Live from the IP Symposium: Ethical Implications of Use of Private Investigations

Ethics – Ethical Implications of Use of Private Investigators

Moderator/Commentor: Professor Jack Sahl, Akron Law
Panelist: Philip Barengolts, Pattishall McAuliffe

Mr. Barengolts is discussing ethical issues with respect to trademark pretext investigations.  Mr. Barengolts suggests there are 4 ethical rules that are of concern:

• Rule 4.1 – truthfulness in statements to others;

• Rules 4.2 & 4.3 – communications with persons represented by counsel or unrepresented; can't suggest disinterest; and

• Rule 8.4 – can't violate a rule through the acts of another.

Mr. Barengolts stated that the main case involving pretext investigations involves the Beatles.  The court said that engaging with sales personnel was okay when the investigators are pretending to be an ordinary average person and asking questions an ordinary consumer would ask.  In a subsequent case involving Italian furniture, a different court said the investigators posing as high-end furniture purchasers was also acceptable.

However, a later ruling created a conflict.  Mr. Barengolts said the investigators in this case asked questions concerning the acquisition of the allegedly infringing products and business practices.  In essence, asking more detailed questions than were posed in the earlier cases.  The difficulty is determining what level of questions are improper and who they can be asked to.

Mr. Barengolts noted that a court in Illinois compared the trademark pretext investigation to civil rights cases and declared these investigation to be appropriate as long as the investigator does not trick the other party into saying something they would not normally say.

Mr. Barengolts and Prof. Sahl suggested that lawyers clearly instruct their investigators on what is permissible and impermissible and do so in writing.  Most importantly, attorneys need to remind their investigators that they need to stick to their role and be consumers.  Furthermore, they suggest that attorneys not do the investigation yourself, because the attorney runs the risk of becoming a fact witness and losing the ability to represent their client in the case.