HAYS, Circuit Judge:
This is an appeal from an order of the United States District Court for the Eastern District of New York, denying the motion of defendant-appellant Lee Pharmaceuticals to disqualify Rogers & Wells, attorneys for plaintiff-appellee Ceramco, Inc. on grounds of professional misconduct. Also before us are appellee's motion to strike certain pleadings and preclude reliance on such pleadings on the ground that they contain information unethically elicited by counsel for Ceramco. Appellee has moved to dismiss the appeal. We affirm the order of the district court.
Ceramco, a wholly owned subsidiary of Johnson and Johnson Company, brought this action against Lee, a California corporation, claiming that the sale by Lee of a dental adhesive under the trademark "Genie" infringed Ceramco's trademark rights. The claim of professional misconduct which is before us here stems from two telephone calls made by Thomas W. Towell, an associate of the firm of Rogers & Wells, attorneys for Ceramco, in order to ascertain whether jurisdiction over Lee and venue in the action could properly be established within the Eastern District of New York. Towell telephoned to defendant Lee's order department in California and without identifying
Lee claimed that Towell's direct communication with Lee's order department despite his knowledge that Lee had retained counsel violated Canon 7 of the Code of Professional Responsibility and associated Disciplinary Rule DR 7-104
Lee's disqualification motion was denied. Lee moved to stay proceedings below, pending disposition of Lee's appeal from the denial of its motion to disqualify. The motion to stay was denied by this court, and proceedings are currently continuing in the district court. Appellee's motion to dismiss this appeal and appellant's renewed motion to stay further proceedings were referred to this panel for disposition in conjunction with disposition of the appeal on the merits.
The disqualification order is properly before this court. The district court was incorrect in its view that the various bar associations constitute the only proper forum for investigation of a claim of professional misconduct. On
An examination of the circumstances of this case convinces us that while counsel's behavior is not to be commended, it is not the kind of conduct which should result in disqualification of counsel or nullification of prior proceedings. Although it would have been better if Towell had identified himself in his calls or had used an independent investigation agency, it would be too harsh to rule that the action of counsel in telephoning defendant's employees to obtain non-privileged, relevant, and accurate information as to jurisdiction and venue constituted actual wrongdoing. Ceramco's inquiries were limited in scope to those items of information necessary to ascertain whether suit could be instituted in the chosen forum and there is no suggestion that counsel sought any unfair advantage by his inquiries. This is the kind of misconduct, if it is misconduct, which is technical in character, does no violence to any of the fundamental values which the canons were written to protect and certainly falls far short of justifying a grant of the relief requested.
The typical situation in which disqualification has been found to be an appropriate remedy has involved a conflict of interest such that continued representation by chosen counsel clearly prejudiced the rights of the opposing party and, by creating the appearance of impropriety, posed a substantial threat to the integrity of the judicial process. Thus, in General Motors Corp. v. City of New York, supra, New York City's privately retained counsel was disqualified because of his prior substantial involvement as an employee of the Department of Justice in a matter which was almost identical to the dispute for which his retention was sought. Similarly, in Emle Industries, Inc. v. Patentex, Inc., supra, plaintiff's attorney was barred from representing plaintiff in a suit against a former client of the attorney when the matters embraced within the two litigations were substantially related. The considerations which made disqualification a necessary and desirable remedy in these cases, namely the need to enforce the lawyer's duty of absolute fidelity and to guard against the danger of inadvertent use of confidential information, are not present here. Nor is there any other compelling reason to interfere with plaintiff's choice of counsel. There is no basis for questioning the continued capacity of Rogers & Wells to represent Ceramco, and certainly the institution of suit in a court which has been held to be a proper forum
Appellee's motion to dismiss the appeal and appellant's motion to stay further proceedings are denied. The order of the district court is affirmed.
MANSFIELD, Circuit Judge (concurring):
I concur. However, I would not want my concurrence to imply that Mr. Towell's telephone call amounted to misconduct, much less that it warrants any action by a bar association.
Disciplinary Rule DR 7-104(A)(1) provides as follows:
Disciplinary Rule DR 5-102(A) provides as follows: