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ETHICS IN LITIGATION, PART 1 & PART 2 Live Teleseminar First Run

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ETHICS IN LITIGATION, PART 1 & PART 2 Live Teleseminar First Run Powered By Docstoc
					ETHICS IN LITIGATION, PART 1 & PART 2
Live Teleseminar First Run Broadcast: February 26-27, 2008
1:00 p.m. E.T./12:00 p.m. C.T./11:00 a.m. M.T./10:00 a.m. P.T. (60 minutes)

This program will survey and discuss recent developments affecting lawyer ethics in civil
litigation. The program will focus on those areas with the greatest potential to give rise to
attorney liability, including a wide ranging discussion of conflicts, disqualification issues,
and ethics in settlement negotiations. The program will also include a substantial
discussion of ethical concerns arising from the intersection of technology and litigation,
particularly the use and abuse of “hidden” metadata in computer files and ethical issues
more generally in electronic discovery practice. Over two days, this program will
provide you a substantial review of ethical issues affecting your civil litigation practice.

Day 1 – February 26, 2008:

   •   Ethics in settlement negotiations and communications with opposing counsel
   •   Ethics of e-discover, metadata, and technology
   •   Developments in conflicts of interest, part 1

Day 2 – February 27, 2008:

   •   Ethics of pre-trial investigations
   •   Working with experts
   •   Attorney-Client privilege/disqualification issues
   •   Developments in conflicts of interest, part 2

William Freivogel is the Principal of Freivogel Ethics Consulting in Chicago and
formerly Senior Vice President – Loss Prevention of AON Risk Services, Inc., where he
was responsible for providing professional responsibility advice and risk management
services to his company’s law firm clients. Mr. Freivogel was a trial lawyer for 23 years
and since 1987 has concentrated on legal ethics, lawyer malpractice and related
disciplines. He served as on the American Law Institute’s Members’ Consultative Group
for the Restatement of the Law Governing Lawyers and as a member of the Advisory
Council to the American Bar Association’s Ethics 2000 Commission. Mr. Freivogel is a
graduate of the University of Illinois (Champaign), where he received his B.S. and LL.B.

John M. Barkett is a partner in the Miami office of Shook, Hardy & Bacon, LLP, where
his litigation practice encompasses contract disputes, employment, antitrust, trademark
and environmental and tax tort litigation. He also has a substantial practice as an
arbitrator, mediator, facilitator or allocator in a variety of substantive contexts. He has
served or is serving as a neutral in approximately 40 matters involving in the aggregate
more than $350 million. Among these matters, Mr. Barkett has served as a neutral in five
large multi-party environmental cases, where he supervised all discovery, including
personally conducting depositions/interviews of witnesses, and prepared findings and
conclusions that served as the basis of settlement. He serves on the CPR Institute for
Dispute Resolution’s “Panel of Distinguished Neutrals,” is a member of the Chartered
Institute of Arbitrators, and was a guest lecturer in the International Commercial
Arbitration class at Yale Law School on alternatives to arbitration and the use of “what
if” analyses in dispute resolution. He is former Co-Chair of the Environmental Litigation
Committee of the ABA’s Section of Litigation. He also wrote "Ethical Issues in
Environmental Dispute Resolution," a chapter in the ABA publication, Environmental
Dispute Resolution, An Anthology of Practical Experience (July 2002). Mr. Barkett
served as an adjunct professor at the University of Miami Law School. He received his
B.A., summa cum laude, from Notre Dame University and his J.D. from Yale Law
School

Lucian T. Pera is a partner in the Memphis office of Adams & Reese, LLP. His practice
includes professional malpractice litigation as well as counseling lawyers and law firms
in the area of ethics and professional responsibility. A member of the ABA’s Ethics 2000
Commission, he is the co-author of Ethics and Lawyering Today, a national e-mail
newsletter on lawyer ethics, which is available on his Web site:
www.ethicsandlawyering.com. Mr. Pera is a graduate of Princeton University, where he
received his A.B. with honors, and Vanderbilt University School of Law, where he
received his J.D. After leaving law school, he served as a judicial clerk to Judge Harry
W. Wellford of the U.S. Court of Appeals for the Sixth Circuit.
                     VT Bar Association Continuing Legal Education Registration Form

Please complete all of the requested information, print this application, and fax with credit info or mail it
with payment to: Vermont Bar Association, PO Box 100, Montpelier, VT 05601-0100. Fax: (802) 223-1573
PLEASE USE ONE REGISTRATION FORM PER PERSON.

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I will be attending:


                              ETHICS IN LITIGATION, PART 2, TELESEMINAR
                                                 February 27, 2008




             Early Registration Discount (By 02/20)                Registrations Received After 02/20


             VBA Members: $50.00                            VBA Members: $60.00
             Non-VBA Members/Atty: $60.00                   Non-VBA Members/Atty: $70.00
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                                 NO REFUNDS AFTER February 20, 2008

                 Please note: Due to New Hampshire Bar regulations, teleseminars cannot be used for
                                            New Hampshire CLE credit




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                                   Vermont Bar Association
                                      Seminar Survey

                ETHICS IN LITIGATION, PART 2
                                            Teleseminar
                                          February 27, 2008


1.     Rate the sound quality of the                  5.      Was the level of the program what you
       seminar:        ___ Good                               expected?
                       ___ Fair                               ___ Yes        ___ No
                       ___ Poor
                                                      6.      Was this program worth your time and
2.     Were the course materials a useful adjunct             money?
       to the presentations?                                  ___ Yes        ___ No
       ___ Yes          ___ No
                                                      7.      Would you register to participate in future
3.     Will the course materials be useful to you             telephone seminars?
       aside from this course?                                ___ Yes        ___ No
       ___ Yes          ___ No

4.     How was the program overall?
       ___ Good balance of contents
       ___ Not enough subjects covered
       ___ Too many subjects covered
       ___ Presentation confusing

8.     TOPIC PRESENTATIONS: For each presentation, please evaluate the content and the delivery of
       presentation, on a scale of 1 to 10 where 10 = excellent and 1 = poor.

       Presenters                                                     Content        Delivery

         William Freivogel                                            ______         ______
         John M. Barkett                                              ______         ______
         Lucian T. Pera                                               ______         ______
                                                                      ______         ______



9.     How could this program be improved, in your opinion?_________________________________
       _____________________________________________________________________________
10.    What programs could the Vermont Bar Association offer that you would register to attend?
       _____________________________________________________________________________
       _____________________________________________________________________________

NOTE: Please return this evaluation to Vermont Bar Association, PO Box 100, Montpelier, VT 05601-
0100 or by fax: 802-223-1573. Your cooperation is greatly appreciated.
                        Tattletales or Crime-Stoppers: Disclosure Ethics Under Model Rules 1.6 and 1.13




Tattletales or Crime-Stoppers:
Disclosure Ethics Under Model Rules
1.6 and 1.13



                                                                Table of Contents

Introduction............................................................................................................................................. 2

Rule 1.6 As Amended in 2003 ................................................................................................................ 2

SEC’s Final Rule on the Standards of Professional Conduct for Attorneys ........................................... 6

Rule 1.6(2) and (3)................................................................................................................................ 12

Rule 1.13 ............................................................................................................................................... 22

Conclusion ............................................................................................................................................ 30

Postscript: Contaminated Property and A Lawyer’s Duty To Disclose .Error! Bookmark not defined.

About the Presenter............................................................................................................................... 31
    John M. Barkett ....................................................................................................................................... 31




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                Tattletales or Crime-Stoppers: Disclosure Ethics Under Model Rules 1.6 and 1.13




Tattletales or Crime-Stoppers:
Disclosure Ethics Under Model Rules
1.6 and 1.13



INTRODUCTION
In August 2003, the ABA House of Delegates modified Rules 1.6 and 1.13 of the Model Rules of
Professional Conduct to widen the ethical contours within which a lawyer may disclose information
without violating the attorney-client privilege. This change was prompted in part by the passage of
the Sarbanes-Oxley Act of 2002 and the adoption of Standards of Professional Conduct by the
Securities and Exchange Commission requiring of lawyers who practice before the SEC “up-the-
ladder” reporting of material violations of law by SEC-regulated entities. This paper discusses the
changes in Model Rules 1.6 and 1.13 against the backdrop of the SEC’s Standards of Professional
Conduct. As part of the discussion, it interweaves disclosure-related obligations that exist apart from
Rules 1.6 and 1.13 and offers illustrations to test the application of these Rules. Appendix I contains a
number of state equivalents to Model Rule 1.6 so that interested readers can contrast the Model Rule
with these states’ equivalent RPC 1.6. Appendix II contains the full text and commentary of Model
Rules 1.6 and 1.13 along with full text or excerpted text of a number of other Model Rules addressing
disclosure obligations.



RULE 1.6 AS AMENDED IN 2003
Rule 1.6 is entitled “confidentiality of information.” This is sacred territory for lawyers. If clients
cannot count on confidentiality in communicating with counsel, chaos would result in the practice of
law.




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Rule 1.6(a) of the Model Rules1 contains the basic “confidentiality” obligations of lawyers. Rule
1.6(a) provides that a lawyer “shall not” reveal information “relating to representation of a client
unless the client gives informed consent,”2 the disclosure is “impliedly authorized in order to carry out
the representation,”3 or the disclosure is permitted by Rule 1.6(b).

Model Rules Rule 1.6(b) then permits disclosure “to the extent the lawyer reasonably believes
necessary:”4

               (1) to prevent reasonably certain death or substantial bodily harm; 5




1
    The 2002 edition of the Model Rules reflects the work of the Commission on Evaluation of the Rules of Professional Conduct, or the
    “Ethics 2000” Commission. The Commission’s Report is cited as “American Bar Association, Commission on Evaluation of the Rules of
    Professional Conduct, Report with Recommendation to the House of Delegates (August 2001).” The Ethics 2000 Report can be
    downloaded at: http://www.abanet.org/cpr/e2k/e2k-report_home.html. During the August 6 - 7, 2001, meeting of the American Bar
    Association House of Delegates, the House considered the changes to the Model Rules proposed by the Ethics 2000 Commission. The
                                                                                  s
    House voted on the Rules through Rule 1.10 and approved the Commission' recommendations with certain exceptions discussed at
    http://www.abanet.org/cpr/e2k/e2k-summary_2002.html. At the ABA’s Midyear Meeting in February 2002, the House of Delegates
    reviewed the remaining proposed revisions from Rule 1.11 through Rule 8.5. Its approved “Report 401” contains all of the accepted
    revisions to the Model Rules of Professional Conduct. Id. Copies of the 2002 Model Rules of Professional Conduct can be obtained
    through the ABA Service Center (800-285-2221; PC# 561-0165). Changes to Model Rule 5.5 (regarding the unauthorized practice of
    law) and 8.5 (regarding disciplinary authority and choice-of-law issues) were not included in the debate over Report 401 because the
    ABA Commission on Multijurisdictional Practice (CMP) was reviewing those rules as part of a separate study.                     See
    http://www.abanet.org/cpr/mjp/home.html to obtain the Final Report of the CMP. Rules 5.5 and 8.5 were adopted by the ABA House of
    Delegates in August 2002. Rules 1.6 and 1.13 were amended in August 2003.
2
    Informed consent “denotes the agreement by a person to a proposed course of conduct after the lawyer has communicated adequate
     information and explanation about the material risks of and reasonably available alternatives to the proposed course of conduct.” Model
     Rule 1.0(e).
3
    To illustrate this second exception, comment [5] to Rule 1.6 explains that a lawyer is impliedly authorized to admit a fact that cannot be
     disputed or to make a disclosure that facilitates a satisfactory conclusion to a matter. Lawyers in a firm may also disclose information to
     each other relating to a client in the firm “unless the client has instructed that particular information be confined to particular lawyers.”
     Philadelphia Bar Association Opinion 2007-06 (April 2007) addressed the question of whether a lawyer may disclose an unprobated will
     of the decedent to the decedent’s daughter who was alienated from the decedent for more than thirty years and received nothing in the
     will. The ethics committee said that under Rule 1.6(a), if the lawyer was “impliedly authorized” to make the disclosure, the lawyer had the
     discretion, but not the obligation, to do so. “A lawyer may be impliedly authorized to make appropriate disclosure of client confidential
                                                  s
     information that would promote the client' estate plan, forestall litigation, preserve assets, and further family understanding of the
                s
     decedent' intention. Disclosures should ordinarily be limited to information that the lawyer would be required to reveal as a witness.”
     http://www.philadelphiabar.org/page/EthicsOpinion2007-6?appNum=1&wosid=ccZR3oCKP5Nf8qCdICLCG0
4
    Comment [14] (2003) gives content to this phrase. “Where practicable, the lawyer should first seek to persuade the client to take suitable
     action to obviate the need for disclosure. In any case, disclosure adverse to the client’s interest should be no greater than the lawyer
     reasonably believes necessary to accomplish the purpose. If the disclosure will be made in connection with a judicial proceeding, the
     disclosure should be made in a manner that limits access to the information to the tribunal or other persons having a need to know it and
     appropriate protective orders or other arrangements should be sought by the lawyer to the fullest extent practicable.”
5
    Subparagraph (1) was modified to give it somewhat greater breadth than was reflected by the prior language. Old Rule 1.6(b)(1) stated:
     “to prevent the client from committing a criminal act that the lawyer believes is likely to result in imminent death or substantial bodily
     harm.” The client’s involvement was removed from the exception and there does not have to be a “criminal act.” Comment [6] gives this
     example: “Thus, a lawyer who knows that a client has accidentally discharged toxic waste into a town’s water supply may reveal this
     information to the authorities if there is a present and substantial risk that a person who drinks the water will contract a life-threatening or
     debilitating disease and the lawyer’s disclosure is necessary to eliminate the threat or reduce the number of victims.” Such a release
     likely would be covered by reporting obligations under a federal, state, or local law, or a facility’s permit. But if (i) it is not, (ii) the lawyer is
     capable of determining that the risk is as a grave as postulated by this hypothetical, and (iii) the client refuses to make the disclosure, the
     disclosure may be made.




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                         Tattletales or Crime-Stoppers: Disclosure Ethics Under Model Rules 1.6 and 1.13




              (2) to prevent the client from committing a crime or fraud6 that is reasonably certain
              to result in substantial injury to the financial interests or property of another and in
              furtherance of which the client has used or is using the lawyer's services; and

              (3) to prevent, mitigate or rectify substantial injury to the financial interests or
              property of another that is reasonably certain to result or has resulted from the
              client's commission of a crime or fraud in furtherance of which the client has used
              the lawyer's services.”

              (4) to secure legal advice about the lawyer’s compliance with the Model Rules;

              (5) to establish a claim or a defense in a controversy between the lawyer and the
              client, to establish a defense in a criminal or civil claim against the lawyer based
              upon conduct in which the client was involved, or to respond to allegations in any
              proceeding concerning the lawyer’s representation of the client; or

              (6) to comply with other law or court order.

Subparagraphs (4) and (6)7 were added to Rule 1.6 in August 2001. Comment [9]8 was added to state
that “in most cases” disclosing information to secure advice under subparagraph (4) is “impliedly
authorized” to carry out the representation.9 But even where it is not, disclosure is permitted “because
of the importance of a lawyer’s compliance with the Rules of Professional Conduct.”

Subparagraph (6) is explicated by then comments [12] and [13].10 Comment [12] explains:

              When disclosure of information relating to the representation appears to be required
              by other law, the lawyer must discuss the matter with the client to the extent required
              by Rule 1.4.11 If, however, the other law supersedes this Rule and requires
              disclosure, paragraph (b)(4) permits the lawyer to make such disclosures as are
              necessary to comply with the law.

Comment [13] describes how lawyers should deal with a court or other order requiring disclosure:


6
    Model Rule 1.0(d) defines “fraud”: “’Fraud’ or ‘fraudulent’ denotes conduct that is fraudulent under the substantive or procedural law of the
    applicable jurisdiction and has a purpose to deceive.”
7
    Before the amendment of Model Rule 1.6 in 2003, these subparagraphs were numbered as (2) and (4).
8
    Before the amendment of Model Rule 1.6 in 2003, this comment was numbered as comment [7].
9
    Comment [9] does not give any examples to support this conclusion.
10
     Before the amendment of Model Rule 1.6 in 2003, comments [12] and [13] were numbered [10] and [11].
11
     Model Rule 1.4 was expanded considerably in 2002 to describe the lawyer’s ethical duties in regard to communications with clients. Rule
     1.4(a) now provides that a lawyer “shall”: “(a) promptly inform the client of any decision or circumstance with respect to which the client’s
     informed consent, as defined in Rule 1.0(e), is required by these Rules; (b) reasonably consult with the client about the means by which
     the client’s objectives are to be accomplished; (c) keep the client reasonably informed about the status of the matter; (d) promptly comply
     with reasonable requests for information; and (e) consult with the client about any relevant limitation on the lawyer’s conduct when the
     lawyer knows that the client expects assistance not permitted by the Rules of Professional Conduct or other law.”




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                        Tattletales or Crime-Stoppers: Disclosure Ethics Under Model Rules 1.6 and 1.13




              A lawyer may be ordered to reveal information relating to the representation of a
              client by a court or by another tribunal or governmental entity claiming authority
              pursuant to other law12 to compel the disclosure. Absent informed consent of the
              client to do otherwise, the lawyer should assert on behalf of the client all
              nonfrivolous claims that the order is not authorized by other law or that the
              information sought is protected against disclosure by the attorney-client privilege or
              other applicable law. In the event of an adverse ruling, the lawyer must consult with
              the client about the possibility of appeal to the extent required by Rule 1.4. Unless
              review is sought, however, paragraph (b)(6)) permits the lawyer to comply with the
              court’s order.

In August 2001, the ABA House of Delegates rejected language in Rule 1.6 that would have added
paragraphs (2) and (3). In August 2003, by a vote of 218-201, the House of Delegates added these
two paragraphs to Rule 1.6. What happened between the rejection of this change in August 2001 and
its adoption two years later? The answer is spelled “E-N-R-O-N.” The corporate governance scandals
of 2002 caused all stakeholders in the securities markets to examine the rigor of existing disclosure
rules. The ABA formed a Task Force on Corporate Responsibility. The Task Force’s final report,
dated March 31, 2003, called for changes in both Rules 1.6 and 1.13 as part of a number of reforms to
promote responsible corporate governance.13

Perhaps more significantly, in 2002 in response to corporate governance scandals, Congress adopted
the Sarbanes-Oxley Act.14 Section 307 of that Act, 15 U.S.C. § 7245, required the Securities and
Exchange Commission to adopt rules of professional conduct for lawyers “appearing and practicing”
before the SEC. Before analyzing Model Rule 1.6(b)(2) and (3) and the changes to Rule 1.13, I take a
brief detour to discuss SEC rules of professional conduct because they put the 2003 amendments to
Model Rules 1.6 and 1.13 in context.




12
     Model Rule 1.6(d)(6) just says “court order” but the comment contemplates orders from “another tribunal” as well as a “governmental
     entity.” “Tribunal” (Model Rule 1.0(m)) now includes an arbitration panel in a binding arbitration or an administrative agency operating in
     an adjudicative capacity. Statutes that provide information gathering authority to an agency – CERCLA’s Section 104(e) [42 U.S.C. §
     9604(e)], for example – would be covered by the “other law” component of Rule 1.6(d)(6).
13
     http://www.abanet.org/buslaw/corporateresponsibility/final_report.pdf.
14
     It was signed by President Bush on July 30, 2002.




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SEC’S FINAL RULE ON THE STANDARDS OF PROFESSIONAL CONDUCT FOR
ATTORNEYS
To meet the requirements of Section 307, the SEC issued a final rule entitled “Implementation of
Standards of Professional Conduct for Attorneys.”15 Section 205.3(b) of the SEC’s Standards of
Professional Conduct provides for “up-the-ladder” reporting of “evidence of a material violation”: 16

              (1) If any attorney, appearing and practicing before the Commission17 in the
              representation of an issuer,18 becomes aware of evidence of a material violation by
              the issuer or by any officer, director, employee, or agent of the issuer, the attorney
              shall report such evidence to the chief legal officer (or the equivalent thereof) or to
              both the issuer’s chief legal officer and its chief executive officer (or the equivalents
              thereof) forthwith.19

If the reporting attorney does not reasonably believe that he or she has received an appropriate
response20 within a reasonable time, with one exception,21 the attorney “shall report the evidence of a
material violation to”:




15
     17 CFR Part 205 (issued on January 29, 2003, under the authority of Section 307 of the Sarbanes-Oxley Act of 2002, 68 Fed. Reg. 6296
     (February 6, 2003) and adopted as a final rule effective August 5, 2003. http://www.sec.gov/rules/final/33-8185.htm.
16
     A material violation is “a material violation of an applicable United States federal or state securities law, a material breach of fiduciary
     duty arising under United States federal or state law, or a similar material violation of any United States federal or state law.” 17 CFR §
     205.2(i). “Evidence of a material violation” means “credible evidence, based upon which it would be unreasonable, under the
     circumstances, for a prudent and competent attorney not to conclude that it is reasonably likely that a material violation has occurred, is
     ongoing, or is about to occur. 17 CFR § 205.2(e). A “breach of fiduciary duty” refers to any “breach of fiduciary duty or similar duty to the
     issuer recognized under an applicable Federal or State statute or at common law, including but not limited to misfeasance, nonfeasance,
     abdication of duty, abuse of trust, and approval of unlawful transactions.” 17 CFR § 205.2(d).
17
     “Appearing and practicing” before the SEC is defined in Section 205.2(a)(1)(i)-(iv). In part, it means transacting any business with the
     SEC, “including communications in any form,” and “providing advice in respect of the United States securities laws or the Commission’s
     rules or regulations thereunder regarding any document that the attorney has notice will be filed with or submitted to, or incorporated into
     any document that will be filed with or submitted to, the Commission, including the provision of such advice in the context of preparing, or
     participating in the preparation of, any such document.”
18
     An issuer is an entity that has issued registered securities under Section 12 of the Securities Exchange Act or is required to file reports
     under Section 15(d) of that Act. 17 CFR § 205.2(h). Publicly traded companies on United States exchanges are issuers.
19
     Section 205.3(b)(2) then requires the Chief Legal Officer of the issuer to cause an inquiry to be made to evaluate the evidence of a
     material violation and to advise the “reporting attorney” either (a) that no material violation has “occurred, is ongoing, or is about to
     occur,” or (b) of the steps taken by the chief legal officer to cause the issuer to adopt an “appropriate response” to the evidence.
20
     “Appropriate response” is defined in Section 205.2(b). In part, it means a response as a result of which the reporting attorney reasonably
     believes that no material violation “has occurred, is ongoing, or is about to occur,” or that the issuer has, “as necessary, adopted
     appropriate remedial steps or sanctions to stop any material violation that has yet to occur, and to remedy or otherwise appropriately
     address any material violation that has already occurred and to minimize the likelihood of its recurrence.” 17 CFR § 205.2(b)(1) and (2).




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              (i) The audit committee of the issuer’s board of directors;

              (ii) Another committee of the issuer’s board of directors consisting solely of
              independent directors, or

              (iii) The issuer’s board of directors22 (if the issuer does not have a committee
              consisting solely of independent directors).23

These changes did not generate significant controversy perhaps because, for the most part, they were
statutorily mandated.24

Controversy has been generated by Section 205.3(d), however. In this section, the SEC gave attorneys
appearing and practicing before the Commission the right to disclose confidential information to the
SEC without the issuer’s consent25 and protected them from state bar discipline by a “good faith” safe
harbor:26



21
     If an issuer has established a “qualified legal compliance committee,” the reporting attorney may make the initial report to the QLCC after
     which the reporting attorney has no further obligation. 17 CFR § 205.2(c)(1). A QLCC is a committee of an issuer that consists of at
     least one member of the audit committee, or from an equivalent committee of independent directors, and two or more members of the
     issuer’s board of directors who are not employed, directly or indirectly, by the issuer and who are not “interested persons” in the case of a
     registered investment company (as that term is defined at 15 USC § 80a-2(a)(19)). The QLCC also must have adopted written
     procedures for the confidential receipt, retention, and consideration of any report of evidence of a material violation. Finally, the QLCC
     must be established by the issuer’s board of directors with certain authority and responsibility regarding (i) investigation of a material
     violation, (ii) notice to the audit committee of an investigation, (iii) retention of experts, (iv) recommendations for appropriate responses,
     (v) informing the chief legal officer and chief executive officer (or their equivalents) of the results of investigations and remedial measures
     to be adopted, and (vi) the taking of “all other appropriate action” including notifying the SEC, in the event that the issuer “fails in any
     respect to implement an appropriate response” that the QLCC “has recommended the issuer to take.” 17 CFR § 205.2(k)(1)-(4).
22
      In January 2005, shareholder litigation settlements in the Enron and WorldCom matters were announced. The settlements required
     payments from personal assets by individual directors of WorldCom and Enron. “10 Ex-Directors From WorldCom to Pay Millions,” New
     York Times, p. A1 (January 6, 2005); ”Ex-Directors at Enron to Chip in on Settlement,” New York Times, p. B1 (January 8, 2005). If any
     incentive were needed, these widely publicized settlements should cause directors to take up-the-ladder notices seriously.
23
     17 CFR § 205.3(b)(3). The reporting attorney may also make a (b)(3) report if the attorney “reasonably believes” that it would be “futile to
     report evidence of a material violation to the issuer’s chief legal officer and chief executive officer (or equivalent thereof) under paragraph
     (b)(1).” 17 CFR § 205.3(b(4). Lawyers have heeded the requirements of (b)(3). “Lawyers Take Suspicions on TV Azteca to Its Board,”
     New York Times, p. C1, December 24, 2003 (reporting that outside counsel, Akin Gump Strauss Hauer & Feld, gave an up-the-ladder
     notice in a December 12, 2003 letter to Board members regarding possible noncompliance with securities laws).
24
     Section 307 of the Sarbanes-Oxley Act, 15 U.S.C. 7245, required the SEC to “issue rules, in the public interest and for the protection of
     investors, setting forth minimum standards of professional conduct for attorneys appearing and practicing before the Commission in any
     way in the representation of issuers, including a rule --(1) requiring an attorney to report evidence of a material violation of securities law
     or breach of fiduciary duty or similar violation by the company or any agent thereof, to the chief legal counsel or the chief executive officer
     of the company (or the equivalent thereof); and (2) if the counsel or officer does not appropriately respond to the evidence (adopting, as
     necessary, appropriate remedial measures or sanctions with respect to the violation), requiring the attorney to report the evidence to the
     audit committee of the board of directors of the issuer or to another committee of the board of directors comprised solely of directors not
     employed directly or indirectly by the issuer, or to the board of directors.”
25
     In the TV Azteca matter, Akin Gump not only withdrew from representation but also told the board it might notify the SEC. “Lawyers Take
     Suspicions on TV Azteca to Its Board,” New York Times, p. C1, December 24, 2003. An up-the-ladder notice to a board that becomes
     public might eliminate the need for the law firm to make a permissive disclosure under Section 205(d)(2).
26
     Section 205.6(c) provides: “An attorney who complies in good faith with the provisions of this part shall not be subject to discipline or
     otherwise liable under inconsistent standards imposed by any state or other United States jurisdiction where the attorney is admitted or
     practices.”




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               (d) Issuer confidences.

               …27

               (2) An attorney appearing and practicing before the Commission in the
               representation of an issuer may reveal to the Commission, without the issuer's
               consent, confidential information related to the representation to the extent the
               attorney reasonably believes necessary:

                        (i) To prevent the issuer from committing a material violation that is likely to
               cause substantial injury28 to the financial interest or property of the issuer or
               investors;29

                        (ii) To prevent the issuer, in a Commission investigation or administrative
               proceeding from committing perjury, proscribed in 18 U.S.C. 1621; suborning
               perjury, proscribed in 18 U.S.C. 1622; or committing any act proscribed in 18 U.S.C.
               1001 that is likely to perpetrate a fraud upon the Commission; or

                        (iii) To rectify the consequences of a material violation by the issuer that
               caused, or may cause, substantial injury to the financial interest or property of the
               issuer or investors in the furtherance of which the attorney's services were used.30

The Commission rejected comments that disclosure of information to the Commission without a
      s
client' consent “would undermine the issuers'trust in their attorneys.” 68 Fed. Reg. at 6311. In
response, it explained that “the vast majority of states31 already permit (and some even require)

27
     Section 205.3(d)(1) allows an attorney to use a Section 205 report or response thereto to be used by an attorney whose compliance with
     Part 205 is in issue: “Any report under this section (or the contemporaneous record thereof) or any response thereto (or the
     contemporaneous record thereof) may be used by an attorney in connection with any investigation, proceeding, or litigation in which the
             s
     attorney' compliance with this part is in issue.” This provision is analogous in spirit to Model Rule 1.6(b)(5) (2003) (formerly (b)(3)).
28
     “Substantial injury” is not defined by the SEC. In its Release on the adoption of the Part 205 Rules, the Commission said the following on
     this phrase: “As for the comments suggesting that attorneys be permitted to disclose only information that would appear to have a
                                                  s
     material impact on the value of the issuer' securities, the Commission has, where appropriate, modified the paragraph in a manner that
     responds to that concern. Subparagraph (iii) has been limited to material violations, and subparagraph (i) limits its application to material
     violations that are likely to cause substantial injury to the financial interest or property of the issuer or investors. “ 68 Fed Reg. at 6311.
29
     Note that in contrast with Model Rule 1.6(b)(2) as adopted in 2003, (i) the use of the lawyer’s services by the issuer is not a component of
     this part of Section 205.3(d)(2); (ii) the “material violation” need only be “likely” and not “reasonably certain”; and (iii) to the extent that the
     “material violation” is not a “crime or fraud,” it would not be embraced by Model Rule 1.6.
30
     In contrast, Model Rule 1.6(b)(3) uses the words “prevent, mitigate, or rectify” “substantial injury” that has resulted or may result to a
     “reasonable certan[ty]” from the commission of a crime or fraud. In addition, section 205(d)(2)(iii) permits disclosure to rectify “a material
     violation.” Model Rule 1.6(b)(3) is triggered by “substantial injury” where the violation “caused, or may cause” the substantial injury.
31
     The SEC was unable to include the ABA’s Model Rules in this statement because the ABA had elected not to adopt a permissive
     disclosure rule. In the ABA’s Comment on the proposed Part 205 rules, the ABA found itself in the awkward position of having to explain
     why disclosure rules were not needed by citing not to Model Rule 1.6, but to Rule 1.6 as adopted in “most states”: “Furthermore, versions
     of Model Rule 1.6 that have been adopted in most states permit a lawyer to disclose client confidences to prevent, mitigate, or rectify the
                               s
     consequences of a client' criminal or fraudulent conduct that is likely to result in substantial financial loss. This standard is substantially
     similar to Section 67 of the Restatement [of the Law Governing Lawyers (ALI 2000)].” Letter of Alfred P. Carlton, ABA President,
                                                        s
     December 18, 2002. The letter added, “The ABA' Task Force on Corporate Responsibility is presently reviewing Model Rule 1.6 in this
     regard.” Id. The letter can be found at http://www.sec.gov/rules/proposed/s74502/apcarlton1.htm.




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disclosure of information in the limited situations covered by this paragraph.”32 And it was presented
with “no evidence that those already-existing disclosure obligations have undermined the attorney-
client relationship.” Id. In any event, what the Commission described as “generalized concerns about
impacting the attorney-client relationship”

              must yield to the public interest where an issuer seeks to commit a material violation
              that will materially damage investors, seek (sic) to perpetrate a fraud upon the
              Commission in enforcement proceedings, or has used the attorney's services to
              commit a material violation.

Id.

The Commission also addressed the issue of preemption of state rules of professional conduct where
disclosure is not permitted, or the fear that the SEC’s Standards would replace state ethics’ rules.
Section 205.1 provides that the SEC’s standards

              supplement applicable standards of any jurisdiction where an attorney is admitted or
              practices and are not intended to limit the ability of any jurisdiction to impose
              additional obligations on an attorney not inconsistent with the application of this
              part. Where the standards of a state or other United States jurisdiction where an
              attorney is admitted or practices conflict with this part, this part shall govern.33

17 C.F.R. § 205.1. The SEC reasoned that “a mandatory disclosure requirement imposed by a state
                                                                 s
would be an additional requirement consistent with the Commission' permissive disclosure rule.” 68
Fed Reg. at 6311. As for states where permissive disclosure was prohibited, the Commission’s




32
     The Commission cited the Comment of the American Corporate Counsel Association, p. 7, in support of the proposition that permissive
     disclosure standards are “’more in line with a majority of state professional rules of conduct.’” 68 Fed. Reg. at 6311, n.111. The
     Comment can be found at http://www.sec.gov/rules/proposed/s74502/bnagler1.htm..
33
     In its final rule (http://www.sec.gov/rules/final/33-8185.htm and 68 Fed. Reg. at 6297), the SEC reacted to comments suggesting it did not
     have the authority to issue this part of the rule: “The language which we adopt today clarifies that this part does not preempt ethical rules
     in United States jurisdictions that establish more rigorous obligations than imposed by this part. At the same time, the Commission
     reaffirms that its rules shall prevail over any conflicting or inconsistent laws of a state or other United States jurisdiction in which an
     attorney is admitted or practices.”




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reasoning appeared to be that there are too few states in this category so that a conflict between the
state RPCs and the SEC Standards “is unlikely to arise in practice.” Id.34

What generated greater controversy was the SEC’s proposal to effect a “noisy withdrawal”
requirement. As originally proposed, Section 205.3(d) would require a reporting attorney “retained by
the issuer” who does not receive an appropriate response or has not received a response in a
reasonable time, and who “reasonably believes that a material violation is ongoing or is about to occur
and is likely to result in substantial injury to the financial interest or property of the issuer or of
investors” to (1) withdraw from representation of the issuer; (2) within one business day of
withdrawing, give written notice to the SEC of the withdrawal; and (3)

              promptly disaffirm to the Commission any opinion, document, affirmation,
              representation, characterization, or the like in a document filed with or submitted to
              the Commission, or incorporated into such a document, that the attorney has


34
     This prediction was quickly challenged when the Washington State Bar Association issued an Interim Formal Ethics Opinion on the effect
     of the SEC’s Regulations on Washington attorneys’ obligations under the Washington Rules of Professional Conduct. The Interim
     Formal Opinion was approved by the Washington State Bar Association Board of Governors on July 26, 2003. The Formal Opinion can
     be found at http://www.wsba.org/lawyers/groups/ethics2003/formalopinion.doc. The Formal Opinion questions whether Washington
     lawyers can comply with Section 205.3(d)(1) yet be in compliance with Washington RPC 1.6(b)(2). The scope of Section 205.3(d)(2) is,
     “in some circumstances broader than the disclosure authorization of RPC 1.6. For example, subsection (i) permits disclosure of a civil
     violation that does not rise to the level of a crime, but RPC 1.6(b)(1) does not. Under subsection (iii), a material violation by the client
     which could damage financial interests or property of the client or investors could include non-criminal conduct which would also be
     barred from being revealed by RPC 1.6(b)(1).” Formal Opinion, p. 5. “It is the opinion of the Board that, to the extent that this SEC
     regulation authorizes but does not require revelation of client’s confidences and secrets, the Washington lawyer cannot reveal such
     confidences and secrets unless authorized to do so under the Washington RPCs.” Id. On the preemption language of Section 205.1, the
     WSBA Board of Governors stated: “Though the Board recognizes the possibility that Section 205 may ultimately be interpreted as
     preempting Washington law, a cautious attorney should refrain from making any disclosures in violation of the Washington RPCs until
     this issue is resolved by the courts.” By letter dated July 23, 2003, the SEC commented on the Interim Opinion before it was adopted by
     the WSBA Board of Governors. http://www.sec.gov/news/speech/spch072303gpp.htm. The SEC argued that the Formal Opinion “is
     inconsistent with prevailing Supreme Court precedent” which supports the “authority of federal agencies to implement rules of conduct
     that diverge from and supersede state laws that address the same conduct.” It cited Sperry v. State of Florida, 373 U.S. 379, 384 (1963)
     (under the Supremacy Clause prohibiting Florida from enjoining a nonlawyer registered to practice before the Patent and Trademark
     office from prosecuting patent applications where federal statute “expressly permits the Commissioner to authorize practice before the
     Patent Office by non-lawyers, and the Commissioner has explicitly granted such authority”) and Fidelity Federal Savings & Loan
     Association v. de la Cuesta, 458 U.S. 141, 155 (1982) (upholding federal regulation permitting federally chartered savings and loan
     associations to utilize due-on-sale clauses in mortgages despite state law to the contrary). The SEC also argued that Section 205.6(c)
     protects attorneys. As noted earlier, this section says in pertinent part that any attorney who complies in good faith with the Part 205
     rules “shall not be subject to discipline or otherwise liable (sic) under inconsistent standards imposed by any state” where the attorney is
     admitted or practices. The SEC took the position that this provision preempted Washington’s RPC to the extent that the WSBA Board
     was attempting to define “good faith” in a way other than as interpreted by the SEC. The WSBA Board was not persuaded: “[T]he Board
     believes that, as a general matter and with the current lack of case law on whether the SEC Regulations preempt state ethical rules, an
     attorney who takes action contrary to this Formal Opinion cannot as a defense against an RPC violation fairly claim to be complying in
     good faith with the SEC Regulations.” Formal Opinion, p. 6-7. Citing de la Cuesta, the North Carolina State Bar sided with the SEC.
     North Carolina State Bar Ethics Committee, Opinion 2005-9 (January 20, 2006) provides that a lawyer who makes a disclosure of a
     material violation of the securities law in compliance with SEC Sarbanes-Oxley disclosure regulations receives the protection of 17 CFR
     §205.3 and 205.6 and is not subject to state bar discipline since, if the SEC regulations were validly issued, they preempt state ethics
     rules. “It is beyond the capacity of an ethics opinion to determine whether or not the ‘reporting out’ provision of Rule 205 was validly
     promulgated. Therefore, unless and until the Fourth Circuit Court of Appeals or the US Supreme Court determines that Rule 205 was not
     validly promulgated, (a) there will be a presumption that Rule 205 was promulgated by the Commission pursuant to a valid exercise of
     authority and (b) a North Carolina attorney may, without violating the North Carolina Rules of Professional Conduct, disclose confidential
     information as permitted by Rule 205 although such disclosure would not otherwise be permitted by the NC Rule.”
     http://www.ncbar.com/ethics/ethics.asp?page=3&from=1/2006&to=1/2006.




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               prepared or assisted in preparing and that the attorney reasonably believes is or may
               be materially false or misleading.35

Additionally, under this proposed rule, an attorney “employed by the issuer” would have to notify the
SEC of his or her intent to make a similar disaffirmation and then must promptly make the
disaffirmation.36

The SEC elected to extend the comment period on this “noisy withdrawal” provision rather than adopt
it as part of its initial Standards for Professional Conduct.37 Simultaneously, the SEC proposed an
alternative to this “noisy withdrawal” proposal that would require the issuer, instead of the
withdrawing attorney, to tell the SEC about the attorney’s written notice of withdrawal or failure to
receive an appropriate response to a Section 205.3(b) report of evidence of a material violation. The
issuer would also have to submit forms to the SEC to disclose publicly an attorney’s written notice of
withdrawal within two business days of that notice.38 The SEC received comments on these proposals
but, since 2003, has not acted on either proposal.39

It is against the backdrop of Sarbanes Oxley that the House of Delegates amended Rules 1.6 and 1.13.



35
     The concept of a “noisy withdrawal” has roots. ABA Formal Opinion 92-366 (August 8, 1992) dealt with the appropriate response of
                                s
     counsel where counsel' letter on the validity of certain contracts was used to support a bank loan and counsel later learned from the
     client after the loan was made that the value of the contracts had been inflated and that the client intended to continue to use the letter,
     but not the lawyer, in future dealings with the bank. The majority of the Committee determined that the continued use of the letter by the
     client amounted to “assistance” (of a fraud) in Rule 1.2(d) terms requiring mandatory withdrawal under Rule 1.16(a). Hence, the lawyer
     should “withdraw“ from the representation and, despite Rule 1.6, “if the lawyer reasonably believes that her withdrawal in silence will be
                                                                    s
     ineffective to prevent the client from using the lawyer' work product to accomplish its unlawful purpose,” the lawyer may withdraw
     “noisily” by disaffirming an opinion or document the lawyer previously produced on the client’s behalf. Cf. ABA Formal Opinion 93-376
     (August 6, 1993) (relying on Model Rule 3.3, the Standing Committee on Ethics and Professional Responsibility advised a lawyer who
     learns that a client has lied during pretrial discovery and had altered a mail log, which would have shown that notice of a claim was, in
     fact received, to first urge his client to rectify the fraud, and, if that fails, to terminate representation of the client even if the termination is
     "noisy," but recognizing that, given Rule 3.3’s requirements, “Direct disclosure under Rule 3.3, to the opposing party or if need be to the
     court, may prove to be the only reasonable remedial measure in the client fraud situations most likely to be encountered in pretrial
     proceedings.”) See also note 45 infra discussing comments to Rule 1.2 and 4.1 that discuss notice of withdrawal accompanied by the
     disaffirming of an opinion, document, or affirmation.
36
     Proposed Section 205.3(d), Release No. 33-8150 (December 2, 2002), 67 Fed. Reg. 71670. The chief legal officer (or the equivalent)
     would also be required to tell any replacement attorney of the withdrawal.
37
     68 Fed. Reg. 6297 (February 6, 2003); http://www.sec.gov/rules/final/33-8185.htm.
38
     Release No. 33-8186 (SEC) (http://www.sec.gov/rules/proposed/33-8186.htm), p. 10-19. If adopted, this alternative proposal would be
     codified as 17 CFR § 205.3(d) and (e). Comments on the proposal can be found at http://www.sec.gov/rules/proposed/s74502.shtml.
     The regulated community did not embrace the proposal. See “Federal Lawmakers Get Earful at Hearing on SEC’s Proposed ‘Noisy
     Withdrawal’ Rules,” 20 Law. Man. Prof. Conduct 69 (February 11, 2004) (referring to statements of witnesses in a hearing on lawyers’
     role in corporate governance before the House Subcommittee on Capital Markets, Insurance and Government Sponsored Enterprises of
     the House Financial Services Committee that was held on February 4, 2004).
39
     The independent examiner in the SEC’s civil action against Spiegel, Inc. issued a report dated September 5, 2003, that endorsed the
     noisy withdrawal rule. In commenting on information in the possession of Spiegel’s outside counsel, the examiner stated: “None of
              s                                                                                    s
     Spiegel' legal advisers withdrew—‘noisily’ or otherwise--from representing Spiegel. If the SEC' proposed withdrawal rule had then been
     in effect, the SEC would have been alerted to take action sooner, and investors would have received information they could have acted
     on to make informed investment decisions about Spiegel. In this case, the absence of a ‘noisy withdrawal’ requirement allowed Spiegel
     to keep investors and the SEC in the dark.” Securities and Exchange Commission v. Spiegel, Inc., 2003 WL 22176223, *46 (N.D. Ill.
     September 15, 2003).




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RULE 1.6(2) AND (3)
To repeat, Model Rules 1.6(b)(2) and (3) provide:

              (b) A lawyer may reveal information relating to the representation of a client to the
              extent the lawyer reasonably believes necessary:

              …

              (2) to prevent the client from committing a crime or fraud that is reasonably certain
              to result in substantial injury to the financial interests or property of another and in
              furtherance of which the client has used or is using the lawyer's services;40

              (3) to prevent, mitigate or rectify substantial injury to the financial interests or
              property of another that is reasonably certain to result or has resulted from the
              client's commission of a crime or fraud in furtherance of which the client has used
              the lawyer's services;

How do these changes modify the legal landscape?                                       Has the attorney-client privilege been
permanently scarred? Let’s explore these questions.

Rule 1.6(b)2). At the outset, the words “may reveal” mean that the disclosure of information relating
to representation of a client is permissive, not prescriptive.41 Lawyers still have the traditional remedy
of withdrawal in lieu of disclosure.42




40
     In contrast, Section 205.3(d)(2)(i) of the SEC’s RPC, provides for permissive disclosure to the SEC, by an attorney “appearing and
     practicing before the Commission in the representation of an issuer” “without the issuer’s consent,” of confidential information “related to
     the representation to the extent the attorney reasonably believes necessary (i) to prevent the issuer from committing a material violation
     that is likely to cause substantial injury to the financial interest or property of the issuer or investors.” (Emphasis added.)
41
      In contrast several states contain some form of required disclosure in their rules of professional conduct beyond that relating to the
     prevention of reasonably certain death or substantial bodily harm. Florida’s Rule 4-1.6 requires a lawyer to reveal information that the
     lawyer believes necessary to prevent a client from committing a crime, but does not contain a “fraud” exception and does not contain
     language regarding impacts on the financial interest of another. It also does not contain the phrase, “in furtherance of which the client
     has used or is using the lawyer’s services.” Fla. Rules of Prof’l Conduct R. 1.6. New Jersey’s Rule 1.6 requires disclosure to the extent
     the lawyer “reasonably believes necessary” to prevent a client from committing a criminal, illegal or fraudulent act that the lawyer
     “reasonably believes” is likely to result in death or substantial bodily harm or substantial injury to the financial interest or property of
     another. New Jersey’s Rule 1.6 also does not contain the phrase, “in furtherance of which the client has used or is using the lawyer’s
     services.” N.J. Rules of Prof’l Conduct R. 1.6. See also Appendix I, “Selected States’ Equivalent to Model Rule 1.6” (Hawaii, Nevada,
     Ohio, Virginia, Wisconsin).




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But in the absence of prescription, Rule 1.6(b)(2) may not matter if the setting and the circumstances
trigger other of the Model Rules that may be applicable. For example, Model Rule 1.2(d) is
prescriptive and provides that a lawyer “shall not counsel a client to engage, or assist a client, in
conduct that the lawyer knows is criminal or fraudulent.” In a “tribunal,”43 Model Rule 3.3 (a) and (b)
prohibit, among other things, a lawyer from making a false statement of fact or law or to fail to correct
a false statement of material fact or law previously made to the tribunal by a lawyer. They also require


42
     Model Rule 1.16 addresses withdrawal. Rule 1.16(a)(1) provides that a lawyer "shall" withdraw from representation of a client if "the
     representation will result in a violation of the rules of professional conduct or other law." Rule 1.16(b) provides that a lawyer “may”
     withdraw from representing a client if: “(1) withdrawal can be accomplished without material adverse effect on the client, (2) the client
                                                            s
     persists in a course of action involving the lawyer' services that the lawyer reasonably believes is criminal or fraudulent; (3) the client
                           s
     has used the lawyer' services to perpetrate a crime or fraud, (4) the client insists upon taking action that the lawyer considers repugnant
     or with which the lawyer has a fundamental disagreement, (5) the client fails substantially to fulfill an obligation to the lawyer regarding
                 s
     the lawyer' services and has been given reasonable warning that the lawyer will withdraw unless the obligation is fulfilled; (6) the
     representation will result in an unreasonable financial burden on the lawyer or has been rendered unreasonably difficult by the client; or
     (7) other good cause for withdrawal exists.” See Missouri Informal Advisory Ethics Opinion 0053 (undated). An attorney believed that a
     trustee misappropriated, and perhaps stole, funds from a Trust. The attorney represented the trustee. The attorney wanted to know
                                                                                                            s
     whether the attorney is permitted to notify and inform the other beneficiaries of the trustee' management of the trust and of the
              s
     attorney' suspicions. The attorney did not believe that the other beneficiaries had received information regarding the trust, and they had
     not contacted Attorney. Without referencing Rule 1.6, this was the answer: “Attorney may not disclose the information to the other
     beneficiaries, unless Attorney has the consent of the Trustee. If the Trustee will come forward with the necessary information, Attorney
     may continue to represent the Trustee in attempting to resolve any problems. It is permissible for Attorney to advise the Trustee that
     Attorney will withdraw if the Trustee is unwilling to take the steps Attorney believes to be necessary, including consenting to disclosure to
     the other beneficiaries. It is also permissible for Attorney to withdraw, at this point, regardless of the steps the Trustee is willing to take. If
     the Trustee is not willing to take the steps necessary to resolve the problem and Attorney believes that the Trustee' conduct is    s
                                                                          s
     fraudulent or criminal, Attorney must withdraw if Attorney' representation would assist the fraudulent or criminal activity.”
     http://www.mobar.org/mobarforms/opinionResult.aspx
43
      The 2002 Model Rules expanded the definition of “tribunal” in Rule 1.0(m): “’Tribunal’ denotes a court, an arbitrator in a binding
     arbitration proceeding or a legislative body, administrative agency or other body acting in an adjudicative capacity. A legislative body,
     administrative agency or other body acts in an adjudicative capacity when a neutral official, after the presentation of evidence or legal
     argument by a party or parties, will render a binding legal judgment directly affecting a party’s interests in a particular matter.” Duties
     under Rule 3.3 apply “even if compliance requires disclosure of information otherwise protected by Rule 1.6.” Model Rule 3.3, comment
     [10]. In other words, the duty of candor to a tribunal trumps the duty of confidentiality. Cf. Ohio’s Rule 1.6(c) (“A lawyer shall reveal
     information relating to the representation of a client, including information protected by the attorney-client privilege under applicable law,
     to the extent the lawyer reasonably believes necessary to comply with Rule 3.3 or 4.1.”) See Cleveland Hair Clinic, Inc. v. Puig, 200 F.3d
     1063, 1067 (7th Cir. 2000) (“The duty to protect confidentiality does not come before the duty to be honest with the court.”) and cases
     cited therein. See also ABA Formal Opinion 93-376 (August 6, 1993) (duty of candor applies where a witness lied in a deposition taken
                                                                                                                                     s
     during discovery: “The Committee is therefore of the view that, in the pretrial situation described above, the lawyer' duty of candor
     toward the tribunal under Rule 3.3 qualifies her duty to keep client confidences under Rule 1.6”). Given the definition of “tribunal” to
     include binding arbitrations and administrative agencies acting in an adjudicative capacity, the change in Rule 1.6 will become less
     significant as there becomes greater focus on just what type of administrative decision-making is embraced by the definition of “tribunal.”
     Rhode Island’s Ethics Advisory Panel issued Opinion 2007-6 on March 26, 2007 addressed this issue as well. A lawyer successfully
     represented a Social Security beneficiary before an administrative law judge (ALJ) on a claim for additional benefits. The client received
     a lump sum payment from the Social Security Administration for $12,000 more than the client was entitled to receive. The lawyer
     advised the client to return the money but it had already been spent, the lawyer was told. As a fee, the lawyer is entitled to 25% of the
     additional benefits. This amount is withheld from the benefit payment by the SSA until the lawyer files a fee request. Before filing the
     request, the lawyer sought ethical guidance since the fee being withheld was based on 25% of the incorrectly calculated benefits. The
     panel determined that the proceeding had not yet concluded since a fee petition still had to be made and thus the attorney’s duty of
     candor required the attorney to advise the ALJ of the error if the client refuses to notify the SSA of the error. “The SSA’s overpayment to
     the inquiring attorney’s client is information related to the representation. As such, it is information ordinarily protected from disclosure by
     the inquiring attorney under Rule 1.6 “Confidentiality of Information.” However, during the course of proceedings before a tribunal,
     lawyers have an obligation of candor to the tribunal which apply even if compliance requires disclosure of information protected by Final
     2007-06 Rule 1.6. See Rule 3.3(b). The duties imposed in paragraph (a) of the Rule continue to the conclusion of the proceeding. Rule
     3.3(b). Insofar as the inquiring attorney must file a fee petition with the ALJ in order to receive his/her fee, the proceeding in this inquiry is
     not concluded. Therefore Rule 3.3, and not Rule 1.6, governs the conduct of the inquiring attorney.” The attorney must also file a fee
     petition based on the correctly calculated benefit, the panel said. http://www.courts.state.ri.us/supreme/ethics/ethicsopinions2007.htm.




