By Lazar Emanuel [Originally published in NYPRR June 2011]
Considering that Rule 7.5(b) is a verbatim adoption of the Code’s DR 2-102(B), it’s surprising that a rule that has existed for so many years needs interpretation once again. But two recent NYSBA Ethics Opinions, #850 (1/19/11) and #853 (3/1/11), only weeks apart, raise a number of questions which have arisen several times before — i.e., what are New York’s rules governing the use by lawyers of trade names, firm names and domain names? And why are New York’s Rules so vastly different from the ABA model rules?
In the multi-year process in which COSAC and the New York Appellate Divisions decided to conform to the ABA rule-numbering system and in which the Courts modified many of the provisions of the Code to reflect the reasoning behind the ABA Model Rules, it’s interesting to note the slavish correspondence between all of DR 2-102 and all of Rule 7.5. Except for an occasional and immaterial change in a word or phrase, the two are identical.
The relevant text shared by NY Rule 7.5(b) and DR 2-102(B) reads:
(b) A lawyer in private practice shall not practice under a trade name, a name that is misleading as to the identity of the lawyer or lawyers practicing under such name, or a firm name containing names other than those of one or more of the lawyers in the firm, except that the name of a professional corporation shall contain “PC” or such symbols permitted by law, the name of a limited liability company or partnership shall contain “LLC,” “LLP” or such symbols permitted by law and, if otherwise lawful, a firm may use as, or continue to include in its name the name or names of one or more deceased or retired members of the firm or of a predecessor firm in a continuing line of succession.
Two Categories of Names
Ignoring for the moment the issue of trade names, the two Opinions would limit law firms to the use of two categories of names:
1. Firm names containing only the names of a lawyer or lawyers in the firm; and
2. Firm names that are not misleading as to the identity of a lawyer or lawyers practicing under the names. [Note: Of course, a firm name that includes the name of a deceased or retired member is inherently misleading, but the rule continues to recognize these exceptions. What about a firm that uses as its name only the names of deceased partners?]
Solo practitioners can easily conform to Rule 7.5(b) by using their own names in their practice, but firm names often require further inquiry. In Ethics Opinion #850, supra, the Question was:
May a law firm use the name of a former partner in the firm name if the former partner departs from the firm but continues to practice law as general counsel to a corporation?
The underlying facts were: Lawyer B withdraws from law firm ABCD to serve as general counsel to a closely held corporation in the same city as the law firm. But he continues to have “close social relationships” with members of his former firm and even refers corporate matters to the firm, though he does not participate in its matters and does not take a salary or any other income from the firm.
Opinion #850 advised that the law firm would be required to remove the name of Lawyer B from its name. Citing Comment 1 to the Rule, the Opinion said, “Lawyers should not hold themselves out as being partners or associates of a law firm if that is not the fact…”
Lawyer B did not satisfy the rule’s “retirement” exception either.
An attorney is ‘retired’ from the practice of law when, other than the performance of legal services without compensation, he or she does not practice law in any respect and does not intend ever to engage in activities that constitute the practice of law. [22 NYCRR §118.1(g).]
This definition of “retirement” appears again in the FAQs concerning the registration of lawyers, under the link www.courts.state.ny.us/attorneys/registration/faqs.shtml.
Opinion #850 relied upon the Ethics Opinions of other states (Maryland, North Carolina, the District of Columbia) and concluded:
A law firm may not use the name of a former partner in its firm name when the former partner departs from the firm but continues to practice law as general counsel to a corporation.
More Questions, More Answers
In Ethics Opinion #853, (3/1/11), barely six weeks after Opinion #850, the Committee took up the same basic issue of a named partner who leaves his firm to become inside counsel to a corporation. This time, as we might have expected, the Opinion was considerably broader, as though the Committee had realized that more needed to be said.
The Opinion focused on three questions. I will set forth each question and the corresponding answer.
Question: Any a law firm retain in its name the name of a partner if he can be considered “retired”?
Answer: A law firm Partner who is actively engaged in the practice of law as general counsel to a corporation has not “retired” from the practice of law within the meaning of Rule 7.5(b). The law firm may not continue using the name of the Partner in its name (or list him on its letterhead with the reference “retired”).
Question: May the firm treat the Partner as on a “leave of absence”?
