In Alabama, may a lawyer use private investigators who pose as ordinary customers to investigate suspected intellectual-property infringers before suit is filed?

Plain-English summary

The Disciplinary Commission addressed whether, during pre-litigation investigation of suspected intellectual-property infringement, a lawyer may use private investigators who pose as potential customers seeking the suspected infringer's services in the same manner as an ordinary member of the public. The opinion concludes the lawyer may do so.

The opinion starts from Rule 8.4(a): a lawyer may not circumvent the rules by inducing a third party to do what the lawyer could not, so an investigator's misconduct may be imputed to the lawyer. It then works through the rules that might apply. Rule 4.2 (communication with a represented party) does not apply, because Alabama's rule uses the technical term "party," which refers to those by or against whom a suit is brought; before any suit is filed, the suspected infringers are not "parties," and the opinion expressly does not address contact during pending litigation. Rule 4.3 (dealing with an unrepresented person) does not apply either, because, adopting the reasoning of Apple Corps Ltd. v. International Collectors Society, the rule's prohibition on letting a person misunderstand that the lawyer is disinterested applies only when the lawyer is acting as a lawyer; an investigator posing as a customer is not acting as a lawyer.

On Rule 8.4(c) (dishonesty, fraud, deceit, or misrepresentation), the opinion again adopts Apple Corps and Gidatex v. Campaniello Imports, holding that lawyers and investigators conducting a pre-litigation investigation may misrepresent their identity and purpose to detect ongoing violations of law that would be difficult to discover otherwise; such misrepresentations, limited in scope to identity and purpose, do not amount to the dishonesty or deceit proscribed by Rule 8.4(c). The opinion confines its holding to the pre-litigation context: a private lawyer may use an undercover investigator to investigate possible infringement, posing as a customer and misrepresenting identity and purpose, so long as the contact occurs in the same manner and on the same basis as a member of the general public seeking those services.

In practice

The opinion holds that, under the Alabama rules as they stood at the time of the opinion, pre-litigation undercover investigation of suspected infringers is permissible: Rule 4.2 does not reach pre-suit contacts because there are no "parties" yet, Rule 4.3 does not reach an investigator who is not acting as a lawyer, and Rule 8.4(c) is not violated by misrepresentations limited to identity and purpose used to detect otherwise hard-to-find violations. The opinion limits the holding to the pre-litigation setting and to conduct that mirrors an ordinary member of the public, and it cautions through Rule 8.4(a) that an investigator's misconduct can be imputed to the supervising lawyer.

Common questions

Q: Can my investigator pose as a customer to catch a suspected infringer before I file suit?

A: Yes. The opinion concludes that, in the pre-litigation context, a lawyer may use an undercover investigator posing as a customer to investigate suspected infringement on the same basis as an ordinary member of the public.

Q: Doesn't posing as a customer violate the honesty rule, Rule 8.4(c)?

A: Not where the misrepresentation is limited to identity and purpose. Adopting Apple Corps and Gidatex, the opinion concludes such limited misrepresentations, used to detect violations that would be hard to discover otherwise, do not constitute the dishonesty or deceit Rule 8.4(c) prohibits.

Q: What about the no-contact rule, Rule 4.2?

A: It does not apply before suit. The opinion explains that Alabama's Rule 4.2 uses the term "party," and before a suit is filed the suspected infringers are not "parties"; the opinion does not address contact during pending litigation.

Q: Am I responsible for what my investigator does?

A: Yes. The opinion notes under Rule 8.4(a) that a lawyer cannot circumvent the rules through a third party, and misconduct committed by an investigator may be imputed to the lawyer.

Background and rules framework

The opinion interprets Rule 8.4 (misconduct, Model Rule 8.4), both the anti-circumvention provision 8.4(a) and the dishonesty provision 8.4(c); Rule 4.2 (communication with a person represented by counsel, Model Rule 4.2), noting Alabama's use of "party" rather than the Model Rule's "person"; and Rule 4.3 (dealing with an unrepresented person, Model Rule 4.3). The opinion adopts the reasoning of federal decisions, Apple Corps Ltd. v. International Collectors Society and Gidatex, S.r.L. v. Campaniello Imports, Ltd., in the pre-litigation investigation context.

Citations and references

Rules of Professional Conduct:

• Model Rule 8.4 / Ala. R. Prof. C. 8.4(a), 8.4(c) (misconduct; circumvention and dishonesty)
• Model Rule 4.2 / Ala. R. Prof. C. 4.2 (communication with represented party)
• Model Rule 4.3 / Ala. R. Prof. C. 4.3 (dealing with unrepresented person)

Cases:

• Apple Corps Ltd., MPL v. International Collectors Society, 15 F. Supp. 2d 456 (D.N.J. 1998), limited pretext in investigations
• Gidatex, S.r.L. v. Campaniello Imports, Ltd., 82 F. Supp. 2d 119 (S.D.N.Y. 1999), undercover investigators
• Golatte v. Matthews, 394 F. Supp. 1203 (M.D. Ala. 1975), definition of "party"

See also

• ABA Ethics Op. 95-396: Communications With Represented Persons
• ABA Ethics Op. 508: The Ethics of Witness Preparation

Source

• Landing page: https://www.alabar.org/office-of-general-counsel/formal-opinions/2007-05/
• Original PDF: https://www.alabar.org/assets/2019/02/2007-05-1.pdf

Original opinion text

ETHICS OPINION RO-2007-05

QUESTION:

During pre-investigation of possible infringement of intellectual property rights, may a lawyer employ private investigators to pose as potential customers under the pretext of seeking services of the suspected infringers in the same manner as a member of the general public?

