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Intellectual property advice

Napa, CA |

I see a lot of persons asking questions about patents, trademarks, copyrights, etc. on AVVO and attorneys from totally different states provide a useful, actually quite good, starting point answer, followed up with something like "call me and the first call is free." Good marketing, but if that attorney is not licensed to practice law in the questioner's state, and gives legal advice, charging for it, isn't that the unauthorized practice of law?

Attorney Answers 7

Posted

Patent, trademark and copyright law are all federal and licensed attorneys in any state are entitled to file for registrations. There are state laws, like California's state trademark, as opposed to Unites States Patent and Trademark Office federal registration under the Lanham Act, but lawyers in general including those on Avvo are very careful about unauthorized practice of law in states where they are not licensed. For state specific matters they often has correspondents in those states. Thank you for the positive points mentioned in your question, such as "useful, actually quite good, starting point answer..." and "Good marketing."

The above is general legal and business analysis. It is not "legal advise" but analysis, and different lawyers may analyse this matter differently, especially if there are additional facts not reflected in the question. I am not your attorney until retained by a written retainer agreement signed by both of us. I am only licensed in California. See also avvo.com terms and conditions item 9, incorporated as if it was reprinted here.

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Asker

Posted

Thanks Michael, I guess my question was not about filing registrations, but providing legal advice on say a copyright or trademark infringement matter that's happening in the questioner's state where something needs to be done, and action is taken (or not) based on the legal advice they receive. Thanks in advance for the follow-up.

Michael Charles Doland

Michael Charles Doland

Posted

My pleasure. I see a lot, and try to say a lot, to consult local counsel. Aside from the licensing issues you mention, and Mr. Marcus mentions, about the interplay with state law, such as contract law, state unfair competition law, etc., I believe there is a great value of having an attorney in your "neighborhood" that you can visit, personally evaluate face to face rather than electronically, and who may be more informed on how local conditions affect your legal questions. I don't think it's a matter of unauthorized practice, but best total service to the client.

Bruce E. Burdick

Bruce E. Burdick

Posted

I second Attorney Doland's comment. The issue I think you are really bothered by is not "unauthorized" practice, but the ability of out-of-state attorneys to advise on federal law. To put it bluntly "Federal law knows no state boundaries." And, as Attorney Doland states, even if the issues are local law issues, out of state attorneys can advise without practicing law, particularly where they are not speaking to a "client." Again, the disclaimers we use are quite succinct and clear and unequivocal about that.

Posted

The short answer is that in no case is any attorney engaging in an attorney client relationship, nor in fact offering legal advice. Most attorneys on Avvo add an automatic tag line to this effect. It is closer to standing in front of an audience and giving general interpretations.

A longer answer, at least for these three areas is that the three areas are controlled by federal law, not local law--three different parts of the U S Code, which Congress controls. So familiarity with local statutes and case law is generally not relevant. There are exceptions when these IP matters interact with contract obligations or family law, etc. Then we generally recommend seeing a local attorney who has knowledge of both.

Information here is general, does not create a lawyer-client relationship, nor a substitute for consulting with an experienced attorney on the specifics of your situation.

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Michael Charles Doland

Michael Charles Doland

Posted

Good point about analysis versus legal advice. I was focused on "call me ..." where teh attorney would establish the attorney ciient relationship. Have a great weekend.

Asker

Posted

That's my point exactly. I'm not asking about answers provided here on AVVO, but more about the follow-up. Like one of your answers where you said "Call me, the first 30 minutes are free."

Michael Charles Doland

Michael Charles Doland

Posted

I don't know if you want Mr. Marcus or I to reply. Based on my limited knowledge of Mr. Marcus, he is a classy professional who knows when he needs "local expertise" and when he is competent to give federal advice. Calling him in Oregon when you are in Napa, California doesn't create the attorney client relationship, only a retainer agreement does that, and doesn't constitute unauthorized practice of law. Retaining him in Oregon to file something in Washington DC would not be prohibited.

Bruce E. Burdick

Bruce E. Burdick

Posted

Moreover, if you from Napa call him in Oregon, he is still in Oregon and is practicing in Oregon not Napa. Not until HE steps foot in Cal, and likely not until he steps foot in a Cal courthouse or files a paper in a Cal courthouse is the Cal bar association going to even listen to a charge of unauthorized practice.