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a lawyer to take remedial measures, including disclosure to the tribunal,44 where a person has engaged
in criminal or fraudulent conduct related to a proceeding.

The greatest impact of the change in Rule 1.6(b)(2), however, may be on the requirements of Rule 4.1.
Rule 4.1 provides that a lawyer shall not knowingly “fail to disclose a material fact when the
disclosure is necessary to avoid assisting a criminal or fraudulent act by a client, unless disclosure is
prohibited by Rule 1.6.” The disclosure limitations under Rule 1.6 are now much less severe. This
means that a lawyer evaluating a Rule 1.6(b)(2) disclosure will in parallel have to evaluate the breadth
of Rule 4.1’s disclosure requirement, and, in particular, to whom the Rule 4.1 disclosure must be
made.45

Returning to Rule 1.6(b)(2), the disclosure is limited “to the extent that the lawyer reasonably believes
necessary.” Defining that line will not be easy46 and once such a line is crossed, there will be no




44
     The New York State Bar Association Committee on Professional Ethics issued Opinion 797 on April 26, 2006 addressed this issue under
     New York’s Code of Professional Responsibility. A lawyer learned that a client was a convicted felon after the lawyer submitted letters
     testamentary to the client based on the client’s affidavit submitted by the lawyer to the Surrogate’s Court. New York law does not permit
     a felon to serve as an executor. The Committee determined that the lawyer must ask the client to correct the information in the affidavit
     and failing that, the lawyer had to make a decision on how to proceed: “Under DR 7-102(B), if a lawyer determines that a client has made
     false representations to the court in an affidavit, the lawyer must call upon the client to correct the information in the affidavit, and, if the
     client refuses, the lawyer must consider what additional steps to take. Where the lawyer has made a representation to the court
     regarding an affidavit or other filing, the lawyer must withdraw the representation. However, the lawyer is not authorized to disclose the
     client’s confidences and secrets except to the extent implicit in such withdrawal. The client’s disclosures to the lawyer do not lose their
     protection as confidences or secrets simply because the withdrawal of the lawyer’s representation may imply to a court that there is a
     problem with the filing. The lawyer should also consider whether he or she may or must withdraw from representing the client under DR
     2-110(B)                                                                 or                                                                 (C).”
     http://www.nysba.org/AM/Template.cfm?Section=Ethics_Opinions&TPPID=688&THISPAGE=3&TEMPLATE=/TaggedPage/TaggedPage
     Display.cfm&TPLID=23&CONTENTID=6124
45
     Changes in the comments to Rules 1.6 and 4.1 put a greater focus on Rule 4.1 as a result of the changes in Rule 1.6(b). Former
     comment [14] to Rule 1.6 provided that Rule 1.6 and Rules 1.8(b) (prohibiting a lawyer from using information relating to representation
     of a client to the client’s disadvantage without informed consent except as permitted or required by “these Rules”) and 1.16(d)
     (addressing the steps the lawyer must take following withdrawal to protect the client’s interests) did not prevent a lawyer who withdraws
     from representation from “giving notice of the fact of withdrawal, and the lawyer may also withdraw or disaffirm any opinion, document,
     affirmation, or the like.” This comment was deleted with the changes to Rule 1.6(b) in 2002. At the same time, comment [3] to Rule 4.1
     was substantially modified in 2002 and now contains similar “disaffirming” language: “Ordinarily, a lawyer can avoid assisting a client’s
     crime or fraud by withdrawing from the representation. Sometimes, it may be necessary for the lawyer to give notice of the fact of
     withdrawal and to disaffirm an opinion, document, or affirmation or the like. In extreme cases, substantive law may require a lawyer to
     disclose information relating to the representation to avoid being deemed to have assisted the client’s crime or fraud. If the lawyer can
     avoid assisting a client’s crime or fraud only by disclosing this information, then under paragraph (b) the lawyer is required to do so,
     unless the disclosure is prohibited by Rule 1.6.” See also revised comment [10] to Rule 1.2 which also references Rule 4.1 and provides
     in pertinent part: “A lawyer may not continue assisting a client in conduct that the lawyer originally supposed was legally proper but then
     discovers is criminal or fraudulent. The lawyer must, therefore, withdraw from the representation of the client in the matter. See Rule
     1.16(a). In some cases, withdrawal alone might be insufficient. It may be necessary for the lawyer to give notice of the fact of withdrawal
     and to disaffirm any opinion, document, affirmation or the like. See Rule 4.1.”
46
     The comments to Rule 1.6 provide some guidance. Comment [14] provides that a disclosure “adverse to the client’s interest should be
     no greater than the lawyer believes reasonably necessary to accomplish the purpose.” If a disclosure is made within a judicial
     proceeding, “the disclosure should be made in a manner that limits access to the information to the tribunal or other persons having a
     need to know it and appropriate protective orders or other arrangements should be sought by the lawyer to the fullest extent practicable.”
     Comment [15] provides: ”In exercising the discretion conferred by this Rule, the lawyer may consider such factors as the nature of the
            s                                                                                          s
     lawyer' relationship with the client and with those who might be injured by the client, the lawyer' own involvement in the transaction and
     factors that may extenuate the conduct in question.”




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turning back. Disclosure almost certainly will result in additional questions by the recipient of the
information to attempt to widen the disclosure.47

Rule 1.6(b)(2) does not identify to whom information may be revealed. Presumably if the goal is to
“prevent the client from committing a crime,” law-enforcement authorities would be the recipients of
the elective disclosure.48 If the issue is fraud – presumed here to be a fraud that is not a crime – the
person or persons on whom the fraud is about to be visited would appear to be the likely recipients of
the information.

The putative reporting attorney also has considerable leeway in evaluating whether to make a
disclosure. Past conduct is not embraced by the language.49 The crime or fraud to be prevented must
be one that is “reasonably certain” to result in “substantial injury”50 to the “financial interests or
property of another.” There is no manual to aid lawyers evaluating whether to make a permissive

47
     And if not the recipient, then others will ask. See “Citing Inquiry at TV Azteca, 3 Firms Tell Investors to Sell,” New York Times, p. C6
     (January 9, 2004). The article discusses the aftershock of an up-the-ladder report by Akin Gump to the TV Azteca Board. The report
     concerned the profits made by two executives of TV Azteca (including its chairman) on the sale of debt. Through a private company,
     Codisco, the two TV Azteca executives paid $107 million to Nortel Networks for $325 million of debt owed to Nortel by TV Azteca’s
     Unefon Holdings’ cellphone service. Unefon then paid Codisco the face value of the debt -- $325 million -- to reclaim the debt, giving
     Codisco over $200 million in profit. Akin Gump advised the board that it believed disclosure of the transaction was required and,
     according to the article, “asserted their right under the Sarbanes-Oxley Act of 2002 to tell the S.E.C. about the dispute.” Securities
     downgrades followed in part because of the uncertainty caused by potential follow-up investigation, according to quotes in the article. In
     fact, an investigation occurred resulting in a charge by the SEC against “one of the richest men in Mexico,” Ricardo B. Salinas Pliego,
     one of the two TV Azteca executives. “Chairman of TV Azteca is Charged with Fraud,” New York Times, p. C3 (January 5, 2005). The
     article reports that Mr. Salinas Pliego had unsuccessfully sought to find law firms to endorse his transactions and all refused. The SEC
     apparently had made settlement offers to TV Azteca which rejected them reportedly because the SEC’s claims are “false.” “TV Azteca
     Says No to SEC Deal,” New York Times, p. C3 (January 6, 2005). The SEC release on its civil fraud action against TV Azteca, its parent
     company, and three current and former officers and directors, appears at http://www.sec.gov/litigation/litreleases/lr19022.htm. The action
     was settled on September 14, 2006. Under the settlement, all defendants consented to entry of a final judgment permanently enjoining
     them from future violations of certain provisions of the Securities Exchange Act of 1934. Two officers (Salinas and Padilla) agreed to pay
     disgorgement and penalties in excess of $8.5 million and further agreed not to serve as officers or directors of a U.S. public company for
     a period of five years, except under limited circumstances. http://www.sec.gov/litigation/litreleases/2006/lr19833.htm.
48
     New Jersey’s RPC 1.6(b) (Appendix I), for example, directs disclosure to be made to “the proper authorities” but apparently leaves it to
     the lawyer to determine who they are under the circumstances. During debate in the House of Delegates, an effort to reject the
     amendments to Rule 1.6 in part based on the absence of the identity of the persons to whom disclosure was to be made was defeated.
     19 ABA/BNA Manual on Professional Conduct, p. 468 (August 13, 2003).
49
      See Formal Opinion 2002-1, The Association of the Bar of the City of New York (http://www.abcny.org/eth2002-1.html) (determining
     under New York’s DR4-101(c)(3) (Appendix II) that an attorney “may not disclose client confidences and secrets relating to a client’s
     completed criminal act even though the effects may be continuing where that criminal act is the very subject on which the client is
     consulting the attorney and the client has satisfied all elements of the crime” unless there is a need to prevent imminent serious bodily
     injury or death. The client here possessed a stolen vehicle and while the knowing possession of stolen property “violates criminal laws,
     at least for purposes of client confidentiality under the Code, we cannot conclude that this fact constitutes the intention to commit a future
     crime that would make disclosure of the client’s confidences and secrets ethically permissible.”); Cf. Ethics Docket 01-18, Maryland State
     Bar Association, Inc. Committee on Ethics (http://www.msba.org/members/ethics/2001/2001-18.htm) (Rule 1.6(b)(1) [equivalent to Model
     Rule 1.6(b)(2)] “deals with prospective conduct of the client. If the only fraudulent conduct of which you are aware is conduct that has
     already occurred, Rule 1.6(b)(1) does not permit disclosure of that conduct.”)
50
      This would be an intensely factual issue. Cf. Ethics Docket 01-18, Maryland State Bar Association, Inc. Committee on Ethics
     (http://www.msba.org/members/ethics/2001/2001-18.htm) (a lawyer learns that a client is not paying social security or withholding taxes
     on payments made to caregivers to her elderly husband. The client seeks no further counseling. On the existence of a duty to report,
     the Committee said that if the client advised the lawyer that she intended to continue this practice, the lawyer would be permitted, but not
     required to disclose the information “only if it would result in ‘substantial injury to the financial interests or property of another.’ Whether
     such omissions fall within the reach of 1.6(b)(1) [equivalent to Model Rule 1.6(b)(2)] is a factual question upon which the Committee
     cannot opine.”




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disclosure. Suppose the injury to financial interests or property of “another” is slight on an individual
basis but many individuals’ financial interests or property will be injured so that the cumulative impact
is substantial. Does Rule 1.6(b)(2)’s focus on “another” – arguably an individual person or entity –
create an escape hatch for the wavering lawyer under such circumstances?

The lawyer’s services also must be used to “further” the crime or fraud.51 Mere knowledge is not
enough.52 Comment [7] to Rule 1.6 explains that, “The client can, of course, prevent such disclosure
by refraining from the wrongful conduct.” This sentence suggests that the lawyer should confront the
client first before deciding whether the lawyer should make a disclosure. And, indeed, comment [14]
to Rule 1.6 urges the lawyer “to seek to persuade the client to take suitable action to obviate the need
for disclosure.”53




51
     In contrast, the equivalent rules in a number of states do not contain this requirement. See Appendix I ( for example, Arizona (in part),
     Connecticut (in part), Florida, Hawaii (in part), Massachusetts (in part), and New Jersey (in part) among others).
52
     Cf. Ethics Docket 01-18, Maryland State Bar Association, Inc. Committee on Ethics (http://www.msba.org/members/ethics/2001/2001-
     18.htm) (a lawyer believes that his client, the personal representative of an estate, may have converted estate funds to a use for which
     the personal representative had no authority. The Committee explained that the lawyer had not indicated any facts that would indicate
     that the client used the lawyer’s services to further a criminal or fraudulent act. Unless another disclosure exception applied, the
     Committee said the lawyer, who intended to withdraw, was not permitted to disclose this information to authorities.)
53
      In its June 18, 2007, Opinion No. 520, the Los Angeles County Bar Association Professional Responsibility and Ethics Committee
     determined under California’s rules of professional conduct that where a client received an overpayment in a settlement, the lawyer must
     advise the client of the overpayment, and if the clients requests that the lawyer hold this information in confidence, the lawyer must
     preserve the secret. “The attorney should counsel the client to disclose and return the overpayment. If the client refuses, however, the
     attorney must consider whether the failure to disclose constitutes fraud.” If so withdrawal may be required: “Although Counsel is required
     to preserve the client’s secrets, Counsel is not obligated to continue representing the client. Under Rule 3-700(B)(2) of the Rules of
     Professional Conduct Counsel must withdraw if Counsel “knows or should know” that continued representation will result in a violation of
     the Rules of Professional Conduct or the State Bar Act (Cal. Bus. & Prof. Code § 6000 et seq.). Under Rule 3-700(C)(2), Counsel may
     withdraw if the continued employment is “likely to result” in a violation of the Rules or the State Bar Act. See LACBA Opinion No. 498
     and COPRAC Formal Opinion No. 1988-96. To assist the client in committing a fraud on the adverse party would be a violation of the
     State Bar Act. Cal. Bus. & Prof. Code § 6106; see also Cal. Rules of Prof. Conduct, Rule 3-210. However, the issue of whether the facts
     presented here constitute fraud by the client is a legal issue and, in keeping with its longstanding policy, the Committee declines to
     address legal issues raised by an inquiry. LACBA Opinion No. 504.” http://www.lacba.org/showpage.cfm?pageid=427




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As of 2003, this change brought Rule 1.6(b)(2) into closer conformity to the equivalent rule of
professional conduct in 41 states.54

Rule 1.6(b)(3). This subparagraph addresses past acts of a client. Comment [8] explains:

              [8] Paragraph (b)(3) addresses the situation in which the lawyer does not learn of
              the client’s crime or fraud until after it has been consummated. Although the client no
              longer has the option of preventing disclosure by refraining from the wrongful
              conduct, there will be situations in which the loss suffered by the affected person can
              be prevented, rectified or mitigated. In such situations, the lawyer may disclose
              information relating to the representation to the extent necessary to enable the
              affected persons to prevent or mitigate reasonably certain losses or to attempt to
              recoup their losses.55

As of 2003, this change brought Model Rule 1.6(b)(3) into closer conformity with the equivalent rule
of professional conduct in 18 states.56


54
     In supporting changes in Rule 1.6, the ABA Task Force on Corporate Responsibility identified 41 states that permitted a lawyer to make a
     disclosure “to prevent a crime.” Alaska (Alaska Rules of Prof’l Conduct R. 1.6 (2001)); Arizona (Ariz. Rules of Prof’l Conduct ER 1.6
     (2002)); Arkansas (Ark. Rules of Prof’l Conduct R. 1.6 (2002)); Colorado (Colo. Rules of Prof’l Conduct R 1.6 (2002)); Connecticut (Conn.
     Rules of Prof’l Conduct R. 1.6 (2002)); Florida (Fla. Rules of Prof’l Conduct R. 1.6 (2002)); Georgia (Ga. State Bar R. 1.6 (2002)); Hawaii
     (Haw. Rules of Prof’l Conduct R.1.6 (2002)); Idaho (Idaho Rules of Prof’l Conduct. R. 1.6 (2002)); Illinois (Ill. 50 Rules of Prof’l Conduct
     R.1.6 (2002)); Indiana (Ind. Rules of Prof’l Conduct R.1.6 (2002)); Iowa (Iowa Code or Prof’l Responsibility DR 4-101(2002)); Kansas
     (Kan. Sup. Ct. Rules R. 1.6 (2001)); Massachusetts (Mass. Rules of Prof’l Conduct R. 1.6 (2002)); Maryland (Md. Rules of Prof’l Conduct
     R. 1.6 (2002)); Maine (Me. R. Bar 3.6 (2002)); Michigan (Mich. Rules of Prof’l Conduct R 1.6 (2002)); Minnesota (Minn. Rules of Prof’l
     Conduct R. 1.6 (2001)); Mississippi (Miss. Rules of Prof’l Conduct R. 1.6 (2002)); Nebraska (Neb. Code of Prof’l Responsibility DR 4-101
     (2002)): Nevada (Nev. Rules of Prof’l Conduct R. 156 (2002)); New Hampshire (N.H. Rules of Prof’l Conduct R. 1.6 (2002)); New Jersey
     (N.J. Rules of Prof’l Conduct R. 1.6 (2002)); New Mexico (N.M Rules of Prof’l Conduct R.16-106 (2002)); New York (N.Y. Code of Prof’l
     Responsibility DR 4-101 (2002)); North Carolina (N.C. Rules of Prof’l Conduct R. 1.6 (2002)); North Dakota (N.D. Rules of Prof’l Conduct
     R. 1.6 (2002)); Ohio (Ohio Code of Responsibility DR4-101) (2002)); Oklahoma (Okla. Rules of Prof’l Conduct R.1.6 (2002)); Oregon (Or.
     Code of Prof’l Responsibility DR 4-101 (2002)); Pennsylvania (Pa. Rules of Prof’l Conduct R.1.6 (2002)); South Carolina (S.C. Rules of
     Prof’l Conduct R. 1.6 (2001)); Tennessee (Tenn. Rules of Prof’l Conduct R. 1.6 (2003)); Texas (Tex. Rules of Prof’l Conduct R. 1.05
     (2002)), Utah (Utah Rules of Prof’l Conduct R. 1.6 (2002)); Vermont (Vt. Rules of Prof’l Conduct R. 1.6(2001)); Virginia (Va. Rules of
     Prof’l Conduct R. 1.6 2002)); Washington (Wash. Rules of Prof’l Conduct R. 1.6 (2002)); Wisconsin (Wis. Rules of Prof’l Conduct R. 1.6
     (2002)); West Virginia (W. Va. Rules of Prof’l Conduct R. 1.6 (2002)); Wyoming (Wyo. Rules of Prof’l Conduct R. 1.6 (2002)). Corporate
     Responsibility Task Force Report, p. 49-50, n.89. Ohio and Nevada have since adopted the format of the Rules of Professional Conduct.
     Appendix I. If material, readers should review the current versions of each of these rules rather than rely on this 2002 compilation. They
     are easily accessible through links at http://www.abanet.org/cpr/links.html.
55
      The comment concludes by explaining that paragraph (b)(3) “does not apply when a person who has committed a crime or fraud
     thereafter employs a lawyer for representation concerning that offense.”
56
     In supporting changes in Rule 1.6, the ABA Task Force on Corporate Responsibility identified 18 states that “permit disclosure to rectify
     substantial loss resulting from client crime or fraud using the lawyer’s services”: Connecticut (Conn. Rules of Prof’l Conduct R. 1.6
     (2002)); Hawaii (Haw. Rules of Prof’l Conduct R.1.6 (2002)); Massachusetts (Mass. Rules of Prof’l Conduct R. 1.6 (2002)); Maryland
     (Md. Rules of Prof’l Conduct R. 1.6 (2002)); Michigan (Mich. Rules of Prof’l Conduct R. 1.6 (2002)); Minnesota (Minn. Rules of Prof’l
     Conduct R. 1.6 (2001)); Nevada (Nev. Rules of Prof’l Conduct R. 156 (2002)); New Jersey (N.J. Rules of Prof’l Conduct R 1.6 (2002));
     North Carolina (N.C. Rules of Prof’l Conduct R. 1.6 (2002)); North Dakota (N.D. Rules of Prof’l Conduct R. 1.6 (2002)); Ohio (Ohio Code
     of Prof’l Responsibility DR 7-102(B)(1) (2002)); Oklahoma (Okla. Rules of Prof’l Conduct R. 1.6(2002)); Pennsylvania (Pa. Rules of Prof’l
     Conduct R. 1.6(2002)); South Dakota (S.D. Rules or Prof’l Conduct R. 1.6 (2002); Texas (Tex. Rules of Prof’l Conduct R. 105 (2002));
     Utah (Utah Rules of Prof’l Conduct (2002)); Virginia (Va. Rules of Prof’l Conduct R. 1.6(2002)); Wisconsin (Wis. Rules of Prof’l Conduct
     R. 1.6 (2002)). Ohio and Nevada now have adopted the format of the Model Rules of Professional Conduct. Of these states, Hawaii and
     arguably, New York, require disclosure to rectify a loss from a client’s crime or fraud. See Appendix I. If material, readers should review
     the current versions of each of these rules rather than rely on this 2002 compilation. Links exist at http://www.abanet.org/cpr/links.html.




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Comment [8] does not provide an illustration of a situation covered by Rule 1.6(b)(3). But consider
this one. Where a bank loan was secured by fraudulent submissions on the worth of certain collateral,
and the lawyer who wrote an opinion on the validity of the contracts learned of the fraud after the fact,
permissive disclosure under Rule 1.6(b)(3) could be the vehicle by which the lawyer might rectify or
mitigate the fraud. For example, suppose the loan had not yet been funded or had not yet been funded
in its entirety. The lawyer could withdraw “noisily” from representation of the borrower if the
representation still was in effect.57 If not, the lawyer could disaffirm the opinion letter picking up on
the suggestion in comment [3] to Rule 4.1.58 Or the lawyer could make a permissive disclosure to the
bank to rectify or mitigate the loss.59

Consider these other illustrations, which are provided for readers to evaluate possible outcomes.

      • A seller of land conceals the presence of environmental contaminants buried in a portion of the
        property where there had never been any prior operations such that a Phase I or II investigation

57
     As noted earlier this fact pattern was the subject of ABA Formal Opinion 92-366 (August 8, 1992) even though the representation had
     concluded. The majority of the Ethics Committee felt that, even if the effect was to reveal confidences protected by then Rule 1.6, the
     attorney may withdraw “noisily” by disaffirming the opinion the lawyer previously produced on the client’s behalf and which the client
     intended to continue to use in connection with a bank loan, if that was the only means “to avoid giving assistance to such continuing or
     future fraud in violation of Rule 1.2(d).” The dissenters felt that Rule 1.6 in effect at the time did not allow for any exception, noting that
     the ABA House of Delegates had twice (1983 and 1991) rejected language that would have permitted a lawyer to reveal information to
     rectify a criminal or fraudulent act in furtherance of which the lawyer’s services were used. With the change in Rule 1.6 in 2003, the
     dissenters’ position could no longer be sustained. Cf. United States v. Cavin, 39 F.3d 1299 (5th Cir. 1994). In this matter, an attorney
     (Daigle) was convicted of a conspiracy to defraud under a variety of laws. He was counsel to an insurance company that developed
     creative ways to meet the capital requirements of Louisiana law both to start its business and to maintain it. One scheme involved the
     “rental” of stock of another company that was assigned a value of $1 million on the books of the insurance company without disclosing
     that the stock was not owned. Daigle handled the rental transaction closing. Daigle’s primary argument on appeal was the absence of
     proof of fraudulent intent. He sought to introduce testimony of a commercial lawyer on the ethical constraints under which he had to
     operate and about the status of “rental” transactions under the law at the time. The district court disallowed the testimony but the court of
     appeals reversed. The court of appeals cited to Formal Opinion 92-366 as part of its analysis: “An attorney is not above the law; like
     everyone else, he may not assist in the perpetration of a criminal offense. If he withdraws from representation without blowing the
     whistle on his client, has he rectified the problem? If he withdraws "noisily," does he violate the duty of confidentiality? In a controversial
     ethics opinion, the ABA experts concluded that an attorney in such a situation must withdraw from representation and may disaffirm work
     products used in furtherance of the fraud, even if doing so reveals client confidences. On the other hand, if the fraud has terminated,
     withdrawal is optional and the lawyer may not blow the whistle.” Id. at 1308. After discussing the difficult position lawyers can find
     themselves in trying to figure out what to do, the court of appeals held: “These are some of the complex considerations facing a lawyer
     whose client is using or has used his services to accomplish a fraud. To the extent that they guide his conduct, they are directly relevant
                                                                                                                                          s
     to his intent. We therefore join our Eleventh Circuit colleagues in holding that a lawyer accused of participating in his client' fraud is
     entitled to present evidence of his professional, including ethical, responsibilities, and the manner in which they influenced him.
     Exclusion of such evidence prevents the lawyer from effectively presenting his defense.” Id. at 1309 (Internal footnotes omitted).
     Louisiana has since adopted Model Rule 1.6. While no lawyer would ever want to be in the position Daigle found himself in, with the
     additional exceptions to nondisclosure in Model Rule 1.6, lawyers need to closely monitor changes in state rules of professional conduct
     in states which had maintained the original Model Rule 1.6 language.
58
     See note 35, supra.
59
     Cf. Formal Ethics Opinion 15, North Carolina Bar (July 19, 2000) (http://www.ncbar.com/eth_op/ethics_sel.asp?ID=308): Attorney A was
     approached on filing a bankruptcy but advised client that because of, among other things, preferential payments to friends or relatives,
     excessive equity in property, and co-signed loans, a Chapter 7 filing was precluded and a Chapter 13 filing would result in higher monthly
     payments. Client leaves, retains Attorney B, and files for bankruptcy. Attorney A believes that client failed to disclose these problems to
     Attorney B. Attorney A sought ethics assistance. Relying on North Carolina’s equivalent to Rule 1.6(b)(3), this Opinion provides that
     Attorney A should first write to the former client requesting action to rectify the fraud. If this is unsuccessful, Attorney A is permitted to
     make a disclosure to Attorney B and should tell Attorney B that Attorney A will notify the bankruptcy court administrator “if no action is
     taken to rectify the fraud or he does not receive a response from Attorney B.” If Attorney B fails to act, Attorney A “may notify the
     bankruptcy administrator.” The Opinion appears to presuppose that the services of Attorney A were used to make the fraudulent filing.




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          might not discover the contamination. The seller’s lawyer learns of the concealed information
          after the transaction closes. What should the seller’s lawyer do? If the doctrine of caveat emptor
          is enforced in the jurisdiction, does that affect the lawyer’s decision on how to proceed?
      •   A lawyer conducting a prophylactic antitrust review for a government contractor uncovers an
          internal audit report that suggests, based on employee interviews, that the contractor overbilled
          the United States Air Force by approximately $20 million under a particular contract and
          recommends a formal review of all billings under the contract in question to verify the employee
          statements. The contract was concluded six years before. The audit report was dated three
          months after the audit was concluded. You learned there was never any follow up. The client
          has ongoing business relationships with the Air Force. Does the lawyer have any obligations?
      •   A lawyer’s client is the former operator of a mine in a state which is prone to earthquakes. The
          client is marginally profitable and is no longer in the mining business. The mine resulted in the
          creation of “mine tailings” which were placed in a massive mine tailings dam. The dam rests
          uphill of a small mountain community with a population of nearly 1,000 persons. In the course
          of the lawyer’s environmental work for the client on other matters, the lawyer comes across an
          10-year old engineering report created after the dam was completed that explains that the dam is
          not constructed to be earthquake-proof. The report states that an earthquake with a magnitude of
          4 or higher on the Richter scale will cause the dam to break and the tailings to landslide down the
          mountain. You realize that would be directly into the mountain community. The Report explains
          that a “fix” would cost in excess of $20 million, which, when inflation is taken into account,
          would likely cost $30 million in today’s dollars. Must the lawyer speak up? To whom?
      •   Using the services of a lawyer, an owner of a plant submits false data to a regulatory agency in
          support of a “no further action” letter. The agency issues the letter. After the no further action
          letter is issued, the lawyer learns that the data were false. What should the lawyer do?
      •   A client designs a tank negligently. The tank overflows in rain events sending contaminants to a
          water body protected under the Clean Water Act. A lawyer learns of the negligent design after
          obtaining local permits for the tank’s operation. What should the lawyer do?
      •   A client has had a spill of a chemical. The lawyer for the client is consulted on the question of a
          reporting obligation. The lawyer advises the client that it has a reporting obligation.60 The client
          elects not to report. What should the lawyer do?

Or consider this example with respect to both Rules 1.6(b)(2) and (3). As part of a groundwater
investigation, a client is making a disclosure to a state under an information-gathering statute. The
client’s submission contains an omission of a material fact. For example, suppose the client’s
submission states that below-ground concrete sumps had never been used to receive chemicals and

60
     Disclosure obligations over a spill may be more a matter of substantive law than ethics depending upon the conditions of a permit, or the
     ordinance involved. Most permits are written so broadly that they may call for disclosure under numerous sets of facts. Local ordinance
     language is, at times, incapable of clear application to a particular set of facts but because of that uncertainty, it may prompt a disclosure
     as a matter of caution. Section 103 of CERCLA, 42 U.S.C. § 9603, and regulations promulgated thereunder, specifically deal with
     reportable quantities under the Superfund law. As a general rule of thumb, most lawyers err on the side of advising that there may be a
     duty to disclose from a substantive law standpoint when a client demands a formal legal opinion.




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were only used to receive stormwater. Suppose further that the client had laboratory analytic data of
sump sludges that demonstrated that this representation was untrue. What are the disclosure
requirements in the following circumstances?

1.      The lawyer knows of the data and the submission but is not engaged to assist the client in
preparing or making the submission. Must the lawyer take any action?

2.       The lawyer is engaged to assist the client in preparing the submission but the client alone
signs the submission. Must the lawyer take any action?

3.      The lawyer is engaged to prepare the submission and submits it with the material
misstatement. Is that permissible?

4.      The lawyer is engaged years after the submission, the original groundwater investigation is
ongoing, and the lawyer then learns of the material misstatement of fact. Must the lawyer correct the
submission?61

Does it matter whether the sumps were removed after the laboratory data was reported but before the
submission was made, and the sumps were found to be suffering from severe cracks? Suppose that,
after the submission, soil gas sampling had been conducted in the area of the sumps and had not
shown indications of contamination? Does it matter how deep the soil gas probes were installed?

Federal law provides for criminal penalties under a variety of circumstances that a lawyer’s client may
face. See, e.g., 42 U.S.C. 9604 (e) and 18 U.S.C. 1001 (providing false information in a response to a
CERCLA Section 104(e) information request); United States v. Carr, 30 ERC 1128 (2d Cir. 1989)
(sustaining conviction of a maintenance supervisor for failure to report a reportable release to EPA
under Section 103 of CERCLA). A prior disposal of hazardous waste by a client might well be illegal
under the Resource Conservation and Recovery Act, 42 U.S.C. § 6928(d), and might result in
“substantial injury to the financial interests of another” under Rule 1.6(b)(2) and (3) raising additional
questions about a lawyer’s duty. And the Clean Water Act punishes certain “negligent conduct.” 33
U.S.C. § 1319(c)(1). Depending upon the role of the lawyer’s services in the mix of the relevant facts,
the governing jurisdiction, and the impact or likely impact of the conduct, counsel learning of a
violation of these laws will face a more rigorous analysis under Model Rule 1.6 now that it has been
amended.


61                                                     th
     United States v. Cavin, 39 F.3d 1299, 1309 (5 Cir. 1994) recognized the difficulties lawyers face in evaluating whether to make a
     disclosure: “The parameters of his obligations, however, depend on the circumstances. How active a role does the lawyer play in the
     reporting process: is he a background advisor or the spokesperson? Is the context such that the agency likely would be misled without
     disclosure of the damaging fact? Would the omission mislead because of a statement by the lawyer or because of an oversight by the
     agency? Finally, what if the lawyer reasonably believes that the legal significance of the undisclosed information is such that the
             s
     agency' reporting requirements do not call for disclosure, but the lawyer suspects that the agency would disagree? One authority holds
     that disclosure is not required. If disclosure is not required, arguably it is forbidden.” In this case, the court of appeals found sufficient
     evidence to convict a lawyer of fraud where a corporate principal entered a plea and gave testimony against the lawyer but reversed
     because the district court refused to permit expert testimony on the lawyer’s nondisclosure obligations which were relevant to the
     question of whether the lawyer had the requisite intent to defraud.




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And in certain states, a lawyer’s analysis might become more challenging. In Florida, RPC Rule 4-1.6
requires a lawyer to reveal information that the lawyer believes necessary to prevent a client from
committing a crime. The lawyer’s services need not have been used in furtherance of the conduct.
Again, New Jersey’s RPC 1.6(b) requires disclosure to “the proper authorities, as soon as, and to the
extent the lawyer reasonably believes necessary to prevent the client or another person” from
committing a criminal, illegal or fraudulent act that the lawyer “reasonably believes” is likely to result
in death or substantial bodily harm or “substantial injury to the financial interest or property of
another.” If a RPC 1.6(b) disclosure is made, New Jersey then permits, but does not require, the
lawyer to reveal the information “to the person threatened to the extent the lawyer reasonably believes
is necessary to protect that person from death, substantial bodily harm, substantial financial injury, or
substantial property loss.62

The interplay between Rules 1.6 and Rules 1.2, 4.1, and 1.16,63 particularly in states with mandatory
disclosure obligations under Rule 1.6, will create ethical dilemmas for a lawyer depending upon the
facts of a matter. Lawyers may encounter other circumstances in dealing with a government
regulatory agency or a court on behalf of a client where they will be studying the definition of
“tribunal” and looking to Model Rules 3.3 for guidance. Where the stakes involve someone’s liberty64




62
     In contrast, see Formal Opinion 1996-146 of the California Standing Committee on Professional Responsibility and Conduct applying
     California Business and Professions Code section 6068 (e) (http://www.calbar.ca.gov/calbar/html_unclassified/ca96-146.html) (where a
     lawyer knows that a contractor used substandard materials in building homes contrary to sales contracts and where the contractor asks
     the lawyer to advise homeowners that the sales contract states that the developer has promised that all materials meet code
     requirements, the lawyer may not reveal that the contractor used substandard materials. Rather the lawyer may advise the client to
     refrain from engaging in misrepresentations and assist the client in rectifying previous misrepresentation, and, if the client refuses, the
     lawyer must either limit the scope of the representation to matters that do not involve participation in or furthering the client’s fraud, or
     withdraw.) See also California Committee on Professional Responsibility and Conduct Formal Opinion 1981-58 (“Attorneys may not
     ethically disclose to third parties the contents of a report from an engineer retained in connection with litigation involving the attorneys'
     client where the client has instructed the attorneys not to disclose, even though the report states that a structure on property owned by
     the client does not comply with the Uniform Building Code and may not survive an earthquake”) at
     http://www.calbar.ca.gov/calbar/html_unclassified/ca81-58.html. Section 6068(e) was amended in 2003 to permit for the first time in
     California, any exception to nondisclosure (allowing disclosure the lawyer reasonably believes necessary “to prevent a criminal act that
     the attorney reasonably believes is likely to result in the death of, or substantial bodily harm to, an individual”). See Appendix I.
63
     Model Rule 8.4 deserves mention as well. Subparagraph (c) provides that it is professional misconduct for a lawyer to “engage in
     conduct involving dishonesty, fraud, deceit or misrepresentation.” Cf. Ethics Docket 02-29, Maryland State Bar Association, Inc.
     Committee on Ethics (http://www.msba.org/members/ethics/2002/2002-29.htm) (Unbeknownst to the lawyer, a lawyer’s client’s cousin
     used a stolen credit card to raise funds to make restitution on behalf of the client. The Committee felt that Rule 8.4 permitted the lawyer
     to discuss the cousin’s conduct with an investigator or the police because “it is misconduct for a lawyer to engage in conduct that is
     prejudice (sic) to the administration of justice. Refusal to cooperate with an investigation, civil or criminal, into the cousin’s possession
     and unauthorized use of another individual’s credit card account could be prejudicial to the administration of justice.”)
64
     The liberty may not just be the client’s. See United States v. Cavin, supra, 39 F.3d at 1309 (finding sufficient evidence to convict a lawyer
     of fraud where corporate principal entered a plea and testified against lawyer, but reversing because the district court refused to permit
     expert testimony on the lawyer’s nondisclosure obligations which were relevant to the issue of the lawyer’s intent to defraud).




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or large penalties or the ramifications of a possible malpractice action,65 the lawyer’s ethical antennae
must be particularly alert.



RULE 1.13
Model Rule 1.13(b) addresses the “Organization” as a client. It provides that if a lawyer “for an
organization”:66

              knows facts from which a reasonable lawyer, under the circumstances, would
              conclude that an officer, employee or other person associated with the organization
              is engaged in action, intends to act or refuses to act in a matter related to the
              representation that is a violation of a legal obligation to the organization, or a
              violation of law which reasonably might be imputed to the organization, and that is
              likely to result in substantial injury to the organization, then the lawyer shall proceed
              as is reasonably necessary in the best interest of the organization. Unless the lawyer
              reasonably believes that it is not necessary in the best interest of the organization to
              do so, the lawyer shall refer the matter to higher authority in the organization,
              including, if warranted by the circumstances, the highest authority that can act on
              behalf of the organization as determined by applicable law.

Three aspects of the Rule quickly attract a reader’s attention. First, the standard is an objective one
(“facts from which a reasonable lawyer, under the circumstances, would conclude…”), not a
subjective one. Second, the operative language describes present or future conduct (“is engaged,”
“intends to act,” “refuses to act”) and not past conduct. Hence, immediately the applicability of this
Rule to a past act is questionable.67 Third, Rule 1.13(b) is prescriptive (“shall proceed” and “shall
refer”) although this requirement is mildly limited by the phrases “as is reasonably necessary in the
best interest of the organization” or “Unless the lawyer reasonably believes it is not necessary in the
best interest of the organization to do so.”


65
     A lawyer facing disclosure issues has to consider malpractice arguments. Comment [20] to the “Scope” of the Model Rules provides that
     violation of a Model Rule should not itself give rise to a cause of action against a lawyer or create any presumption in such a case that a
     legal duty has been breached. It maintains the original language of this comment that the Rules are not designed to be a basis for civil
     liability. The end of this comment, however, adds: “Nevertheless, since the Rules do establish standards of conduct by lawyers, a
     lawyer’s violation of a Rule may be evidence of breach of the applicable standard of conduct.” Lawyers should be mindful of this new
     admonition in evaluating risks associated with their interpretation of, and conduct under, the Model Rules, if states already have or adopt
     similar “Scope” language or if the lawyer is in a jurisdiction where the Model Rules are applicable or used by a court to evaluate the
     lawyer’s conduct. See also note 86 infra (discussing the Enron Bankruptcy Examiner’s Report on possible malpractice claims).
66
     Rule 1.13(a) refers to a “lawyer employed or retained by an organization.” Hence, Rule 1.13(b) covers both in-house and outside
     counsel.
67
     Comment [4] may be contemplating past acts, when it says: “Even in circumstances where a lawyer is not obligated to proceed by Rule
     1.13, a lawyer may bring to the attention of an organizational client, including its highest authority, matters that the lawyer reasonably
     believes to be of sufficient importance to warrant doing so in the best interest of the organization.” For past acts, Rule 1.6(b)(3) may be
     applicable but only if the lawyer’s services were used in furtherance of a client’s commission of a crime or fraud. If this threshold is met,
     it would seem logical for a lawyer “for an organization” then to follow Rule 1.13 to make a Rule 1.6(b)(3) disclosure.




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What is a violation of a legal obligation to the organization? Does it involve the duty of loyalty?
Does it cover common law torts? Presumably it covers acts that would be characterized as not in the
best interests of the organization or acts that favor the individual – self-dealing, for example -- instead
of the organization.

There is also a need for “substantial injury” to the organization. An intentional misstatement of
expenses on an expense voucher would represent a violation of a legal obligation to the organization,
but it might not result in “substantial injury.” On the other hand, one must assume that violation of an
environmental statute or a securities law is “likely to result in substantial injury to the organization.”
And a criminal law violation imputed to the organization would comfortably fall into this category.

So a lawyer for an organization, at this point, knows that he or she has to proceed “as is reasonably
necessary in the best interest of the organization.” What does that mean? Comment [3] to Rule 1.1.3
provides guidance:

           As defined in Rule 1.0(f), knowledge can be inferred from circumstances, and a
           lawyer cannot ignore the obvious. The lawyer’s obligation to proceed as is
           reasonably necessary in the best interest of the organization is determined by the
           conclusions that a reasonable lawyer would, under the circumstances, draw from the
           facts known. The terms “reasonable” and “reasonably” imply a range within which
           the lawyer’s conduct will satisfy the requirements of Rule 1.13. In determining what
           is reasonable in the best interest of the organization the circumstances at the time of
           determination are relevant. Such circumstances may include, among others, the
           lawyer’s area of expertise, the time constraints under which the lawyer is acting, and
           the lawyer’s previous experience and familiarity with the client. For example, the
           facts suggesting a violation may be part of a large volume of information that the
           lawyer has insufficient time fully to comprehend. Or the facts known to the lawyer
           may be sufficient to signal the likely existence of a violation to an expert in a
           particular field of law but not to a lawyer who works in another specialty. Under
           such circumstances the lawyer would not have an obligation to proceed under
           Paragraph (b).

Comment [4] contains additional guidance which, before the 2003 amendments, was in the text of
Rule 1.13(b):

           In determining how to proceed under Paragraph (b), the lawyer should give due
           consideration to the seriousness of the violation and its consequences, the
           responsibility in the organization and the apparent motivation of the person involved,
           the policies of the organization concerning such matters, and any other relevant
           considerations.

And what is an organization’s lawyer armed with “knowledge” under Model Rule 1.13(b) then
supposed to do? Rule 1.13(b) continues:



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              Unless the lawyer reasonably believes that it is not necessary in the best interest of
              the organization to do so, the lawyer shall refer the matter to higher authority in the
              organization, including, if warranted by the circumstances, the highest authority that
              can act on behalf of the organization as determined by applicable law.

Where the lawyer for the organization is an in-house counsel in a Rule 1.13 analysis, the less senior
the in-house lawyer, the more likely it is that the general counsel or assistant general counsel would be
the recipient of the referral of the matter. The more senior the in-house lawyer, the more likely it is
that the referral would be made to a senior officer or, depending upon the facts, one or more members
of the board of directors.68

Referral is Rule 1.13’s preference.69                          However, comment [4] suggests giving the offending
“constituent” 70 the opportunity to cure:

              In some circumstances, it may be appropriate for the lawyer to ask the constituent to
              reconsider the matter, for example if the circumstances involve a constituent’s
              innocent misunderstanding of law and subsequent acceptance of the lawyer’s advice,
              the lawyer may reasonably conclude that the best interest of the organization does
              not require that the matter be referred to higher authority.71

The graver the matter, however, the more likely it is that communication with the offending
constituent(s) will be preempted by a direct contact with a higher authority. Comment [4] to Rule 1.13
agrees:

               If the matter is of sufficient seriousness and importance or urgency to the
              organization, referral to higher authority in the organization may be necessary even
              if the lawyer has not communicated with the constituent.

Suppose that the reporting lawyer has referred the matter to the general counsel and nothing happens.
Should the lawyer go higher up the chain of command? Depending upon the circumstances, it appears
that the lawyer may have the obligation to go over the general counsel, since 1.13(b) provides for



68
      Philadelphia Bar Association, Ethics Opinion 2006-7 (January 2007) addressed reporting under Rule 1.13 by outside counsel. The
     lawyer making the inquiry was former counsel to an organization that had applied for tax exempt status and then later decided to convert
     to a for-profit venture, without disclosing this fact to members and volunteers. The inquirer sought to determine whether the inquirer
     could disclose this fact to the members and volunteers but was told that, under Pa. RPC 1.13(a) and (b), disclosure should be made in
     writing to the Board of Directors that the inquirer was no longer counsel and the organization was at risk of being in violation of
     substantive law. The ethics committee appeared to assume the inquirer was still counsel to the organization even though the inquirer
     had advised the Internal Revenue Service of her disassociation as counsel. http://www.philadelphiabar.org/page/EthicsOpinion2006-
     7?appNum=1&wosid=9rloAixh2jjM9dSViI9zA0
69
     Comment [4] explains, “Ordinarily, referral to a higher authority would be necessary.”
70
     A “constituent” would be an officer, director, employee or shareholder. Rule 1.13, comment [1].
71
     If the constituent rejects this opportunity to cure, “it will be necessary for the lawyer to take steps to have the matter reviewed by a higher
     authority in the organization.”




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referral to a “higher” authority (say, the general counsel) but also allows for referral to the “highest”
authority if “warranted by the circumstances.”

However, in an in-house setting, another way to read Model Rule 1.13(b)(3) might be to say that the
less senior lawyer has satisfied his or her obligations by referral to a more senior lawyer who then has
to consider his or her ethical obligations under Model Rule 1.13(b). Only when the highest ranking
in-house lawyer in the chain of command gets the problem does it then go to management, including,
depending upon the seriousness of the matter, the board of directors, and perhaps even outside
directors on the board.72

Whether it is the first reporting lawyer or a reporting lawyer with higher authority, Rule 1.13(b)
requires that the “matter” ultimately reach the “highest authority” that can act on behalf of the
organization “as determined by applicable law.”73

What is the remedy should the highest authority fail to act?74 Model Rule 1.13(c) now provides that
”except as provided in Paragraph (d),”75 if

                       (1) despite the lawyer's efforts in accordance with Paragraph (b) the highest
              authority that can act on behalf of the organization insists upon or fails to address in
              a timely and appropriate fashion action, or a refusal to act, that is clearly a violation
              of law, and

                        (2) the lawyer reasonably believes that the violation is reasonably certain to
              result in substantial injury to the organization,

              then the lawyer may reveal information relating to the representation whether or not
              Rule 1.6 permits such disclosure, but only if and to the extent the lawyer reasonably
              believes necessary to prevent substantial injury to the organization.



72
     Comment [4] cautions the reporting lawyer to seek to maintain confidentiality within the organization: “Any measures taken should, to the
     extent practicable, minimize the risk of revealing information relating to the representation to persons outside the organization.”
73
     Presumably, that will, in most cases, be the board of directors, as comment [5] to Rule 1.13 states. Comment [5] recognizes that in
     certain circumstances, the independent directors of the corporation may be the appropriate recipient of a disclosure.
74
     This is the question that the SEC is attempting to answer with its proposed Section 205.3(d) in its various forms discussed supra.
75
     Paragraph (d) provides: “Paragraph (c) shall not apply with respect to information relating to a lawyer’s engagement by an organization to
     investigate an alleged violation of law, or to defend the organization or an officer, employee or other person associated with the
     organization against a claim arising out of an alleged violation of law.” This language is comparable to Section 205.3(b)(6)(i) in the SEC
     rules which relieves an attorney of any obligation to report evidence of a material violation under Section 205.3(b) where the attorney was
     retained to investigate “such evidence of a material violation” and the results are reported to the chief legal officer (or the equivalent
     thereof) who then reports the results to the issuer’s board of directors, a committee thereof to whom a report could be made under
     Section 205.3(b)(3), or a qualified legal compliance committee, unless the attorney and chief legal officer each reasonably believes that
     no material violation has occurred, is ongoing, or is about to occur. It also has a relationship to Section 205.3(b)(6)(ii) which relieves an
     attorney of a reporting obligation where the attorney was retained to assert a colorable defense on behalf of the issuer in any
     investigation or judicial or administrative proceeding relating to “such evidence of a material violation” and the chief legal officer (or
     equivalent thereof) provides reasonably and timely reports on the progress and outcome of such proceeding to the board, the same
     committee, or the qualified legal compliance committee.




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To go outside the organization with a disclosure under Model Rule 1.13(c) there are different
thresholds than to make an up-the-ladder report within the organization under Rule 1.13(b). To make
a Rule 1.13(b) report, a mixed standard is applied. A lawyer who knows “facts from which a
reasonable lawyer, under the circumstances, would conclude” that an action is likely to result in
substantial injury to the organization (an objective standard) is supposed to proceed “as is reasonably
necessary in the best interest of the organization” and only if the lawyer reasonably believes it is not
necessary (a subjective standard), the lawyer is supposed to refer the matter to higher authority in the
organization. In contrast, to go outside the organization under Rule 1.13(c), there is a subjective
standard (“the lawyer reasonably believes…”).

Whereas Rule 1.13(b) requires a “violation of a legal obligation to the organization, or a violation of
law which reasonably may be imputed to the organization,” to go up-the-ladder, Rule 1.13(c) ups the
ante by requiring that the action or refusal to act is “clearly a violation of law” to go outside the
organization.

In addition, to justify an up-the-ladder report, Rule 1.13(b) characterizes the act in question as one that
is “is likely to result in substantial injury to the organization.” Under Rule 1.13(c), if the highest
authority continues the conduct or fails to address the conduct in a timely and appropriate fashion,
disclosure then requires that the “violation” -- presumably referring to the violation of law in Rule
113(c)(1) -- is “reasonably certain to result in substantial injury to the organization.” The objective
standard is tied to a likely result while the subjective standard is tied to a reasonably certain result.

Finally, Rule 1.13(b) uses prescriptive language (“shall proceed” and “shall refer”) while Rule 1.13(c)
uses permissive language (“may reveal”).

