Intellectual Property

IP And PIs: How The Right Investigator Can Make Or Break Your Intellectual Property Case

PIs can help litigators bridge the gap between vague suspicion and a fact pattern robust enough to support a complaint.

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When you think of private investigators in the law game, you may picture an insurance company snoop taking pictures of the guy with the supposedly broken back playing a rousing game of tennis. Or shadowy dark-ops firms like the one hired by the now-disgraced David Boies to attack the women accusing his client Harvey Weinstein of sexual assault (in an ill-advised attempt to disrupt an article planned by his other (now-ex) client, the New York Times) . And, sure, those exist, but there are almost as many PI disciplines as there pi decimal places, and in the area of intellectual property, the right PI can make or break your case.

Consider a recent claim brought by Louis Vuitton, the fine purveyor of fancy items and Supreme collaborations, which involved scenes straight out of a Tom Clancy novel, replete with shadowy undercover agents and clandestine meets. In one such tête-à-tête, a buyer showed up at a Vancouver warehouse ready to purchase a tranche of knockoff handbags. As the sellers showed off their catalogue of 500 infringing items to their prospective new clients, the buyer had no idea that the “husband and wife” team were actually undercover PIs. Armed with their documentary evidence and eyewitness testimony, Louis Vuitton obtained a multimillion-dollar summary judgment verdict against the infringers.

Not every infringement case requires a team of investigators, but they can be critical in helping litigators bridge the gap between vague suspicion and a fact pattern robust enough to support a complaint. In fact, the International Trademark Association has stated explicitly that instead of contacting law enforcement, which can be time-consuming and often to little effect, “companies are often better off placing their first call to an IP PI.” I spoke with Avi Klein, a lawyer-turned-private investigator, and head of The Klein Group to learn more about how about how he works, where investigators are most useful, and how to avoid ethical traps that upend winning cases.

Q: When I think of a PI, I imagine either a rough-looking dude in a trench-coat like on Cheaters or a glamorous sophisticate like on The Good Wife. You don’t seem to fit either mold. How’d you get into this business, and what makes for a good PI?

A: Like many investigators who work with mainly with litigators, I’m a former reporter and attorney. I also worked for Barack Obama’s 2012 campaign digging into private equity issues. The core skills are the ability to track down and interpret public records, the willingness to pick up the phone or show up at someone’s house, and the flexibility and experience to efficiently evaluate each new piece of information and readjust the scope and focus of the investigation. We call that “swinging from branch to branch” — you know where you’re trying to go, but you have to move with agility through a thick forest of information.

Q: What’s your typical case like when you work for intellectual property lawyers?

A: Every kind of case begins with a quiet review of public source records, followed if necessary by source inquiries. The Louis Vuitton case is a great example. The company found the items for sale at a retailer, made inquiries to identify the manufacturer online, and then leveraged that information into an undercover sting.

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To give another example: Last year, Dr. Mehmet Oz dedicated a show to an online retailer who was using Christie Brinkley’s name without authorization to sell skin care products. The investigator found a corporate identity for the company on a defunct website, which she then used to trace the infringement to a cosmetic surgeon. The show ended in typically dramatic fashion with an on-camera showdown with the doctor.

Q: Between Uber and Harvey Weinstein, investigators have received a lot of bad press recently. Uber hired an unlicensed firm to dig up dirt on opposing counsel in an antitrust case, and Weinstein hired a woman who pretended to be a women’s rights activist to get close to Rose McGowan. What do lawyers need to know about hiring investigators, and what are the main ethical issues?

A: It comes down the basic principle that a lawyer generally can’t hire an investigator to do something she herself is lawfully or ethically barred from doing. And investigators themselves, as licensed professionals, are bound by a set of laws, regulations and professional ethics. At the same time, however, the courts have repeatedly held in the context of undercover trademark investigations that the whole point of investigating is to be somewhat secretive and not entirely candid.

Q: On television, investigators are always disguising themselves and taking on different personas to get what they want. Is that lawful, and what are the limits?

A: That’s called pretexting, and the Intellectual Trademark Association has specific guidance about it. According to INTA, “pretext investigations are crucial to establishing infringement” and it has described a number of scenarios that it considered generally appropriate, including visiting showrooms to talk with salespeople and learn the name of the store’s owner; posing as a consumer and contacting sales reps to learn how they market the product; and contacting online retailers and making purchases to obtain contact information and establish domicile. Each of these tactics, of course, must be reviewed in the context of relevant state law. I always tell clients that I’ll never do anything you’d be ashamed to tell a judge about.

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Courts, as you might expect, have struggled with where to draw the line, and most use a balancing test where they consider 1) The importance of the acquired information and the degree to which it would have been otherwise possible to obtain it; 2) The confidential nature of the information; and 3), the degree of deception used by the investigator. So in the above scenarios contemplated by the ITA, the safest approach is where the information can only be obtained through an investigation (perhaps because the infringing parties are unknown), the information obtained would be given to any consumer who asked, and the deception was relatively mild. After all, even though I’m working as an investigator, I might be conceivably be interested in buying a luxury handbag, even if I’m not in the market for a present for my wife at this exact moment.

Q: What are a a few free tips for lawyers who want to investigate but not yet ready to hire a PI?

A: The easiest is to get comfortable with using the Boolean operators in Google. Just like with Nexis and Westlaw, there are AND, NOT, and OR restrictors, and these are critical for cutting through the noise. You can also restrict your search to file type, such as PDF, which can be helpful if looking for company records or contracts. (There’s also an advanced Google search platform as a structured template to make things easy.) Second, don’t be afraid to use the phone. People want to help others, you just have to ask nicely. Most of my big breaks have come from asking innocent questions, rather than from the kind of cloak-and-dagger sleuthing that makes good TV.

Scott Alan Burroughs, Esq. practices with Doniger / Burroughs, an art law firm based in Venice, California. He represents artists and content creators of all stripes and writes and speaks regularly on copyright issues. He can be reached at [email protected], and you can follow his law firm on Instagram: @veniceartlaw.

Avi Klein is founding partner at The Klein Group, a private investigations firm in Oakland, California. His practice focuses on litigation (including intellectual property disputes), commercial fraud, and employment law. He can be reached at [email protected].

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