United States District Court, D. Massachusetts
ERIK B. CHERDAK, Plaintiff,
KOKO FITCLUB, LLC and KOKO FITNESS, INC., Defendants.
MEMORANDUM AND ORDER
INDIRA TALWANI, District Judge.
Plaintiff Erik Cherdak brings this action against Defendants Koko FitClub, LLC and Koko Fitness, Inc. raising claims for patent and copyright infringement. Presently before the court is Cherdak's Motion to Disqualify Attorneys Graves and Crenshaw and to Impute Such Disqualification to the Law Firm of Cooley LLP [#57]. For the reasons set forth below, the motion is DENIED.
Cherdak, who is proceeding pro se, alleges that he is the sole owner of Patent No. 8, 118, 709 (the "'709 Patent") and U.S. Copyright Registration Certificate Nos. TX0007689404 and TX0007597120. The '709 Patent and the copyrights at issue in this case pertain to devices and software for "retrieving, encrypting and storing exercise data borne from a workout regimen, and cardio-based exercise machine data onto personal content devices like and similar to USB based memory sticks." Am. Compl. 4 [#6]. Cherdak alleges that Koko employs devices and software that infringe his intellectual property rights at their gyms. On June 4, Cherdak filed his motion to disqualify Graves, Crenshaw, and Cooley from representing Koko in this matter, and the motion is now ripe for disposition.
This action is not the first time that Cherdak and Graves and Crenshaw have been on opposing sides of litigation. On January 15, 2013, Cherdak filed suit against Core Industries, Inc. in the Eastern District of Virginia asserting claims of copyright infringement. Graves and Crenshaw represented Core in that matter. In an attempt to resolve the dispute without litigation, Cherdak and Core agreed to mediate the case. As part of that mediation, the parties entered into an "Agreement of the Parties Regarding the Disclosure and Use of Confidential Information for Purposes of Settlement" on March 19, 2013 ("Settlement Confidentiality Agreement"). Mot. Disqualify Ex. 1 [#57-1]. The agreement stated that any information exchanged as part of settlement discussions and that Cherdak labeled as "Confidential" or "Attorneys Eyes Only" could be disclosed only to Core's counsel and experts, as well as to the mediating judge. Id . The agreement further stated that such information was not to be used for any purpose other than settlement discussions and mediation proceedings in that action. Id . In addition, the agreement stipulated that any preliminary copyright infringement contentions Cherdak disclosed in the course of settlement discussions would be inadmissible in the litigation and could not be used in the course of discovery. Id . The agreement also stated, however, that "to the extent that certain Settlement Confidential Information may be otherwise discoverable information or admissible as evidence, its disclosure pursuant to this Agreement shall not render it non-discoverable or inadmissible." Id . ¶ 5.
Settlement negotiations did not result in an agreement in March and the case carried on. On April 24, 2013, the court issued a Rule 16(b) Scheduling Order. The order addressed various discovery matters and ordered that no material exchanged during discovery that the parties had designated as confidential was to be disclosed to anyone other than counsel absent further court order. Mot. Disqualify Ex. 17 [#57-17]. There is no indication that any discovery ever took place. Cherdak and Core eventually reached a settlement and filed a stipulation of dismissal with prejudice on June 10, 2013.
Cherdak seeks to have Graves and Crenshaw disqualified from representing Koko pursuant to Massachusetts Rule of Professional Conduct 1.7(b). Cherdak also seeks to have Cooley disqualified from representing Koko pursuant to Rule 1.10(a). The basis for Cherdak's motion is that Graves and Crenshaw allegedly received highly confidential information in the course of representing Core and that their confidentiality obligations to Cherdak create a conflict of interest that materially limits their representation of Koko in this matter.
A. Legal Standard
Attorneys appearing in this district are subject to the ethical rules promulgated by the Massachusetts Supreme Judicial Court, including the Massachusetts Rules of Professional Conduct. See L.R. 83.6(4)(B). Rule 1.7(b) states:
(b) A lawyer shall not represent a client if the representation of that client may be materially limited by the lawyer's responsibilities to another client or to a third person, or by the lawyer's own interests, unless:
(1) the lawyer reasonably believes the representation will not be ...