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United States Soccer Federation Foundation, Inc. v. United States Soccer Federation, Inc.

United States District Court, District of Columbia

September 25, 2019

UNITED STATES SOCCER FEDERATION FOUNDATION, INC., Plaintiff,
v.
UNITED STATES SOCCER FEDERATION, INC., Defendant.

          MEMORANDUM OPINION AND ORDER

          TIMOTHY J. KELLY, UNITED STATES DISTRICT JUDGE

         This is a dispute between soccer’s official governing body in the United States and the sport’s major charitable arm here about which organization is the rightful owner of various trademarks, including the name “U.S. Soccer Foundation.” Before the Court is Defendant’s motion to disqualify Plaintiff’s counsel because of a purported conflict of interest due to his prior trademark work. For the reasons explained below, the Court will deny the motion.

         I. Background

         Defendant United States Soccer Federation (“the Federation”), originally founded in 1913, is the national governing body of soccer in the United States. ECF No. 16 at 10–37 (“Countercls.”) ¶ 10. The Federation is a tax-exempt Section 501(c)(3) organization; its mission is “to make soccer the preeminent sport in the United States.” Id. ¶ 11–12. Plaintiff United States Soccer Federation Foundation (“the Foundation”), also a Section 501(c)(3) organization, was formed in 1991 to manage surplus funds from the 1994 World Cup, which was held in the United States. ECF No. 1 (“Compl.”) ¶¶ 1–2, 7. Its mission is to help grow the sport of soccer in the United States, with an emphasis on promoting the sport in underserved communities. Id. ¶ 2.

         Between 1999 and 2003, the Federation registered four trademarks, including the name “U.S. Soccer Foundation” and certain associated logos, with the United States Patent and Trademark Office (USPTO). Compl. ¶¶ 22–24. But according to the Foundation, although the Federation was listed as the owner, the Foundation was always the actual owner, and used them with the Federation’s knowledge and consent. Compl. ¶¶ 25–31. Whatever the history, the Federation has now asserted ownership over the trademarks at issue and, according to the Foundation, in November 2018 it demanded that the Foundation change its name. Compl. ¶¶ 33–34. The next month, the Foundation filed this action, seeking a declaratory judgment that it is not liable for infringing the Federation’s trademark rights by continuing to use the marks at issue, including its name. Id. ¶ 6.

         Shortly before the parties were set to begin discovery in March 2019, the Federation filed this motion seeking the disqualification of the Foundation’s counsel, Robert L. Raskopf, and his law firm, Quinn Emanuel Urquhart & Sullivan, LLP, (“Quinn Emanuel”). Briefing on the motion was complete in late June. The Federation alleges that in representing the Foundation, Raskopf and Quinn Emanuel are violating District of Columbia Rules of Professional Conduct 1.9, 1.10, and 3.7 because of Raskopf’s prior work on trademarks registered by the Federation, including the marks at issue here. See ECF No. 21 (“Mot.”) at 13. A brief summary of Raskopf’s work on relevant trademark matters follows.

         In 1980, the Federation hired Townley & Updike, a law firm that employed Raskopf as an associate, to register two trademarks, neither of which is at issue in this case. Id. at 6. The registration documents list Raskopf as the attorney of record for the marks, and he signed related correspondence with the USPTO. See ECF No. 21-3 at 6–7, 9–10; ECF No. 21-4 at 5, 9–10. In 1995, Raskopf moved to White & Case. ECF No. 27-13 (“Raskopf Decl. I”) ¶ 7. In 2005, the Foundation hired White & Case to maintain the trademarks at issue here.[1] Id. ¶ 8; Mot. at 7–8. The representation was mainly handled by partner Alan Blum. Raskopf Decl. I ¶ 8; Mot. at 7 n.5.

         In 2006, Raskopf and Blum both left White & Case and joined Quinn Emanuel as partners, where Blum continued to maintain the trademarks at issue for the Foundation. Raskopf Decl. I ¶ 10. Raskopf filed renewal applications for certain of these trademarks. See ECF No. 27-7; ECF No. 27-8. In 2011, Blum left Quinn Emanuel and passed away a few years later. Raskopf Decl. I ¶¶ 14–15. Also in 2011, the Foundation transferred its intellectual property matters, including work on the trademarks at issue, to another law firm. Id. Raskopf has not worked on any of the marks at issue since then. See id.

         II. Legal Standard

         A court may disqualify an attorney from appearing in a case if there is a conflict of interest or if the attorney has committed ethical violations. See United States v. Crowder, 313 F.Supp. 3d 135, 141 (D.D.C. 2011) (quoting Konarski v. Donovan, 763 F.Supp.2d 128, 135 (D.D.C. 2011)). But “disqualification is highly disfavored, and any motion to disqualify counsel is therefore examined with a skeptical eye.” Id. Accordingly, the movant must make a “substantial showing . . . to support the ‘drastic measure’ of disqualifying counsel of a party’s choice.” Sai v. Dep’t of Homeland Sec., 99 F.Supp. 3d 50, 67 (D.D.C. 2015) (citing In re Rail Freight Fuel Surcharge Antitrust Litig., 965 F.Supp.2d 104, 110 (D.D.C. 2013)).

         To assess a motion to disqualify, a court “must consider two questions in turn: first, whether a violation of an applicable Rule of Professional Conduct has occurred or is occurring, and if so, whether such violation provides sufficient grounds for disqualification.” Headfirst Baseball LLC v. Elwood, 999 F.Supp.2d 199, 213 (D.D.C. 2013) (quoting In re Rail Freight Fuel Surcharge Antitrust Litig., 965 F.Supp.2d at 110). If the Court finds that an attorney violated the rules, “disqualification is appropriate if the Court is convinced that the lawyer’s ‘ability to act as a zealous and effective advocate for the client’ is compromised, or if the representation poses ‘a substantial possibility of an unfair advantage to the current client because of counsel’s prior representation of the opposing party.’” In re Rail Freight Fuel Surcharge Antitrust Litig., 965 F.Supp.2d at 110 (quoting Koller v. Richardson-Merrell, Inc., 737 F.2d 1038, 1056 (D.C. Cir. 1984), vacated on other grounds, 472 U.S. 424 (1985)).

         III. Analysis

         The Federation seeks Raskopf’s disqualification for violating D.C. Rules of Professional Conduct 1.9 and 3.7, as well as Quinn Emanuel’s disqualification because Raskopf’s conflict should be imputed to the firm under Rule 1.10. See Mot. The Court addresses each in turn, and ultimately concludes that neither must be disqualified, at least on this record and at this stage in the proceedings.

         A. Raskopf’s ...


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