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Friday, 17 May 2013

The IP Lawyer's Nightmare: "But Everyone Else Does It"

This blog is about one of the most dreaded moments in the life of any IP attorney. You have been asked by your client whether it can take some action, such as use of certain content taken from the internet or adoption of a trade mark "based" on the mark of another person. You review the situation and advise the client that it would be better if it demurred from making use of those contents or adopting that mark. Then comes the client's retort—"But everyone else does it." The mettle of an IP lawyer is often measured by your response to that comment.

Before we weigh up a possible reply, however, let's consider a bit of cultural background. One of the most widely-used slogans of the past decade is "the wisdom of the crowd". While there is inherently nothing new about the concept per se, what is interesting is the apparent change of perception in the role of the broader collective as a source of knowledge, if not confirmation and validation of such knowledge. This Kat remembers preparing for his State of Ohio bar examination over 30 years ago. Before entering into the exam room, we were told by those who sought to prepare us—"Don't discuss the questions with your fellow examinees during the break. It will only depress you. After all, you collectively are always smarter than you are individually." Yes, the crowd might be a source of wisdom, but that wisdom was not necessarily benign.

Indeed, we were all supposed to be a little like Will Kane, standing out there on our own, firm in our principles. Will Kane was the iconic character played by Gary Cooper in the classic 1952 movie, "High Noon", here here. Marshall Kane is ultimately forced to stand up alone in the middle of dusty town in the American Wild West against ex-con Frank Miller and his murderous henchmen. Kane prevails (with a little help from his new bride, played by Grace Kelly) and the message that "High Noon" sent to generations of viewers was clear. When the chips are down, and the issue at hand is about what really matters, you can only rely on yourself. The crowd is transient, unreliable and fickle—as for wisdom, you have to look elsewhere.

Things have certainly changed. "But everyone else does it" is now a form of prima facie validation, designed to enable the client to obtain the result that it prefers, even at the price of challenging, if not undermining, the authority of one's IP counsel (not that this Kat is suggesting that any of his clients is akin to Frank Miller). The ubiquity of digital content makes it easy to determine what information is out there and, e.g., to identify quickly any number of examples of competing websites that contain similarly accessed contents or make use of seemingly confusingly similar marks. Faced with such factual examples taken from the collective, what is the IP lawyer to say in response? After all, weren't we trained to respect facts and fashion our conclusions accordingly (as attributed to John Maynard Keynes, "When my information changes, I alter my conclusions. What do you do, sir?" ).

So what will it be for the IP attorney, a change of view in light of the wisdom of the crowd, or a resolute stand of his position, as in the case of Will Kane? Indeed, this Kat wonders how many of us have altered, if even slightly, our legal advice, having been confronted with the wisdom of the crowd. Do we reply by saying that "I agree that the legal issue may not be totally black and white, but my view remains unchanged"? Or do we rely on the dynamics of the fait accompli—"Whatever the ultimate legal right and wrong here, you have already made the decision and you can at least enjoy the legal certainty that goes with it"? Or do we fall back on the unique factual circumstances of each instance—"I don't know about the facts in these other cases"? Or do we emphasize risk analysis—"The fact that 'they' are also doing it does not make it all right, but it only shows that the rights-holder cannot go after everyone. It's your call." Whatever the response, you can then only pray that the client does not threaten to take the matter up with the senior attorney.

No doubt the wisdom of the crowd in the digital age has yielded some palpable benefits, such as crowd-funding sources of the ilk of Kickstarter, here. But enabling one's client to challenge one's legal IP advice by claiming that "everyone does it" is not one of them.

More on "The Wisdom of Crowds" here.


Anonymous said...

Fantastic post, sir. Thank you.

Something I encounter a lot. My own preferred response to such enquiries shall remain confidential (otherwise I’ll lose my competitive edge *winks*), but I will say this: “everyone else does it” is not a legal defence. Fact. It may ultimately lead Parliament/Congress to effect a change in the law (because the best laws should reflect commercial reality and/or how people live their lives), but until then, it can only give a degree of commercial comfort. And even then…

Anonymous said...

