I have often called my friend and colleague, Dave Kluft, the master of opposition research. When we have a trademark case together, he can be counted upon to think deeply about our adversaries, see the world through their eyes, and uncover every small detail about them that could possibly be relevant to our case. Most of us mere mortals, however, limit our investigations to working hours and use traditional methods. Whether you are a Dave Kluft or a Julia Huston, when it comes to investigations, you need to know the rules of the road and avoid ethical pitfalls.
Needless to say, attorneys must turn square corners when investigating their adversaries. While it has long been accepted that attorneys can sometimes use pretexts when there is no other realistic way to discover the information sought, such as hiring an investigator to pose as a person seeking to rent an apartment to test whether there is racial or ethnic discrimination among lessors, by and large the rules of professional conduct do not give clear guidance. Thus, this activity is fraught with risk and must be approached cautiously.
Why would you want to investigate adversary in a trademark case? The most common scenarios involve determining whether an adversary has established (or abandoned) rights in a mark, or seeking to uncover the details of a suspected infringement.
While this topic cannot be comprehensively addressed in a short blog post, here are some guideposts that I have derived from the rules of professional conduct, case law, and ethics opinions of various bar associations in the United States, New York, California and Massachusetts.
Tell the Truth (Unless You Have Researched the Issue Into the Ground and Have Determined That an Exception Applies)
Under the ethical laws of nearly every state, an attorney is prohibited from engaging in deception. ABA Model Rule 4.1(a) states, “In the course of representing a client a lawyer shall not knowingly … make a false statement of material fact or law to a third person.”
Moreover, ABA Model Rule 4.3 states, “In dealing on behalf of a client with a person who is not represented by counsel, a lawyer shall not state or imply that the lawyer is disinterested. When the lawyer knows or reasonably should know that the unrepresented person misunderstands the lawyer’s role in the matter, the lawyer shall make reasonable efforts to correct the misunderstanding.”
Therefore, the safest investigation strategy is to avoid using any false pretenses whatsoever (including a false name or address when making a purchase of a potentially infringing product). This applies to attorneys themselves, and any paralegals, in-house investigators, or outside investigators that they employ. ABA Model Rule 5.3 provides, “A lawyer is responsible for conduct of [a nonlawyer employed or retained by or associated with the lawyer] that would be a violation of the Rules of Professional Conduct if engaged in by a lawyer if . . . the lawyer orders or, with the knowledge of the specific conduct, ratifies the conduct involved.” Thus, attorneys are responsible for knowing what their investigators are doing, as the recent Uber case so painfully demonstrates. In that case, the General Counsel’s request that Uber’s chief security officer “find out a little more about this plaintiff” resulted in an outside investigator calling 28 colleagues or acquaintances of the class action plaintiff and his counsel on false pretenses, presumably unbeknownst to the General Counsel.
That said, some states have carved out circumstances in which an attorney may use a pretext if it is necessary for an effective investigation. For example, Oregon Rule of Professional Conduct 8.4(b) states that notwithstanding the prohibitions against dishonesty,
…it shall not be professional misconduct for a lawyer to advise clients or others about or to supervise lawful covert activity in the investigation of violations of civil or criminal law or constitutional rights, provided the lawyer’s conduct is otherwise in compliance with these Rules of Professional Conduct. ‘Covert activity,’ as used in this rule, means an effort to obtain information on unlawful activity through the use of misrepresentations or other subterfuge. ‘Covert activity’ may be commenced by a lawyer or involve a lawyer as an advisor or supervisor only when the lawyer in good faith believes there is a reasonable possibility that unlawful activity has taken place, is taking place or will take place in the foreseeable future.
