Reflections on Nearly 30 Years of Practicing Law

By John L. Watkins

It hardly seems possible, but, God willing, by the middle of this year I will have practiced law for 30 years. Given this milestone, I offer a few thoughts on how the profession has changed since 1982.

In many ways, the practice of law and the legal system have not changed very much. The law is, in many ways, a conservative and evolutionary profession. The legal system still resolves disputes in the same adversarial manner. Lawyers still represent their clients as advocates and file motions, write briefs, and, if necessary, try the case.

The thought process lawyers use to analyze legal issues has not changed. The substance of writing legal briefs and memoranda has not changed. I pass on the same tips and techniques to younger lawyers that partners at Hansell & Post, my first firm, passed on to me almost thirty years ago because they still work. 

Last year, a former colleague from those days cleaned out some old files and found a copy of a legal memorandum I had written as a first year lawyer. Other than the fact it was written on legal-sized paper, which is hardly used anymore, it was exactly the type of treatment a young lawyer might write for me today.

That said, there have been many changes in the profession. I will reflect on those changes in this post. Although the substance of analyzing legal issues has not changed, and although the law itself has not changed that much, the process of practicing law has changed considerably. 

Although we can debate whether the changes are good or bad, lawyers will need to continue to adapt or risk becoming, for lack of a better word, dinosaurs. As someone who hopes to keep practicing for years to come, this is a good "reminder to self," that will hopefully also be useful to others.

Technology Has Changed Everything About How We Practice

The most significant changes have been driven by technology. When I began practicing, lawyers did not have computers in their offices, although our legal assistants had computers at their desks. Most composing was done either by dictation or even by long hand on a legal pad. Legal research was done primarily in a law library by using digests and annotations. Although there were legal research databases, they required dedicated terminals and were more of a secondary means of research.

Now all of that has changed. Just about every lawyer I know composes on a computer. Law firms have largely phased out their law libraries. Westlaw and Lexis/Nexis are primary research tools, and can be accessed on any computer with an Internet connection. Although the courts have been agonizingly slow in adopting technology, almost all filing in the federal court system is done electronically, and the state courts are not far behind. 

Technology has also transformed in many respects the discovery process, which is the process for exchanging information in lawsuits. Emails and other electronically stored information are now a routine part of discovery. E-discovery, however, remains somewhat controversial because it often adds a substantial layer of cost to an already expensive process.

The way we communicate as lawyers has also changed dramatically. In 1982, we did not have email (I'm not sure that Al Gore had even invented the Internet yet!). Faxes came into widespread use a few years later. By the 1990s, email had become ubiquitous. Today, with iPhones, Droids, and Blackberries, we are always instantly connected. Sending a document simultaneously to Europe and Asia can be done with the touch of a button. That certainly was not true in 1982. Faxes, once seen as a wonder of instantaneous communication, are now largely viewed as an obsolete technology.

The technology changes continue. Social networking now seems like a part of everyday life, but it is a very recent phenomenon, having truly taken off only in the last five years. From a lawyer's perspective, blogging, LinkedIn, Facebook and other sites not only provide new means to communicate with clients, potential clients, and other lawyers, but also provide new opportunities for investigation and discovery.

Although technology has dramatically increased our capabilities in many respects, it has not been without its negative consequences. First, although email and instant communication has dramatically increased the speed and quantity of communication, it has not improved the quality of communication. Email is not a good tool for collaboration, nor is it a good tool for building relationships. One of the most interesting observations in Walter Isaacson's biography of Steve Jobs is that Jobs was a fanatic about meetings. Jobs believed in the power of face to face communications. 

The fact that one of the true geniuses and icons of technology believed in the power of meetings and human interaction should serve as a cautionary tale for all of us, but particularly for those of us in the law practice. Human interaction is important for solving legal problems and is also important for building the personal relationships that allow us to succeed. This is why I am always telling younger lawyers to pick up the phone instead of sending an email. Sending an email does not mean that you have communicated with someone.

