So, in any given case, I cannot know what a fair rate is until I know how much work is involved in the matter until I’ve had some time to investigate it and, with luck, learn who the opposing lawyer will be. How complicated the issue, how contentious litigation will be, how many documents will be involved, how often I will have to go to court to fight for documents with a Motion to Compel, how often I will have to go to Court to resist completely inappropriate demands for documents, etc. Without answers to these (and many other) questions, any sort of fixed fee is completely impossible–it will be either unfair to the client or unfair to me.

My solution is actually simple: I call it the “Task Order” approach. Using this approach, I do an investigation first of all (for a fixed fee). Once that is completed I have a better idea of who complicated and contentious the case will be. If I don’t do that, I risk either over-charging my client or losing money on the deal. Once the investigation is completed, the client and I meet and discuss my findings. Generally I will then give the client a 29-step, 5 phase outline of what takes place in litigation. Based on this outline, my investigation, and other expertise, the client and I reach agreement on the next step in the case and what I will charge for that next step only. By doing this, the client knows and approves each step and knows and approves the cost of each step. Best of all, the client a) can budget for the case, b) stays informed and involved, and c)knows that the cash register doesn’t start running whenever they ask a question. My bottom line is that Task Order Billing makes happy clients.

• The trade secret can be described precisely enough to show that it is not part of what is generally known in the trade or business
• The trade secret derives some independent economic value; the secret is not generally known to the public
• The company has used reasonable efforts under the circumstances to maintain the secret

Here is a checklist of basic steps you should take to help protect your trade secrets. Use it to audit your current protections and to plan for more stringent measures.

Trade Secrets Checklist

1. If the seller does not have authority to sell the property, the deal will be fouled up. It should be obvious that you cannot sell what you do not own. This sounds simple but if there is a trust, a community property agreement, a family corporation, or even an expired power of attorney, things quickly get both complicated and possibly unpleasant.

2. If the description of the property to be bought/sold is incomplete or legally inadequate, the deal will be fouled up. Note: A mailing address is not an adequate description of the property. You absolutely must use the entire lengthy and convoluted legal description on the purchase and sale agreement for it to be enforceable.

3. If zoning is inconsistent with intended use. This is not merely caveat emptor. If the buyer specifically tells the seller what she intends and the seller indicates that the zoning is appropriate, the deal will be fouled up. Both parties should check and be sure.

4. If the buyer fails to pay earnest money or follow earnest money provisions. These provisions are there so the buyer can show good faith. If the contract requires that money be paid or financing be obtained by a specific date, it is a breach of the contract to fail to live up to these terms. Sellers can then accept other offers if they so choose.

5. If both parties do not expressly accept any changes to the initial offer. There is no contract unless both parties expressly accept the changes arrived at after negotiation. Acceptance is shown by, e.g., both parties’ initials.

6. If the note and deed of trust are not attached to the sales contract. Unless the purchase is for cash, the land will be purchased by a loan, which is secured by a deed of trust. These documents, showing the principal, payment terms and interests, should be made a part of the purchase and sale agreement. This is a classic method of voiding a sale.

7. If everything is not in writing. There can be no side agreements or “understandings.” And be sure that there is an “integration” clause saying that the purchase and sale agreement is the entire agreement and any changes must be in writing and signed by both parties.

8. If the seller disclosure form is not filled out correctly. It is a legal requirement in most jurisdictions that the seller of real estate certify that any existing defects in the property have been disclosed and any prior defects have been properly repaired. Frequently, sellers massage the facts, or indicate that they “don’t know” if there have ever been any defects. Generally, the test is whether a seller knew or should have known of defect in the ordinary course of events. If the seller’s answers on a disclosure appear to be vague or unresponsive, it is a good idea to wonder why.

9. If the buyer allows the seller to stay in possession after closing. If you are going to do this, be sure there is a specific, time limited, rental clause. This clause should also state the consequences to the seller if she stays beyond the agreed date.

