When one thinks about lawyers and Shakespeare, many recall the oft-quoted and misunderstood statement “the first thing we do, let’s kill all the lawyers.” ‘Henry VI,” Part II, Act IV, Scene II, Line 73. But my favorite, as a better reflection of the best of our lot, is:
Sir, I shall not be slack; in sign whereof,
Please ye we may contrive this afternoon
And quaff carouses to our mistress’ health
And do as adversaries do in law,
Strive mightily, but eat and drink as friends
That represents the notion that lawyers, while representing opposing interests zealously, can nonetheless have relationships marked by civility or even camaraderie.
But a recent spate of intellectual property cases makes me think of another favorite quote, this one from The Godfather, which is sort of American Shakespeare in some sense and which comes near the end of Vito Corleone’s discussion with Virgil Sollozzo:
…I wish to congratulate you on your new business, and I know you’ll do very well; and good luck to you — as best’s as your interests don’t conflict with mine. Thank you.
[The Godfather, Part 1 (3:07/4:28)]
Well, it seems that lawyers have begun to see their own interests conflicting with those of other lawyers in the field of intellectual property.
Here are just a few examples.
Lawyers In Trademark Fights: A Tennessee lawyer once published a proclamation that included the following: “I protest against your right to use my name in any manner whatsoever without my consent, or authority. I am a gentleman, and I have always practiced my profession like a gentleman. You will oblige me by not sending me any more of your business, for I decline most emphatically to have any business relations with you now or at any time,” adding that “A good name among his fellow citizens is the best asset a lawyer can have—indeed, greater than legal ability or legal success.”
Lawyers are beginning to see the value in a good name, and the need to fight to protect that name as business asset. For instance, on July 17, 2017, in Merchant & Gould P.C. v. MG-IP Law, P.C., the Trademark Trial and Appeal Board of the United States Patent and Trademark Office cancelled the trademark “MG-IP Law” based on Merchant & Gould’s asserted priority and a likelihood of confusion with its mark M&G. The TTAB concluded that Merchant & Gould’s M&G “mark is inherently distinctive and, as such, has conceptual strength,” and also found “its M&G mark to be at least somewhat commercially strong in the legal services market.” In a similar 2007 case in Hong Kong, the challenger to the mark was not as successful as Merchant & Gould—a long-time Hong Kong firm known as “Hastings & Co.” failed in a bid to prevent registration in Hong Kong of the mark “Paul, Hastings, Janofsky & Walker.” In that case, Hong Kong’s Registrar of Trade Marks rejected various claims challenging the Paul Hastings’ application, even though the challenger had used its mark in commerce in Hong Kong since 1904. Concluding that “there are obvious differences that it cannot be said they are the same mark or so similar as to be in effect the same” when compared side by side, the Registrar rejected the challenge despite the challenging fact that Paul Hastings had moved into the same building previously occupied by the challenger, which had led at least a few people to show up at the wrong law firm.
Trademark disputes between law firms have recently found their way from such administrative arenas into the courts. On July 21, 2017, two Chicago law firms became embroiled in a lawsuit because the competing tax law firms each used “O’Keefe” in their names. The complaint in the matter of O’Keefe Lyons & Hynes, LLC (“OLH” or “Plaintiff”), v. O’Keefe Law Firm, Ltd. (“OLF” or “Defendant”), alleged that “OLH has priority over OLF with respect to use of the name O’KEEFE in connection with providing property tax legal services” and that “OLF’s Name so closely resembles OLH’s Name in appearance, sound, connotation, and commercial impression that the use of OLF’s Name in commerce in connection with property tax legal services is likely to cause confusion or mistake in the minds of the public and prospective purchasers.” OLH seeks to enjoin OLF from using the name “O’Keefe Law Firm.”
But disputes over law firm names have been in court before this recent suit. As far back as 2009, one law firm sued another for the defendants’ use of the plaintiff firm name as metatag or purchased keyword to drive internet traffic (along with clients) to the defendant law firm. As reported by the Journal-Sentinel:
Wisconsin’s largest personal injury law firm pioneered lawyer advertising in the state back in the early 1980s, but it appears it may have been asleep at the keyboard when its biggest competitor turned to Google, Yahoo and Bing.
Someone looking for a personal injury lawyer in the Milwaukee area might easily type the names Habush and Rottier into an Internet search engine.
Habush, Habush & Rottier, one of the state’s oldest and largest law firms specializing in personal injury cases, has had many publicized successes and advertises a lot.
But the first result most major search engines return is for a Habush competitor – Cannon & Dunphy.
