Wednesday, May 13, 2015

Some Clients and Industries Are "Better" to Represent than Others

A hushed and taboo topic of conversation that lawyers rarely write much about is what clients and industries are "better" to represent than others.

Their reticence is largely because outside counsel are perennially fearful of offending any potential clients.  So, they would rather pretend that "all clients and industries are equal," than openly discuss the vagaries of representing clients that come from very different industries.

But the reality is that representing a small startup client in the media industry will be a totally different experience for the lawyer than counseling and representing an established banking industry client, or a large multinational pharmaceutical company, even if the legal subject matter of the representation is similar. 

Each industry and client will have its own pros and cons for the outside counsel, and clients will often have very different expectations of their outside counsel.  Here are a few examples:

Large multinational corporations are highly structured and regulated, and have become extremely demanding of their outside vendors.

Over the last decade, most multinational corporations have come to view outside counsel services in the same category as any commodity vendor.  This type of treatment often leaves lawyers feeling like their services are being viewed about as uniquely as paper products.

Further, in-house lawyers working for these companies are usually very sophisticated and will pressure their outside counsel to offer extremely unfavorable deals.

Many law firms that regularly represent and counsel Wal-Mart complain that they are required to offer "most favored nation" status to Wal-Mart for their hourly billing rates.

What that demand means, in layman's terms, is that if a law firm offers a special discount to any other client, it is required to offer the same (or better) discount to Wal-Mart.

Consequently, given Wal-Mart's strict "Outside Counsel Guidelines," many lawyers will simply refuse to even consider representing a behemoth, regardless of the volume of work that could be involved.  If a lawyer's standard billable rate is $800 an hour, and she must offer a discount down to $475 an hour to Wal-Mart, she may very well end up working for peanuts (relatively speaking, of course).

The reality is that Wal-Mart will have no problem finding another law firm to underbid the legal work, leaving the outside counsel with zero leverage.

Industries can matter more than a client's size.  For example, companies in the agriculture and mining industries are notoriously difficult to work for, for a variety of cultural reasons.  Agriculture and mining jobs often have lower salaries and workers in these industries are often very unhappy.

Such unhappiness about their career prospects generally can rub off on the outside counsel, who may be seen as charging too much for her time.

Similarly, representing non-profit enterprises and software companies is also notoriously difficult, given the stringent demands on those particular workforces.

According to Forbes, media, entertainment and retail fashion companies tie for the third unhappiest industry to work in.  These industries often pay their employees with glitz and glamor rather than cash, and expect their outside counsel to similarly discount their own financial expectations, in exchange for prestige.

Small companies and startups are also a mixed bag.  Some outside counsel report that some of their most enjoyable work has been advising smaller companies and startups during their nascent phases.

This satisfaction is in part because these companies often possess wide latitude in making decisions and are not hampered by the extremely top-heavy management styles of large multinational corporations.  A lawyer's advice may end up shaping significant business decisions that the client makes.

The obvious downside is that these companies are often so legally unsophisticated that they "need their hand held" by their outside counsel, but may not be in a position to pay the lawyer enough money to remotely justify micromanagement of their day to day legal affairs.  Whether a client has an in-house counsel will make a huge difference for the outside counsel.

Individuals are sometimes the most interesting to represent, but perhaps may be the most rewarding and challenging of all.  When a lawyer represents a client so small that it may consist of a single individual or family, that relationship will often become very close.  

A lawyer may become a trusted advisor affecting all parts of that individual client's life.  Some lawyers report becoming so close to their individual client's lives, that they become like family.  Of course, such intimacy can lead to obvious tensions, too.

Whether a client is foreign or domestic can make a huge practical and cultural difference, too.  For example, lawyers have reported that representing Japanese electronics companies will offer an extremely different experience than representing a midwestern American auto maker.

Similarly, representing a German cellular phone company will be as different as night and day from representing a North Carolina based tobacco company.  These clients' unique cultures and expectations will make for very different experiences for their outside counsel.

