Reebok International Ltd., LLC v. Autry USA LLC et al. (D. Mass. 23-cv-10966).

Reebok sued Autry in May, accusing them of knocking off Reebok shoes and substantially copying Reebok’s trademark elements.  Reebok holds a number of long-standing registration on its marks, including the design of the stripes on many Reebok shoes and the “windowpane” logo placement design.  When attorneys from the firm Hogan Lovells entered an appearance on behalf of Autry, Reebok moved to disqualify the firm.

Judge Stearns granted this motion.  Hogan Lovells, an international firm, had previously represented Reebok in litigation involving European counterparts of the asserted trademarks in the present case.  Judge Stears found that the European litigation was “substantially related” to the present litigation.  Hogan Lovells had prosecuted the renewal of a corresponding EU registration, had drafted a demand letter to a Russian third=party (ultimately unsent), and had prepared an infringement analysis for a UK equivalent against two unrelated third parties.  Such work included assessment of the validity and enforceability of the equivalents, and would “normally involve the exchange of confidential information.”  He did not accept Hogan Lovells’ assertion that the lead attorneys “do not recall” receiving confidential information, noting that failure to recall is not the same as “did not receive,” and that it was hard to imaging the validity and enforceability assessments being competently done without receiving confidential information.  He further determined that the identification of the third party products in Russia constituted confidential information that could be used to Autry’s advantage by identifying corresponding shoes and/or marks in the United States to undermine customer confusion arguments.  Indeed, he noted that Autry’s response to a cease and desist letter from Reebok referenced one of the third parties against whom Hogan Lovells had prepared a demand letter.

He rejected the idea that there was no overlap because trademarks were limited to the specific jurisdictions in which they were to be enforced, noting that the underlying trademark framework was consistent from country to country, meaning that there was a substantial likelihood that Hogan Lovells had received confidential information from Reebok that could be used to advance Autry’s position in the U.S. litigation.