Can a law firm license and keep using a lawyer's surname and likeness after that lawyer leaves the firm to practice elsewhere?

Plain-English summary

The opinion addresses a sole shareholder, "John Doe," whose professional corporation (PC) does business as "The John Doe Law Firm." He has invested heavily in marketing tied to his name, likeness, and trademarked slogans, and wants to bring in other lawyers as shareholders while licensing the PC the right to use his name and likeness (including after his departure or death) and limiting that use to the firm's law practice.

On the name, the opinion concludes he may grant the PC the right to use his surname as a trade name so long as the agreement complies with Rule 7.5. The Rules do not specifically limit a member's name being used by his firm, but Rule 7.5 controls when a surname may continue to be used after the lawyer leaves. A firm may keep using a surname after the lawyer's retirement or death if he was a member immediately before, provided later letterhead clarifies that he is deceased or retired so as not to mislead. But if Doe leaves the PC and begins practicing law elsewhere, the PC may not continue using his surname, because that would be misleading under Rule 7.1; any agreement must reflect that limit and may not violate Rule 5.6(a).

On the likeness, the opinion concludes the PC may use Doe's likeness while he practices with the firm, but not after he ceases to practice there by retirement, departure, or death. Because Doe, as sole shareholder, made his likeness synonymous with the PC, the firm's continued use of his likeness once he no longer practices there would be inherently misleading under Rule 7.1, and a disclaimer would not cure the public's perception that his services are still available through the PC. The opinion clarifies it does not generally bar accurate, non-deceptive use of a retired or deceased member's likeness if it clearly states the lawyer's status (for example, "retired partner" or "of counsel") so as not to imply ongoing involvement. Applying these principles to a proposed agreement that would let Doe leave and practice elsewhere while the PC kept his surname as its name, the opinion concludes the PC may not keep using his surname after he leaves to practice law (Opinion #3, citing Opinion #1).

In practice

Under the North Carolina rules as they stood at the time of the opinion, the controlling question is whether continued use of a departing lawyer's name or likeness would mislead the public (Rules 7.1, 7.5). Per the opinion, a firm may keep a member's surname after his retirement or death (with status clarified on letterhead), but not when the lawyer leaves to practice law elsewhere, because the public would be misled into thinking he is still with the firm.

Per the opinion, continued use of the lawyer's likeness after he ceases to practice with the firm is inherently misleading and not cured by a disclaimer here, given his investment in making the likeness synonymous with the PC; any licensing agreement must also avoid restricting the lawyer's right to practice in violation of Rule 5.6(a).

Common questions

Q: Can a firm keep using a lawyer's surname after he leaves to start a new practice?

A: No. The opinion concludes that if the lawyer leaves to practice law elsewhere, the firm may not continue using his surname, because that would be misleading to the public under Rules 7.1 and 7.5.

Q: Can a firm keep a lawyer's name after he retires or dies?

A: Yes, with clarification. The opinion concludes a firm may keep using a surname after the lawyer's retirement or death if he was a member immediately before, provided later letterhead clarifies that he is retired or deceased so as not to mislead.

Q: Can the firm keep using the lawyer's likeness or photo after he leaves?

A: No, in this situation. The opinion concludes that because the sole shareholder made his likeness synonymous with the firm, continued use after he stops practicing there is inherently misleading under Rule 7.1, and a disclaimer would not cure it.

Q: Can a licensing agreement restrict the departing lawyer's use of his own name?

A: Only within limits. The opinion concludes any agreement must reflect that the firm cannot keep the surname after the lawyer leaves to practice, and must not violate Rule 5.6(a)'s bar on restricting a lawyer's right to practice.

Background and rules framework

The opinion applies North Carolina Rule 7.5 (firm names and letterhead, including when a surname may continue after a lawyer leaves), Rule 7.1 (no false or misleading communications about a lawyer or the lawyer's services), and Rule 5.6(a) (no agreement restricting a lawyer's right to practice). These track Model Rules 7.5, 7.1, and 5.6. The through-line is that a firm name or likeness may not imply that a lawyer who has left for other practice is still available through the firm.

Citations and references

Rules of Professional Conduct:

• MR 7.5 / NC Rule 7.5, 7.5(a), cmt. [1] (firm names; continued use of a surname after departure, retirement, or death)
• MR 7.1 / NC Rule 7.1 (false or misleading communications)
• MR 5.6 / NC Rule 5.6(a) (no agreement restricting the right to practice)

Other authorities cited:

• DC Bar guidance on departing-lawyer name use (referenced for comparison).

See also

• ABA Formal Op. 90-357: Use of the "Of Counsel" Designation
• AL Bar Op. 1990-100: Law Firm Operating Under a Trade Name

Source

• Landing page: https://www.ncbar.gov/for-lawyers/ethics-and-governing-rules/ethics-opinions/opinions/2006-formal-ethics-opinion-20/

Original opinion text

Reproduced from the official source for research purposes. The linked source is authoritative.

