Counsel Concerns

A federal district court in Manhattan sanctioned a lawyer and his client for pursuing in bad faith claims against the company that holds the rights to the work of Edgar Rice Burroughs, the creator of Tarzan. Estate of Hogarth v. Edgar Rice Burroughs Inc. (ERB), 00 CIV. 9569 (DLC).

The estate of Burne Hogarth, a renowned illustrator of Tarzan stories, sued for a share of about $15 million in licensing fees paid to ERB by the Walt Disney Co., which produced a 1999 animated feature based on the Tarzan stories. The estate was represented throughout by David Smallman, now a litigation partner at Piper Rudnick, and a changing cast of co-counsel.

In a sharply worded decision, the Southern District of New York said that the plaintiffs and their lawyers could not present any good-faith claim that the Disney movie's depictions of Tarzan were similar to those of Hogarth. “Apparently well aware of the limitations to their claims, the plaintiff's litigation strategy was designed to coerce a settlement from [ERB] and to avoid a trial if at all possible,” the district court wrote. “Because of these tactics, the litigation was unnecessarily contentious and expensive and required extensive judicial supervision.”

Hogarth, who died in 1996, drew Tarzan comic strips and illustrated two Tarzan books published by ERB in 1972 and 1976. The books were not covered in Disney's licensing agreements with ERB.

In their suit, filed in December 2000, Hogarth's heirs claimed they were entitled to relief because ERB had allowed Disney to use artwork contained in the books. They also claimed that Hogarth was the author of the two books and that he had not produced them as “works for hire” owned by ERB. The plaintiffs claimed ERB had breached an agreement with Hogarth to share any revenue generated by artwork from the books.

The case was dismissed at trial but the issue of Hogarth's authorship rights in the two books was appealed to the U.S. Court of Appeals for the Second Circuit, which determined they were works for hire owned by Burroughs.

In its decision, the district court said the plaintiffs were clearly motivated by the Disney money but had been unable to demonstrate that the work of Disney animators bore any similarity to that of Hogarth. “From the very first conference with the Court, plaintiffs had difficulty articulating the basis for any claim of similarity,” the court wrote. “The plaintiffs improperly delayed answering the defendant's interrogatories on this issue for that very reason.”

In their response to discovery, the court found, the plaintiffs also sought to withhold correspondence between ERB and Hogarth that undercut the plaintiffs' contention that the two books were Hogarth's idea. The court said that estate counsel Smallman had located and reviewed the documents even before bringing the suit. “Their intentional withholding of these documents when they were required to be produced in response to the document request is strong evidence of bad faith and a decision to suppress, if possible, the documentary record that would undermine their claims,” the court concluded.

The district court also took the plaintiffs and their counsel to task for seeking the disqualification of ERB counsel, Roger L. Zissu of New York's Fross Zelnick Lehrman & Zissu, on the ground that he and other lawyers at the firm might be called as witnesses. The plaintiffs also noted that Fross Zelnick had performed a small amount of work for Hogarth's estate in 1998 and 1999.

The district court called that argument “particularly frivolous” and pointed out that the plaintiffs had previously signed a conflict waiver regarding that representation. The court noted that Zissu's previous work for ERB had not concerned the books illustrated by Hogarth.

The district court held the plaintiffs and their counsel jointly and severally liable and ordered them to pay many of the attorney fees and costs expended by ERB in the case.

A number of firms worked with Smallman on the case at various times, including: the former Owen & Davis, now part of Fulbright & Jaworski; Wollmuth Maher & Deutsch; and Lankler Siffer & Wohl. But a source familiar with the case said Smallman played by far the largest role in the matter. Smallman's firm, Steinhart & Falconer, was acquired by Piper Rudnick in January 2004.

A spokesperson for Piper Rudnick said: “We will contest the matter on appeal.” Zissu says he was reviewing the attorney fees and costs at issue and declined to comment further.

A federal district court in Manhattan sanctioned a lawyer and his client for pursuing in bad faith claims against the company that holds the rights to the work of Edgar Rice Burroughs, the creator of Tarzan. Estate of Hogarth v. Edgar Rice Burroughs Inc. (ERB), 00 CIV. 9569 (DLC).

The estate of Burne Hogarth, a renowned illustrator of Tarzan stories, sued for a share of about $15 million in licensing fees paid to ERB by the Walt Disney Co., which produced a 1999 animated feature based on the Tarzan stories. The estate was represented throughout by David Smallman, now a litigation partner at Piper Rudnick, and a changing cast of co-counsel.

In a sharply worded decision, the Southern District of New York said that the plaintiffs and their lawyers could not present any good-faith claim that the Disney movie's depictions of Tarzan were similar to those of Hogarth. “Apparently well aware of the limitations to their claims, the plaintiff's litigation strategy was designed to coerce a settlement from [ERB] and to avoid a trial if at all possible,” the district court wrote. “Because of these tactics, the litigation was unnecessarily contentious and expensive and required extensive judicial supervision.”

Hogarth, who died in 1996, drew Tarzan comic strips and illustrated two Tarzan books published by ERB in 1972 and 1976. The books were not covered in Disney's licensing agreements with ERB.

In their suit, filed in December 2000, Hogarth's heirs claimed they were entitled to relief because ERB had allowed Disney to use artwork contained in the books. They also claimed that Hogarth was the author of the two books and that he had not produced them as “works for hire” owned by ERB. The plaintiffs claimed ERB had breached an agreement with Hogarth to share any revenue generated by artwork from the books.

The case was dismissed at trial but the issue of Hogarth's authorship rights in the two books was appealed to the U.S. Court of Appeals for the Second Circuit, which determined they were works for hire owned by Burroughs.

In its decision, the district court said the plaintiffs were clearly motivated by the Disney money but had been unable to demonstrate that the work of Disney animators bore any similarity to that of Hogarth. “From the very first conference with the Court, plaintiffs had difficulty articulating the basis for any claim of similarity,” the court wrote. “The plaintiffs improperly delayed answering the defendant's interrogatories on this issue for that very reason.”

In their response to discovery, the court found, the plaintiffs also sought to withhold correspondence between ERB and Hogarth that undercut the plaintiffs' contention that the two books were Hogarth's idea. The court said that estate counsel Smallman had located and reviewed the documents even before bringing the suit. “Their intentional withholding of these documents when they were required to be produced in response to the document request is strong evidence of bad faith and a decision to suppress, if possible, the documentary record that would undermine their claims,” the court concluded.

The district court also took the plaintiffs and their counsel to task for seeking the disqualification of ERB counsel, Roger L. Zissu of New York's Fross Zelnick Lehrman & Zissu, on the ground that he and other lawyers at the firm might be called as witnesses. The plaintiffs also noted that Fross Zelnick had performed a small amount of work for Hogarth's estate in 1998 and 1999.

The district court called that argument “particularly frivolous” and pointed out that the plaintiffs had previously signed a conflict waiver regarding that representation. The court noted that Zissu's previous work for ERB had not concerned the books illustrated by Hogarth.

The district court held the plaintiffs and their counsel jointly and severally liable and ordered them to pay many of the attorney fees and costs expended by ERB in the case.

A number of firms worked with Smallman on the case at various times, including: the former Owen & Davis, now part of Fulbright & Jaworski; Wollmuth Maher & Deutsch; and Lankler Siffer & Wohl. But a source familiar with the case said Smallman played by far the largest role in the matter. Smallman's firm, Steinhart & Falconer, was acquired by Piper Rudnick in January 2004.

A spokesperson for Piper Rudnick said: “We will contest the matter on appeal.” Zissu says he was reviewing the attorney fees and costs at issue and declined to comment further.