Posted

Patent, copyright, and trademark law are federal statutes so any attorney who is familiar with those statutes can provide you with advice on them. Just placing a call from one state to another does not constitute "practicing law" in that other state. Lawyers place calls to other states all the time.

So no, if the lawyer gives you competent advice over the phone, that lawyer has not engaged in the unauthorized practice of law.

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Bruce E. Burdick

Bruce E. Burdick

Posted

Spot-on, John. If I, from my office in Illinois, advise someone in CA or WA on a patent infringement issue, I am in IL not CA or WA. And, if I take that someone as a client, I am authorized to do that because the Federal Government, specifically the US PTO has licensed me to do just that. So I am authorized, not unauthorized. Same for John if he in Seattle takes a client from my local area. He is authorized by the PTO to do that. Whether a client in Seattle should be using John in Seattle rather than me in IL or whether an IL client should be using me in IL or John in Seattle is a matter of business judgment by the client NOT a matter of authorization. We both would tell you that often the technical backgrounds of patent attorneys make it perfectly logical to go to an out of state attorney with the most technical knowledge in your field. Indeed, I will frequently refer local clients to out of state attorneys for just that reason, and I frequently get out of state clients due to my special expertise in certain areas.

Posted

Lawyers who comment on questions are not practicing law. Further, most IP law issues involve questions of Federal law, not state law. It is common that law firms that specialize in IP issues are located in major cities, such as New York and San Francisco,. and many companies look to such law firms for advice on these issues. The bottom line is that unlike many areas of the law, IP law tends to be viewed on a national or even international perspective, and the lawyers and law firms that practice in this area properly hold themselves out as practicing on a national or international basis. Further, lawyers in one state are routlinely hired by clients who require legal advice about the laws of other states. While lawyers cannot maintain offices outside the states in which they practice, lawyers certainly can provide advice about laws of other states----this is often necessary because even if your client resides in the state where your practice, your client might be sued pursuant to contracts and/or claims that arise under laws of other states---or for that matter, other countries. It is not the unauthorized practice of law for lawyers to provide advice on laws of other countries or states than those in which they practice.

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Posted

The lawyers who answer questions here are, for the most part, just providing a public service, friend. I do not expect to generate revenue from AVVO ... That's not the point. Sometimes a spoonful of advice confers a lot of benefit.

All comments on this site are 'in the cloud' and do not form an attorney-client relationship of any kind. Just consider them ideas for discussion. J

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Bruce E. Burdick

Bruce E. Burdick

Posted

Anyone who would accuse you of unauthorized practice of law for giving free advice on Avvo is NOT your friend.

Posted

NO, absolutely not.

First, It is authorized, not unauthorized. Patents, trademarks and copyrights are federal law, so intellectual property lawyers can AND DO represent clients anywhere in the US.

Second, the attorney doing the answering IS located in the state where he or she is licensed. It is no different really than if you hop in your car an drive to that attorney's office.

Third, it is NOT the "practice of law". Read the disclaimers. These answers are free.

You are drinking too much of that NAPA wine to think you can charge any one of us with unauthorized practice of law, particularly any registered patent attorney.

So far, this is free to you. Until you pay a fee, I am not your lawyer and you are not my client, so you take any free advice at your sole risk. I am licensed in IL, MO, TX and am a Reg. Pat. Atty. so advice in any other jurisdiction is general advice and should be confirmed with an attorney licensed in that jurisdiction.

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Bruce E. Burdick

Bruce E. Burdick

Posted

As to my second point, the fact that you can drive electronically to that lawyer's office and the lawyer can respond electronically from that lawyer's office is basically the equivalent of me standing on the IL side of the Mississippi River with a megaphone yelling legal advice to someone across the river in Missouri. I am still in Illinois. That is, it is where the lawyer is, not where the client is. Now, if I wasn't licensed in Missouri (I am) yet went across that river and set up office in downtown St. Louis and started accepting money for filing legal papers in Missouri courts, that would be a different matter. Even then, I could probably do it so long as I got admitted pro hac vice in each case.

Bruce E. Burdick

Bruce E. Burdick

Posted

Another point, charges of unauthorized practice of law are a state disciplinary matter and do not generally have any legal implications in the particular matter, except for motions for sanctions or motions for substitution of counsel.

Posted

No. Patents, trademarks, and copyright are all federal law, so any licensed attorney anywhere in the country can act on any client's behalf, no matter where in the country s/he is located.

If we do not have a signed fee agreement I am not your attorney and this is not legal advice.

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