Another negative effect of technology is that it has deprived younger lawyers of the opportunity to get time in court. Clients often are surprised to learn that many judges do not hear oral argument on motions, but just rule on the papers. As a result, there are many litigation lawyers who have practiced at prestigious firms for five years or more who have literally never had to stand up in court and make an argument. This is of course not good for the next generation of lawyers, but I think it also tends to isolate the bench from the bar, which is probably not a good thing. Ironically, I'm not sure that considering motions only on paper is very efficient. Having a hearing tends to force a judge to make a decision instead of postponing it to another day. If it were up to me, we would re-think this whole issue.

A final arguably negative effect of technology is to shrink the need for support staff, which in turn leads to fewer well-paying white collar jobs. When I started practicing, it was common for a partner and associate to share an assistant (and sharing was a fairly new development then). Today, ratios of at least three to one or higher are common. The reason is that most lawyers do things today (such as type their own letters and briefs) that assistants did in the "old days." 

In addition, and although I do not have any statistics on this, there seem to be many fewer paralegals today than in the past. The use of paralegals seemed to crest in the late 1980s and early 1990s. Much of the work that they formerly did (such as organizing and managing document productions) is now outsourced to vendors. Whether this is good or bad is debatable, but I have not encouraged anyone to go to paralegal school for over a decade. The long-term opportunities just do not seem to be there.

Alternative Dispute Resolution Has Changed Everything

Thirty years ago, litigators resolved cases either by settling cases (which happened most of the time) or trying them. Mediation was virtually unknown. That started to change around 1990. When mediation came into vogue, I originally thought it was a complete waste of time, and just another layer added to an already inefficient process. And, frankly, when I was 30, I viewed mediation as being pushed by retired judges and older lawyers as a way to supplement their retirement.

That view quickly changed after I saw good mediators resolve cases that previously seemed incapable of settlement. Mediation is now a staple and is used in most cases and often mandated by courts. It has become an important and necessary tool in resolving civil disputes. Having started out as a skeptic, I am now an unabashed fan, and have even become a registered mediator myself. (For more thoughts on mediation, you can visit my mediation website).

Arbitration has also become more prevalent. Arbitration is a particularly good choice for international companies that are unfamiliar with the jury system or simply do not trust it. One phenomenon that has accompanied the rise in the use of arbitration is that, at least in the U.S., it has come to resemble a civil court proceeding, with full blown discovery, depositions, and pre-hearing procedures. This is something we, as a profession, need to review critically.

I am proud to be part of a recent effort to make Atlanta a venue for international arbitration. With the world's busiest airport and easy connections to all parts of the world, a sophisticated bar, and an arbitration-friendly environment, Atlanta is an excellent choice. For more about the Atlanta International Arbitration Society and this effort, click here.

Specialization Has Become Rampant

When I began practicing, being a litigator was enough of a specialty. We were the guys who handled lawsuits, wrote briefs, tried cases, handled appeals, and even on occasion handled an arbitration. The subject matter of the dispute did not matter so much. We handled injury cases, contract cases, securities cases, real estate cases, and trust and estate cases. 

We assumed that if we were handling a case involving a type of business with which we were unfamiliar, we simply would learn about the business in the process of working the case. That was, frankly, part of what made practicing law fun and interesting.

I thank my lucky stars that I came up in this environment, and also in a firm that would let associates take as much on as they were willing to handle. In my first four years of practicing, I had taken hundreds of depositions, argued many motions, and had participated in trying several cases. In the process, I learned about banking, accounting, railroads, the natural gas industry, and many other businesses. I also learned about many areas of law, both procedurally and substantively, including class actions, arbitration, product liability, contract law, real estate law, trade secret law, and business torts.

Over the years, particularly at larger firms, we have become more and more specialized. Today, most of my litigation practice focuses on insurance coverage, although I still handle trade secret, banking and other matters. The remainder of my practice focuses on representing international companies in doing business in the U.S.