Rule 1.13(c) does not identify the recipient of the information to be revealed, but regulators would
appear to be the logical choice.76 But note that Rule 1.6 is not controlling.77 The “lawyer employed or
retained by an organization” under Rule 1.13(a) who gives the organization the opportunity to act
through its highest authority may ignore Rule 1.6 but is limited to a disclosure that the lawyer
reasonably believes – a subjective standard again – “necessary to prevent substantial injury to the
organization.” Unlike Rule 1.6 which requires that the lawyer’s services be used in furtherance of the
crime or fraud, Rule 1.13 is more expansive; it refers to “information relating to the representation” or
“that the matter be related to the lawyer’s representation of an organization.” Rule 1.13(c) and
comment [6].

If the services of a lawyer for an organization are also being used in furtherance of a crime or fraud,
Rule 1.6(b)(2) and (3) “may permit the lawyer to disclose confidential information.” Rule 1.13,



76
     The Task Force on Corporate Responsibility suggested disclosure would be made to “persons outside the organization who have
     authority and responsibility to take appropriate preventive action.” Corporate Responsibility Task Force Report, p. 58.
77
     Comment [6] explains that Paragraph (c) “supplements” Rule 1.6 but does “not modify, restrict, or limit” Rule 1.6’s provisions.




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comment [6]. If Rule 1.2(d) is applicable, “withdrawal from the representation under Rule 1.16(a)(1)
may be required.” Id. 78

What happens if a reporting lawyer is discharged or withdraws before the highest authority in the
organization learns of the lawyer’s concerns?79 May that lawyer still climb the reporting ladder to the
highest authority or inform the highest authority of the discharge or withdrawal? Rule 1.13(e) gives
the lawyer discretion on how to proceed:

              (e) A lawyer who reasonably believes that he or she has been discharged80 because of
              the lawyer’s actions taken pursuant to Paragraphs (b) or (c), or who withdraws in
              circumstances that require or permit the lawyer to take action under either of those
              Paragraphs,81 shall proceed as the lawyer reasonably believes necessary to assure
              that the organization’s highest authority is informed of the lawyer’s discharge or
              withdrawal.82

Consider this example in evaluating the application of Rule 1.13 and other of the disclosure
requirements under the Model Rules.83 An organization engages counsel to conduct an environmental
audit and a past, completed, act that represented a violation of a criminal law is discovered. Rule
1.13(b) would not apply since there is no pending or future action. Rule 1.6(b)(3) would not apply
since the lawyer’s services were not used in furtherance of the commission of the crime. Rule 1.2(d)
would not apply because the act is historical and not ongoing. Rule 4.1 would have to be heeded in




78
     If the representation results in a violation of the rules of professional conduct, Rule 1.16 triggers mandatory withdrawal. See note 42 for
     the text of Rule 1.16. As discussed earlier, Rule 1.2(d) provides that a lawyer shall not counsel a client to engage, or assist a client, in
     conduct that the lawyer knows or reasonably knows is criminal or fraudulent. For an in-house counsel, presumably that means that the
     lawyer must resign.
79
     Cf. Formal Ethic Opinion 11, North Carolina Bar, January 18, 2001 (http://www.ncbar.com/eth_op/ethics_sel.asp?ID=616) (Attorney A,
     employed by Corporation C, was assigned to monitor compliance with a settlement with the United States. Attorney A learns of a
     separate scheme to defraud the United States of $38 million through improper billings, involving the chief financial officer and chief
     executive officer of Corporation C. Attorney A informs the general counsel of the fraud scheme and, two weeks later, is fired. Attorney A
     has documents that reveal the scheme and wishes to approach the U.S. Attorney’s office. The opinion provides that Attorney A may
     reveal confidential information if such information “concerns the intention of Corporation C to commit a crime and the information is
     necessary to prevent the crime.” However, if the information relates to “past conduct, it may not be disclosed to the US Attorney.” It next
     provides that confidential information may not be shared and recommended that in a wrongful termination action (permissible in North
     Carolina under the circumstances), Attorney A should obtain a ruling from the court on the scope of permitted disclosure after an in
     camera proffer of the confidential information.)
80
     “Discharged” here presumably refers to an in-house counsel who has been terminated or an outside counsel that has been discharged.
81
     It is not clear what is meant by the phrase “circumstances that require or permit the lawyer to take action” under Rule 1.13(b) or (c) other
     than that the conditions of these paragraphs are satisfied.
82
     Rule 1.13(e) parallels Section 205.3(b)(10) of the SEC’s Standards of Professional Conduct which provides: “An attorney formerly
     employed or retained by an issuer who has reported evidence of a material violation under this part and reasonably believes that he or
     she has been discharged for so doing may notify the issuer’s board of directors or any committee thereof that he or she believes that he
     or she has been discharged for reporting evidence of a material violation under this section.” 17 C.F.R. § 205.3(b)(10).
83
     There may be legal or public relations reasons to make disclosure, but this discussion focuses solely on the rules of professional
     conduct.




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the lawyer’s statements to third parties84 but an internal audit would not trigger a Rule 4.1 disclosure.
Outside of a tribunal, Rule 3.3 would not be applicable.

Suppose the past act was an unlawful disposal of a hazardous waste that is likely leaching onto a
neighbor’s property or contaminating the groundwater being consumed by the neighbor. Rule 1.13
again may not be applicable unless the “refuses to act” phrase would trigger its application where such
a refusal would represent a violation of a legal obligation to the organization or a violation of law.
Rule 1.6(b)(1) would be applicable if substantial bodily injury could be prevented by a disclosure but
the facts required to reach this conclusion may not be available.85 Rules 1.2(d) and 4.1 may apply to
future representations made by the client regarding the client’s operations or property but would not
otherwise appear to be applicable. Outside of a tribunal, Rule 3.3 would not be applicable.

Suppose the audit for the organization uncovers a current violation of law, that, say cannot be
remedied without a large expenditure of funds and the responsible “constituent” is told by the lawyer
of the violation and the need to remedy it, and elects not to act. Rule 1.13 could be applied in this
circumstance if “substantial injury to the organization” is “likely to result” from the violation. If the
lawyer’s services are “furthering” a crime or fraud or in the absence of disclosure the lawyer would be
“assisting” a criminal or fraudulent act by a client, Rules 1.6(b)(2) or Rule 1.2(d) could be applicable.

Consider these other illustrations which are provided for readers to test on their own the application of
the disclosure ethics rules.

      • You are tax counsel to a non-public company that does business in Argentina. In the course of
        your tax work you learn that the company is delivering money to a local official in Argentina
        who has the authority to award a multi-million dollar contract which your client has been
        seeking. You report the matter to the General Counsel of the company who then takes up the
        matter with the Board of Directors of the company. No further action is taken. The company
        receives the contract. What actions if any should you take?
      • Your client, a closely held company with 15 shareholders, is acquiring a non-public company
        which has announced the acquisition of a target company. The target company has a unique
        technology that the acquiring company desperately wishes to acquire to maintain a competitive
        edge. You are outside counsel to the acquiring company on intellectual property matters. You
        are doing your last paranoid checks of the target company’s patents. On the eve of closing, you
        discover that the target company’s patent lawyers made a number of procedural mistakes on the
        underlying patents, which seriously jeopardizes their enforceability. You call the internal
        business client to explain your concerns. The internal client tells you, “The deal is closing

84
      For example, in the course of completing answers to information requests under various environmental laws, a past act discovered
     during a compliance audit whose legality (criminal or civil) is in question, might cause some ethical squirming for an organization’s
     lawyer.
85
     The likely concentration on the neighbor’s property or in the neighbor’s well water would have to be determined. And that concentration
     will be a function of contaminant fate and transport factors such as distance from the point of discharge to the property boundary, the
     preference of the contaminant to remain in soils, the ease of movement of the contaminant in groundwater, and groundwater velocity.




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        tomorrow. We have been assured the patents are solid. You are being too conservative.” But
        you are convinced that the acquiring company is not acquiring clean rights to the technology.
        The deal closes the next day. A press release is issued stating that these patents will give the
        company proprietary rights to make the patented product with huge margins. At any point in this
        process, should you speak up? To whom?
      • You are participating in a meeting with the Chief Financial Officer of your client, a private
        company whose shares are owned by a limited partnership with a number of high net worth
        investors. Your outside accountants are also involved in the meeting. The CFO explains that the
        company has exceeded its sales targets by a wide margin because of its new incentive sales
        program. The program provides for significant incentives to customers who take truckload
        purchases of products in the last two weeks before the end of a quarter. The products in question
        have a shelf life. You are advised that the company plans to count the sales in revenues for the
        quarter. Independently, you review the terms of the incentive sales program. The relevant
        documents provide that customers who are unable to sell the product before the expiration of the
        shelf life may return them and your client will not only give the customer a credit for the product
        but will pay the freight charges for the return of the product. You discreetly raise these terms
        with the CFO to support your suggestion that it is inappropriate to account for sales made under
        the incentive sales program as revenue until the returns are known. The CFO explains that the
        company has missed sales targets two quarters in a row and that it was not going to miss them
        this quarter. The CFO tells you that the accountants approved the approach, while conceding that
        it was quite aggressive. Should you take any action?

Is there a simple conclusion to draw from this analysis and these hypotheticals? It seems clear that an
organization’s lawyer who learns of ongoing or future criminal conduct, or civil conduct that has large
penalties attached to it, has to move up the chain of command if the responsible constituent does not
end the conduct.86 Other conduct that represents a violation of a “legal obligation” to the organization
or a violation of law that can be imputed to the organization must be likely to result in a “substantial
injury” to the organization. If it does, the lawyer must climb the reporting the ladder. What happens
after this depends upon the reaction of, and reaction time by, the highest authority in the organization,



86
     In evaluating whether to climb the rungs of the reporting ladder, lawyers also must be concerned about being accused of malpractice.
     See note 65, supra. See also Final Report of Neal Batson, Court-Appointed Examiner, 2003 WL 22853260 (CORPSCAN) (Bankr.
     S.D.N.Y. November 4, 2003). In evaluating the viability of claims of legal malpractice against Enron’s in-house and outside counsel in
     the Enron bankruptcy, the examiner cited Texas RPC 1.12 (the equivalent to Model Rule 1.13) saying it “may be considered by a fact-
     finder in understanding and applying the standard of care for malpractice when that rule is designed for the protection of persons in the
     position of the plaintiff.” The examiner argued that under Texas Rule 1.12 an attorney for an organization "must take reasonable
     remedial actions" that are in the best interest of the organization under circumstances covered by Texas RPC 1.12. The examiner
     concluded “that an attorney for Enron who knew that (i) an officer was engaging in wrongful conduct, (ii) substantial injury to Enron was
                                                                                                    s
     likely to occur as a result of that conduct and (iii) the violation was within the attorney' scope of representation, but failed to take
     appropriate affirmative steps to cause reconsideration of the matter - including referral of the matter to a higher authority in the company,
     including, if appropriate, the Enron Board - would not have acted as an attorney of reasonable prudence would have in a similar
     situation.” Id. at 14-15.




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                          Tattletales or Crime-Stoppers: Disclosure Ethics Under Model Rules 1.6 and 1.13




the matter-specific facts, the seriousness of the matter and the pressures created thereby, and how Rule
1.13 will read87 in the state or states with jurisdiction.88



CONCLUSION
Tattletales are maligned. Crime-stoppers are honored. The journey through Model Rules 1.6 and 1.13
is one lawyers should hope they never have to take. But if a lawyer cannot avoid it, to try to ensure a
hero’s welcome at the end of the journey, remember that there is no substitute for thoughtfulness,
thoroughness, and sensitivity.89




87
     Lawyers are advised to monitor amendments to Rule 1.13 in the states since a state is not bound to accept Model Rule 1.13 in its current
     form.
88
     Model Rule 5.5 permits multiple jurisdictional practice. See Ethics Docket 03-07, Maryland State Bar Association, Inc. Committee On
     Ethics, October, 2003 (since Delaware adopted the ABA’s Rule 5.5, Delaware now allows out-of-state attorneys to provide legal services
     in Delaware on a temporary basis, so it would not be the unauthorized practice of law for a Maryland lawyer to conduct a real estate
     settlement involving Delaware property in Maryland for a Maryland client). The trade-off for this privilege appears in Rule 8.5 which
     provides that a lawyer “not admitted in this jurisdiction” is subject to the disciplinary authority of “this jurisdiction” if the lawyer provides or
     offers to provide “legal services” “in this jurisdiction.” Rule 22 of the ABA Model Rules for Lawyer Disciplinary Enforcement requires a
                                                                                                  s
     jurisdiction in which a lawyer is licensed to reciprocally enforce another jurisdiction' disciplinary decision, even if the lawyer is not
     admitted in that other jurisdiction, unless there are public policy reasons not to approve reciprocal discipline. As these changes are
     adopted by states, a lawyer that is found to be engaged in the practice of law in another state will have to consider that other state’s rules
     of professional conduct that relate to disclosure. As of February 2008, 11 jurisdictions had adopted Model Rule 5.5 verbatim and 24
     jurisdictions had adopted a similar rule, and 18 jurisdictions had adopted Rule 8.5 verbatim with 19 jurisdictions adopting a similar rule.
     See “Quick Guide chart on State Adoption of Rule 5.5” and the same link for Rule 8.5 at http://www.abanet.org/cpr/mjp/home.html.
89
     Cf. Qualcomm Inc. v. Broadcom Corp., 2008 U.S. Dist. LEXIS 911 (S.D. Calif. Jan. 7, 2008). This case involved the failure of outside
     counsel for Qualcomm to comply with discovery obligations where, apparently, Qualcomm handled the discovery in-house. Six lawyers
     were referred to the California State Bar for investigation and possible sanctions as a result. The lawyers tried to defend their conduct by
     reference to privileged communications with Qualcomm. Qualcomm, however, successfully invoked the attorney-client privilege as to its
     communications with its retained counsel so that they were not part of the record in the sanctions hearing. Sanctioned counsel’s
     concerns was “heightened” when Qualcomm submitted “self-serving declarations describing the failings of its retained lawyers,” but,
     again, to no avail. The magistrate drew no adverse inferences from the invocation of the privilege but acknowledged that “the Court does
     not have access to all of the information necessary to reach an informed decision regarding the actual knowledge of the attorneys.” Id. at
     *44, n.8.




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563347v1                                                                                                        Copyright John M. Barkett 2008
               Tattletales or Crime-Stoppers: Disclosure Ethics Under Model Rules 1.6 and 1.13




ABOUT THE PRESENTER


John M. Barkett
Mr. Barkett is a partner at the law firm of Shook, Hardy & Bacon L.L.P. in its Miami office. He is a
graduate of the University of Notre Dame (B.A. Government, 1972, summa cum laude) and the Yale
Law School (J.D. 1975) and served as a law clerk to the Honorable David W. Dyer on the old Fifth
Circuit Court of Appeals. Mr. Barkett is an adjunct professor of law at the University of Miami Law
School.

Mr. Barkett has, over the years, been a commercial litigator (contract and corporate disputes,
employment, trademark, and antitrust), environmental litigator (CERCLA, RCRA, and toxic tort),
and, for the past several years, a peacemaker and problem solver, serving as an arbitrator, mediator,
facilitator, or allocator in a variety of environmental or commercial contexts. He is a certified
mediator under the rules of the Supreme Court of Florida, serves on the CPR Institute for Dispute
Resolution’s “Panel of Distinguished Neutrals,” and is on National Roster of Environmental Dispute
Resolution and Consensus Building Professionals maintained by the U.S. Institute for Environmental
Conflict Resolution. He has served or is serving as a neutral in more than fifty matters involving in
the aggregate more than $450 million. He has conducted or is conducting arbitrations under the rules
of CPR, AAA rules, and the LCIA. In November 2003, he was appointed by the presiding judge to
serve as the Special Master to oversee the implementation and enforcement of the 1992 Consent
Decree between the United States and the State of Florida relating to the restoration of the Florida
Everglades. He also consults with major corporations on the evaluation of legal strategy and risk and
conducts independent investigations where such services are needed.

Mr. Barkett serves on the Council of the ABA Section of Litigation after service as the Section’s Co-
Director of CLE and Co-Chair of the Environmental Litigation Committee.

Mr. Barkett is editor and one of the authors of the Section of Litigation’s Monograph, Ex Parte
Contacts with Former Employees (Environmental Litigation Committee, October 2002). His paper, A
Baker’s Dozen: Reasons Why You Should Read the 2002 Model Rules of Professional Conduct, was
presented at the Section of Litigation’s 2003 Annual Conference. Mr. Barkett also wrote The MJP
Maze: Avoiding the Unauthorized Practice of Law, which was presented at the 2005 Section of
Litigation Annual Conference. He also wrote Refresher Ethics: Conflicts of Interest, for the Section’s
January 2007 Joint Environmental, Products Liability, and Mass Torts CLE program.

Mr. Barkett is also the author of Ethical Issues in Environmental Dispute Resolution, a chapter in the
ABA publication, Environmental Dispute Resolution, An Anthology of Practical Experience (July
2002), The Courtroom of the Twenty-First Century – ADR, CONFLICT MANAGEMENT (Summer
2002), ADR Committee, ABA Section of Litigation, and The Pieces to the Privilege Protection
Puzzle, 22 N.R.E 50 (2007)


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                Tattletales or Crime-Stoppers: Disclosure Ethics Under Model Rules 1.6 and 1.13




Mr. Barkett has also published a number of articles in the e-discovery arena:

Bytes, Bits and Bucks: Cost-Shifting and Sanctions in E-Discovery, ABA Section of Litigation Annual
  Meeting (2004) and 71 Def. Couns. J. 334 (2004).
The Prelitigation Duty to Preserve: Lookout! ABA Annual Meeting, Chicago, (2005).
Help Is On The Way…Sort Of: How the Civil Rules Advisory Committee Hopes to Fill the E-Discovery
  Void ABA Section of Litigation Annual Meeting, Los Angeles (2006)
Help Has Arrived…Sort Of: The New E-Discovery Rules, ABA Section of Litigation Annual Meeting,
  San Antonio (2007)
The Battle For Bytes: New Rule 26, e-Discovery, Section of Litigation (February 2006).
E-Discovery For Arbitrators, Dispute Resolution International Journal, International Bar Association
  (scheduled to be published in February 2008)
E-Discovery: Twenty Questions, ABA Section of Litigation Joint CLE Seminar (January 2008)

In the fall of 2007, Mr. Barkett taught a first-ever course at the University of Miami Law School
entitled “E-Discovery.”

Among his other works are a terrorism-related article on torts, entitled, If Terror Reigns, Will Torts
Follow? 9 Widener Law Symposium 485 (2003); A Database Analysis of the Superfund Allocation
Case Law, Shook, Hardy & Bacon L.L.P.: Miami (2003); and The CERCLA Limitations Puzzle, 19
N.R.E. 70 (2004).

Mr. Barkett has been recently recognized in the areas of alternative dispute resolution and
environmental law in a number of lawyer-recognition publications, including Who’s Who Legal 2005-
07 (International Bar Association); Best Lawyers in America 2005-2008 (National Law Journal);
Legal Elite, (Florida Trend 2004-07), and Chambers USA America’s Leading Lawyers (2004-2007).
Mr. Barkett can be reached at jbarkett@shb.com.




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563347v1                                                                         Copyright John M. Barkett 2008
 Conflicts of Interest

       Bill Freivogel
    www.freivogel.com
www.freivogelonconflicts.com
This Is about Issue Spotting
             or
 “Don’t Try This at Home”
            Conflicts Basics
• Loyalty and confidentiality
• Rule – current clients – direct adversity
• Rule – former clients – substantial
  relationship
• Multiple representation – tension
• Duty to keep each client informed vs. . . .
• Duty to protect confidences and secrets –
  “information relating to the representation”
           Current Client

• Represent Co. A in one small collection
  matter
• Long-time Client B wants firm to file
  huge breach of contract suit against Co.
  A in
• Completely unrelated – can you do it?
            Former Client

• Handled for Co. A a single small
  collection matter – concluded a year
  ago
• Co. B asks firm to file large breach of
  contract case against Co. A
• Completely unrelated – can firm do it?
 Converting Current Client Into
        Former Client
• Firm A represents Co. A on single small
  collection matter
• Co. B asks Firm A to bring huge breach of
  contract action against Co. A
• Firm A politely asks Co. A to get another firm
  – which it sullenly does
• Firm A then brings “B vs. A”
• Co. A moves to disqualify Firm A – Result?
• “Hot Potato” rule
   Closely Held Businesses

• Limited partnerships; close corporations
  – general rule
• Carelessness can lead to additional
  clients
• “I am not your lawyer” – sorry; it’s
  essential
               Example
• Wealthy client, Winthrop, wants to start
  business
• Brings future President, Paul, to
  meetings
• You form corporation and talk to Paul
  every day while representing business
• Winthrop now wants Paul out and asks
  for your help – problem?
        Both Sides of Deal

• A and B long-time clients
• A wants to buy all of B’s assets
• A and B want to save money by using
  one firm
• Problem?
• What about confidences and secrets?
• Baldasarre v. Butler, 604 A.2d 112 (N.J.
  App. 1992)
         Corporate Families
• You represent Co. A
• Co. B wants you to sue subsidiary of Co. A
• Sub. moves to disqualify you – result?
• JPMorgan v. Federal Insurance Co. –
  S.D.N.Y. 2002 – Chubb
• 95% Chubb’s gross; 90% Chubb’s net; same
  GC; same building
• What result?
         Initial Interview –
         Hearing too Much
• Co. A interviews firm for big case vs.
  Co. B
• Strategy and facts – partner takes notes
• Conflicts check shows Co. B a current
  client – firm declines Co. A
• Co. A sues Co. B – Co. B asks firm to
  represent it – firm files answer
• Co. A moves to disqualify firm – result?
          Changing Firms

• Lawyer goes from Firm A to Firm B
• Lawyer worked on case at Firm A vs.
  Firm B
• Firm A moves to disqualify entire Firm B
• Result?
• What about non-lawyer changing firms?
    “Underlying Work” Issues
• Firm A represents Co. A in transaction with
  Co. B
• Dispute – litigation – should Firm A handle?
• Three basic issues
  – Skew defense
  – Lawyer as witness
  – Settlement strategy
• Veras Investment Partners, LLC v. Akin
  Gump Strauss Hauer & Feld LLP, 2007 N.Y.
  Misc. LEXIS 6543 (N.Y. Misc. Sept. 27, 2007)
Other Conflicts Issues
End of Conflicts
Expert Witnesses                                                                             Page 1 of 7



                                        EXPERT WITNESSES

                   [Home] [Table of Contents]



                   (Note: because lawyers serving as experts create unique problems,
                   lawyers serving as expert witnesses or consultants are treated in a
                   separate article at this site. To go there, click here.)

                        Lawyers can cause problems with expert witnesses or expert
                   consultants in a number of ways. A lawyer might communicate
                   with an expert who is currently retained by the other side. That can
                   get the lawyer disqualified. A lawyer may hire as an expert
                   someone who has previously served as an expert for the other side.
                   That could get the consultant disqualified. It might even get the
                   lawyer disqualified. In some cases one party interviews a
                   consultant but declines to hire that consultant. Then, when the other
                   party hires the declined consultant, that party creates the possibility
                   that the consultant, or both the consultant and the hiring lawyer, will
                   be disqualified.

                        One of the two foundations for conflict of interest rules is
                   confidentiality (the other is loyalty). The troublesome expert cases
                   almost always turn on confidentiality considerations. As a result,
                   courts frequently resolve these cases by resort to conflict of interest
                   rules or principles. A common thread that runs through the
                   disqualification cases is the courts' concern for whether one of the
                   parties will be prejudiced by the disclosure of confidences to and
                   from the expert.

                        Following are two groups of cases: the first involving lawyer
                   disqualifications; the other involving expert disqualifications.
                   Those groups will be broken into sub-groups: those cases where
                   disqualification occurred; and those where disqualification was
                   rejected.

                        This section will conclude with a brief discussion of the related
                   issue of whether contact with the other side's expert is a violation of
                   court rules, and, thereby, a violation of legal ethics rules.


                                         Lawyer Disqualification

                        Lawyers Disqualified. In the following cases lawyers were
                   disqualified for either retaining, or communicating with, experts
                   currently or formerly associated with the other side. Godby v.
                   General Motors Corp., 2000 U.S. App. LEXIS 17945 (9th Cir.
                   2000); Erickson v. Newmar Corp., 87 F.3d 298 (9th Cir. 1996);
                   Grioli v. Delta Int’l. Machinery Corp., 395 F. Supp. 2d 11
                   (E.D.N.Y. 2005) (plaintiff's expert in products case formerly



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                   represented the defendant manufacturer as a lawyer in the same kind
                   of cases); United States, for the use of Grimm Const. Co., Inc. v.
                   SAE Civil Construction, Inc., 1996 U.S. Dist. LEXIS 3454 (D. Neb.
                   1996) (hired former president of the other side); Cordy v. Sherwin-
                   Williams Co., 156 F.R.D. 575 (D.N.J. 1994); MMR/Wallace Power
                   & Indus., Inc. v. Thames Associates, 764 F. Supp. 712 (D. Conn.
                   1991); American Protection Ins. Co. v. MGM Grand Hotel-Las
                   Vegas, Inc., 1986 U.S. Dist. LEXIS 28326 (D. Nev. 1986); Shadow
                   Traffic Network, v. Superior Court, 29 Cal. Rptr. 2d 693 (Cal. App.
                   1994); County of Los Angeles v. Superior Court, 271 Cal. Rptr. 698
                   (Cal. App. 1990); In re American Home Products Corp., 985
                   S.W.2d 68 (Tex. 1998); and In re Relators Bell Helicopter Textron,
                   Inc., 87 S.W.3d 139 (Tex. App. 2002). Canada: see Miele v.
                   Humber River Reg. Hosp., 2007 CanLII 27757 (Ont. Super. Ct. July
                   13, 2007), leave to appeal to Divisional Court granted, 2007
                   CanLII 44820 (Super. Ct. of Ont. Oct. 25, 2007).

                         Va. Op. 1638 (1995) discusses the situation where the other
                   side's expert witness is the president of a corporation that the law
                   firm represents on other matters. The opinion says that if the law
                   firm has confidential information about the corporation and the
                   president that would be relevant to the case at hand, the law firm
                   cannot stay in the case.

                        Miller v. Superior Court, 2006 Cal. App. Unpub. LEXIS 1209
                   (Cal. App. Feb. 9, 2006). In this divorce action the court appointed
                   a neutral expert to evaluate child custody alternatives. The wife
                   changed lawyers after the expert had spent considerable time on the
                   case. Her new lawyer shortly after being hired learned of the
                   expert, who was the new lawyer’s client on other matters. The
                   husband moved to disqualify the wife’s new lawyer. The trial judge
                   granted the motion and also dismissed the expert. The appellate
                   court, in this opinion, reversed, holding that this situation should be
                   handled as in the case where a lawyer represents a judge. In such
                   cases it is the judge who should recuse herself, allowing the lawyer
                   to remain in the case.

                         Lawyers Not Disqualified. Shandralina G. v. Homonchuk, 54
                   Cal. Rptr. 3d 207 (Cal. App. 2007) (lengthy discussion of California
                   cases on presumptions, etc. of information sharing); 1210 Colvin
                   Ave., Inc. v. Tops Markets, L.L.C., 2006 U.S. Dist LEXIS 93689
                   (W.D.N.Y. Dec. 28, 2006) (but, expert disqualified); Beilowitz v.
                   General Motors Corp., 226 F. Supp. 2d 565 (D.N.J. 2002); Cramer
                   v. Sabine Transportation Co., 141 F. Supp. 2d 727 (S.D. Tex. 2001)
                   (court believed lawyer's version of events; discussion of Texas Rule
                   4.02(b), which specifically forbids unauthorized contacts with other
                   side's experts); Proctor & Gamble Co. v Haugen, 183 F.R.D. 571
                   (D. Utah 1998); English Feedlot, Inc. v. Norden Laboratories, Inc.,
                   833 F. Supp. 1498 (D. Col. 1993); Collins v. State of California, 18
                   Cal. Rptr. 3d 112 (Cal. App. 2004); Toyota Motor Sales, U.S.A.,
                   Inc. v. Superior Court, 54 Cal. Rptr. 2d 22 (Cal. App. 1996);




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                   Carnival Corp. v. Romero, 710 So. 2d 690 (Fla. App. 1998); Cresta
                   v. Dilorenzo, 812 N.E.2d 289 (Mass. App. 2004); In re Firestorm,
                   916 P.2d 411 (Wash. 1996) (Opposing firm waited too long to bring
                   motion to disqualify.).


                                         Expert Disqualification

                        Expert Disqualified. In the following cases, the court ruled that
                   an expert had to be disqualified because of his or her current or
                   prior affiliation with the other side, having disclosed information to
                   the other side, or having obtained information from the other side's
                   expert. Koch Ref. Co. v. Jennifer L. Boudreau MV, 85 F.3d 1178
                   (5th Cir. 1996); Campbell Industries v. M/V Gemini, 619 F.2d 24
                   (9th Cir. 1980); Howmedica Osteonics Corp. v. Zimmer, Inc., 2007
                   U.S. Dist. LEXIS 92307 (D.N.J. Dec. 17, 2007) (expert on both
                   sides at once; good discussion of the "bright line" vs. "two factor"
                   theories); Alien Tech. Corp. v. Intermec, Inc., 2007 U.S. Dist.
                   LEXIS 89635 (D.N.D. Nov. 30, 2007) (high-ranking former officer
                   of adversary); Astrazeneca Pharmeceuticals, LP v. Teva
                   Pharmaceuticals USA, Inc., 2007 U.S. Dist. LEXIS 88996 (D.N.J.
                   Dec. 4, 2007) (one expert disqualified, the other not); American
                   Empire Surplus Lines Ins. Co. v. Care Centers, Inc., 484 F. Supp.
                   2d 855 (N.D. Ill. 2007) (side-switching expert disqualified even
                   though she had no confidences from first engagement); 1210 Colvin
                   Ave., Inc. v. Tops Markets, L.L.C., 2006 U.S. Dist LEXIS 93689
                   (W.D.N.Y. Dec. 28, 2006) (but, lawyer not disqualified); Pinal
                   Creek Group v. Newmont Mining Corp., 312 F. Supp. 2d 1212 (D.
                   Ariz. 2004); United States v. Salamanca, 244 F. Supp. 2d 1023
                   (D.S.D. 2003); Cordy v. Sherwin-Williams Co., 156 F.R.D. 575
                   (D.N.J. 1994); Sells v. Wamser, 158 F.R.D. 390 (S.D. Ohio 1994)
                   (opposing experts from the same firm unseemly); W.R. Grace & Co.
                   v. Gracecare, Inc., 152 F.R.D. 61 (D. Md. 1993); Wang
                   Laboratories, Inc. v. Toshiba Corp., 762 F. Supp. 1246 (E.D. Va.
                   1991); Marvin Lumber & Cedar Co. v. Norton Co., 113 F.R.D. 588
                   (D. Minn. 1986); Miles v. Farrell, 549 F. Supp. 82 (N.D. Ill. 1982);
                   Sowders v. Lewis, 2007 Ky. LEXIS 271 (Ky. Dec. 20, 2007);
                   Conforti & Eisele, Inc. v. Div. of Bld'g. and Const., 405 A.2d 487
                   (N.J. Super. 1979); Mitchell v. Wilmore, 981 P.2d 172 (Colo. 1999);
                   Turner v. Thiel, 262 Va. 597 (Va. 2001)

                         Expert Not Disqualified. Tidemann v. Nadler Golf Car Sales,
                   Inc., 224 F.3d 719 (7th Cir. 2000) (other side's lawyer merely
                   served subpoena on expert to get fact testimony); Astrazeneca
                   Pharmeceuticals, LP v. Teva Pharmaceuticals USA, Inc., 2007 U.S.
                   Dist. LEXIS 88996 (D.N.J. Dec. 4, 2007) (one expert disqualified,
                   the other not); Baghdady v. Baghdady, 2007 U.S. Dist. LEXIS
                   84453 (D. Conn. Nov. 15, 2007); Wright v. United States, 2007 U.S.
                   Dist. LEXIS 81274 (D. Ariz. Oct. 18, 2007) (alright for treating
                   doctor and expert witness from same practice group to be on
                   opposite sides as long as no information changes hands); BP Amoco




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                   Chem. Co. v. Flint Hills Resources, LLC, 500 F. Supp. 2d 957 (N.D.
                   Ill. 2007); Coates v. Duffer’s Golf Center, Inc., 2007 U.S. Dist.
                   LEXIS 32362 (D. Mass. May 2, 2007) expert switched sides, but no
                   showing expert possessed confidences of first client); Owen v.
                   General Motors Corp., 2007 U.S. Dist. LEXIS 27152 (W.D. Mo.
                   April 12, 2007) (odd); Atlantic City Associates, LLC v. Carter &
                   Burgess Consults., Inc., 2007 U.S. Dist. LEXIS 1185 (D.N.J. Jan. 5,
                   2007) (relying upon Cherry Hill, below); Casey Industrial, Inc. v.
                   Seaboard Surety Co., 2006 U.S. Dist. LEXIS 74589 (E.D. Va. Oct.
                   2, 2006) (no showing that confidential information passed);In re
                   JDS Uniphase Corp. Sec. Lit., 2006 U.S. Dist. LEXIS 75123 (N.D.
                   Cal. Sept. 29, 2006) (no showing information exchanged); Estate of
                   Mylo Harvey v. Jones, 2006 U.S. Dist. LEXIS 45983 (W.D. Wash.
                   July 7, 2006); Yngenta Seeds, Inc. v. Monsanto Co., 2004 U.S. Dist.
                   LEXIS 19817 (D. Del. Sept. 27, 2004); Lacroix v. Bic Corp., 339 F.
                   Supp. 2d 196 (D. Mass. 2004) (expert had worked for other side,
                   but court held he did not learn enough to disqualify him in this
                   case); Hewlett-Packard Co. v. EMC Corp., 330 F. Supp. 2d 1087
                   (N.D. Cal. 2004); Grant Thornton, LLP v. Federal Deposit Ins.
                   Corp., 297 F. Supp. 2d 880 (S.D. W. Va. 2004) (Plaintiff
                   complained that defendant's expert had a conflict with another
                   government agency.); Wright v. Kaye, 593 S.E.2d 307 (Va. 2004)
                   (fact witness on one side and expert witness on other side
                   acceptable if no information exchanged); Mays v. Reassure America
                   Life Ins. Co., 293 F. Supp. 2d 954 (E.D. Ark. 2003); Rodriguez v.
                   Pataki, 293 F. Supp. 2d 305 (S.D.N.Y. Sept. 22, 2003) (no showing
                   that earlier work resulted in getting confidential information useful
                   in new matter); Popular, Inc. v. Popular Staffing Services Corp.,
                   Popular, Inc. v. Popular Staffing Services, Corp., 239 F. Supp. 2d
                   150 (D.P.R. 2003); Larson v. Rourick, 284 F. Supp. 2d 1155 (N.D.
                   Ia. 2002; In re Malden Mills Industries, Inc., 275 B.R. 670 (D.
                   Mass. 2002); Chamberlain Group, Inc. v. Interlogix, Inc., 2002 U.S.
                   Dist. LEXIS 6998 (N.D. Ill. 2002); Stencel v. The Fairchild Corp.,
                   174 F. Supp. 2d 1080 (C.D. Cal. 2000); United States v. Healthcare
                   Rehab Systems, Inc., 994 F. Supp. 244 (D.N.J. 1997); United States
                   ex. rel. Cherry Hill Convalescent Center, Inc. v. Healthcare Rehab
                   Systems, Inc., 994 F.Supp. 244 (D.N.J. 1997); In re Ambassador
                   Group, 879 F. Supp. 237 (E.D.N.Y. 1994); English Feedlot, Inc. v.
                   Norden Laboratories, Inc., 833 F. Supp. 1498 (D. Col. 1993);
                   Palmer v. Ozbek, 144 F.R.D. 66 (D. Md. 1992); Mayer v. Dell, 139
                   F.R.D. 1 (D.D.C. 1991); Procter & Gamble Co. v. Haugen, 184
                   F.R.D. 410 (D. Utah 1999); Great Lakes Dredge & Dock Co. v.
                   Harnischfeger Corp., 734 F. Supp. 334 (N.D. Ill. 1990); Stanford v.
                   Kuwait Airways Corp., 1989 U.S. Dist. LEXIS 7633 (S.D.N.Y.
                   1989); Riley v. Dow Chemical Co., 123 F.R.D. 639 (N.D. Cal.
                   1989); Nikkal Ind., Ltd. v. Salton, Inc., 689 F. Supp. 187 (S.D.N.Y.
                   1988); Paul v. Rawlings Sporting Goods Co., 123 F.R.D. 271 (S.D.
                   Ohio 1988); Western Digital Corp. v. Superior Court, 71 Cal. Rptr.
                   2d 179 (Cal. App. 1998); Nelson v. McCreary, 694 A.2d 897 (D.C.
                   1997); Graham v. Gielchinsky, 599 A.2d 149 (N.J. 1991) (no new
                   trial, but court enunciated rule that consultants who change sides




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                   should not be allowed to testify); Roundpoint v. V.N.A., Inc., 621
                   N.Y.S.2d 161 (N.Y. App. 1995); Connors v. Dawgert, 38 Pa. D. &
                   C.4th 367 (Lackawanna County, Common Pleas 1998): Donovan v.
                   Bowling, 706 A.2d 937 (R.I. 1998); In re American Home Products
                   Corp., 985 S.W.2d 68 (Tex. 1998); Formosa Plastics Corp. v.
                   Kajima Int’l., Inc., 216 S.W.3d 436 (Tex. App. 2006) ; In re
                   Firestorm 1991, 916 P.2d 411 (Wash. 1996); State of West Virginia
                   v. Clawges, 620 S.E.2d 162 (W. Va. 2005) (witness changed sides,
                   but information obtained from first client would be discovered in
                   any event); Secura Ins. Co v. Wisconsin Pub. Service Corp., 457
                   N.W.2d 549 (Wis. App. 1990).

                        Law Review. Kendall Coffey, Inherent Judicial Authority and
                   the Expert Disqualification Doctrine, 56 FLA. L. REV. 195 (2004)

                        In Great Lakes experts on both sides sometimes worked
                   together at the same firm. The court held that where there was no
                   showing that confidential information about the case at hand was
                   exchanged, there would be no disqualification. Western Digital is
                   similar. One side had interviewed persons at an engineering firm
                   but decided not to hire them. The other side hired different persons
                   from the same firm. Because the firm created a screen between the
                   two groups, the court ruled that the experts should not be
                   disqualified.

                        Joint Expert Becomes Expert for One Party. White v. Davis,
                   592 S.E.2d 265 (N.C. App. 2004). The parties to a divorce action,
                   both doctors, retained a joint expert to value their practices for
                   purposes of an equitable distribution. The plaintiff became
                   dissatisfied with the expert and withdrew from the arrangement.
                   The defendant wanted to use the expert anyway, and the plaintiff
                   objected. The court held in this opinion that the parties had
                   intended the expert to have information from both. Because the
                   expert would not be using information gathered in confidence from
                   the plaintiff, the court held that the expert did not have a conflict
                   and could testify for the defendant.

                        Expert Firm for One Party Purchases Expert Firm for other
                   Party. G.M. Harston Construction Co., Inc. v. City of Chicago,
                   2004 U.S. Dist. LEXIS 15185 (N.D. Ill. Aug. 5, 2004). Plaintiff
                   retained ACo as its expert. Defendant retained BCo as its expert.
                   While this case was underway, ACo purchased the assets of BCo.
                   Plaintiff offered to enter into a screening arrangement, but the
                   Defendant refused. Plaintiff then moved to disqualify Defendant’s
                   expert. The court denied the motion, noting that Defendant had
                   spent $300,000 on its expert, while Plaintiff’s relationship with its
                   expert had just begun. The court said – but did not rule – that
                   Plaintiff would have to get another expert. The court also expressed
                   confidence that Defendant’s expert personnel formerly from BCo
                   would not communicate about this case with the personnel formerly
                   from ACo. But, in AMERICO v. PricewaterhouseCoopers, LLP,




http://www.freivogelonconflicts.com/new_page_33.htm                                         1/27/2008
Expert Witnesses                                                                           Page 6 of 7



                   Superior Court of Maricopa County, Arizona, CIV 2003-011032,
                   March 30, 2004, the court allowed both experts to continue
                   provided their combined firm erects a screen between them. In
                   Formosa Plastics Corp., USA v. Kajima Int’l., Inc., 2004 Tex. App.
                   LEXIS 9950 (Tex. App. Nov. 10, 2004), both sides hired experts
                   from different organizations, but both organizations were controlled
                   by one of the experts. The court felt they were too close and
                   disqualified that expert (the other expert had ceased to function in
                   the case).


                           Contact with Expert as Violation of Court Rules

                        ABA Op. 93-378 (1993) discusses the ethical ramifications of
                   an ex parte contact with the other side's expert. It points out that
                   such a contact could violate Rule 26(b)(4) of the Federal Rules of
                   Civil Procedure or similar state court rules. The court held that ex
                   parte contact with the other side's expert was a serious violation of
                   court procedural rules in the following cases: American Protection
                   Ins. Co. v. MGM Grand Hotel-Las Vegas, 748 F.2d 1293 (9th Cir.
                   1984); Campbell Industries v. M/V Gemini, 619 F.2d 24 (9th Cir.
                   1980); and Heyde v. Xtraman, Inc., 404 S.E.2d 607 (Ga. App.
                   1991). See, too, Erickson v. Newmar Corp., 87 F.3d 298 (9th Cir.
                   1996). The ABA Committee opined that such a violation is also a
                   violation of Model Rule 3.4(c), which provides:

                         A lawyer shall not: . . . (c) knowingly disobey an
                         obligation under the rules of a tribunal except for an
                         open refusal based on an assertion that no valid
                         obligation exists; . . . .

                         Ore. Op. 1992-132 (1992) makes the same observation. It said
                   that the violation would be clear in federal courts because of Rule
                   26(c)(4). By violating Rule 26(c)(4), the lawyer would violate
                   Oregon Disciplinary Rule 7-106(C)(7) (same as ABA Model Code,
                   and the equivalent of Model Rule 3.4(c)). It observed that Oregon
                   state court rules do not have an equivalent to Rule 26 and that, as a
                   result, ex parte contact with the other side's expert would not be a
                   violation of state ethics rules. Regardless of whether such a contact
                   would be unethical, the cases in the foregoing paragraphs teach that
                   it could result in the disqualification of the expert or the lawyer
                   making the contact.


                        Articles. For an outstanding, and far deeper, discussion of
                   these very issues, see Richmond, Expert Witness Conflicts and
                   Compensation, 67 TENN. L.R. 909 (2000). See, too, Murphy,
                   Expert Witnesses at Trial: Where Are the Ethics, 14 GEO. J. LEGAL
                   ETHICS 217 (2000); and Lubet, Expert Witnesses: Ethics and
                   Professionalism, 12 GEO. J. LEGAL ETHICS 465 (1999). Patterson,
                   Conflicts of Interest in Scientific Expert Testimony, 40 WILLIAM &




http://www.freivogelonconflicts.com/new_page_33.htm                                         1/27/2008
Expert Witnesses                                                                               Page 7 of 7



                   MARY L. REV. 1313 (1999) has a title that is a little misleading. It
                   does not deal with the concepts discussed above. It is concerned
                   with witnesses' biases and believability and the admissibility of their
                   testimony under Daubert v. Merrell Dow Pharmaceutical, Inc., 509
                   U.S. 579 (1993) and its progeny.

                                               Other Expert Witness Cases

                         Brown v. Contemporary OB/GYN Associates, 794 A.2d 669
                   (Md. App. 2002). Lawyer H. Kenneth Armstrong represented a
                   defendant in this medical malpractice case. The first two trials
                   ended in mistrials. A Dr. Osborne was a plaintiffs' expert witness.
                   He testified in the first trial. Before the third trial Armstrong was
                   hired to defend Dr. Osborne in an unrelated malpractice case in
                   D.C. (the "Singleton" case) Before the third trial in this case
                   Armstrong met with Osborne to discuss the Singleton case. At the
                   third trial in this case Osborne was out of the country and could not
                   testify. The trial court felt that plaintiffs had not done enough to
                   ensure Osborne's presence and ordered plaintiffs to make do with
                   Osborne's testimony from the first trial. Plaintiffs lost the third trial
                   and moved for a new trial. One of plaintiffs' claims was that
                   Armstrong had a conflict of interest tainting Osborne. The trial
                   court denied the motion, and the appellate court affirmed. The court
                   noted that Armstrong did not represent Osborne when his testimony
                   was given and was not responsible for Osborne's unavailability at
                   the third trial.

                         Corning Inc. v. SRU Biosystems, 2005 U.S. Dist. LEXIS 22699
                   (D. Del. Oct. 5, 2005). Patent infringement case. Party A intended
                   to call a university professor as an expert witness. Party A
                   employed a scientist, a former student of the professor, who was
                   working on technology related to the patents in question. Party A
                   was concerned that Party B might bring up the professor-student
                   relationship to show that the professor had a conflict of interest and
                   was biased. Party A moved for an order in limine preventing Party
                   B from exploiting the relationship. The court denied the motion
                   stating that Party B could argue that the relationship was proof the
                   professor was biased.

                        Ethics opinions: Ala. Op. RO-01-02 (2001); Mo. Op. 2003-
                   0063 (undated).

                        Law Reviews. Douglas R. Richmond, Expert Witness
                   Conflicts and Compensation, 67 TENN. L. REV. 909 (2000) .

                   [Home] [Table of Contents] [Top of Page]
                   FF Freivogel on Conflicts




http://www.freivogelonconflicts.com/new_page_33.htm                                             1/27/2008
Practical Legal Ethics:

 Ethics in Employing and Using Experts



                     Out in front.

         Presented by: Lucian T. Pera, Partner
                         1                  February 26-27, 2008
Ethics in Employing and Using Experts

    •Ethics issues arising from employing 
    and using expert witnesses
    •Survey of the issues




                      2
Ethics in Employing and Using Experts

    •Sources of law on these questions:
      – Lawyer conduct concerning experts 
        governed by:
         • The rules of procedure
         • The lawyer ethics rules




                           3
Ethics in Employing and Using Experts

    •Sources of law on these questions:
      – What rules govern the conduct of 
        experts? 
         • Generally, not the lawyer ethics rules
         • The rules of the expert’s profession, if any
         • Possibly, attorney‐client privilege and work 
           product
         • Other common‐law principles…?



                           4
Ethics in Employing and Using Experts

    •Expert “conflicts of interest”?
      – Side‐switching experts
         • Any duty of loyalty?
         • Confidential information concerns




                          5
Ethics in Employing and Using Experts

    •Expert “conflicts of interest”?
      – Side‐straddling experts
         • Experts whose firms represent both sides
         • Obvious tactical concerns




                          6
Ethics in Employing and Using Experts

    •Experts with confidential information
      – Treating physicians
      – Experts with current or recent 
        confidential relationships with engaging 
        party
      – Former employees with confidential 
        information of parties or others
      – Current employees, officers of parties


                        7
Ethics in Employing and Using Experts

    •Former employees as opposing experts
      – Confidential or trade secrets information
      – Privileged information




                        8
Ethics in Employing and Using Experts

    •Confidentiality and experts
      – General rule:  Anything communicated 
        to expert is not confidential.
      – Importance of discussing this with 
        experts up front
      – Handling information produced under 
        protective orders 



                       9
Ethics in Employing and Using Experts

   •Ex parte contacts by counsel with experts
     – Federal Rule of Civil Procedure 26(a)(2)
     – ABA Formal Opinion 93‐378 (Nov. 8, 1993)
     – State and other privilege law




                      10
Ethics in Employing and Using Experts

    •Other uses of experts and their dangers
      – Consulting on strategy, discovery, trial
      – Investigations




                        11
Ethics in Employing and Using Experts

   •Consequences of problems with experts:
     – Lawyer disqualification for…
       • Ex parte contact with opposing expert
       • Retention of expert with opponent’s 
         confidential information
       • Being opposing expert’s former lawyer




                         12
Ethics in Employing and Using Experts

   •Consequences of problems with experts:
     – Expert disqualification for…
       • Present or former affiliation with opponent 
         (employment, officer, expert work)
       • Possession of opponent’s confidential 
         information




                          13
Ethics in Employing and Using Experts

    •Other potential consequences:
        • Lawyer discipline
        • Expert professional discipline
        • Malpractice or similar claims against either 
          experts or lawyers




                          14
Ethics in Employing and Using Experts

   •Resources on “conflicts” and expert 
   witnesses:
     – Freivogel on Conflicts
        • http://www.freivogelonconflicts.com/new_page_33.htm

     – David Hricik, Conflicts and Confidentiality: 
       The Ethical and Procedural Issues Concerning 
       Experts
     – Richard Flamm, Lawyer Disqualification §§
       2.5, 3.3, 34.1‐34.7 (2003)

                               15
Ethics in Employing and Using Experts

    •Practical ideas for reducing problems 
    with experts
      – Effective pre‐retention due diligence
         • With expert
         • Independent of expert (e.g., basic and 
           thorough internet searches)
      – Early engagement agreement



                           16
Ethics in Employing and Using Experts

    •Practical ideas for reducing problems 
    with experts
      – Written engagement agreement (your 
        form; not expert’s)
         • Consider defining scope of work
         • Consider defining work product to be 
           produced
         • Broad confidentiality terms



                          17
Ethics in Employing and Using Experts

    •Practical ideas for reducing problems 
    with experts
      – Written engagement agreement (your form;
        not expert’s)
         • Discussion, possible inclusion of terms
           concerning other current, future work for parties
         • Requirement that expert report any “conflict”
           promptly
         • Requirement that expert return or destroy all
           information, abide by instructions on
           confidentiality

                             18
Ethics in Employing and Using Experts

    •Practical ideas for reducing problems 
    with experts
      – Early disclosure of confidential 
        information
      – Explicit discussion of handling of 
        confidential information
      – Explicit discussion of communications 
        (e.g., email, voice mail), note‐taking, 
        annotations, drafts of affidavits or 
        reports)

                        19
Ethics in Employing and Using Experts

    •Practical ideas for reducing problems 
    with experts
      – Careful management of disclosed 
        information
         • If governing law permits confidentiality 
           from other parties, clearly identify such 
           information
         • Careful identification of information 
           otherwise confidential (e.g., under 
           protective order)

                           20
Ethics in Employing and Using Experts

    •Practical ideas for reducing problems 
    with experts
      – Prompt identification and resolution of 
        any “conflict”
      – Possible motion in limine concerning 
        “conflicting” relationship




                        21
Ethics in Employing and Using Experts




               Questions?