Good article, Neil. It's a sad reflection on modern society that more and more people regard the only crime as "getting caught doing it". When I sat for my first patent attorney exams back when disnoaurs walked the earth, the practice exam usually had a conflict of interest question. In those days, the answer was, get rid of both parties. However, I watched with some confusion as attorney firms kept one of the clients - and in one case kept BOTH clients, physically walling off one team from the other and forbidding them to associate with each other at all!

I personally am with Will - or, to paraphrase another Hollywood icon (Fred McMurray in "The Rains of Ranchipur"), a man's gotta do what a man's gotta do". "But everyone does it!" is usually an indication that it's something that a man's not gotta do.

Neil Wilkof said...

Anonymous (12:39:00 BST)

Thanks. There is a more up-to-date version of the McMurray quote, based on a 1980's television program--Alf--about an alien who becomes a house guest of a middle class American family. To quote Alf, "an alien has to do what an alien has to do." I don't know which quote is more apt for the subject matter at hand.

Anonymous said...

Very interesting article. Thank you.

Anonymous said...

Spot on. Some responses I've used:

"They have more money and can afford the lawsuit."

"Do you really want to be like them?" (Useful in derogatory advertising scenarios)

"The law isn't always in sync with common practice."

"They didn't have the advice of good counsel." (That usually is met with the retort, albeit only with the eyes, "(and I wish I didn't either).")

Anonymous said...

How about suggestions to patent attorneys on how to deal with clients who would like protection for manifestly unpatentable stuff?(Blatantly non-novel, quivering masses of obviousness, business methods, etc.)

"Let the patent office deal with it, I'm just here to write up the stuff." ?

MaxDrei said...

Well, one idea might be to collect newspaper cuttings about people who did what everybody else was doing at the time, and came to regret it many years later when the sky fell in and consequences were visited upon them that were out of all proportion to the mischief back then. Show them to the Client and if the Client still insists on proceeding, well, you've done all you could to dissuade them.

Clients are paying you to brief them fully enough that they never suffer, much later on, any nasty surprises.

Chris Huhne got a very nasty surprise. So did Vicky Pryce. So did Uli Hoeness (of Bayern Munich) 12 years after he set up his Swiss bank account to cheat the Internal Revenue. He was only doing everybody else was doing at the time, and now he's very likely to be going to prison.

Joe said...

Anonymous said: "Let the patent office deal with it, I'm just here to write up the stuff."

The only problem with that is that you end up taking the flak when you get an official action merely reaffirming your original opinion. Taking an "I told you so" stance when the client will most likely have spent thousands of pounds with you is probably the most professional retort in that scenario!

If it's a new client it's easy to say go elsewhere, but when it's an existing client a more tactful approach is probably needed. You wouldn't want to hurt their feelings if they're (in effect) paying your wage...

Joe said...

Of course, I meant to say "probably not the most professional retort" (!)

MaxDrei said...

The anon who suggested "Let the Patent Office deal with it" has (I suspect) never encountered the EPC's mother of all Catch 22 situations, the Art 123(2)/(3) "fatal trap". I wonder if he's American.

With the wrong prosecution amendment to Claim 1 at the EPO, you end up with a useless Blue Norwegian patent, throughout 40 countries and 600 million end users. Client does not know when his cherished prosecution amendment doesn't pass muster under the EPC, but you do. What are you going to tell your American client when he ends up in the fatal trap? Perhaps "You made me do it"? Will that be enough to stave off the malpractice suit?

Rich said...

"You have retained me to be your legal advisor. I am advising you of the potential risk to the best of my ability. What you do with that advice, or how you act in response, is your own business. Please sign here, here and here to indicate that you have read and understood my advice. Also, please sign here to indicate your post-facto granting of permission for this meeting to be filmed."

Joking aside, I used to run up against an unrelated but very similar scenario with an old client, who would always give me a hard time about the enormously broad claims their main competitor seemed to be able to get granted, while we struggled with intransigent examiners. I never really found a good response for that one.

Anonymous said...

In the Corporate Family, when confronted with "but all my friends can do it", a variation on "but I'm the Mummy/Daddy and I say no", usually works (albeit less than elegant).

Cato said...

MaxDrei, another good example is Britain's MPs' expenses scandal. 'Everyone else is doing it' didn't work well then.

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