10. If there is no explicit agreement spelling out what the seller takes with her. Much time and money has been spent in litigation over whether the seller was entitled to take her chandelier, washer, dryer, range, oven, or refrigerator.

11. If the property is commercial or has ever had an oil furnace or an underground oil tank and you do not get an environmental survey done. Fixing the environmental problems that a leaking oil tank or furnace can cause could cost thousands of dollars.

12. If the parties do not explicitly include a clause ensuring that post-closing obligations will survive. For example, if the sellers agree to be responsible for hauling away the old cars in the back yard, be sure that there is something in the sales contract that clearly requires them to do so.

Over time, the rules have been substantially modified so that today a non-competition agreement will be enforced if:

• It is supported by consideration
• It is ancillary to a lawful arrangement such as an employment contract
• It is reasonable under multifaceted tests fashioned by the courts

Therefore, both parties must gain something from the agreement limiting competition and it must be linked to another Agreement like an employment contract.

Tests fashioned by the courts to determine what is a Reasonable Agreement include:
1. Agreements not to compete are restraints on trade and thus are not favored
2. The employer bears the burden of showing that the restraint is reasonable and no greater than necessary to protect its legitimate business interests
3. The restraint must not be unduly harsh or oppressive in curtailing the employee’s legitimate efforts to earn a living
4. The restraint must be reasonable in light of sound public policy
5. Finally, the language of the agreement will be strictly construed and, if in any way ambiguous, it will be construed in favor of free competition and against the employer

Whether restrictive agreements in an employment contract will be enforced depends upon the specific facts in each case.

Confidentiality Agreements
Even without a non-competition agreement, a former employee cannot compete with his former employer by using confidential information or trade secrets obtained from the former employer while he worked there.

Trade Secrets
Trade secrets can be anything: finances, methods of production, customer lists, etc. Anything that gives the user an independent economic advantage over the non-user. The simple acquisition of a trade secret can violate the law if you know it was acquired improperly or if you disclose it w/o permission, (covers former employees using it) or if you acquire it by accident or mistake and know it. Trade secrets can be protected for as long as secrecy is maintained. Therefore, the employer must use “reasonable efforts” to keep it secret. This is very fact specific and the courts will look at case-by-case situations.

Interference with Contracts or Business
Either deliberate or negligent (careless) interference with existing contracts, prospective contracts, or current employees’ willingness to work for you can violate the law.

Unfair Competition
Unfair competition includes many different types of fraudulent, deceptive and dishonest trade practices. The law’s purpose in limiting competition is to protect a business’ investment in distinguishing itself and its image, to preserve the goodwill it has with customers, to deter a business from appropriating the goodwill of a competitor, to promote clarity and stability by encouraging consumers to rely on a merchant’s goodwill and reputation, and to increase competition.

Non-solicitation Agreements
Virginia Courts will enforce a signed agreement not to solicit business from the clients of the former employer for a reasonable period of time. Like non-competition agreements, non-solicitation agreements are analyzed under the same principles of fairness to both sides.

Here is the situation:

You are the CEO of a mid-cap public company. While driving to work one morning, you receive a phone call from your in-house general counsel. She’s on a conference call with the supervisor of the company’s accounting department. You learn the following.

The accounting supervisor received a visit that morning at 6:45 from two (it’s usually two, they travel in pairs) FBI agents. The accounting supervisor says he told the FBI agents “nothing, absolutely nothing.” He also admits, under gentle questioning from you, that the ambush interview at his home lasted “almost two hours.” Hmmmnn.

The accounting supervisor also turned over his company-issued laptop computer to the two FBI agents because he assumed “the FBI would be suspicious if I turned down their request for my computer.” Hmmmnn (again).

During the almost two-hour interview in which “nothing” was revealed, the FBI agents questioned the accounting supervisor about a lucrative government contract, which your company has had for almost five years. They also questioned him about your company’s “restated” financial statements, and they hone in on certain transactions, which are informally known in your company as “round-trips.” (Suddenly that term doesn’t sound so great).

