Intellectual Property Law

Pryor Representation Doesn't Create Conflict

By Marty Schwimmer

Law Firm reprented Plaintiff in a prior trademark litigation. Plaintiff sues Defendant, one of Law Firm's other clients, and Law Firm is retained to represent Defendant. Plaintiff moves to disqualify Law Firm arguing that either (1) Law Firm concurrently represents Plaintiff as a result of the prior litigation; or (2) this suit is substantially related to the prior litigation and Law Firm obtained confidential information about Plaintiff relevant to the current litigation.

Held: 1. This is not a concurrent representation. Law Firm's retainer agreement with Plaintiff had clearly limited the engagement to that litigation (practice pointer: your retainer agreements should be labeled as UNBUNDLED SPECIFIC RETAINERs and specifically defie the engagement). Even in the absence of a 'dis-engagement letter,' the representation had ended because the matter had settled. Despite the fact that the bad guy in the prior litigation could theoretically breach the settlement agreement in the future; and that LAW FIRM was identified as an agent for notice of breach; and that Law Firm had done de minimis work for Plaintiff other than the prior litigation; this simply wasn't an on-going representation.

2. This matter was not substantially related to the prior representation (different trademark).

3. Law Firm had not access to confidential information that was relevant to this proceeding. Law Firm's 'alleged insgiht into its former client's general litgation thinking is not similarity' for purposes of this analysus. There was some dispute as to how much Plaintiff had previously disclosed to Law Firm. Plaintiff's witness' testimony was not well-received.

Decision Pryor Representation

Full post as published by Trademark Blog on February 05, 2010 (boomark / email).