United States District Court, D. Maryland
J. MESSITTE, UNITED STATES DISTRICT JUDGE
& Machine, Inc. (MMI) has sued Seal Shield, LLC and Seal
Shield Corp. (Seal Shield) seeking preliminary and permanent
injunctive relief, disgorgement of profits, and other damages
in connection with its allegations that Seal Shield
disseminated false and/or misleading statements into
interstate commerce regarding the performance of Seal
Shield's keyboards and mice in violation of the Lanham
Act and False Marking Act. Specifically, the Amended
Complaint, ECF No. 33, alleges that Seal Shield falsely
advertised that its products have antimicrobial properties
based upon the incorporation of silver into its products; are
dishwasher safe and waterproof; and contain technology
patented by Seal Shield or for which patent is pending.
During the course of discovery in the case, on July 17, 2015,
Seal Shield filed a complaint against MMI in the Middle
District of Florida alleging violations of the Lanham Act and
the Florida Deceptive and Unfair Trade Practices Act. The
Florida suit was transferred to this Court on December 15,
2015, and the Court consolidated the cases on June 29, 2016.
On July 22, 2016, MMI filed a Motion to Disqualify Counsel
Andrew McCarthy, ECF No. 173, which Seal Shield opposes.
following reasons, MMI's Motion to Disqualify Counsel
Andrew McCarthy is DENIED.
Andrew McCarthy, Jr., Esquire is Seal Shield's in-house
counsel and Vice President of Intellectual Property. He,
along with co-counsel Gregory P. Hengber, Esquire and local
counsel, Diana M. Schobel, Esquire, represent Seal Shield in
the instant litigation and have done so since the date Seal
Shield answered, i.e. August 5, 2015.
Motion is based on the following facts:
March 6, 2014, former Seal Shield employee and current MMI
employee, Harry Furey, sent an email to Clifton Broumand,
MMI's CEO (the March 6th email), which
referenced - and had as an attachment - an email sent from
McCarthy to Seal Shield employees on November 8th,
2010 (the November 8th email). The November
8th email was a forwarded copy of an email from
McCarthy to a potential Seal Shield client which posed
questions regarding the total weight of a product and the
relative amount of Silver Seal and silicone in that product.
Broumand responded to the March 6th email asking
Furey to mail him a physical copy of the November
8th email. Years later, during the May 26, 2016
deposition of Broumand, Seal Shield's co-counsel Greg
Hengber marked the March 6th email as an exhibit.
asserts that the November 8th email reveals that
McCarthy is, or was, responsible for deciding how much Silver
Seal is used in Seal Shield's products, and thus
possesses critical information regarding the amount of Silver
Seal required to make the products antimicrobial. According
to MMI, this knowledge, along with McCarthy's familiarity
with Seal Shield's patents make McCarthy a necessary
witness in this case, given the central role that those
issues play in MMI's claims. Further, MMI alleges that
McCarthy is a competitive decisionmaker at Seal Shield.
Therefore, MMI argues that McCarthy should be disqualified
from the case for because his presence would violate Rule 3.7
of the Maryland Lawyers' Rules of Professional Conduct.
Shield disputes this, arguing not only that MMI's motion
is untimely inasmuch as it had knowledge of the November 8
email years ago; the assumption that McCarthy is a necessary
witness is baseless.
STANDARD OF LAW
3.7 of the Maryland Lawyers' Rules of Professional
Conduct (MLRPC) provides, in pertinent part, that
[a] lawyer shall not act as advocate at a trial in which the
lawyer is likely to be a necessary witness unless:
(1) the testimony relates to an uncontested issue;
(2) the testimony relates to the nature and value of legal