After speaking to your accounting department supervisor, the FBI agents leave a grand jury subpoena with him. As best as you can tell, the subpoena basically asks for all relevant financial and accounting information for the past seven years.

At this point, your general counsel asks the accounting manager to hang up, and you speak privately with your general counsel. Together you telephone the company’s loss prevention, security/investigation department supervisor, a retired DEA agent from Queens. After hearing what has happened, he says he suspects that the accounts receivable clerk who was recently placed on probation for violation of the company’s substance abuse policy is the “snitch” who has been “feeding stories” to the FBI.

Decision: Your general counsel tells you that the company should immediately contact its outside corporate counsel to conduct a full investigation of the government contract and the so-called “round-trip” transactions. After all, she explains, this outside law firm is already familiar with the restated financial statements (because it was involved in the process two years ago). She tells you that using the company’s “regular” outside law firm would be efficient and would generate a cost savings.

Analysis: This is probably a huge mistake. Asking the law firm to be the investigator may generate some short-term savings but it is risky because the law firm would, in effect, be investigating its own conduct. Perhaps the law firm would do a masterful and objective job of investigating the allegations. Perhaps not. Either way, it would look terrible and government prosecutors and investigators would be extremely skeptical.

Decision: You suggest that the company immediately terminate the accounts receivable clerk. You conclude that the company has ample grounds to fire him because of his previous violation of the company’s substance abuse policy. You believe that terminating this employee is necessary before he tells more false stories to the FBI.

Analysis: You may have an MBA from Harvard Business School but you lack some basic common sense. Terminating this employee may well backfire on you. First, you are certainly not sure that the employee did, in fact, provide information and/or documents to the FBI. Second, if the employee is the informant, then he will probably be viewed as a “whistle-blower,” and is entitled to statutory protection. Thus, the employee may have been tooting some coke two or three months ago, but you already decided that this was insufficient to terminate him at the time. The government—and the jury, or multiple juries—will view this employment decision in an extremely negative way.

Decision: Your retired DEA agent forcefully insists that all employees be told to “shut the hell up.” He reminds you that many criminal prosecutions are based on confessions, admissions and knee-jerk statements given by company executives and employees. He suggests that a firm-wide email be distributed, advising all employees to not answer questions from the FBI and to contact the legal department in the event that an FBI special agent makes contact with them.

Analysis: You’re batting zero for three here. Superficially, it may make sense to shut down the information-gathering process and prevent your employees from making misguided, uninformed and uncounseled statements to the FBI. But the FBI and federal prosecutors will probably view these directives as obstruction of justice, which is in and of itself a crime.

Decision: Remembering a presentation you attended at a white-collar crime symposium for corporate executives, you decide to issue an email to all employees, urging them to not destroy any documents. You pat yourself on the back for remembering this, and for acting on it.

Analysis: Don’t be too quick to congratulate yourself. Unless you also advised your MIS or IT department to immediately stop the automatic process of purging and discarding old emails, downloaded emails, storage disks, etc., you may not have gone far enough. Many companies have email systems where old emails are temporarily stored on disks, kept for some period of time (e.g., two years) and then discarded. You do not want the prosecutor and FBI determining whether the continued discarding of disks containing three-year-old emails was routine or an intentional effort to destroy potentially relevant evidence in the midst of a criminal investigation.

Decision: In addition to asking outside general counsel to conduct an “independent” investigation, you also contact two or three experienced litigation lawyers (who periodically handle commercial litigation for the company on an hourly basis) to represent the top management executives.

Analysis: Unless these litigation lawyers, experienced as they may well be, have direct experience in criminal cases, they may not be the right lawyers to be representing your top managers in a criminal investigation.

