Storage Cap Management LP v. Robarco, Inc.

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF OHIO

EASTERN DIVISION

STORAGE CAP MANAGEMENT LP,

Case No. 2:19-cv-4328

Plaintiff,

v. Judge James L. Graham

ROBARCO, INC. AND SPARESPACE Magistrate Judge Kimberly A. Jolson

STORAGE, LLC,

Defendants.

OPINION AND ORDER

This matter is before the Court for consideration of Plaintiff’s Motion to Disqualify

Defendants’ Counsel. (ECF No. 15.) Plaintiff Storage Cap Management LP (“Storage Cap”)

moves to disqualify Defendants’ counsel, Akerman LLP (the “Akerman firm”), because a partner

at the Akerman firm, Roy Zachariah, previously advised Storage Cap concerning several

trademarks, including the STORE SPACE trademarks, which are currently at issue in the present

case and in three disputes pending before the Trademark Trial and Appeal Board of the United

States Patent and Trademark Office (“USPTO”). David Brafman of the Akerman firm represents

Defendant SpareSpace Storage, LLC (“SSL”) in each of those disputes.

For the reasons that follow, Plaintiff’s Motion to Disqualify Defendants’ Counsel (ECF

No. 15) is GRANTED.

I. BACKGROUND

The present action is the fourth of four pending adversarial legal proceedings between the

parties concerning: 1) whether there is a likelihood of confusion between Plaintiff’s STORE

SPACE trademarks and Defendant SSL’s SPARESPACE STORAGE trademark and 2) which

party’s trademark has priority over the other.

On December 13, 2017, Chris Harris, Chief Executive Officer (“CEO”) of Storage Cap,

emailed Roy Zachariah, a partner at the Akerman firm, seeking legal advice on selecting a

trademark for his new self-storage business. (Harris Decl. ¶ 4 Ex. A, ECF No. 15-1 at 52; Harris

Suppl. Decl. ¶¶ 9, 11, ECF No. 23-2 at 247.) Mr. Harris’s initial email to Mr. Zachariah included

a signature block indicating he was CEO of Storage Cap Investments, the investment vehicle for

Storage Cap. (Harris Suppl. Decl. ¶ 10; ECF No. 15 at 42, n.1.) On December 20, 2017, Storage

Cap Management LP was registered in Nevada as a limited partnership. (Harris Suppl. Decl. ¶ 8;

ECF No. 21-4 at 135–36.)

Throughout the remainder of December 2017, Mr. Harris and Mr. Zachariah spoke over

the phone and via email. During these conversations, the two discussed proposed Storage Cap

trademarks and company branding strategies. (Harris Decl. ¶ 5.) Mr. Harris claims their trademark

and branding discussions included confidential Storage Cap information. (Id. at ¶ 7.)

Mr. Zachariah conducted trademark availability searches related to the proposed Storage

Cap trademarks, including the STORE SPACE trademarks, and provided the search results to Mr.

Harris, along with his analysis of each trademark’s availability. (Id. at ¶ 6; ECF No. 15 at 241.)

Mr. Zachariah also offered legal advice on the USPTO application process, the standard for

registrability and infringement, and Storage Cap’s proposed branding. (Id. at ¶ 6.) The Akerman

firm never sent Mr. Harris an engagement letter, and Mr. Harris never paid the firm a retainer.

(Zachariah Decl. ¶¶ 7–8, ECF No. 22 at 228.)

In Mr. Harris’s fourth and final email to Mr. Zachariah, dated December 30, 2017, he

referenced the possibility of trademark registration work by stating, “we’ll engage you to

trademark it for us . . .” (Harris Suppl. Decl. ¶ 7; Zachariah Decl. ¶ 5.) Mr. Zachariah never heard

from Mr. Harris again. (Zachariah Decl. ¶ 6.)

On May 30, 2018, Storage Cap, through other counsel, filed applications to register its

STORE SPACE trademarks with the USPTO. On January 25, 2019, the Akerman firm filed

Defendant SSL’s application to register its SPARESPACE STORAGE mark. On June 13, 2019,

the Akerman firm filed Notices of Opposition on behalf of Defendant SSL opposing registration

of Storage Cap’s STORE SPACE trademarks. Defendant SSL alleges that Storage Cap’s STORE

SPACE marks are confusingly similar to SSL’s SPARESPACE STORAGE mark. On July 25,

2019, Plaintiff filed its Notice of Opposition opposing registration of the SPARESPACE

STORAGE mark.

