Rebranding or Misappropriation?

Law, Legal Ethics, Technology

My piece for HessConnect:

When a former employee takes a law firm’s social media accounts with them is this rebranding or misappropriation?

With their speed, convenience and efficiency, the blogs have become essential tools for most businesses. However, inappropriate use of a law firm’s internet social media accounts or blog can have serious consequences for both law firms and employees. Three attorneys formerly employed at leading law firm Stites & Harbison, PLLC learned this the hard way when they lost a fight over social media accounts to their previous employer in federal court this month.In Stites & Harbison, PLLC v. Michels, law firm Stites & Harbison claimed that the defendants inappropriately changed contact information and passwords related to social media accounts for a firm blog to promote their new enterprise.

“Trademarkology,” the professional trademark blog at issue, had been owned, operated, and used to advertise the services of the law firm since 2013. Blog content was republished through five linked social media accounts through Facebook, Twitter, Google+, Instagram, and Pinterest, which were created and maintained on firm time using firm IT networks to share blog content as well as to promote and advertise the firm. Containing hundreds of followers and connections, the blog topped the ABA Journal’s 2014 list of best law blogs in the category of Intellectual Property. The blog and social media accounts contained copyrighted material owned by the law firm that was generated by third-party service-providers and attorneys in the firm, including the three defendants, who were paid to create content.

Shortly before Attorney Michels’s last day of his more than thirteen year tenure at the law firm, the defendants’ allegedly changed the passwords, administrator privileges, and email addresses linked to each of the for the social media accounts. On January 6, 2015, Stites Chairman Robert M. Connolly emailed a cease and desist letter informing defendant Michels that he was in breach of his fiduciary duties and demanding that he immediately return the login credentials and passwords for the social media accounts. However, Michels responded in disagreement. While admitting that the five social media accounts had been “rebranded” using the name of the defendants’ new enterprise, he contended that the firm retained possession of the blog and blog posts and would be easily able to register newaccounts under the Trademarkology name.

Stites sued the three former firm attorneys for everything from breach of fiduciary duty to trademark infringement and unfair competition to tortious interference, conversion, and civil conspiracy based on the allegation that they “knowingly and deceptively took actions against the interests of the firm” by setting up a competing enterprise then conspiring to misappropriate social media accounts and intellectual property from the law firm upon their departure.

Was taking control social media accounts developed in the course of employment simply “rebranding” or did it constitute misappropriation? Could these actions rise to the level of a breach of fiduciary duty? Trademark infringement? Tortious interference, conversion, or civil conspiracy?

While the court left these questions unanswered, the Agreed Order of Permanent Injunction inStites & Harbison, PLLC v. Michels suggests that changing the administrator access, contact information, name, and publically-visible profiles for accounts created in the course of employment without authorization is a no-no.

On January 23, parties reached agreement on a permanent injunction, which lays out terms to which the defendants voluntarily consent. The agreement enjoins the former employees from using any designations confusingly similar to or identical to Stites’s service marks as well as all access the five social media accounts unless necessary to do so to carry out tasks specified in the injunction. The injunction further ordered the former employees to remove any keywords, metatags, or other source code from the defendant’s website and social media accounts within 30 days of the order.

Why not just make new social media accounts?

As a result of the “rebranding,” hundreds of connections associated with the Stites accounts previously “following”the firm were transferred to pages promoting the defendants’ new enterprise. Consequently, every individual post, update, tweet, retweet, and favorite appear as if they are promoting or endorsing the new enterprise. Consequently, any “retweets” of previous posts would link back to a Twitter account that promotes the defendant’s new enterprise.

What do the courts say?

Although law firms are notably absent from previous case law governing social media account ownership, other cases regarding disputes between employers and employees shines some light on this issue.

In Ardis Health, LLC v. Nankivell, the court looked to provision in the agreed to employment agreement which stated that all work created or developed by the defendant “shall be the sole and exclusive property” of the employer, concluding that the employer owned the rights to the login information for the social media accounts.”

In PhoneDog v. Kravitz, the employer sued the defendant, a former product reviewer and video blogger for the plaintiff, for control of a Twitter account the defendant used to promote the employer’s services at the direction of the employer as well as for personal use. In the absence of a written policy or contract governing social media ownership, the case settled out of court in 2012 for undisclosed terms with the former employee keeping the account.

In 2013, the court Eagle v. Morgan found in favor of an employee who sued her former employer for accessing and controlling her LinkedIn account after her termination. The court looked to four factors in determining ownership of the account:

(1) whether the employer had a policy of requiring its employees to use social media;

(2) whether the employer dictated the contents of an employee’s posts;

(3) whether the employer paid for its employees’ social media accounts or posts;

(4) whether the employee maintained a separate account for individual use;

(5) whether the connections were developed through the employer’s investment or the employee’s own time, money, and extensive past experience.