Interestingly, plaintiffs in this case claimed an invasion of their privacy interest in their name rather than making direct trademark claims. The Court in Wisconsin rejected the privacy claims, including those claims based in part on Israeli case law, saying:
Habush and Rottier argue that we should look to an Israeli court’s decision addressing whether a medical company invaded the privacy of a doctor by bidding on his name as a keyword search term, Klein v. Proporzia P.S.C. Ltd., C.A. 48511-07 (Tel Aviv-Jaffa Magistrate Court, Sept. 18, 2011). In Klein, the Israeli court applied a statute prohibiting an “infringement of privacy” resulting from “[t]he use of a person’s name, appellation, picture or voice, for profit” to a fact pattern like the one here. Id. at 14. However, as with Habush’s and Rottier’s comparison with trademark law, we are left wondering whether the law at issue in Klein, and the broader legal context, is sufficiently comparable to American jurisprudence and the particular law we must interpret.
The Wisconsin litigation became a case of some note in that jurisdiction.
Such disputes over law firm names seem likely to continue.
Lawyers In Copyright Fights: It has been said that “To steal ideas from one person is plagiarism; to steal from many is research.” As much of legal argument is based on what is quoted and borrowed, there is some truth to this notion. And as we are all brothers and sisters at the bar (hopefully willing to eat and drink as friends and family as it were), some amount of unauthorized “borrowing” certainly goes on.
But not everyone is willing to just ignore such transgressions. See Lisa P. Wang, The Copyrightability of Legal Complaints, 45 B.C. L. Rev. 705 (2004); Davida H. Isaacs, The Highest Form of Flattery? Application of the Fair Use Defense against Copyright Claims for Unauthorized Appropriation of Litigation Documents, 71 Mo. L. Rev. 391, 392 (2006). Perhaps hearing the echoes of Hickman v. Taylor’s assertion that our system is “hardly intended to enable a learned profession to perform its functions either without wits or on wits borrowed from the adversary” or some other attorney, a party recently stood up for its right to be free of infringement of legal brief. In the matter of Newegg v. Ezra Sutton, as reported by Reuters, one learns that copyright can prevent lawyers from becoming free riders on other lawyer’s work:
As Newegg general counsel Lee Cheng recounts the story, he told Sutton early on that Newegg would be willing to file a joint brief with Sakar if Sakar paid a share of the legal fees. Sutton said no thanks, but, as the filing deadline approached, he came back to Newegg. Cheng agreed to show Sutton a draft of the brief Newegg intended to submit to the Federal Circuit to help him write a complementary brief for Sakar.
Instead, the day before Newegg’s brief was due, Sutton filed a brief that was largely copied from Newegg’s draft. When Newegg realized what he’d done and protested the filing, Sutton withdrew the brief and subsequently filed a shorter version focused on Sakar’s argument.
That wasn’t good enough for Newegg. In February 2015, the company sued Sutton for copyright infringement in Los Angeles federal district court.
And when that lawsuit occurred, the court’s first substantive ruling favored Newegg, noting that Sutton had no fair use defense under the applicable four factor test. As to the first factor, the concluded that, “[h]ere, Sutton did not add new expression, meaning or message to Newegg’s draft brief. Sutton merely made minor and cosmetic changes to the draft brief. Further, Sutton’s brief and Newegg’s draft brief had the same intrinsic use – to persuade the Federal Circuit. Therefore, Sutton’s brief cannot be said to be a transformative use of the draft brief.” As to the second factor, the court did find for Sutton on factors 2 and 3, stating that “Because Sutton’s brief is a functional presentation of fact and law, and in accordance with the Supreme Court’s priority in disseminating factual works, the second statutory factor weighs slightly in favor of Sutton” and that “because Newegg has failed to identify a market for its legal briefs, the fourth statutory factor weighs slightly in favor of Sutton.” But the third factor favored Newegg heavily: “Given that Sutton copied most, if not all, of the substantive portions of the draft brief, and that Sutton’s use of the draft brief was not transformative, this factor weighs heavily in favor of Newegg.”
The Sutton matter is by no means the only copyright related matter between lawyers. For instance, such issues have arisen in litigation in Connecticut, as one blogger noted:
In Connecticut, a group of pro wrestlers sued World Wrestling Entertainment for concussion-related brain injuries. The complaint was almost entirely copied and pasted from a prior concussion lawsuit against the National Football League, with the words “NFL players” replaced by “WWE wrestlers.” But the proofreading left something to be desired, as it refers to football player Michael Webster and attributes statements from the NFL to the WWE.
The WWE filed a Motion to Dismiss and a Motion for Sanctions, saying the complaint violates pleading provisions of the Federal Rules of Civil Procedure.
From Professional Liability Matters: “The WWE points to the 122 page complaint, which it describes as ‘massively plagiarizing’ from the NFL lawsuit and containing factual allegations without merit. Attorneys for the WWE also refer to a ruling in a similar case brought by the same attorney, in which the judge required him to amend his complaint and added that ‘I want you to read it this time.’”
