• D. Mass. IP Litigation Blog

Crosby Legacy Company, LLC d/b/a Philip Crosby Associates v. TechnipFMC plc (D. Mass. 18-cv-10814).

  • February 14, 2022

Crosby Legacy contracted with FMC, a predecessor of TechnipFMC to provide quality management consulting services that included the provision of copyrighted and trademarked materials.  The agreement prohibited use of these materials should a change of control occur.  When FMC merged with Technip to create TechnipFMC and continued to use the materials, Crosby filed suit, asserting trademark and copyright infringement and breach of contract, among other state law claims.

Judge Boal granted Crosby’s motion to compel production of internal training materials of TechnipFMC.  Crosby had initially asked for 853 different training materials, while TechnipFMC had agreed to produce only 22 trainings, and asserted that the cost of producing the additional materials would be prohibitive.  After being required to meet and confer on the issue, Crosby reduced its request to 216 trainings while TechnipFMC agreed to produce 51.  Judge Boal determined that the requested materials were all relevant, and that the burden of producing the rest (estimated to be about 16 hours) did not outweigh the relevance.

Judge Boal further dealt with Crosby’s motion to disqualify TechnicFMC’s counsel.  Subsequent to filing the lawsuit, Crosby had been put in touch with an attorney who had prevailed in a similar case, and the two had a conversation in August 2019.  Crosby said that the attorney never told him not to share confidential information, and that the Crosby representative discussed aspects of the case with the attorney that included the timing and substance of the confidential materials Crosby had prepared and shared with TechnicFMC prior to the relationship between them ending.  The attorney said that he did not specifically recall anything about the conversation, but that it was his typical practice to warn non-clients to avoid sharing confidential information with him.

In July 2022, the attorney was engaged by TechnicFMC, and Crosby moved to disqualify him.  Following multiple rounds of briefing and testimony being taken, Judge Boal denied the motion.  She found that while an attorney-client relationship can arise through implication, the circumstances of the 2019 conversation did not establish such a relationship, because the stated purpose of the conversation was to discuss the case that had been won by the attorney, Crosby was represented at the time and was not actively looking for new counsel, and Crosby did not indicate to the attorney that it was interested in being represented by him.  Judge Boal further determined that the attorney had not learned confidential information from Crosby at a time that Crosby was a prospective client.  As just discussed, Crosby was not looking for new counsel at the time of the meeting and would therefore not qualify as a “prospective client.”  Further, the nature of the information allegedly conveyed to the attorney was substantially disclosed in the pleadings and existing briefing in the case at that point.  Accordingly, she determined that Crosby had not met its burden and denied the motion.

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