Answer: The Committee has previously expressed its opinion that the name of a professional legal corporation “may not properly include the name of [a] former partner who is practicing law with another firm.” Rule 1.0(h) defines “Firm” or “law firm” to include “the legal department of a corporation or other organization.”
Further, the facts suggest that the Partner would no longer be active in the law firm. a law firm may not list on its letterhead as an “inactive partner”, a lawyer who is practicing law elsewhere.” There is no proper purpose to be served by such a listing,” and “the designation would only tend to confuse the public as to the status and responsibility” of the partner” [See, NYSBA Opinion #346 (1974)]. (The Committee expressed no view on question: What is the length of time a law firm may construe as “temporary” in listing a lawyer’s leave of absence? a temporary leave of absence might occur if the partner left to serve on a court-appointed assignment, for example.)
Question: May the law firm remove the Partner’s name from its name but continue listing him on the firm’s letterhead as “of counsel”?
Answer: There is no prohibition on a firm’s use of the designation “of counsel” on its letterhead for a partner who has retired from practice. However, a partner who leaves the firm to become involved on a “regular and continuing basis” as in house lawyer for a corporation will not qualify as “of counsel” to his former firm. Both Rhode Island and Nebraska have adopted ethics opinions which hold that the “of counsel” listing is not available to a lawyer who is withdrawing to practice in another place, or to take other employment, or to take a leave of absence. The designation “of counsel” “connotes a partnership and is therefore misleading to the public.”
Question: Under what circumstances will a conflict of interest between the law firm and the former partner who moves from the firm to serve as in house counsel for a corporation be imputed from one to the other? (This question was not included among the questions put by the inquirer to the Committee, but was raised sua sponte by the Committee.)
Answer: Rule 1.10(a), which deals with imputation of conflicts, says, “While lawyers are associated in a firm, none of them shall knowingly represent a client when any one of them practicing alone would be prohibited from doing so by Rule 1.7, 1.8 or 1.9, except as otherwise provided therein.” The term “associated” is not defined in the rules, but the Committee has stated previously that the meaning depends on the facts and circumstances of the lawyer’s employment. Conflicts may be imputed from the lawyer to the firm if the lawyer “has general access to the files of all clients at the firm and regularly participates in discussions of their affairs.” [See, Opinion #715 (1999)]. Under the facts in this case, if the departing lawyer is simultaneously associated with both the firm and the legal department of the corporation, conflicts between them will generally be shared, and they must both apply the conflict-checking systems required by rule 1.10(e). [See, Opinion #793 (2006).]
Two Firms: One Name
A new issue — new to me, at least — involving the use of law firm names, an issue which was not addressed by either Opinion #850 or #853, arose in a recent litigation in behalf of the victims of 9/11. Two independent law firms with separate offices, ABC and DEF, joined forces to manage and conduct the litigation. Both firms functioned day-to-day as separate LLPs. For purposes of this litigation, however, the record indicates that they formed a new LLP which they called ABC & DE, LLP, listing all the names in both firms but F’s name. They created a new website to track developments in the litigation. In their correspondence, they referred to themselves in their letterhead as ABC & DE, LLP, “a Partnership of Limited Liability Partners.” Lawyer E, who was listed as “Senior Partner,” signed correspondence on behalf of “ABC & DE, LLP.”
These facts suggest a number of questions:
1. May the named members in two separate and independent law firms form a new and temporary firm to conduct one or several lawsuits?
2. What legal formalities must they comply with?
3. May the firms continue their separate and independent status and represent their own existing clients in their original names?
4. Are the firms required to give notice of the formation of the new firm to their existing clients?
5. May one of the named members in the two firms exclude himself from the new firm? To confirm his exclusion, is it sufficient that his name not appear in the name of the new firm?
6. What steps are the two firms required to take to avoid conflicts of interest among their existing and former clients? Their prospective and future clients?
7. What steps must the new firm take to avoid potential conflicts among its own clients and between its clients and the clients of the two firms which formed it?
So far as I am aware, these are novel questions which we may never confront again. But they are interesting questions about the ability of law firms to join together to pursue a particular litigation. Answers, anyone?