Similarly, such rote copying has led to sanctions elsewhere, as in Lohan v. Perez, where the Court concluded that “defendants’ submissions to the Court evidence that almost the entire text of the Opposition is taken from unidentified, unattributed sources. … Obviously, this type of conduct is unacceptable and, in the Court’s view, is sanctionable pursuant to its inherent powers… [The] submission of a plagiarized Opposition constituted an affront to the Court — not to defendants. The victim of the sanctionable misconduct is the justice system itself and, as such, the Court finds that Attorney Ovadia’s fine should be made payable to the Court in order to remedy those wrongs.” Similar results have occurred in Iowa as well.
And, naturally, to add some international flavor to this section of the article, we should recall that in 2010 a jurist in the Philippines had to face claims of “manifest intellectual theft” and “outright plagiarism” when he wrote the decision for the Court in April 28, 2010 rejecting the claims of Filipino comfort women. The claim was that Justice Mariano C. Del Castillo had copied without attribution thirty-two different sections from three foreign works: (a) A Fiduciary Theory of Jus Cogens by Evan J. Criddle and Evan Fox-Descent, Yale Journal of International Law (2009); (b) Breaking the Silence: Rape as an International Crime by Mark Ellis, Case Western Reserve Journal of International Law (2006); and (c) Enforcing Erga Omnes Obligations by Christian J. Tams, Cambridge University Press (2005). Beyond that, the jurist was actually accused of “twisting the true intents of the plagiarized sources to suit the arguments” he was making—so not only of copying it, but in sense getting it wrong, perhaps intentionally so. The majority of his court absolved him of the charges by finding that he lacked any intent to defraud or deceive readers or others as to the sources or as to attribution and part of the blame should fall on his research assistant and the MS Word program the court used.
But the majority opinion also prompted two concurring opinions and four separate dissents, illustrating why this is a case about lawyers (or rather judges who used to be lawyers) fighting with their colleagues about whether and how copyright applied to them in their legal tasks. One of the dissenters (Justice Carpio, interestingly, emphasized that the law of copyright applies to judicial opinion writing but that one has license to copy what the parties themselves create and submit: “There is an implied offer by the pleader that the judge may make any use of the pleadings in resolving the case.” But concluding that the moral rights of other, non-party authors requires attribution, that dissenting justice said: “When a judge ventures to refer to copyrighted works by copying passages from such works, he immediately knows he is treading on protected works, and should readily respect the rights of the authors of those works. The judge, whose most important function is to write judicial decisions, must be the first to respect the rights of writers whose lives and passions are dedicated to writing for the education of humankind.” Another of the dissenters (Justice Sereno) rejected the notion of lack of intent, concluding that “[t]he extent of unattributed copying belies inadvertence.” The majority opinion, concurrences and dissents are long and detailed, and, for those armed with both the curiosity and stamina to dive in, the intersection of intellectual property and the judicial process well worth the time to read.
Lawyers In Trade Secret Fights: Long ago, it was written that sub sole nihil novi est. But no lawyer’s fondness for Latin will make everyone a believer in that sentiment. Indeed, there are many lawyers who believe that they hold trade secrets that give them a competitive advantage in the law and they are willing to fight to protect those rights.
As one example, a Chicago area lawyer Peter Francis Geraci, a Chicago-based bankruptcy attorney, sued attorney Thomas Macey and a former employee, R. William Amidon, for allegedly misappropriating Geraci’s proprietary software code for bankruptcy practice-management system. And in July 2016, a court denied the defendants’ summary judgment motion, finding that “there is evidence that Geraci spent time, money, and effort to develop GapC source code, which in turn, had economic value as a business-management technique, and was kept confidential by Geraci. As a result, a jury might conclude that there was some economic value in the secrecy of the source code.”
In another example, a law firm in Houston and a departed attorney employee recently settled a dispute that had included claims of theft of trade secrets and confidential information, and had actually also included the court’s issuing a temporary restraining order that said “there is evidence that harm is imminent to plaintiff, and if the court does not issue [a] temporary restraining order, plaintiff will be irreparably harmed because defendant Erik J. Osterrieder and Osterrieder LLC have and will continue to use plaintiff’s confidential and proprietary business information.” The petition that led to that TRO claimed that pilfered confidential information and trade secrets included intellectual property/patent applications and information, litigation related documents and pricing information.
Thus, all manner of IP claims persist among lawyers, including trade secret claims
Lawyers fighting with lawyers probably does little to raise their esteem among the general populace, but maybe if we continue the tradition of adversaries in the law with which we opened, that populace will understand that “it’s not personal… It’s strictly business.”