Attorneys - What to expect when you're expecting

[Travis Reese]

First, I'd like to say what a great resource these forums have been. Our company isn't a video production company and heretofore has had no experience whatsoever in doing any kind of video production. We have recently decided to do some short videos for company branding purposes and that's what brought me here.

Reading through the posts here has been discouraging. The reason is that we initially thought our biggest issues were going to be regarding the production itself. We now realize that equally important are the legal questions we have regarding many of the topics discussed at length here in these forums.

While I'm smart enough not to regard any of the posts here as specific legal advice the biggest benefit I've had is educating myself regarding many of the issues we have questions about. From what I've read we are going to have specific issues with fair use, incidental reproduction, right to privacy, and right to publicity. I now know, at least in a general sense, what these terms mean so that when I do get legal advice I'm not going to be completely baffled by what's being discussed.

Through the years and through the growth we've experienced we've found that the larger a company we become, the larger a target we paint on our back for lawsuits. The deeper the pockets, the more someone wants to put a hand in them.

We could of course do no interviews, shoot exclusively on public property, make sure that there are no humans seen anywhere in the video, make sure there are no recognizable brands seen, and make sure that there is no music. That would of course make for a fairly boring video based on what we're trying to do. And so we're faced with the legal questions a lot of people here have raised.

So, I'm expecting to talk to an IP attorney to get some advice. Which brings me to the thread title, "What to expect when you're expecting."

We have dealt with many attorneys and law firms over the years. I've found that buying legal advice is much like buying most other products. For example, I can buy a $2 T-shirt on a street corner in New York. It will probably last for one run through the washer and fall apart within a week. I can buy a $25 T-shirt from a reputable company that will last a reasonably expected amount of time, won't shrink more than reasonably expected, and will serve my needs for a good T-shirt. I can also buy a $400 T-shirt with an ultra high-end brand name that will, for all intents and purposes, perform about as well as the $20 shirt.

I've found the same to be true of attorneys and law firms. There are the "$2" firms and attorneys that will give me advice that's probably worse than what I could come up with on my own; there are the "$25" firms and attorneys that will give me good, solid advice without overcharging me; and there are the "$400" firms that, while they may be the proverbial 800-lb gorilla in their specialty, are usually no better than the "$20" firms.

On a side note, the "$400" firms have their place. We've used them when and where they were necessary. They're usually very good "attention getters" depending on what you're doing.

So, finally, to my questions. For the benefit of others, how does one go about finding that good "$25" IP firm or attorney? We have in-house legal counsel that can refer us to a firm. But what if you don't? Are there specific questions you should ask when you initially call to talk to them?

If I call an IP attorney and lay out what it is I'm doing, where I expect to be doing it, how I'm going to do it, what should I expect? Should I expect that with a couple of hours worth of billing I can get a reasonably good answer? Or should I expect to pay for 30 hours of research? Obviously there is due dilegence and then there is "overboard." Or is the answer here another, "It depends."

Is there an average going rate that one could expect to spend for the "$25" IP attorney?

Should I use an attorney from the state I'm going to be doing the work in? In other words, are most of the IP issues federal, state, or both?

Are there any red flags I should be aware of when talking specifically to an IP attorney?

I apologize for this lenghty post. It seems there are a lot of questions asked and the usual, and appropriate, responses to contact an IP attorney. I just really haven't seen much with regards to what to expect when doing so.

[Richard Alvarez]

As you mention, the first place to ask for a reference is with your inhouse attorney. If as you say, you already have one, then he'll point you towards someone he feels will fit your needs.

For those without a legal rep already, you can usually get a good reference, and even a 'free' initial consultation with the local "Accountants and Lawyers for the Arts"... or some such Pro-Bono foundation. I know for a fact, that there IS one in Houston, as my wife was a member at one time.(She is an IP Attorney). They can usually look at an issue and tell you what you are up against, and at the very least reccomend a competent '25' dollar attorney to assist you.

There are Copyright and Trademark issues are federal in nature(For the most part) Right to publicity/privacy can vary by state. I think getting a local attorney is the first concern, if he detects the need for outside council, he or she will let you know.

That's about all the 'general' info my experience is good for... I expect Paul Tauger will weigh in and correct any bad info/advice I've listed!

[Dave Blackhurst]

A couple of observations -

Attorneys typically specialize, you really should take the time to find out who the best is in the specific areas you need advice in. Your in house counsel should be able to narrow down your specifics before you go interviewing.

An "expert" familiar with your specific issues/potential issues will save you $ in the long run, both in research and in ACCURATE advice. BAD legal advice is the most expensive kind no matter what you paid, and IP law is a very specialized area with a lot of conflicting and or nonexistent "precedent", making for dangerous ground.

Technology is changing the whole lay of things, and the law is more or less "trying to catch up", which means a lot of different "opinions" (meaning a lot of lawyers making contradictory arguments and muddying the waters as much as possible to favor their client vs. someone else's... that's their job).

Your mission should you choose to accept it... <wink> is to navigate these waters without getting torpedoed or eaten by sharks!

Spend a fair amount of time making sure the attorney/firm you use is ACTIVE in the areas specific to your concerns, and preferably trying/defending and winning cases on a regular basis. You don't want an armchair quarterback.

HTH or at least gives you some ideas.

[Paul Tauger]

Originally Posted by Dave Blackhurst

A couple of observations -

Attorneys typically specialize, you really should take the time to find out who the best is in the specific areas you need advice in. Your in house counsel should be able to narrow down your specifics before you go interviewing.

Very good advice.

An "expert" familiar with your specific issues/potential issues will save you $ in the long run, both in research and in ACCURATE advice. BAD legal advice is the most expensive kind no matter what you paid, and IP law is a very specialized area with a lot of conflicting and or nonexistent "precedent", making for dangerous ground.

Correct on most points. The difficulty with IP law is not that there is conflicting law (and I'm not sure what you mean by "nonexistent precedent" -- that's an oxymoron). It is that there are numerous niche doctrines, judicial glosses and multi-factor analytical tests. In other words, it's very complicated. Reasonable minds can disagree, but the disagreement is rarely over the law itself, but rather of the legal significance of a specific set of facts.

Technology is changing the whole lay of things, and the law is more or less "trying to catch up", which means a lot of different "opinions" (meaning a lot of lawyers making contradictory arguments and muddying the waters as much as possible to favor their client vs. someone else's... that's their job).

No, not at all. That's not our job and most of us (the ethical ones) don't do this. I'd like to say that the unethical (or less ethical) ones are confined to the $25 lawyers, but, sadly, that's not always the case.

Spend a fair amount of time making sure the attorney/firm you use is ACTIVE in the areas specific to your concerns, and preferably trying/defending and winning cases on a regular basis. You don't want an armchair quarterback.

More good advice.