                  22
Practical Legal Ethics:

Ethics in Employing and Using Experts


                             Out in front.

                          Lucian T. Pera, Partner
 Brinkley Plaza ▪ 80 Monroe Avenue, Suite 700 ▪ Memphis, TN 38103-2467
                                 23
  Direct: 901-524-5278 ▪ E-Fax: 901-524-5378 ▪ lucian.pera@arlaw.com
           Conflicts and Confidentiality:

The Ethical and Procedural Issues Concerning Experts




             By Professor David Hricik

          Mercer University School of Law

                    Macon, GA

                David@Hricik.com




                       1
                                                    TABLE OF CONTENTS

I.       Introduction......................................................................................................................... 2
II.      Choice of law ...................................................................................................................... 2
   A. Choice of Law for Lawyer-Ethical Issues .......................................................................... 2
   B. Expert Ethical Rules. .......................................................................................................... 4
III.     Conflicts of Interests of Experts ......................................................................................... 7
   A. Introduction......................................................................................................................... 7
   B. Side-Switching Cases: The Duty of Loyalty for Experts is Minimal. ................................ 8
      1. The First Party Must Have Objectively Believed a Confidential Relationship Existed
      Between It and the Expert..................................................................................................... 11
      2. The First Party Must Prove It Disclosed Confidential Information to the Expert. .......... 12
   C. Experts Whose Firms Represent Both Sides to a Dispute. ............................................... 13
   D. Remedies........................................................................................................................... 15
IV.      Former Employees as Opposing Experts.......................................................................... 16
   A.       The Problem of Enforcement of Injunctions. ............................................................... 17
V.       Confidentiality and Experts .............................................................................................. 19
   A. Basic Distinctions: Consulting and Testifying Experts. ................................................... 19
   B. Disclosure of Your Testifying Experts’ Files in Related Cases. ...................................... 21
   C. Waiving Privilege and Work Product by Disclosure to Experts....................................... 22
   D. Access to Facts Known to and Opinions Held by Consulting Experts............................. 23
   E. Testifying Experts= Review of Consulting Experts= Materials....................................... 24
   F. Inadvertent Waiver of Expert=s Facts and Opinions........................................................ 25
VI.      The Propriety of Ex Parte Contacts with and by Experts................................................. 26
VII. Means to Reduce the Problems......................................................................................... 34
   A. Ensure that Employee Confidentiality Agreements are Broad and Enforceable.............. 35
   B. To Help Identify Conflicts, Ask the Expert About Prior Work for the Opposing Party or
   Opposing Counsel..................................................................................................................... 35
   C. Require the Expert to Sign a Confidentiality Agreement. ................................................ 35
   D. Formalize Retention of the Expert.................................................................................... 35
   E. Disclose Information and Get the Expert Working Early................................................. 36
   F. Identify Confidential Disclosures as Such........................................................................ 36
   G.       Advise the Expert Not to Talk About or Listen to Confidential................................... 36
   Information. .............................................................................................................................. 36
   H.       If a Conflict Does Arise, Raise it Promptly with Opposing Counsel. .......................... 36
   I. If the Conflict Cannot be Resolved, Raise it Promptly with the Court............................. 37
   J. Move In Limine to Exclude the Reference to the Conflicting Representation.................... 37
VIII.       Experts as Undercover Investigators ............................................................................ 38
   A. Overview of the Ethical Issues ......................................................................................... 39
   B. The Impact of Choice of Law Makes Even the Clearest Rule Vague .............................. 40
   C. Do Model Rules 4.2 or 4.3 Apply to Undercover Investigative Proceedings?................. 42
      1. Whether Undercover Investigations Are Within Rule 4.2............................................ 43
      2. Whether Under Cover Investigations Are Within Rule 4.3.......................................... 48
      3. Model Rules 4.1 and 8.4: Is Good Dishonesty Ethical? ............................................... 52
  d. Conclusion ............................................................................................................................ 60
IX.      Conclusions....................................................................................................................... 60


                                                                  i
I.     Introduction

       A variety of ethical issues arise whenever an attorney hires an expert, whether in a

personal injury case or a complex patent trial. It is important for lawyers to appreciate

the ethical issues because the potential impact on attorneys and clients of an ethical

violation can be substantial. Not only may a client spend substantial sums educating an

expert on a case only to have the expert disqualified, courts have even disqualified entire

law firms where the firm has had an improper contact with an expert retained by the

opposing party. Sanctions, striking of evidence, and other remedies may also be deemed

appropriate.

       Unfortunately, there is very little guidance in the case law with respect to several

of the key issues. For example, only a handful of federal district courts have addressed

how a conflict of interest facing an expert should be decided: are experts subject to the

same rules as attorneys; if not, what standards apply? There is, after all, no generic

“Experts’ Code of Ethics” and courts generally do not apply lawyer ethical rules to

nonlawyers. Even where the issue implications lawyer ethics, the choice of law rules that

apply with respect to ethical issues in many federal courts makes it difficult to know what

rule will apply – even to attorneys, and even if the attorney is licensed only in the state in

which a matter is pending.

       This ethical thicket is dense and poorly illuminated. This article surveys the

principal ethical issues that arise from using experts, and seeks to at least partially clear a

path, or partially illuminate, the dark ethical corners.

II.    Choice of law

       A.      Choice of Law for Lawyer-Ethical Issues



                                               2
        The complex issues concerning the choice of law problems that legal ethical

issues create have been the subject of considerable academic and judicial attention.1

There are two distinct aspects: the fact that the federal courts may not apply the same rule

as do state courts in the same state, and the fact that courts in different states apply

different rules.

        The local rules of the Northern and Southern Districts both adopt the Iowa Rules

of Professional Conduct (“Iowa Rules”) as governing all members of both courts and

define what constitutes “misconduct” and so can result in discipline. To that extent, Iowa

lawyers with cases in Iowa federal court can look solely to the Iowa Rules.

        However, where the question is one of ethics -- not discipline -- the choice of law

issue is extraordinarily complex.            As the Northern District reasoned in deciding a

disqualification motion:

                           In their submissions to the Court, the parties have
                   cited extensively to the Iowa Code of Professional
                   Responsibility and the corresponding Iowa case law. As
                   KBA does in its brief (Doc. 25, at 10.), the Court will
                   structure its argument around the framework of the Iowa
                   Code of Professional Conduct for the sake of simplicity.
                   The Court recognizes, however, that “[m]otions to
                   disqualify are substantive motions affecting the rights of
                   the parties and are determined by applying standards
                   developed under federal law.” In re Dressser Indus., Inc.,
                   972 F.2d 540, 543 (8th Cir.1992). Thus, in ruling on
                   Goss’s motion to disqualify, the Court will look to both the
                   Iowa Code of Professional Responsibility and the ethical
                   rules “announced by the national legal profession.” Id.

Goss     Graphics       Sys.,   Inc.    v.     Man     Roland     Drunkmaschinen

Aktiegesellschaft, 2000 WL 34031492, *4 (N.D. Iowa May 25, 2000).



1
         See Judith A. McMorrow, The (F)Utility of Rules: Regulating Attorney Conduct in Federal Court
Practice, 58 S.M.U. L. Rev. 3 (2005).

                                                   3
        Under the approach of Dresser, a court cannot rely solely on state ethics rules,

even if the district court has adopted them. Instead, the court must examine all of the

various ethical rules and sources…including the A.B.A Model Rules, the A.B.A. Model

Code, and the Restatement (Third) Law Governing Lawyers. See Dresser. Where those

standards conflict -- and they often do (why, otherwise, would we have district rules?) --

the lawyer must weigh the approach of each and decide on the proper rule.

        B.       Expert Ethical Rules.

        If the issue is the ethics of the expert, not the lawyer, the rules governing lawyers

do not apply. The courts have generally concluded that “the standard for conflicts

disqualification for attorneys is more stringent than that of experts.” In other words, the

same facts that will disqualify an attorney might not disqualify an expert.2 Thus, while

an entire law firm would readily be disqualified where two lawyers had been actually

retained to represent opposite sides in the same law suit,3 the same is not true for experts.

Different, lesser standards have generally been applied by the courts.4 (To be clear, one

court has applied Aattorney rules@ to experts was Marvin Lumber & Cedar Co. v. Norton

Co.5 This case has been questioned6 and is clearly an aberration.7)

        For example, where a lawyer has agreed to represent a party in a matter, it is

2
            See Chamberlain Group, Inc. v. Interlogix, Inc., 2002 WL 653893 (Ill. App. Apr. 19, 2002)
(collecting cases).
3
  . cf. In re American Airlines, Inc., 972 F.2d 605 (Fed. Cir. 1992).
4
  . Hansen at *3 ( (citing EEOC v. Locals 14 and 15, Int’l Union of Operating Engineers, 24 Fair Empl.
Prac. Cas (BNA) 1821, 25 Empl. Prac. Dec. (CCH) & 31,783 at 6 (S.D.N.Y. Feb. 11, 1981); Paul v.
Raulings Sporting Goods Co., 123 F.R.D. 271, 281 (S.D. Ohio 1988); English Feedlot, Inc. v. Norden
Labs., Inc., 833 F. Supp. 1498, 1501 (D. Colo. 1993); Cordy v. Sherwin-Williams Co., 156 F.R.D. 575, 580
(D.N.J. 1994).
5
  . 113 F.R.D. 588 (D. Minn 1986).
6
  . U. S. v. NHC Health Care Corp., 150 F. Supp.2d 1013 (W.D. Mo. 2001).
7
  . See also Butler-Tulio v. Scroggins, 774 A.2d 1209 (Md. App. 2001) (preliminary consultations with
expert can, if there is an exchange of confidences, lead to a conflict of interest if expert later shows up
adverse to party that sought to hire expert B an approach similar to that taken with attorneys in that
context).

                                                    4
generally irrebuttably presumed that the lawyer had access to confidential information.8

However, when it comes to expert disqualification, the usual presumptions -- that a client

who hires a lawyer shares information with him, and that a lawyer shares all information

with everyone in his firm -- do not apply. Indeed, courts appear willing to permit experts

to use “screens” (aka “Chinese walls”) to show that even if they had received

information, they have not shared it with other experts in the firm. Courts do not

generally permit use of screens in the context of attorney-client disqualification.9

         There are obvious reasons why courts do not apply the attorney disciplinary rules

to issues governing expert witness ethics: they are not, after all, lawyers and so are not

subject to those rules. In addition, courts are concerned about the practical impact of

applying those rules, particularly if the area of expertise is particularly narrow. As one

court explained:

         [E]ven if counsel reasonably assumed the existence of a confidential
         relationship, disqualification does not seem warranted where no privileged
         or confidential information passed. Were this not so, lawyers could then
         disable potentially troublesome experts merely bey retaining them,
         without intending to sue them as consultants. Lawyers using this ploy are
         not seeking expert help with their case; instead, they are attempting only
         to prevent opposing lawyers from obtaining an expert. This is not a
         legitimate use of experts, and courts should not countenance it by
         employing the disqualification sanction in aid of it.10

As one commentator explained:

         It is tempting to assume that the answers to these questions are provided
         by the Rules of Professional Conduct, which provide fairly specific
         guidance. The problem is that those Rules apply only to lawyers who are
         members of the Arizona State Bar. The Arizona Supreme Court has the
         power and jurisdiction to license and regulate attorneys practicing in

8
  . E.g., In re American Airlines, Inc., 972 F.2d 605 (5th Cir. 1992) (entire law firm disqualified where one
lawyer had previously received relevant confidential information).
9
  . See Chamberlain Group, Inc. v. Interlogix, Inc., 2002 WL 653893 (Ill. App. Apr. 19, 2002) (collecting
cases); Stencel v. Fairchild Corp., 174 F.Supp.2d 1080 (C.D. Cal. 2001) (same; rejecting strict imputation).
10
   . Wang, 762 F. Supp. at 1248 (citations omitted).

                                                     5
        Arizona. It is not at all clear that the Court has that ability to regulate the
        conduct of nonattorneys. Equally important, attorneys and experts perform
        different functions at trial. Attorneys are advocates. An expert may
        promote a party’s case, but the expert’s primary role is as a source of
        information. An expert is expected to use “scientific, technical, or other
        specialized knowledge [to] assist the trier of fact to understand the
        evidence or to determine a fact in issue.”11

        A final reason why experts are treated differently no doubt arises from the

distinction between facts known and opinions held by experts, and those known and held

by attorneys.       Generally, opinions and information known to testifying, but not

consulting, experts is readily discoverable.            Indeed, parties are required to disclose

information given to testifying experts.

        This distinction probably lies at the core of the different treatment given to

disqualification of experts and attorneys. Ameliorating against disqualification for hiring

an expert who had previously had a relationship with the other side is the fact that, at

least with respect to testifying experts, facts and opinions held by experts are

discoverable.     An excellent summary that appeared recently in an article on expert

witness conflicts succinctly summarizes the operation of the Federal Rules of Civil

Procedure:

               Under FRCP 26(a)(2), a testifying expert must disclose the data,
        conclusions and opinions that are to be the subject of his testimony, as
        well as the factual basis for that testimony. Thus, any preparatory
        materials furnished to him by an attorney are subject to discovery by
        opposing counsel, and may include attorney reports and memoranda that
        would ordinarily be subject to the work product protections afforded by
        Rule 26(b)(3). Similarly, Rule 26(b)(4)(A) allows opposing counsel to
        depose and request interrogatories from a testifying expert, in order to
        become aware of the subject matter of the expert’s proposed testimony
        and the background for such testimony. On the other hand, Rule
        26(b)(4)(B) protects opinions and the background materials of

11
 . Jeffrey Messing, Expert Witnesses & Conflicts of Interest, 38 Nov. Ariz. Att=y 28, 28 (2001) (footnotes
omitted). See McCarter, 296 B.R. at 755.


                                                    6
        nontestifying experts from discovery by opposing counsel, a discovery
        protection that can be overcome only by a showing of “exceptional
        circumstances”. Finally, to discourage expert cannibalization by opposing
        counsel during discovery, Rule 26(b)(4)(C) provides in certain
        circumstances for fee sharing of the costs of the expert by opposing
        counsel requesting the discovery.

                The rather favorable discovery climate for opposing counsel set up
        by the Rules comes into conflict with other rules that would normally
        protect trial preparation materials. For example, Rule 26(b)(3) -- while not
        addressing experts -- protects factual and opinion attorney work product
        from discovery except upon a showing of “substantial need” and “undue
        hardship” to obtain the substantial equivalent of the materials by other
        means. Rules 26(a)(2) and (b)(4), which govern the disclosure and
        discoverability of expert materials, are largely silent with respect to work
        product protection. Shifting attention to the adversary’s expert witness,
        Rule 32(a)(3) presents another danger, as it allows for the introduction of
        witness depositions for “any purpose” at trial if the (potential expert)
        witness is “unavailable” to testify. Thus, when you elect to depose an
        adversary’s expert witness, you run the risk of having the expert’s
        deposition admitted at trial (if he should become unavailable) without a
        proper cross-examination of the expert (because you do not normally want
        to expose your full cross-examination at the deposition, but merely want to
        “pin down” the expert’s positions).12


III.    Conflicts of Interests of Experts

        The use of experts in civil lawsuits is an area that is creating an increase in ethical

disputes. The number of cases cited in this article and decided just within the last few

years demonstrates that point. A lawyer who hires an expert with a conflict of interest

places her client at a disadvantage. Either actual harm could arise, if the expert were to

reveal confidential information to the opponent, or at minimum delay, expense, and

uncertainty could arise. This section addresses the rules governing conflicts of interest of

experts.

        A.      Introduction.

12
 . David H. Marion & Christopher Pushaw, Expert Witnesses: Pitfalls Posed by the Discovery Process, 3
Sedona Conf. J. 199, 202 (Fall 2002).


                                                 7
          Courts have generally held that they have power to disqualify experts under some

circumstances13 even though no specific rule governs various ethical issues associated

with experts. Only a small body of case law analyzes conflicts of interest of expert

witnesses, and virtually all of the cases are from federal district courts, or isolated

decisions from state appellate courts,14 and so are of only persuasive authority outside of

the specific jurisdiction in which they control. Despite the lack of a broad body of

appellate case law, a fairly uniform approach to the disqualification of expert witnesses

has been adopted

          The courts generally apply different rules depending on what type of conflict has

arisen.    They principally distinguish between “side-switching” experts -- an expert

retained by one party, who then does work for its opponent -- and conflicts where two

experts in the same firm inadvertently end up on opposite sides of the same case. The

courts separately analyze the question of former employees as opposing experts -- plainly

a sub-category of “side-switching” experts.              That fact pattern, therefore, discretely

analyzed below.

          This section now examines the rules governing disqualification of experts. The

categories are analyzed here.

          B.     Side-Switching Cases: The Duty of Loyalty for Experts is Minimal.

          Even though they do not apply to expert disqualification, an understanding of the

rules that apply to attorney disqualification is helpful to understand better the principles

applicable to expert disqualification. It is a mistake to assume that the same conduct that

would disqualify a lawyer will disqualify an expert.

13
 . Messing, Expert Witnesses & Conflicts of Interest, 38 Nov-Ariz. Att=y 28, 28 (Nov. 2001).
14
 . See generally, Kendall Coffey, Inherent Judicial Authority and the Expert Disqualification Doctrine, 56
Fla. L. Rev. 195 (2004).

                                                    8
         Absent unusual circumstances, an attorney who switches sides -- who actually

agrees to represent one party, but then shows up on the other side -- is going to be

disqualified. In the typical case, a lawyer who has represented a client in a matter will be

irrebuttably presumed to have gained confidential information relevant to the matter.15

Thus, even if the lawyer could “drop” the client like a hot potato and represent its

adversary in that matter, it would do no good: lawyers are presumed, by the fact of

engaging in a representation, to have acquired confidential information. Thus, they

cannot switch sides in the same matter in which they represented a client.16

         In contrast, experts sometimes can switch sides.                      Whether the expert is

disqualified from being adverse to a former customer depends B not on irrebuttable

presumptions B but on very different kinds of proof. Probably the most often cited side-

switching case is Paul v. Rawlings Sporting Goods Co.17 There, defendant=s counsel

consulted with a UC Berkeley professor about the design of a baseball helmet, and did so

without any written agreement. It was unclear whether the professor knew that he was

being consulted on a particular case. Later, plaintiff=s counsel hired the same professor.

The defendant sought to exclude the professor=s testimony, claiming a conflict of interest

existed since he had previously been on the defendant=s team. The court recognized that

it would have greatly clarified the issues had a written agreement been used. Absent an

agreement specifying the professor=s duties, the court concluded that whether it would

disqualify an expert who had previously agreed to represent one party in a matter, but

who then shows up on the other side, depended on a two-part inquiry:



15
   . See, e.g., In re American Airlines, Inc., 972 F.2d 605 (5th Cir. 1992).
16
   . There are some extremely narrow exceptions.
17
   . 123 F.R.D. 271 (S.D. Ohio 1988).

                                                       9
         First, was it objectively reasonable for the first party who claims to have
         retained the consultant to conclude that a confidential relationship existed?

         Second, was any confidential or privileged information disclosed by the
         first party to the consultant?

Larson v. Rourick, 284 F.Supp.2d 1155, 1156 (N.D. Iowa 2003). Courts have considered

a third element: the public interest in allowing or not allowing an expert to testify.” Id.18

        Courts readily disqualify experts who, in fact, actually agree to represent one party,

consult with that party and obtain information, but then show up on the other side.19 In

those circumstances, experts are treated no differently than lawyers.

         But where the answer to either question is in dispute, courts undertake an analysis

that is distinct from that which applies to attorney-client conflicts because they require

actual proof of each issue.           There must be proof that the expert actually received

information; no irrebuttable presumption will apply. Larson v. Rourick, 284 F.Supp.2d

1155 (N.D. Iowa 2003). In explaining the basis for the standards, a court emphasized

that a variety of interests are involved and explained the reasoning behind the two-part

test:

         Several competing interests are involved in changing side cases, including
         (1) the expert’s interest in pursuing the expert’s profession, (2) the
         moving party’s interest in not having its confidential communications
         revealed, and (3) the opposing party’s interest in obtaining the expert’s
         assistance and testimony. The manner in which these competing interests
18
   . Paul, 123 F. R. D. at 278. See Brooks Shoe Mfg. Co. v. Suave Shoe Corp., 716 F.2d 854 (11th Cir.
1983) (expert not disqualified where expert had not ever been actually retained and had not received
confidential information); Formosa Plastics Corp., USA v. Kajima Int’l., Inc., 2004 WL 2534207 (Tex. Ct.
App. 2004) (adopting Koch Ref. Co. v. Jennifer L. Boudreaux, 85 F. 3d 1178, 1181 (5th Cir. 1996) as matter
of first impression); In re McCarter, 296 B.R. 750, 755 (Bankr. E.D. Tenn. 2003); Lee v. Kaiser Found.
Health Plan, 65 Va. Cir. 389 (Cir. Ct. Va. 2004); In re Malden Mills Indus., Inc., 275 BR 670 (Bankr. D.
Mass. 2002) (collecting cases); Stencel v. Fairchild Corp., 174 F. Supp.2d 1080 (C.D. Cal. 2001) (applying
two part test, and rejecting strict imputation of expert confidences); Wang Labs., Inc. v. Toshiba Corp., 762
F. Supp. 1246, 1248 (E. D. Va. 1991) (disqualification inappropriate if no confidential relationship existed
or no confidential information was disclosed), aff=d in part, rev=d in part on other grounds, 993 F.2d 858
(Fed. Cir. 1993).
19
   . E.g., Turner v. Thiel, 553 S.E.2d 765 (Va. 2001); Marvin Lumber & Cedar Co. v. Norton Co., 113
F.R.D. 588 (D. Minn. 1986); Miles v. Farrell, 549 F. Supp. 82 (N. D. Ill. 1982).

                                                    10
        balance out ultimately depends on whether there was a confidential
        relationship and the extent of the communications involved.20

        At least one court has taken side-switching a step further by disqualifying an

expert who did not switch sides in the same matter, but in related ones. In Conforte &

Eisele, Inc. v. Division of Building & Constr.,21 the court entered an injunction precluding

a party from relying upon an expert who had worked for the other side in a different

phase of the same construction project.

        Thus, side-switching experts cannot be disqualified for the same reasons as may

lawyers. Although Aside-switching@ may not be limited to same-matter-based conflicts,

Conforte, supra, there must be proof that the expert had an obligation of confidentiality

and, in fact, received confidential information during the relationship.

        This article now addresses the two prongs relied upon by the court to determine

whether a side-switching expert must be disqualified. “Where the two-part test is applied

the party moving for disqualification of the adversary=s expert witness has the burden of

establishing both the existence of confidentiality and its nonwaiver.”22

                1. The First Party Must Have Objectively Believed a Confidential
                    Relationship Existed Between It and the Expert.

        In analyzing whether the lawyer reasonably believed that a confidential

relationship had been formed with the expert, courts tend to look at the formalities of

retaining the expert.      Where the lawyer has, for example, sent a letter confirming

retention of the expert, courts conclude that it was objectively reasonable for the lawyer



20
   . Brian Burke, Disqualifying an Opponent’s Expert When the Expert is Your Client’s Former Employee,
66 Def. Counsel J. 69, 69 (Jan. 1999).
21
   . 405 A.2d 487 (N.J. Super. 1979)
22
   . Walter R. Lancaster, Expert Witnesses in Civil Trials, ‘ 2:3 (Aug. 2003) (citing Cordy v. Sherwin
Williams Co., 156 F.R.D. 575 (D. N.J. 1995)).

                                                 11
to believe such a relationship had been formed.23

         In general, where the meetings are brief or informal, it is less likely that the first

element will be satisfied.24 Some cases reach what could be surprising results, and seem

to demand more than what some might consider an “objectively reasonable” basis. For

example, in Mayer v. Dell,25 the court found no confidential relationship had been

established even though the attorney had met with the expert once and had given him the

complaint. The court found it important that the expert had not been asked to sign a

confidentiality agreement and had not yet shared any information with the attorney.

         If the first element is satisfied, the expert can be disqualified if the other element

is present. The second element is proof of disclosure of confidential information

                  2. The First Party Must Prove It Disclosed Confidential Information
                     to the Expert.

         When deciding motions to disqualify attorneys who had agreed to represent a

client, but then appeared for the other side, courts presume (usually irrebuttably) that the

client imparted confidences to the lawyer, even if only the briefest conversation

occurred.26 Precisely the opposite rule applies in motions to disqualify experts, or so

most courts have reasoned. A party seeking to disqualify an opponent’s expert must be

prepared to demonstrate that confidential or privileged information was disclosed to the


23
   . See Hansen v. Umtech Industrieservice Und Spedition, GMBH, 1996 WL 622557, * 5 - 6 (D. Del. July
3, 1996) (court found relationship objectively existed where lawyer sent letter confirming retention and
reminding expert of need for confidentiality).
24
   . See, e.g., Mayer v. Dell, 139 F.R.D. 1 (D. D.C. 1991) (no disqualification where only evidence was of a
single consultation to permit the parties to determine whether they would later hire the expert); Palmer v.
Ozbek, 144 F.R.D. 66 (D. Md. 1992) (no disqualification where there was only a two hour meeting between
experts and expert, not involving the lawyer).
25
   . 139 F.R.D. 1 (D.D.C. 1991)
26
   . See generally, Flo-Con Sys., Inc. v. Servsteel Inc., 759 F. Supp. 456, 460 (N.D. Ind. 1990) (“In fact,
‘even the briefest conversation between a lawyer and a client can result in the disclosure of confidences. It
is the relationship between the prior representation and the present litigation that must be evaluated rather
than simply the duration and extent of the past representation.’“)(quoting Novo Terapeutisk v. Baxter
Travenol Lab., 607 F.2d 186, 195 (7th Cir. 1979 (en banc)).

                                                    12
expert.

          Thus the party seeking to disqualify a side-switching expert must do more than

prove the expert switched sides: the party must show the expert actually acquired

confidential information. Failure to do so often means failure of the movant to carry its

burden of proof.27

          This obviously needs to be done with care, in probably sealed or in camera

proceedings. The firm is, after all, being put to the task of disclosing to the court

information which it contends the other side should not be privy. Therefore, caution is

required.

          C.      Experts Whose Firms Represent Both Sides to a Dispute.

          The rarest form of conflict of interest involving expert witnesses arises when two

experts associated with the same firm agree to represent opposite sides of a dispute.

Obviously, this arises only when for some reason the conflicts system did not alert the

experts to the conflict.28

          Very few courts have analyzed this fact pattern. In general, they mention the two-

part test applicable to side-switching experts, but focus very particularly on the second

aspect of the test -- whether information was disclosed. They seemingly require an even

greater showing: not only must the party show that it disclosed information to one of the

firm’s experts, it must show that there is a real risk that that information has been, or will

be, shared with the opponent’s expert.

27
   . See English Feedlot, 833 F. Supp. at 1498 (no disclosure of information occurred, and so expert was not
disqualified for Aside-switching@).
28
   . E.g., Hansen v.Umtech Industrieservice Und Spedition, GMBH, 1996 WL 622557 (D. Del. July 3,
1996). While the courts have abjured relying upon attorney disqualification standards, they have struggled
in identifying the proper standards and appropriate remedy to apply “where an expert is retained by a party
to litigation, and then the adversary retains an expert who is in some way affiliated with the expert retained
by the first party.” Hansen at *3 (noting that there is “relatively sparse case law” on the issue and relying
on “the inherent power of federal courts” to disqualify an expert).

                                                     13
            It is not clear why the courts have taken this approach since confidentiality is not

the sole concern: the idea of having one firm work for both sides in a dispute could

create additional substantive conflicts. The experts may not challenge each other’s work

as vigorously, for example.29

            Thus, and without analyzing the issue in detail, the courts have effectively refused

to apply the presumption applied in law firm disqualification that everyone in a firm

shares all confidential information with each other, and have even examined whether

“screens” or other practical barriers were in place in the experts’ firm to prevent one

expert from sharing information with the other. Accordingly, where the facts show “the

absence of any evidence that substantive evidence was exchanged among the affiliated

experts, and... no prospect of future inadvertent disclosure” courts conclude

disqualification is improper.30 For example, if the expert had been consulted long ago

and had likely forgotten any information that had been disclosed, disqualification has

been denied.31 Likewise, if the expert had a brief consultation, then a year later joined

another firm where another expert was representing the opponent, a court denied

disqualification because it found nothing substantive had been exchanged among the

experts, they had limited contact, separate offices, and separate computer databases.32

            A recent case emphasized the requirement that it be shown that the expert whose

disqualification is sought actually possesses confidential material.33 There, a physician

employed in the same medical practice as the plaintiff’s medical expert was retained by

the defendants. The court adopted the majority approach and held that absent proof the

29
   .   See Sells v. Wamser, 158 F.R.D. 390 (S.D. Ohio 1994).
30
   .   Hansen, 1996 WL 622557 at *8.
31
   .   Id.
32
   .   EEOC, 25 Empl. Prac. Dec (CCH) & 31,783 at 7.
33
   .   Wright v. Kaye, 593 S.E. 2d 307, 316 (Va. 2004).

                                                     14
defendant’s expert had received confidences from his colleague, disqualification was

improper.

            In addition, and unlike law-firm disqualification, “screening” the experts upon

discovery of the conflict can assist in reducing the likelihood of disqualification. In

Western Digital Corp. v. Superior Court,34 the court found that the following affidavit

was sufficient to show that a screen warranting denial of a motion to disqualify a firm

where one expert had met three times with the movant, but another expert was now

representing the opposing party:

            I have never spoken to anyone about or been told about, directly or
            indirectly, anything at all having to do with what was discussed at a
            meeting or meetings between [the movant’s attorney and the expert]. I
            have been informed about the importance of not discussing our efforts for
            [the opponent] with [the expert] or anyone else that I know or believe
            spoke to [the movant’s attorney] about the dispute... I have not had any
            such conversations or communications with any such persons and I will
            not do so in the future.35

            Thus, where two experts in the same firm agree to be retained by lawyers

representing clients on the opposite side of the same dispute, disqualification is not

automatic. Courts apply a lower standard than they do with attorneys.

            D.       Remedies

            Not surprisingly the courts have tried to fashion the remedy to redress the harm.

Just as courts focus upon confidentiality as the principal concern implicated by an expert

facing a conflict of interest, so too they look at the impact upon confidentiality when

fashioning the remedy. So, for example, if the conflict of interest involves two experts at

the same firm, courts tend to permit the first-retained expert to continue to work on the



34
     . 71 Cal. Rptr.2d 179 (Cal. App. 1998).
35
     . Id.

                                               15
case.36 See also Teleconnect Co. v. Ensrud, 55 F.3d 357 (8th Cir. 1995) (suit for trade

secret misappropriation followed retention of former employee as expert).

IV.      Former Employees as Opposing Experts

         The courts apply the same standards in determining whether a former employee

who is serving as an expert for an opponent is disqualified as they do generally. “Parties

have sought to enjoin their former employees from consulting with their adversaries in

litigation by alleging obligations of confidentiality, basing their claims on common law

trade secret protection, employment confidentiality agreements, and attorney-client

privilege and work product doctrine.”37 Courts are concerned with balancing the various

competing interests present when the recipient of some training attempts to use that

training against its former master.38

         These same concerns are applied in slightly different terms by other courts. In

2002, in In re Bell Helicopter Textron, Inc.,39 the appellate court reversed a district

court’s decision denying a motion to disqualify brought to disqualify lawyers who had


36
   . E.g., Sells v. Wamser, 158 F.R.D. 390 (S.D. Ohio 1994) (reasoning that, since conflict arose because
second expert did not properly detect retention of first expert, it would put parties in the position as if he
had done so).
37
   . Brian Burke, Disqualifying an Opponent’s Expert When the Expert is Your Client’s Former Employee,
66 Def. Counsel J. 69, 69 (Jan. 1999).
38
   . See Wang Labs. Inc. v. CFR Assocs., Inc., 125 F.R.D. 10 (D. Mass 1989) (issuing protective order to
prevent plaintiff’s former employee from serving as defendant’s expert in patent infringement suit with
respect to any issues covered by former employee’s confidentiality agreement and precluding defendant
from showing expert any of plaintiff’s documents containing plaintiff’s trade secrets); Uniroyal Goodrich
Tire Co. v. Hudson, 873 F. Supp. 1037 (E.D. Mich. 1994) (permanently enjoining Uniroyal former
employee Hudson from consulting with plaintiffs against Uniroyal based upon broad prior confidentiality
agreement, since Hudson was not the “only tire expert available to testify as a plaintiff’s expert”), aff’d, 97
F.3d 1452 (6th Cir. 1996); American Motors Corp. v. Huffstutler, 575 N.E.2d 116 (Ohio 1991) (reinstating
permanent injunction prohibiting former employee from consulting against AMC in Jeep “rollover” cases,
in part because expert had improperly removed confidential materials from AMC prior to quitting);
Fruehauf Trailer Corp. v. Hagelthorn, 528 N.W.2d 778 (Mich. App.) (affirming denial of preliminary
injunction and dismissal of permanent injunction where court reasoned that it was very unlikely former
employee had obtained privileged information while employed), appeal denied, 543 N.W.2d 314 (1995);
Hayworth v. Schilli Leasing, Inc., 669 N.E.2d 165 (Ind. 1996) (reversing entry of injunction against same
former employee); U.S. v. NHC Health Care Corp.
39
   . 87 S.W.3d 139 (Tex. App. -- Fort Worth 2002).

                                                     16
hired a former employee of the opposing party, Bell Helicopters. While employed with

Bell, the expert had met with Bell’s attorneys and had discussed lawsuits concerning

crashes of Bell’s helicopters. The suit in which the motion to disqualify was raised

involved a helicopter crash. The appellate court concluded that there was a substantial

relationship between the present suit and information that had been disclosed to the

expert, and disqualified the firm, concluding that it could not effectively screen the

expert, and held that Bell did not need to prove that the expert had actually disclosed

information to the firm.

        Similarly, in Green, Tweed of Del., Inc. v. DuPont Dow Elastomers, L.L.C.,40 the

court refused to disqualify a former employee who was serving as an expert for an

adversary since the former employer failed to prove that while the expert had been

employed he had been privy to confidential information relevant to the suit. It applied

the same standard that is applied outside this context, in the context of side-switching

experts, requiring that the moving part establish that the moving party establish that it

had a confidential relationship with the expert and that it had, during that relationship,

disclosed confidential or privileged information to the expert that is relevant to the

current litigation.41

        A.      The Problem of Enforcement of Injunctions.

        States are not bound by the Full Faith and Credit Clause of the U.S. Constitution

to honor an injunction entered by another state with respect to whether a former




40
 . 202 F.R.D. 426 (E.D. Pa. 2001).
41
 . The same test was applied in Space Sys./Loral v. Martin Marietta Corp., 1995 WL 686369 (N.D. Cal.
1995) (disqualifying former employee-expert) and Vikase Corp. v. W.R. Grace & Co.-Conn., 1992 WL
13679 (N.D. Ill. Jan. 24, 1992) (disqualifying former employee-expert).

                                                17
employee may or may not consult as an expert adverse to the former employer.42 In

Baker, the Supreme Court held that an injunction prohibiting a former employee of GM

from testifying against GM in Michigan was not entitled to full faith and credit. The

court reasoned:

                 Michigan’s judgment, however, cannot reach beyond the Elwell-
        GM controversy to control proceedings against GM brought in other
        States, by other parties, asserting claims the merits of which Michigan has
        not considered. Michigan has no power over those parties, and no basis for
        commanding them to become intervenors in the Elwell-GM dispute. Most
        essentially, Michigan lacks authority to control courts elsewhere by
        precluding them, in actions brought by strangers to the Michigan
        litigation, from determining for themselves what witnesses are competent
        to testify and what evidence is relevant and admissible in their search for
        the truth.

                 As the District Court recognized, Michigan’s decree could operate
        against Elwell to preclude him from volunteering his testimony. But a
        Michigan court cannot, by entering the injunction to which Elwell and GM
        stipulated, dictate to a court in another jurisdiction that evidence relevant
        in the Bakers’ case--a controversy to which Michigan is foreign--shall be
        inadmissible. This conclusion creates no general exception to the full faith
        and credit command, and surely does not permit a State to refuse to honor
        a sister state judgment based on the forum’s choice of law or policy
        preferences. Rather, we simply recognize that, just as the mechanisms for
        enforcing a judgment do not travel with the judgment itself for purposes of
        full faith and credit, and just as one State’s judgment cannot automatically
        transfer title to land in another State, similarly the Michigan decree cannot
        determine evidentiary issues in a lawsuit brought by parties who were not
        subject to the jurisdiction of the Michigan court.43

        Although it is beyond the scope of this article, those lawyers drafting employee

confidentiality agreements should consider ways to address this potential problem.

Further, this problem would appear to apply with equal force to an order disqualifying an

expert who was not a former employee. That is, a disqualification order is arguably an


42
   . Brian Burke, Disqualifying an Opponent’s Expert When the Expert is Your Client’s Former Employee,
66 Def. Counsel J. 69, 76 (Jan. 1999) (citing Baker by Thomas v. Gen=l Motors Corp., 118 S. Ct. 657
(1998)).
43
   . Id. (citations and footnotes omitted).

                                                 18
injunction. Accordingly, an order disqualifying an expert from testifying in one state

should not be enforceable, as a judgment, outside the scope of the jurisdiction that issued

it. However, research revealed no authority addressing that precise issue.44

V.       Confidentiality and Experts

         A.       Basic Distinctions: Consulting and Testifying Experts.

         This section focuses on the Federal Rules of Civil Procedure.                         State rules

governing the discoverability of facts known by and opinions held by experts no doubt

vary from the federal rules. But the federal rules are useful because many states have

patterned their rules of civil procedure after the federal rules.

         Under the federal rules, materials provided to and considered by an expert in

formulating his opinion are generally discoverable.45                   Facts known to or held by

testifying experts are, as a result, discoverable as of right if they are relevant to a claim or

defense in the suit. In contrast, facts known to and opinions held by a non-testifying (or

“consulting”) expert are generally immune from discovery.46

         At the outset, the rules create an ambiguity: what about facts known to or

opinions held by an expert who was not specially retained, but who developed his

opinions for litigation? For example, suppose the lawyer talks to an expert, discloses

confidences, but never retains him? At least one court has held such information may be




44
   . See also Friedman v. Freidberg Law Corp., 44 F. Supp. 2d 902 (E.D. Mich. 1999) (distinguishing
Baker on other grounds).
45
   . FRCP 26(a)(4)(A) (AA party may depose any person who has been identified as an expert whose
opinions may be presented at trial.@).
46
   . Id. FRCP 26(a)(4)(B) (AA party may, through interrogatories or by deposition, discover facts known or
opinions held by an expert who has been retained or specially employed by another party in anticipation of
litigation or preparation for trial and who is not expected to be called as a witness at trial only... upon a
showing of exceptional circumstances under which it is impracticable for the party seeking discovery to
obtain facts or opinions on the same subject by other means.@)

                                                    19
discovered.47

        Significantly, once a person has been designated as a testifying expert, courts

often do not permit Ade-designation@ merely because the expert=s opinions or testimony

proves unfavorable.48 The Northern District examined this problem, stating:

                          This court is persuaded that whether the witness has
                 been designated as an expert expected to testify at trial
                 pursuant to Fed.R.Civ.P. 26(b)(4)(A) is a very significant
                 difference from the situation in which an expert has merely
                 been consulted by a party, but never designated as likely to
                 testify at trial. Such a consulted-but-never-designed expert
                 might properly be considered to fall under the work product
                 doctrine that protects matters prepared in anticipation of
                 litigation. For this reason also, the ability of an opposing
                 party to call a never-designated expert at trial should
                 depend upon a showing of “extraordinary circumstances.”
                          However, once an expert is designated, the expert is
                 recognized as presenting part of the common body of
                 discoverable, and generally admissible, information and
                 testimony available to all parties. The practical effect of a
                 Rule 26 designation of an expert is to make an expert
                 available for deposition by the opposing party, as
                 contrasted with subsection (B), authorizes discovery only
                 from designated experts and that discovery may not occur
                 until designation of an expert as expected to be called at
                 trial), and such a deposition preserves the testimony of the
                 expert, should the expert later become unavailable, or
                 provides a basis for impeachment, should the expert’s
                 opinion offered at trial differ. Thus, Rule 26 designation
                 waives the “free consultation” privilege a party enjoys as to
                 its non-testifying experts. The court therefore concludes
                 that designation of an expert as expected to be called at
                 trial, pursuant to Fed.R.Civ.P. 26(b)(4)(A), even if that
                 designation is subsequently withdrawn, takes the opposing
                 party’s demand to depose and use the expert at trial out of
                 the “exceptional circumstances” category of Rule
                 26(b)(4)(B).
House v. Combined Ins. Co. of Am., 168 F.R.D 236, 245 (N.D. Iowa 1996) (citations


47
 . See Harasimowicz v. McAllister, 78 F.R.D. 319, 320 (E. D. Pa. 1978).
48
 . See Furniture World, Inc. v. D.A.V. Thrift Stores, 168 F.R.D. 61 (D. N.M. 1996); In re Vestavia Assocs.,
Ltd., Partnership, 105 B.R. 680, 683 (Bankr. M.D. Fla. 1989).

                                                    20
omitted).

            Other courts take different approaches. Texas courts, for example, permit de-

designation but not if it is either (1) is part of a “bargain between adversaries to suppress

testimony;” or (2) “for some other improper purpose.”49                       Other courts take similar

approaches.50

            Thus, lawyers must ensure that any disclosure to an expert takes place only after

retention has occurred. Because of the absolute discoverability of information considered

by testifying experts, witnesses should be retained initially as consulting experts, and then

designated as testifying experts only if their opinions so warrant and the need for the

testimony comes to fruition.

            B.       Disclosure of Your Testifying Experts’ Files in Related Cases.

            Nowadays, experts are becoming so specialized that one expert is likely to have

given opinions, or have been asked to give opinions, in a variety of cases.                            Does

designating an expert as a witness require the attorney to produce the experts’ files in

related cases? If so, should an attorney seek such files?

            It is generally clear that a party must turn over (presuming an obligation to do so

has arisen, of course, such as by way of a request for production or court rule, such as the

Automatic Disclosure provisions of the Federal Rules of Civil Procedure) all documents

given to an expert. Suppose, however, that the expert was previously retained in a

different, but clearly related, matter. Can the expert preclude discovery into those other

files? At least one court has said that the expert could not.51 Thus, discovery into


49
   .    Castellanos v. Little John, 945 S.W.2d 236, 240 (Tex. App. -- San Antonio 1997, orig. proceeding).
50
   .    See, e.g., Callaway Golf Co. v. Dunlop Slazenger Group Americas, Inc., 2002 1906628 (D. Del. 2002).
51
   .    Herrick Co. v. Vetta Sports, 1998 U.S. Dist. LEXIS 14544 (S.D. N.Y. Sept. 14, 1998) (ethics expert had
to     turn over even reports that had not been provided to third parties in prior matters, reasoning that,

                                                       21
testimony on related opinions seems appropriate under this view.52

        The duty of disclosure recognized by the Herrick court also implicates a lawyer’s

responsibilities when retaining an expert. What can a lawyer do to preclude the expert

from later agreeing to testify in a case that will, as a result, waive privilege and work

product protection over information disclosed to the expert?

        C.       Waiving Privilege and Work Product by Disclosure to Experts.

        Generally, information considered by an expert is discoverable. The Federal

Rules do not make exception for privileged or work product information disclosed to an

expert.53 If you hand your testifying expert a bundle of privileged or work product

memoranda, therefore, have you waived protection over it?                 The courts split, but most

hold that disclosure of privileged or work product information to a testifying expert can

waive privilege, and ordinary work product, protection.54 AIt is never prudent for counsel

to assume that the work product doctrine will shield materials given to expert, especially

a testifying expert, from discovery by opposing counsel.@55

        Iowa courts have repeatedly examined waiver of privilege or work product and

generally follow prevailing law: privilege is often waived if disclosed for an expert, but

courts are more reluctant to find waive of ordinary work product and avoid finding

waiver or opinion work product.56


although that information “would normally be shielded by the work product doctrine or attorney-client
privilege,” those protections were waived once the expert was designated to testify.)
52
   . See also In re Wharton, 2005 WL 1405732 (Tex. App. Waco 2005, no pet.h.) (other files may show
bias).
53
   . See generally, Christa L. Klopfenstein, Discoverability of Work Product Materials Provided to
Testifying Experts, 32 Ind. L. Rev. 481 (1999).
54
   . See, e.g., Boring v. Keller, 97 F.R.D. 405, 408 (D. Colo. 1983). The split was succinctly summarized
recently. David H. Marion & Christopher Pushaw, Expert Witnesses: Pitfalls Posed by the Discovery
Process, 3 Sedona Conf. J. 199, 202 (Fall 2002).
55
   . Id.
56
    See Squealer Feeds v. Pickering, 530 N.W.2d 678, 685-86 (Iowa 1995) (privilege waived but not work

                                                   22
        An interesting example of this from another jurisdiction arose in In re

Omeprazole Patent Litig.,57 There, after an expert submitted a 284 paragraph expert

report, counsel sponsoring the expert notified the other side that it was “deleting” 216 of

the paragraphs. At the expert’s deposition, opposing counsel asked the expert why this

had been done. Counsel objected and instructed not to answer. The court held that, not

only that the instructions not to answer were improper, but that the work product as to

why the defenses described in the 216 paragraphs had been deleted.

        Another interesting case is U.S. Fidelity & Guaranty Co. v. Braspeto Oil Servs.

Co.58 There, the court addressed “how much” an expert had to “consider” work product

before it was deemed waived. The court required the party which had given the work

product to the expert to clearly show that it had not been considered.

        D.       Access to Facts Known to and Opinions Held by Consulting Experts.

        The Federal Rules provide broad protection to consulting experts, even those who

know opinions or facts adverse to the party designating the expert as nontestifying.

Generally, discovery of Afacts known or opinions held by an expert who has been

retained or specially employed by another party in anticipation of litigation or preparation

for trial and who is not expected to be called as a witness at trial only... upon a showing of

exceptional circumstances under which it is impracticable for the party seeking discovery

to obtain facts or opinions on the same subject by other means.@59

        This is ordinarily a difficult hurdle to clear. But where, for example, the expert



product); Moore v. R.J. Reynolds Tobacco Co., 194 F.R.D. 659, 664 C.S.D. Iowa 2000) (‘Opinion work
product has nearly absolute immunity from discovery”); Rail Intermodal Specialists, Inc. v. Gen’l Elec.
Capital Corp., 154 F.R.D. 218 (N.D. Iowa 1994).
57
   . 227 F. R. D. 227 (S.D.N.Y 2005).
58
   . 2002 WL 15652 (S.D. N.Y 2002).
59
   . FRCP 26(a)(4)(B) (emphasis added).

                                                   23
has knowledge of facts that can no longer be examined B suppose, for example, he made

a psychological examination of a plaintiff in a sexual harassment case immediately after a

harrowing episode, and the psychological impact has waned because the supervisor was

reassigned pending resolution of the lawsuit. Under such circumstances, the showing of

exceptional circumstances required by Rule 26 may be established.60

        As one final note, several courts have held that information possessed by even a

consulting expert acquired before he is retained are discoverable. The court in Adams v.

Shell Oil Co.,61 for example, allowed discovery into facts and opinions known by

consulting experts prior to their retention, but not into those learned or developed

afterwards.62 A close reading of the rules creates room for disagreement on this issue,

but generally the courts hold that information learned before or facts developed prior to

retention cannot be protected from discovery even when known to or held by a person

designated as a non-testifying expert.

        E.       Testifying Experts= Review of Consulting Experts= Materials.

        Suppose the report or work done by a non-testifying expert is given to a testifying

expert? If the testifying expert considers the materials, then the report is discoverable

(and presumably, so would be information held by the consulting expert).63


60
   . Compare Thompason v. The Haskell Co., 65 F. Empl. Prac. Case (BNA) 1088 (M.D Fla. 1994)
(allowing access to psychological report prepared closer to time of events even though psychologist was
designated as a nontestifying expert) with Chiquita Int=l Ltd. v. M/V Bolero Reefer, 1994 U.S. Dist. LEXIS
5820 (S.D. N.Y. 1994) (no discovery allowed of report of consulting expert, even though his report was of
a condition of a ship right after an accident had occurred, in part because other party could have, but did
not, make same inspection at the time of the events in issue).
61
   . 134 F.R.D. 148 (E. D. La. 1990).
62
   . See Grinnell Corp. v. Hackett, 70 F.R.D. 326 (D. R.I. 1976) (evidence not developed in anticipation of
trial was discoverable).
63
   . See Heitmann v. Concrete Pipe Machinery Co., 98 F.R.D. 740, 743 (E. D. Mo. 1983); Dominguez v.
Syntex Labs., Inc., 149 F.R.D. 158, 162 (S.D. Ind. 1993) (consulting expert=s materials remained
undiscoverable because testifying expert testified he did not review them, even though such materials were
provided to him).

                                                   24
        This rule B and the rule holding that generally speaking privilege is waived by

review by a testifying expert B mandates that experts not reveal the reports of consulting

experts, or attorney-client privileged or work product information either in preparation

for testifying by deposition or at trial. Doing so B using such reports to, for example,

refresh recollection, could result in waiver under Federal Rule of Evidence 611.64

        F.       Inadvertent Waiver of Expert=s Facts and Opinions.

        Inadvertent disclosure of information or opinions held by experts can occur in

myriad ways. Lawyers often forget that, particularly among experts in a very narrow

field, the experts likely know one another, attend conferences together, and may even be

friends. Especially where the expert has not testified very often, she may not understand

the need for confidentiality and the problems that disclosure can create.