Inquiry #1:

Attorney John Doe is the sole shareholder of a professional corporation (PC) engaged in the practice of law. The PC goes by the name of The John Doe Law Firm. Attorney Doe has invested millions of dollars in the PC's marketing materials that contain his surname and likeness. He also uses trademarked slogans that incorporate his first name and/or his surname. Attorney Doe believes that, through his marketing efforts, his name and face have become synonymous with the "face" or "brand" of the PC.

Attorney Doe would like to have other lawyers join the PC as shareholders. Attorney Doe, however, wants to maximize the investment he has already made in the PC. Attorney Doe would like to grant to the PC the right to use his name and likeness under the following terms:

The PC will purchase from Attorney Doe the right to use his name as a trade name of the PC, and to use his name and likeness in advertising and marketing materials for the private practice of law. The PC may not sell the name or likeness or use the name or likeness in the marketing or advertising of any other service or product. The PC may use the name during Attorney Doe's life and following his death.

May Attorney Doe grant to the PC the right to use Attorney Doe's name under these terms?

Opinion #1:

Yes, so long as the agreement complies with Rule 7.5. While the Rules of Professional Conduct do not specifically limit the use of the lawyer's name by a firm in which he is a member, Rule 7.5 does restrict the circumstances under which a surname can continue to be used when the lawyer ceases to practice with the firm. "A firm may be designated by the names of all or some of its members, by the names of deceased or retired members where there has been a continuing succession in the firm's identity, or by a trade name85." Rule 7.5, cmt. [1].1

Rule 7.5 permits a law firm to continue to use a lawyer's surname if he retires from the practice of law or after his death, so long as the lawyer was a member of the firm immediately preceding his retirement or death. Subsequent communications listing the former member's name on law firm letterhead, however, should clarify that the former member is deceased or retired so as not to mislead the public. If Attorney Doe leaves the PC and begins engaging in the private practice of law, the PC could not continue to use Attorney Doe's surname because it would be misleading pursuant to Rule 7.1. See Rule 7.5(a), cmt. [1]. Any agreement between Attorney Doe and the PC must reflect this restriction and may not violate Rule 5.6(a) of the Rules of Professional Conduct.

Inquiry #2:

May Attorney Doe grant to the PC the right to use Attorney Doe's likeness under these terms?

Opinion #2:

The agreement may grant to the PC the right to use Attorney Doe's likeness while he practices with the PC but not if he ceases to practice with the PC. As long as Attorney Doe practices with the PC, there is probably no danger that the use of his likeness will mislead, deceive, or confuse the public. However, if Attorney Doe ceases to practice with PC (whether by retirement, departure, or death), the PC's use of his likeness will be inherently misleading and confusing to the public, in violation of Rule 7.1, because of the specific fact that Attorney Doe, while the sole shareholder in the firm, invested substantial resources to make his likeness synonymous with the PC. Therefore, after Attorney Doe's departure from the PC, a disclaimer on the PC's advertisements and marketing communications would be insufficient to overcome the public perception that Attorney Doe's services are still available through the PC. This opinion does not prohibit generally the accurate and nondeceptive use of the likeness of a retired or deceased member of a firm in marketing or advertising, as long as the likeness includes a clear statement of the attorney's status3 so as not to imply ongoing involvement with the firm.

Inquiry #3:

Assume that the agreement between the PC and Attorney Doe further contemplates that Attorney Doe is free to leave the firm at any time and practice elsewhere in the state, but restricts his ability to use his own name or likeness in any advertising materials promoting the new venture. The agreement states that once Attorney Doe leaves the PC, he is free to practice elsewhere using any proper firm name (not including his own surname) or State Bar approved trade name for advertising purposes. He may only use his surname, however, in listings on firm letterhead, telephone directories, and business cards.

Under this proposed agreement, can the PC continue to use Attorney Doe's surname as the name of the PC after Attorney Doe leaves the PC to engage in the private practice of law?

Opinion #3:

No. See opinion #1 above.

End Notes

• As a point of clarification, Attorney Doe's surname is not a trade name, and the licensing of the name to a PC in which Attorney Doe is a member does not change the surname's classification. The terms "Law Firm" or "Law Office" are technically trade names, but because these are useful means of identifying law firms, lawyers may use either designation without registering the trade name.

• Opinion #2 differs from Opinion #1 because of the potential misleading nature of a communication using Attorney Doe's likeness after Attorney Doe ceases to practice with the PC.

• For example, the use of the likeness of a retired partner on a firm's website should clarify his status as a "retired partner" or "of counsel."