The reality is that clients are people, too.  Each client has its own unique personalities and traits.  Clients also function in industries that are often absurdly demanding and, in some cases, dysfunctional due to no fault of the client.

Over the course of her career, the aspiring outside counsel would be well advised to be careful to choose her clients wisely, as the internal and external pressures that the client faces will often affect her own lifestyle, as well.

Monday, March 2, 2015

Some Multinational Corporations Deliberately Frustrate Due Process

It seems like a matter of common sense that if someone regularly and systematically does business within the United States, that person or business should reasonably expect to be summoned or subpoenaed when necessary, either to produce relevant documents, or to produce a witness to testify about a topic only that company knows about.

Such a simple matter of due process seems like a relatively straightforward matter of American civil procedure. It has been largely non-controversial for decades. However, recently, large corporations have gotten strong enough to test the patience (and resources) of litigants, including government officials.

For example, take Amazon and Google.

Amazon has appointed a registered agent for service of process in New York (CT Corporation), so why not just serve Amazon with a subpoena duces tecum?

Apparently, it's not so simple.

An article published on details how Amazon does not typically cooperate with, nor respond to, routine subpoenas for documents.  Amazon allegedly forces all litigants to seek a third party subpoena from the Thurston County Clerk's office in Washington State, where Amazon's headquarters is located.

Such a process is likely to cost a litigant thousands of dollars in legal fees.  Further, if Amazon objects to the scope of the subpoena, an out-of-state litigant would need to retain local counsel in Olympia, Washington, to litigate a motion to compel there.

Amazon's obstructive efforts are no idle threat.  In one criminal case, a Grand Jury sitting in Wisconsin sought a representative sample of used book buyers, in a criminal case involving mail fraud and wire fraud there.

Amazon issued its usual blanket objections, forcing the issue to be litigated in federal court.  Ultimately, the federal government backed down.

The standard response on the Internet was to applaud Amazon's resistance.  But before applauding Amazon's seeming defense of privacy rights, think about the precedent set here...

A legitimately convened Grand Jury had decided that Amazon's documents were relevant to an ongoing criminal investigation.

Amazon was able to hire an army of private lawyers to successfully keep its business records from the Grand Jury.  Despite its claims, Amazon was not interested solely in the pursuit of noble privacy.  Amazon was protecting its business, by telegraphing that it is not held to the same standards of disclosure and due process as everyone else.

Google does the same thing.

Why should wealthy multinational corporations be entitled to use the threat of protracted, expensive litigation to frustrate due process?

Tuesday, February 24, 2015

Branding A Necessary Evil: Insurance

Benjamin Franklin once wrote that the only certainties in life are death and taxes.  If he had lived in 2015, he might have added a third inevitable evil:  insurance.

Virtually no responsible, self-sufficient adult in America can function without buying some form of insurance policy at some point in their life.  Whether it is private medical insurance, "umbrella" fire and theft insurance for one's home or apartment, life insurance, vehicle or boat insurance (mandatory if you want to register an automobile or motorcycle), business interruption insurance, professional malpractice insurance, the list of available policies goes on and on...

The ostensible purpose of all insurance is to spread risk.  That is, rather than take the risk that your new house might burn down and lose everything, you fork over a few thousand dollars a year, so that if such a horrendous calamity ensues, at least you can buy a new wardrobe.

It is virtually impossible to imagine an adult successfully prospering in our modern society, fully exposed to all attendant economic risks without insurance.

Driving a car into a tree or hitting a pedestrian can easily bankrupt anyone.  Giving birth to a healthy baby in a public hospital without health insurance could now cost well over $10,000.  That is not to even mention catastrophic illnesses.

Fortunately, ever present are private insurance companies, ready to sell you a blanket policy for a reasonable annual premium.

But how do these "necessary evils" brand themselves to differentiate themselves from one another in the marketplace? By credibly advertising that they will pay all reasonable claims without becoming adversarial?  No, not exactly.