        A decision of Judge Kent deals with this problem. There, the attorney improperly

engaged in an ex parte contact with a testifying expert, but the court stated that it would

consider the Aculpability@ of the witness who talked to the opposing party in determining

whether it was appropriate to disqualify or otherwise sanction the attorney.65

        Other courts have addressed the question of whether a consulting expert=s report

becomes discoverable when it was handed over to third parties.66 This would seem to be

the correct result: the rule exists not to promote confidentiality, as such, but instead to

facilitate development of a lawyer=s case. Thus, the same conduct that might result in

waiver of privilege would not necessarily result in waiver of protection over a consulting

expert=s report. Put the other way, disclosure of a privileged document to a third party is

64
   . See United States v. 22.80 Acres, 107 F.R.D. 20, 26 (N. D. Cal. 1985).
65
   . Cramer v. Sabine Transp. Co., 141 F. Supp.2d 727 (S.D. Tex. 2001) (footnotes omitted).
66
   . See Vanguard Sav. & Loan Ass=n v. Banks, 1995 U.S. Dist. LEXIS 2016 at * 7 (E.D. Pa. Feb. 17, 1995)
(no waiver).

                                                  25
inconsistent with a claim that the information is maintained in confidence; but the

disclosure to third parties of a consulting expert=s report, whatever the impact on its

confidentiality, does not implicate the reason for the protection of such reports, which is

not confidentiality, but trial preparation. However, there is a split on this issue.67

        Implicit in many cases is the notion that an expert should know not to discuss

matters with opposing parties and their lawyers and agents. As a consequence, lawyers

likely have an ethical obligation to instruct their experts both not to disclose information

and not to solicit breach of confidentiality by another. Experts may not understand the

seriousness of these issues. Written reminders B in the engagement letter with the expert,

for example B may be in necessary in some cases. Related to this, even if you believe

that you need not identify consulting experts as persons with knowledge of facts, doing

so -- and informing the other side that they are off-limits -- may assist in protecting

information known to and opinions held by experts.

VI. The Propriety of Ex Parte Contacts with and by Experts

        This section addresses, first, the rules governing ex parte contacts with the

opposing party’s experts. Second, it addresses the question of whether an expert can

make an ex parte contact that the lawyer is prohibited from herself making.

        Lawyers are prohibited generally from contacting agents and employees currently

employed or retained by an opposing party with respect to a matter.68                   Many bar

associations, however, reason that an expert should be treated as a fact witness for

purposes of Model Rule 4.2, and so, unless they are actually employed by the opposing

party, are not within the protection of Model Rule 4.2. Hence, Model Rule 4.2 does not

67
   . See Bank Russels Lambert v. Chase Manhattan Bank, 175 F.R.D. 34, 45 (S.D.N.Y. 1997) (discussing
split).
68
   . E.g., Model Rule 4.2.

                                                26
prohibit an ex parte contact with an opposing party=s expert witness.69 However, even if

the contact is ethically proper, the lawyer must ensure that he does not solicit from the

expert proprietary or privileged information from the expert.70

        The Iowa Rules are silent on this point. See Iowa Rule 32-4.2 (worded as is the

Model Rule).       In contrast, some state ethical rules specifically cover experts.                For

example, Texas Disciplinary Rule of Professional Conduct 4.02, cmt. 3 provides that

“Paragraph (b) of this Rule provides that unless authorized by law, experts employed or

retained by a lawyer for a particular matter should not be contacted by opposing counsel

regarding that matter without consent of the lawyer who retained them.” Other states

interpret their versions of Rule 4.2 to apply to experts.71

        Even if Rule 4.2 is not implicated, Rule 4.3 is implicated since the expert would

as a result not be “represented by counsel.” The lawyer may not act disinterested. Also,

putting Rule 4.3 to the side, the ABA in an opinion reasoned that such contacts implicate

Model Rule 3.4(c), since an ex parte contact may violate the applicable rules of civil

procedure.72

        Even if the ethical rules do not apply, there may be prohibitions arising from other

rules. Although the courts split on the issue, most courts hold that ex parte contacts with

a party’s experts are prohibited, either by unclear standards or by the implicit operation of

Federal Rule of Civil Procedure 26 or its state counterparts, which limit discovery of




69
   . See N.Y. St. B. Ass=n. Eth. Op. 577 (1986) (collecting opinions); Or.B. Ass=n. Eth. Op. 1999-154
(1998) (same).
70
   . See id.
71
   . See, e.g., Alaska B. Ass=n Eth. Op. 85-2 (1985) (recounting the difficulties and gamesmanship that
occurred after the bar association had originally concluded that ex parte contacts were not prohibited by
state ethics rules).
72
   . See Am. B. Ass’n formal Eth. Op. 93-378 (1993). The rules of civil procedure are next discussed.

                                                   27
experts to depositions and interrogatories.73

        In federal court, this is viewed as a function of Rule 26(b)(4)(A), which states that

a Aparty may depose any person who has been identified as an expert whose opinions

may be presented at trial.@         Likewise, as to consulting experts, the rules state that

discovery may be had by interrogatory or deposition only if the party seeking the

discovery establishes Aexceptional circumstances under which it is impracticable for the

party seeking discovery to obtain facts or opinion on the same subject by other means.@74

        The argument goes that these rules establish the exclusive means by which facts

or opinions may be gleaned from experts. As Moore explains: AAny discovery from an

expert must proceed under Rule 26(b)(4), and a litigant should not make ex parte contacts

with an adverse party=s expert.@75

        But, as with all things, there are disagreements and complexities. Putting to the

side the question of whether, by authorizing certain avenues of formal discovery, Rule 26

prohibits informal methods, several bar associations have reasoned that, in the absence of

a rule similar to Federal Rule of Civil Procedure 26, ex parte contacts are not improper,

73
   . E.g., Campbell Indus. v. M/V Gemini, 619 F.2d 24, 26 (9th Cir. 1980) (attorney who engages in an ex
parte contact with opposing expert commits “flagrant violation” of Fed R. Civ. P. 26(b)(4)(A)); Erickson
v. Newmar corp., 87 F.3d 298, 302 (9th Cir. 1996) (ex parte contact improper); Am. Prot. Ins. Co. v. MGM
Grand Hotel - Las Vegas, Inc., 765 F.2d 925 (9th Cir. 1985) (improper); Durflinger v. Artiles, 727 F.2d
888, 891 (10th Cir. 1984) (contact with consultant-only expert improper); Koch Ref. Co. v. Jennifer L.
Boudreaux MV, 85 F.3d 1178, 1183 (5th Cir. 1996) (court troubled by ex parte contact); Sanderson v.
Boddie-Noell Enterp., Inc., 227 F.R.D. 448 (E.D. Va. 2005) (Finding violation); Sewell v. Md. Dept. of
Transp., 206 F.R.D 545 (D. Md. 2002) (violation); Brown v. Contemporary OB/BYN Assocs., 794 A.2d 669
(Md. 2002) (finding no improper ex parte contact under unusual facts); DCH Health Serv. Corp. v. Waite,
115 Cal. Rptr.2d 847 (Cal. App. 2002) (Aa lawyer may be disqualified after improper contacts with an
opposing party=s expert witness@); In re firestorm, 916 P.2d 411, 419 (Wash. 1996) (improper;
disqualification denied); Shadow traffick Network v. Superior Court, 29 Cal. Rptr.2d 693, 699 (Cal. App.
1994) (improper); Heyde v. Xtraman, Inc., 404 S.E.2d 607, 611 (Ga. App. 1991) (improper); ABA Comm.
on Ethics and Prof. Responsibility, Formal Op. 93-378 (1993).
74
   . Fed. R. Civ. P. 26(b)(4)(B).
75
   . Moore=s Federal Rules Pamphlet (2002) at p. 326 (citing cases). See Geoffrey C. Hazard & W.
William Hodes, The Law of Lawyering ‘ 3.4, at 402 (2d ed. Supp. 1994) (“Since existing rules... carefully
provide for limited and controlled discovery of an opposing party’s expert witnesses, all other forms of
contact are impliedly prohibited.”).

                                                   28
since by its terms Model Rule 4.2 only applies to employees, of which an expert is not.76

On the other hand, numerous federal courts base their order disqualifying the expert not

on state bar rules, but on the court=s inherent power. These federal courts appear to

enforce their own notions of fairness, based on a common law approach, and not based

upon any sort of violation of a clear, bright-line rule

        As noted above, this duty may also require the lawyer under some circumstances

to admonish his experts not to discuss the matter with the opposing party’s experts. It

may not be a bad idea to inform each expert of the identity of the other experts, and to

provide reminders as to the confidentiality of information B no matter how mundane the

information may appear.

        Olson v. Snap Products, Inc.,77 is an interesting fact pattern in the ex parte contact

arena. There, the plaintiff’s attorney in a product liability action approached two people,

one of whom had agreed to serve as an expert in the case. (The other was “just” a former

employee, not an expert.) The alleged improper contact of an expert related to the

plaintiff’s contacts with Mr. Johnsen, who had been previously identified by the

defendants in an earlier lawsuit as a fact witness, since he helped design the product at

issue, but also was identified in that prior suit as someone who would “offer opinions

regarding the cause of the accident.”78 That case had settled without Johnsen ever being

identified as an expert.

        The plaintiff’s attorney contacted him. The plaintiff contended that he had made

the contact to find out Johnsen’s factual knowledge, not his expert opinions. Johnsen told

the plaintiff’s attorney during the call that he had in fact never even heard of the case

76
   . E.g., Oregon Eth. Op. 1998-154 (Or. St. B. Ass=n Sept. 1998).
77
   . 183 F.R.D. 539 (D. Minn. 1998)
78
   . 183 F.R.D. at 540.

                                                    29
plaintiff was calling about, and that he had not been retained in the case. The plaintiff’s

attorney and Johnsen then discussed the factual development of the product as well as

Johnsen’s opinions about the scientific aspects of the product in suit.79

        A few weeks later, the defendant’s attorney called and asked him to serve as an

expert in the case at bar. Just after that one of the plaintiff’s investigators showed up at

Johnsen’s house to discuss the product, and after that, defendants told plaintiff’s that

Johnsen was their expert. A motion to disqualify was soon filed.

        The district court denied it, though noting that ex parte contacts with opposing

experts was a sanctionable violation of Fed. R. Civ. P. 26(b)(4).80                 The court, though

denying the motion to disqualify, rejected the plaintiff’s argument that Rule 26(b) did not

cover Johnsen since he acquired his “expertise” as an employee. The passage where the

court rejected this argument provides:

        There is a conceptual attractiveness to this argument. It is imaginable that
        a witness could possess two subsets of information -- one involving
        matters of historic fact, and the other accumulated in preparation for trial -
        - but it is not so easily imaginable that experts should be approached, on
        an ex parte basis, so that the former could be explored, reserving any
        inquiry on the latter to an occasion when opposing counsel would be
        present. Such a practice would only invite controversy, overreaching, and
        professional misconduct. In practical terms, human perception and recall
        are not so neatly categorized. An expert’s recollection of the factual
        development of product technology will inevitably be influenced by an
        overlay of subjectivity, inclusive of those factors which evolve into an
        expert opinion. We reject, as unsound, any attempt to artificially balkanize
        an expert’s anticipated testimony into facts, and opinion, such as to allow
        informal discovery of the facts, while prohibiting an ex parte inquiry into
        the expert’s opinions. Quite simply, the dichotomy is unworkable.81

        The court then rejected the defendants’ argument that, once an expert always an


79
   . Id.
80
   . Citing Erickson v. Newmar Corp., 87 F.3d 298, 301-02 (9th Cir. 1996) (remanding for sanctions against
attorney who contacted opposing expert).
81
   . Id. at 543.

                                                   30
expert, since it would “inevitably chill a cord function of judicial proceedings -- the

search for the truth -- by permitting corporations to insulate factual witnesses from future

discovery by indelibly branding the witness as an ‘expert.”82 The court then held that,

since the plaintiff’s attorney did not know that Johnsen had been retained in the case at

bar (indeed, he hadn’t), disqualification was unwarranted.83

        An interesting case is Sanderson v. Boddie-Noel Enterp., Inc.,84 There, a TV

meteorologist was designated by plaintiff as an expert in a slip and fall case. The

defendant called the TV station manager and asked if this was against the station’s

policies. It was, and as a result the TV weatherman backed out of his retention with the

plaintiff.

        The court relied on authority interpreting FRCP 26(b)(4), but focused on the fact

that the communication had not been with the expert, but with the expert’s employer. It

reasoned that the lawyer indirectly violated the rule through the acts of the employer. As

a result, it sanctioned the lawyer for the fees the TV weatherman had been paid, the costs

of educating the replacement expert, and associated counsel costs.

        The second question this section addresses is whether the expert may make

contacts with opposing parties. The question often arises of whether a lawyer can have

someone else do what he is precluded from doing.

        An Eighth Circuit opinion, arising out of Minnesota, is worth mentioning. In

Greiner v. City of Champlin, 152 F.3d 787 (8th Cir. 1998), the trial court dismissed a

lawsuit in part because of improper ex parte contacts orchestrated by the plaintiff’s expert

with a defendant who was represented by counsel, and also awarded sanctions. In

82
   . Id.
83
   . Id.
84
   . 227 F.R.D. 448 (E.D. Va. 2005).

                                            31
affirming the district court’s imposition of sanctions, the court emphasized that the

lawyer was responsible for the conduct of the nonlawyer assistance because he knew of it

before it occurred and failed to take action.

           Similarly, the Philadelphia Bar Association issued an opinion of note on that

point.85 In that opinion, the attorney’s client in a workers’ compensation matter hired a

private investigator, who then made an ex parte contact with the claimant and obtained

damaging evidence from him. The bar association reasoned there was no violation of the

anti-contact rule since the lawyer did not hire, and did not even know about, the

investigator at the time the contact occurred.

           More complexities were recognized by the Philadelphia Bar Association in a 1995

opinion:

                   You have inquired of the Committee whether you may contact and,
           thereafter, retain and/or depose an expert witness retained by counsel for
           an opposing party. More specifically, the expert in question (“the expert”)
           has been retained by plaintiff’s counsel but cannot give an opinion
           favorable to plaintiff and will not, therefore, be “used”.

                   The Rules of Professional Conduct do not directly address the
           issues raised in your inquiry. Accordingly, the Committee does not, based
           upon the limited facts in your inquiry, see any express prohibition against
           contacting plaintiff’s expert. Nevertheless, it is the view of the Committee
           that several Rules of Professional Conduct would be implicated by such a
           contact and that these Rules need to be carefully weighed in deciding how
           and even whether to proceed.

                   Your dealings with the expert will be “transactions with persons
           other than clients” within the scope of Rules 4.1 through 4.4. This
           sequence of the Rules of Professional Conduct addresses a lawyer’s
           obligation of candor to third persons with whom he comes into contact on
           his client’s behalf.

                  Rule 4.2 governs “Communication With Person Represented By
           Counsel”. This Rule prohibits a lawyer from communicating “about the
           subject of the representation with a party the lawyer knows to be
85
     . Philadelphia Bar Ass’n Prof. Guidance Comm. Op. 2001-10 (Nov. 2001).

                                                    32
represented by another lawyer in the matter” unless the other lawyer
consents or the communication is “. . . authorized by law. . . “ Clearly,
therefore, you must satisfy yourself that the expert is not represented by
plaintiff’s attorney or any other lawyer, including the expert’s personal
counsel, who may have become involved “in the matter”.

       In the event the expert is not represented, you must still avoid
making any false statements of material fact or law (Rule 4.1), implying
you are disinterested or taking advantage of any misunderstanding’s on the
expert’s part as to your role in the matter (Rule 4.3), and using methods of
obtaining evidence that violate the legal rights of a third person (Rule 4.4).

        While you acknowledge that an expert cannot be compelled to give
testimony absent consent and reasonable compensation, the Committee
notes that the expert’s relationship with plaintiff or plaintiff’s counsel may
have given rise to responsibilities on the expert’s part which might be
jeopardized by your overtures. Such responsibilities could include
testimonial privileges such as those between a patient and psychotherapist.
Your contact with the expert may also threaten the expert’s obligations to
plaintiff or plaintiff’s counsel under the standards of professional conduct
which obtain in the expert’s own discipline. Other legal rights of the
witness could include those arising out of any potential contractual
relationship between the expert and plaintiff’s counsel; in this regard, we
note your suggestion that the expert continues to “be retained” by
plaintiff’s counsel.

        A key consideration underlying these Rules generally, and Rule
4.4 particularly, is the extent to which an opposing party’s expert may be
in possession of confidential information or work product of the opposing
party and/or his/her counsel, about which it would be improper to inquire.
In this connection, there was also some concern within the Committee that
there may be situations where an expert’s relationship with a party, either
directly or through counsel, may have become that of agent and principal,
in which case your responsibilities under Rule 4.1 through 4.4 may be
heightened. You should also remain mindful of explicit statutory
provisions or specific rules of civil procedure, such as Pa. R.C.P. 4003.6
governing discovery of treating physicians, which may apply.

        The Committee also wishes you to be aware of the position of the
American Bar Association in Formal Opinion 93-378. In that opinion, the
ABA concurred in the view that there was no outright prohibition against
ex parte communications with an expert retained by opposing counsel.
After expressing concerns similar to ours about the applicability of Rules
4.1 through 4.4, the ABA also commented on the relevance of subsections
(b), (c), (d) and (f) of Rule 3.4 of the Model Rules of Professional
Conduct. This Rule, entitled “Fairness to Opposing Party and Counsel”,


                                     33
        has been adopted, with significant modification, in Pennsylvania. Both
        versions of the Rule forbid a lawyer from falsifying evidence or
        counseling a witness to testify falsely [Model Rule 3.4(b) and
        Pennsylvania Rule 3.4(b)], and requesting a person other than a client to
        refrain from voluntarily giving relevant information to another party
        [Model Rule 3.4(f) and Pennsylvania Rule 3.4(d)]. Although the two
        versions of the Rule track conceptually, there are significant differences.
        Notably, Rule 3.4(d) as adopted in Pennsylvania forbids a lawyer from
        requesting “a person to voluntarily refrain from giving relevant
        information to another party unless: (1) the person is a relative or an
        employee or other agent of a client; and (2) the lawyer believes that the
        person’s interests will not be adversely affected and such conduct is not
        prohibited by Rule 4.2” (emphasis supplied). The emphasized language is
        not seen in the equivalent Model Rule, thus underscoring the Committee’s
        concern that the Rules give considerable weight and protection to the
        existence of a prior relationship between a witness and a party or the
        party’s counsel.

                The Committee concludes, therefore, that notwithstanding the lack
        of an outright prohibition in the Rules of Professional Conduct against
        contact with plaintiff’s expert witness, such a contact may be
        impermissible or, at the very least, tightly circumscribed depending upon
        the circumstances. Your remaining inquiries as to retaining and deposing
        the expert follow from whether your initial contacts with the expert can
        properly be undertaken.86

        Finally, Professor Easton writes that from “the perspective of the jurors, the

expert’s job is to serve as a witness, not an aide to one of the parties.”87 The point he is

making is that experts should be treated more like “witnesses” and less like “experts” and

so they should be treated just like other witnesses with respect to ex parte contacts:

nothing prevents you from contacting a fact witness who is aligned with the other side

(unless they are a current or former employee), and so why should experts be treated any

differently, he argues.

VII.    Means to Reduce the Problems.

        Courts    emphasize     that   the   “most    important    consideration     in   expert

86
 . Phila. Eth. Op. 94-22 (May 1995) (footnotes omitted).
87
 . Can we talk? Removing Counterproductive Ethical Restraints upon ex parte Communication Between
Attorneys and Adverse Expert Witnesses, 76 Ind. L. J. 647, 659 (Summer 2001).

                                               34
disqualification cases... is the preservation of confidentiality.”88 Given that approach, a

lawyer should take reasonable steps to ensure that her client is protected. The following

may be important steps to consider:

        A.       Ensure that Employee Confidentiality Agreements are Broad and
                 Enforceable.

        Confidentiality agreements should be drafted as broadly as permissible to protect

against “turn-coat” former employees.

        B.       To Help Identify Conflicts, Ask the Expert About Prior Work for the
                 Opposing Party or Opposing Counsel.

         As this article has shown, conflicts can arise under circumstances where an

expert is retained by a party adverse to a party for whom the expert previously had been

retained. The expert, therefore, is a key and perhaps sole source of such information.

Inquiry into conflicts should, as a result, be made early and preferably in writing.89

        C.       Require the Expert to Sign a Confidentiality Agreement.

        Lawyers have an obligation to maintain the confidentiality of any information

relating to the representation of a client. Therefore, any disclosure to a person should be

accompanied by a requirement that the person maintain the information as the lawyer is

required to do.90 Obviously, the designation of the expert as a testifying expert results in

a waiver of that protection, but if the expert is not designated to testify, then

confidentiality of information can be maintained.

        D.       Formalize Retention of the Expert.

          In order to avoid uncertainty over whether and when an expert was retained,

88
   . Hansen, 1996 WL 622557 at 8.
89
   . See generally, Wang, 762 F. Supp. at 1248 (“Counsel seeking to retain a consultant should inquire
specifically whether consultant’s past employment presents any problem.”)
90
   . Wang, 762 F. Supp. at 1248 (“Lawyers bear a burden to make clear to consultants that retention and a
confidential relationship are desired and intended.”)

                                                   35
steps should be taken to formalize the retention of the expert.91 Typically, this may

require a writing either from or to the expert to indicate the retention.

         E.       Disclose Information and Get the Expert Working Early.

         Leaving an expert open to cross-examination for failing to give her critical

information is clearly a bad idea. The expert should be given all pertinent information.92

Further, she should be given it early: particularly where the expert expresses doubt that

his opinion will be what the client’s needs indicate, the lawyer should get the expert

working early to avoid last-minute scrambling to identify an expert whose opinion

comports with the client’s needs.

         F.       Identify Confidential Disclosures as Such.

         This is important. Consulting experts who receive work product information

should be aware of that fact, and lawyers should, before providing that information to a

consulting expert, be aware that dissemination to the expert will likely result in waiver of

at least ordinary, but not opinion, work product protection.93

         G.       Advise the Expert Not to Talk About or Listen to Confidential
                  Information.

         Lawyers and their agents need to be wary of the need for confidentiality as well as

the need to prevent soliciting disclosure of an opponent’s confidences.

         H.       If a Conflict Does Arise, Raise it Promptly with Opposing Counsel.

91
   . See generally, Hansen, 1996 WL 622557 at *5-6 (court found relationship objectively existed where
lawyer sent letter confirming retention and reminding expert of need for confidentiality); Wang, 762 F.
Supp. at 1248 (“a lawyer seeking to retain an expert and establish a confidential relationship should make
this intention unmistakably clear and should confirm it in writing.”)
92
   . See generally, Wang, 762 F. Supp. at 1248 (courts will not disqualify experts retained by lawyers, but
who were not actually used as experts); Palmer v. Ozbeck, 144 F.R.D. 66 (D. Md. 1992) (cautioning
against disqualifying experts, particularly in highly specialized areas, where information has not been
disclosed in order to discourage lawyers from “retaining” all premier experts in an area with no intention of
actually soliciting their expertise).
93
   . See generally, Wang, 762 F. Supp. at 1248 (“Work-Product communications to the consultant should be
prominently labeled as such.”)

                                                    36
        In practice of law, it is likely that a conflict can go undetected. Companies

change names; memories fade; and in the rush of practice, details can be overlooked.

Thus, if a conflict is not detected prior to retention, but arises later, counsel should

promptly raise the issue with opposing counsel.94 The party that has the objection to the

expert can, if the objection is not raised promptly, be deemed to have waived the

objection. Conversely, if the party who has retained the expert becomes aware of a

conflict, and the other side is not aware of it, a last-minute motion to disqualify the expert

could be filed, derailing trial.

        I.       If the Conflict Cannot be Resolved, Raise it Promptly with the Court

          Many jurisdictions hold that conflicts of interest involving attorneys may be

waived. Although no waiver cases involving experts has apparently yet arisen, litigants

should presume that waiver will be extended into the context of expert conflict of

interests, and act accordingly. The movant should give attention to how to best present

the motion in light of its burden to prove the actual disclosure to the expert of client

confidences. Offering the evidence for in camera and ex parte inspection may be the

only means to prove the fact of disclosure without, as a consequence, disclosing the very

confidences which the movant wants to protect.

        J.       Move In Limine to Exclude the Reference to the Conflicting
                 Representation.

      Confidentiality is the principle concern governing whether to disqualify an expert,

and so experts who act under a conflict of interest may not be disqualified under all

circumstances. Where a motion to disqualify has failed, the moving litigant should move


94
  . See generally, Wang, 762 F. Supp. at 1248 (counsel should discuss issue “thoroughly in an effort to
resolve the dispute before it is raised in court.”)


                                                  37
in limine to exclude any reference to the fact that the expert had once agreed to work for

the movant. On the other hand, a lawyer who first contacted one expert at a firm, and

who successfully disqualified the expert at that firm who agreed to represent the second

party, should move in limine to preclude the non-moving party from referring to the

disqualification motion or the fact that an expert in the same firm had actually agreed to

advise the other side.

VIII. Experts as Undercover Investigators

         Counsel:            Telling the truth in civil litigation is, of course, a very
                             attractive proposition. But, I would like to visit with your
                             Honor further examining that proposition, because while
                             that might be nice in a perfect world, it is not the way the
                             system operates in litigation in this country.

         The Court:          Sad comment, counsel.95

         Only a few courts and bar associations have addressed the precise issue of

whether it is ethical for a lawyer to hire a third party to contact an actual or potential

party under deceitful circumstances to obtain evidence.                          The authorities that have

addressed the issue have split. Further, identically worded rules implicated by the use of

investigators are being interpreted differently by the various jurisdictions. With this split,

and with a lack of case law on the issue in most jurisdictions, lawyers who rely upon

undercover investigations do so at some peril. This section begins with choice of law. It

then discusses the split in the case law concerning whether and if so when lawyers may

engage in ex parte contacts with persons who are or were employed by party opponents,

since those rules and the principles underlying them are directly implicated by the cases

addressing undercover investigators. If the applicable rule permits a lawyer to contact a

95
         Monsanto Co. v. Aetna Cas. & Sur. Co., 593 A.2d 1013 (Del. Super. Ct. 1990) (“I embrace the
proposition that in civil litigation in this jurisdiction one who is in search of the truth must tell the truth.”),
mod., 1990 WL 200471 (Del. Super. Ct. Dec. 4, 1990).

                                                        38
low-level employee, for example, then having an investigator, instead of the lawyer,

make that contact cannot be unethical. Finally, it turns to the question of the use of

undercover investigators to contact opposing parties, before or during litigation, and

examines how the courts have split on the propriety of using lies to uncovering wrong

doing Lawyers have long used undercover investigators who are hired in order to

misrepresent their identity, purpose, or both in order to gather evidence in civil cases.

        The use of undercover investigators in trademark actions is apparently fairly long-

standing. See generally, John J. Steele, Ethics Issues in Trademark, Copyright, and

Unfair Competition Practice, SF87 ALI-ABA 461 (March 22, 2001). In trademark

actions, undercover investigators can be used in various ways. Mr. Steele posits two

examples:

                Client, upset about a cybersquatter, hires a non-attorney
        investigator to make discrete inquiries with the URL owner, without
        revealing the client’s identity, about the sale of the site. The owner does
        not respond. Client hires you to initiate legal proceedings, which you do.
        Opposing counsel makes an appearance. The next day, the owner contacts
        the investigator and indicates a willingness to sell. Client wants you to
        counsel investigator on how to handle the negotiations....

                After winning a trademark... injunction, you test the defendant’s
        compliance by hiring an investigator to approach the defendant and
        purchase items that were banned by the injunction. In doing so, the
        investigator lies about her identity and purpose.96

        A.       Overview of the Ethical Issues

        In order to understand the ethical issues underlying undercover investigations,

some background is necessary. Put in context, a contact by an undercover investigator
96
         Steele, SF 87 ALI-ABA at 470 (citations omitted). See generally David B. Isbell & Lucantonio N.
Salvi, Ethical Responsibility of Lawyers For Deception by Undercover Investigators and Discrimination
Testers: An Analysis of the Provisions Prohibiting Misrepresentation Under the Model Rules of
Professional Conduct, 8 Geo. J. Legal Eth. 791, 797-802 (1995) (discussing case law addressing housing
and employment discrimination testers); Julian J. Moore, Home Sweet Home: Examining the
(Mis)Application of the Anti-Contact Rule to Housing Discrimination Testers, 25 J. Legal Prof. 75, 78-79
(2001) (same, in housing context).

                                                  39
may be an ex parte contact with a represented person. If so, Model Rule 4.2 prohibits the

contact. Even if the person is not represented within the scope of Rule 4.2, Rule 4.3

requires certain disclosures be made by lawyers engaging in ex parte contacts; since the

lawyer may not hire a person to do indirectly what he cannot do directly, Rule 4.3 would

seem to apply. Thus, this first section accomplishes two goals. First, it analyzes the law

governing ex parte contacts, and, second, it provides the groundwork for understanding

the ethical issues that arise when a lawyer uses undercover investigators.

       B.      The Impact of Choice of Law Makes Even the Clearest Rule Vague

       In litigation where a lawyer considers contacting a former employee who resides

in another state, or where the suit is pending in a state other than the lawyer’s or

employee’s state, which state’s ethical rules govern the propriety of any contact? Is the

lawyer obligated to follow his state’s rules even if the forum’s rules are more lenient?

Can he do something which is unethical in his home state if it is ethical in the other state?

       The choice of law issue is important because some states absolutely prohibit ex

parte contacts with present or former employees, while others permit it almost

unconditionally, while still others have rules in different places in-between. Which rule

applies if the employee is in California, the lawyer in Minnesota, and the suit in

Oklahoma? What is the “national standard” -- to be applied by federal courts in those

“national standard” circuits -- if the national authorities openly disagree about what

approach should be used?

       The federal district court in McCallum faced this precise issue in the context of an

ex parte contact with employees of a party opponent, disregarded all notions of choice of

law based upon a state disciplinary rule, and instead reasoned as follows:



                                             40
               This court has adopted a code of conduct in its local rules. Local
       Rule 505 utilizes the Code of Professional Responsibility promulgated by
       the Supreme Court of North Carolina. Notwithstanding, this Court must
       look to federal law in order to interpret and apply those rules. That is, even
       when a federal court utilizes state ethics rules, it cannot abdicate to the
       state’s view of what constitutes professional conduct, even in diversity
       cases. Therefore, while this Court has adopted the North Carolina
       Professional Code as its code of conduct, it still must look to federal law
       for interpretation of those canons and in so doing may consult federal case
       law and other widely accepted national codes of conduct, such as the ABA
       Model Rules. In addition, the Court may presume the attorney to be
       familiar with and bound by the ethical rules of the courts in which the
       attorney is admitted to practice.97

The court rejected the plea, from the attorney whose conduct was at issue, to follow only

the North Carolina rules:

               This Court may apply its ethical code of conduct to out-of-state
       attorneys who practice before this Court and can sanction conduct which
       takes place in other states. By choosing to litigate in this Court, counsel
       submit to this Court’s federal law interpretation of ethical canons
       wherever the conduct takes place. Plaintiffs’ counsel has not shown that
       the interpretation set out today is in direct contradiction of any duty
       imposed by the state where he was admitted to practice or where the
       conduct occurred. Even if those states permitted the conduct at issue, that
       does not give an attorney permission to operate in contravention of the
       ethical duties as determined by this Court. If there is a disparity between
       ethical obligations of different states, counsel’s only choice is to follow the
       more expansive duty or seek guidance from this Court..98

       Likewise, in a Maryland Federal district court analyzed for the first time the

propriety of ex parte contacts with former employees of a party opponent. Noting that

the Maryland Rules of Professional Conduct were merely “the point of departure” for its

analysis, the court analyzed authorities applying the Model Code, the Model Rules, and

the Restatement of the Law Governing Lawyers.99           The court held that ex parte contacts

with former employees could be improper even though Maryland’s bar opinions had held


97
       McCallum, 104 F.R.D. at 108 (citations omitted).
98
       McCallum, 149 F.R.D. at 112 (emphasis added).
99
       Camden, 910 F. Supp. at 1118

                                                 41
precisely the opposite.100 Although recognizing that the law regarding ex parte contacts

was “blurry” and that the question was one of first impression, the court disqualified the

lawyers for violating its newly-minted rule, stating:

         The issue is not whether counsel incorrectly interpreted unsettled law, but
         whether [counsel] displayed an inappropriate disregard for the unsettled
         nature of that law. . . . [As] appellee stated in Cagguila [v. Wyeth Lab,
         Inc., 127 F.R.D. 653 (E.D. Pa. 1989)], ‘in such an uncertain area of ethical
         conduct, we believe that a prudent attorney would have given notice to
         opposing counsel of the intent to take such a statement.’101

         C.    Do Model Rules 4.2 or 4.3 Apply to Undercover Investigative
         Proceedings?

         In many cases, the evidence gathered by undercover investigations has been used

without challenge.102 It also appears fairly settled that government lawyers in conducting

criminal investigations may use undercover investigations.103

         However, it is an open question in most jurisdictions as to whether the same holds

true in civil litigation.104

         At least three rules are implicated when a lawyer directs that a nonlawyer provide


100
          See id. at 1119
101
          Camden, 910 F. Supp. at 1124, quoting University Patents, Inc. v. Kligman, 737 F. Supp. 325, 329
(E.D. Pa. 1990) (quoting Cagguila v. Wyeth Lab, Inc., 127 F. R. D. 653 (E.D. Pa. 1989)).
102
          See generally Isbell, 8 Geo. J. Legal Ethics at 797-802 (discussing numerous cases where evidence
gathered in undercover investigations was admitted without questioning whether the practice in some way
implicated legal ethical issues). See also Sanfill of Ga. Inc. v. Roberts, 502 S.E. 2d 343, 344 (Ct. App. Ga.
1998) (investigator called defendant to find location of former employee).
103
          See Utah St. B. Ethics Advisory Comm.. Op. No. 02-05 (March 18, 2002) (noting that both the
ABA and other states had found undercover investigatory practices ethical when conducted by government
lawyers to gather evidence); U.S. v. Parker, 165 F. Supp. 2d 431, 476 (W.D.N.Y. 2001) (holding that the
rule prohibiting deceit “does not apply to prosecuting attorneys who provide supervision and advice to
undercover investigations.”)
104
          See id. (“We do not address in this opinion and specifically reserve the issue of whether the
analysis and result of this opinion apply to a private lawyer’s investigative conduct that involves
dishonesty, fraud, misrepresentation or deceit.”); Am. B. Ass’n Comm. On Ethics and Professional
Responsibility Formal Op. 01-422 (2001) (“The Committee does not address in this opinion the application
of the Model Rules to deceitful, but lawful conduct by lawyers, either directly or through supervision of the
activities of agents and investigators, that often accompanies nonconsensual recording of conversations in
investigations of… discriminatory practices, and trademark infringement. We…. leave for another day
the… question of when investigative practices involving misrepresentations of identity and purpose
nonetheless may be ethical.”)

                                                     42
false information to third parties: whether the conduct constitutes an impermissible ex

parte contact with a “represented party” under Model Rule 4.2; whether any statements

made must comply with Model Rule 4.3, governing unrepresented parties; and whether a

dissembling investigator violates either Model Rule 4.1 or 8.4, which prohibit deceitful

conduct. This article now turns to those issues.

        Are there circumstances where an investigator can engage in activities that come

within Rule 4.2? If not, do the duties under Rule 4.3 apply and the investigator must

disclose his purpose, thus defeating the entire purpose of undercover investigations? The

answers to those questions depend upon interpretations of those rules, as well as the

timing of the investigation and its scope and structure.

        It is clear, at the outset, that a lawyer cannot simply use an investigator to do what

he cannot do, in terms of soliciting privileged information or obtaining admissions.105 A

lawyer cannot hire an investigator to call up a person covered by Rule 4.2 and obtain

information. Nor, if the person is not covered by Rule 4.2, may an attorney hire an
                                                                     106
investigator to engage in a contact that violates rule 4.3.                Where the lawyer is not

engaged in conduct simply designed to do indirectly what he cannot do directly -- incite

an employee to reveal privileged information, for example -- the issue becomes more

complex and the disagreements among the courts more pronounced.

                 1.       Whether Undercover Investigations Are Within Rule 4.2

105
        See, e.g., In re Environmental Ins. Declaratory Judgment Actions, 600 A.2d 165 (N.J. Super. Ct.
1991); Upjohn Co. Aetna Cas. & Sur. Co. 768 F. Supp. 1186 (W.D.Mich. 1991).
106
        Model Rule 5.3 (responsibilities of lawyer for activities of supervised non-lawyers. The Ethics
2000 version of the comments to Model Rule 4.2 provide:
                  “Communications authorized by law may also include investigative activities
                  of lawyers representing governmental entities, directly or through investigative
                  agents, prior to the commencement of criminal or civil enforcement proceedings.[]
                  This implies that a communication is not “authorized by law[] where the lawyer
                  conducting the activity is not representing a government entity.


                                                   43
       The timing of the investigation may be critical to whether contact with an

opposing party, or an employee thereof, violates Rule 4.2. If the investigation occurs

before the investigating attorney knows that the other side is represented by counsel, then

Rule 4.2 may not apply.107           While the courts agree that, once litigation is filed the

opposing party is obviously “represented by counsel” and the question of whether

individual employees of that party are “represented” in terms of rule 4.2 arises, they

disagree on when a lawyer “knows” that a party that has not yet been sued is nonetheless

“represented by counsel” under rule 4.2.108

       The leading commentators believe that the onset of litigation prevents the use of

any evidence gathering from persons who are covered by Rule 4.2:

       [T]here is little room for doubt that in some circumstances a lawyer’s use
       of discrimination testers to communicate with a party known to be
       represented by counsel with respect to the matter being investigated -- i.e.,
       the particular discriminatory practices being investigated -- would present
       a vicarious violation of Rule 4.2. As a practical matter, this may mean
       that lawyers may make use of testers only in investigating whether a
       particular enterprise is engaging in discriminatory practices, and in
       preparing litigation challenging such practices, but not in gathering
       further evidence once the litigation has been commenced or announced,
       and the target of litigation has made known that it is represented by
       counsel in the matter.109

       The courts are split. One court has held that rule 4.2 is violated by a contact by an

undercover investigator after litigation had begun. In Midwest Motor Sports, Inc. v.

Arctic Cat Sales, Inc.,110 the defendants had hired an undercover investigator to pose as

ordinary consumers and attempt to purchase snowmobiles that they were not authorized

to sell. In deciding that rule 4.2 had been violated, the court held that the contacts with


107
       See generally, Weider Sports Equip. Co. v. Fitness First, Inc., 912 F. Supp.2d 502 (D. Utah 1996).
108
       See id.
109
       Isbell, 8 Geo J. Legal Ethics at 823 (emphasis added; footnotes omitted).
110
       144 F. Supp.2d 1147 (D.S.D. 2001), aff’d, 2003 WL 22382960 (8th Cir. 2003).

                                                  44
the defendant’s owner, made for the purpose of obtaining admissions, violated Rule 4.2's

prohibition against contacts with “represented persons.”

       Several courts have concluded that, even if technically violated by undercover

investigations that obtain admissions from “represented” employees, for policy reasons

not expressed in the rule, contacts that are not designed to solicit privileged information

B even if they solicit admissions B does not violate the rule. Most recently, in Hill v.

Shell Oil Co.,111 a putative class action was brought against Shell, alleging that Shell

required African-American customers to pre-pay more often than white customers. To

prove their case, the class hired people to go buy gas, and videotaped the purchases to see

if there was disparate treatment. The court, though noting the employees were obviously

not high-level corporate employees, held that they were within the scope of Rule 4.2,

since it covered “employees whose acts or omissions in the matter can be imputed to the

organization; and employees whose admissions would be binding on the organization.”112

As a result, the court held that the employees were “represented” by counsel in terms of

Rule 4.2.

       However, after the Shell court held that the employees were “represented” by

counsel in terms of Rule 4.2, it turned to the question of whether the contact was

appropriate. The plaintiffs contended that the contacts “consist[] of normal customer

business transactions outside the scope of the rule’s prohibition.”113 The court held the

contacts were proper, reasoning:

       [W]e think there is a discernable continuum in the cases from clearly
       impermissible to clearly permissible conduct. Lawyers (and investigators)
       cannot trick protected employees into doing things or saying things they

111
       209 F. Supp.2d 876 (N.D.III. 2002).
112
       209 F. Supp.2d at 878.
113
       Id. at 879.

                                             45
        otherwise would not say or do. They cannot normally interview protected
        employees or ask them to fill out questionnaires. They probably can
        employee persons to play the role of customers seeking services on the
        same basis as the general public. They can videotape protected employees
        going about their activities in what those employees believe is the normal
        course.114

        Another court, in a trademark case, reached the same conclusion that the Shell

case reached B rule 4.2 is violated by contacts even with low level employees B but like

the Shell decision held that the fact that the rule was “technically” violated did not

warrant exclusion of evidence. In Gidatex, S.rL. v. Campaniello Imports, Ltd.,115 the

defendants filed a motion in limine to exclude evidence obtained by the plaintiff’s

undercover investigators from defendants’ sales clerks that showed that the defendant had

not complied with the plaintiff’s cease and desist letter. The evidence showed that the

investigators had misrepresented their purpose and identities in determining whether

trademark violations were not on-going.

        The court held that rule 4.2 was “technically” violated, since the sales clerks’

statements were being offered as “admissions;” and the clerks were “represented by

counsel” even though suit had not been filed, because of the “permanent adversarial

status of the parties.” 116 However, the court then held:

        Although Bailey's conduct technically satisfies the three-part test generally
        used to determine whether counsel has violated the disciplinary rules, I
        conclude that he did not violate the rules because his actions simply do not
        represent the type of conduct prohibited by the rules. The use of private
        investigators, posing as consumers and speaking to nominal parties who
        are not involved in any aspect of the litigation, does not constitute an
        end-run around the attorney/client privilege. Gidatex's investigators did
        not interview the sales clerks or trick them into making statements they
        otherwise would not have made.            Rather, the investigators merely

114
        Id. at 880 (holding taping was appropriate because the conversations were minimal, consisting of
asking whether the pump permitted prepayment, and beyond the audio range of the cameras).
115
        82 F. Supp.2d 119 (S.D.N.Y. 1999).
116
        82 F. Supp.2d at 124-25.

                                                   46
         recorded the normal business routine in the Campaniello showroom and
         warehouse.117

The court emphasized that its “analysis of the technical requirements of the disciplinary

rules only underscores my earlier conclusion that these rules do not apply in the context

of this case.”118

         Finally, a similar result was reached in Apple Corps. Ltd. v. Int’l Collectors

Soc’y.119 There, the plaintiff filed a motion for civil contempt alleging the defendants had

violated a prior order enjoining the defendants from selling certain stamps bearing

likeness of The Beatles except in a manner approved by the court. After the order had

been entered, the plaintiff’s attorney had her secretary order some of the stamps in a

manner that had not been approved by the court. Specifically, she had her several people

call the defendants using false names and giving false reasons for why they wanted to

order the stamps. The defendant sold the stamps in ways that were not approved by the

court.

         In addition to opposing the motion, the plaintiff sought sanctions, arguing that the

defendants had acted unethically in using undercover investigators to procure the

stamps.120 Under New Jersey’s rule, however, only members of the “litigation control

group” are covered by New Jersey’s rule 4.2.121 As a result, the contacts did not violate

rule 4.2.

         In dicta, however, the court also reasoned that Rule 4.2 could not be violated by

117
         82 F.Supp.2d at 125-26.
118
         82 F. Supp.2d at 126, n.3.
119
         15 F. Supp.2d 456 (D.N.J. 1998)
120
         The district court struggled mightily with the issue of choice of law, since the lawyers who
engaged in the conduct were licensed in New York, but the court was in New Jersey, which did not have a
rule specifying which rules applied. 15 F. Supp.2d at 472-73. The court ultimately held that New Jersey’s
rules applied.
121
         15 F. Supp.2d at 474.

                                                   47
the sort of typical undercover investigation:

               There is no evidence that any of Plaintiffs' investigators asked the
       sales representatives any questions about instructions given or received
       with regard to Beatles/Lennon stamps. Plaintiffs' investigators did not
       ask the sales representatives about Defendants' practices or their own
       practices or policies with regard to Beatles/Lennon stamps. The sales
       representatives' communication with Plaintiffs' counsel and investigators
       were limited to recommending which stamps to purchase and accepting an
       order for Sell-Off Stamps. The investigators did not ask any substantive
       questions other than whether they could order the Sell-Off Stamps. The
       only misrepresentations made were as to the callers' purpose in calling and
       their identities. They posed as normal consumers. The investigator did
       not make any misrepresentation that he or she was a Beatles/Lennon Club
       member.        In most instances, Plaintiffs' investigators told the sales
       representative that he or she was not a Beatles/Lennon Club member.
       Furthermore, Defendants charged all of Plaintiffs' investigators' the higher,
       non-member price for the Sell-Off Stamps.

               RPC 4.2 cannot apply where lawyers and/or their investigators,
       seeking to learn about current corporate misconduct, act as members of the
       general public to engage in ordinary business transactions with low-level
       employees of a represented corporation.          To apply the rule to the
       investigation which took place here would serve merely to immunize
       corporations from liability for unlawful activity, while not effectuating any
       of the purposes behind the rule. Accordingly, Ms. Weber's and Plaintiffs'
       investigators' communications with Defendants' sales representatives did
       not violate RPC 4.2.122

       The net impact of these decisions should be disconcerting, since they rely upon

policies that may or may not be adopted by other courts or by the disciplinary agency

responsible for licensing the lawyer involved. Even assuming rule 4.2 is not violated,

however, the lawyer must still be concerned with whether rule 4.3 is implicated.

                2.       Whether Under Cover Investigations Are Within Rule 4.3

       The structure of the investigation may bear on whether rule 4.3 applies. Some

argue that the typical undercover investigation is not of the type covered by these rules.

An investigation that is not designed to obtain information, but is instead intended to


122
       15 F. Supp.2d at 474-75 (citations omitted).

                                                  48
record conduct, is different. Based in part on this, the leading commentators argue that

rule 4.3 does not apply:

                        Like Rule 4.2, this Rule is clearly limited to
                circumstances where the lawyer is acting as a lawyer -- in
                this case, "dealing on behalf of a client." Moreover, the
                prohibitions embodied in the Rule -- on stating or implying
                to the unrepresented person addressed that the lawyer is
                disinterested, and on allowing such a person to persist in
                misunderstanding the lawyer's role -- clearly have
                application only to a lawyer who is acting as a lawyer. Like
                Rule 4.2, Rule 4.3 is intended to prevent a lawyer from
                taking advantage of a third party. While Rule 4.2 turns
                upon the actual conduct of the lawyer, however, Rule 4.3
                turns upon the presumed expectations of the third party in
                dealing with a lawyer. Thus, both of the prohibitions in
                Rule 4.3 rest on the premise that a person acting in the
                capacity of a lawyer engenders expectations as to probity
                and candor that the ethical rules require a lawyer to honor.
                A lawyer acting as a lawyer but disguising his identity as
                such in dealing with an unrepresented person can also
                violate Rule 4.3 because, although he is acting as a lawyer,
                he has allowed that person to misunderstand that fact.

                        Since Rule 4.3 rests upon assumed expectations of
                persons dealing directly with lawyers, it should have no
                vicarious applicability to lawyers supervising the activities
                of undercover investigators and testers, for the latter by
                definition do not represent themselves as acting on behalf
                of a lawyer, and so cannot engender expectations of the sort
                that Rule 4.3 is intended to protect. No unrepresented
                person is realistically likely to apply his or her expectations
                of lawyers to an investigator or tester. Rule 4.3 could apply,
                however, to the activities of an investigator who
                represented himself as acting on behalf of a lawyer.123

       Several courts have accepted this conclusion. One court suggested in dicta that

rule 4.3 did not apply, reasoning:

              Rule 4.3, Utah Rule of Professional Conduct treats contact with
       unrepresented persons. Icon, by this argument, assumes Thompson was
       not represented, either in an individual capacity, which he was not, or as a
       corporate representative which has not been established. The invocation
123
       Isbell, 8 Geo J. Legal Ethics at 825 (footnotes omitted).

                                                   49
        of Rule 4.3 accepts Thompson's status as that of a non-represented person.
        Under Rule 4.3 the lawyer, in dealing with such a person, is not to imply
        that the lawyer is not disinterested. However, Rule 4.3 may apply only to
        lawyers not investigators since the expectations are those of the
        unrepresented person dealing with a lawyer. It has been suggested the
        rule "should have no vicarious liability to lawyers supervising the
        activities of undercover investigators and testers, for the latter by
        definition do not represent themselves as acting on behalf of a lawyer so
        they cannot engender expectations of the sort that Rule 4.3 is to protect."
        No unrepresented person is realistically likely to apply his or her
        expectations of lawyers to an investigator or tester. Rule 4.3 could apply,
        however, to the activities of an investigator who represented himself as
        acting on behalf of a lawyer. Icon has not shown a basis for invocation of
        Rule 4.3 under this analysis.124

        In the trademark context, the court in Apple Corps. Ltd. v. Int’l Collectors

Soc’y,125 stated:

                The attorney disciplinary rules also restrict an attorney's
        communications with an unrepresented party. New Jersey RPC 4.3
        specifically provides protection for unrepresented employees. RPC 4.3
        states that:

                 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 …

                It is clear from the language of RPC 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." 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. Like RPC
        4.2, RPC 4.3 was intended to prevent a lawyer who fails to disclose his
        role in a matter from taking advantage of an unrepresented third party.

                Plaintiffs' counsel and investigators in testing compliance were not
        acting in the capacity of lawyers. Therefore, the prohibitions of RPC 4.3
        do not apply here. RPC 4.3 does not apply to straightforward transactions

124
          Weider Sports Equip. Co. v. Fitness First, Inc., 912 F. Supp.2d 502, 511-12 (D. Utah 1996)
(citations omitted) (quoting the Isbell article).
125
          15 F. Supp.2d 456, 476 (D.N.J. 1998)

                                                    50
       undertaken solely to determine in accordance with Rule 11 of the Federal
       Rules of Civil Procedure, the existence of a well-founded claim--in this
       case a claim of contempt.126

       At least one court has held, however, that Rule 4.3 and the admonitions required

apply to undercover investigations. The federal court for the District of South Dakota

reasoned:

              When an attorney or an investigator or other agent for the attorney
       attempts to conduct an ex parte interview with a current employee of an
       adversary organization or corporation, Rule 4.3... controls.

