investigation and discovery tools in law firms
TRANSCRIPT
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Using Discovery and Investigation Tools in Law Firms
A Clio WebinarJoshua Lenon - Clio
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Instructor
Joshua Lenon
• Lawyer in Residence at Clio• Attorney Admitted in New York• @JoshuaLenon
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Panelists
• David K. Mitnick is the Founder and President of DomainSkate, LLC
• Mary Juetten is the founder and CEO of Traklight and the co-conspirator behind Evolve Law.
• Tim Santoni, CPI - Santoni Investigations & Backgrounds
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Introduction DomainSkate, LLC - David K. Mitnick is the Founder and President of DomainSkate, LLC, an Internet company that focuses on providing domain name and brand monitoring services. Prior to starting DomainSkate, David spent ten years as an intellectual property lawyer with AmsterRothstein & Ebenstein LLP in New York, working on all phases of intellectual property law including trademark licensing and prosecution, copyright litigation and Internet law. Previously, David worked as a Finance Associate at the Sanwa Bank in the International and Project Finance Groups. David earned his B.A. from the University of Wisconsin-Madison, and a J.D. from Brooklyn Law School
Mary Juetten is the founder and CEO of Traklight and the co-conspirator behind Evolve Law. Traklight the only self-guided software platform that creates a custom intellectual property (IP) strategy and automates the client question and intake process for business, IP, and startup or venture attorneys. Mary has a B.Comm from McGill University and a J.D. from Sandra Day O’Connor College of Law. Mary is an international writer, who contributes to Forbes and the ABA Legal Technology Today; speaker; and mentor.
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IntroductionSantoni Investigations & Backgrounds- Tim Santoni, CPI, has investigated and supervised numerous insurance claims involving fraud, many of which have resulted in evidence of fraud being subsequently referred SIU departments, the California Department of Insurance and local District Attorneys for prosecution. Tim works with HR Leaders to put together employment background screening solutions that help mitigate risk while keeping employers compliant and efficient.
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Agenda
• 9 Core Areas of Discovery Competency (10 minutes)– Investigation starts before litigation
• Investigation Tools in Business & IP Law (15 minutes)• Early Investigations in Employment Law (15 minutes)• Best Practices for Securing Clients’ Assets & ESI (10
minutes)• Questions (10 minutes)
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CORE AREAS OF DISCOVERY COMPETENCY
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What are an attorney’s ethical duties in the handling of discovery of
electronically stored information?THE,STATE,BAR,OF,CALIFORNIA,STANDING,COMMITTEE,ON,PROFESSIONAL,RESPONSIBILITY,AND,CONDUCT,FORMAL,OPINION,NO.,2015A193
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9 Core Areas1. Initially assess e-discovery needs and issues, if any;2. Implement/cause to implement appropriate ESI preservation procedures;3. Analyze and understand a client’s ESI systems and storage;4. Advise the client on available options for collection and preservation of
ESI;5. Identify custodians of potentially relevant ESI;6. Engage in competent and meaningful meet and confer with opposing
counsel concerning an e-discovery plan;7. Perform data searches;8. Collect responsive ESI in a manner that preserves the integrity of that ESI;
and9. Produce responsive non-privileged ESI in a recognized and appropriate
manner.
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An attorney lacking the required competence for e-discovery issues has three options:
1. Acquire sufficient learning and skill before performance is required;
2. Associate with or consult technical consultants or competent counsel; or
3. Decline the client representation.
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Investigation Actions
Identify custodians of potentially relevant ESI
Perform data searches
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Investigation tools can head off potential legal issues &
organize for unavoidable disputes
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INVESTIGATION TOOLS IN BUSINESS & IP LAW
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Program goals
Clients depend on you to advise them and protect their interests. Preventing problems from occurring in the first place, and making sure clients are managing IP assets correctly is an area where attorneys can provide valuable counsel. Learn how to advise clients about securing their rights and how to manage them properly after.
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What this section covers:
• Choosing a business name
• Registering a domain name and trademark
• Keeping track of your company’s IP assets
• Hiring employees
• Background checks
• Best practices after your clients’ assets are secured
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What’s in a name?