ANSWER:

During pre-litigation investigation of suspected infringers of intellectual property rights, a lawyer may employ private investigators to pose as customers under the pretext of seeking services of the suspected infringers on the same basis or in the same manner as a member of the general public.

DISCUSSION:

Rule 8.4(a), Alabama Rules of Professional Conduct, provides: "Rule 8.4 Misconduct. It is professional misconduct for a lawyer to: (a) 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."

It is well settled that a lawyer may not circumvent the rules of professional conduct by inducing another to engage in conduct that is prohibited by the rules of professional conduct. Therefore, where a lawyer engages a private investigator or any other third party and that person engages in conduct that is prohibited by the rules of professional conduct, the lawyer does not escape the disciplinary consequences as the misconduct committed by the private investigator or other party may be imputed to the lawyer. Whether the proposed conduct is a violation of the rules depends on consideration of the following:

Rule 4.2, Ala. R. Prof. C., provides: "Rule 4.2 Communication With Person Represented 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 by law to do so."

It is significant that Alabama Rule 4.2 uses the term "party" as opposed to the term "person", which is used by the drafters of the Model Rules of Professional Conduct. Black's Law Dictionary 1010 (5th Ed. 1979) citing Golatte v. Matthews, 394 F. Supp. 1203, 1207 (M.D. Ala. 1975) as follows: "Party is a technical word having a precise meaning in legal parlance; it refers to those by or against whom a legal suit is brought, whether in law or in equity, the party plaintiff or a defendant, whether composed of one or more individuals or whether natural or legal persons; all others who may be affected by the suit, indirectly or consequently, are persons interested but not parties."

Rule 4.2 has no application to contact between a lawyer or his private investigators and persons who may potentially be parties in litigation that has yet to be filed. This opinion is not intended and does not address contact between a lawyer or a lawyer's private investigators and parties, including employees of entity parties, that are protected by Rule 4.2, Ala. R. Prof. C., during pending litigation.

Rule 4.3, Ala. R. Prof. C., provides: "Rule 4.3 Dealing 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."

With respect to the application of Rule 4.3, the Disciplinary Commission agrees with and adopts the rationale expressed by the court in Apple Corps Limited, MPL v. International Collectors Society, 15 F. Supp. 2d 456, 476 (D.N.J. 1998), wherein the court held as follows: "It is clear from the language of R.P.C. 4.3 that it is limited to circumstances where an attorney is acting in his capacity as a lawyer - 'dealing on behalf of a client.' See R.P.C. 4.3. See also Isbell and Salvi, supra, 8 Geo. J. Legal Ethics at 824. Therefore, its prohibitions on allowing the unrepresented person to misunderstand that the lawyer is disinterested only apply to a lawyer who is acting as a lawyer. Id. at 825."

Consistent with the foregoing, in the pre-litigation context, where a lawyer or his investigator is acting in the capacity of an investigator and merely presenting to targets as potential customers under the pretext of seeking services as any other member of the general public, they are not acting as a lawyer and Rule 4.3, Ala. R. Prof. C., does not apply.

Additionally, Rule 8.4(c), Ala. R. Prof. C., provides: "Rule 8.4 Misconduct. It is professional misconduct for a lawyer to: (c) Engage in conduct involving dishonesty, fraud, deceit or misrepresentation."

The Disciplinary Commission agrees with and adopts the rationale expressed by the court in Apple, 15 F. Supp. 2d 456, 476, wherein the court held that lawyers and private investigators conducting a pre-litigation investigation may misrepresent their identity and purpose to detect ongoing violations of the law where it would be difficult to discover those violations by any other means. Such misrepresentations, limited in scope to identity and purpose, do not constitute "dishonesty, fraud, deceit or misrepresentation" proscribed by Rule 8.4(c), Ala. R. Prof. C.

To the extent that Apple, 15 F. Supp. 2d 456; and Gidatex, S.r.L. v. Campaniello Imports, Ltd., 82 F. Supp. 2d 119 (S.D.N.Y. 1999) would apply to pre-litigation investigation, the Disciplinary Commission adopts the rationale and holdings of those decisions. The Disciplinary Commission opines in the pre-litigation context a private lawyer may use an undercover investigator to investigate possible infringement of intellectual property rights posing as customers under the pretext of seeking services of the suspected infringers and may misrepresent their identity and purpose as long as their contact with suspected infringers occur in the same manner and on the same basis as those of a member of the general public seeking such services.

RELjr/vf 9/12/07