On September 27, 2019, Storage Cap filed this action seeking a declaratory judgment that:

1) its use of its STORE SPACE trademarks is not likely to cause confusion with the SPARESPACE

STORAGE mark or Defendants, and 2) Defendants’ rights to the SPARESPACE STORAGE mark

(if any) are limited to a small geographic area in and around Grove City, Ohio, if Defendants, in

fact, have been using the SPARESPACE STORAGE mark in Grove City, Ohio continuously since

before April 23, 2018. (ECF No. 1.)

On October 7, 2019, Storage Cap President and Chief Operating Officer, Rob Consalvo,

discovered an old email communication indicating Mr. Zachariah’s association with the Akerman

firm. (Consalvo Decl. ¶ 3, ECF No. 23-1 at 244.) Mr. Consalvo and Mr. Harris immediately

informed counsel of Mr. Consalvo’s discovery. (Suppl. Harris Decl. ¶ 6.) The next day, Storage

Cap’s counsel, Thomas Holt, sent a letter to attorney David Brafman of the Akerman firm,

notifying him of the conflict and requesting that he withdraw from representing Defendants in all

adverse proceedings against Storage Cap concerning Storage Cap’s use of its STORE SPACE

trademarks. (Ex. 1, ECF No. 15-2 at 58.) Mr. Holt’s letter also sought clarification as to whether

the Akerman firm also represented Defendant Robarco, Inc. (“Robarco”).1

Mr. Brafman responded to Mr. Holt’s letter on October 14, 2019. During a telephone call

with Mr. Holt, Mr. Brafman relayed that he did not believe there was a conflict of interest and

refused to withdraw from the case. (Holt Decl. ¶ 3, ECF No. 15-2 at 55.) On October 30, 2019,

the Akerman firm confirmed it was also representing Defendant Robarco. (Holt Suppl. Decl. ¶ 2,

ECF No. 23-3 at 249.)

Storage Cap has not consented to the Akerman firm’s representation of Defendants.

Storage Cap filed the instant motion on November 13, 2019. (ECF No. 15.) On December 4, 2019,

Defendants filed their response in opposition. (ECF No. 20.) Storage Cap filed its reply brief on

December 18, 2019. (ECF No. 23.)

On February 21, 2020, the Court ordered Storage Cap to produce copies of the email

communications and affidavits detailing the contents of the alleged verbal communications it relies

upon for the Court’s in camera review. (ECF No. 24.) On March 6, 2020, Storage Cap submitted

Plaintiff’s Second Supplemental Declaration of Chris Harris and copies of the email

communication between Messrs. Harris and Zachariah in support of its motion to disqualify. (ECF

No. 25.)

II. LEGAL STANDARD

“A motion to disqualify counsel is the proper method for a party to bring an alleged breach

of ethical duties to the court’s attention.” Kitchen v. Aristech Chem., 769 F. Supp. 254, 256 (S.D.

Ohio 1991). The power to disqualify an attorney from a case “is incidental to all courts, and a

district court is obliged to consider unethical conduct by any attorney in connection with any

1 Robarco, Inc. is an Ohio corporation that operates a self-storage facility in Grove City, Ohio under the name

“Spare Space Storage.” (Compl. ¶¶ 4, 18, ECF No. 1 at 2, 5.)

proceeding before it.” SST Castings, Inc. v. Amana Appliances, Inc., 250 F. Supp. 2d 863, 865

(S.D. Ohio 2002). Even so, courts should treat motions to disqualify counsel “with extreme

caution” because denying an opponent the services of counsel is a powerful weapon that can be

misused. Id. at 865–66 (citing Freeman v. Chicago Musical Instrument Co., 689 F.2d 715, 722

(7th Cir. 1982)); see also Manning v. Waring, Cox, James, Sklar & Allen, 849 F.2d 222, 224 (6th

Cir. 1988).

