Suppose you are a lawyer representing a client in a civil matter in which the adverse lawyer violates the Rules of Professional Conduct. Can you threaten to report that to obtain a better settlement offer in a lawsuit or better terms in a transaction?
A. The Debate About Rule 3.4(e)
In New York, unlike some other states, the Rules of Professional Conduct do not directly answer this question. Rule 3.4(e) and its predecessor, Rule 7-105 of the Disciplinary Code, prohibit threats of criminal prosecution solely to obtain an advantage in a civil case.
Trademarks can be among the most valuable assets of a successful business because they serve to identify the products or services of the business as authentic. They are also valuable to consumers for that very same reason: the consumer relies on the trademark to identify that the product or service comes from a reliable source.
Because of this dual function of trademarks, the courts developed the concept of assignment in gross, which subsequently was codified in the Lanham Act, 15 U.S.C. 1060.
In many industries—particularly technology, pharmaceuticals, and sales—employers require their employees to sign agreements that forbid them from competing with the employer or soliciting former customers and employees after the employment relationship terminates. When the relationship terminates, an employer seeking to enforce a non-compete agreement will often go to court on an expedited basis, seeking an injunction barring the employee from going to work for a competing company, soliciting customers, or disclosing a trade secret.
As with so many parts of our society, technology is accelerating the pace at which the legal system evolves, and that rapid evolution creates new ethical challenges for commercial litigators. This article deals with one of those challenges: the use of deception in undercover investigations.
To illustrate, suppose a retail establishment is suspected of selling counterfeit, luxury, consumer goods protected by trademark. The lawyer working for the trademark owner hires an investigator to pose as a customer, enter the retail establishment, purchase counterfeit goods and record the transaction using video, audio or both.