Twitter’s IP Lawyers Should Be Disqualified, TWiT Says

TWiT, LLC asked a California federal court to disqualify Twitter’s lawyers in a trademark dispute because their law firm learned confidential information while earlier representing TWiT.

TWiT alleges that Durie Tangri LLP obtained confidential information about it during a 2013 representation that could be used against it in TWiT’s current intellectual property case against Twitter, pending before the U.S. District Court for the Northern District of California.

The case may shed light on how courts hearing intellectual property disputes decide a key factor in a conflicts analysis: whether work a firm undertakes for a current client is “substantially related” to that done for a former client. Ethics rules generally prohibit lawyers from being adverse to a former client when the old and new matters may involve similar issues.

TWiT describes itself as a distributor of audio and video content on the internet. After Twitter was created, TWiT and Twitter discussed the confusion that could arise given the similarity in the brands’ two marks-TWIT and TWITTER-TWiT’s complaint said. TWiT said the parties agreed to coexist, “conditioned on each company continuing its own unique distribution platform.”

Twitter’s 140-character microblogging platform was “wholly distinct” from TWiT’s audio and video streaming distribution platforms, TWiT said. But after Twitter sought to expand into video streaming, TWiT and the owner of the trademark, Leo Laporte, filed suit for breach of contract and trademark violations.

Durie Tangri entered its appearance on behalf of Twitter. TWiT filed a motion to disqualify them.

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In a heavily redacted motion to disqualify Durie Tangri, TWiT said it met with lawyers from Durie Tangri in connection with a matter that arose in 2013. TWiT asked the court to keep the details of that representation sealed. But TWiT referred to itself as a “former client” of the firm. TWiT said it believed that Durie Tangri “obtained significant and meaningful confidential information about TWiT through their attorney/client relationship that will place TWiT at a disadvantage in the pending litigation.”

TWiT argued that Durie Tangri’s possession of TWiT’s confidential information can be presumed because the 2013 matter and this one are “substantially related.” But it also said that facts show Durie Tangri actually possesses TWiT’s confidential information.

Though TWiT said none of the Durie Tangri lawyers who entered their appearance for Twitter personally were involved in the 2013 matter, it argued their knowledge of TWiT’s confidential information is imputed from what partner Darlyn Durie and her colleague, Alex Feerst, learned from their prior representation of TWiT. And TWiT alleged that the confidential information Durie Tangri learned is material to its pending video streaming case against Twitter.

“Confidences provided by TWiT to its prior counsel, now in the possession of defendant Twitter’s counsel, could well provide Twitter with an unfair advantage in this litigation,” TWiT said.

Regarding the presumption of Durie Tangri’s possession of TWiT’s confidential information, TWiT argued that whether the old and current matters are “substantially related” is not a “bright line” test. And that courts have broadly interpreted whether the “subject” of both representations is “substantially related.”

TWiT said it did not consent to Durie Tangri’s representation of Twitter and that Twitter would not be unduly prejudiced at this stage if its counsel was disqualified.

TWiT was represented by Spaulding, McCullough & Tansil LLP and Payne IP Law. Twitter was represented by Durie Tangri LLP.

The case is TWiT, LLC , et al. v. Twitter, Inc. , N.D. Cal., No. 3:18-cv-341-JSC, disqualification motion filed 4/10/18.