In considering a motion to disqualify counsel, a court must use its discretion in balancing

the “competing public interests of requiring professional conduct by an attorney and of permitting

a party to retain counsel of his choice.” Kitchen, 769 F. Supp. at 257. “The extreme sanction of

disqualification should only be utilized when there is a ‘reasonable possibility that some

specifically identifiable impropriety’ actually occurred, and where the public interest in requiring

professional conduct by an attorney outweighs the competing interest of allowing a party to retain

counsel of his choice.” SST Castings, 250 F. Supp. 2d at 865 (quoting Kitchen, 769 F. Supp. at

257). Following the Sixth Circuit’s decision in Nat’l Union Fire Ins. Co. v. Alticor, Inc., 466 F.3d

456, 457 (6th Cir. 2006), vacated in part on other grounds, 472 F.3d 436 (6th Cir. 2007), this

Court looks to the Ohio Rules of Professional Conduct for guidance in addressing attorney

disqualification issues.2

2 See Escort, Inc. v. NoLimits Enters., No. 1:18-cv-323, 2018 U.S. Dist. LEXIS 218569, at *7 (S.D. Ohio Nov. 20,

2018) (Litkovitz, M.J.); Flood v. Reed, No. 2:16-CV-778, 2017 U.S. Dist. LEXIS 37978, at *8 (S.D. Ohio Mar. 16,

2017) (Smith, J.); O’Brien v. Brunner, No. 2:15-cv-2803, 2016 U.S. Dist. LEXIS 34606, at *7–8 (S.D. Ohio Mar. 17,

2016) (Smith, J.); Big Idea Co. v. Parent Care Res., LLC, No. 2:11-cv-1148, 2012 U.S. Dist. LEXIS 131239, at *7

(S.D. Ohio Sep. 14, 2012) (King, M.J.); Khan v. Cellco P’ship, No. 1:10-cv-118, 2011 U.S. Dist. LEXIS 122894, at

*4 n.2 (S.D. Ohio Sep. 8, 2011) (Litkovitz, M.J.); R.E. Kramig Co., Inc. v. Resolute Management, Inc., No. 1:07-cv-

658, 2009 U.S. Dist. LEXIS 48838, at *10 (S.D. Ohio May 18, 2009) (Dlott, C.J.); OneBeacon America Ins. Co. v.

Safeco Ins. Co., 1:07-cv-358, 2008 U.S. Dist. LEXIS 82833, at *5 (S.D. Ohio Aug. 25, 2008) (Weber, J.).

The Court’s local rules incorporate the ethical standards of the Ohio Rules of Professional

Conduct. See S.D. Ohio Local Civ. R. 83.3(h); Model Fed. R. of Disciplinary Enforcement IV(B).

Two of the Ohio Rules of Professional Conduct are implicated in this case.

Under Rule 1.9 (Duties to Former Clients), “Unless the former client gives informed

consent, confirmed in writing, a lawyer who has formerly represented a client in a matter shall not

thereafter represent another person in the same or a substantially related matter in which that

person’s interests are materially adverse to the interests of the former client.” Ohio R. Prof. Cond.

1.9(a).

The imputation of a conflict of interest is governed by Rule 1.10, which provides in

pertinent part:

(a) While lawyers are associated in a firm, none of them shall represent a client when the

lawyer knows or reasonably should know that any one of them practicing alone would be

prohibited from doing so by Rule 1.7 or 1.9, unless the prohibition is based on a personal interest

of the prohibited lawyer and does not present a significant risk of materially limiting the

representation of the client by the remaining lawyers in the firm.

Ohio R. Prof. Cond. 1.10(a).

In evaluating Plaintiff’s Motion to Disqualify Defendants’ Counsel, the Court thus

examines whether an attorney-client relationship existed between Storage Cap and Mr. Zachariah

of the Akerman firm, and, if so, whether his representation included a matter that is the same or

substantially related to the subject matter of this lawsuit. SST Castings, 250 F. Supp. 2d at 867.

“The party seeking disqualification has the burden of proof to show that ‘the matter or cause of

action of the previous representation of the former client is substantially related to the matters of

the current suit.’” Escort, Inc. v. NoLimits Enters., No. 1:18-cv-323, 2018 U.S. Dist. LEXIS

218569, at *8–9 (S.D. Ohio Nov. 20, 2018) (quoting Best v. Mobile Streams, Inc., No. 1:12-cv-

564, 2013 U.S. Dist. LEXIS 3313, at *4 (S.D. Ohio Jan. 9, 2013)).

