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 ...