Ethics and Using Undercover Investigators to Ferret Out IP Infringement

There's a wonderful little body of law trying to harmonize the ethical rules — which say a lawyer can't use someone to (a) have an ex parte contact with a person who is "represented by counsel" (which is WAY broader than you might think; (b) have contact with a person who is not "represented by counsel" by appearing disinterested when he is not; or (c) engaging in deceit — with the use of undercover investigators to find out, e.g., if the target sells knock-off goods.

Boiled down, the rule seems to be developing that, if the contact is made pre-suit and without knowing that the person is "represented by counsel" (again, very broad counter-intuitive meaning), and if the private investigator only acts like an ordinary consumer, then the contact is okay.  A recent case so holding is Turfgrass Group, Inc. v. Northeast La. Turf Farms, LLC 2013 WL 6145294 (W.D. La. Nov. 20, 2013).

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

2 thoughts on “Ethics and Using Undercover Investigators to Ferret Out IP Infringement

  1. 2

    It is interesting — the other one that’s fun is how we square “no misrepresentations” with the deceit inherent in negotiation…

  2. 1

    I always thought the nuances in this ethics rule to be fascinating – and that the rule should be read as it might in regards to a police-style sting (with the same type of guidelines that entrapment brings).

    Thanks for the case link.

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