York State Bar Association
on Professional Ethics
Opinion 977 (8/1/13)
publicity in administrative proceeding; distributing via social media a
petition and survey in support of client’s pending case
lawyer who represents a client in an administrative proceeding may distribute
an online petition and survey in support of the client’s case unless there is
reason to believe that distributing those statements would have a substantial
likelihood of materially prejudicing the adjudication.
inquiring lawyer is defending a client in a cancellation proceeding before the
U.S. Trademark Trial and Appeal Board (“TTAB”).
In the pending TTAB proceeding, a third-party petitioner has alleged
that the client’s registered mark is confusingly similar to the petitioner’s
registered mark and is seeking cancellation of the client’s registration.
client has created an online petition to garner opposition to
cancellation. The petition presents the
proceeding as a contest between a family business and a big corporation, and
asks readers to sign in order to demonstrate that there is no likelihood of
confusion between the petitioner’s mark and the client’s mark. The lawyer asks if there is any ethical
prohibition of distributing a link to the client’s online petition via social
media (specifically, using Facebook and Twitter) if the lawyer will merely tell
readers it is there but not ask them to sign it.
addition, the lawyer asks if it is ethically permissible to post online a
survey asking questions along the lines of the following: “Do you think Mark X is confusingly similar
to Mark Y? Click here to express your
lawyer does not indicate what he intends to do with the petition or the survey
results (e.g., whether he intends to try to present the results as
evidence in the proceeding).
a client has set up an online petition in support of his case in a trademark
cancellation proceeding, may the client’s lawyer distribute a link to the
petition via social media?
a lawyer in a trademark cancellation proceeding post an online survey asking
readers whether they find two trademarks confusingly similar?
3.6(a) of New York’s Rules of Professional Conduct (the “Rules”) provides that
a lawyer who is participating (or has participated) in a criminal or civil
matter “shall not make an extrajudicial statement that the lawyer knows or
reasonably should know will be disseminated by means of public communication
and will have a substantial likelihood of materially prejudicing an
adjudicative proceeding in the matter.”
This provision attempts to balance the public value of informed
commentary with a party’s right to a fair proceeding. We note that such provisions have been the
subject of constitutional challenge, but
we are limited to interpreting the rules of legal ethics and do not undertake
to assess their validity.
prohibition in Rule 3.6(a) can be divided into a few components: (i) it applies to a lawyer who is
participating in “a criminal or civil matter” in which there is or will be an
adjudicative proceeding; (ii) it applies when the lawyer “make[s] an extrajudicial
statement that the lawyer knows or reasonably should know will be disseminated
by means of public communication”; and (iii) it applies to statements “that the
lawyer knows or reasonably should know … will have a substantial likelihood of
materially prejudicing an adjudicative proceeding in the matter.” We consider how each of these components
applies to the communications proposed in the inquiry.
9. The first component is clearly
satisfied. “Matter” is defined by Rule
1.0(l) to include “any … administrative proceeding.” A trademark cancellation proceeding is an
administrative and adjudicative proceeding. The inquiring lawyer is therefore subject to
to the second component we start by considering whether distributing a link to the
petition would constitute making extrajudicial statements. The petition itself includes extrajudicial
statements, as it is a document that is being distributed online and it
characterizes the nature and merits of the dispute in particular ways. The fact that it was the client who created
and posted the petition does not make the rule inapplicable. The lawyer, by distributing the link, is
effectively disseminating the petition – and thus “mak[ing]” the statements it
contains – over the internet as a means of public communication.
the proposed survey meets this second component is less clear and may depend on
a more detailed description of its contents. It may not make any “statement”
subject to the Rule if it is limited to posing questions in neutral terms and
giving readers the opportunity to express opinions. But if it includes leading questions, they
could constitute implied statements subject to the Rule.
final and central element of the prohibition is that the lawyer knows or
reasonably should know that the statement “will have a substantial likelihood
of materially prejudicing an adjudicative proceeding in the matter.”
rule provides some guidance on this final element by identifying certain kinds
of statements that are presumptively permissible and other kinds that are
presumptively impermissible. See
Rule 3.6(b) (1) – (6) (listing kinds of statements “ordinarily” deemed likely
to be prejudicial; Rule 3.6(c) (1) – (7) (listing kinds of information a lawyer
may state, without elaboration, if the statement does not violate the basic
prohibition in Rule 3.6(a)). As to the
communications in question, however, the rule’s presumptions do not apply. Neither the petition nor the survey would be
within any of the presumptively permissible categories of information listed in
Rule 3.6(c). Nor would either of those
communications be presumptively prohibited, because Rule 3.6(b) applies only to
certain statements that refer “to a civil matter triable to a jury, a criminal
matter or any other proceeding that could result in incarceration.” A trademark cancellation proceeding is not
triable to a jury. For this inquiry, therefore, the rule’s lists
of categories give no presumptive answer to the question of likely prejudice.