I recognize that clients do not want to pay for re-inventing the wheel, and, in that respect, specialization is probably good. On the other hand, I think a broad base of experience in many areas of the law is also a good thing, particularly for clients looking for a lawyer to serve as their general counsel or regular outside counsel. I do not believe you can get that experience base if you are a pure specialist, and fear that, after the next 10 to 15 years, finding lawyers with a broad experience base will become very difficult.

The Business Aspects of Law Are Very Different

When I started practicing, we never seemed to worry about where the work was coming from or that there would not be enough work. Litigators, in particular, were not seen as "rainmakers," nor were they expected to develop business. Maybe my perspective is skewed by the fact that I was then a brand new associate, or perhaps it is due to the fact that I was working for the largest law firm at the time in Atlanta, a law firm with many long-established client relationships. On the other hand, when I left that firm in 1986 to join another firm, I had the opportunity to bring a couple of clients with me. I was discouraged from doing so and thus did not follow up on it. In retrospect, this was a big mistake, both on the part of the second firm and myself.

Today, relationships are everything, both in terms of keeping existing clients happy and in finding new clients. Lawyers frequently move from firm to firm, and clients frequently move their work from firm to firm or lawyer to lawyer. More clients spread their work among a number of firms and lawyers. The old days of a bank or other large client being irrevocably tied to one law firm seem, for the most part, to be long gone.

Clients are expecting and demanding good service, and, for the most part, I think they are receiving it. Lawyers are more likely to agree to alternative billing arrangements that provide the firm and the client with the possibility of a "win/win" resolution. For example, we are willing to quote defined corporate work on a flat fee basis, and, for certain cases, will consider capped fees with a partial contingency, or other fee arrangements. That said, the traditional billable hour engagement remains most common.

Some developments that have, in my view, been negative include the common use of third-party bill review services. These services, in my opinion, place an adversarial third party (and typically an unaccountable third party) in between the lawyer and the client. Do not misunderstand me: A client has a perfect right to review a bill closely, to question a bill, and, if appropriate, to request an adjustment. However, I want that discussion to be between me and the client for whom the services were performed, not some faceless intermediary. Nevertheless, I am afraid clients will continue to use these services.

Conclusion

It has been an interesting 30 years (well, almost 30 years). The analytical skills that made a good lawyer in 1982 are the same today. The law itself has not changed that much. Sure, there have been major cases and developments, but, by and large, the substance is not that much different.

The way we practice law has changed dramatically. If someone had told me in 1982 about the tools widely available now, I'm not sure I would have believed it. 

The law remains a demanding and interesting profession. I hope to keep it up for many years to come.  

Benjamin Franklin's Words of Wisdom For Closely Held Businesses

By John L. Watkins

Most of my practice currently consists of representing businesses in disputes with their insurance companies and helping international companies do business in the U.S. However, I started my career as a general commercial litigator, handling everything from banking and securities litigation to product liability cases. Although my current firm represents many larger companies, we also represent many middle market companies and family businesses. One staple in this area is what I loosely call the "corporate divorce." 

Corporate divorces happen when business partners (I use the term in the general and not purely legal sense) no longer get along. Perhaps there is a difference in where to take the business. Perhaps one partner has worked hard and built the business when the other has been content to sit back and share in the profits. Perhaps animosities have built over personal issues that really have little to do with the business. 

Often, these animosities divide life long friends and family members. The resulting disputes can be every bit as acrimonious and destructive as a marital divorce. The primary reason that these disputes develop is because the partners never contemplated that their interests would diverge and consequently never planned for it.