                ***

               The attorney or investigator shall: (1) fully disclose his or her
       representative capacity to the employee, (2) state the reason for seeking
       the interview as it concerns the attorney's client and the employer, and (3)
       inform the individual of his or her right to refuse to be interviewed. The
       attorney or investigator shall not, under any circumstances, seek to obtain
       attorney- client or work product information from the employee.127

       Even if Rule 4.3 does not apply, the investigating attorney has some additional

complications. The Apple court’s statement that the investigation must before it is begun

comply with Rule 11 obviously creates some additional issues: ostensibly, a lawyer may

not use undercover investigators to determine whether a claim exists; he may use it only

to confirm an otherwise well-founded claim. This creates, as one court observed, a

“troubled” relationship between Rule 4.2 and the requirement in Rule 11 that lawyers

conduct adequate pre-suit investigations:

               If read literally, and implying the broadest possible interpretation
       for the term admission, a construction could arise from the argument that
       any communication that could fit under Rule 801(d)(2)(D) F.R.E [defining
       “admissions”] would be prohibited, therefore, virtually any
       communication with an organization employee would be prevented
       without the organization's counsel being present or contacted if the
       organization is a party. This could prevent any pretrial inquiry that would

126
       (Citations omitted).
127
       144 F. Supp.2d at 1157 (citation omitted).

                                                    51
       gather evidence from an employee of an organization. In most instances,
       this would block acquisition of important evidence about corporate
       practices e.g. civil right violations, age discrimination, improper corporate
       or labor practices, improper commercial practices, and frauds. This
       application of Rule 4.2 would preclude, prior to litigation, the gathering of
       the necessary factual information to determine if a valid claim for relief
       could be maintained and in its most exaggerated context leave a party
       without a factual basis to assert an avenue of redress. The troubling
       features of this application of Rule 4.2 are observed in In re Air Crash
       Disaster Near Roselawn, Indiana, 909 F. Supp. 1116 (D.N.D.Ill.1995).
       The purpose of preserving attorney/client integrity is not involved where
       there is no protected interest under the attorney/client relationship standard
       of Upjohn. The concern for the coercion of an employee who may make
       a statement and to protect against exploitation can be dealt with in the
       context of the conduct of counsel and the trustworthiness of the statement.
       The rule does not protect against organizational counsel's own misconduct
       in interviewing organizational employees. Further, Rule 4.2 creates an
       "ethical minefield" for counsel, therefore, the court finds the suggested
       conclusion in In re Air Crash Disaster, supra not to be fully acceptable.128

       Even if rule 4.3 does not require the investigator to reveal his true identity and

admonish the interview subjects to obtain their own lawyers, rules 4.1 and 8.4 may be

implicated, since a lawyer who hires an investigator to conduct a deceitful investigation

may be indirectly misrepresenting material facts or engaging in dishonest conduct. If so,

those rules are violated.

                3.      Model Rules 4.1 and 8.4: Is Good Dishonesty Ethical?

       It is clear that honesty is incompatible with the use of testers and undercover

investigators. The question is: is the use of testers, as a result, incompatible with the

ethics rules?

       Model Rule 4.1 requires that “in the course of representing a client,” a lawyer not

knowingly Amake a false statement of material fact ... to a third person” or “fail to

disclose a material fact to a third person when disclosure is necessary to avoid assisting in

a criminal or fraudulent act by a client....”          Model Rule 8.4(c) prohibits engaging “in
128
       Weider, 912 F. Supp. at 508-09 (citations and footnotes omitted).

                                                  52
conduct involving dishonesty, fraud, deceit or misrepresentation.”

         In the abstract, acting “ethically” would certainly include acting “honestly.”

Many would say that honesty is one of the core values of the legal profession. In that

regard, disciplinary rules specifically require lawyers be “truthful” in statements to

others; require them to disclose material facts to avoid committing fraud; and prohibit

them     from      engaging      “in     conduct      involving      dishonesty,       fraud,     deceit    or

misrepresentation.” 129

         Yet, when lawyers are attempting to prove various wrongs, they often need to

resort to tactics that clearly do not involve full disclosure of material facts and which

clearly do involve deceit. For example, in employment or housing discrimination, it may

be helpful for a lawyer to have minorities apply for jobs or seek to rent an apartment in

order to obtain recordings or other evidence demonstrating that the would-be or actual

defendant is violating the law. Likewise, in trademark disputes, it may be helpful to the

trademark owner to purchase a product to demonstrate that “knock-offs” are being sold,

in violation of the trademark.130

         These undercover investigations by their nature require that the actors be less than

honest. These investigations also often include the use of surreptitious tape recording or

video taping B an activity which can be illegal in some states, and may be unethical in

others. The minority applicant does not, in fact, want the job; the trademark owner, in

fact, wishes the item were not available and has no need for it. In both circumstances, the

129
          Model Rules 4.1; 8.4(c). In addition, by violating rule 8.4, the lawyer could violate rule 4.4. See
Isbell, 8 Geo. J. Legal Ethics at 826. In addition, an investigation that is illegal is clearly unethical.
130
          Lawyers may not circumvent their ethical obligations by hiring a nonlawyer to do the work for
them. Model Rule 5.3(c)(1) (providing that a lawyer is responsible for conduct by a nonlawyer that
violates the rules if the lawyer “orders or, with the knowledge of the specific conduct, ratifies the conduct
involved.”)


                                                      53
goal of the contact is to gather evidence, not to rent an apartment or buy a product or

service. They no doubt assist the victim of the wrong by permitting evidence to be

gathered that could not be obtained were total honesty required. Whether this form of

inarguably dishonest and deceitful conduct violate the rules in the context of civil

litigation is a question that has split the courts, bar associations, and commentators.

          No one seems to dispute, for example, that a person who dissembles as to his

purpose or identity in making a contact is, in fact, making a misrepresentation of material

fact. The rules prohibit doing so.

          That is where the disagreement begins.

          On the one hand, perhaps a majority of authorities reason that the fact that the

conduct violates the rules does not end the inquiry: the issue should be whether the

deeper issue of whether the conduct furthers the goals of the profession, and not whether

when viewed literally the conduct violates the rule. Values, not literalism, matters most,

some say, and the values of being free from discrimination or freedom from infringement

of property rights exceeds the values furthered by enforcing a strict interpretation of the

rules.

          Others, however, say that because disciplinary rules are that B quasi-criminal

rules the violation of which can result in forfeiture of the right to practice law B a rule

which does not mean what it says should be amended.131 Further, they point out that the

use of deception imposes costs on innocent people, as well as actual wrong-doers: a

company that is not infringing a trademark or committing discrimination but which has

its time and resources consumed by those who are not actually interested in buying its


131
          See Sean Keveney, The Dishonesty Rule: A Proposal for Reform, 81 Tex. L. Rev. 381,398
(2002).

                                                  54
products or renting its homes is harmed. One could imagine, also, lawyers using testers

in order to create cases where there had been no prior complaint of discrimination.

                 a.       Authority Holding White Lies are Acceptable

        Commentators have argued that the Model Rules can and should be interpreted as

not prohibiting misrepresentations made by testers.132                    There are both statutory

construction and policy arguments that have been mustered to hold that what is clearly a

misrepresentation by an investigator is not a “misrepresentation” in terms of rule 8.4(c).

        The statutory construction argument was explained by the leading commentators,

who take this position:

        That principle [of statutory construction] would require that Rule 8.4(c)
        apply only to misrepresentations that manifest a degree of wrongdoing on
        a par with dishonesty, fraud, and deceit. In other words, it should apply
        only to grave misconduct that would not only be generally reproved if
        committed by anyone, whether lawyer or nonlawyer, but would be
        considered of such gravity as to raise questions as to a person's fitness to
        be a lawyer.     Investigators and testers, however, do not engage in
        misrepresentations of the grave character implied by the other words in the
        phrase [dishonesty, fraud, deceit] but, on the contrary, do no more than
        conceal their identity or purpose to the extent necessary to gather
        evidence. 133

 One case adopted this statutory construction argument.134

        The policy argument has been used to justify several cases holding that

investigators’ misrepresentations are not “misrepresentations.” In Apple, for example,

the court essentially reasoned that rule 8.4(c) should not be construed to cover

“misrepresentations” article to conclude that the rule simply did not apply to


132
        David B. Isbell & Lucantonio N. Salvi, Ethical Responsibility of Lawyers For Deception by
Undercover Investigators and Discrimination Testers: An Analysis of the Provisions Prohibiting
Misrepresentation Under the Model Rules of Professional Conduct, 8 Geo J. Legal Eth. 791, 811-826
(1995);
133
        Isbell, 8 Geo J. Legal Ethics at 817 (footnotes omitted).
134
        Apple Corps. Ltd. v. Int’l Collectors Soc’y, 15 F. Supp.2d 456 (D.N.J. 1998). See also Jane Shay
Wald, Trademark Searches and Investigations, 668 PLI/Pat 9 (Nov. 2, 2001) (discussing cases).

                                                   55
misrepresentations regarding identity or purpose, reasoning:

               Undercover agents in criminal cases and discrimination testers in
       civil cases, acting under the direction of lawyers, customarily dissemble as
       to their identities or purposes to gather evidence of wrongdoing. This
       conduct has not been condemned on ethical grounds by courts, ethics
       committees or grievance committees. This limited use of deception, to
       learn about ongoing acts of wrongdoing, is also accepted outside the area
       of criminal or civil-rights law enforcement. The prevailing understanding
       in the legal profession is that a public or private lawyer’s use of an
       undercover investigator to detect ongoing violations of the law is not
       ethically proscribed, especially where it would be difficult to discover the
       violations by other means.

                                 ***

               Plaintiffs could only determine whether Defendants were
       complying with the Consent Order by calling [Defendants] directly and
       attempting to order [The Beatles] stamps. If Plaintiffs’ investigators had
       disclosed their identity and the fact that they were calling on behalf of
       Plaintiffs, such an inquiry would have been useless to determine
       [Defendants’] day-to-day business practices in the ordinary course of
       business.135

       Similarly, the trademark case of Gidatex, S.rL. v. Campaniello Imports, Ltd.,136

recognized that statements by undercover investigators were “technical” violations of

rules prohibiting misrepresentations, but nonetheless stated:

               As for DR 1-102(A)(4)'s prohibition against attorney
       "misrepresentations", hiring investigators to pose as consumers is an
       accepted investigative technique, not a misrepresentation. The policy
       interests behind forbidding misrepresentations by attorneys are to protect
       parties from being tricked into making statements in the absence of their
       counsel and to protect clients from misrepresentations by their own
       attorneys. The presence of investigators posing as interior decorators did
       not cause the sales clerks to make any statements they otherwise would
       not have made. There is no evidence to indicate that the sales clerks were
       tricked or duped by the investigators' simple questions such as "is the
       quality the same?" or "so there is no place to get their furniture?"

                                        ***


135
       15 F. Supp.2d at 475.
136
       82 F. Supp.2d 119 (S.D.N.Y. 1999).

                                              56
                These ethical rules should not govern situations where a party is
        legitimately investigating potential unfair business practices by use of an
        undercover posing as a member of the general public engaging in ordinary
        business transactions with the target. To prevent this use of investigators
        might permit targets to freely engage in unfair business practices which
        are harmful to both trademark owners and consumers in general.
        Furthermore, excluding evidence obtained by such investigators would not
        promote the purpose of the rule, namely preservation of the attorney/client
        privilege.

                In this case, Gidatex had a right to determine whether Campaniello
        had complied with Gidatex's "cease and desist" letter dated October 16,
        1997.     The evidence gathered by the investigators demonstrates that
        defendants' employees informed consumers that plaintiff's business no
        longer exists and that the other brands of furniture sold by Campaniello
        are "the same" as the Saporiti Italia brand. Neither of these statements are
        true. Courts have recognized the relevance of such evidence.137

                 b.       Authorities Finding White Lies to Be Deceitful.

        The Oregon Supreme Court wrote the seminal case explaining that the rules
                                                           138
literally do not permit white lies. In re Gatti,                  The case presents multiple ironies.

Several years before the relevant events, Gatti had previously complained to the bar about

the conduct of the DOJ in using undercover investigators to pose as injured workers for

purposes of infiltrating chiropractors’ and lawyers’ offices in a sting involving fraudulent

workers’ compensation claims. The lawyer’s complaint was rejected by the bar, which

advised him in writing that government lawyers “have more latitude in carrying out the

agency’s regulatory powers in a surreptitious fashion than members of the Bar in the

private sector.”139

        Later, the lawyer made some phone calls an introduced himself under false

pretenses in order to gather information for possible litigation. A complaint was filed

with the Bar against the lawyer, arguing that he violated disciplinary rules by making

137
        82 F. Supp.2d at 122 (footnotes and citations omitted).
138
        8 P.3d 966 (Or. 2000).
139
        8 P.3d at 969

                                                   57
false statements in conducting this investigation. After rejecting the argument that the

Bar was estopped from asserting that his misrepresentations constituted an ethics

violation because the Bar had advised him that government lawyers conducting such

investigations did not violate the rules, the court concluded that the lawyer had

committed willful violations of the rules since he had misrepresented his identity in

conducting the investigation.140

       The court then turned to whether the rule should be interpreted to allow for an

exception for misrepresentations limited “only to identity or purpose and made solely for

purposes of discovering information....”141        Noting that various civil rights and other

organizations had filed amicus briefs supporting this view, the court reasoned that as a

court it was powerless to create an exception:

               As members of the Bar ourselves--some of whom have prior
       experience as government lawyers and some of whom have prior
       experience in private practice--this court is aware that there are
       circumstances in which misrepresentations, often in the form of false
       statements of fact by those who investigate violations of the law, are
       useful means for uncovering unlawful and unfair practices, and that
       lawyers in both the public and private sectors have relied on such tactics.
       However, ORS 9.490(1) provides that the rules of professional conduct
       "shall be binding upon all members of the bar." (Emphasis added.)
       Faithful adherence to the wording of DR 1-102(A)(3), DR 7- 102(A)(5),
       ORS 9.527(4), and this court's case law does not permit recognition of an
       exception for any lawyer to engage in dishonesty, fraud, deceit,
       misrepresentation, or false statements. In our view, this court should not
       create an exception to the rules by judicial decree. Instead, any exception
       must await the full debate that is contemplated by the process for adopting
       and amending the Code of Professional Responsibility.             See ORS
       9.490(1) describing process for formulating rules of professional conduct).
       Furthermore, this court is prohibited from inserting into ORS 9.527(4) an
       exception that the statute does not contain. ORS 174.010. That statute
       applies to a member of the bar "whenever * * * [t]he member is guilty of
       willful deceit or misconduct in the legal profession[.]" We decline to
       adopt an exception to DR 1-102(A)(3) and DR 7-102(A)(5), and we are

140
       8 P.3d at 974
141
       Id.

                                              58
         without authority to read into ORS 9.527(4) an exception that the statute
         does not contain. Those disciplinary rules and the statute apply to all
         members of the Bar, without exception.142

         The Oregon court reached the same conclusions in In re Ositis,143 where the

attorney had hired an investigator to misrepresent his identity by posing as a journalist in

conducting some telephone interviews related to potential litigation. The court reiterated

the reasoning of Gatti rejecting the argument that “an exception from the broad

disciplinary rule prohibiting misrepresentation is necessary if lawyers are to succeed in
                                                               144
discovering and rooting out wrongful conduct....”                      The court stated that “faithful

adherence” to wording of the rule, as well as to its precedent, did not “permit recognition

of an exception for any lawyer to engage in dishonesty, fraud, deceit, misrepresentation,

or false statements.”145 Eventually, however, the Oregon legislature amended the rule to

permit an exception for efforts “to obtain information on unlawful activity through the

use of misrepresentations or other subterfuge.”146

         In addition to this authority, some authority could be read to require disclosure by

the investigator of the full facts. For example, the authorities discussed above regarding

the propriety of ex parte contacts with unrepresented persons suggests that full disclosure

is required. Georgia’s bar association, for example, wrote that, while it was appropriate

to engage in an ex parte contact with a former employee, since the former employee had

the right to decide whether to give evidence against its former employer, “it would be



142
          8 P.3d at 976 (citations and internal quotation marks omitted).
143
          40 P.3d 500 (Or. 2002).
144
          40 P.3d at 502.
145
          Id. See also Sequa Corp. v. Lititech, Inc., 807 F. Supp. 653 (D. Colo. 1992) (holding that a lawyer
who believes that another lawyer has violated the rules must report it, not engage in his own investigation
that relies upon dissembling and misrepresentation).
146
          Or. D.R. 1-102(D). See Arthur Garwin, Covert Work OK, 1 No. 6 Am. B. Ass’n. J. E-Report 9
(Feb. 15, 2002).

                                                     59
unethical to use deceit and false pretenses to deny the former employee is or her right.”147

        d.      Conclusion

        Need the truth be told in civil litigation? On their face, the disciplinary rules say

yes. As a result, at least two states, Virginia and Oregon, have attempted to eliminate the

uncertainty and to provide a considered, binding view of which value trumps by

addressing the issue in their disciplinary rules. Virginia provides in a comment that its

rules are “not intended to preclude traditionally permissible activity such as

misrepresentation by a nonlawyer of one’s role in a law enforcement investigation or a

housing discrimination “tester.’”148 Likewise, Oregon after the Gatti decision amended its

rule to allow lawyers to advise and supervise otherwise lawful conduct that is done in “an

effort to obtain information on unlawful activity through the use of misrepresentations or

other subterfuge.”149

        Without a binding rule or a statement from the particular court involved, lawyers

are left to attempt to discern how a court will balance the competing values of honesty,

on the one hand, of efficiently rooting on wrong-doing on the other.                      Care and

thoughtfulness are obviously required.

IX.     Conclusions

        Many cases require hiring expert witnesses, which means that many cases require

being sensitive to the ethical issues that having an expert on board creates. Having an

expert on a case should simplify, not compound, the difficulties in resolving the dispute.

Being mindful of the issues raised in this outline should help to achieve that goal.


147
         St. B. of Ga. Formal Advisory Op. No. 94-3 (Sept. 1994).
148
         Va. R. Prof. conduct 5.3, cmt.
149
         Or. D.R. 1-102(D). See Arthur Garwin, Covert Work OK, 1 No. 6 Am. B. Ass’n. J. E-Report 9
(Feb. 15, 2002).

                                                 60
        In conclusion, a recent law review article on expert witnesses at trial touched on

some of the tensions between experts and advocates. In one particularly interesting

paragraph, the author wrote:

        Despite the professional guidelines described above [including the ABA
        Model Rules and American Psychological Association Guidelines],
        problems still exist with expert witness testimony in the court. First, there
        are inherent conflicts between the goals of attorneys and the goals of
        scientists/experts. Attorneys work in an adversarial system and look to
        sway the trier of fact with the most articulate, understandable, presentable,
        and persuasive expert rather than the best scientist. In contrast, science
        requires that the expert focus solely on the evidence without the influence
        of the parties’ goals. As a result, Daubert and the APA’s forensic
        guidelines force experts to choose between complete impartiality and
        responsible advocacy.150

        Professor Murphy=s quote is provocative. It raises the tension between treating

the expert as something other than a neutral third party. Yet, as the foregoing discussion

shows, the ethics rules do not treat expert witnesses as neutral third parties, but instead

treat them as if they were advocates. At the same time, they are presented in court as

being neutral experts. This fundamental tension has not been adequately addressed by

the courts in deciding these issues.

        If experts are to be portrayed to the jury as providing neutral expert advice, ought

not the law governing ex parte contacts permit unfettered access by an adversary? How

can an expert Aswitch sides@ when he serves no one but the truth?

These more fundamental issues await further illumination by the courts.




                 150
                    . Justin P. Murphy, Expert Witnesses at Trial: Where are the Ethics?, 14 Geo. J. Legal
Ethics 217, 234-35 (2000) (footnotes and quotation marks omitted).


                                                   61
Law Office Technology Ethics
                  ©
        Professor David Hricik
    Mercer University School of Law
             Macon, GA




             January 2008
                                          TABLE OF CONTENTS

I.     Incoming Information: Metadata ................................................................... 4
    A. Can the Recipient Look for Embedded Data? ............................................ 4
    B. Must the Recipient Notify the Sender of the Mistake?............................... 6
    C. Conclusion .................................................................................................. 7
II.      Incoming: Receiving Digital Confidential Information From Prospective
Clients ..................................................................................................................... 7
    A. The Conflict Arising from Receipt of Confidences. ..................................... 8
    B. Are The Disclaimers Even Necessary?..................................................... 10
    C. Effective Process....................................................................................... 11
    D. Effective Substance................................................................................... 12
    E. Model Language to Adapt to Your Jurisdiction and Practice................... 14
III.     Digital Storage of Client Information and Documents ............................. 15
    A. Digitalization is Generally Proper ............................................................ 15
    B. Physical Security of Non-Networked Client Data. ................................... 17
       1. Nonmobile Hardware............................................................................... 17
       2. Mobile Technology.................................................................................. 18
       3. Sharing Office Space. ........................................................................... 19
V. Unauthorized Access to Stored Client Data.................................................. 19
    A. Hacking, Viruses, and Spyware ................................................................ 19
    B. Discarding Old Hardware ......................................................................... 21
VI.      Can You Visit an Opponent’s Website? ................................................... 21
VII. Outgoing: Disclosure Through Law Firm Newsletters and Articles. ...... 24
VIII.       Incoming and Outgoing Information .................................................... 26
    A. Chatrooms, Bulletin Boards and Listservs................................................ 26
    B. Wi-Fi Risks. .............................................................................................. 29
IX.      The Ethics of Blogging ............................................................................. 30
    A. Client Relations and Career Damage........................................................ 30
    B. Ex Parte Contacts: Represented Parties and Judges ................................. 31
    C. Confidentiality .......................................................................................... 34
    D. Advertising Rule Violations ..................................................................... 37
    E. Unauthorized Practice and Related Issues ................................................ 37
    F. Firm Resources and Related Issues........................................................... 38
    G. Firm Liability or Harm.............................................................................. 38
       1. Intellectual Property Infringement........................................................ 38
       2. Admissions Against the Firm................................................................ 38
    H.      Recommendations................................................................................. 39
       1. Educate Lawyers and Staff ................................................................... 39
       2. Provide Written Policies and Require Certain Disclosures .................. 39
X. Outgoing: Metadata and the Duty to Scrub ................................................ 40
    A. The Purpose Of Metadata ......................................................................... 41
    B. Metadata In Microsoft Word .................................................................... 41
    C. The Duty to Avoid Disclosing Embedded Confidential Information ........ 46
    D. How To Avoid Creating And How To Remove Embedded Data ............ 47
    E. Conclusion ................................................................................................ 53



                                                                                                                             2
XI.    Outgoing: Inadvertently Produced Privileged Documents under the New
Federal Rules of Civil Procedure.......................................................................... 54
  A. The Background to the Amendments ....................................................... 54
  B. Two New Federal Rules of Civil Procedure ............................................. 54
  C. You Ask for It Back and They Agreed There was No Waiver: Is that it? 55
  D. Can Agreements Override the Common Law of Waiver? Does it Matter?..
       ................................................................................................................... 56
    1. Does it Matter whether Everyone Is Bound and Privilege is Protected?..
           ............................................................................................................... 56
    2. Does the Agreement Preserve Privilege Even Between the Parties?.... 56
    3. Does it Bind Third Parties?................................................................... 57
  E. Conclusion ................................................................................................ 57




                                                                                                                           3
I.     Incoming Information: Metadata

        As shown below, software commonly used by lawyers often creates
embedded data and metadata. As also shown, there are means to avoid creating
embedded data, and means available to remove that which has been created. In
theory, at least, it is possible to remove all metadata prior to sending a document
to opposing counsel.

       In theory.

        As we also saw above, good lawyers in large, sophisticated firms have
recently transmitted documents that contain not just embedded data, but
confidential embedded data – revealing even who the lawyer’s client was
intending to sue. Accidents will happen, and people are not perfect and no doubt
even the best software will miss some form of embedded data even if the
document is scrubbed.

        Suppose you open a document sent to you from opposing counsel. Is it
ethical for you to look to see if there is embedded data present? If it is present,
can you use it, or must instead you take other actions?

       Before turning to that question, it is important to note that the discussion
in this section is limited to inadvertent transmission outside the context of
document production. Rules, such as the new Federal Rules of Civil Procedure
may replace or augment the issues of ethics discussed here, and thus this
discussion may not apply to document production during litigation.

       A.      Can the Recipient Look for Embedded Data?

         Not surprisingly, no ethical rule directly addresses the question of whether
it is ethical for a lawyer to open a file sent by another lawyer to see if any useful
embedded data is present. However, most states have a general catchall rule that
prohibits “professional conduct involving dishonesty, fraud, deceit or
misrepresentation.” Although many states have not yet addressed the question of
whether it is dishonest to look for metadata in a document exchanged among
counsel, bar associations in other jurisdictions have done so, and so may provide
some guidance.

       Unfortunately, the bar associations that have analyzed the issue have
openly split on whether it’s ethical for a lawyer to look for metadata. The split is
deep, direct, and irreconcilable.

       On one end of the spectrum, the bars of New York, Florida, and Alabama
have concluded that looking for metadata is a deliberate and unethical act. The
New York bar association emphasized that "it is a deliberate act by the receiving
lawyer, not carelessness on the part of the sending lawyer, that would lead to the



                                                                                   4
disclosure of client confidences and secrets” in the embedded data. 1 Alabama’s
bar similarly condemned the act as “a knowing and deliberate attempt by the
recipient attorney to acquire confidential and privileged information in order to
obtain an unfair advantage against an opposing party.” 2 Florida’s bar agreed, but
more softly wrote that a recipient should not try to view metadata the lawyer
knows or should know was not intended for him. 3

        On the other end of the spectrum, both the American Bar Association
(“ABA”) 4 and the Maryland Bar Association found nothing unethical with
deliberately mining documents sent by opposing counsel outside the context of
discovery for metadata. The ABA stated its disagreement in mild terms, however,
stating only that “the Committee does not believe that a lawyer… would violate”
Rule 8.4. 5 Taking a slightly more nuanced approach, the District of Columbia bar
reasoned that viewing metadata was dishonest only if, before viewing it, the
lawyer actually knew that the metadata had been inadvertently sent to him. 6

        In the middle, and perhaps representing the more balanced view, is a very
recent opinion from the Pennsylvania Bar Association. After noting the split
detailed above, the Pennsylvania bar refused to take a position on whether mining
is unethical. Instead, it stated that “each attorney must determine for himself or
herself whether to utilize the metadata contained in documents and other
electronic files based upon the lawyer’s judgment and the particular factual
situation.” 7 Similarly, the Pennsylvania bar stated that whether the information
should be used after viewing turned on “the nature of the information received,
how and from whom the information was received, attorney-client privilege and
work-product rules, and common sense, reciprocity and professional courtesy.” 8

        Most lawyers are left neither with controlling authority nor even a clear
majority rule from those authorities that have addressed the question of whether it
is even ethical to look for metadata. If the opinions suggest anything, it is that a
lawyer who decides to mine for embedded data should proceed with caution,
particularly if the embedded data reveals either the other side’s client confidences,
privileged information, or work product and the circumstances are such that a
reasonable lawyer would know that the embedded data was sent inadvertently.
More fundamental than whether the lawyer will be disciplined for examining

1
  N.Y. St. B. Ass'n. Op. 749 ( Dec. 14, 2001).
2
  Ala. Op. 2007-02 (March 14, 2007) (“it is ethically impermissible for an attorney to mine
metadata from an electronic document he or she receives inadvertently or improperly from another
party.”)
3
  Florida Prof. Eth. Comm. Op. 06-2 (Sept. 15, 2006).
4
  Am. B. Ass’n. Formal Opinion 06-442 (Aug. 5, 2006). See Md. B. Ass’n. Inc. Op. 2007-9
(2007) (not unethical to view metadata).
5
  ABA Op. 06-442 at p. 4 n. 10. The ABA also stated that it “views similarly” the Florida Bar
Association’s conclusion that mining metadata was unethical. Id.
6
  D.C. B. Eth Op. 341 (2007).
7
  Pa. Formal Eth. Op. 2007-500 (Jan. 2008).
8
  Id.


                                                                                              5
embedded data is the question of whether it is professional to do so: the ethics
rules decide only matters of discipline, and the broader and greater question of
whether it is “right” to look should not be lost. Not only does what go around
come around, but a judge may question the integrity of a lawyer who intentionally
takes advantage of an opponent’s mistake that reveals privileged information, for
example. More is at stake than discipline.

       Assuming, however, that a lawyer may either intentionally mine for
metadata, or innocently discovers it in an exchanged document, does the lawyer
have any obligation to notify the sender of the existence of the metadata?

        B.       Must the Recipient Notify the Sender of the Mistake?

        Many states expressly impose an obligation on a lawyer who inadvertently
receives a document to notify opposing counsel of the mistake. Specifically,
Model Rule 4.4(b) requires a “lawyer who receives a document relating to the
representation of the lawyer's client… [who] knows or reasonably should know
that the document was inadvertently sent” to “promptly notify the sender.”9 The
comments also specifically state that the rule covers inadvertently sent e-mail. 10
Model Rule 4.4(b) has only been adopted in a few jurisdictions. 11

        Many states do not have, yet, a specific rule like Model Rule 4.4(b). The
absence of a rule 4.4(b) does not mean that ethical obligations are not raised by
the misdirected fax scenario, however. States without a rule specifically
addressing inadvertent transmission have nonetheless issued opinions that impose
obligations on the recipient. The question lawyers face is whether the duty exists,
not whether there is a rule.

       In the context of misdirected faxes, mail, e-mail, and other
communications besides embedded data, the authorities have generally
recognized that ethical obligations can arise when a lawyer receives a document
that was not intended for her, 12 such as by receiving a fax intended for opposing
counsel’s client. 13 As a general principle, those authorities hold that where a


9
  Model Rule 4.4(b).
10
   Id.
11
    Id.
12
   The ABA mentioned inadvertent transmission of e-mail when analyzing waiver of privilege
over a misdirected fax: “the availability of xerography and proliferation of facsimile machines
and electronic mail make it technologically ever more likely that through inadvertence, privileged
or confidential materials will be produced to opposing counsel by no more than the pushing of the
wrong speed dial number on a facsimile machine.” ABA Formal Op. 92-368 (November 10,
1992). Accord Fla. St. Bar Assn. Comm. On Prof. Ethics Op. 93-3 (Feb. 1, 1994) (“Such an
inadvertent disclosure might occur as part of a document production, a misdirected facsimile or
electronic mail transmission, a ‘switched envelope’ mailing, or misunderstood distribution list
instructions.”).
13
   ABA Formal Op. 92-368 (November 10, 1992). Accord Fla. St. Bar. Assn. Comm. on Prof.
Ethics Op. 93-3 (Feb. 1, 1994)(“Such an inadvertent disclosure might occur as part of a document


                                                                                                6
lawyer receives information that is privileged or confidential client information
from another lawyer where the circumstances reasonably show that the disclosure
was inadvertent, the recipient must notify the sender of the mistake and, in some
jurisdictions, follow the sender’s instructions on how to proceed next. 14

       Assuming that such a duty exists, the question would be whether that duty
would apply in the context of embedded data. Several bar associations have
analyzed this duty in the context of embedded data, even though the lawyer who
created the file intended to send the file to the lawyer who received the file, but
did not intend, or did not know, that the file contained embedded confidential
information. Unfortunately, they have split widely on whether the recipient has
any duty to notify the sender of the presence of embedded data.

         The opinion split along the same lines, essentially, as they do on whether
it is dishonest to look, an issue discussed below. Specifically, the ABA and the
Maryland bar concluded that there was no obligation to notify the sender, while
Florida, New York, and Alabama concluded there was an obligation to notify.
The District of Columbia concluded that an obligation to notify existed only if the
lawyer had actual knowledge that the embedded data was sent inadvertently
before examining it (how could that happen, one might ask), while Pennsylvania
again adopted a facts-and-circumstances approach to the question.

        What, then, must most lawyers do? Without clear guidance, we would
give the same advice as we did concerning looking: the greater the significance of
the information and the clearer it is that the information was sent by mistake, the
less likely it is that it is ethical not to notify the sender of the presence of
embedded data. Whether inadvertent transmission waives the privilege, or
confidentiality, is of course a different question, and how the lawyer should
proceed after notification – whether he should follow the sender’s, his client’s, or
his own view of what to do – is itself a complex issue unaddressed by any
controlling authority.

        C.       Conclusion

       Many lawyers are for the time being at least between a rock and a hard
place without a map. This is uncharted territory, and we hope that, at minimum,
we’ve provided some warnings as to where the problems await, and how to
hopefully sail through unscathed.

II.     Incoming:     Receiving Digital Confidential Information From
        Prospective Clients


production, a misdirected facsimile or electronic mail transmission, a “switched envelope”
mailing, or misunderstood distribution list instructions.”).
14
   See generally, Douglas R. Richmond, Key Issues in the Inadvertent Release and Receipt of
Confidential Information, 72 Def. Couns. J. 110 (2005); James Q. Walker, Ethics and Electronic
Media, 716 PLI/Lit 313, 334-36 (2004).


                                                                                            7
         A. The Conflict Arising from Receipt of Confidences.

         Not too long ago, a person who wanted to hire a lawyer had to call him on
the phone or stop by to see him. In that initial interview, the lawyer had to be
certain to make sure that undertaking the representation would not create a
conflict of interest with an existing or former client.15 To avoid both personal and
imputed disqualification, the lawyer in the initial interview had to -- and still must
-- control disclosure of information by the prospective client so that only
information from the prospective client necessary to check conflicts is obtained.
This is because many states hold that a person who in a good faith effort to hire a
lawyer discloses confidential information to one lawyer in a firm can disqualify
that entire firm to the same extent as if an attorney-client relationship had been
                16
consummated.

        E-mail makes it easier for conflicts to arise because it changes the nature
of communication. A lawyer who is talking to a prospective client can control the
disclosure: before hearing information that might disqualify him from continuing
to represent a client, for example, the lawyer can ask the prospective client who

15
   See, e.g., Bridge Prods., Inc. v. Quantum Chem. Corp., 1990 WL 70857 (N.D. Ill. 1990) (firm
disqualified after a one-hour meeting with prospective client).
16
   See, e.g., Gilmore v. Goedecke, 954 F. Supp. 187 (E.D. Mo. 1996) (disqualifying an entire law
firm from representing its client of 50 years because one lawyer had learned information from
opposing party when, as putative client, it disclosed information during a brief phone call). Courts
had so widely recognized this duty that a form of it is expressly codified in the 2003 version of the
American Bar Association Model Rules of Professional Conduct. Model Rule 1.18 generally
prohibits firms from being adverse to such putative clients in matters where the information that
had been disclosed to the firm could be used to significantly harm the then-prospective client:
          (a) A person who discusses with a lawyer the possibility of forming a client-lawyer
               relationship with respect to a matter is a prospective client.
          (b) Even when no client-lawyer relationship ensues, a lawyer who has had discussions
               with a prospective client shall not use or reveal information learned in the
               consultation, except as Rule 1.9 would permit with respect to information of a former
               client.
          (c) A lawyer subject to paragraph (b) shall not represent a client with interests materially
               adverse to those of a prospective client in the same or a substantially related matter if
               the lawyer received information from the prospective client that could be
               significantly harmful to that person in the matter, except as provided in paragraph
               (d).
          (d) When the lawyer has received disqualifying information as defined in paragraph (c),
               representation is permissible if:
                    (1) both the affected client and the prospective client have given informed
                        consent, confirmed in writing, or:
                    (2) the lawyer who received the information took reasonable measures to avoid
                        exposure to more disqualifying information than was reasonably necessary
                        to determine whether to represent the prospective client; and
                        (i) the disqualified lawyer is timely screened from any participation in the
                             matter and is apportioned no part of the fee therefrom; and
                        (ii) written notice is promptly given to the prospective client.



                                                                                                      8
the adverse party will be, inquire as to the general nature of the matter, and
perform a conflicts check. In the digital age, there is less control over receipt of
confidences, and greater opportunity for them to be received by firms. A web
page listing lawyer e-mail addresses allows putative clients to send an e-mail to a
lawyer that discloses important confidential information that could lead to
imputed disqualification of the firm. For example, a person could read a law firm
web site, conclude that the firm would be an excellent choice to represent her, and
then send the firm an e-mail discussing the potential strengths and weaknesses of
the case and requesting a meeting.

        If an entire law firm can be disqualified by imputation because one of its
lawyers received information from a prospective client during a face-to-face
meeting or phone call, can it likewise be disqualified to the same extent if it
reviews the same information sent by e-mail from a client seeking in good faith to
hire the firm? 17 This scenario actually occurred in California: a woman seeking
to hire a divorce lawyer filled out a questionnaire with some confidential
information about her case and sent it to a firm which already happened to be
already representing her husband in that matter. 18 If receipt of such email is no
different than receipt of “too much” information during an initial interview, then
an entire firm can be disqualified by imputation. 19

        Law firms recognize this possibility. Accordingly, law firms are posting
many different kinds of contractual “terms of use” – terms which are often called
“disclaimers”-- on their web sites. Many sites state that any information sent by
e-mail before the firm agrees to represent the transmitting party will not be held to
be confidential by the firm. 20 Others say that no attorney-client relationship will
be formed by submitting the information. 21

       These website disclaimers appear designed to avoid imputed
disqualification by receipt of information from prospective clients. Read literally,
they would preclude a person who sent an e-mail to a firm in good faith in an


17
    As one commentator posited:
                     Suppose an online visitor submits an inquiry to an attorney along with
           the requisite information, and, before responding, the attorney determines that a
           partner or other member of the firm already represents the opposing party. The
           attorney is now in receipt of information that could create an impermissible
           conflict such that the online visitor making the inquiry can attempt to force a
           withdrawal of representation of opposing party.
Thomas E. Lynch, Ethical Problems with Legal Computer Advertising and Affiliations,
34-DEC Md. B.J. 11, 12 (Nov/Dec. 2001).
18
   St. B. of Cal. Standing Comm. on Prof. Resp. & Conduct Formal Op. Interim No. 03-0001.
19
    Under the Model Rules, if one lawyer in a firm is disqualified from being adverse to a former
client due to possession of confidential information, generally all lawyers in that firm are
“imputed” with that conflict. See Model Rule 1.10(a).
20
   See, e.g., www.velaw.com (“any information sent to Vinson & Elkins … is on a non-confidential
and non-privileged basis.”).
21
   See Barton v. U.S. Dist. Court, – F.3d – (9th Cir. June 9, 2005)(quoting firm’s disclaimer).


                                                                                               9
effort to hire the firm from relying on the confidentiality of the information to
cause imputed disqualification.

        For practical reasons, existence of a law firm web site increases the need
for these disclaimers, since having a website creates an easy means to transmit
unsolicited information to law firms. Significantly it can be done unilaterally and
even contrary to the intent of the lawyer. Further, while a lawyer who receives an
unsolicited telephone call can simply stop the prospective client from disclosing
additional information as soon as the lawyer recognizes a conflict exists, an e-
mail is sent instantaneously, and opened in full at once.

        B.       Are The Disclaimers Even Necessary?

        The need for advanced agreements arose in the context of old-world
contacts, by face-to-face meeting or telephone call. There was obviously mutual
assent to the exchange of information. In addition, by continuing the
conversation, a lawyer who continues a phone call accepts the prospective client’s
invitation to consider forming an attorney-client relationship. Has a lawyer who
merely opens an unsolicited e-mail done something to indicate to its sender that
the lawyer assents to receive information in confidence or is open to representing
that person? 22 Should an e-mail sent unilaterally by a prospective client through a
law firm website be treated any differently than a phone call placed to a lawyer, or
a meeting held between lawyer and prospective client? Is e-mail different enough
from these “old-world” forms of communication so that a different rule should
apply, and so these advance waivers are unnecessary?

        The opinions so far conclude that by posting a website, a lawyer has
manifested an intent to offer to form attorney-client relationships and to keep
submitted information confidential. On the one hand, Arizona Bar Association
concluded that a lawyer who did not have a website, but had an e-mail address,
did not implicitly invite submission of information by prospective clients.23
According to the committee, such lawyers owed no duty of confidentiality to
prospective clients, since the absence of a website indicated no willingness to
accept clients by e-mail. 24 On the other hand, that Arizona opinion reasoned that
“if the attorney maintains a website without any express limitations on forming an
attorney-client relation, or disclaimers explaining that information provided or
received by would-be clients will not be held confidential,” then the lawyer has
implicitly agreed to consider forming an attorney-client relationship with those
who submit e-mail. 25 The Association of the Bar of the City of New York
reached a similar conclusion. 26 As part of a lengthy analysis, it reasoned:


22
   See St. B. of Ariz. Eth. Op. No. 02-04 (Sept. 2002).
23
   Id.
24
   Id.
25
   St. B. of Ariz. Eth. Op. No. 02-04 (Sept. 2002), p. 7.
26
   Opinion 2001-1 of the Association of the Bar of the City of New York (March 1, 2001).


                                                                                           10
         We believe that prospective clients who approach lawyers in good
         faith for the purpose of seeking legal advice should not suffer even
         if they labor under the misapprehension that information
         unilaterally sent will be kept confidential. Although such a belief
         may be ill- conceived or even careless, unless the prospective
         client is specifically and conspicuously warned not to send such
         information, the information should not be turned against her.
         Indeed, we see no reason that the other client should be benefited
         by the fortuitous circumstances that the lawyer approached by the
         prospective client turned out to be the same lawyer retained by the
         adverse party. Nor do we believe that zealous advocacy compels a
         different result. 27

A California opinion reached essentially the same conclusion. 28 There, a firm site
had links that allowed prospective clients to submit information in order to learn
their rights. The committee found this was an offer to consult with the lawyer. 29

        Under this approach, lawyers who have websites need both to effectively
disclaim any intention to form an attorney-client relationship and to effectively
warn prospective clients of the lawyers’ intention not to hold transmitted
information in confidence. 30 The dominant reasoning so far is that having a
website invites forming a confidential relationship, and the lawyer must disabuse
the client of that intent.         See also San Diego Eth. Op. 06-01
http://www.sdcba.org/ethics/ethicsopinion06-1.htm

         C.       Effective Process

       If the lawyer has a website and is required to negate an intent to form a
confidential attorney-client relationship, there are two levels that need to be
considered: (1) making the process for obtaining consent effective and (2)
making the consent substantively effective and appropriate. This subsection
addresses the former; the next subsection, the latter.

        Contracts require assent. 31 As a matter of contract law, simply relying, as
many firms do, on passive “terms of use” accessible through a “disclaimer” or
“legal notices” link on the bottom of the law firm’s homepage probably does not

27
   Id.
28
   See St. B. of Cal. Standing Comm. on Prof. Resp. & Conduct Formal Op. Interim No. 03-0001.
29
   Id.
30
   New Model Rule 1.18 differs even further in its approach to this issue. Even where there is no
advance agreement, only the lawyer who actually received the information is disqualified if he
reviewed the information only to the extent necessary to determine whether to represent the client,
took steps to avoid further dissemination of the information, and the prospective client is given
notice. If this is acceptable to a firm, then it somewhat reduces the need for specific agreement.
However, Model Rule 1.18 is not yet in effect in many jurisdictions.
31
   “The fundamental idea of a contract is that it requires the assent of two minds.” Dexter v. Hall,
82 U.S. 9, 20 (1872).


                                                                                                11
create an enforceable agreement. 32 There is no assent by the prospective client.
Courts in addressing web-contracts are holding that terms which are merely
somewhere on a website are not part of a contract formed by a website user.
Instead, only terms which are affirmatively “clicked” and agreed to are part of the
agreement. In the leading case of Specht v. Netscape Communications Corp., 33 for
example, an arbitration clause was on Netscape’s website on a page of “user
terms” but users were not required to “click” acceptance to the clause before
downloading software. Instead, the user was merely asked to “please review”
terms and conditions which included the arbitration clause. Following the
approach of other courts, the Netscape court held that there was no proof that the
user had assented to the arbitration clause; hence, there was no agreement to
arbitrate. 34    The courts recognize that where the user affirmatively “clicks”
agreement to the term – so-called “click wrap” agreement – the term could be
enforced, but rejected attempt to create “browser wrap” agreements – binding
users of a site merely because they opened it in their browser. 35

        Thus, having a “disclaimer” or “terms of use” link on their homepage
which links to a page that contains the term of use regarding the confidentiality of
e-mail sent by prospective clients is likely not an effective process to create an
enforceable agreement with any prospective client. “Click wraps” are the only
certain way to ensure that a court will hold that the prospective client manifested
assent to the term. Thus, law firm websites should be coded so that prospective
clients must affirmatively assent to the term before transmitting e-mail.

        D.      Effective Substance

       In addition to an effective procedure, the language should substantively
accomplish the law firm’s goal of avoiding disqualification, but not create other
problems. A casual perusal of several law firm websites reveals that by far the
two dominant approaches that firms currently use are either to disclaim any intent
to form an attorney-client relationship, or disclaim any obligation of
confidentiality of unsolicited information. 36 Neither approach is satisfactory.

       Disclaimers which state that any information will not be held in
confidence are unhelpful because they go too far. While no doubt a prospective
client who agrees by “clicking” to such terms would be precluded from
disqualifying the recipient law firm due to its receipt of that information, the term
destroys the ability of the submitting party to claim privilege. Suppose, for
32
    See, e.g., www.Jonesday.com/admin/terms.aspx?sType=Terms+of+Use
33
    306 F.3d 17 (2d Cir. 2002)
34
     See Kevin P. Cronin & Ronald N. Weikers, Data Security & Privacy Law: Combating
Cyberthreats § 10:29 (2003) (discussing click wrap and other forms of web-based agreements).
See also Ticketmaster Corp. v. Tickets.com, 2003 Copr. L. Dec. ¶ 28,607 (C.D. Cal. March 7,
2003) (discussing other assent issues concerning Internet usage).
35
   See generally, Jennifer Femminella, Online Terms and Conditions Agreements: Bound by the
Web, 17 St. John’s Legal Comment 87 (2003).
36
    Several firms have both statements. E.g., www.velaw.com.


                                                                                         12
example, that the firm decides after receiving an unsolicited disclosure of key
information to represent the sender as a client. In most jurisdictions, the client
could not claim privilege because when the client transmitted the information, it
knew the information would not be held in confidence. 37 Indeed, the existence of
these clauses may preclude firms from agreeing to represent the client, since the
firm has arguably caused the client to lose privilege. These “no confidentiality”
provisions go too far.

        On the other hand, a “we do not represent you” clause does not go far
enough. In a recent case, the Ninth Circuit held that a plaintiff could still claim
privilege over information it submitted through a law firm site even though when
it did so it acknowledged it was not following an attorney-client relationship. 38 It
held the information could still be claimed as privileged, since the client had
never explicitly agreed the information would not be held confidential. Likewise,
a California bar opinion concluded that only if the prospective client had
expressly agreed that information would not be held in confidence could a firm
avoid an obligation of confidentiality. 39 The bar association concluded that even
though the client had clicked an agreement that “no confidential relationship
would be formed,” it was insufficient to constitute an acknowledgement that the
firm would not keep the prospective client’s information confidential. The
opinion concluded that it would be sufficient only if the disclaimer had stated: “I
understand and agree that Law Firm will have no duty to keep confidential the
information I am now transmitting to Law Firm.” 40

        Taken together, the decisions show that it is not enough to avoid an
obligation of confidentiality by receiving confidential information with only a “no
attorney-client relationship” disclaimer. If the firm uses an appropriately-worded
“no confidentiality” approach, it avoids an obligation of confidentiality, but there
then likely can be no claim of privilege, even if the prospective client becomes a
real one.

        In my view, neither disclaimer is the right one. The goal for most firms is
not to avoid creating an attorney-client relationship 41 , or to deny confidentiality,
but to avoid disqualification. The approach of Model Rule 1.18 is instructive. It
does not state that there is no attorney-client relationship between the putative
client and would-be law firm, nor that information submitted in good faith will

37
   See generally In re Eddy, 304 B.R. 591, 596 (Banks. D. Mass. 2004).
38
   Barton, supra.
39
   St. B. Cal. Standing Comm. as Prof. Resp. & Conduct Formal Op. Interim No. 03-0001.
40
   Id.
41
   The argument that a client can create an attorney-client relationship by submitting an email to a
firm that would impose a duty on the firm to act to protect the client’s interests in any way other
than by maintaining the confidentiality of information seems beyond far-fetched. See generally,
Togstad v. Vesely, Otto, Miller & Keefe, 291 N.W.2d 686 (Minn. 1980) (firm had duty to advise
person it declined to represent, but had advised on the strength of the person’s claim, of applicable
statute of limitations). A lawyer who has someone shout at him “I was injured” does not have to
tell the person to get a lawyer.


                                                                                                 13
not be held in confidence. Instead, it provides that receipt of the information by
one lawyer in the firm will not preclude the entire firm from representing another
party in the matter. 42 Thus, the rule still requires firms to keep information
confidential. It does not let the firm disclose to an adversary critical information
disclosed by a prospective client.

           E.      Model Language to Adapt to Your Jurisdiction and Practice

        The lesson of Rule 1.18 is that any term should do what it needs to do, but
no more. An agreement by which an unsophisticated party supposedly gives up all
right of confidentiality to information which it submitted in good faith to the firm
may also be too severe to be enforced by a court or found ethical by a bar
association. Likewise, an agreement which might destroy the ability of a party
who eventually becomes a client to claim privilege over information goes too far
in the other direction, and could require a firm to turn away a client who
submitted information through the firm’s web site.

       Law firms should adopt language that does what they want it to do: i.e.,
prevent even those who in good faith seek to hire the firm from disqualifying it
from representing another party where that information can be used against that
prospective client. The following examples of language seek in varying degrees to
balance the legitimate but competing needs of the firm and its clients, as well as
those of prospective clients.

           By clicking “accept” you agree that our review of the information
           contained in e-mail and any attachments will not preclude any
           lawyer in our firm from representing a party in any matter where
           that information is relevant, even if you submitted the information
           in a good faith effort to retain us, and, further, even if that
           information is highly confidential and could be used against you,
           unless that lawyer has actual knowledge of the content of the e-
           mail. We will otherwise maintain the confidentiality of your
           information even though submission of information does not
           constitute creation of an attorney-client relationship with us.

