Enforcement Committee Update: Dedicated Task Force Publishes Report, Furthers Discussion of Ethics of Pretexting in Investigations in the United States

Published: March 1, 2020

Mark Biernacki Smart & Biggar LLP Toronto, Ontario, Canada

Trademark attorneys often rely on private investigators to collect information about potential cases of counterfeiting, infringement, or prior use. Such investigations may use deceptive techniques, including pretext, to achieve their goals. For example, an investigator may pretend to be a customer or potential investor to obtain information from a target. While useful, pretext investigations involve making misrepresentations, which raise ethical issues for trademark attorneys.

The American Bar Association’s Model Rules of Professional Conduct (ABA Model Rules) and other comparable state rules prohibit attorneys from engaging in conduct that involves dishonesty, fraud, deceit, or misrepresentation. While the rules in a few U.S. states make exceptions for lawful investigations, including pretexting, most state rules and the ABA Model Rules are silent on the issue. As a result, whether pretext investigations are viewed as ethical violations depends on the jurisdiction in which the investigation occurs.

In November 2019, the Enforcement Committee’s Pretexting Task Force drafted this report, which provides an overview of the treatment of pretext investigations in different jurisdictions across the United States.

In 2007, INTA established its position on pretext investigations when it passed the Pretext Investigations in U.S. Trademark Infringement Cases Board Resolution. Indeed, for more than a decade, INTA has advocated for amendments to the ABA Model Rules and state rules to provide clear exceptions for pretext investigations in intellectual property cases.

On November 21, 2019, at INTA’s Leadership Meeting, the General Trademark Enforcement Matters Subcommittee organized a special roundtable on pretexting. The purpose of the roundtable was to share information on pretexting, gauge interest in the topic, and generate new ideas on how INTA may wish to continue to address the topic.

The roundtable was well attended by U.S.-based attorneys and private investigators. At the outset of the meeting, Rachel M. Hofstatter (Steptoe & Johnson LLP, Washington, D.C., USA), leader of the Pretexting Task Force, gave an informative presentation on pretext investigations and the current state of the law in the United States. Her presentation is provided here. As a result of the roundtable, INTA has decided to extend the mandate of the Pretexting Task Force into the current term under the leadership of William Rava (Perkins Coie LLP, Washington, D.C., USA).

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.