III. DISCUSSION

A. The Parties’ Arguments

Storage Cap alleges that Mr. Zachariah, a partner at the Akerman firm, provided Storage

Cap with legal advice concerning the use and registration of the STORE SPACE trademarks in

connection with self-storage rental services, which constitutes a matter that is the same or

substantially related to the subject matter of this case. Storage Cap argues that under Ohio R. Prof.

Cond. 1.9 and 1.10, the Akerman firm is disqualified from representing Defendants in this case.

Defendants counter that Storage Cap cannot meet its burden of proof that it had a prior

attorney-client relationship with Mr. Zachariah, because their communications do not establish a

reasonable belief that Mr. Zachariah represented Storage Cap. Defendants further state that

Storage Cap has failed to prove that any of the alleged confidential information provided to Mr.

Zachariah would materially advance the position of Defendants in this litigation. Defendants also

assert that Storage Cap waived its right to seek disqualification of Defendants’ counsel. The Court

addresses each of these arguments in turn.

B. The Existence of an Attorney-Client Relationship

“An attorney-client relationship ‘includes the representation of a client in court

proceedings, advice to a client, and any action on a client’s behalf that is connected with the law.’”

Hamrick v. Union Twp., Ohio, 79 F. Supp. 2d 871, 875 (S.D. Ohio 1999) (quoting Landis v. Hunt,

80 Ohio App. 3d 662, 669–70, 610 N.E.2d 554, 558–59 (1992)). In determining the existence of

an attorney-client relationship, the “test is essentially ‘whether the putative client reasonably

believed that the relationship existed and that the attorney would therefore advance the interests of

the putative client.’” Id. (quoting Henry Filters, Inc. v. Peabody Barnes, Inc., 82 Ohio App.3d

255, 261, 611 N.E.2d 873, 876 (Ohio 1992)). “[N]either a formal contract nor the payment of a

retainer is necessary to trigger the creation of the attorney-client relationship.” Cuyahoga Cnty.

Bar Ass’n v. Hardiman, 100 Ohio St. 3d 260, 262, 798 N.E.2d 369, 373 (2003).

Defendants first contend that Storage Cap has failed to provide sufficient evidence

concerning communications between Messrs. Harris and Zachariah. Storage Cap’s submission of

Mr. Harris’s second supplemental declaration, along with copies of the email communications

between Messrs. Harris and Zachariah cures this deficiency. The Court’s review of the email

correspondence between Messrs. Harris and Zachariah conclusively establishes that Mr. Harris

sought legal advice from Mr. Zachariah on multiple occasions, received legal advice in response

to his inquiries, and believed that an attorney-client relationship existed such that Mr. Zachariah

would advance his company’s interests.

Defendants next argue that an attorney-client relationship could not have existed because

the initial communication between Mr. Zachariah and Mr. Harris concerned Mr. Harris, as an

individual, and not Storage Cap, as Storage Cap Management LP did not formally exist on

December 13, 2017. Defendants cite Mr. Zachariah’s failure to recall Mr. Harris even mentioning

Storage Cap as further evidence of this point. (Zachariah Decl. ¶ 4.) Defendants conclude that

since Storage Cap was neither an existing nor identified client during Mr. Zachariah’s

conversations with Mr. Harris, there is no prior attorney-client relationship between Mr. Zachariah

and Storage Cap.

Even though Storage Cap was not a registered business entity when Mr. Harris first

contacted Mr. Zachariah on December 13, 2017, this is not fatal to the existence of an attorney-

client relationship between Mr. Zachariah and Storage Cap. Mr. Harris’s first email to Mr.

Zachariah included a signature block indicating he was CEO of Storage Cap Investments, and he

represented that he was seeking legal advice on selecting a trademark and brand for his new self-

storage business. Storage Cap became a legally-recognized entity a week later on December 20,

2017.