the presumptions described above do not exhaust the content of Rule 3.6. Whether or not one of the presumptions
applies, the governing standard remains the one found in Rule 3.6(a). We turn to some factors that bear on whether
the communications would have a substantial likelihood of materially
prejudicing the cancellation proceeding.
factor is the nature of the adjudicative proceeding. Its relevance may be inferred from Rule
3.6(b), because as noted above, the presumptive prohibitions do not apply to civil
matters not triable to a jury. Here is a
more direct statement of this factor’s importance:
trials will be most sensitive to extrajudicial speech. Civil trials may be less
sensitive. Non-jury hearings and arbitration proceedings may be even less
affected. The Rule will still place limitations on prejudicial comments in
these cases, but the likelihood of prejudice may be different depending on the
type of proceeding.
Rule 3.6, Cmt. . Indeed, it has been said that the concern
about improperly influencing a factfinder’s decisions
is largely irrelevant in matters to be decided by
judges. Judicial officers are expected
to be immune from the influences of inadmissible evidence and similar sources of information and from the
potentially distorting effects of inflamed public opinion. Thus, media comments
by a lawyer outside a nonjury proceeding will pose a significant and direct
threat to the administration of justice … only in extreme situations.
factor is the content of the extrajudicial statements. For example, statements on peripheral issues
may carry little risk of prejudice.
Statements may be more likely to be prejudicial if they address crucial
issues committed to the finder of fact or are expressed in an inflammatory way.
likelihood of prejudice will depend in part on the likelihood that the
statements will come to the attention of the finder of fact. Thus the method of disseminating
extrajudicial statements may be a relevant factor, and another related one is
the statements’ timing. Other
relevant factors may include the purpose with which the statements were made and
whether the information in the statements is otherwise available from public
sources. Having listed some of the factors relevant to
likely prejudice (but without any claim that the list is comprehensive), we
consider their application to the inquiry.
nonjury nature of the TTAB proceeding is a consideration counting strongly
against likely prejudice. On the other
hand, while the inquiry does not fully describe the proposed communications, it
appears at least that the statements in the petition, and implied ones in the
survey if any, would directly address the merits of the dispute. The inquiry does not reveal the amount of
time that would be expected to pass from the making of the statements until the
factor that may assume particular significance on these facts is motive. In this connection it is useful to
distinguish between the mere making of the statements and their ultimate intended
uses. The inquiry does not specify those
is possible that the lawyer’s intent is to use the survey results as evidence
that the two marks are not confusingly similar.
If so, then the question arises whether such survey evidence would be
permissible in a cancellation proceeding.
If conducting the survey were an appropriate means of seeking competent
evidence, then it would not have a substantial likelihood of “prejudicing” the
proceeding. On the other hand, if the
survey results would not constitute proper evidence, their dissemination could
give rise to additional concerns. Cf.
Rule 3.6(b)(5) (in jury or criminal context, statement ordinarily likely to be
prejudicial if it relates to information the lawyer knows or reasonably should
know is “likely to be inadmissible as evidence in a trial and would, if
disclosed, create a substantial risk of prejudicing an impartial trial”). Similar questions would apply to possible
intended use of the petition in evidence.
the petition was created by the client and there is no indication of intent to
use is as evidence. In the absence of
some other explanation, the inquiring lawyer should consider whether the
client’s goal is to disseminate the petition so broadly as to influence the
finders of fact other than through the tribunal’s processes. Of course in that instance it would be
improper for the lawyer to participate in its dissemination.
have mentioned various relevant facts not contained in the inquiry, and their
absence limits our ability to balance the above factors. Even without those facts, however, we can
identify an outline of the analysis. The
dominant factor in this case may be the nature of the adjudicative
proceeding. The fact that the
adjudication will be by an administrative tribunal like the TTAB counts heavily
in favor of the inquiring lawyer being permitted to disseminate the proposed
communications. There could be a
different answer if the inquiring lawyer were aware of additional facts
indicating that the client seeks to use the petition to exert improper
influence, or that prejudice is otherwise likely. But in the absence of such additional facts,
it seems unlikely that distribution of the petition or the survey would materially
prejudice an adjudicative proceeding to be conducted by a panel of specialized
have addressed only such constraints on the proposed communications as might be
imposed by the rules of legal ethics.
