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NYCLA Opinion: In Certain Circumstances, 'Dissemblance' By Attorney-Supervised Investigators Is Permissible to Gather Evidence

By Stephen W. Feingold and Rebecca L. Griffith

Ethical prohibitions impact the common practice of almost every active trademark lawyer regarding his or her use of private investigators to collect information from third parties. However, the scope of permissible conduct is not always clearly defined. For instance, when a search report reveals one possible bar to your client's adoption of the mark, such as a nine-year-old federal registration by an individual who does not appear to have a Web site, can you or your investigator contact this person and devise some plausible explanation for the reason that you want to know if the mark is still in use? Or if you discover that a company appears to be infringing your client's trademark, can you send someone pretending to be a customer, but who asks all sorts of questions relevant to proving infringement that the ordinary consumer is highly unlikely to raise? Does it matter if the person you or your investigator makes contact with is a low-level sales clerk or the owner of the company?

Ethics rules governing these issues are found in the Model Rules of Professional Conduct, which apply in the vast majority of states. These rules specifically prohibit a lawyer (or anyone acting on the lawyer's behalf) from making a false statement of material fact to any third party. Model Rule 4.1 (the 'Honesty Rule'). Further, lawyers are prohibited from communicating with any third party that the lawyer knows is represented by counsel. Model Rule 4.2 (the 'Ex Parte Contact Rule'). The New Jersey version of the Model Rules goes further and applies the Ex Parte Contact Rule to any third party that the lawyer, with reasonable diligence (including asking that individual), should know is represented by counsel. In order to avoid any ambiguities, the New Jersey version of the Model Rules makes clear that any member of a company's control group is deemed represented by company counsel, including former employees, unless they specifically disavow the company's representation.

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