It is not uncommon for a lawyer’s initial client to be the founder of an organization during

the pre-formation period and later transition to a corporation, for example, acting through its

directors or officers.3 This is because “upon the effective date of its incorporation, the corporation

becomes a legal entity that exists separate and distinct from those who are using the corporate form

to conduct their business and who may be authorized to act on its behalf.”4 As a legally-recognized

entity, a corporation is capable of establishing an attorney-client relationship through its authorized

representatives acting on its behalf.5

Similarly, upon Storage Cap’s formation as a limited partnership, the attorney-client

relationship between Mr. Harris, as founder of Storage Cap, and Mr. Zachariah transitioned to an

attorney-client relationship between Storage Cap and Mr. Zachariah by way of Mr. Harris, as CEO

of Storage Cap, acting on its behalf.6 From December 20, 2017 until December 30, 2017, Mr.

Harris continued seeking legal advice on proposed trademarks and branding considerations for the

newly formed self-storage business. Mr. Harris’s communications with Mr. Zachariah on behalf

of Storage Cap from December 20, 2017 forward are sufficient to form an attorney-client

relationship.

3 Carl A. Pierce, Representing One Client at A Time in Connection with the Formation and Organization of a

Corporation, 8 TRANSACTIONS: TENN. J. BUS. L. 327, 330 (2007); see also Hopper v. Frank, 16 F.3d 92 (5th Cir.

1994) (finding that once a partnership was formed, the attorney-client relationship between a law firm and a

partnership pre-empted the law firm’s prior representation of individual partners).

4 Pierce, supra note 2, at 333.

5 Id.

6 See Hopper, 16 F.3d at 96 (“There is no logical reason to distinguish partnerships from corporations or other legal

entities in determining the client a lawyer represents.”) (quoting ABA Comm’n on Ethics & Prof’l Responsibility,

Formal Op. 91-361 (1991)).

Finally, Defendants suggest that even if the Court determines that Mr. Harris was

communicating with Mr. Zachariah on behalf of Storage Cap, their communications were

preliminary in nature, so that Mr. Harris could decide whether to retain the Akerman firm. Here,

Defendants point to Mr. Harris’s final email using the future tense of “we’ll engage you” as proof

that Storage Cap had not yet engaged the Akerman firm as counsel. (ECF No. 20 at 94.)

Defendants also draw the Court’s attention to the undisputed facts that the Akerman firm never

sent Mr. Harris an engagement letter, Mr. Harris never paid the firm a retainer, and Storage Cap

ultimately hired a different lawyer from a different firm to register Storage Cap’s STORE SPACE

trademarks.

The Court nevertheless finds that Mr. Harris’s December 30, 2017 email statement that

“we’ll engage you to trademark it for us” does not negate a preexisting attorney-client relationship

with Mr. Zachariah. Mr. Harris’s use of the future tense with regard to Mr. Zachariah later

registering Storage Cap’s ultimately chosen trademark is simply a suggestion of additional work

to come. It is immaterial whether Storage Cap eventually hired Akerman to submit Storage Cap’s

trademark application. Big Idea Co. v. Parent Care Res., LLC, No. 2:11-cv-1148, 2012 U.S. Dist.

LEXIS 131239, at *4–10 (S.D. Ohio Sep. 14, 2012) (determining an attorney-client relationship

existed where attorney performed trademark search and rendered his professional opinion via

email, even though he never submitted the trademark application). Despite Defendants’ insistence,

the lack of an engagement letter or retainer fee is also of no consequence. Ohio law does not

require a written agreement or the payment of a retainer to trigger the creation of an attorney-client

relationship. Cuyahoga Cnty. Bar Ass’n, 798 N.E.2d at 373.

The salient facts are that Mr. Harris sought legal advice from Mr. Zachariah on behalf of

Storage Cap, and that Mr. Zachariah performed a trademark search and offered his professional

opinion on federal registration of Storage Cap’s proposed trademarks and branding considerations.

Storage Cap has provided ample proof that these communications took place. The evidence shows

that Storage Cap, acting through Mr. Harris, reasonably believed that an attorney-client

relationship existed, and that Mr. Zachariah was advancing the interests of Storage Cap. The Court

therefore concludes that an attorney-client relationship existed between Mr. Zachariah and Storage

Cap.