Decision: You remember an article you read about “joint defense agreements” while returning from your last business trip. You instruct your general counsel to obtain a standard joint defense agreement and to have it signed by the lawyers who will become involved in this case. Your general counsel hops on the Internet and downloads a “sample” joint defense agreement, which has been circulating for the past two to three years.

Analysis: Criminal defense lawyers may debate the wisdom of reducing joint defense agreements to writing, but using an outdated joint defense agreement may be problematic. The agreement should specifically discuss what happens at trial—and whether participants can or cannot be cross-examined with information obtained solely from information exchanged as part of the joint defense agreement. Failure to adequately resolve this issue may lead to a motion for disqualification and some tough questions from the judge and prosecutor.

Decision: Recognizing that the government views the company as a target and appreciating that the government probably interviewed other witnesses before visiting with your accounting department supervisor, you correctly assume that the government has issued other grand jury subpoenas and has obtained information from other witnesses. In a legitimate effort to find out more information, you contact the CFO of one of your largest customers and ask him whether his company has been contacted by the FBI. He willingly tells you “yes,” and volunteers that he is scheduled to appear before the grand jury in 10 days. He also says that he is expected to produce documents a few days before his grand jury appearance. You ask to meet with him in a few days to review the contract and other documents he will be producing and to generally discuss the business relationship between your two companies.

Analysis: Again, these may seem to be perfectly logical and understandable steps, but the government may well view this as obstruction of justice. Combined with the earlier effort to direct employees to not answer questions, this development will not put you at the top of the prosecutor’s “good corporate citizen” list.

So, do you think you might have made some of the same decisions as the hypothetical CEO? If so, don’t be frustrated. The point we want to make is that seemingly logical business decisions can carry with them a host of potential legal problems. It is best to speak with an experienced business attorney who can effectively guide you through the process.

1. If you do not want an aggressive lawyer, you should not hire me. I am by nature very aggressive. I believe that the best defense is a good offense. I also believe that preparation is the mother (and father) of success. If you prefer a more laid-back approach, you will not be comfortable working with me. If this is the case, I will be happy to recommend other attorneys for you to talk to.

2. If you do not want to work with me as part of a team, you should not hire me. If you are not willing to help yourself, if you are unwilling to produce or review documents or gather information, if you know better than your attorney what documents are important, if you have problems keeping appointments with your attorney(s), if you do not return calls or read and respond to emails, if you fail to tell the attorney everything or mislead the attorney, three things will surely happen: the case will suffer (and perhaps be lost); the cost will skyrocket; and you will not be happy.

3. If you “know” the law and are looking for a “creative” lawyer to see it your way, you should not hire me. I pride myself on giving my clients an honest, independent, objective view of the law.

4. If you believe that you have agreed on everything and now you just need me to write it up, you should not hire me. My job is not to be a naysayer or block the deal but to make sure you know the risks you are assuming and what you can do to reduce those risks. If you don’t want to hear this, you will need to hire me later, when something goes wrong.

5. If you say that “I don’t care what it costs, it is the principle of the thing.” you should not hire me. Or are you willing to put it in writing?

6. If “(insert name of friend or relative here) had a case just like this,” you should not hire me. Unless, of course, your case is not just like her case, and there is some wrinkle in it that makes it different. If the facts are different, the application of the law to those facts will be different.

7. If you want me to see things from your side only, you should not hire me. I won’t waste your time with false optimism.

8. If you sign things without reading them (or claim that’s what you did in this case), you should not hire me. Will you read and understand my retainer letter before you sign it? Will you read each and every email and letter and document I send you? If not, review reason number eight for not hiring me.

9. If you believe that “I know for a fact that X couldn’t do (fill in the blank) to me, it’s not legal,” you should not hire me. There are exceptions to every rule and part of my job is to find them and protect you from them.

10. If you think that you can prove your case merely by saying (fill in the blank), do not hire me. To win your case we will have to prove (fill in the blank), even when the other side is trying to prove you wrong.