The foregoing seeks to eliminate firm-wide disqualification. While doing so, it
could still result in the disqualification of an individual lawyer from a matter.
Another approach:

           By clicking “accept,” you agree that we may review any
           information you transmit to us, and that by doing so we do not
           create an attorney-client relationship with you. You recognize that
           our review of your information, even if you submitted it in a good
           faith effort to retain us, and, further, even if it is highly
42
     Model Rule 1.18.


                                                                                 14
         confidential, does not preclude us from representing another client
         directly adverse to you, even in a matter where that information
         could and will be used against you. 43

III.     Digital Storage of Client Information and Documents

         A.       Digitalization is Generally Proper

         Model Rule 1.15 requires lawyers to “appropriately safeguard[]” client
files. 44 The decreasing cost of equipment that allows for fast and reliable
digitalization and storage of information has increased the likelihood of
“paperless” office, or nearly paperless offices. There are obvious advantages to
going paperless: storage costs decrease; accessibility increases; and if done
properly, the documents can be more safely be stored and retained.

        The Virginia Bar Association in a 2005 ethics opinion advised that there
was no general requirement that client files be stored in paper form. Va. LEO
1818 (2005). See also N.J. Op. 701 (Apr. 10, 2006) (“nothing in the RPCs…
mandates a particular medium of archiving such documents.”) There are several
issues to analyze, however, when moving to digital documents.

         First, some original, paper documents are required. “There may be any
number of circumstances where keeping an original paper document in the file is
critical, for example, testamentary documents, marriage certificates, or
handwriting exemplars, to name a few.” Id. Thus, although electronic storage is
generally permissible, the decision to do so “must be made such that the
attorneys’ duties of competence, diligence, and communication are not
compromised.” Id.

        Second, if the client consents, the lawyer can destroy the paper file, again,
however, with the caveat that some documents must be maintained in paper form.
LEO 1818. See also N.J. Op. 701 (Apr. 10, 2006) (“Original wills, trusts, deeds,
executed contracts, corporate bylaws, and minutes are but a few examples of
documents which constitute client property” and cannot be preserved by
digitalization)


43
  In jurisdictions which follow Arizona’s analysis, the following may be sufficient, with the last
sentence added to remove any doubt:

        E-mail addresses of our attorneys are not provided as a means for prospective clients
        to contact our firm or to submit information to us. By clicking “accept”, you
        acknowledge that we have no obligation to maintain the confidentiality of any
        information you submit to us unless we have already agreed to represent you or we
        later agree to do so. Thus, we may represent a party in a matter adverse to you even
        if the information you submit to us could be used against you in the matter, and even
        if you submitted it in a good faith effort to retain us.
44
   Model Rule 1.15(a).


                                                                                                 15
        Finally, third, the Virginia opinion concluded that the lawyer can actually
condition representation on the client’s agreement to allow for paperless
representation. LEO 1818. However “if the choice to destroy a hard copy of a
particular item would prejudice that client, then in that instance, the attorney
should not require the client to agree to that destruction to obtain legal
representation.” Id.

        There are other issues that the Virginia opinion did not fully address.

        First, the files must be accessible to the client and lawyer. It is probably
overstated to say that “[f]ailing to back up your data is an act of negligence,” 45
but backing up important client data plainly is something every lawyer ought to
do. 46 The details of a backup plan will vary. Putting a copy of critical files onto a
CD will help, but leaving the CD on the computer will accomplish nothing if
there is an office fire. Thus, assigning a person to back up files and then to
remove the backups may be a useful approach. The frequency of a backup is also
a variable: need it be nightly, weekly, or at some other interval? There is no set
rule. How much work can your clients, or you, afford to lose is the critical
question that lawyers must ask. 47 Various automatic systems are also now
available. See Jeff White, What’s your backup plan?, Trial (Jan. 2007).

         Second, lawyers must ensure legacy access. Over time, storage media
becomes obsolete or degrades. For example, even CDs degrade over time. 48
Storage technology can also become obsolete, so that data stored on media can no
longer be readily accessed. For example, it is very difficult to find disk drives
that can read 8-inch floppy disks, yet they were common not that long ago. For
these reasons, lawyers must ensure that data stored on “old” media remains
accessible by updating the media or maintaining hardware that allows for legacy
access. There are other, more mundane issues to consider as well, such as using
battery backups for critical equipment. Not only will taking reasonable steps
avoid losing unsaved data when the power goes out, it will ensure access to data
at all times, so that, for example, court deadlines can be met. 49

        Third, where files are stored on Internet-accessible computers, critical
security issues arise. 50 Even files that are not network accessible may be viewed
by third parties, such as computer maintenance companies. It is ethical for

45
    Albert Barsocchini,, ABCs of Computer Security, Law Tech. News 27, 27 (Nov. 2000).
46
    See Jason Krause, Guarding the Cybefort 89 A.B.A. J. 42 (July 2003) (“Probably the most
important thing a lawyer can do to avoid document disaster is to have an effective backup plan.”).
An interesting question is whether a lawyer can charge a client for time spent recreating work
product lost as a result of a computer malfunction. No authority on that issue exists.
47
    Id. Lawyers should consider rotating tapes or CDs, for example. See Steven Atherton,
Protecting Your Firm’s Critical Data 27 Vt. B. J. 17 (March 2001).
48
   Some studies conclude CDs may last only two years. See Bob Starrett, Do Compact Discs
Degrade? http://www.roxio.com/en/support/discs/dodiscsdegrade.html (visited June 21, 2005).
49
   See generally, Paul Bernstein, Loss and Recovery, 37 J. Trial L. Ass’n 59 (Dec. 2001).
50
    These are discussed infra.


                                                                                               16
lawyers to permit third parties to have access to computer systems in order to
maintain files and computer and storage systems, but confidentiality agreements
should be obtained:
         A lawyer who gives a computer maintenance company access to
         information in client files must make reasonable efforts to ensure
         that the company has in place, or will establish, reasonable
         procedures to protect the confidentiality of client information.
         Should a significant breach of confidentiality occur, the lawyer
         might be obligated to disclose it to the client. 51

In addition, lawyers should obtain “a written statement of the service provider’s
assurance of confidentiality.” 52 Permitting third parties access is not an ethical
violation so long as the obligation of confidentiality is maintained. 53

        For these reasons, lawyers should ensure that anyone who has access to
stored client confidences should be required to have confidentiality obligations
compatible with the lawyers’ own. 54 Particularly because digitalization makes it
easier for theft to occur, to occur without warning or indications it has occurred,
and with greater consequences, greater care needs to be given when third parties
are given access to digitized client confidences.

         B.       Physical Security of Non-Networked Client Data.

                  1. Nonmobile Hardware

         The physical security of any point of access to digitized client confidences
ought to be a critical focus of any information security approach. 55 If someone
can walk into the lobby of a law office and use an unattended PC to access client
files, the firm has a security problem. Likewise, if an opposing counsel can use a
computer in a conference room to access networked client files, real security risks
exist.



51
   Am. B. Ass’n Formal Eth. Op. 95-398 (Oct. 27, 1995).
52
   Id.
53
   See N.C. Eth. Op. 209 (Jan.12, 1996) (“[A] lawyer should store a client’s file in a secure
location where client confidentiality can be maintained.”); N.Y. Eth. Op. 643 (Feb. 16, 1993)
(“We also see no ethical impropriety in storing closed files . . . so long as client confidences . . .
are protected from unauthorized disclosure. The files should be stored in a secure location and
should be available only to the client, the client's present or former lawyer, or another with the
client's informed consent.”) (citation omitted); Mich. Eth. OP. RI-100 (Sept. 30, 1991) (lawyer
may “[s]tore client representation files and other law firm files which are not to be destroyed in a
facility which protects client confidences and secrets, safekeeps property, and complies with
record-keeping requirements”).
54
   See Model Rule 5.3(b) (requiring lawyers who directly supervise nonlawyers exercise reasonable
care to ensure the non lawyer’s conduct is compatible with the lawyer’s ethical obligations).
55
   The same obviously holds true for file rooms and other physical storage sites.


                                                                                                  17
        The obvious first step is to train employees to be aware of these risks.
Employees who man publicly accessible computers, such as in lobby waiting
areas, should know not to leave the computer running in such a way as to allow
access to client information. “Logging out” and using password access may be
required any time the computer is left unattended, for example. Likewise, in areas
where opposing counsel (or third parties) have physical access to computers
which contain or can access digitized client files, similar precautions are needed.

                 2. Mobile Technology

        Mobile technology creates even greater risks since client data leaves the
relatively safe confines of the office. With today’s technology, more information
can be stored in smaller spaces than ever before. Where once it would have taken
a truck and an army of burglars to steal an important but voluminous file, today it
can be accomplished by the palming of a memory stick or USB drive, the taking
of a CD, or the theft of a laptop computer. Employees with devices that contain
digitized client confidences should be advised that they can hold critical
information, and in large amounts.

        A written policy is in order. Anyone carrying a laptop containing client
confidences, for example, should be advised of the various scams reported at
airport metal detectors – where one person steps in front of the laptop owner, sets
of the metal detector, while his compatriot on the other side makes off with the
computer, taking advantage of the distraction.56

         There are also services that are designed to locate stolen laptops when they
are later used by the thief to connect to the Internet. For example, one program is
called “Stealth Signal. 57 ” According to the company’s website, after a computer
is reported missing, the program secretly will contact the company with the
computer’s location and will even allow the owner to delete files from the
laptop. 58 The site states that the software can not be removed or even detected. 59
Lawyers whose laptops carry extremely sensitive information should consider
acquiring and using this software.

       There are more mundane ways to secure digitized client files. It is
possible to give password protection to files (Microsoft Word allows this, for
example) so that the file cannot be easily opened. 60 Even greater protection
through encryption programs is also available -- for individual files 61 as well as


56
   See Josh Ryder, Laptop Security, Part One: Preventing Laptop Theft,
http://www.securityfocus.com/infocus/1186 (visited June 29, 2005).
57
   http://www.computersecurity.com/stealth/index.html
58
   http.//www.computersecurity.com/stealth/computer_tracker.htm
59
   Id.
60
   In the “Save As” window in Word, click the “Tools” drop down and then go to “Security
Options” to password protect a file.
61
   Use the same steps noted in the note above, but encrypt the file.


                                                                                           18
entire sectors of hard drives. 62 Depending on the importance of the information,
such steps may be necessary.

                 3.      Sharing Office Space.

       For economic reasons, some lawyers who are not members of the same
firm share office space. 63 Because each does not owe an obligation of
confidentiality to the other, it is important that physical client files be maintained
in confidence. 64     See generally Ne. Eth. Adv. Op. 06-5 (2006) (analyzing
whether a public defender had to maintain a separate server from other
governmental lawyers).

       The same is true for stored client data. It is “impermissible for unaffiliated
attorneys to have unrestricted access to each other’s electronic files (including e-
mail and word processing documents) and other client records. 65 “If separate
computer systems are not utilized, each attorney’s confidential client information
should be protected in a way that guards against unauthorized access and
preserves client confidences and secrets.” 66

        Thus, if lawyers share a common server with lawyers who are not in the
same firm, they should ensure that only the lawyer and his employees can access
client files. Likewise, employees should be instructed to log off computers and
not leave networked computers unattended. 67 Finally, using encryption features
of popular word processing software like Word may be helpful.

V.      Unauthorized Access to Stored Client Data.

        A.       Hacking, Viruses, and Spyware

        A 2001 ABA study reported that 13% of law firms had been hacked. 68
Any computer hooked to the Internet via DSL or cable modem is networked to the
Internet. That is, someone on the Internet could access your computer directly.
Unfortunately, a recent survey showed that the computer systems used by small
firms and solo practitioners were especially vulnerable to attack. 69 Only about


62
   See generally, Phil Morris, Hard Drive Encryption Software,
http://www.techsupportalert.com/pdf/r1178.pdf (visited June 29, 2005).
63
   See generally, Rockas, Lawyers for Hire and Associations of Lawyers: Arrangements that are
Changing the Way Law is Practiced, 40 Boston B. J. 8, 18 (Nov/Dec 1996).
64
    See N.Y. County Eth. Op. 680 (1990)
65
   D.C. Bar Legal Ethics Committee Opinion No. 303.
66
    Id.
67
   See generally, Colo. Eth. Op. 89 (1991); Neb. Eth. Op. 89-2 (1989); N.Y. County Eth. Op. 692
(1993); Martin, Practicing Law in the 21st Century: Fundamentals for Avoiding Malpractice
Liability, 33 Land & Water L. Rev. 191 (1988).
68
    See Jason Krause, Guarding the Cyberfort 89 A.B.A. J. 42 (July 2003).
69
    Gareth T. Yearick, ABA Survey Shows Computer Systems Used by Many Solo and Small Firm
Practitioners are Vulnerable to Hackers, 29 Litig. Nev. 3 (Jan. 2004).


                                                                                            19
one in ten used antivirus software, and one in five used firewalls. 70 Attacks can
come in the form of hacks, viruses, and spyware.

        The potential for a hacker gaining access through a virus to a computer
connected to the Internet is real. The fact that thousands of PCs are
surreptitiously used by spammers as “attack zombies” to send spam demonstrates
the ease with which a third party can commandeer a PC. 71 A recent case provides
an even more interesting example of the risks that hackers create to networked
computers. In U.S. v. Steiger, 72 a Turkish citizen posted a program that looked to
be useful on a site frequented by pedophiles. The program, once downloaded by
the pedophile, did not only provide the useful functions to the pedophile, it also
allowed the Turkish citizen to review every file on the downloader’s computer,
and to track every site the person visited as well as track every password the
person used. 73 Another recent virus locked up your files through encryption and
required you to pay money to get them back.

        Spyware is similar to a virus in that it can in some forms permit third
parties to monitor web activities, e-mail, and in some forms, file contents. 74
Other forms of spyware gather passwords and personal information, or reset or
hijack your browser. 75 Lawyers have been reprimanded for planting spyware. Se
In re Trudeau, (Minn. 2005).

        In order to avoid becoming a zombie box or having the contents of a
computer, web activities, and your passwords made accessible to a hacker,
lawyers need to take precautions. The three principal safety features to use are
firewalls, anti-virus software, and anti-spyware software.

        Firewalls are hardware or software barriers -- walls -- between a computer
and the Internet. 76 What firewalls do is protect your computer against intruders.
A basic firewall will essentially hide the address of your computer from third
parties and block “ports” on your PC from being used by them. 77

       Essentially, antivirus software examines downloaded files and e-mail
attachments to identify and disarm known “malware” - - software that allows
hackers to take control of a PC. For example, if you download a file from the

70
   Id.
71
   By one estimate, attack zombies account for 80% of all spam. See
http://www.whatpc.co.uk/vnunet/news/.2125121/zombie-pcs-generate-80-per-cent-spam
72
   318 F.3d 1039 (11th Cir. 2003).
73
   Id.
74
   See Sharon D. Nelson & John Simek, Spyware: Is Your Computer Looking Back at You? Law
Practice Magazine 19 (April/May 2005).
75
   Id. See also Jason Krause, Beware of Spyware, A.B.A. J. 59 (June 2005).
76
   There’s a huge amount of information available on the Internet describing firewalls. One of the
most detailed and neutral that I have found was prepared by the National Institutes of Standards
and Technology, and is available at http://csrc.nist.gov/publications/nispubs/800-10/node31.html.
77
   See Steven Atherton, Protecting Your Firm’s Critical Data, 27 Vt. B.J. 17 (March 2001).


                                                                                               20
Internet that contains a “Trojan Horse” like the kind in the Steiger case, the
program will alert you and allow you to stop the virus. A good policy for virus
protection includes these elements:

                First, purchase a good anti-virus software (e.g., Norton
        AntiVirus or McAfee’s) from a reputable company that you expect
        has the resources to respond quickly to new threats. Second,
        update your software daily using the Internet. For firms having
        two or more attorneys, I recommend purchasing network anti-virus
        software that automatically checks for updates daily and distributes
        them seamlessly across the network without requiring user
        intervention. Third, implement firm wide policies for use of
        floppy disks, downloading of files over the Internet, and for
        handling attachments, as it is through such functions that viruses
        tend to spread. A simple policy would require that: (1) all floppy
        disks used on computers outside of your network be scanned for
        viruses by a designated person; (2) people obtain permission
        before downloading any program (such as screen savers, audio
        players or demos) over the Internet; and (3) any email attachments
        coming from unknown persons or without any text in the body of
        the message be deleted or scanned for viruses by a designated
        person before opening. 78

                Unfortunately, many antivirus software programs do not
        detect, let alone remove, spyware.79 Thus, special anti-spyware
        software which costs $30 to $40 must be used. 80

        B.       Discarding Old Hardware

        Extreme care must be taken when discarding old hardware that contains
memory or storage, such as a computer with a hard drive or non-volatile RAM.
Simply putting files into the “trash” or “recycle bin” is not sufficient to actually
erase them. Instead, the drive must be “wiped” by special software to eliminate
the ability of a person to access the “trashed” file.

       Similarly, pen drives with nonvolatile memory must be carefully erased.
See Flea Market Secrets (Oakl. Tribune Apr. 16, 2006) (recounting how military
thumb drives were showing up in Afghani markets with sensitive military
information still on them).

VI.     Can You Visit an Opponent’s Website?



78
   Id.
79
   See Nelson & Simek, supra, at 21.
80
   Id.


                                                                                 21
       State ethics rules generally prohibit ex parte contacts with persons who are
known to be represented by counsel in a matter. 81 Is a visit to an opponent’s
website during litigation a violation of such rules? Put the other way, does
anything prevent an adversary during litigation from accessing an opponent’s web
page and gleaning information from it, and then using it against the site owner?
        The Oregon Bar Association addressed this issue. 82 It recognized that the
digital nature of the contact was irrelevant: if the contact was prohibited in the
real world, then it was prohibited in digital one, too. 83 Thus, since a lawyer can
obviously read a 10-K filed by its opponent, or its annual report, a lawyer who
reads information posted on a website is not violating the rule.

        While a passive review of publicly accessible information does not violate
the rule against ex parte contacts, websites are often interactive. The Oregon Bar
Association distinguished between different degrees of interactivity:

                Some web sites allow the visitor to interact with the site.
        The interaction may consist of providing feedback about the site or
        ordering products. This kind of one-way communication from the
        visitor to the Web site also does not constitute communicating
        “with a person” as that phrase is used in DR 7-104. Rather, it is
        the equivalent of ordering products from a catalog by mailing the
        requisite information or by giving it over the telephone to a person
        who provides no information in return other than what is available
        in the catalog……

                A more interactive Web site allows the visitor to send
        messages and receive specific responses from the Web site or to
        participate in a “chat room.” A visitor to a Web site who sends a
        message with the expectation of receiving a personal response is
        communicating with the responder. The visitor may not be able to
        ascertain the identity of the responder, at least not before the
        response is received. In that situation, a lawyer visiting the Web
        site of a represented person might inadvertently communicate with
        the represented person. If the subject of the communication with
        the represented person is on or directly related to the subject of the
        representation, the lawyer violates DR 7-104.

                For example, assume Lawyer B’s client is a retailer in
        whose store a personal injury occurred. Lawyer A could visit the
        store and purchase products without the consent of Lawyer B, and
        could ask questions about the injury of clerks and other witnessed
        not deemed represented for purposes of DR 7-104. Lawyer A
        could not, however, question the store owner or manager or any
81
    E.g., Model Rule 4.2.
82
    Oregon St. B. Ass’n. Op. No. 2001-164 (Jan. 2001).
83
   Id.


                                                                                 22
         clerk whose conduct was at issue in the matter. That same analysis
         applies if Lawyer B’s client operates an “e-store.” Lawyer A could
         visit the “e-store” site and review all posted information, purchase
         products, and respond to surveys or other requests for feedback
         from visitors. Lawyer A could not send a demand letter or an
         inquiry through the Web site requesting information about the
         matter in litigation unless Lawyer A knew that the inquiry would
         be answered by someone other than Lawyer B’s client (or, if the
         client is a corporation, someone deemed represented). 84

Thus, passively entering an opponent’s website does not implicate the rule against
ex parte contacts. Information on a web page is not “confidential” and can be
used against a client in a matter. Only if the contact crosses into an improper
“interactive inquiry” can the rule be violated.

       There is one error -- and it is important -- in the Oregon opinion. Under
the Oregon opinion, a lawyer may not contact a person through the Internet unless
the lawyer knows the person is not represented. This is incorrect, loose language.

        The rule specifically provides that contacts are permitted unless the lawyer
knows the person is represented. 85 It has been interpreted that way by the courts.
Numerous courts have held that Model Rule 4.2 cannot bar a contact unless the
lawyer knows the person is represented. For example, in Jorgensen v. Taco Bell
Corp., 86 the court rejected even a “should have known” standard, stating:

                 Taco Bell's proposal has wide and troubling implications.
         Under it, counsel for a plaintiff who is a tort victim would risk
         disciplinary action by interviewing adverse parties or their
         employees, if that counsel "should have known" such interviewees
         would be represented by some unidentified counsel after a
         complaint is filed. Reasonable investigations by counsel in
         advance of suit being filed to determine the bona fides of a client's
         claim would be precluded.

                  Every plaintiff's attorney should know, for example, that
         some defense counsel will, with rare exceptions, be provided by a
         liability insurance carrier to represent its insured after the filing of
         a complaint alleging acts within the ambit of the coverage.
         Similarly, every defense counsel should know that frequently an
         injured plaintiff who may, without counsel, preliminarily negotiate
         with the liability carrier's representative, will ordinarily retain
         counsel to file suit if no settlement is reached.


84
   Id.
85
    See Model Rule 4.2.
86
    58 Cal. Rptr.2d 178 (Cal. 1996)


                                                                                    23
               In these situations, Taco Bell's proposed expansion of the
        application of rule 2-100 [California’s version of Model Rule 4.2]
        would arguably mean that both plaintiff and defense attorneys
        would be subjected to disciplinary action for violating rule 2-100 if
        they directed interviews of claimants or alleged tortfeasors,
        although no determination to file suit had been made and no
        lawyer to file or defend it had been retained.

                Taco Bell contends that it had unidentified "house
        counsel," as Jorgensen's attorney "should have known," available
        to communicate with Jorgensen's attorney before her investigator
        conducted interviews of its employees. Taco Bell reasons that
        Jorgensen's lawyer had to first identify its house counsel and seek
        that counsel's permission to interview Taco Bell's employees to
        avoid violation of rule 2-100. Numerous corporations in America
        have full or part-time house counsel. That knowledge or
        presumptive knowledge does not trigger the application of rule 2-
        100, unless the claimant's lawyer knows in fact that such house
        counsel represents the person being interviewed when that
        interview is conducted. 87

        Thus, the Oregon Bar Association’s opinion takes the prohibition against
ex parte contacts too far. Unless the lawyer knows the person with whom she is
interacting is “represented” in terms of Model Rule 4.2, the contact should be
proper.

VII.    Outgoing: Disclosure Through Law Firm Newsletters and Articles.

       Another consequence of the power of dissemination created by the web
comes, not from receipt of information by a firm, but by its dissemination through
the availability of “articles” on law firm web sites. It is common for firms to have
an “articles” or “presentations” web page containing the text of articles or
speeches written by firm attorneys. 88 No doubt, firms perceive that this material
makes the firm more marketable. They also serve a useful educational function.

        However, information in these articles can be used against the firm or its
clients. For example, a client could use a firm’s article against the firm in a
malpractice suit, arguing that the firm failed to follow its own advice in
representing the client. This has already happened in the real world. A legal
malpractice plaintiff alleged that her lawyer had failed to hire an expert for her
case. She was able to get into evidence the fact that her lawyer previously had
written in a CLE article that a lawyer should “always” hire such experts. 89


87
    Jorgensen, 58 Cal. Rptr.2d at 180
88
   See, e.g.,www.kilpatrickstockton.com/publications/articles.aspx
89
   McGuiness v. Barnes, 683 A.2J 862 863 (N.J. Super. Ct. Law Div. 1994)


                                                                                 24
        The lawyer’s article could also be quoted back against the lawyer’s clients.
It seems unlikely that articles on a firm’s web site would be admissible against a
lawyer’s client under most circumstances, since they would not have been made
by the party, and so would not constitute party admissions. Even so, the writings
of a lawyer can be used against a client in briefs and motions, where the rules of
admissibility do not apply.

        Articles create other risks. A lawyer serving as an expert could be
impeached by having his articles used against him in depositions and at hearings
outside the presence of the jury. Another possibility is third party malpractice
claims, where a third party claims to have relied on “legal advice” contained in an
on-line article. There is, however, no reported case in which an attorney was
sued for allegedly giving incorrect legal advice in an article.

       Despite the lack of any objective evidence to be concerned, many lawyer-
authors put disclaimers in their works warning the reader not to rely upon them.
One model form reads:

        This book is presented with the understanding that the publisher
        does not render any legal, accounting, or other professional
        service. Due to the rapidly changing nature of the law, information
        contained in this publication may become outdated. As a result, an
        attorney using this material must always research original sources
        of authority and update this information to ensure accuracy when
        dealing with a specific client’s legal matters. In no event will the
        authors, the reviewers, or the publisher be liable for any direct,
        indirect, or consequential damages resulting from the use of this
        material. 90

        Including a disclaimer such as this in web-based articles seems prudent. It
would also be prudent to include a statement that the article does not reflect the
views of the author’s firm or client. The ABA has come out with a list of “best
practices” for law firm web sites. Among other things, it suggests:

            •   Including contact information;

            •   Dating substantive legal material;

            •   Identifying which jurisdiction any substantive legal material
                pertains to; and

            •   Stating that the legal information is not legal advice. 91


90
   Ellen Claire Newcomer & Gregory W. Black, Liability for Errors and Omissions in CLE
Speeches and Publications, 37 CLE J. & REG. 5,5 (Jan. 1991).
91
   http://www.elawyering.org/tools/practices.shtml


                                                                                         25
        Finally, to be effective, it may be necessary that the site be structured to
require users to affirmatively agree to the terms of the disclaimer. 92 As noted
above, without an affirmative “click” indicating acceptance, the disclaimer may
not be a part of the “contract” with the site’s user.

VIII. Incoming and Outgoing Information

         A.       Chatrooms, Bulletin Boards and Listservs

       Chatrooms, bulletin boards, and listservs are similar in that each allows
lawyers to interact with third parties by both sending and receiving information.
They thus carry the same risks that e-mail does: the risk that someone in the
chatroom will disclose information that could disqualify the firm. In addition,
they enhance the risk of inadvertently creating an attorney-client relationship
through giving specific legal advice during interactive and sometimes real-time
discussions. The former is little different from the risk of receiving email, as
discussed above. This section explores the latter issue.

        The enhanced risk of creating an inadvertent attorney-client relationship
arises from the way these technologies allow for interaction, sometimes in real-
time. Chatrooms allow for synchronous, real-time “conversation,” while bulletin
boards and listservs generally allow asynchronous communication – the former
generally through websites, the latter generally through e-mail.     While each
technology has rough analogs in the real world – since they are somewhat like the
interchange that might occur at a CLE meeting or in casual cocktail party
discussions – they differ in two ways.

        First, the number of participants and the frequency of interaction differ.
One listserv I participate on, for example, has several dozen participants, each of
whom is deeply involved in legal ethics issues. On a daily basis, the Internet
allows for the exchange of ideas and information among these people; in the
analog world, such an exchange could take place only on rare, isolated occasions.
In essence, there is a cocktail party every single day of people who may be
representing or consulting conflicting clients. Other listservs may have as
participants opposing counsel or opposing parties. Again, it could be that on a
daily basis, a lawyer on a listserv communicates with opposing parties discussing
a subject matter that relates to the subject matter that interests them both.

        A second difference is that the dialog is not ephemeral. What might be
said at a cocktail party will not be recorded, and even an answer given in response
to a question at a CLE conference may not be recorded. In contrast, what occurs




92
  Putting the disclaimer in the article itself, as opposed to on the site, would also accomplish the
same goal.


                                                                                                   26
in chatrooms, on bulletin boards and in listservs is often maintained in digital
form on the web itself – and that record is often searchable. 93

        These differences suggest the need for greater caution. While there have
been very few difficulties prior to the advent of the Internet, those two differences
may suggest that the Internet creates greater risk. The conclusions of the few bar
opinions that have addressed the ethical issues arising from posting responses to
third party questions on message boards or listservs confirms that observation.

        The North Carolina State Bar, for example, concluded that lawyers could
answer questions posted by third parties on a company’s web site, 94 but that they
should:
           • Avoid giving advice concerning jurisdictions in which they were
              not licensed;

             •   Warning responses should not be considered as legal opinions or as
                 a conclusive answer to the question posted, and recognize that
                 “there may be other facts and law relevant to the issue;”

             •   Stating where the lawyers were licensed (to avoid misleading the
                 users into believing the lawyer lives in the state where the user
                 resides);

             •   Stating, “clearly and specifically” that the lawyer did not want to
                 create an attorney-client relationship with the user; and

             •   Warning not to post confidential information in their questions. 95

         In another opinion, the New Mexico Bar Association addressed various
aspects of listservs and related technologies. 96 In addition to focusing on some of
the same issues as the North Carolina opinion, it emphasized the unique nature of
the listserv:

               At the outset, the Committee recognizes that the party
        placing the question on the Listserve has already divulged
        information in a less that private setting. As such, the
        confidentiality of any information in an initial query is unlikely
        to exist. However, the party's expectation of privacy may be

93
   For example, one law review article quoted a post I had made to a listserv many years earlier.
See Justin D. Leonard, Cyberlawyering and the Small Business: Software Makes Hard Law (But
Good Sense), 7 J. Small & Emerging Bus. Law 323, 373 n. 251 (2003) (also noting the “negative
aspect of electronic communication -- with the unseen permanence of this ‘electronic tattooing’,
anything you say can be found again -- even years later.”)
94
   N.C. St. Bar Ass’n 2000 Formal Ethics Op. 3 (July 2000).
95
   Id.
96
   N.M. St. B. Ass’n Advisory Op. 2001-1 (2001)


                                                                                              27
           based upon a misunderstanding of the nature of the Listserve.
           The expectation of privacy may exist, rightly or wrongly, in the
           mind of the party. Any lawyer proceeding to respond to such a
           question should be mindful of this and cautious with regard to
           any response. Specifically, the lawyer should not respond in any
           fashion which solicits additional information of a confidential
           character. …

                   Specific questions (e.g., "I have failed to inform my
           partners of my borrowing of funds from the partnership ... what
           do I do now?") create more difficult situations. The difficulty is
           that, by making legal information available on its Listserve, such
           access to Listserve lawyers may unintentionally encourage the
           placement of confidential information on the Listserve thereby
           causing the information to lose its confidential character.

                   The Internet remains a relatively new frontier. To date,
           there also remains various concepts of the level of privacy
           resulting from use of the Internet. As a result, it would be
           important for any lawyer involved in such a Listserve
           arrangement to insist that the Listserve administrator clearly and
           unambiguously inform users that any material placed on the
           service will or may lose its confidential character. 97

        These opinions suggest that lawyers who participate on listservs properly
recognize the increased risk of creating attorney-client relationships with
participants. They also suggest that merely posting disclaimers will not always be
sufficient. Likewise, they suggest that an attorney consider the question of
confidentiality before posting information – and according to the New Mexico
opinion, consider whether he must insist that the listserv owner warn participants
not to disclose confidences.

        Clearly, firms should consider adopting policies that address lawyer
participation in chatrooms, bulletin boards, and the like, to reduce the likelihood
of conflicts or malpractice liability, or at least poor client relations. One aspect of
such a policy is to require the use of disclaimers -- statements that the lawyer’s e-
mail does not constitute legal advice, for example, and that no attorney-client
relationship is formed thereby. These efforts may help. However, the New
Mexico Bar Association emphasized that reliance upon these boilerplate
disclaimers may not be enough: “any statement which would suggest to a
reasonable person that, despite the disclaimer, a relationship is being or has been
established, would negate the disclaimer. In short, the lawyer must be vigilant and
cautious if the intention is to not create an attorney-client relationship.” 98


97
     Id. See also D.C. Bar Op. 316 (July 2002).
98
     Id.


                                                                                    28
        Another aspect of chat rooms is the question of whether they constitute
improper solicitation. Generally, there are few constraints on public legal
advertisements, but significant constraints on in-person contacts with people that
a lawyer knows is in need of legal services. 99 The authorities so far have
concluded that real-time communications over the Internet in a chat room
constitute improper solicitations.100 Some states hold they are to be characterized
as “telephonic communications”, while others hold they should be characterized
as “in person” communications and so be subject to the most stringent ethical
constraints. 101 Thus, in addition to being concerned about conflicts and
confidentiality, lawyers must also be concerned about solicitation.

        The dynamic nature of chatrooms in particular suggests that educating
lawyers as to the various risks is the best approach for firms to take. Lawyers
should: understand the permanent nature of these seemingly ephemeral forms of
electronic communication; be advised of the need to avoid creating conflicts; be
warned not to improperly solicit prospective clients; and generally be aware that
there is much uncharted territory in this area.

        B.       Wi-Fi Risks.

       The use of wireless technologies to communicate creates special risks.
There are two distinct ways wi-fi can be used. With wi-fi, an “access point” is
wired to the Internet, and laptops or desk tops communicate by radio frequencies
with the access point. It is much like a cordless phone base station and handset.

        One way is as a means to create a wireless network within a law firm or at
home. 102 The other way is if lawyers are outside the firm and use third party
access points to connect to the Internet. Both circumstances create risks because
there is a broadcast between the computer and the access point. 103

       When setting up a law firm or home network, the broadcast can be
encrypted, precluding anyone who intercepts the broadcast from understanding it.
However, on most hardware the default setting allows for unencrypted
transmissions. Thus, when setting up a law firm wi-fi network care must be given
to ensuring that the access point communicates with the computers only through
encrypted means. This prevents eavesdropping. Nonetheless, particularly with
windows computers, there are also vulnerabilities that need to be “patched.” See


99
   See Model Rule 7.1(b).
100
     See Cal. St. B. Standing Comm. on Prof. Resp. & Conduct Formal Op. No. 2004-166
(2004)(collecting bar opinions from Florida, Utah, Michigan, Virginia, West Virginia and
Arizona). States characterize chat room communications differently, however. See id.
101
    See id.
102
    See generally, Sharon D. Nelson & John W. Simek, Wireless Security for Law Firms,
103
    There is another risk that does not implicate confidentiality. An unsecured access point can be
used by third parties to access the Internet. There are maps on the Internet of where such free
access is available.


                                                                                               29
generally  Exploiting        802.11     Wireless      Driver     Vulnerabilities     at
www.uninformed.org.

         Encryption of the broadcast will not work where a public wi-fi connection
is used, unless a VPN is created. Thus, lawyers should be educated about the risk
that public wi-fi use creates. Anyone within the range of the wireless card can
pick up the transmission. Lawyers need to know of this risk and to understand
that it may mean public wi-fi is not an appropriate means to transmit certain client
confidences.

IX.    The Ethics of Blogging

        Blogs are ubiquitous, and blawgs are becoming so. One recent report put
there number at more than 10 million, and perhaps more than 50 million. Lance
Koonce, Litigating IP Issues in the Blogosphere, 17 ABA Intell. Prop. Litig. 9, 9
(Fall 2005). Really Simple Syndication (“RSS”) feeds create similar, one way,
forms of mass communication. See generally, Robert J. Ambrogi, The Power of
RSS, 62 Bench & B. Minn. 14 (Oct. 2005) (providing various law-related RSS
feeds).

        These and no doubt other forms of Internet communications – whether
asynchronous, synchronous (“real-time”), or even one-way (such as RSS feeds) --
present new issues concerning familiar themes: ex parte contacts; conflicts of
interest; confidentiality; and client business relations. Whereas a few years ago,
confidentiality might be breached by a lawyer talking too loudly about a client’s
case in an elevator, today the issue can arise when a lawyer participates in a
blawg, chatroom, or other on-line form of communication.

         The ethical issues that electronic communications present are in some
ways old wine in new bottles, but electronic communications also create an
increased risk of both intentional and unintended problems. Only so many people
can fit in an elevator, but conceivably thousands can participate in a listserv or
visit a blog site in a single day. As a result, the care and attention that firms ought
to pay to these issues has increased. In addition, these new forms of
communication create risks that old forms did not create, particularly including
liability for intellectual property misappropriation.

        This paper analyzes the principal issues that lawyers, and firms, should be
aware of arising out of lawyers’ use of Internet communications such as blawgs,
listservs, chatrooms, and the like. It catalogs some potential risks, and describes
ways for individual lawyers and their firms to reduce those risks.

       A. Client Relations and Career Damage.

        The greatest increased risk of Internet postings is, no doubt, harm to client
relations or harm to a lawyer’s career caused by “flaming” his employer.



                                                                                    30
        With respect to posts concerning their own or a firm client, young lawyers
may not appreciate the fact that a blog posting is not ephemeral, and may be as
effective – if not more so – than a magazine article or letter to the editor. The
recent events concerning the e-mail between a prospective associate and the
putative new employer – where ill-considered comments by both were quickly
and widely disseminated, proves that point. A posting made on privately, let
alone on an “obscure” blawg can quickly gain international attention. A posting
that denigrates a lawyer’s or his firm’s client will result in either a disgruntled
client or a disgruntled employer.

       Likewise, there are various blogs where young associates gather to discuss
firm politics. In one famous example, associates blogged about a partner in their
firm, only to have the partner post rebuttals to their postings. The old folks may
be catching on quickly, in other words. There are many such sites, where young
lawyers blog about careers and employers. They need to know that the old man
may be watching.

        Lawyers, as a result, should exercise caution when discussing either their
firm or their firm’s clients, even in “anonymous” or semi-anonymous areas. Even
private communications have a way of proliferating when they are electronic.
Lawyers and staff need to understand that they should not write anything that
could embarrass or adversely affect a client or the firm.

        B. Ex Parte Contacts: Represented Parties and Judges

        A lawyer could violate the prohibition in Model Rule 4.2 against ex parte
contacts with a person that the lawyer knows is represented by counsel through
blog communications by knowingly communicating with a person the lawyer
knows is represented. Either the lawyer could visit the site of a person he knows
is represented, or a person he knows is represented by counsel could come to his
blawg to interact. In either case, the lawyer should comply with Rule 4.2, which
prohibits ex parte contacts with a person the lawyer knows is represented by
counsel, and should also comply with Rule 4.3, which permits but regulates
contact with persons who are not represented by counsel.

        Courts look carefully at ex parte contacts, sometimes requiring disclosure
of interview notes, 104 or imposing sanctions. 105 Other courts have excluded or
limited the use of evidence obtained by the ex parte contract. 106 While often



104
         e.g., In re Infant Formula Antitrust Litig., 1992 WL 503465 (N.D. Fla. 1992).
105
         See, e.g., Camden, 910 F. Supp. at 1124 (disqualifying lawyers); Rent Club, Inc. v.
Transamerica Rental Fin. Corp., 811 F. Supp. 651 (M.D. Fla. 1992) (disqualifying lawyers).
106
         E. g., Camden, 910 F. Supp. at 1123 (suppressing use of evidence); McCallum, 149
F.R.D. at 113; Brown, 148 F.R.D. at 255; Shearson, 139 F.R.D. at 48.


                                                                                         31
sought, disqualification is infrequently granted, at least where privileged
information has not been obtained. 107

       Virtually every state prohibits most ex parte contacts concerning a
pending matter with a judicial official. E.g., Cal. R. Prof. Conduct 5-300(B)(5)
(prohibiting contact with a judicial officer concerning the merits of a contested
matter pending before the officer, with certain specific, narrow exceptions).
Judges, of course, may visit blawgs and participate in Internet communications.

       No authority directly on the question of how the rules regarding ex parte
contacts apply to blogs was located. However, two opinions analyzing other
forms of web communications suggest that an improper ex parte contact can
occur through a blawg. It seems likely that a communication which occurs
through a blawg is covered by these rules, and, more interestingly, Internet
communications may be subject to a more stringent rule than applies in the “real”
world. Two opinions lead to those predictions.

        First, the Oregon Bar Association addressed this issue. 108 It recognized
that the digital nature of the contact was irrelevant: if the contact was prohibited
in the analog world, then it was prohibited in digital one, too. Thus, since a
lawyer can obviously read a 10-K filed by its opponent, or its annual report, a
lawyer who reads information posted on a website is not violating the rule.

        While a passive review of publicly accessible information does not violate
the rule against ex parte contacts, websites are often interactive. The Oregon Bar
distinguished between different degrees of interactivity:

                   Some web sites allow the visitor to interact with the site.
           The interaction may consist of providing feedback about the site or
           ordering products. This kind of one-way communication from the
           visitor to the Web site also does not constitute communicating
           “with a person” as that phrase is used in DR 7-104. Rather, it is
           the equivalent of ordering products from a catalog by mailing the
           requisite information or by giving it over the telephone to a person
           who provides no information in return other than what is available
           in the catalog…

                   A more interactive Web site allows the visitor to send
           messages and receive specific responses from the Web site or to
           participate in a “chat room.” A visitor to a Web site who sends a
           message with the expectation of receiving a personal response is
           communicating with the responder. The visitor may not be able to
           ascertain the identity of the responder, at least not before the
           response is received. In that situation, a lawyer visiting the Web

227
           See Allstate Ins. Co. v. Bowne, 817 So.2d 994,999 (Fla. App. 2002).
108
      Oregon State Bar Association, Opinion No. 2001-164 (Jan. 2001).


                                                                                  32
       site of a represented person might inadvertently communicate with
       the represented person. If the subject of the communication with
       the represented person is on or directly related to the subject of the
       representation, the lawyer violates DR 7-104.

                For example, assume Lawyer B’s client is a retailer in
       whose store a personal injury occurred. Lawyer A could visit the
       store and purchase products without the consent of Lawyer B, and
       could ask questions about the injury of clerks and other witnessed
       not deemed represented for purposes of DR 7-104. Lawyer A
       could not, however, question the store owner or manager or any
       clerk whose conduct was at issue in the matter. That same analysis
       applies if Lawyer B’s client operates an “e-store.” Lawyer A could
       visit the “e-store” site and review all posted information, purchase
       products, and respond to surveys or other requests for feedback
       from visitors. Lawyer A could not send a demand letter or an
       inquiry through the Web site requesting information about the
       matter in litigation unless Lawyer A knew that the inquiry would
       be answered by someone other than Lawyer B’s client (or, if the
       client is a corporation, someone deemed represented). 109

        Thus, passively entering an opponent’s website or blawg does not trigger
the rule against ex parte contacts. It would also seem that an opponent’s visit to a
blawg does not violate the rule. Only if the contact crosses into an improper
interactive inquiry is the rule violated.

        More recently, a Los Angeles County Bar Association concluded that
comments made on a listserv could constitute ex parte contacts with judges. L.A.
County B. Ass’n Prof. Resp. & Ethics Comm. Formal Opo. 514 (Aug. 19, 2005).
The Los Angeles County Bar Association concluded that an ex parte contact
could occur – but would not occur where the contact was inadvertent, as where,
for example, the lawyer made a comment on a listserv about an expert witness,
and a judge before whom that expert was about to testify was a member of the
listserv and read the comment. “However, in order to reduce the likelihood of
any kind of unintended ex parte contact, lawyers using List servs must always
consider who else may have access.” Id.

       Both the Oregon and Los Angeles County opinions appear to put a duty to
avoid unintentional ex parte contacts, when the rule itself prohibits only contacts
with a person the lawyer knows to be represented in the matter. Perhaps the
nature of the Internet demands this approach, but it remains to be seen if courts,
though applying Rule 4.2 to blawgs, will nonetheless find that contacts are not
improper unless the lawyer knew the person was in fact represented in the matter
about which the communications occurred.


109
       Id.


                                                                                  33
        C. Confidentiality

        Blogs are forever, as are the transcripts of many chatrooms and other
forms of Internet communications. In addition, even if they are ephemeral, by
definition these forms of communication are open to third-parties, and often to the
public at large. As a result, no confidential client information should ever be
disclosed.

       Lawyers perhaps know this. Young lawyers in particular may not,
however, appreciate the breadth of the definition of “confidential information” – it
generally includes all information relating to a representation, and not just
information that the client has asked be held in confidence or which would
“embarrass” the client.

       Sometimes, lawyers use listservs to post “genericized” versions, or
hypotheticals, to get the benefit of the expertise on a listserv without disclosing
the identity of the client or the exact matter involved. The Model Rules prohibit
the disclosure of information relating to a representation if done purely for
pedagogical purposes. Some argue that by couching actual confidential
information in the form of hypotheticals, a violation if Model Rule 1.6 can be
avoided.

         Under this view, a blawger can comply with Model Rule 1.6 by
generalizing the information -- by removing from the war story enough
information to mask the identity of the client. 110 If the adjunct discusses a matter
in such a way that the war story could relate to any client, and not an identifiable
client, then the duty of confidentiality is arguably not breached. A commentator
reasoned that “if the lawyer keeps the client reasonably unidentifiable, it might
not be appropriate to call the information confidential in the first place.” 111

        There is no controlling legal authority supporting the proposition that it is
ethical to disclose hypothetical information relating to a client’s case for
pedagogical purposes. However, some comfort comes from a recent ABA opinion
which addressed the ethical obligations of a lawyer who consults with a second,
non-affiliated lawyer about a representation. 112 The ABA reasoned that a lawyer
representing a client could seek informal consultation from another lawyer and
discuss the case in generalities without violating the duty of confidentiality. The
ABA was quite cautious, however, stating:

               A consultation that is general in nature and does not
        involve disclosure of client information does not implicate Rule
        1.6 and does not require client consent. For instance, a lawyer

110
    Karen L Tokarz, A Manual for Law Schools on Adjunct Faculty, 76 Wash. U.L.Q. 293, 302
(1998).
111
    Lee D. Hwang, The Ethical Obligations of a Teaching Lawyer, 38 CLE J. & Reg. 5, 10 (1992).
112
    ABA Comm. on Ethics and Prof’l Responsibility Formal Op. 998-411 (1998).


                                                                                           34
        representing a client accused of tax fraud might consult a colleague
        about relevant legal authority without disclosing any information
        relating to the specific representation. Similarly, a lawyer might
        consult a colleague about a particular judge’s views on an issue.
        Neither consultation requires the disclosure of client
        information. 113

        Somewhat like the general consultations are those that can be done
anonymously or in the form of a hypothetical case. The consulting lawyer can
“suppose” a set of facts and frame an issue without revealing the identity of his
client or the actual situation. Where there is no disclosure of information
identifiable to a real client or a real situation, the consulting lawyer does not
violate Rule 1.6 when he consults outside the firm.

       The consulting lawyer should not assume, however, that the anonymous or
hypothetical consultation eliminates all risk of disclosure of client information. If
the hypothetical facts discussed allow the consulted lawyer subsequently to match
those facts to a specific individual or entity, the information is not already
generally known, and disclosure may prejudice or embarrass the client, the
consulting lawyer’s discussion of the facts may have violated his duty of
confidentiality under Rule 1.6.

        Similarly, the disclosure of privileged information specific to an
identifiable client, without the client’s consent, violates an attorney’s duty under
Rule 1.6. If a lawyer reasonably can foresee at the time he seeks a consultation
that even the hypothetical discussion is likely to reveal information that would
prejudice the client or that the client would not want disclosed, then he must
obtain client consent for the consultation. On the other hand, if circumstances that
were not reasonably foreseeable by the consulting lawyer at the time of the
consultation result in the consulted lawyer subsequently discovering the client
information, one cannot in hindsight say that the consulting lawyer has breached
his duty under Rule 1.6. 114

        Where a lawyer concludes that governing law permits the use of
hypothetical or generic client stories solely to serve pedagogical purposes, the
adjunct should take reasonable steps to present the information in such a way as to
avoid allowing the client to be linked with the information and to preclude harm
to the client even if that association is made in the minds of the students. 115 There
are three obvious steps that an adjunct can take to meet that goal.

       First, masking the identity of the client is key, since information that
cannot be connected to any client is unlikely to be considered to be a client’s

113
     Id.
114
    See Lee D. Hwang, The Ethical Obligations of a Teaching Lawyer, 38 CLE J. & Reg. 5, 10
(1992).
115
    See id.


                                                                                             35
confidential information. 116 Some cases are so well-known and unique that
discussing them, even generically, will identify the client. For example, if Patrick
Fitzgerald as a blawger were to post a blawg that read: “I once prosecuted a
fellow for obstruction of justice even though he had a very high position in the
government” the identity of the matter would be apparent to all. Some matters
present unique fact patterns that cannot be discussed, even generically, without
identifying the client or matter

        Second, disclosure of information regarding on-going representations
creates greater risk of harm to a client than does disclosure of information
concerning closed matters. While the rules do not limit the prohibition against
disclosure to circumstances in which the client will be harmed, plainly a client is
less likely to complain where the matter is over and disclosure is much less likely,
as a result, to damage, prejudice or embarrass it.

        Third, the extent to which the information is in the public domain is
important. An blawger who discusses, for example, the facts and holding of a
reported opinion that resulted from litigation that the blawger handled may, as
noted above and in the literal sense, be violating Model Rule 1.6, but only in the
most literal sense. On the other hand, blawger who discusses the facts concerning
a matter that was handled and settled without suit having even been filed
obviously increases the risk of violating not just the literal rule, but its clear intent.

        In sum, a lawyer wishing to blawg and discuss client matters must
confront the clear language of Model Rule 1.6, which on its face prohibits the
disclosure of facts “relating to a representation” without regard to purpose. If the
lawyer chooses to blawg, he should use generic or hypothetical stories, structured
to avoid disclosing the information in such a way as to allow it to be identified to
the particular client. Again, however, some matters are either so sensitive or so
readily identifiable to a particular client that they should not be discussed absent
client consent.

       A recent California ethics decision reached a similar conclusion. It
admonished, in the context of listservs, that “attorneys should avoid including
information in Listserv postings identifiable to particular cases or controversies.”
L.A. County B. Ass’n Prof. Resp. & Ethics Comm. Formal Opo. 514 (Aug. 19,
2005). “Although the hypothetical may seem not to involve client confidences,
such concerns [about revealing confidences] must be paramount at all times.” Id.
The same concerns can occur in blogging, of course.

