2007 US Dist LEXIS 83150 (ND Cal. 2007). Decided October 29, 2007.
Ruling: Defendant’s law firm disqualified in trademark litigation where an attorney at the law firm had previously represented Plaintiff as in house counsel. Defendant law firm not permitted to send any work product to Defendant’s replacement counsel.
Factual Background: Attorney had served as in house counsel for Plaintiff and represented Plaintiff in trademark litigation actions. Attorney joined Defendant’s law firm in 2000 and was listed as one of the prosecuting attorneys on Defendant’s RUEHL trademark application in December 2005. In late January 2006, Plaintiff notified Defendant of the conflict of interest and Defendant’s firm set up an informal ethical wall. A formal ethical wall was instituted in February 2007. In July, 2007 Plaintiff filed suit and in September 2007, filed the motion to disqualify.
Legal Analysis: Attorney’s relationship with Plaintiff involved trademark infringement disputes like the one at issue in this case and therefore Attorney possesses information material to the current litigation as a result of her former relationship with Plaintiff. Defendant did not establish the type of extreme prejudice that would warrant denying Plaintiff’s motion. Extreme prejudice is found, for example, where a party files the motion on the eve of trial.
Plaintiff: Levi Strauss & Co.
Counsel: Gia L. Cincone, Gregory S. Gilchrist, Townsend Townsend and Crew LLP (San Francisco, CA)
Defendant: Abercrombie & Fitch Trading Company
Counsel: Benjamin Kneeland Riley, Stephanie May Byerly, Susan M. Kayser, Howrey LLP (San Francisco, Irvine & Washington DC respectively)
Judge: Jeffrey S. White, United States District Judge