C. Substantially Related Matter

A “substantially related matter” is “one that involves the same transaction or legal dispute

or one in which there is a substantial risk that confidential factual information that would normally

have been obtained in the prior representation of a client would materially advance the position of

another client in a subsequent matter.” Ohio R. Prof. Cond. 1.0(n).

In determining whether matters are “substantially related,” this Court and the Ohio Rules

of Professional Conduct recognize that “[k]nowledge of specific facts gained in a prior

representation that are relevant to the matter in question ordinarily will preclude representation,

and the nature of the services performed for the former client is enough to establish a substantial

risk that the lawyer has confidential information to use in the subsequent matter.” Best v. Mobile

Streams, Inc., No. 1:12-cv-564, 2013 U.S. Dist. LEXIS 3313, at *12–14 (S.D. Ohio Jan. 9, 2013)

(citing Ohio R. Prof. Cond. 1.9, Comment (3)). Ohio courts examining this issue have determined

that “matters are substantially related if there is some ‘commonality of issues’ or a ‘clear

connection’ between the subject matter of the former representation and that of the subsequent

adverse representation.” Wynveen v. Corsaro, 2017-Ohio-9170, ¶ 27, 106 N.E.3d 130, 138 (Ct.

App.) (citations omitted).

Storage Cap claims there is little doubt that Mr. Zachariah previously represented Storage

Cap in a substantially related matter, as he provided legal advice on the use and registration of the

STORE SPACE trademarks, which are at the very core of the current adversarial proceedings

between Storage Cap and Defendants.

As proof of its contention that Mr. Zachariah’s legal advice is substantially related to the

present suit, Storage Cap points to the first four interrogatories it received from Defendants in the

USPTO proceedings, targeting Storage Cap’s trademark selection and adoption process. For

example, “Identify each person who received or reviewed the results of any trademark search,

investigation, or other inquiry conducted by or for Applicant concerning the availability to use or

register the Challenged Mark.” (ECF No. 23 at 238.) Storage Cap also points out that Mr.

Zachariah will likely be a witness for one or both parties concerning Storage Cap’s trademark

selection and adoption process.

While Storage Cap insists that the present matter is the same matter Mr. Zachariah

previously advised it on, Defendants focus on the latter portion of the definition of “substantially

related matter.” Defendants emphasize that a “substantially related matter” must be “one in which

there is a substantial risk that confidential factual information that would normally have been

obtained in the prior representation of a client would materially advance the position of another

client in a subsequent matter.” It is here that Defendants claim that Storage Cap fails to meet its

burden. To bolster their claim, Defendants highlight Mr. Zachariah’s statement that, “Mr. Harris

did not provide me with confidential information bearing on the issues raised in . . . this action.”

(Zachariah Decl. ¶ 9.)

Defendants’ argument falls short for numerous reasons. First, given the use of the

disjunctive “or,” it is enough for Storage Cap to satisfy the first part of the definition of

“substantially related matter,” as being “one that involves the same transaction or legal dispute,”

as a disjunction only requires that one of a number of alternatives be true.7

Furthermore, the email communication between Messrs. Harris and Zachariah confirms

that Storage Cap not only consulted Mr. Zachariah about the availability of several proposed

trademarks and the trademark registration process, but Storage Cap consulted Mr. Zachariah about

the very trademarks at issue here, the STORE SPACE trademarks. By filing this lawsuit, Storage

Cap is attempting to establish that its STORE SPACE trademarks do not create a “likelihood of

confusion” over Defendant SSL’s SPARESPACE STORAGE trademark and which party’s

trademark has priority. The Court notes the similarity in Storage Cap’s initial concerns about the

availability, registrability, and infringement of its proposed STORE SPACE trademark and its

present concerns about the availability and registration of the STORE SPACE trademarks it

ultimately applied to register. These factors alone overwhelmingly constitute a substantially

related matter, as there is a clear connection between the subject matter of Mr. Zachariah’s former

representation of Storage Cap and that of the Akerman firm’s subsequent adverse representation

of Defendants.

Moreover, contrary to Defendants’ assertions, Mr. Zachariah’s legal advice to Storage Cap

does create a substantial likelihood that he acquired confidential information from Storage Cap

that would materially advance Defendants’ interests. The email correspondence between Messrs.

