Bold Ltd. v. Rocket Resume, Inc.

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BOLD LIMITED, et al., Plaintiffs, v. ROCKET RESUME, INC., et al., Defendants.

No. 22-cv-01045-BLF

United States District Court, N.D. California, San Jose Division

February 7, 2024

ORDER GRANTING MOTION TO DISQUALIFY COUNSEL [RE: ECF NO. 129]

BETH LABSON FREEMAN UNITED STATES DISTRICT JUDGE

Before the Court is Plaintiff Bold Limited's motion to disqualify Alston & Bird LLP, counsel for Defendants Rocket Resume, Inc. and Stephen Zimmerman. ECF No. 129 (“Mot.”). Defendants oppose the motion. ECF No 154 (“Opp.”). Bold filed a reply. ECF No. 162 (“Reply”). The Court held a hearing on January 18, 2024. ECF No. 186.

For the reasons explained below, the Court GRANTS Bold's motion and disqualifies Allston & Bird.

I. BACKGROUND

A. The Current Litigation

This case was brought by Plaintiffs Bold Limited and Bold LLC (collectively “Bold”) against Defendants Rocket Resume, Inc. and Stephen Zimmerman. Bold owns and operates a website called “MyPerfectResume” (“MPR Website”), which is available at www.myperfectresume.com. ECF No. 51 (“FAC”) ¶¶ 1, 11-12. The MPR Website, among other things, helps users create resumes and cover letters. Id. When creating a resume on the MPR Website, users can select a job title, and they will be presented with a filtered list of job descriptions. Id. ¶ 16. Bold organizes these original job descriptions in a database called its Text Tuner Content (“TTC”). Id. ¶ 17. Bold registered the 2018 version of the TCC with the U.S. Copyright Office (TX0008919525) and it has registered annual updates to the TTC for 2019 (TX0008919529) and 2020 (TX0008919521). Id. ¶ 17. Bold also obtained U.S. Copyright Registration TX0008436147 for the MPR Website. Id. ¶ 18.

Rocket Resume and its founder and CEO, Zimmerman, operate a website that Bold alleges is nearly identical to the MPR Website: www.rocket-resume.com (“Rocket Resume Website”). FAC ¶ 24. Bold alleges that the Rocket Resume Website has “a very similar look, color scheme, and design”; incorporates an identical flow of steps to resume creation; and incorporates Bold's original job descriptions from the TTC. Id. ¶¶ 24, 26.

Bold's First Amended Complaint originally asserted three causes of action: (1) copyright infringement in violation of 17 U.S.C. § 101 et seq.; (2) unfair competition in violation of the California Unfair Competition Law (“UCL”), Cal. Bus. & Prof. Code § 17200; and (3) breach of contract. FAC ¶¶ 33-58. Bold Limited brought the copyright claim and a UCL claim, while Bold LLC brought the breach of contract claim and a UCL claim. See id. On June 22, 2023, the Court denied Defendants' motion to dismiss the UCL and breach of contract claims but compelled Bold LLC's claims to arbitration and stayed Bold Limited's UCL claim. ECF No. 77 at 16-17. Thus, only Bold Limited's copyright claim remains active.

B. Alston & Bird's Prior Representations of Bold

Bold Limited, then known as LiveCareer Ltd., originally retained Alston & Bird in February 2013 to handle an intellectual property litigation matter. ECF No. 129-1 (“Lopez Decl.”) ¶ 3; ECF No. 129-2 (“Lopez Decl. Ex. A”) (engagement letter). The scope of Alston & Bird's representation of Bold expanded to include general corporate advice, tax structuring, human resources, privacy, terms and conditions, intercompany agreements, mergers and acquisitions, and intellectual property litigation and counseling. Lopez Decl. ¶ 4. Bold identifies at least three prior representations that it alleges are substantially related to the current representation:

• IP Transfer Memo: Alston & Bird attorneys Heather Ripley and Edward Tanenbaum authored a memorandum dated March 23, 2017, that “provided Bold with attorney-client privileged recommendations regarding Bold's corporate structure and the transfer and licensing of intellectual property among related Bold entities.” Lopez Decl. ¶ 6. Both Ripley and Tanenbaum continue to be partners at Alston & Bird. See id. ¶ 11.

• Intercompany IP License Agreements: Alston & Bird attorney James Sullivan drafted Bold's operative intercompany IP license agreements. Lopez Decl. ¶ 7; ECF No. 129-3 (“Lopez Decl. Ex. B”) (example of a Bold intercompany IP license). Sullivan continues to be a partner at Alston & Bird. See Lopez Decl. ¶ 11.

• Copyright Enforcement Actions: From approximately 2014 to 2015, Alston & Bird attorneys Ryan Koppelman, Deepro Mukerjee, Alexander Lorenzo, and Lance Soderstrom represented LiveCareer Ltd. in two copyright actions filed in the Northern District of California. See LiveCareer Ltd. v. Resume Companion LLC, 3:14-cv-03336-JST (N.D. Cal. 2014) (“Resume Companion”); LiveCareer Ltd. v. Mint Media, Inc., 3:14-cv-03420-MEJ (N.D. Cal. 2014) (“Mint Media”).^[1] The complaints in these actions allege that the defendants copied “significant portions of the text from the LiveCareer Websites” and “the layout and design of the LiveCareer Websites.” Resume Companion ECF No. 1 ¶¶ 19-21; Mint Media ECF No. 1 ¶¶ 18-20. The LiveCareer Websites at issue in these cases included the MPR Website. See Resume Companion ECF No. 1 ¶ 11; Mint Media ECF No. 1 ¶ 11. Koppelman and Lorenzo continue to be partners at Alston & Bird. See Lopez Decl. ¶ 11. Mukerjee and Soderstrom have since left Alston & Bird and are now partners at Katten Muchin Rosenman LLP. See id. ¶ 9.

