A blog about patent, copyright and trademark law in the U.S. District Court
for the Southern District of New York

Court Denies Withdrawal of Counsel on Eve of Trial

In two separate March 18, 2014 rulings (here and here), Judge Marvin E. Aspen denied counsel’s request to withdraw from their representation of defendants A.V.E.L.A., Inc. and Leo Valencia in Bruce Lee Enterprises, LLC’s trademark infringement action, and addressed the parties’ in limine motions in advance of the scheduled April 11, 2014 trial. With regard to withdrawal, counsel advised the Court that his clients had terminated the representation in December 2013, but he did not inform the Court or seek to withdraw until March 17, 2014 to permit California counsel (not admitted in New York) time to try to settle the matter. Judge Aspen began his analysis noting that Local Rule 1.4 governing withdrawals gives courts “considerable discretion,” and that courts should consider two factors, ““the reasons for withdrawal and the impact of the withdrawal on the timing of the proceeding.’”

As to whether there is a satisfactory reason for withdrawal, counsel argued that his withdrawal was required because he had been discharged by his clients. Judge Aspen wrote that in the cases on which counsel relied for this argument, there had been irreconcilable or material differences between the lawyers and clients, and that counsel here did not contend there were any such differences. The Court ruled that such differences are not required in every case, but merely “examples of why it is often prudent to grant withdrawal unless there are compelling circumstances” not to do so. Judge Aspen found that the potential disruption to the trial from the belated withdrawal weighed conclusively in favor of denying the motion. Judge Aspen noted that the “case has a lengthy history of litigation, the complaint having been filed nearly five years ago,” and that the “trial date has already been postponed on two occasions.”

With regard to the in limine motions, Judge Aspen, among other rulings: (1) denied the motion to exclude evidence of other trademark lawsuits and third-party cease and desist letters, finding that since they concerned the alleged infringing products in this action, they are probative and not prejudicial; (2) excluded the testimony of the plaintiff’s general counsel about “the diminution of licensing revenue as a result of Defendants’ allegedly unauthorized licensing activity” because plaintiff did not identify him for that subject in its initial disclosures, nor did he testify about it during his deposition; and (3) granted the plaintiff’s motion in part to exclude evidence of defendants’ costs (for damages purposes), excluding any evidence that defendants did not disclose during discovery, but declining to exclude evidence that the defendants had disclosed. The Court rejected the plaintiff’s argument that that latter evidence was unclear, ruling that the plaintiff could have sought to clarify it during discovery.
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