• How to help client’s choose a great name?
– Check the USPTO database
– Use discovery tools to help see if you can register a good domain name
– Consider ™ search tools for larger investments
– Consult with client, make sure they know the space, who competitors/players are• Attorney role is critical here
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Investigations in Domain Name
• Company should own the business domain–Make sure client’s business is not owned by the intern or
temporary IT person - can lead to major problems later on
– Privacy necessary? –Make sure someone at company owns renewal and
management duties for domain portfolio• Will be important as client’ business grows/matures
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So Many Choices - New gTLDs?
• New domain registries like .NYC, .CLUB and .SUCKS give clients more options– Is New gTLD right for your client? – Is a defensive registration appropriate?
• competitor considerations• asset ownership for future
– 700+ New registries are online• Talk to client about possibilities
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Step 2(a) - Trademark Protection
• Is applying for ™ registration appropriate? –Not the same as a domain name
• Talk to client about status of use… will make big difference when filing– In use vs. intent to use
• Don’t sit on your name! Case study common mistakes: Generic name, wrong class, not understanding common law ™
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The Imperative to Ensure Your Clients Protect Their Trademarks
IP Protection Is Good Business All Around! • DAMAGED BRAND REPUTATION: From domains registered by parties
intending to harm your brand, e.g. Your Business-Sucks.com
• LOST PROFITS: Customers visit the wrong site and accidentally become infected with malware, e.g. YourBusiness.wrongdomain
• LOST REVENUE: Scammers create sites similar to yours with the sole purpose of profiting from online ads displayed on the site
• STOLEN CUSTOMER DATA: Phishing scammers make imposter web sites to obtain your customers personal information
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Recent News
• Bloomberg.marketing stock scam • Fraudulent wire transfers to fake corporations• Phishing scams targeting startup companies• Old example but Burger King v. Burger King
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Tracking Your IP Assets
Best Practices:• Can’t protect what you don’t know you have• TMs plus copyrights & patents - same principles• Track and protect your Trade Secrets• ™ Renewal payments
– Between 5th and 6th year– Every 10 years
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EARLY INVESTIGATIONS IN EMPLOYMENT LAW
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What this section covers:
• Hiring employees
• Background checks
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The Hiring Process
• Owning what your client’s employees know– Best practices include:
• Employee and Contractor agreements• Non-disclosure & Non competes (where you can)• Employee Training (#1 issue)• Be specific re confidential information & trade secrets• Identify from day one any outside employee projects
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Background Checks
• Why are background checks important?– 78% of resumes contained misleading information– 7% misrepresented that they had a felony– ADP reports 46 % of employment, education and/or
credential reference checks revealed discrepancies– Sony - Target –HIPAA / HITECH Compliance
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Background Checks
• Document your hiring/screening process– Create background screening packages to meet
compliance & risk tolerance– Screen Employees, Vendors/Partners & Suppliers– Compliance with State & Federal Law (FCRA)
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Background Checks
• “National Criminal Databases” don’t exist• Run DMV/driving records for secondary
identification• Credit Checks? Legal/Illegal (NO SCORE)
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Background Checks
• Speed MATTERS– Utilize Technology (Electronic Application)–Don’t overkill– Rely on a partner (Management & Compliance)
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Background Checks
• Basic Background Check– Social Security Trace–National Criminal w/Alias (Sex Offenders)– County Criminal (Counties of Residence)–Driving Record
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BEST PRACTICES FOR SECURING CLIENTS’ ASSETS & ESI
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Management Practices
• Innovation management including branding is challenging• Intangibles >80% of company’s value• Regular routine process to inventory and track IP
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Policing your brand
• Infringement and counterfeit costs billions• Internal and External Policies for proper ™ usage• Training programs for employees & partners
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CONCLUSION
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Conclusion
• Lawyers are held responsible for an increasing amount of client-held data.
• Failure to understand client collection & storage of ESI can have drastic consequences
• Investigation tools help law firms gather data before litigation, preventing rushed judgment errors
• Investigation tools create ongoing relationships with clients; law firms become indispensable partners
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QUESTIONS?