Harris and Zachariah contains the results of Mr. Zachariah’s trademark search and related

7 “Canons of construction ordinarily suggest that terms connected by a disjunctive be given separate meanings, unless

the context dictates otherwise.” Reiter v. Sonotone Corp., 442 U.S. 330, 339 (1979); “It is a basic principle of statutory

construction that terms joined by the disjunctive ‘or’ must have different meanings because otherwise the statute or

provision would be redundant.” United States v. Hill, 79 F.3d 1477, 1482–83 (6th Cir.1996).

“Disjunction, in logic, [is the] relation or connection of terms in a proposition to express the concept ‘or’; it is a

statement of alternatives.” Britannica.com, https://www.britannica.com/topic/disjunction-logic (last visited March 10,

2020); “Also called disjunctive . . . a compound proposition that is true if and only if at least one of a number of

alternatives is true.” Dictionary.com, https://www.dictionary.com/browse/disjunction (last visited March 10, 2020).

investigation into Storage Cap’s ability to use or register the STORE SPACE trademarks. Mr.

Zachariah’s previously rendered legal advice has direct bearing on the issues before this Court.

Defendants’ interests are adverse to Storage Cap’s interests, and the Court concludes that the

information Mr. Zachariah obtained during the course of his previous representation of Storage

Cap would materially advance Defendants’ position in the present litigation.

D. Waiver of the Right to Seek Disqualification

“It is well settled that a former client who is entitled to object to an attorney representing

an opposing party on the ground of conflict of interest but who knowingly refrains from asserting

it promptly is deemed to have waived that right.” In re Valley-Vulcan Mold Co., 5 Fed. App’x.

396, 401 (6th Cir. 2001) (quoting Trust Corp. of Montana v. Piper Aircraft Corp., 701 F.2d 85, 87

(9th Cir. 1983)).

Defendants argue that Storage Cap failed to move promptly to disqualify counsel and thus

waived its right to seek qualification of Defendants’ counsel. Key to the Court’s analysis is

whether Storage Cap knowingly refrained from asserting its right to seek disqualification. The

Court finds it did not.

Storage Cap has submitted evidence in support of its claim that it did not learn of the

conflict between Storage Cap and the Akerman firm until October 7, 2019. As soon as Storage

Cap learned of the conflict, it informed counsel, and Storage Cap’s counsel promptly notified

opposing counsel of the identified conflict. Shortly after confirming additional relevant details

concerning the Akerman firm’s representation of both Defendants, Storage Cap filed its motion to

disqualify Defendants’ counsel. Therefore, Storage Cap is not deemed to have waived its right to

seek disqualification of Defendants’ counsel, as it promptly asserted that right upon learning of

the conflict.

IV. CONCLUSION

The Court finds that Storage Cap has met its burden of proof that Mr. Zachariah would be

prohibited from representing Defendants under Ohio R. Prof. Cond. 1.9(a) due to his previous

attorney-client relationship with Storage Cap and the circumstances present in this case.

Onebeacon Am. Ins. Co. v. Safeco Ins. Co., No. C-1-07-358, 2008 U.S. Dist. LEXIS 82833, at *7

(S.D. Ohio Aug. 25, 2008) (Rule 1.9(a)’s “[u]se of the mandatory term ‘shall’ requires

disqualification.”)). Similarly, Storage Cap has also satisfied its burden of proving that all of the

elements of Ohio R. Prof. Cond. 1.10(a) have been met, and Mr. Zachariah’s mandatory

disqualification is thereby imputed to the Akerman firm.

The Court concludes that the public interest in requiring professional conduct by an

attorney outweighs Defendants’ competing interest of continued representation by the Akerman

firm, especially since Defendants also have other counsel representing them. Accordingly,

Plaintiff’s Motion to Disqualify Defendants’ Counsel (ECF No. 15) is GRANTED. Furthermore,

due to the resolution of Plaintiff’s Motion to Disqualify Defendants’ Counsel, the stay imposed in

the Court’s November 22, 2019 Order (ECF No. 19) is hereby lifted.

IT IS SO ORDERED.

/s/ James L. Graham

JAMES L. GRAHAM

United States District Judge

DATE: March 11, 2020