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Ethical Issues in IP Investigations

Ethical Issues in IP Investigations. JOHN M. CONE, ESQ. Hitchcock Evert LLP 750 North St. Paul Street Suite 1110 Dallas, Texas 75201 (214) 880-7002 (direct dial) jcone@hitchcockevert.com www.hitchcockevert.com. DBA IP Section August 27, 2010. THE RULES.

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Ethical Issues in IP Investigations

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  1. Ethical Issues inIP Investigations JOHN M. CONE, ESQ. Hitchcock Evert LLP 750 North St. Paul Street Suite 1110 Dallas, Texas 75201 (214) 880-7002 (direct dial) jcone@hitchcockevert.com www.hitchcockevert.com DBA IP Section August 27, 2010

  2. THE RULES • ABA Model Rules of Professional Conduct • State Rules of Professional Conduct • Patent and Trademark Office Code of Professional Responsibility

  3. ABA Rule 4.1Truthfulness in Statements to Others In the course of representing a client a lawyer shall not knowingly: (a) make a false statement of material fact or law to a third person;

  4. ABA Rule 4.2Communication with PersonRepresented by Counsel In representing a client, a lawyer shall not communicate about the subject of the representation with a party 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.

  5. ABA Rule 4.3Dealing with Unrepresented Person 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. The lawyer shall not give legal advice to an unrepresented person, other than the advice to secure counsel, if the lawyer knows or reasonably should know that the interests of such a person are or have a reasonable possibility of being in conflict with the interests of the client.

  6. ABA Rule 5.3Responsibilities Regarding Nonlawyer Assistants With respect to a nonlawyer employed or retained by or associated with a lawyer: (b) a lawyer having direct supervisory authority over the nonlawyer shall make reasonable efforts to ensure that the person's conduct is compatible with the professional obligations of the lawyer; and (c) a lawyer shall be responsible for conduct of such a person that would be a violation of the Rules of Professional Conduct if engaged in by a lawyer if: (1) the lawyer orders or, with the knowledge of the specific conduct, ratifies the conduct involved

  7. ABA Rule 8.4(c) It is professional misconduct for a lawyer to: engage in conduct involving dishonesty, fraud, deceit, or misrepresentation

  8. ABA Rule 8.4(a) It is professional misconduct for a lawyer to violate or attempt to violate the Rules of Professional Conduct, knowingly assist or induce another to do so, or do so through the acts of another.

  9. ABA Rule 4.2 What employees are “represented” by the employer’s attorney? Test: • Managerial responsibility • Are acts/omissions imputed to the employer? • Do statements constitute an admission by the employer?

  10. The Comforting Cases • A.V. By Versace, Inc. v. Gianni Versace, S.p.A., 2002 WL 2012618 *9 (S.D.N.Y.) • Gidatex S.r.L. v. Companiello Imports, Ltd., 82 F.Supp.2d 119 (S.D.N.Y. 1999) • Apple Corps Ltd. v. Int’l Collectors Soc.,15 F.Supp.2d 456 (D.N.J. 1998)

  11. A Not Comforting Case • Midwest Motor Sports, Inc. v. Arctic Cat Sales, Inc., 144 F.Supp.2d 1147 (D.S.D. 2001), aff’d 347 F.3d 693 (8th Cir. 2003)

  12. The Worrying Cases • In re Gatti, 8 P.3d 966 (Or. 2000) • People v. Pautler, 35 P.3d 571 (Colo. 2001) • The ends do not justify the means

  13. The Take Away • Be particularly cautious if the subject of the investigation is represented by counsel. • Use investigators and restrict them to normal customer questions. • Restrict false representations to name and purpose of purchase.

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