There could also be legal constraints, but issues of law are beyond the
scope of this Committee. The inquiring
lawyer may be well advised to review TTAB rules and other applicable laws and
rules before distributing the petition or survey.
lawyer representing a client in a trademark cancellation proceeding may use
social media to distribute a link to an online petition in support of the
client’s case, and may post an online survey, where there is no substantial
likelihood that the petition or survey would materially prejudice the upcoming
administrative adjudication. If the
lawyer knew that the client were trying to use the petition to pressure the
trademark judges, or the lawyer had other information indicating a likelihood
of materially prejudicing the proceeding, then the lawyer should not
participate in disseminating those statements.
But in the absence of such information, such statements may fairly be
considered unlikely to prejudice a proceeding conducted by a panel of
 See Rule 3.6, Cmt.  (discussing “balance between protecting the
right to a fair trial and safeguarding the right of free expression,” and
noting “vital social interests served by the free dissemination of information
about events having legal consequences and about legal proceedings
 See, e.g., Gentile v. State Bar of Nevada, 501 U.S.
1075 (1991) (holding
in criminal case that “‘substantial likelihood of material prejudice’
standard … satisfies the First Amendment” as “it is designed to
protect the integrity and fairness of a State’s judicial system, and it imposes
only narrow and necessary limitations on lawyers’ speech”); Hirschkop v. Snead, 594 F.2d 356, 373-74
(4th Cir. 1979) (concluding that a rule limiting lawyers’ speech on matters
pending before administrative tribunals, more restrictive than Rule 3.6, was
unconstitutional because overbroad, and noting lack of record evidence
“that any administrative decision has been set aside because the comments of
lawyers impaired the fairness of the proceedings”).
 See Trademark Trial and Appeal Board Manual of Procedure §102.02
(3d ed., rev. 2, June 2013) (describing proceedings within jurisdiction of
TTAB, including cancellation proceedings); id.
§102.03 (cancellation proceedings include pleadings,
motions and trial). This TTAB
Manual is available at
 TTAB Manual, note 2 supra, §102.03 (decisions on merits of
cases are rendered by panels of TTAB judges).
 Restatement (Third) of The Law Governing Lawyers §109, cmt. b
(2000). But cf., e.g., United States v. Khan, 538 F.Supp.2d.
929, 932-35 (S.D.N.Y. 2007) (interpreting analogous local rule against
statements likely to “prejudice the due administration of justice” to prohibit
not only lawyer’s statements likely to taint jury pool but also those likely to
threaten safety of witnesses).
 See Gentile v. State Bar of
Nevada, 501 U.S. 1030, 1044 (1991) (citing case law and ABA source for
proposition that timing of a statement is significant
factor in the assessment of the possible threatened prejudice, and giving as
problematic example a statement “which reaches the attention of the
venire on the eve of voir dire”);
Restatement (Third) of The Law Governing Lawyers
§109, cmt. c (2000) (“statement made long before a
jury is to be selected presents less risk than the same statement made in the
heat of intense media publicity about an imminent or ongoing proceeding”).
 See Gentile v. State Bar of
Nevada, 501 U.S. at 1064-65, 1080 (disciplinary authority considered
purpose of statements in assessing likelihood of prejudice); id. at 1079 (minority finding it
persuasive that lawyer admitted having called press conference to influence
venire, because it was “difficult to believe that he
went to such trouble, and took such a risk, if there was no substantial
likelihood that he would succeed”).
 See id. at 1046 (minority
portion of opinion noting that “[m]uch of the
information provided by petitioner had been published in one form or another,
obviating any potential for prejudice”); Restatement (Third) of The Law Governing Lawyers §109, cmt. c
(2000) (if same information “is available to the
media from other sources, the lawyer’s out-of-court statement alone ordinarily
will not cause prejudice,” but this factor is not “controlling” and “the
information must be both available and likely in the circumstances to be
reported by the media”); In re Sullivan,
185 A.D.2d 440, 445 (3d Dept. 1992) (dismissing disciplinary charges against
criminal defense lawyer whose “television interview was a mere
drop in the ocean of publicity” surrounding the trial, when the matters
discussed “had been otherwise publicized prior to the interview”).