The GEICO gecko has become ubiquitous.  The redheaded, apron-wearing Flo, as portrayed by actress Stephanie Courtney, has become a mainstay of television.  Cavemen, babies, puppy dogs and talking pigs have all become iconic representatives of an industry that isn't otherwise very popular.

Data provider SNL Financial found Geico had spent about $994 million on advertising in 2011. That was fully 22 percent more than next-largest spender State Farm, even though State Farm’s ad spending grew at nearly three times the rate Geico’s did.

The goal is to grab the attention of consumers who would rather not think about insurance. Experts say most people only ponder policies when they have an accident, buy a new car, move, or renew their existing agreement, which usually happens twice a year, at most. 

Today there are about 187 million insured privately owned vehicles on the road. Turnover is relatively low from year to year — 11% of consumers switch their policies while an additional 20% shop but don’t switch, according to J.D. Power. But that still means more than 20 million people are in the market each year.

But the insurance companies' advertising isn't winning many fans among existing customers.

They will wish you good luck trying to collect from the carrier.  

As soon as a claim is filed, some of these same insurance companies that were so cutely advertising their products with ice cream and puppy dogs will hire a team of savvy adjusters and professional litigators to nickel and dime a claimant to death.

But, for now at least, such negative reviews don't seem to be reaching consumers amid the din of talking lizards.

Thursday, February 12, 2015

Borrowing and Branding: Loyalty and Expansion Through Debt

What do borrowing money and creating an established brand have to do with one another?  It turns out, quite a bit.

Here is a simple case study of retail electronics and appliance stores in the United States.

The very first P.C. Richard store opened on September 26, 1909 in Bensonhurst, Brooklyn.  This particular store sold hardware and was run by Peter Christiään Richard, an immigrant from the Netherlands

The first appliance the store sold was an electric iron.  Peter's son, Alfred, would spend all of his time helping his father, as he quit school at the age of fourteen for the sake of the store. 

Within time, A.J. would become the head of the store, and would prove to be highly successful in persuading people to buy appliances. 

As the years progressed, his sons would aid him with the business, as they expanded to a few other locations. To this day, the chain is still run by the Richard family, as A.J. himself would serve as chairman well into his 90's. On December 28, 2004, A.J. Richard died at the age of 95.

Today, P.C. Richard & Son have 57 showrooms in the New York Tri-state area and make more than $1.5B in annual revenue.  It is the largest privately-owned appliance and electronic retailer in the nation.

During the 100+ years that P.C. Richard & Son have been in business, many, many of its competitors have come and gone.  Just a few memorable ones include:
  • The Wiz (founded in 1977, defunct by 2004)
  • Lechmere (founded in 1913, defunct by 1997)
  • CompUSA (founded in 1984, defunct by 2012)

and now...Radio Shack (founded in 1921).

What did each of these defunct (and soon to be defunct) electronics companies do differently than P.C. Richard & Son?  

At least two things stand out:  they apparently never formed a customer base that was truly loyal to their brand, and they took on too much debt to finance unfettered expansion.

Over the decades, P.C. Richard & Son became the "go to" place in New York City for appliances.  The company expanded slowly, buying and building stores over the course of generations, rather than leasing them from commercial landlords.

Such a philosophy of glacial growth over 100 years seems anachronistic today.  In an age where the federal discount rate remains under one percent, banks and investors appear eager and willing to finance companies' expansion plans.

As a result of refusing to accept this type of financing, P.C. Richard & Son does not sell refrigerators in Iowa or toasters in California.  It deliberately chose to stay local and close to its roots.

In contrast, the 94-year old Radio Shack will now shutter 1,100 stores littered across the nation after losing profits quarter after quarter for a decade.

Radio Shack is certainly a more well-known national brand than P.C. Richard & Son, but apparently it does not have a loyal enough customer base to keep it afloat.

And so, the perpetual question that faces every brand is whether their core customer will always return, and whether that perception of brand loyalty ever justifies borrowing tens of millions of dollars to find out.

