Opinion
IP 99-1734-C-T/G
October 11, 2000
Entry on Corporate Defendants' Motion To Disqualify Plaintiff's Counsel And Order Lifting Stay And Setting Schedule For Summary Judgment Response
Plaintiff, Marcella Caldwell-Gadson, brings this action alleging copyright infringement and plagiarism. Defendants, Thomson Multimedia, S.A., and Thomson Consumer Electronics, Inc. (collectively the "Corporate Defendants") move, pursuant to S.D. Ind. L.R. 83.5(f), Prof. Cond. R. 1.9(a), and Prof. Cond. R. 3.7(a), to disqualify Plaintiff's counsel, Gregory P. Gadson.
I. Background
Marcella Caldwell-Gadson, an attorney, filed a pro se Complaint and Amended Complaint in this action for copyright infringement and plagiarism. She alleges that she is the owner of copyright material contained in an "Inventors Awards Book" and there was no agreement, express or implied, granting any rights to any or all Defendants to use the material contained therein. She also alleges the Defendants used without her consent material contained in the "Inventors Awards Book" in a book entitled, "Worldwide Patent Inventors Awards Book."
Ms. Caldwell-Gadson is now represented by Gregory Gadson, her husband, who was employed by Thomson Consumer Electronics ("TCE") as Senior Patent Counsel from August 1994 through March 1998. Jeffrey D. Carter, Senior Intellectual Property Counsel for TCE, states in his affidavit that Mr. Gadson provided the Corporate Defendants with legal representation in obtaining from Ms. Caldwell-Gadson rights, express or implied, belonging to the Corporate Defendants in material contained in the "Inventors Awards Book." Mr. Carter further states that it was and is the understanding of the Corporate Defendants' attorneys that Mr. Gadson's aforementioned representation resulted in obtaining an implied license belonging to the Corporate Defendants in material contained in the "Inventors Awards Book," particularly for use with the Corporate Defendants' Inventors Awards Banquet.
Mr. Gadson and Thomson Consumer Electronics executed an Agreement And General Release ("Agreement and Release") on April 3, 1999, in which Mr. Gadson agreed that he would not "engage in any conduct which would disparage or defame the Company, the Company's parent corporation(s), subsidiaries, or affiliates, its products, business plans, and business strategies or its employees." (Br. Supp. Corporate Defs.' Mot. Disqualify Pl.'s Counsel, Ex. C, ¶ 10(d).)
II. Discussion
The Corporate Defendants contend that Mr. Gadson's representation of Ms. Caldwell-Gadson violates Rules 1.9(a) and 3.7(a) of the Indiana Rules of Professional Conduct, potentially violates Rules 1.6(a) and 1.9(b), and breaches the Agreement and Release. Plaintiff opposes the motion.
Local Rule 83.5(f) states that: "The Rules of Professional Conduct, as adopted by the Indiana Supreme Court, shall provide standards of conduct for those practicing in this Court." S.D. Ind. L.R. 83.5(f).
The Corporate Defendants first contend that Rule 1.9(a) requires Mr. Gadson's disqualification. That rule provides:
A lawyer who has formerly represented a client in a matter shall not thereafter:
(a) 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 consents after consultation; . . .
Prof. Cond. R. 1.9(a). The Corporate Defendants claim this matter directly relates to a negotiation of their legal rights in material contained in the "Inventors Awards Book" in which Mr. Gadson previously represented the Corporate Defendants, that the interests of Plaintiff are materially adverse to their interests, and they have not consented to Mr. Gadson's representation of Plaintiff. They cite Matter of Strutz, 652 N.E.2d 41 (Ind. 1995), and Matter of Anonymous, 655 N.E.2d 67 (Ind. 1995), as cases with comparable facts in which it was held that an attorney violated Rule 1.9(a). These cases are factually distinguishable.
In each case it was clear that the attorney found to have violated the rule formerly represented a client in a matter and then represented another person in the same or a substantially related matter. In Matter of Anonymous, the parties agreed that respondent was retained by a client to represent him in a personal injury action, the client subsequently discharged respondent, and hired successor counsel who filed a personal injury action on the client's behalf. Following an unfavorable jury verdict, the client sued successor counsel for malpractice. The attorney appeared on behalf of successor counsel. See Matter of Anonymous, 655 N.E.2d at 72. The attorney in Strutz was general counsel to the defendant companies. Thus, there was no question as to his representation of those companies in the derivative action, which was commenced while he was general counsel and in which he later entered an appearance for the plaintiff. See Matter of Strutz, 652 N.E.2d at 48, 51.
In the instant case, however, though Mr. Gadson was employed as Senior Patent Attorney by TCE and presumably represented it on many intellectual property matters, there is no evidence other than Mr. Carter's unsupported conclusory statements that Mr. Gadson represented the Corporate Defendants in obtaining from Plaintiff any rights belonging to them in material contained in the "Inventors Awards Book". See, e.g. Smithkline Beecham Corp. v. Apotex Corp., 193 F.R.D. 530, 540-41 (N.D.Ill. 2000) (holding conclusory, unsupported statement in affidavit of patent agent insufficient to support claim of work product privilege), on reconsideration in other part, 194 F.R.D. 624 (N.D.Ill. 2000). This case is much like the example given in the comment to Rule 1.9: "[A] lawyer who recurrently handled a type of problem for a former client is not precluded from later representing another client in a wholly distinct problem of that type even though the subsequent representation involves a position adverse to the prior client." Prof. Cond. R. 1.9, comment. The Corporate Defendants have not shown that the matter raised by Ms. Caldwell-Gadson's Amended Complaint is the same or substantially related to any matter for which Mr. Gadson formerly represented the Corporate Defendants. They, therefore, have not shown that Rule 1.9(a) requires disqualification of Plaintiff's counsel.