Back to Trade Names
I have deliberately put aside all discussion of trade names, because the prohibition against using them in rule 7.5(b) is so emphatic. “A lawyer shall not practice under a trade name…” But don’t be deceived — the prohibition is not absolute. In Matter of von Wiegen, 63 N.Y.2nd 163 (1984), the Court of Appeals reversed the lower courts and held that the designation “Country Lawyer,” on a lawyer’s letterhead immediately below his name, was permitted. The Court reasoned that the public would not be deceived by the designation “because the lawyer’s name was inserted apart from the motto.”
Thus, whether a particular trade name may be used turns on the inherent possibility of public deception. For example, the name “The People’s Law Firm” is improper because it suggests that the firm is receiving public financing, is representing the public, or is offering its services on a non-profit basis [Matter of Shephard, 92 A.D. 2d 978 (3rd Dept. 1983)]. Would the trade names “The Diligent Law Firm” or “The Capable Law Firm” be permitted?
The issue of trade names has been complicated by the development of the Internet. Rule 7.5(e) provides:
A lawyer or law firm may utilize a domain name for an Internet website that does not include the name of the lawyer or law firms provided:
(1) all pages of the website clearly and conspicuously include the actual name of the lawyer or law firm;
(2) the lawyer or law firm in no way attempts to engage
in the practice of law using the domain name;
(3) the domain name does not imply the ability to obtain results in a matter; and
(4) the domain name does not otherwise violate these rules.
Comment 2 to this rule states:
 A lawyer may not practice under a trade name. Many law firms have created Internet websites to provide information about their firms… as long as a law firm’s name complies with other rules, it is always proper for a law firm to use its own name or its initials or some abbreviation or variation of its own name as its domain name. For example, the law firm of Able and Baker may use the domain name www.ableandbaker.com, or www.ab.com, or www.able.com, or www.ablelaw.com…
[S]ome law firms may prefer to use terms other than the law firm’s name. If able and Baker practices real estate law, for instance, it may prefer a descriptive domain name such as www.realestatelaw.com or www.ablerealestatelaw.com or a colloquial domain name such as www. dirtlawyers.com. Accordingly, a law firm may utilize a domain name for an Internet website that does not include the name of the law firm, provided the domain name meets four conditions: First, all pages of the website created by the law firm must clearly and conspicuously include the actual name of the law firm. Second, the law firm must in no way attempt to engage in the practice of law using the domain name…. For example, if Able and Baker uses the domain name www.realestatelaw.com, the firm may not advertise that people buying or selling homes should “contact www.realestatelaw.com” unless the firm also clearly and conspicuously includes the name of the law firm in the advertisement. Third, the domain name must not imply an ability to obtain results in a matter. For example, a personal injury firm could not use the domain name www.win-your-case. com or www.settle-for-more.com because such names imply that the law firm can obtain favorable results in every matter regardless of the particular facts and circumstances.
Fourth, the domain name must not otherwise violate a rule. If a domain name meets the three criteria listed here but violates another rule, then the domain name is improper under this rule as well. For example, if Able and Baker are each solo practitioners who are not partners, they may not jointly establish a website with the domain name www.ableandbaker.com because the lawyers would be holding themselves out as having a partnership when they are in fact not partners.
Further, Rule 7.5(f) provides:
A lawyer or law firm may utilize a telephone number that contains a domain name, nickname, moniker or motto that does not violate these rules
Comments  and  to this section read:
 Many lawyers and law firms use telephone numbers that spell words, because such telephone numbers are generally easier to remember than strings of numbers. as with domain names, lawyers and law firms may always properly use their own names, initials, or combinations of names, initials, numbers, and legal words as telephone numbers. For example, the law firm of red & Blue may properly use phone numbers such as RED-BLUE, 4-REDLAW, or RB-LEGAL.
 Some lawyers and firms may…wish to use telephone numbers that contain a domain name, nickname, moniker, or motto. A lawyer or law firm may use such telephone numbers as long as they do not violate any rules, including those governing domain names. For example, a personal injury law firm may use the numbers 1-800-ACCIDENT, 1-800-HURT-BAD, or 1-800-INJURYLAW, but may not use the numbers 1-800-WINNERS, 1-800-2WIN-BIG, or 1-800-GET-CASH. (Phone numbers with more letters than the number of digits in a phone number are acceptable as long as the words do not violate a rule.) See Rule 7.1, Comment . [Permitted without factual support: Hard-Working, Dedicated, Compassionate. Not permitted without factual support: Comparatives such as Best, Most Experienced, Hardest Working; or claims of future results: Big $$$, More Money, or We Win Big.]