Wednesday, February 11, 2015

The BigLaw Gap Widens: Winners and Losers

As I have previously noted, one of the most controversial topics of debate and discussion among both lawyers and non-lawyers alike (for various reasons) is law firm profitability, and how many lawyers are perceived as overcharging their clients to engage in legal work.

An interesting article was published on Above the Law which discusses the current state of affairs in the American legal marketplace, among "AmLaw100" law firms.  It is aptly titled "The Imminent Capitulation of Many Big Firms."  This article comes on the heels of recent articles discussing how DLA Piper apparently shortchanged its associates on annual bonuses.

For readers not immersed in the terminology, the American Lawyer magazine publishes lists each year showing America's largest 100 law firms, based on gross revenue, as well as lists of the same firms broken out by average annual profits per partner.

Headcount of total lawyers is one easy to measure variable, so a local New York City-only law firm that has 500 lawyers and boasts $1B can be ranked "higher" on some lists than a law firm with 1,000 lawyers located all across the globe that reaps $500M in annual revenue.  Both firms would probably still be on these lists, but the lower grossing law firm would be ranked "lower."

A few "elite" firms, such as Wachtell, Lipton, Rosen and Katz have only 260 lawyers, including 79 equity partners, making $5M each.  Another such elite firm is Sullivan & Cromwell, which has 800 lawyers, with each of its equity partners making $3.5M each year.

These interesting metrics show that these top 10 "elite" law firms based on profits are pulling away from the rest of the pack, leading to a very, very short list of highly paid lawyers.

However, the rest of the large law firms are struggling to compete effectively for the day to day routine legal work of the large corporate clients.  The American lawyer calls these firms the "Giant Alternatives."  These firms are enormous but not hugely profitable: although they house almost 20 percent of the Am Law 100’s lawyers, they generate less than 14 percent of the revenue.

A big law firm in this vein is DLA Piper, which has approximately 4,200 lawyers practicing in more than 30 countries.  It has total revenue of $2.48B, but profits per partner placing it 54th on the list, with $1.3M in average profits per equity partner.  The world's largest law firm based on both revenue and headcount is Baker McKenzie, which has 4,200 lawyers in 78 offices, reaping over $2B per year.  However, its profits per partner place it 63rd on the profitability list.

So the world seems to agree:  The super-rich firms will become even more superbly rich, and the merely rich firms will lose ground. Where does that leave many big firms?  In a world of hurt.
Why is that?  Look at it from the perspective of a corporate client facing any Intellectual Property legal issue.  If that issue involves facing down Boies Schiller or Ted Olson in the U.S. Supreme Court, the client will need to hire the best lawyer available, whether she charges $1,500 or $1,800 an hour.

However, the vast majority of clients' day to day legal activities in the Intellectual Property arena are relatively routine, such as sending and responding to cease and desist letters, monitoring trademark filings, handling copyright licensing arrangements, etc.

These specialized but routine activities do not warrant paying $1,000 an hour for a partner whose firm maintain dozens of glitzy offices all around the globe.  These clients can look to small, boutique firms with the same experience and specialization but much lower overhead and billing rates to substantially undercut the Giant Alternatives.

And that is just one of the reasons why Giant Alternatives and their ilk are in for a world of hurt ahead.

Friday, February 6, 2015

Katy Perry Dubiously Claims to Own Copyright in Shark Costume from the Superbowl Halftime Show

During singer Katy Perry's performance at the halftime show at the 2015 Superbowl, a variety of amusing costumes depicting sharks and palm trees were used.  It is unclear who specifically designed these particular costumes.  Katy Perry has reportedly utilized Jeremy Scott as her costume designer.

Greenberg then fired off a formal cease and desist letter to, which had offered to sell shark figures that were based upon Katy Perry's costume design:

So let's scrutinize Katy's copyright claim a bit more...does U.S. intellectual property law really protect this shark costume?