By identifying the absence of a policy as a factor weighing against the employer’s ownership of the social media account at issue, the Eagle case suggests that in the absence of a policy governing ownership of social media accounts, the owner of the LinkedIn profile is the individual who created and maintained it – even when an employer expressly encouraged creation or development of content.


The Ethical Dilemma of LinkedIn Specialties, Skills, and Endorsements

Law, Technology

My piece for HessConnect, which was also featured in the Foothills Bar Association of San Diego County Newsletter:

Professional websites like LinkedIn can increase lawyers’ exposure and benefit their practices. With 187 million unique visitors each month, more than 68% of attorneys say they use LinkedIn to engage other professionals or potential clients. Even a widely used professional networking site such as LinkedIn presents a number of potential ethical conundrums for attorneys and law firms. The “Specialties” section as well as the “Skills and Endorsements” section of LinkedIn profiles can leave attorneys particularly vulnerable to ethical snags.

Attorneys listing “specialties” or “skills and endorsements” on LinkedIn has raised ethical quandaries for lawyers and law firms as it appears to conflict with state bar ethics rules governing attorney advertising. Although individual LinkedIn profiles now include a “Skills and Endorsements” section instead of a “Specialties” section since 2012, the “specialties” section remains a component of LinkedIn “Company Pages,” which is used by many law firms.

Isn’t “endorsing” attorneys for a skill basically the same thing as having a specialty? Unfortunately, this is still the subject of ongoing debate among legal professionals.

The ABA and state bar ethical rules discourage such flagrant use of the word “specialty,” instead instructing lawyers to use the term meticulously. Under ABA Rule of Professional Responsibility 7.4 and equivalent state ethics rules, attorneys are generally prohibited from claiming to be a “specialist” in the law.

ABA Rule 7.4(d) prohibits attorneys from stating or even implying that they are certified as a specialist in a particular field of law, unless:

(1) the lawyer has been certified as a specialist by an organization that has been approved by an appropriate state authority or that has been accredited by the American Bar Association; and

(2) the name of the certifying organization is clearly identified in the communication.

Many states bar associations extend this restriction to use of terms like “expert” or “expertise.”ABA Model Rule 7.1 prohibits attorney from making any false or misleading claims about his or her services. If a lawyer knowingly permits an endorsement to remain on his or her personal LinkedIn profile that is misleading that could pose a problem under ABA Model Rule 7.1, even if another user posted the endorsement.

Former chair of the Illinois State Bar Association Standing Committee on Professional Conduct,Michael Downey, has indicated that truthful endorsements are okay, even when an endorser does not know an attorney directly. One can deduce, then, that as long as you keep a watchful eye as new endorsements come in.

The Professional Guidance Committee of the Philadelphia Bar Association first distinguished between using the word “expert” and listing a practice area under the general category of “Skills and Expertise” in Opinion 2012-8, finding that an attorney may list practice areas under the LinkedIn heading “Skills and Expertise” because it is akin to listing practice areas on law firm websites. However, the Committee advised that listing yourself an “expert” in a particular practice could violation ABA Model Rules 7.1 and 7.4 by misleading a potential client to believe that the lawyer was a “specialist” in that area even if it i noted elsewhere on the LinkedIn profiles that you are neither certified nor an “expert.”

In South Carolina, these requirements are even more stringent. Similarly, South Carolina Ethics Opinion 12-03 concluded that lawyers may not participate in websites designed to allow non-lawyer users to post legal questions where the website describes the attorneys answering those questions as “experts.”

In April 2013, the Florida Bar imposed social media advertising guidelines on attorneys, containing prohibitions on statements that might imply “expertise” in an area of law to legal consumers by characterizing skills, experience, reputation or record unless they are objectively verifiable. A Florida Bar advisory advertising opinion written in response to one attorney’s inquiry later in 2013 declared that lawyers cannot list their practice areas under the “Skills & Expertise” section of their LinkedIn pages unless they are board certified in those particular areas pursuant to Florida Rule 4-7.14(a)(4).

In June 2013, the New York State Bar Association Committee on Professional Ethics similarly considered whether a lawyer or law firm could list areas of practice under the “Specialties” category,concluding that non-certified lawyers and law firms could not ethically list areas of practice under the “Specialties” heading on LinkedIn’s “Company Pages” unless the lawyer is appropriately certified as a specialist.

These opinions and ethical rules demonstrate the potential ethical ramifications that can arise from how they choose to present themselves in the digital sphere. Lawyers should keep that in mind and avoid blindly following a particular state bar determination when state bars vary substantially in their opinions on lawyers’ social media interactions. Nevertheless, these opinions are instructive and indicate that lawyers should carefully consider their jurisdiction’s past holdings regarding listing skills, expertise, and specialties, before before listing their areas of practice under those sections of their LinkedIn profiles or through other mediums.