In a motion filed on November 21, 2024, the defendants in the copyright infringement case filed by dancehall producer duo Steely and Clevie over the rights of 1800 reggaetón songs are requesting that the Court disqualify attorney Garth Clarke from representing the plaintiffs. The motion raises significant concerns regarding Clarke’s dual role as both counsel and key fact witness in the ongoing case, potentially compromising the integrity of the proceedings and violating ethical standards.
Clarke, who was added to the plaintiffs’ legal team on August 29, 2024, via a pro hac vice application, has come under scrutiny for his involvement in obtaining the controversial copyright registrations for the “Fish Market” work at the heart of the lawsuit. The defendants argue that his participation as both advocate and witness threatens to create conflicts of interest and undermine the fairness of the trial.
Clarke’s Role as a Key Witness
According to court documents obtain by WMV, the defendants assert that Clarke’s involvement in the case is not merely that of a legal representative, but of a necessary witness whose testimony is essential for resolving crucial issues related to the “Fish Market” copyright registrations. According to the defendants, Clarke’s statements to the Copyright Office regarding the time and place of the first publication of “Fish Market” were inconsistent, raising questions about the validity of the registration process. The defendants argue that these inconsistencies may suggest a fraud on the Copyright Office, making Clarke’s testimony vital for their case.
In the motion, the defendants state:
“The validity of, and circumstances under which Plaintiffs obtained, the Purported Fish Market Registrations are highly relevant to the existence and scope of Plaintiffs’ rights in (and remedies for alleged infringement of) ‘Fish Market,’ and Clarke is the person who obtained those registrations for Plaintiffs and—most importantly—is the person who made the inconsistent statements to the Copyright Office concerning the place and time of first publication of ‘Fish Market.’”
Given the centrality of Clarke’s testimony, the defendants argue that it is crucial for them to have the opportunity to cross-examine him. The motion emphasizes that no one else can adequately provide the information or testify about Clarke’s statements to the Copyright Office, thus making his role as a witness indispensable.
Tactical Concerns and Strategic Use of Clarke
The defendants also argue that the plaintiffs’ decision to add Clarke to their legal team was a strategic maneuver designed to shield him from providing testimony. They claim that the plaintiffs have been represented by Doniger / Burroughs for over three years, and the decision to introduce Clarke as co-counsel came only after the Pryor Cashman-represented defendants issued discovery requests implicating him.
The defendants note that Clarke’s arrival as a member of the plaintiffs’ legal team occurred directly after the defendants raised defenses and sought discovery concerning Clarke’s involvement in the copyright registrations. This suggests that the plaintiffs were attempting to immunize Clarke from being called as a witness. The defendants further argue that disqualifying Clarke from the case would not prejudice the plaintiffs, as they have “capable counsel” already handling the case.
As the motion asserts:
“The case is not in a position whereby Plaintiffs will be prejudiced or disadvantaged by Clarke’s unavailability as counsel. Indeed, given that Clarke is plainly a key fact witness in this case, appears to have little if any litigation experience, and Plaintiffs have been capably represented in this action by the Doniger / Burroughs firm in this action for several years, it would appear that Plaintiffs are the ones with ‘tactical reasons’ for now seeking to name Clarke as a ‘trial counsel’ in this action.”
Legal Precedents Support Defendants’ Request
The defendants cite legal precedent in support of their request for Clarke’s disqualification, notably referencing the case Caluori v. One World Technologies, Inc., where an attorney was disqualified from representing a plaintiff because his involvement in prosecuting the underlying patent made him a necessary witness. Clarke’s role in securing the “Fish Market” registrations mirrors that of the attorney in Caluori, whose testimony was deemed necessary due to his intimate knowledge of the patent’s prosecution history.
The motion states:
“Like the attorney in that case, Clarke was responsible for and involved in obtaining Plaintiffs’ registrations for ‘Fish Market’ and has ‘familiarity with’ the Purported Fish Market Registrations and their application ‘history,’ and Clarke’s ‘testimony is not cumulative or obtainable by other means.’”
In the 12 page document, the defendants also assert that Clarke’s dual role as counsel and witness would create a serious ethical issue, as it could lead to an appearance of impropriety. They argue that allowing Clarke to serve as both advocate and witness risks undermining the credibility of the trial and the integrity of the legal process.
As the motion points out:
“Clarke’s ‘continued roles as counsel, client representative and witness’ in this case is virtually certain to ‘create the appearance of impropriety and threaten the integrity of these proceedings.’”
The defendants reference the Bay Club Fairbanks Ranch case, where the court found that an attorney’s role as both counsel and witness could create an “appearance of impropriety,” thus necessitating disqualification to preserve the integrity of the proceedings.
The hearing is set for January 10 to decide whether or not to disqualify Clarke.