Potentially, no.  The costume itself may very well be a "useful article" under U.S. Copyright law, and not protectable in the abstract, since its ornamental elements are not clearly "separable" from it.  Copyright protection is generally not available to articles which have a utilitarian function.

Under the Copyright Act, the only copyright protection available to these items is for "features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article."  Unfortunately for Ms. Perry, this test is inherently ambiguous when deciding the scope of copyright protection for certain useful articles, such as shark costumes.

Some distinctions are clear.  For instance, a painting on the side of a truck is protectable under copyright law even though the truck is a useful article. The painting is clearly separable from the utilitarian aspects of the truck.  The overall shape of the truck, on the other hand, would not be copyrightable since the shape is an essential part of the truck's utility.

Another commonly considered example is that of clothing.  The print found on the fabric of a skirt or jacket is copyrightable, since it exists separately from the utilitarian nature of the clothing. 

However, there is no copyright in the cut of the cloth, or the design of the skirt or jacket as a whole, since these articles are utilitarian.  This is true even of shark costumes; no copyright protection is granted to the costume as a whole.

That is because costumes, in addition to covering the body, serve a “decorative function,” so that the decorative elements of clothing are generally “intrinsic” to the overall function, rather than separable from it.  See Whimsicality, Inc. v. Rubie's Costume Co., 891 F.2d 452, 455 (2d Cir. 1989) (observing that garments' decorative elements are “particularly unlikely to meet [the] test” of conceptual separability); but see Chosun Int'l Inc. v. Chrisha Creations, Ltd., 413 F.3d 344 at 329 n. 3 (2nd Cir. 2005) (expressing skepticism that Halloween costumes that permit wearer “to masquerade” have a utilitarian function other than to portray appearance of article).

The idea for an upright “shark costume" is not an original copyrightable element, standing alone.  General character types are not protectable by copyright law.  See Hogan v. DC Comics, 48 F. Supp.2d 298, 310 (S.D.N.Y. 1999).

Further, as for a potential claim of "trade dress" or the tort of commercial "misappropriation," Ms. Perry would need to show that she is uniquely associated with this particular shark costume in consumers' minds.  While that is possible given the immense publicity and viewership that the Super Bowl halftime show receives, there are functionality issues there, as well.

Finally, below are photographs of a few similar shark costumes that appear to have been created and sold long before Katy Perry's costumes were created.  It is unknown if any of these designers successfully have claimed copyright or trade dress rights in their designs.  However, it would appear that the scope of Ms. Perry's intellectual  property rights, if any, would probably be quite narrow, if they exist at all:

Friday, January 16, 2015

National Parks Battle Over Trademark Rights to Souvenirs and T-Shirts

Yosemite Valley, 2013
Tuxyso / Wikimedia Commons / CC
According to USA Today, the National Park Service has become embroiled in a bitter and unusually public trademark dispute with the two private companies that run most of the hotels, restaurants and stores located inside the Grand Canyon and Yosemite National Parks.

At Yosemite National Park in California, longtime concessionare Delaware North is demanding that anyone who takes over the contract pay it tens of millions of dollars to use the names that it has trademarked, including "Yosemite National Park," in connection with souvenirs and clothing.  Delaware North is competing to keep the contracts.

The National Park Service argues that a new concessionaire could simply give those iconic places new names if it wins a new concession contract.  The park itself wouldn't be renamed, but the trademarks apply to any souvenirs and clothing sold to promote the locations.

At the Grand Canyon, concessionaire Xanterra has been similarly competing for the contract rights to run the park's South Rim lodges and restaurants. 

Scott Gediman, a ranger and spokesman for Yosemite National Park, reportedly told USA Today:  "We feel Half Dome and El Capitan and the Ahwahnee Hotel (and other trademarked names at Yosemite) are part of the national park's fabric. We feel those names are inextricably linked with Yosemite … and ultimately belong to the American people."

Delaware North officials say their original contract required them to buy the intellectual property owned by the previous concessionaire, and they're asking for nothing different should they lose out to a competitor.