Alston & Bird's representation of Bold ended on July 27, 2018. Lopez Decl. ¶ 9. After leaving Alston & Bird, Mukerjee and Soderstrom continued to represent Bold, including by filing this lawsuit in 2022. See ECF No. 1. Latham & Watkins LLP has since been substituted as lead counsel for Bold in place of Katten. ECF No. 32.

C. Alston & Bird's Involvement in the Current Litigation

Defendants were initially represented by Orrick, Herrington, & Sutcliffe LLP. Defendants then substituted Dykema Gossett LLP in place of Orrick. ECF No. 39. Gibson Dunn & Crutcher LLP are now lead counsel for Defendants. ECF Nos. 99-100 (appearances of Gibson Dunn attorneys).

In July 2023,^[2] Defendants retained Chaka Patterson of Alston & Bird as “in-house lawyer” or “general counsel” to Rocket Resume. ECF No. 129-7 (“Elliott Decl. Ex. B”) at 23:14-20, 101:23-24; ECF No. 129-10 (“Elliott Decl. Ex. E”) at 2 (Patterson identifying himself as “outside general counsel”). Patterson joined Alston & Bird as a partner in July 2021. ECF No. 154-1 (“Cox Decl.”) ¶ 6. At his deposition, Zimmerman also identified Dana Zottola, a senior associate at Alston & Bird, as an “advisor” to Rocket Resume. Elliott Decl. Ex. B at 31:2-12; Elliott Decl. Ex. E at 2 (identifying Zottola as an “advisor”). Zottola is Zimmerman's wife. ECF No. 129-8 (“Elliott Decl. Ex. C”) at 43:4-5.

On August 10, 2023, counsel for Bold received an email from Dykema Gossett, then counsel for Defendants, which copied Patterson. ECF No. 129-6 (“Elliott Decl. Ex. A”). Patterson appeared in this case on August 8, 2023. ECF No. 106. Zottola has not appeared in this case.

On August 22, 2023, counsel for Bold contacted counsel for Defendants, identifying the potentially disqualifying conflict of interest on the part of Alston & Bird. ECF No. 129-9 (“Elliott Decl. Ex. D”). In a series of emails between counsel from late August 2023 to early October 2023, Alston & Bird denied any conflict of interest. See, e.g., Elliott Decl. Ex. E; ECF No. 129-12 (“Elliott Decl. Ex. G”); ECF No. 129-14 (“Elliott Decl. Ex. I”). In a letter dated September 12, 2023, Alston & Bird's general counsel stated, “Out of an abundance of caution, . . . [Alston & Bird] has implemented an ethical screen to prevent Mr. Patterson's access to materials or communications with attorneys who performed past work for Bold regarding any Bold matters.”

Elliott Decl. Ex. G. In an email dated September 12, 2023, Patterson stated, “[O]ut of an abundance of caution, though not required by the Protective Order, [Zottola] has restricted access to documents and information.” ECF No. 129-15 (“Elliott Decl. Ex. J”). In an email dated October 5, 2023, Patterson elaborated that “Zottola has voluntarily chosen not to access, has not accessed and will not access any Bold documents or information in regard to this matter.” Id.

On November 10, 2023, Bold filed the instant motion which seeks to disqualify Alston & Bird from representing Defendants. Mot. at Notice.

D. Defendants' Discovery

Bold argues that Defendants are attempting to insert issues from prior representations into this case by seeking discovery about them. Mot. at 4-5. For example, Defendants sought discovery on Bold's websites, damages, organizational structure, and other infringement actions. See ECF No. 129-18 (“Elliott Decl. Ex. M”) at 4-5 (requesting documents regarding Bold's websites, Bold's damages in this case, and Bold's steps taken to address infringement by third-parties); ECF No. 129-19 (“Elliott Decl. Ex. N”) at 6-8, 10 (requesting documents regarding Bold's licenses, its resume creation websites, Bold's financial information, infringement accusations and actions, and the relationships between Bold entities); ECF No. 129-10 (“Elliott Decl. Ex. O”) at 4, 7 (requesting documents regarding the relationship between Bold entities).

Similarly Defendants pursued information about Bold's corporate structure, market share, and infringement disputes in a Rule 30(b)(6) deposition. See ECF No. 129-16 (“Elliott Decl. Ex. K”) at 185:6-192:20, 259:19-261:3, 263:2-264:5 (deposition of Bold's Rule 30(b)(6) witness in which lead counsel for Defendants asked questions pertaining to Bold's corporate structure); ECF No. 129-17 (“Elliott Decl. Ex. L”) at 6-7 (Defendants' notice of deposition pursuant to Rule 30(b)(6) in which Defendants identify as topics Bold's damages, the relationships between Bold entities, Bold's market share of the career services industry, and facts surround...