The Corporate Defendants next argue that Mr. Gadson should be disqualified under Rule 3.7(a) because he will be a necessary witness at trial as to their three of their affirmative defenses, and his disqualification would not work substantial hardship on Plaintiff. Rule 3.7(a), which addresses a lawyer as a witness, provides:
A lawyer shall not act as an advocate at a trial in which the lawyer is likely to be a necessary witness except where:
(1) the testimony relates to an uncontested issue;
(2) the testimony relates to the nature and value of legal services rendered in the case; or
(3) disqualification of the lawyer would work substantial hardship on the client.
Pro. Cond. R. 3.7(a). As Judge David Hamilton of this court wrote:
Where one party argues that an opponent's attorney is a necessary witness and moves to disqualify that attorney . . . courts view the opponent's asserted need to call the attorney . . . skeptically and must be concerned about the possibility that the motion to disqualify is an abusive tactic to hurt the opponent's ability to pursue his case.
Harter v. University of Indianapolis, 5 F. Supp.2d 657, 663 (S.D.Ind. 1998). "The threshold question under Rule 3.7 is whether [counsel] is a "necessary" witness." See id.
The Corporate Defendants have not persuaded the court that Mr. Gadson is a necessary witness. They claim he will be called to testify about the scope of the alleged implied rights they have in the material in the "Inventors Awards Book," his failure to obtain express rights to correspond with those implied rights, and his disparagement of the Defendants in view of the Agreement and Release. It seems likely that other agents or employees of the Corporate Defendants can testify as to the alleged implied rights and Mr. Gadson's failure to obtain express rights, including the nonexistence of any written contract or agreement regarding express rights. Thus, at this stage, it is not evident that Mr. Gadson will be a necessary witness. Further, the relevance to this action of any disparagement of the Defendants by Mr. Gadson is not readily apparent. If the Corporate Defendants believe Mr. Gadson has violated the Agreement and Release, they may have legal redress against him. It does not, however, appear to be in this copyright infringement action brought by Ms. Caldwell-Gadson who is not a party to the Agreement and Release.
Of course, if further development in this case establishes that Mr. Gadson will be a necessary witness at trial, this ruling may be revisited.
Moreover, Rule 3.7 disqualifies a lawyer from acting as an advocate at a trial in which he is likely to be a necessary witness. The rule's express terms do not preclude a lawyer from acting as an advocate at pretrial proceedings even if the lawyer would be a necessary witness at trial. The Corporate Defendants cite no case law or other authority on this point, and at least one court has held that a rule identical in all relevant respects did not disqualify a lawyer from acting as an advocate in pretrial proceedings. See In re Fuller, 204 B.R. 894, 898 (Bankr.W.D.Pa. 1997) (denying motion to strike declaration of attorney for a party made pursuant to Rule 3.7 of the Pennsylvania Rules of Professional Conduct which rule states in part that "[a] lawyer shall not act as an advocate at trial in which the lawyer is likely to be a necessary witness. . . .").
The Corporate Defendants argue that Mr. Gadson's representation of Ms. Caldwell-Gadson in this action "will more than likely violate" Rules 1.6(a) and 1.9(b) of the Professional Conduct Rules. Neither rule, however, expressly requires disqualification of an attorney. Rule 1.6(a) states that "[a] lawyer shall not reveal information relating to representation of a client. . . ." The Corporate Defendants' argument isn't that Mr. Gadson would reveal information, but rather that he would use information to assist Ms. Caldwell-Gadson's case, (see Defs.' Resp. Pl.'s Opp'n Defs.' Mot. Disqualify Pl.'s Counsel at 3), which makes the applicability of Rule 1.6(a) doubtful. Rule 1.9(b) does prohibit a lawyer from using information relating to the representation of a former client to the disadvantage of the former client, Pro. Cond. R. 1.9(b), but the Corporate Defendants' unsupported claim that Mr. Gadson must use such information in his representation of the Plaintiff is unpersuasive. Neither Rule 1.6(a) nor Rule 1.9(b) requires disqualification of Mr. Gadson.
Finally, the Corporate Defendants argue that Mr. Gadson's representation of Plaintiff in this copyright infringement action will inevitably disparage the Corporate Defendants, Defendant Carter, an employee, and Defendant Bruce J. Bowman, a former employee. Had the Corporate Defendants wanted to preclude Mr. Gadson from representing a client in a legal dispute adverse to the Corporate Defendants they could have drafted the Agreement and Release so as to include such a provision. They did not.
To argue that mere representation of a plaintiff in a copyright infringement and plagiarism action amounts to disparaging or defamatory conduct reaches too far.
III. Conclusion
For the foregoing reasons, the Corporate Defendants' motion to disqualify plaintiff's counsel, Gregory Gadson, is DENIED.
The stay of proceedings is hereby LIFTED.
The Defendants SHALL have 30 days from this date within which to respond to the pending motion for summary judgment.
ALL OF WHICH IS ORDERED this 11th day of October 2000.