One of the greatest citizens that America ever produced was Benjamin Franklin. Before Franklin achieved success as a civic leader, scientist, inventor and diplomat, he was a successful businessman, a printer by trade. Franklin achieved success by hard work and through developing successful alliances and partnerships. Franklin set up a number of his apprentices in their own printing businesses, seemingly without disputes or disagreements. Here is Franklin's advice from his famous autobiography:

"Partnerships often finish in quarrels; but I was happy in this, that mine were all carried on and ended  amicably owing, I think, a good deal to the precaution of having very explicitly settled, in our articles, every thing to be done by or expected from each partner, so that there was nothing to dispute, which precaution I would therefore recommend to all who enter into partnerships; for, whatever esteem partners may have for, and confidence in each other at the time of the contract, little jealousies and disgusts may arise, with ideas of inequality in the care and burden of the business, etc., which are attended often with breach of friendship and of the connection, perhaps with lawsuits and other disagreeable consequences." (Franklin's Autobiography is in the public domain and is available free in Amazon.com's Kindle store).

Franklin's clear and concise advice rings as true today as it did when it was written over two hundred years ago. While technology will change and new businesses will be started and others will become obsolete, human nature is still the same. If you are in a closely held business, whether it be a start-up, small, medium, or large, Franklin's words are some of the best free advice you will ever receive.

Here are a few other thoughts on how business partners can avoid, as Franklin so aptly put it, "lawsuits and other disagreeable consequences":

1. 50/50 is almost never a good idea. Many friends and family members envision a "50/50 partnership" as the ideal business arrangement. Although it may seem like a good idea when the business is starting and goodwill among the participants abounds, 50/50 partnerships seldom end well. When disagreements occur, which they will, 50/50 partnerships result in automatic deadlock, with no way to move forward. Note that, in my experience, there is a direct positive correlation between the success of this business the the likelihood of a dispute. If the participants are unable to agree on a resolution, the only legal solution is often the appointment of a receiver to take control and run the business and sell it or dispose of its assets. Not a happy result.

2. You need an exit strategy from the get go. If you are involved in any venture with more than one investor, you should have an exit strategy in your operating agreement, shareholder's agreement, or partnership agreement from the very beginning. There are numerous options, but typically such provisions provide for one party buying the other out based on an agreed metric. 

3. If you did not document your business arrangement properly at the beginning, do it now. If, as is so often the case, you started a business venture without documenting the relationship among the participants, and there is still good will among the participants, do it now. Just because things are going well now does not mean that harmony will last forever. View the present cordial circumstances as a second chance to do when you should have done when you started the business.

4. Bring in new "partners" carefully. Often, businesses will want to bring in an individual as a "partner," perhaps as a reward for loyal service or perhaps to provide an incentive to a new participant viewed as valuable to the business. Although the concept of an "equity kicker" may seem like a good idea, keep in mind that it creates an additional level of risk and entanglement. Consider other forms of rewards in the form of structured bonuses, etc. If you do bring in a new partner, have an exit strategy if things do not work out.

5. If there is a dispute, see an experienced lawyer sooner rather than later. If things seem to be going south, see an experienced lawyer sooner rather than later. The sooner that a dispute can be resolved the better. Business people almost always, in my experience, underestimate the toll in time, distraction, and human energy that a dispute will impose on a closely held business. Be careful in selecting a lawyer. If all the lawyer can talk about is the fight and taking it to the other side, that may appeal to your raw emotions, but it rarely makes for a quick or relatively painless resolution. Be open to the possibility of mediation, as it is often the best (and least public) way to resolve disputes.

A Great New Year's Resolution for Your Business: A Legal Check-Up

By John L. Watkins

One of the best New Year’s Resolutions any business can make is to have a legal checkup. The idea of a legal checkup (sometimes called a legal audit) is to identify potential legal risks and issues and to take proactive measures to resolve or minimize them before they become expensive problems. The nearly universal rule is that it costs less to resolve a legal issue early on - such as through a proper contract prepared with professional assistance - rather than trying to address the issue later, such as through litigation.

The best legal checkups are customized for each business. The legal issues faced by a start-up will be different than those of an established larger business. The legal risks of a trucking company can be quite different from those of a software company.