       Not only does posting a hypothetical about a client implicate confidences,
responding to another post may also do so. Suppose, for example, a thread on a
blawg relates to expert witnesses, and the posts turn to particular experts.
“Arguably, an attorney opining in reply about an expert might reveal mental
impressions and affect a waiver of work product doctrine.” Id.
116
      See id.


                                                                                       36
       D.      Advertising Rule Violations

        Law firm websites are “advertisements” that are subject to strict
regulation. Are blawgs “advertisements” as well? If so, then they must comply
with advertising rules and, in some states, be submitted to the bar for review.

         Obviously, a firm that puts the word “blawg” on what is otherwise an
advertisement must comply with the ethics rules. The problem is the converse: is
a webpage that happens to talk about legal matters an “advertisement?” The
Kentucky Bar Association initially took the position that blawgs were
advertisements, and had to comply. See www.legalethics.info for a discussion of
the trials and tribulations of blawger Ben Cowgill. The Kentucky Bar Association
originally informed him that his blawg was an ad, and thus he was in violation of
the advertising rules for not having submitted it to the bar, and so on. After
discussion, the bar association somewhat retreated, and purportedly takes the
position that a blawg will be deemed in compliance so long as its author pays $50
and submits the “about” page to the bar.              See id.     See generally,
www.WillHornsby.com; Victoria Slind-Flor, Is a Lawyer’s Blog an Ad?, 24
ABAJ E-Report 5 (June 17, 2005) (recounting Cowgill’s plight). New York, for a
time, wanted all blawgs to be regulated as “ads.” That effort, however, collapsed
under sustained opposition.

       Even if a blawg is not an advertisement, a firm that permits one of its
lawyers to make statements in a blawg that violate the ethical rules might be held
accountable for those violations. Cf. Ohio Ethics Op. 2004-7 (Aug. 6, 2004)
(concluding that a company that touted a law firm improperly had an obligation to
withdraw from representing the company if it refused to comply with the lawyer’s
requests to drop the offending statements).

       E. Unauthorized Practice and Related Issues

        Most likely, the information posted on a blawg is not intended as legal
advice, and a reasonable person most likely would not rely upon it, even if a
disclaimer is not present. Nonetheless, it may be helpful and avoid confusion if
any blawg that contains material that might “look like legal advice” contain at
least a passive disclaimer stating that the information on the site is not legal
advice, and is not intended to be relied upon.

        Further, it may be advisable to place on such blawgs language that
disclaims any intent to create an attorney client relationship with those who read
the blawg’s post, and which specifies that the information is not legal advice
geared to a particular state or set of circumstances. While a court will likely hold
that, even absent such disclaimers, blawgs are not the stuff of which attorney-
client relationships are made, the disclaimer may at least reinforce that
conclusion.



                                                                                 37
       F. Firm Resources and Related Issues

        One obvious problem is the use by firm employees of firm resources (such
as computers) to maintain blogs or participate in other forms of Internet
communications. As noted below, if a firm permits the use of its resources for a
lawyer to “blog” that may create liability issues. The liability would seem to be
most acute were the firm to permit the lawyer to use firm servers to store his blog,
and to use firm computers to update and maintain it.

       G. Firm Liability or Harm

               1.      Intellectual Property Infringement

       As of now, there have been no reported infringement cases brought against
bloggers. Nonetheless, firms ought to consider the risks in this area.

         Young employees may not view the use of another person’s words or
symbols with the same respect as the law demands. “File sharing” and other
forms of copyright infringement are tolerated widely by younger people, and they
may carry those habits over to their Internet activities. While it is no doubt true
that a firm will not be held to have induced or contributed to infringement simply
because one of its employees in their on private affairs infringes the copyright or
trademark of a third party, if the firm allows the employee to use firm resources to
maintain the infringing site and knows of its infringing nature, the risk of a claim
increases.

        It is beyond the scope of this article to define the line between fair use of
copyrighted material and misappropriation. However, the risk of liability
increases where commercial gain is involved and where a substantial portion of
the material is used. An additional problem arises if the blog permits third-parties
to post. It would seem possible for the blog owner to be secondarily liable for the
third-parties’ infringements, at least under some circumstances. See generally,
David Hricik, Remedies of the Infringer: The Use by the Infringer of Implied and
Common Law Federal Rights, State Law Claims, and Contract to Shift Liability
for Infringement of Patents, Copyrights, and Trademarks, 28 Tex. Tech. L. Rev.
1027 (1997).

        Even if the firm is not liable, if the employee happens to infringe the
copyright, trademark, or other intellectual property of a firm client, a business
relations issue could, at minimum, arise.

                       2.     Admissions Against the Firm




                                                                                  38
        Suppose a firm lawyer posts on a Blawg “everyone knows the statute of
limitations for torts is two, not four, years” and another firm lawyer has
negligently advised a client that the statute is four years. Any harm?

        Perhaps. In one case, a lawyer answered a question about medical
malpractice cases posted by an attendee at a CLE conference. The lawyer stated
that a good lawyer would always get the medical records in such cases. In
representing a plaintiff later in a medical malpractice case, the lawyer failed to
obtain the medical records. The plaintiff sued, and sought to admit the lawyer’s
statement at the CLE conference to the third party. The court admitted the
statement as an admission. 117

           H.       Recommendations

                    1. Educate Lawyers and Staff

       While no doubt all lawyers and staff may be using the Internet, younger
members of a firm are obviously more likely as a practical matter to be heavily
involved in Internet use. Educating all lawyers, but particularly the younger ones,
therefore, is a critical component to avoiding embarrassment or liability. Staff,
especially, may be unaware of the issues.

                    2. Provide Written Policies and Require Certain Disclosures

           There are numerous items that a firm policy might address. Among them:

                    •       To avoid the appearance that the firm sponsors or endorses
                            the blog, the firm’s name should not appear on it;
                    •       To avoid the appearance that the lawyer has the permission
                            of the firm to post to listservs and the like, any postings
                            should not include a firm e-mail address.
                    •       To avoid disclosing client confidences, client confidences
                            should never be discussed on any public forum on the
                            Internet.
                    •       No comments concerning any matter that the firm is
                            representing a client on, or has done so, should be
                            discussed on any public forum on the Internet.
                    •       No opinions concerning an expert that the firm had or has
                            retained in a matter should be posted.
                    •       No firm server space should be used by a lawyer for private
                            purposes.

Individual lawyers have much to ponder about the Blogosphere. Their conduct
can violate several rules, or otherwise embarrass their firm or their firm’s clients.

117
      McGuinness v. Barnes, 683 A.2d 862 (N.J. Super. Ct. Law Div. 1994).


                                                                                    39
Banning the use of Internet communications by firm lawyers is not a practicable
option, and so regulating the content of such communications and distancing the
firm from the lawyers’ postings is probably the only reasonable recourse. Taking
reasonable steps will help to reduce the likelihood of the firm being embarrassed
by an employee’s post or of otherwise experiencing trouble due to an Internet
communication.

X.       Outgoing: Metadata and the Duty to Scrub

        As noted above, Metadata is “data about data.” 118 Although it sounds
quite modern, one form of metadata is no doubt familiar to every lawyer: the “fax
band” on a document received by facsimile that shows the time and date the fax
was received, the number from which it came, and the number of pages sent.
Thus, a fax band is metadata since it is data about data. And even this simple
form of metadata may reveal a lot. For example, it could be used to show that a
party’s claim that she did not receive a document on a certain date is incorrect.

        Metadata is not new, but it has become pervasive in the digital world in
which lawyers (and their clients) live. Many programs commonly used in the
office create data about data and then save that unseen information along with the
visible text of the document in a single file. Put simply, “invisible fax bands”
commonly accompany many of the electronic documents we create on a daily
basis. This unseen information is typically transferred along with the document in
which it is embedded unless removed prior to transmission. Thus, generally, any
time the file is transmitted, the invisible “fax bands” are also sent.

         But rather than simply revealing seemingly innocuous information, such
as the time and date the file had been prepared, metadata often reveals much,
much more. For example, many software programs permit an author to “track
changes” to the text, to save “multiple undoes” in case the author later decides to
“undo” revisions made long ago, or even to insert “invisible” comments into the
file. Such data could reveal a wealth of information to recipients of the electronic
file, potentially resulting in a significant impact on negotiating positions, litigation
strategies, and numerous other sensitive scenarios.

       Recently, a lawyer relayed a purportedly true story to one of the co-
authors that demonstrates the potential risks of exchanging files with embedded
data. He had been negotiating a contract against a well-known software maker
which, for purposes of this article, will be called “Macrosoft.” During
negotiations, the lawyers for each side used a common word-processing program,
Microsoft Word, to edit and propose revisions to the contract, and they utilized
the program’s “track changes” feature to allow the lawyers to see the specific
changes proposed. They e-mailed the electronic draft with this embedded

118
    Definition of Metadata, http://wordnet.princeton.edu/perl/webwn?s=metadata (last visited Dec.
4, 2007). This section was co-authored with my research assistant, Chase Scott.


                                                                                              40
information back and forth to each other between rounds of revisions. After
receiving one such draft from Macrosoft’s counsel, the lawyer made a few easy
mouse clicks to reveal, without using anything but Microsoft Word’s inherent
functions, “hidden” internal comments from Macrosoft’s business personnel
concerning the terms of the contract, negotiating positions, and bottom-lines.
Thus, had Macrosoft subsequently insisted that a noncompete clause was
extremely important to close the deal, the lawyer would have been able to tell if
this were true or whether it was simply a negotiating ruse. Clearly, metadata is an
important consideration in today’s legal environment.

        This first part of this section explains how metadata is created and
embedded in some popular programs and analyzes what obligations, if any,
lawyers have to remove this embedded material from documents that they create
or send on their clients’ behalf. Did Macrosoft’s lawyers, for example, violate
duties to their client by sending embedded data along with the text of the contract
to opposing counsel? This section also provides a number of useful tips on how
lawyers can remove metadata from documents created in some of the more
popular office software and avoid similar situations in their own practice.

       The first part of this paper analyzed the recipient’s duties. If a lawyer
receives a file containing embedded data that reveals confidential or privileged
information of an opposing party, is the lawyer bound by the same obligations
that apply as when documents in a misaddressed envelope are received or,
conversely, is the lawyer free to use and review the embedded information?

       A.       The Purpose Of Metadata

        Obviously, software does not embed hidden data into documents to
purposely cause the disclosure of confidential information. Although the type and
amount of embedded data stored will vary by the particular program used, the
primary function of metadata is utilitarian: it is designed to help users revise,
organize, and access electronically-created files. Typical metadata includes, for
example, information about the person who authored the document and the
location (drive, folder) of where the file was saved. In addition, a file can include
metadata records of past revisions. A person can, as a result, examine the changes
that have been made to a file and compare them visually to any hand-written
revisions to ensure that they have, in fact, been made. Thus, embedded data
serves a useful and legitimate purpose.

       B.       Metadata In Microsoft Word

      Microsoft Word has rightly been called the “ubiquitous” software
program. 119 Lawyers commonly use Microsoft Word to create documents, and


119
  Andrew Beckerman-Rodau, Ethical Risks from the Use of Technology, 31 RUTGERS COMPUTER
& TECH. L.J. 1, 32 (2004); Brian D. Zall, Metadata: Hidden Information in Microsoft Word


                                                                                     41
these files are regularly e-mailed in electronic form to clients, third parties, and
opposing counsel. Unfortunately in some respects, embedded data is ubiquitous
in Word. Thus, the risk in electronically transferring sensitive metadata through
these documents is substantial. The following outlines some of the most common
embedded information that is found in Word documents:

        File Properties Information

       Some of the most basic metadata in a Word document can be viewed by
looking in different menu items in Microsoft Word. 120 A key location is in the
“Properties” item, located in the “File” menu. The “Properties” for a particular
document can reveal the author, creation dates, and other information. For
example, this particular article (as of about halfway through the writing process)
contained the following information under File/Properties:




      The metadata on just that single screen reveals that the file was created in
August and was still being worked on in October, 2005. It also reveals that the
document was in its 44th revision (meaning it had been opened and closed 44




Documents and Its Ethical Implications, 33 COLO. LAW. 53, 53 (Oct. 2004) (describing legal
profession’s widespread adoption of Microsoft Word).
120
    Interestingly, most metadata is stored in the last blank space of a Word document. If, for
example, you select all of a Word document except its last space (which will appear to be blank)
and then copy and paste that material into a new Word document, most metadata will not follow
along. For a more technical discussion of how metadata is embedded in a Word document, see
Zall, 33 COLO. LAW. at 54.


                                                                                             42
times) and had been edited for a total of 205 minutes.121 Had this document been
work product for a client and had the author transmitted the file to the client in
electronic form, the client would have been able to access this metadata to tell
whether the lawyer had worked on the document for as long as indicated in the
lawyer’s fee statement. If it had been a report prepared by an expert witness sent
to opposing counsel, the attorney could have discerned how long the expert had
spent drafting the report. If it had been a brief prepared by an undisclosed
attorney and forwarded to opposing counsel, the author’s identity could have been
revealed. 122 Metadata matters. 123

        Track Changes Feature

       More troubling than the basic metadata found in the File/Properties screen
is the other unseen data that can accompany a Word file. Foremost, “track
changes” is a feature within Word that creates a record of every change made to a
document. It has many uses: lawyers who exchange drafts of contracts, as
mentioned in the introduction, can turn on this feature to allow prior revisions of a
proposed contract to be reviewed during negotiations; word processing personnel
may enable “track changes” so that they can review and ensure that they have
made each handwritten edit desired by a lawyer; and so on. 124

        Complications can occur, however, when the author or editor of the
document does not know that the “track changes” feature was turned on. Such
ignorance may be commonplace because, depending on the settings of the
program, Word may not actually display the tracked changes on screen. In such a
case, the user would have to specifically enable an option to view those changes.
For example, this paragraph was written with the track changes feature
enabled. 125 What you are reading now is the way the paragraph looked when I
was finished editing it (i.e., even though “track changes” was turned on, Word did
not reveal those tracked revisions on-screen.) Here, though, is what the paragraph
looked like when the option to view tracked changes was enabled:



121
    To be clear, the file could simply have been open on the screen for 205 minutes. Thus, the
amount of time indicated does not necessarily mean that the file was being worked on for all of
those 205 minutes.
122
    The kind and amount of information stored in the “Properties” file can be customized. To see
whether your version has been customized, click on the “Custom” tab at the top of the
“Properties” dialog box.
123
    There are a number of other sources of metadata. For example, other tabs in the “Properties”
dialog box depicted show where the file was stored on the author’s hard drive and other
information.
124
    See generally, James Veach, Commutation Agreements: Drafting a Clear and Comprehensive
Contract, 854 PLI/COMM 43 (2003) (noting that track changes can be used to aid in the drafting
process).
125
    To turn on “track changes,” go to the “Tools” menu and to “track changes.” To see whether an
open document contains tracked changes, turn on track changes and then ensure that you have
selected the “final showing markup” on the “Review” toolbar that appears.


                                                                                             43
If the file had been e-mailed to someone, the recipient could have easily revealed
the changes and seen the revisions shown above. If this document had been a
contract instead of the present article, the metadata could have revealed to an
opposing party the negotiator’s mental process in working through revisions
previously made to key proposed terms. 126 Such information could clearly be
valuable to the opposing party in deciding its own negotiating strategy.

        Fast Saves Feature

       Another form of embedded Word data is created by the use of “Fast
Saves.” This feature enables the user to quickly save the document without
having to take the time to perform a full save. However, “fast saves” only append
the changes to the end of the document file rather than replacing the actual edited
material. In other words, fast saved documents may retain information that the
user believes has already been deleted. Thus, when “fast saves” are enabled,
“deleted information remains hidden within the document.” 127 Opposing counsel
who receives a file that has been created with “fast saves” enabled can easily open
the document and recover all of the previous revisions. 128


126
    See Zall, 33 COLO. LAW. at 55-56 (collecting hypotheticals on how metadata could harm clients
and lawyers when transmitted to opposing counsel).
127
    Toby Brown, Special Handling: How Paper and Electronic Files Differ, 21 GPSOLO 22, 23
(Sept. 2004). This is done by selecting “Save As” from the “File” menu, then selecting “Tools”
and then “Save Options.” One option is “Allow Fast Saves.” Fast Saves is “very useful in the
event of hardware failure because it reduces the chance of losing changes to a document.” Id.
128
    Id.


                                                                                              44
           Comments Feature

       Embedded data can also be found in Word documents in the form of
“comments.” Comments is an incredibly useful feature for collaboration. For
example, the authors collaborated on writing this article. If one of the authors had
wanted to, he could have made a comment to the other to explain why he
suggested a revision, included a certain concept or needed clarification on some
passage. Those comments are embedded within the file and accompany it
whenever it is exchanged. Below is a screen shot of a few lines from a chapter of
a book one of the authors co-wrote as seen in Word with the view set to show
tracked changes and comments:




Thus, like tracked changes, the “comments” feature of word can leave hidden data
within an electronic document that may be valuable to opposing counsel.

           Versions Feature

       A final example of a type of hidden metadata in Word is created by the
software’s “versions” feature. If “versions” is enabled, each time the file is saved,
a new version is created and stored, leaving prior versions of the document intact.
Thus, once again, if the file is transmitted to an opposing party, she could review
every prior version of the document to see what changes had been made to the
document. 129

129
      See Zall, 33 COLO. LAW. at 54-55.


                                                                                  45
        C.        The Duty to Avoid Disclosing Embedded Confidential
                 Information

        All of the above-listed features from Word are useful to lawyers or their
word processing personnel. Lawyers need to be aware, however, of the fact that
these tools embed hidden data within the file. Further, they also need to recognize
that their word processing staff may enable certain features without the lawyer’s
knowledge. 130 For example, if a lawyer is unaware that her secretary had enabled
“track changes,” and if the secretary failed to appreciate the problems created by
transmitting the file with track changes still embedded, then disaster could strike.
        But the risk of unintended disclosure has always existed, just in a different
form. Not too long ago, the primary risk was that a letter intended for a client
would instead be mailed to opposing counsel. 131 Similarly, a lawyer might have
made handwritten comments on a contract proposal drafted by the other side, and,
though intending to forward the document to the client for review, may have
inadvertently mailed or faxed it to opposing counsel.

        In the digital age, however, new methods for creating, editing and
transmitting documents have increased the risk of unintended disclosures. Instead
of misaddressing envelopes, for instance, today lawyers and their staff can
inadvertently send e-mail intended for a client to opposing counsel or a third
party, or may accidentally forward to opposing counsel an e-mail received
privately from a client. 132 And, as discussed above, electronic files can now
reveal more information than drafts from the past – they “can reveal a cache of
information, including the names of everyone who has worked on . . . a specific
document, text and comments that have been deleted, and different drafts of the
document.” 133 Thus, due to the inherent dangers involved with transmitting such
metadata, it is important to discuss what professional duties lawyers owe to their
clients to safeguard this information from disclosure.

       To aid this discussion, it is helpful to emphasize the distinction between
confidential information that a lawyer has a professional duty to keep in
confidence and information that is privileged under the attorney-client privilege.
The attorney-client privilege protects against the forced disclosure of
communications between the lawyer and the client. 134 The privilege is a qualified
one, however, because only confidential communications between the attorney

130
     For example, Georgia Rule of Professional Conduct 5.3(b) requires lawyers with direct
supervisory authority over a nonlawyer to “make reasonable efforts to ensure that the person’s
conduct is compatible with the professional obligations of the lawyer[.]”
131
    See generally, Am. B. Ass’n. Formal Eth. Op. 92-368 (1992) (describing such scenarios).
132
    See generally, Steven L. Nelson & Jane C. Schlicht, Upholding the Sanctity of the Attorney-
Client Privilege, 77 WIS. LAW. 8 (2004) (describing hypotheticals); Emily Eichenhorn, Risks &
Rewards: Resisting the Inclination to Abdicate to Technology, 63 OR. ST. B. BULL. 39, 40 (2003)
(same).
133
    Jason Krause, Hidden Agendas, 90 AM. B. ASS’N. J. 26 (July 2004).
134
    See Bryant v. State, 651 S.E.2d 718, 725 (Ga. 2007).


                                                                                            46
and client are protected from disclosure. Thus, the privilege does not apply to
information learned by the lawyer from third parties or even to the lawyer’s
conversations with the client if those conversations were conducted in the
presence of others. 135

        While the attorney-client privilege protects against the forced disclosure of
privileged communications by an opposing party, lawyers themselves are
restricted, under duties of professionalism, from disclosing “confidential
information” unless authorized to do so by their client or judicial authority. And
the “confidential information” covered by this duty is far broader than attorney-
client privileged information because it encompasses all information “gained [by
the lawyer] in the professional relationship with a client.” 136 Given this broad
definition, there is a substantial risk that metadata transmitted to a third party by
an attorney will contain confidential information. Accordingly, a lawyer who
knows a document contains embedded information generally has a duty to remove
it before transmitting the file.

        But what about a lawyer who unknowingly transmits a document with
embedded confidential information? Has that lawyer violated the duty of
confidentiality? Some may argue that because “every one knows” about
metadata, any lawyer who fails to remove hidden confidential information has
breached his or her professional duty. 137 In the authors’ experience, though, the
opposite is true: the vast majority of the nearly 1,000 lawyers Mercer faculty
have spoken to about this issue had never heard of metadata, let alone understood
how to avoid creating such information or how to remove it. In further support of
this less-than-scientific observation, documents that contain embedded data have
routinely shown up on the web - some were even posted by large-firm lawyers
who ostensibly should be the most educated about embedded data. 138 In any
event, the existence of metadata and the dangers it presents for unintended
disclosure are becoming more widely known. As a result, lawyers will soon, if
the time has not already arrived, be unable to avoid negligence claims or defend
against bar complaints by pleading ignorance of the risks that embedded
information creates. Thus, attorneys should take every effort to prevent the
transmission of confidential information. Some simple methods to aid in this
effort are detailed in the following section.

        D.      How To Avoid Creating And How To Remove Embedded Data


135
    Id.
136
    Georgia Rule of Professional Conduct 1.6.
137
    For example, Vincent Polley, then-chair of the ABA’s Cyberspace Law Committee has been
quoted as saying that lawyers can no longer “plead ignorance when it comes to this stuff any
more.” Krause, 90 AM. B. ASS’N. J. at 26.
138
     See, e.g., Declan McCullagh, AT&T leaks sensitive info in NSA suit,
http://news.zdnet.com/2100-9588-6077353.html (May 26, 2006) (reporting, ironically enough, on
the inadvertent revelation of embedded data in a suit about improper government surveillance)
(last visited December 19, 2007).


                                                                                          47
      There are several approaches to addressing inadvertent transmission of
metadata. This section surveys some of the means to do so. 139

        Avoid Creating Embedded Data

        Obviously, the easiest way to avoid the disclosure of embedded
confidential information is not to create it in the first place. Microsoft and other
developers have recognized the importance maintaining the confidentiality of
metadata in certain situations and in response have included in the programs
options allowing users to alter the types and amount of embedded information
stored in their documents. The following describes simple measures to avoid
creating or to limit the creation of embedded data when using the more commonly
used software:

        Microsoft Word

        Under the “Tools” menu, select “Options” and click on the “Security” tab.
The resulting dialog box allows the user to encrypt the file, edit privacy options,
and change the level of macro security. Checking the box “remove personal
information from file properties on save” prevents the personal information
associated with your computer, network, or registration information from
attaching to the document. Thus, this option should be selected when the lawyer
works on any potentially sensitive documents in Word that may be transmitted to
outside parties.




139
   See generally, Carole Levitt & Mark Rosch, Making Metadata Control Part of a Firm’s Risk
Management, 28 L.A. LAW. 40, 40 (Mar. 2005) (describing various means to remove metadata,
including some of those discussed here); Storm Evans, How to Commit Malpractice With a
Computer, 29 LAW PRACT. MGMT. 56 (Mar. 2003) (“If you must e-mail or otherwise deliver a
Word document, consider using macros or a utility program to strip away the metadata”).


                                                                                        48
        Other information, such as the author of the document, contained in the
“Summary” tab under “Properties” within the “File” menu, may also be
considered sensitive and inappropriate for opposing counsel to view. The lawyer
can remove any of the offending information from the document by simply
deleting the entries in the text boxes and clicking “OK” to save her revisions. 140

       As noted above, use of the “fast saves” feature of Word can leave hidden
data in the document. To turn off “fast saves,” go to the “Tools” menu, select
“Options,” and click on the “Save” tab. Under the “Save” tab, ensure that the
“allow fast saves” box is not selected. 141

        As also previously discussed, Word allows users to save multiple versions
of the same document, thus increasing the risk for unintended disclosure of
information contained in earlier versions. To determine whether any older
versions of a file exists, go to the “File” menu and click on “Versions.” Any old
versions attached to the document will be listed by the date/time and creator of the
saved version. To remove a version, simply click on the offending entry and
select delete. 142




140
     How to Minimize Metadata in Word 2003, http://support.microsoft.com/kb/825576/ (last
visited Dec. 11, 2007).
141
    For more information on “Fast Saves,” visit Frequently Asked Questions About “Allow Fast
Saves,” http://support.microsoft.com/kb/291181/.
142
    http://support.microsoft.com/kb/825576/


                                                                                         49
        Microsoft PowerPoint

       Similar to Word, Microsoft PowerPoint will track, via normally hidden
metadata, personal information such as the identity of the author of the document.
To remove this metadata from a PowerPoint file, go to the “Tools” menu and
select “Options.” Under the “Security” tab, ensure that “remove personal
information from file properties on save” is checked. 143 To delete the user name
and initials associated with the file, click on the “General” tab in this same
submenu. From here, the user can simply highlight and delete the unwanted
information. 144

       Finally, it is important to note that PowerPoint documents often contain
embedded files from other programs which may, in turn, contain their own
metadata. To ensure that the embedded objects are metadata free, right click the
object to be embedded and select “cut.” From there, select the desired slide, go to
the “Edit” menu and select “Paste Special.” 145 This newly created image will be
free from sensitive information concerning its source.

        Microsoft Excel

        Many of the same processes used to eliminate metadata from Word and
PowerPoint files can also be used to eliminate personal data from Microsoft
Excel. However, Excel presents several unique methods for retrieving personal
data that attorneys should be aware of prior to sending workbook files to opposing
counsel. For instance, in Excel, users have the ability to hide individual, rows, or
columns of cells from view. To view these hidden cells, hit Ctrl+Shift+Space Bar
to select all of the cells in the workbook, then go to the “Format” menu and find

143
      How to Minimize the Amount of Metadata in Powerpoint 2002 Presentations
http://support.microsoft.com/default.aspx?scid=kb;EN-US;314800 (last visited Dec. 12, 2007).
144
    Id.
145
    Id.


                                                                                         50
the submenu for “Row.” Under this submenu, select “Unhide.” Repeat this
process for the “Column” and “Sheet” submenus. This should make all hidden
cells and sheets visible and capable of being deleted if the information contained
therein is found to be confidential. 146




       Excel users can also link formulas between multiple workbooks. Though a
useful tool, these formulas may contain metadata concerning the documents to
which they are linked. To remove this potentially sensitive data, highlight the
linking formula, right click, and select “Copy;” following this, go to the “Edit”
menu and click “Paste Special;” select “Values” and click “OK.” Note that this
will result in the formula being deleted from the document; however, the resulting
data will remain in the workbook. 147

        Removing Embedded Data Before Transmitting

       While the above methods can help reduce the amount of metadata created
and stored in the lawyers’ electronic files, attorneys should also consider taking
additional precautions to remove any other embedded information that has already
made its way into a file before transmittal. 148 There are a number of methods to
accomplish this task. Because reasonable care is necessary to satisfy the lawyer’s
duty of confidentiality, the nature of the communication at issue will indicate
what steps are required for particular communications or practices.


146
         How      to     Minimize      Metadata     in    Microsoft       Excel     Workbooks,
http://support.microsoft.com/default.aspx?scid=kb;EN-US;223789 (last visited Dec. 12, 2007).
147
    Id.
148
    See Beckerman-Rodau, 31 at 32-33 (2004) (suggesting that lawyers should consider removing
metadata); Gerald J. Hoenig, Technology Property, 18 PROBATE & PROP. 51 (Sept. 2004) (same).


                                                                                           51
        Large software makers know about the problems that unintentional
transmission of metadata can create for lawyers, and no doubt others, and have
updated their programs with additional functionality to avoid creating, avoid
transmitting, and/or to remove this embedded data. Microsoft created a free add-
in, which can be downloaded from the company’s website, that can effectively
eliminate most sensitive information from documents created in Microsoft Office
programs even where the document was drafted with a metadata-creating feature
turned on. 149 (Remember: metadata has utility!) The installation of this add-in
will create an additional option to “Remove Hidden Data” within the “File” menu
in your Microsoft Office programs:




After selecting this option, the user will be asked to enter a file name for what will
become the “clean” version of the document. Once a name is provided, the user
will click next to start the scan:




149
   To download this add-in, visit
http://www.microsoft.com/downloads/details.aspx?FamilyId=144E54ED-D43E-42CA-BC7B-
5446D34E5360&displaylang=en or search for “remove hidden data” on
http://www.microsoft.com/downleads.


                                                                                    52
When the scan is complete, a text file will open that contains a summary of the
scanning results. 150 The end result is an effective, easy, and free solution to the
problem of metadata transmission via Microsoft Office documents – you just have
to remember to use it!

       Saving a document in Portable Document Format (pdf) will also reduce
the amount of metadata stored in the file. But this process does not eliminate
metadata entirely. 151 For many purposes, however, simply saving a document
into pdf format may suffice. Documents in pdf format often cannot be easily
modified, though, thereby reducing the efficiency and functionality of document
exchanges using this method.

        Additionally, there are also a number of commercial software “scrubbers”
available for purchase. 152 While these programs have differing degrees of
functionality and integration with other software (such as Microsoft Outlook
integration), they can all be used to scan files before they are transmitted and
remove the embedded metadata.

         Unintended Disclosure Agreements

        A final, less technical manner to avoid the problems associated with
embedded data is to have an agreement in place with opposing counsel where the
parties acknowledge beforehand that any transmission of confidential embedded
data is unintentional and that any documents identified as containing such
information should be deleted. 153 Obviously, the efficacy of this option relies
upon the trust of counsel, and where the mere viewing of the information would
“let the cat out of the bag,” such agreements may be insufficient. Thus, either
ensuring that embedded data is not created, or ensuring that it is stripped out
before a file is sent will normally be the only effective way to address the
problems of embedded data.

         E.       Conclusion

              Hopefully, this section has shown what metadata is and how the
lawyer should treat confidential embedded information, including some easy-to-
150
      Control Metadata in Your Legal Documents, http://office.microsoft.com/en-
us/help/HA011400341033.aspx (last visited Dec. 12, 2007).
151
    See Jason Krause, Guarding the Cyberfort, 39 Ark. Law. 24, 31 (2004). Suggestions, however,
that pdf files contain no metadata are incorrect. See, e.g., Hoenig, 18 PROBATE & PROP. 51; 1
RONALD E. MALLEN & JEFREY M. SMITH LEGAL MALPRACTICE § 2.26 (2005) (stating that
conversion from Word to pdf “could eliminate meta-data information”). However, most pdf files
do contain some metadata; thus, converting a Word file to a pdf file will simply result in different
metadata being transmitted.
152
    Numerous “scrubbers” can be found through Google, simply searching for “metadata” and
scrubber.
153
     See Thomas E. Spahn, Litigation Ethics in the Modern Age, 33 Bref [UNKNOWN
PUBLICATION] 12, 16-17 (2004) (suggesting such agreements in order to address the risks of
inadvertent transmission of paper documents).


                                                                                                53
use methods to reduce or eliminate metadata from documents created in the more
popular office programs. The next section addresses an issue that has split
authorities: what happens if a lawyer fails to take the steps recommended in the
current article and transmits a document to opposing counsel that contains
metadata? Is the recipient free to look, or not?

XI.    Outgoing: Inadvertently Produced Privileged Documents under the
       New Federal Rules of Civil Procedure

        Amendments to the Federal Rules of Civil Procedure went into effect in
December 2006. Among them were new rules designed to clarify and simplify the
process for document production by allowing a party who produces a privileged
document to “claw it back” from the recipient. These new rules also encourage
the use of agreements to reduce or eliminate disputes over whether production of
a privileged document waived the privilege and, if so, to what extent. This section
describes the new rules and explains why, despite the amendments, due care
remains a critical aspect of document production and why agreements between
parties are not always a satisfactory solution.

       A.      The Background to the Amendments

        Litigators know that privilege must be protected, or it can be lost. Most
courts hold that privilege is waived where a document is disclosed to an adversary
intentionally or without taking due care. Some courts even apply “subject matter
waiver” and hold that, not only is privilege waived over the actual communication
disclosed, but it is also waived as to all communications on the same subject.

       Taken together, those principles mean that at all times, but particularly for
document production during discovery, parties must be extremely careful to avoid
disclosure of privileged documents, lest privilege over the document itself and
perhaps all communications on the “same subject matter” be waived.

        The need to protect against waiver has led parties in document-intensive
cases to engage in “privilege reviews” which can be extremely expensive.
Lawyers in such cases often made “claw back” agreements with opposing counsel
that allow a party who produces a privileged document during discovery to obtain
its return to avoid subject matter waiver or to avoid entirely the contention that
production waived privilege. It is against this background that two new provisions
were added to the rules.

       B.      Two New Federal Rules of Civil Procedure

      New FRCP 26(b)(5)(B) provides a process for “clawing back” a privileged
document produced during discovery:




                                                                                 54
        If information is produced in discovery that is subject to a claim of
        privilege or of protection as trial-preparation material, the party
        making the claim may notify any party that received the
        information of the claim and the basis for it. After being notified, a
        party must promptly return, sequester, or destroy the specified
        information and any copies it has and may not use or disclose the
        information until the claim is resolved. A receiving party may
        promptly present the information to the court under seal for a
        determination of the claim. If the receiving party disclosed the
        information before being notified, it must take reasonable steps to
        retrieve it. The producing party must preserve the information until
        the claim is resolved.

The rule as amended thus allows a party who believes that it has produced a
document that is protected by either privilege or work product protection to ask
for it back. The recipient must not use the information until the “claw back”
request is resolved and must take reasonable steps to retrieve any distributed
copies.

         Another provision added to FRCP 26(f) encourages lawyers during their
conference to discuss “any issues relating to claims of privilege or of protection as
trial preparation material, including – if the parties agree on a procedure to assert
such claims after production – whether to ask the court to include their agreement
in an order.” 154

        The Advisory Committee Notes not only encourage parties to agree on
privilege waiver, but provide possible terms. For example, the notes suggest that
parties can agree that production will not waive any privilege. They even suggest
that, to save money, parties may agree that documents can be made available for
an initial “quick peek” before making documents available for inspection, and
then review for privilege only the documents actually requested by the other
party. The notes include this seemingly comforting statement: “In most
circumstances, a party who receives information under such an arrangement
cannot assert that production of the information waived a claim of privilege or of
protection as trial preparation material.”

        C.       You Ask for It Back and They Agreed There was No Waiver:
                 Is that it?

        Despite implying that all is well, the notes expressly state that the rules do
not (and, for obvious reasons, they cannot) control “whether the privilege or
protection that is asserted after production was waived by the production.” 155
Instead of the FRCP, the substantive law of privilege waiver controls. Although

154
     Fed. R. Civ. P. 26(f)(4). See also Rule 16(b)(6) (allowing district courts to include any
agreement in a scheduling order).
155
    2006 Committee Note to Rule 26(b)(5)(B).


                                                                                           55
the rules create a procedure for seeking return of documents and encourage parties
to agree that production does not waive privilege, 156 they do not control whether
any agreement is enforceable.

        D.       Can Agreements Override the Common Law of Waiver? Does
                 it Matter? 157

        Three distinct issues should be addressed despite the comfort of the
Advisory Committee Notes. The first has nothing to do with whether privilege
will be maintained, and may be a far more important question: “Does it matter
that privilege will remain when client confidences have been disclosed?” The
second: “Can a nonwaiver agreement be enforced between the parties?” The third:
“Can an agreement prevent third parties from nonetheless claiming that
inadvertent production waived privilege?”

                 1.       Does it Matter whether Everyone Is Bound and
                          Privilege is Protected?

         Even though new Rule 26(b)(5)(B) requires the document be returned, and
even assuming that an agreement will bind everyone (parties to the agreement,
and not), the fact is that damage can be done by disclosure of privileged
information, whether or not the information will be admissible at trial later. The
bell cannot be unrung. The recipient will know the content of the document and
that in and of itself could harm the client.

         The basic obligation of lawyers to take due care during document
production persists whether or not privilege will be preserved. But there remain
significant questions as to whether it will be, particularly with respect to third-
parties.

                 2.       Does the Agreement Preserve Privilege Even Between
                          the Parties?

        Many courts have upheld and encouraged nonwaiver agreements between
parties and they have long been used. 158 The Advisory Committee Notes correctly

156
    See Hopson v. Mayor and City of Baltimore, 232 F.R.D. 228, 234 (D. Md. 2005)
157
    The notes recognize that the “courts have developed principles to determine whether, and under
what circumstances, waiver results from inadvertent production of privileged or protected
information.” Advisory Committee Note to Rule 26(b)(5)(B). Unfortunately, that law is not
uniform or well-settled. Those jurisdictions which have addressed the issue (and many have not)
have adopted varieties of three common approaches: strict waiver (holding that no matter how
great the precautions against inadvertent production were, once disclosed privilege is waived);
strict non-waiver (holding that only intentional relinquishment can waive privilege, and that
inadvertence is never sufficient to do so); and a middle-ground balancing test (which looks to all
of the facts to determine whether the production was made despite the exercise of due care). See 8
Wright, Miller & Marcus, FEDERAL PRACTICE AND PROCEDURE: CIVIL 2D § 2016(2) (2005)
(canvassing the various approaches).


                                                                                              56
suggest that those courts that have addressed them have approved nonwaiver
agreements. Not all courts have addressed them, however, and a few courts that
have done so have denied their enforcement in some circumstances. One court
explained that their enforcement “could lead to sloppy attorney review and
improper disclosure which could jeopardize clients’ cases.” 159 Counsel may need
to ensure that the particular court will uphold nonwaiver agreements, even as
between parties, before putting too much trust in them.

                  3.       Does it Bind Third Parties?

        Basic contract law suggests that an agreement between parties to a lawsuit
that the production of privileged information does not waive privilege does not
impact third parties. Accordingly, production of a privileged document in a case
with a clawback agreement likely will not impact the ability of a non-party to
claim that production waived privilege. 160 The majority view is that voluntary
disclosure to an adversary waives privilege even if it is accompanied by a
nonwaiver agreement. 161 Even if the nonwaiver agreement prevents a party to it
from arguing that inadvertent production by the other party to the agreement
waived privilege, it is unclear whether third parties will be prevented from doing
so. 162 Again, this demonstrates that the obligation to take due care persists,
particularly where documents are being produced in litigation which is likely to
be followed by related lawsuits.

         E.       Conclusion

        The best protection against harm to clients remains the exercise of due
care. Nonwaiver provisions may provide some additional protection, but it is not
yet certain to what extent they will be enforced.

       What, exactly, should such an agreement say? Case law suggests that it
should not be limited to “inadvertent” production, since that leads to litigation
over what was, or was not, “inadvertence.” 163 Although the precise language will
vary depending on the case and circumstances, consider this as a model to
improve from:



158
    See id. at 234-35 (citing cases dating back to the 1950’s that upheld nonwaiver agreements
between counsel or parties).
159
    Koch Materials Co. v. Shore Slurry Seal, Inc., 208 F.R.D. 109, 118 (D. N.J. 2002).
160
    See In Re Chrysler Motors Corp., 860 F.2d 844 (8th Cir. 1989).
161
    In re Columbia/HCA Healthcare Corp., 293 F.3d 289, 296 (6th Cir. 2002) (collecting cases).
162
    See Hopson, 232 F.R.D. at 233-35 (engaging in a thorough analysis of the uncertainty as to
whether even parties to the nonwaiver agreement will be bound by it).
163
    See In re Sulfuric Acid Antitrust Litig., 235 F.R.D. 407, 418 (N.D. Ill. 2006) (litigating meaning
of protective order); VLT, Inc. v. Lucent Technologies, Inc., 2003 WL 151399 (D. Mass. Jan. 21,
2003) (same); U.S. Fidelity & Guaranty Co. v. Braspetro Oil Serv. Co., 200 WL 744369
(S.D.N.Y. June 8, 2000) (same).


                                                                                                  57
Production of any document that, prior to production, was subject
to work product immunity or the attorney client privilege shall not
constitute a waiver of the immunity or privilege, provided that the
producing party complies with Fed. R. Civ. P. 26(b)(5)(B) by
notifying the party that received the information of the claim and
the basis for it. The foregoing applies so long as the producing
party in its notice states that production had not been an intentional
and knowing relinquishment of the claim of privilege.




                                                                         58
Technology Sometimes Can
     Ruin Your Day
         Prof. David Hricik
  Mercer University School of Law


          Mercer University School of Law   1
Embedded Data

 What it is: 2 things.
Why it matters: 2 things.


     Mercer University School of Law   2
            What it is (Part 1)

• An evil plot to undermine security of the free world




                  Mercer University School of Law   3
       Your Hidden Secrets
           Unmasked!
• Track Changes
• Multiple Undoes
• Comments
• “Redactions” that don’t… redact!
• Who wrote the document
• When she wrote it
• How long she edited it
• When it was printed or accessed last….
               Mercer University School of Law   4
Mercer University School of Law   5
Who Ya Gonna Sue?




    Mercer University School of Law   6
Mercer University School of Law   7
been split off into a “secret room” strips multiple elements from the statutes on which
their claims are based and glosses over numerous issues that would have to be
explored     if     their       claims    were     ever    to    be    fully    litigated.

AT&T cannot confirm or deny any of the facts on which plaintiffs’ complaint is based.
But it is certain that the Klein Declaration and its associated exhibits are insufficient to
demonstrate any illegal conduct by AT&T. Plaintiffs offer no evidence regarding what, if
anything, actually happens to any data once it allegedly enters the alleged “secret
room.” Plaintiffs’ purported expert provides merely “suggestive” configurations
between unknown equipment in an AT&T facility. See Declaration of J. Scott Marcus In
Support of Motion for Preliminary Injunction (Dkt. 32) ¶ 74. His strongest opinion,
explicitly based “in terms of media claims” is conditioned entirely on a supposition: “if
the government is in fact in communication with this infrastructure.” Id. ¶ 39. Plaintiff’s
purported expert, of course…




                                Mercer University School of Law                          8
The Future Looks Dim!




     Mercer University School of Law   9
    Why It Matters: Two Parts


• Sender’s Duties             • Recipient's Duties
  (in a moment)                 (now)




             Mercer University School of Law         10
       The Metadata Divide
• Bar associations disagree on whether
  embedded data included in an
  intentionally transmitted file is,
  nonetheless, “inadvertently” sent, or
  whether inadvertence, by itself, even
  matters…



               Mercer University School of Law   11
                  Rule 8.4
• It is professional misconduct to engage in
  conduct involving “dishonesty, fraud,
  deceit or misrepresentation.”

• Is it “dishonest” to look for metadata?




                Mercer University School of Law   12
      Model Rule 4.4(b) & Opinions
MR 4.4(b): “A lawyer who receives a document relating to the
 representation of the lawyer’s client and knows or reasonably
 should know that the document was inadvertently sent shall
 promptly notify the sender.” Whether lawyer must follow
 sender’s instructions is a matter beyond the scope of the rule.

Most states: No adoption of 4.4(b), and no opinion.

DC 4.4(b): “A lawyer who receives a writing relating to the
  representation of a client and knows, before examining the
  writing, that it has been inadvertently sent, shall not examine
  the writing, but shall notify the sending party and abide by the
  instructions of the sending party regarding the return or
  destruction of the writing”
                        Mercer University School of Law        13
Can You Look for Embedded Data?
NY
        Must You Notify?
      • Dishonest to look
      • Notify of receipt
FL                                                        Your State?
     • Can’t look; Dishonest?
     • Notify of receipt
Alabama
     • Dishonest to look
     • Notify of receipt
 MD
     • Can view and use
 DC
     • Weird approach
 PA
      • Facts & Circs to both questions
ABA
      • Can look notice undecided


                            Mercer University School of Law             14
 Two Stories: Any Lesson?

• How should a lawyer respond to an
  opponent’s transmission of embedded data?

  – Microsoft story

  – Vince P’s story




              Mercer University School of Law   15
                 Final Thought
• The comments to        • Is it your call, or your
  Model Rule 4.4(b) say    client’s as to what to do?
  that, although the
  lawyer must notify the • Can you act without
  sender, whether the      talking to your client?
                            – Do you do so at your peril?
  lawyer must follow the    – Can you reject your
  sender’s instructions        client’s decision to use the
  is not addressed by          document?
  the rules.

                    Mercer University School of Law      16
 Every Day: Reducing Metadata
• Microsoft Word                         • Adobe Acrobat PDF
   – Microsoft has updates                  – Some metadata
     (shown below)
                                              persists except in
                                              Acrobat 8 Professional
• Word Perfect
  – Updates available                       – Watch for
                                              “redactions” like the
• Commercial software
                                              lawyers in the AT&T
  “scrubbers”                                 case managed to not
                                              do!
   – WorkShare
   – iScrub
   – Others – ask/Google                 • Paper has no metadata!


                        Mercer University School of Law             17
     Prospective Clients


You owe limited duties of both
confidentiality and competency to those
who in good faith seek to retain you, but
no retention occurs.



           Mercer University School of Law   18
New Model Rule 1.18 & General
  Common Law Approaches
  Can’t reveal info learned in consultation
  with prospective client to same extent as
  former clients.
  Can’t represent a client against the
  prospective client in a substantially
  related matter if lawyer received
  confidential info from the prospective
  client. If so, entire firm is DQ’d.
    Unless the prospective client agreed
    otherwise or “screening” was used.
              Mercer University School of Law   19
             What to Do

Create a form for pre-retention interviews.
 Cost/benefit analysis
Charge flat fee for consults?

Technology: Rule 1.18 applies to all forms
 of communication (at least on its face)....

             Mercer University School of Law   20
    E-mail: What to Do



Process & Substance




          Mercer University School of Law   21
If You Need One, Does Your
Process Create Agreement?
                                   Click Wraps



Browser Wraps




         Mercer University School of Law         22
Mercer University School of Law   23
Mercer University School of Law   24
Mercer University School of Law   25
Mercer University School of Law   26
  Jones Day’s Browser Wrap

“[This web page] is not an offer to represent you,
nor is it intended to create an attorney-client
relationship. The content of any Internet e-mail sent
to Jones Day or any of its lawyers at the e-mail
addresses set forth in this Web site will not create
an attorney-client relationship and will not be
treated as confidential.”
--http://www.jonesday.com/admin/terms.aspx?sType=Terms+of+Use



                   Mercer University School of Law         27
Mercer University School of Law   28
Mercer University School of Law   29
       Jones Day’s Clickwrap
• Before sending, please note: Information on
  www.jonesday.com is for general use and is not
  legal advice. The mailing of this email is not
  intended to create, and receipt of it does not
  constitute, an attorney-client relationship.
  Anything that you send to anyone at our Firm will
  not be confidential or privileged unless we have
  agreed to represent you. If you send this email,
  you confirm that you have read and understand
  this notice.
                 Mercer University School of Law   30
Mercer University School of Law   31
          Clickwraps: Better
• But Perfect?
  – Copy address from web page & paste into
    “to” box, or just type it in
  – Non-outlook based e-mails (hotmail, etc.)




                 Mercer University School of Law   32
    Substance: 2 Approaches

“We do not                       “We do not hold e-mails
represent you just          **        confidential.”
because you send
us an e-mail.”              **
  –Problem: Courts          **
  say it is not             **            Problem: can the
  enough to let the
  person sending            **       person claim privilege
  an e-mail know             *         over the e-mail if the
  information will                       firm later agrees to
  not be held in
                             *               represent her?
  confidence Mercer University School of Law                33
                            33
Tech Ethics Updates at
 www.legalethics.com




      Mercer University School of Law   34
Ethics and Negotiation

       Bill Freivogel
    www.freivogel.com
www.freivogelonconflicts.com
            Basic Rules
• 1. Lawyer may never lie – to anyone
• 2. Lawyer may not assist crime or fraud
• 3. Corporate Client – “up the ladder”
• 4. Lawyer must keep client’s
  confidences
• 5. Lawyer must keep client informed
• 6 May not talk to other party
              No Lying


• Model Rules 4.1(a) and 8.4 (c)
 ABA Op. 06-439 (April 2006)
 Gives Lawyers Some Slack

• Lawyer may not lie
• Lawyer may “puff” about strength of
  case, quality of witnesses, etc.
• Lawyer may “puff” about value of case
• Lawyer may dissemble somewhat on
  client’s settlement position
     Assisting Client Fraud


• Model Rule 1.2(d) states basic rule
• Model Rule 4.1(b) and negotiations
        Corporate Clients


• Rule 1.13 – “up the ladder”
• 17 CFR Part 205 – public companies –
  “up the ladder
        Maintaining Client
          Confidences


• Model Rule 1.6 – “information relating to
  the representation”
    Keeping Client Informed


• Model Rule 1.4
     Contacting Other Party


• Model Rule 4.2
• “Are our offers being conveyed by the
  other side’s lawyer?”
END
           PROFESSIONAL EDUCATION BROADCAST NETWORK

                            Speaker Contact Information

                         Ethics in Civil Litigation, Part 1 & 2

                                 February 26-27, 2008


Lucian Pera
Adams and Reese, LLP – Memphis
(901) 524-5278
Lucian.Pera@arlaw.com
www.ethicsandlawyering.com


Douglas Richmond
AON Corporation – Chicago
(o) (312) 381-7121
doug_richmond@aon.com


John Barkett
Shook, Hardy & Bacon, LLP – Miami
(o) (305) 960-6931
jbarkett@shb.com


James Towery
Hoge, Fenton, Jones & Appel, Inc. – San Jose, California
(o) (408) 947-2432
jet@hogefenton.com

				
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