WE Bassett Company v. HC Cook Company

Decision Date09 January 1962
Docket NumberNo. 6532.,6532.
Citation201 F. Supp. 821
CourtU.S. District Court — District of Connecticut
PartiesW. E. BASSETT COMPANY, Plaintiff, v. H. C. COOK COMPANY et al., Defendants.

Samuel A. Persky, Stoddard, Persky, Eagan & Cobey, New Haven, Conn., John B. Cuningham, Cooper, Dunham, Dearborn & Heninger, Roy C. Hopgood, Mitchell & Bechert, Stewart W. Richards (of Beer, Richards & Haller), New York City, for plaintiff.

Lindsey & Prutzman, Hartford, Conn., William K. Bennett, Ansonia Conn., Craig B. Bright, Richard G. Moser, Patterson, Belknap & Webb, New York City, for defendants.

ANDERSON, Chief Judge.

This action was brought on January 29, 1957. The plaintiff at that time and continuously since that time has been represented by Attorney John B. Cuningham of the New York Bar. Samuel A. Persky, Esquire, of New Haven, Connecticut, a member of the Bar of this Court, entered his appearance for the plaintiff. Attorney Cuningham was granted leave actively to present the case in this court. At that time Mr. Cuningham was a partner in the New York law firm of Davis, Hoxie & Faithful. On September 1, 1958 he became a partner in the New York law firm of Cooper, Dunham, Dearborn & Henninger. From the inception of the case there have been extensive discovery and disclosure proceedings by both parties.

On November 16, 1961, Attorney Cuningham, on behalf of the plaintiff, filed a Rule 34 motion seeking, among other items, the disclosure of the following:

"Item 12. The opinion of Robert S. Dunham regarding the application for a patent on the Koczak clipper, Serial No. 175,719 filed August 2, 1950 and all documents relating or referring thereto. This was made the subject of cross-examination by Mr. Bright at Tr. pp. 559-60 on November 3, 1961, and was demanded on the grounds of waiver by plaintiff's attorney at Tr. pp. 579-80. It was also the subject of the subpoena issued out of this Court on November 8, 1961 and mailed to William K. Bennett at his Ansonia address, a copy of which was delivered to him on the return date of November 10, 1961 at the beginning of his deposition. It is obviously of great importance to the patent issues in this case as a vital link in defendants' attempts to avoid infringement of the clipper lug patent in suit. It undoubtedly has a bearing on whether defendant H. C. Cook had notice of said infringement in about 1950, as to which they request an admission by plaintiff, which admission is due December 8, 1961.
"Item 13. Production of all of the documents returned to The H. C. Cook Company by the firm of Coopper, Dunham, Dearborn & Henninger in 1958, with the exception of documents for which the attorney-client privilege is asserted. With respect to every document as to which a privilege is claimed, a description of each such document and the basis for the privilege claimed sufficiently complete to permit a determination as to the validity of the claim of privilege. This file, which relates to the conduct of the 1951 suit in the Connecticut Court, almost certainly contains information relevant to the defense of laches and estoppel asserted by the defendants here and to the attitude of the defendant The H. C. Cook Company at the time that case was dismissed in 1953 without prejudice to the instant action. Mr. Bennett, in his deposition on November 10, 1961, testified that the action which The Cook Company then took was contrary to what he would have advised in the light of subsequent circumstances."

This motion was objected to and in the course of considering briefs, correspondence and arguments, it came to this court's attention for the first time that during the years 1950-53 the defendant, the H. C. Cook Company, had been represented by the firm of Cooper, Byrne, Dunham, Keith & Dearborn, predecessor of Cooper, Dunham, Dearborn & Henninger and had been advised by that firm in patent and trade mark matters, in which H. C. Cook Company was at issue with the Bassett Company, including a Connecticut State Court suit, brought in 1951 and dismissed in 1953, by Bassett against the Cook Company, in which the same claims of unfair competition, based on alleged copying of Bassett's design of fingernail clippers, were raised as they are in the present action. The firm had also represented the H. C. Cook Company during this period on the right of the Cook Company to use the trade-mark "Miniclip" and its right to use the lever-locking device, which, in the present action, Bassett attacks as an infringement of its lug patent.

When Mr. Cuningham joined the firm of Cooper, Dunham, Dearborn & Henninger in 1958, he fully advised his prospective partners of the pendency of the present action, and it was agreed that he would be permitted to continue the case as his own without any participation by the new partners. As a partner in Cooper, Dunham, Dearborn & Henninger, Mr. Cuningham's share of the profits of the firm was unaffected by whatever income he might derive from the present case. Mr. Dunham, who was the partner representing the H. C. Cook Company in 1950-53, is still a member of the law firm. His representation of the H. C. Cook Company was concluded in 1953. Just before Mr. Cuningham joined the firm in September, 1958, Mr. Dunham advised the H. C. Cook Company that Mr. Cuningham was about to join the firm as a partner, and that he individually represented the Bassett Company. With this notification Mr. Dunham returned to the H. C. Cook Company all of the files, concerning the Cook Company matter, which the firm had. In his letter dated August 27, 1958, Mr. Dunham said among other things:

"We are arranging our expected association with Mr. Cuningham so that neither the firm nor any present partner thereof will appear, act or participate in any way in the action between your company and Bassett; nor will the partnership nor any present partner of the firm share directly, indirectly or in any way in whatever fees are paid for services rendered and to be rendered by Mr. Cuningham to the Bassett Company in connection with the mentioned action. Mr. Cuningham has been advised that so long as he continues to represent Bassett in this matter, he will do so individually and in all respects entirely apart from our firm of which he is to become a partner."

The present case has been conducted by Mr. Cuningham at arm's length from his present partners and there has been no discussion or consultation with any of them concerning the case, except for what has been above mentioned.

The defendants were, of course, fully aware of the fact that Mr. Cuningham had become a partner in a firm which had formerly represented the H. C. Cook Company. However, no objection was raised by the defendants until the plaintiff filed its Rule 34 motion on November 16, 1961, and they now claim that the exploration of the non-privileged matters handled by Attorney Dunham for the H. C. Cook Company in 1950-53 will lead to embarrassment and conflicts of interest and may ultimately require the examination of Attorney Dunham by one party or the other. On this state of facts the court felt that there was a possible disqualification of Attorney Cuningham and, on its own motion, held a hearing on December 4, 1961 at which all parties were represented.

Mr. Cuningham, as counsel for the plaintiff, has decided that it is necessary for the proper preparation of the plaintiff's case that there be disclosed to him the non-privileged contents of the file which Attorney Dunham, Mr. Cuningham's present partner, kept while he represented the defendant, the H. C. Cook Company, concerning some of the identical matters now at issue in the present case. This file includes an opinion given by Attorney Dunham to the H. C. Cook Company concerning some of these issues. Mr. Cuningham asserts that the opinion is available because privilege has been waived. What other...

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