Similarly, the New York County Lawyer’s Association Committee on Professional Ethics has issued Formal Opinion No. 737, providing that, while it is generally unethical for a non-government lawyer to knowingly utilize and/or supervise an investigator who will employ dissemblance in an investigation, it is ethically permissible in a small number of exceptional circumstances where the dissemblance by investigators is limited to identity and purpose and involves otherwise lawful activity undertaken solely for the purpose of gathering evidence. Even in these cases, a lawyer supervising investigators who dissemble would be acting unethically unless: either (a) the investigation is of a violation of civil rights or intellectual property rights and the lawyer believes in good faith that such violation is taking place or will take place imminently or (b) the dissemblance is expressly authorized by law; and the evidence sought is not reasonably and readily available through other lawful means; and the lawyer’s conduct and the investigator’s conduct that the lawyer is supervising do not otherwise violate the New York Lawyer’s Code of Professional Responsibility or applicable law; and the dissemblance does not unlawfully or unethically violate the rights of third parties.
Even recognizing that courts and bar associations will often allow pretext investigations in appropriate circumstances, you need to know the law in your specific jurisdiction, and it is easy to go too far. Pretexts involving plain vanilla sales transactions, where your investigator is impersonating a regular purchaser and interacts only with sales personnel, are the most likely to pass muster. The weirder or more detailed your pretext, the riskier it is. Pretexts involving fake job interviews, fake medical studies, and fake profiles of up-and-coming professionals, have all been found to be out of bounds.
As a practical matter, if you intend to use any kind of pretext in an investigation, it would be prudent to notify your organization’s general counsel and/or get a second opinion from an authoritative source. Do not rely on the opinion of your investigator, and certainly do not turn a blind eye to what your investigator is doing or leave it to his or her discretion.
Moreover, if you are located in one state and are investigating an adversary in another state, you should assume that the rules of both jurisdictions will apply to your and your investigator’s conduct.
Given the risks inherent in pretext investigations, if it is possible to conduct your investigation without resorting to a pretext, it is the better practice to do so.
How Do the Ethical Rules Apply in the World of Social Media?
Given the amount of information available on social media, investigating your adversary is easier than ever. But how deep can you dig without running afoul of the ethical rules? As a general rule, it is permissible to view publicly available social media posts by and about your target. If you are seeking access to private social media posts, however, such as by sending a “friend” request on Facebook, there are several restrictions to keep in mind.
First, if your target is represented by counsel in the matter at hand, stop! You must not send a “friend” request or otherwise initiate contact with the target in these circumstances, either directly or through an investigator. ABA Model Rule 4.2 provides that a lawyer shall not communicate “about the subject of the representation with a person the lawyer knows to be represented by another lawyer in the matter, unless the lawyer has the consent of the other lawyer or is authorized to do so by law or a court order.” All states have adopted some variation of this principle.
Second, if your target is unrepresented and you or your investigator sends a “friend” request to the target, it must not be made using a false name or under a false pretense. Otherwise this violates the prohibition against making a false statement of material fact, cited above.
Third, even if your target is unrepresented and no false names or pretenses are used, the authorities in some jurisdictions will require you or your investigator to accompany a “friend” request with a disclosure of your role as an attorney for your client and/or an explanation of why you are sending the request. This principle has been adopted by bar associations in Massachusetts, Philadelphia and San Diego; bar associations in Oregon and New York City have gone the other way.
The Bottom Line
Before undertaking an investigation that may result in contact with the intended target, you need to know the law in your jurisdiction as well as the jurisdiction where your target is located. Even in jurisdictions where some pretext investigations have been allowed, you should proceed with caution and recognize that pretexting carries some level of risk. To help manage the risk, you should ensure that the information is not available any other way, that no other ethical rules or laws are violated (such as tape-recording telephone conversations in states that require consent of both parties), that no false statements are made, and that your investigator is licensed and insured in the applicable states.
Editor’s Note: In-house counsel seeking more information about the ethics of conducting investigations are invited to attend our webinar on August 1, 2017. One hour of CLE credit is available in New York, New Jersey, Connecticut, and California, and may be available in other states upon request.