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Graham Co. v. Griffing

November 3, 2009

THE GRAHAM COMPANY, PLAINTIFF,
v.
STANTON T. GRIFFING AND CONNOR STRONG COMPANIES, INC. F/K/A COMMERCE INSURANCE SERVICES, INC. DEFENDANTS.



The opinion of the court was delivered by: Jones II, J.

MEMORANDUM

Before the Court is Defendants' Amended Motion to Disqualify Plaintiff's Counsel (Docket No. 52), Plaintiff's Response thereto, and Defendants' Reply thereto. Stanton T. Griffing and Connor Strong Companies, Inc. (f/k/a Commerce Insurance Services, Inc.) ("Defendants") contend that, because in 2006 and 2007 Woodcock Washburn LLP ("Woodcock Washburn") represented the predecessor to Connor Strong Companies, Inc., in a trademark litigation concerning use of the mark "COMMERCE" in Massachusetts (the "MA Trademark Litigation"), the Graham Company ("Plaintiff") should be prohibited from retaining Woodcock Washburn to represent it in the instant action concerning alleged breach of an employment agreement, solicitation of Plaintiff's prospects, conversion and civil conspiracy. Plaintiff contends that Defendants have failed to satisfy the burden required to deprive Plaintiff of its right to legal representation of its choice.

The Court held a hearing on October 27, 2009, at which the parties offered testimony, exhibits and argument. The Court has carefully considered the parties' positions. The Motion will be denied.

I. Background

In February 2006, a Massachusetts insurance company known as Commerce Insurance Company (a long-existing entity unrelated to the Defendants), instituted the MA Trademark Litigation in response to the concern that Commerce Bancorp, via its wholly-owned subsidiary Commerce Banc Insurance Services, planned to enter the Massachusetts insurance market and utilize the name "COMMERCE," which Commerce Insurance Company claimed to have been using in Massachusetts for 34 years. The suit alleged that use by Commerce Banc and Commerce Banc Insurance Services of that moniker in connection with the new offering of insurance services in Massachusetts would result in trademark infringement and dilution in violation of federal and state laws. The Court is satisfied that the MA Trademark Litigation was focused on Massachusetts-specific trademark issues.

Woodcock Washburn, and more specifically partner John P. Donahue and several associates*fn1, represented Commerce Bancorp and its subsidiary in the MA Trademark Litigation. On August 1, 2007, Woodcock Washburn was terminated, via a letter sent by Defendants' current counsel, Brown & Connery, LLP. Subsequent to that termination, the MA Trademark Litigation was settled, with the plaintiff securing an agreement that Commerce Bancorp and Commerce Banc Insurance Services would not use the "COMMERCE" mark in Massachusetts for insurance-related services. The District Court entered judgment on August 27, 2007.

After Woodcock Washburn's termination and settlement of the MA Trademark Litigation, Commerce Bancorp was acquired by TD Bank, but Commerce Banc Insurance Services split off and became an independent company. Commerce Banc Insurance Services later changed its name to Commerce Insurance Services, Inc., and then later became the Connor Strong Companies, Inc. ("Connor Strong") (the current corporate Defendant). Connor Strong does not use the "COMMERCE" trademark, which had been the sole subject of the MA Trademark Litigation.

Plaintiff was represented by the law firm of Bochetto and Lentz, P.C., from the commencement of the instant litigation until August 7, 2009,*fn2 at which time that firm withdrew as counsel and David J. Wolfsohn, a partner in Woodcock Washburn, entered his appearance without first seeking Defendants' consent. Defendants subsequently filed the instant Motion.

II. Legal Standards

"One of the inherent powers of the federal court is the admission and discipline of attorneys practicing before it." In re Corn Derivatives Antitrust Litig., 748 F.2d 157, 160 (3d Cir. 1984). Therefore, when there is a risk that the litigation may be tainted by participation of counsel, the court has the power to fashion an appropriate remedy. Clark Capital Management Group, Inc. v. Annuity Investors Life Ins. Co., 149 F. Supp. 2d 193, 198 (E.D. Pa. 2001). The district court "has a wide discretion in framing its sanctions to be just and fair to all parties involved." IBM v. Levin, 579 F.2d 271, 279 (3d Cir. 1978). However, a district court should grant a motion to disqualify counsel "only when it determines, on the facts of the particular case, that disqualification is an appropriate means of enforcing the applicable disciplinary rule."

United States v. Miller, 624 F.2d 1198, 1201 (3d Cir. 1980). In making such a determination, the district court "should consider the ends that the disciplinary rule is designed to serve and any countervailing policies, such as permitting a litigant to retain the counsel of his choice and enabling attorneys to practice without excessive restrictions." Id. Even if the court finds that an attorney violated a disciplinary rule, "disqualification is never automatic." Id.

Indeed, in this district, motions to disqualify are an "extreme sanction" that should not be imposed lightly. Shade v. Great Lakes Dredge & Dock Co., 72 F. Supp. 2d 518, 520 (E.D. Pa. 1999). "[A] party's choice of counsel is a significant consideration in determining the propriety of disqualification. Id. (citing Commonwealth Ins. Co. v. Graphix Hot Line, Inc., 808 F. Supp. 1200, 1203 (E.D. Pa. 1992)). Courts in this district have consistently held that plaintiff's choice of counsel is entitled to substantial deference. "The court should not quickly deprive plaintiffs of their freedom to choose the advocate who will represent their claims, nor lightly dismiss the trust and confidence plaintiffs have placed in their chosen counsel. Additionally, the court must prevent litigants from using motions to disqualify opposing counsel for tactical purposes. For these reasons, motions to disqualify opposing counsel generally are not favored." Hamilton v. Merill Lynch, 645 F. Supp. 60, 61 (E.D. Pa. 1986). In short, there is a strong policy in favor of permitting a litigant to retain the counsel of his choice. See, e.g., Regional Employers' Assurance Leagues Voluntary Employees' Beneficiary Association Trust v. Gretchen Castellano, et al., No. 03-6903, 2009 U.S. Dist. LEXIS 56102, at *5 (E.D. Pa. July 2, 2009).

"The party seeking to disqualify opposing counsel bears the burden of clearly showing that continued representation would be impermissible. Vague and unsupported allegations are not sufficient to meet this standard." Cohen v. Oasin, 844 F. Supp. 1065, 1067 (E.D. Pa. 1994); Commercial Credit Bus. Loans, Inc. v. Martin, 590 F. Supp. 328, 335-36 (E.D. Pa. 1984).

The Local Rules of the United States District Court for the Eastern District of Pennsylvania incorporate the Pennsylvania Rules of Professional Conduct, which the Supreme Court of Pennsylvania has adopted. See E.D. Pa. Local R. 83.6(IV)(B); Foley v. Int'l Brotherhood of Electrical Workers Local Union, No. Civ. A. 98-906, 1998 WL 720153, *3 (E.D. Pa. Sept. 10, 1998); Schwartz ...


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