Use of Departed Lawyer’s Surname in Firm Name
Opinion rules that a law firm may not continue to use a former member's surname in the law firm name if the member continues the practice of law with another firm.
Attorney John Doe is the sole shareholder of a professional corporation (PC) engaged in the practice of law. The PC goes by the name of The John Doe Law Firm. Attorney Doe has invested millions of dollars in the PC's marketing materials that contain his surname and likeness. He also uses trademarked slogans that incorporate his first name and/or his surname. Attorney Doe believes that, through his marketing efforts, his name and face have become synonymous with the "face" or "brand" of the PC.
Attorney Doe would like to have other lawyers join the PC as shareholders. Attorney Doe, however, wants to maximize the investment he has already made in the PC. Attorney Doe would like to grant to the PC the right to use his name and likeness under the following terms:
The PC will purchase from Attorney Doe the right to use his name as a trade name of the PC, and to use his name and likeness in advertising and marketing materials for the private practice of law. The PC may not sell the name or likeness or use the name or likeness in the marketing or advertising of any other service or product. The PC may use the name during Attorney Doe's life and following his death.
May Attorney Doe grant to the PC the right to use Attorney Doe's name under these terms?
Yes, so long as the agreement complies with Rule 7.5. While the Rules of Professional Conduct do not specifically limit the use of the lawyer's name by a firm in which he is a member, Rule 7.5 does restrict the circumstances under which a surname can continue to be used when the lawyer ceases to practice with the firm. "A firm may be designated by the names of all or some of its members, by the names of deceased or retired members where there has been a continuing succession in the firm's identity, or by a trade name85." Rule 7.5, cmt. .1
Rule 7.5 permits a law firm to continue to use a lawyer's surname if he retires from the practice of law or after his death, so long as the lawyer was a member of the firm immediately preceding his retirement or death. Subsequent communications listing the former member's name on law firm letterhead, however, should clarify that the former member is deceased or retired so as not to mislead the public. If Attorney Doe leaves the PC and begins engaging in the private practice of law, the PC could not continue to use Attorney Doe's surname because it would be misleading pursuant to Rule 7.1. See Rule 7.5(a), cmt. . Any agreement between Attorney Doe and the PC must reflect this restriction and may not violate Rule 5.6(a) of the Rules of Professional Conduct.
May Attorney Doe grant to the PC the right to use Attorney Doe's likeness under these terms?
The agreement may grant to the PC the right to use Attorney Doe's likeness while he practices with the PC but not if he ceases to practice with the PC. As long as Attorney Doe practices with the PC, there is probably no danger that the use of his likeness will mislead, deceive, or confuse the public. However, if Attorney Doe ceases to practice with PC (whether by retirement, departure, or death), the PC's use of his likeness will be inherently misleading and confusing to the public, in violation of Rule 7.1, because of the specific fact that Attorney Doe, while the sole shareholder in the firm, invested substantial resources to make his likeness synonymous with the PC. Therefore, after Attorney Doe's departure from the PC, a disclaimer on the PC's advertisements and marketing communications would be insufficient to overcome the public perception that Attorney Doe's services are still available through the PC. This opinion does not prohibit generally the accurate and nondeceptive use of the likeness of a retired or deceased member of a firm in marketing or advertising, as long as the likeness includes a clear statement of the attorney's status3 so as not to imply ongoing involvement with the firm.
Assume that the agreement between the PC and Attorney Doe further contemplates that Attorney Doe is free to leave the firm at any time and practice elsewhere in the state, but restricts his ability to use his own name or likeness in any advertising materials promoting the new venture. The agreement states that once Attorney Doe leaves the PC, he is free to practice elsewhere using any proper firm name (not including his own surname) or State Bar approved trade name for advertising purposes. He may only use his surname, however, in listings on firm letterhead, telephone directories, and business cards.
Under this proposed agreement, can the PC continue to use Attorney Doe's surname as the name of the PC after Attorney Doe leaves the PC to engage in the private practice of law?
No. See opinion #1 above.
- As a point of clarification, Attorney Doe's surname is not a trade name, and the licensing of the name to a PC in which Attorney Doe is a member does not change the surname's classification. The terms "Law Firm" or "Law Office" are technically trade names, but because these are useful means of identifying law firms, lawyers may use either designation without registering the trade name.
- Opinion #2 differs from Opinion #1 because of the potential misleading nature of a communication using Attorney Doe's likeness after Attorney Doe ceases to practice with the PC.
- For example, the use of the likeness of a retired partner on a firm's website should clarify his status as a "retired partner" or "of counsel."