UNITED STATES SOCCER FEDERATION FOUNDATION, INC. v. UNITED STATES SOCCER FEDERATION, INC., 1:18-cv-02856

Background

The United States Soccer Federation (the Federation) is the national governing body for soccer; the United States Soccer Federation Foundation (the Foundation) is a separate nonprofit formed in 1991 to promote soccer and manage World Cup surplus funds.
Between 1999 and 2003 the Federation registered several trademarks (including “U.S. Soccer Foundation”); the Foundation contends it was the actual owner and used the marks with the Federation’s knowledge.
In November 2018 the Federation demanded the Foundation change its name; in December 2018 the Foundation sued for a declaratory judgment that its continued use does not infringe the Federation’s marks.
The Federation moved to disqualify Foundation counsel Robert Raskopf and Quinn Emanuel under D.C. Rules 1.9, 1.10, and 3.7, relying on Raskopf’s prior trademark work (in the 1980s and 2005–2011) and firm involvement maintaining registrations.
The record showed Raskopf had minimal substantive involvement: he had not worked on the marks at issue since around 2011, Quinn Emanuel timesheets show little or no partner time on the matters, and key attorneys who handled the renewals left or are deceased.
The court denied the disqualification motion without prejudice, concluding the Federation had not shown the prior matters were the same or substantially related or that there was a substantial risk Raskopf obtained confidential information that would materially aid the Foundation; denial under Rule 3.7 was without prejudice as premature.

Issues

Issue	Plaintiff's Argument (Foundation)	Defendant's Argument (Federation)	Held
Whether Raskopf must be disqualified under D.C. R. Prof'l Conduct 1.9 for prior representation of the Federation	Raskopf had little or no substantive prior contact with the Federation on these marks; no confidential info was obtained; matters (renewals) differ from current ownership dispute	Raskopf previously represented/appeared as counsel on trademark matters and that representation is the same or substantially related to this ownership dispute, creating a conflict	Denied: Federation failed to show the prior matters were the same or substantially related or that there is a substantial risk Raskopf possesses confidential information material to this litigation
Whether Raskopf is disqualified under D.C. R. Prof'l Conduct 3.7 as a likely necessary witness at trial	Foundation: premature to disqualify pretrial; factual necessity of witness unknown	Federation: Raskopf may be a necessary witness because of past work on the marks	Denied without prejudice: Rule 3.7 applies to trial counsel; pretrial participation not barred but motion may be renewed if trial approaches
Whether Quinn Emanuel is disqualified under D.C. R. Prof'l Conduct 1.10 (imputation) based on Raskopf or other former firm attorneys (e.g., Blum)	Quinn Emanuel: no disqualifying conflict because Raskopf is not disqualified and attorneys who handled maintenance left the firm	Federation: firm should be disqualified due to prior firm lawyers’ maintenance work and counsel-of-record filings with USPTO	Denied: No imputation because Raskopf not disqualified; attorneys who handled matters left or are deceased and no current firm lawyer possesses material confidential info

Key Cases Cited

United States v. Crowder, 313 F. Supp. 3d 135 (D.D.C. 2011) (disqualification is highly disfavored and examined skeptically)
Konarski v. Donovan, 763 F. Supp. 2d 128 (D.D.C. 2011) (standards for disqualification motions)
Sai v. Dep’t of Homeland Sec., 99 F. Supp. 3d 50 (D.D.C. 2015) (movant must make a substantial showing to justify disqualification)
In re Rail Freight Fuel Surcharge Antitrust Litig., 965 F. Supp. 2d 104 (D.D.C. 2013) (disqualification appropriate where advocate’s effectiveness is compromised or gives substantial advantage)
Headfirst Baseball LLC v. Elwood, 999 F. Supp. 2d 199 (D.D.C. 2013) (three-part analysis for whether matters are substantially related)
Koller v. Richardson-Merrell, Inc., 737 F.2d 1038 (D.C. Cir. 1984) (disqualification where prior representation gives substantial possibility of unfair advantage)
Brown v. D.C. Bd. of Zoning Adjustment, 486 A.2d 37 (D.C. 1984) (a "matter" is a discrete and isolatable transaction)
Comm. for Washington’s Riverfront Parks v. Thompson, 451 A.2d 1177 (D.C. 1982) (same-matter concept and discrete transaction framing)
Williamsburg Wax Museum, Inc. v. Historic Figures, Inc., 501 F. Supp. 326 (D.D.C. 1980) (disqualification not mandated where grounds are vague or tenuous)
GEO Specialty Chems., Inc. v. Husisian, 951 F. Supp. 2d 32 (D.D.C. 2013) (movant must plead facts showing prior information might be useful)
United States Football League v. Nat’l Football League, 605 F. Supp. 1448 (S.D.N.Y. 1985) (disqualification ordered only if there is a real risk the trial will be tainted)
Ambush v. Engelberg, 282 F. Supp. 3d 58 (D.D.C. 2017) (Rule 3.7 applies to trial counsel; pretrial participation not necessarily barred)