After all this, we are still left with several questions: What, really, constitutes a trade name? When is a trade name not a trade name but an acceptable domain name? When and how can a lawyer or law firm use a trade name? If we assume that a firm’s trade name meets the standards for a domain name and a telephone number, is not deceptive or misleading, and is not used to promote the practice of law, may the law firm continue to use it? Suppose a firm proposes to use the domain name “justice.com” and the phone number 1-800-JUSTICE, or the domain name “quality.com” and the phone number 1-800-QuaLITy, or the domain name counsel.com and the phone number 1-800-COUNSEL, or the domain name integrity.com and the phone number 1-800-INTEGRITY. Where is the line that separates the good from the bad?
The ABA’s Model Rule
The ABA’s approach to trade and domain names differs markedly from the New York approach. First of all, it treats all firm names as “communications about the lawyer or the lawyer’s services.” Secondly, it condemns any communication as “false or misleading” if it “contains a material misrepresentation of fact or law, or omits a fact necessary to make the statement as a whole not materially misleading.” MR 7.1. Then, it confirms that firm names constitute “communications” by incorporating MR7.1 into MR 7.5, the Rule governing Firm names and Letterheads. Rule 7.5 says:
(a) A lawyer shall not use a firm name, letterhead or other professional designation that violates Rule 7.1. A trade name may be used by a lawyer in private practice if it does not imply a connection with a government agency or with a public or charitable legal services organization and is not otherwise in violation of Rule 7.1.
Can we say, then, that almost anything goes under the model rules so long as it is neither “false” nor “misleading”? Can we say that any domain name may be used as a trade name? Except for identifying four circumstances in which use of a name may be misleading, Model Rule 7.5 would appear to accept any name — domain name, trade name, or law firm name — so long as it is not misleading. The ABA’s prohibitions against use are very specific; they reject names which:
1. Imply a connection with a government agency or with a public or charitable legal services organization;
2. List lawyers in multi-state offices without indicating the jurisdictional limitations on those lawyers not licensed to practice in the state in which an office is located;
3. Belong to a lawyer holding public office during any substantial period in which the lawyer is not actively and regularly practicing with the firm; and
4. Contain the names of lawyers who are not in fact practicing as partners in the firm or other organization.
Comment  to MR 7.5 confirms that a lawyer or law firm may use — and practice under — a trade name such as the “ABC Legal Clinic,” or “a distinctive website address or comparable professional designation.” The Comment affirms that such names may be used in the practice of law:
Although the United States Supreme Court has held that legislation may prohibit the use of trade names in professional practice, use of such names in law practice is acceptable so long as it is not misleading.
The Comment recognizes that use in a firm name of the name or names of deceased partners may create confusion or even misconceptions. On the other hand, it recognizes that many long-established firms continue to practice under the names of former partners long-deceased. To protect these firms, Comment  provides:
A firm may be designated…by the names of deceased members where there has been a continuing succession in the firm’s identity…
Does a law firm which does business under a name made up entirely of deceased partners qualify as a firm with “a continuing succession in the firm’s identity?” Many of our oldest and most venerable firms do business under the names of partners long deceased. Do these names qualify as trade names?
And what about a firm that continues in its name the names of one or several deceased partners along with the names of several living partners? At what point does a firm name become a trade name?
The ABA Comment has this to say:
It may be observed that any firm name including the name of a deceased partner is, strictly speaking, a trade name. The use of such names to designate law firms has proven a useful means of identification. However, it is misleading to use the name of a lawyer not associated with the firm or a predecessor of the firm, or the name of a nonlawyer.
Where does this potentially confusing language leave us?
Is the ABA correct in describing all law firm names as trade names? How, then, can we reconcile the ABA’s position with the prohibition against the use of trade names in New York’s Rule 7.5(b)? Is the use in a firm name of the name of a deceased partner inherently “misleading”? Is it misleading if the firm’s letterhead does not disclose that he is deceased, or the date of his death?
The most essential question: Why is the New York approach to trade names and firm names so different from the ABA approach? Why, especially at least in this one instance, did we insist on going our own way?
Lazar Emanuel is the Publisher of NYPRR.
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