive

correspondence regarding the patents included Grace, and “McCormick has never been

privy to any confidential information of Rio Brands.” See id. at 8 (emphasis in original).

They further state that any correspondence between McCormick and Rio Brands that

did not include Grace or GCI “was strictly reserved for business decisions—namely,

whether Rio Brands authorized charges associated with the prosecution of the case,

including filing of responses and payment of issue fees, and after issuance, the

payment of applicable maintenance fees.” See id. at 4.

These facts are not disputed by Rio Brands.10 Rio Brands does not claim in

either of its Memoranda that any confidential information was exchanged with

10 The court acknowledges that GCI and MCCormick bear the burden of proving there is no actual
or apparent conflict under the Cinema 5 standard. See GSI Commerce Sols., 618 F.3d at 209. The court

22
McCormick. Its only statement regarding any correspondence is that Cohen “had

several telephone conversations with Attorney Griffith, to have questions answered

regarding our patent and trademark applications.” Cohen Decl. at ¶ 5. Even in its

Reply to GCI’s Memorandum in Opposition, in which GCI states multiple times that no

confidential information was ever shared, Rio Brands does not challenge or disagree

with that fact. Therefore, there is no risk that McCormick will use any privileged

information of Rio Brands against it in the current litigation. This is particularly true

given the subject matter of the current litigation is a different patent than those

McCormick prosecuted on behalf of Rio Brands, which representation originated from a

joint venture with GCI. See Mem. in Supp. at 3.

Furthermore, the court also finds that the vigor of McCormick’s representation

has not been diminished by the period of concurrent representation.11 Any substantive

activity in Rio Brands’s patent prosecutions was completed with the issuance of the

patents, the last of which occurred in February 2016, over a year before Rio Brands

filed this case in May 2017. See Mem. in Opp., Ex. F. The parties agree that the extent

of McCormick’s representation of Rio Brands during the period of concurrent

representation was limited to Rio Brands’s payment of an invoice and McCormick’s

payment of a maintenance fee on the patent on Rio Brands’s behalf. See Reply in

notes that these facts are stated in GCI’s Memorandum, as well as in letters that were sent from
McCormick to Rio Brands on July 28, 2017, and December 8, 2017. See Mem. in Opp. at 4–5; Shankar
Decl., Ex. G; Shankar Decl., Ex. I. It would have been preferable for GCI and McCormick to additionally
introduce the affidavit, for example, of Attorney Griffith, testifying to these facts. However, the court
considers the facts asserted in the Memorandum in Opposition and McCormick’s letters to be sufficient in
view of the fact that Rio Brands has not disputed these facts.

11 The court focuses its analysis on the vigor of McCormick’s representation of Rio Brands, as

GCI’s opposition to the Motion indicates it is satisfied with the vigor of McCormick’s representation of it in
the current litigation and wishes to continue being represented by McCormick.

23
Supp. at 1–2. Rio Brands has not alleged that McCormick was not prompt and effective

in paying the fee, and it is difficult to imagine how the vigor of McCormick’s

representation could otherwise be affected, given the limited nature of the

representation. Nor are Rio Brands’s patents negatively affected by McCormick’s

withdrawal. The withdrawal letter indicates that no actions relating to the patents

required immediate attention, and all that is required in those cases moving forward is to

pay the maintenance fees, the next of which is not due for almost 2 years. See Shankar

Decl., Ex. A, at 1–2.

Therefore, the court finds that, even under the Cinema 5 standard,

disqualification is not warranted in this case. In doing so, the court notes that it does not

condone McCormick’s actions, which, as discussed above, violated the Connecticut

Rules of Professional Conduct. The court is especially concerned that, unlike a conflict

of interest between two different attorneys at the same firm, Attorney Griffith personally

handled Rio Brands’s patent prosecutions and now personally represents GCI, making

it unlikely that he was unaware of the conflict or entered into it inadvertently. See Mem.

in Supp. at 3. Additionally, the court particularly disapproves of Attorney Griffith’s failure

to address the conflict promptly when Rio Brands first wrote to him asking him to

withdraw on June 8, 2017. See Mem. in Opp. at 10. However, given the circumstances

of this case, including the lack of trial taint and the prejudice to GCI in obtaining new

counsel, disqualification is not the appropriate remedy.

Finally, the court notes that the reasons disqualification is a disfavored remedy in

the Second Circuit are relevant here and further support the court’s decision to deny the

Motion. See Ardemasov v. Citibank, N.A., 14 F. Supp. 3d 39, 46 (D. Conn. 2014) (“In

24
general, the Second Circuit ‘disfavors motions to disqualify because of the potentially

adverse effect on a client’s right to engage counsel of his or her choosing, and because

such motions are often made for tactical reasons.’” (quoting Rodriguez v. City of New

Haven, 214 F.R.D. 66, 68 (D. Conn. 2003)). The court in Universal City Studios found

“substantial reason to believe that the motion to disqualify . . . [was] motivated at least

partially by tactical considerations” because the movant delayed a month in raising the

issue after becoming aware of the conflict and because the movant made no effort to

show that its interests would be prejudiced by the conflict. See Universal City Studios,

98 F. Supp. 2d at 455; see also In re Agway, 2005 WL 3806043, at *5 (“The absence of

any real risk of trial taint or prejudice to Wells Fargo compels the Court to suspect that

Wells Fargo has pursued this motion solely to obtain a tactical advantage.”).

Likewise, here, McCormick withdrew from representing Rio Brands on December

1, 2017, but Rio Brands waited until March 5, 2018, to file its Motion to Disqualify, two

days after McCormick filed a Motion to Dismiss on behalf of GCI. Additionally, as

discussed above, Rio Brands has also made no effort to show why it would be

prejudiced by McCormick’s continued representation of GCI. Thus, as a remedy here,

disqualification would unnecessarily prejudice GCI, resulting in additional delay and cost

to both the court and the parties.

V. CONCLUSION

For the reasons stated above, the Motion to Disqualify is DENIED.

25
SO ORDERED.

Dated at New Haven, Connecticut this 22nd day of May, 2018.

/s/ Janet C. Hall__________


Janet C. Hall
United States District Judge

26