11. If you believe that “I know they’ll settle as soon as a complaint is filed,” or “Just write a letter and they’ll pay,” you should not hire me. You would not give up your rights and property merely because someone wrote you a letter (in fact you might see the letter as a threat and resolve to fight harder). If you are not willing to fight to enforce your rights, you are playing poker—and while a bluff is acceptable in poker, it frequently gets called. If you are not prepared for your bluff to be called, you should not hire me.

Sound familiar? Ownership, and just about anything related to intellectual property, is the current hot lunch and dinner party topic. With the advent of the Internet, John Q. Public has become sensitized to issues of ownership and branding like never before, and everyone wants to protect what they own or think they own. Unfortunately, even if you paid for someone to create something for you, there are many factors that determine whether you own it unconditionally.

A work created for or prepared by someone else usually falls under the copyright category of a “work for hire.” The Copyright Act of 1976, 17 U.S.C. sections 101 and 201(b), and in particular, the provision in section 101, essentially defines a “work made for hire” as either:

• A work created by an employee, someone who works at your place of business, uses your stuff, and takes home a paycheck from you after you’ve taken out taxes
• A work created by an independent contractor, hired by you but who does not use your stuff or place of business to create the work, is not directly supervised by you, and pays his or her own taxes

To better understand the complexities of ownership, consider this scenario:

A client hires an architect to create and draw plans for a new house. During construction, the client discovers the architect to be slow, obnoxious and unresponsive in working with the general and subcontractors, as well as with the client himself, regarding changes in the plans. Eventually fed up, the client fires the architect. Angered at his dismissal, the architect refuses to hand over the mechanicals and other drawings, stating that he is the owner of the copyright. The client, believing the drawings to be his purchased property, threatens to take the architect to court unless the plans are returned.

Who is the actual owner of the plans?

The answer is that it depends on what was written in their contract, assuming they had a contract. If the architect considers himself an independent contractor but the client considers him an employee, and their relationship is not spelled out in writing, the matter may become litigious.

In Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989—hereinafter, CCNV and Reid), considered the seminal case for deciding work-for-hire copyright ownership, a disagreement between two do-gooders over how and how often to display a large sculpture depicting a homeless family a la urban Nativity degenerated into a copyright brawl and a Supreme Court decision. Because there was no written agreement, and no discussion ever took place regarding copyright ownership, CCNV, a nonprofit organization dedicated to assisting the homeless, and Reid, a well-intentioned sculptor, ended up in court. Reid was commissioned by, and donated his services to, CCNV, who picked up the tab for materials and staff wages. They collaborated on the design, and it was that collaboration and the outlay of monies that fueled CCNV’s belief that CCNV owned the work. When Reid disagreed with their plan to aggressively tour the work and then refused to return it to CCNV, CCNV filed suit. The District Court found for CCNV, ruling that Reid was an employee, but that decision was reversed by the Court of Appeals for the District of Columbia Circuit, holding that Reid was actually an independent contractor, and due to the lack of a written agreement and any discussion regarding copyright ownership, the reversal was ultimately upheld by the Supreme Court.

How does this impact our hypothetical architect?

Returning to our original scenario, ownership of the plans and the copyright are really separate issues. Work for hire relates only to the copyright and not the underlying work. The client may be entitled to receive the original plans, and an implied license may have been granted to make copies to achieve the purpose expressed in the contract, but the client still could be prevented from building the house if the architect chooses to terminate the license, again depending upon the contract terms. If there is an express writing signed by both the client and the architect agreeing that the plans are a work made for hire, then the one commissioning the work—the client—is the author and copyright owner. That is, the architect never possessed the copyright, as it vested in the client when it was created. If the client is the one building the house, then the architect will have to release the plans. If there is no executed contract, or if one exists but does not expressly state that the plans are a work for hire, then the architect, if he or she is the author, holds the copyright.

We all know that not everyone plays well with others; hence, the need for written agreements. So in our scenario, who really owns the plans? It depends.