If a business has in-house counsel, then in-house counsel should coordinate the review, with the assistance of outside counsel as necessary. If a business does not have in-house counsel, it should have a continuing relationship with an outside business attorney, who can handle the work.

Each legal review should be customized, but here are some of the issues to be considered. The items are listed starting with issues that are more frequently faced by small companies and then proceeding to issues more frequently faced by medium-sized or larger companies.

• Has the business properly maintained its registration with the secretary of state or other authorities? Failure to maintain registration (at least in some jurisdictions) can result in dissolution, which can in turn lead to a loss of corporate liability protection.

• Does the business maintain proper corporate or company records? Are corporate minutes and resolutions, for example, maintained and up to date? Failure to maintain proper records may put the corporate liability shield at risk.

• Does the business properly maintain financial records? Are loans from shareholders or members properly documented? Are corporate financial expenditures segregated from personal expenditures? If there are multiple corporations, are separate books and records carefully kept for each company? Again, failure to maintain proper financial records may place the corporate liability shield at risk.

• Does the business have a professionally drafted set of terms and conditions under which it does business? Do the terms and conditions properly limit risks, such as by disclaiming implied warranties and limiting remedies? Have the terms been reviewed recently?

• In addition to customer terms and conditions, are supplier terms and conditions properly documented? Are subcontractor terms and conditions documented? Do suppliers and subcontractors assume an appropriate level of risk in relationship to the transactions? Do suppliers and subcontractors have sufficient financial resources and insurance to back up their obligations?

• Does the business have procedures for protecting confidential information and trade secrets? Are employees who handle the information subject to non-disclosure agreements (“NDAs”)? Do suppliers, contractors, subcontractors or customers have access to the confidential information and trade secrets, and, if so, are they also subject to NDAs? Have the NDAs been professionally prepared and recently reviewed?

• Does the business have other intellectual property in the form of patents, copyrights, and trade secrets? Is the intellectual property carefully managed and protected? Are procedures in place to make sure that deadlines are met and fees are paid?

• Does the company have in place proper security and privacy procedures for its information technology? Has the company determined if there are any special regulatory requirements for data storage, security, or privacy applicable to its industry? Does the company outsource any of its IT, such as to a cloud computing provider? If so, has the company performed proper review and due diligence of the provider’s technology and procedures? Does the contract with the cloud computing provider protect the company’s interests?

• Does the business periodically review its employment and employee benefit procedures? Do key employees have employment contracts with appropriate covenants (which may include, depending on the circumstances, covenants not to compete and non-solicitation covenants)? Have employment contracts been recently reviewed and updated?

Note: There are important changes to Georgia law. Employers in Georgia should, in particular, consult with an employment attorney regarding the changes.

• Has the company carefully assembled and reviewed its insurance coverage? Does the company really know what is covered and not covered? Have the policy limits been reviewed for adequacy? Is there a procedure in place for reviewing endorsements that insurers may add upon renewal that may limit coverage? Have issues such as environmental liability, employment liability, and cyber liability been considered and properly insured? Does the company grant “additional insured” status to customers? If so, has the potential effect on the company’s aggregate policy limits been considered?

• Does the business have procedures in place for handling and documenting potential claims? Are potential claims reported promptly to the insurance carriers? Are claims tracked? Do the carriers and defense counsel provide periodic reports?

Please note that this is not intended to be a complete list, although it should provide a reasonable starting point. If you do not have an in-house attorney, the business should engage a regular outside attorney to learn about the company’s business and serve as a trusted legal adviser. If you do not know how to go about finding an attorney, check out my book, An Insider's Guide on Hiring a Business Attorney, which provides a step-by-step guide for finding, evaluating, interviewing, engaging, and working with a business attorney.

Veterans Old and New: Let's Not Forget

In the last three weeks, I have traveled out of town to Phoenix for a mediation and to our home office in Indianapolis for my law firm's Partners meeting.

On the way back from Phoenix, I was seated next to a young man with very closely cropped hair, who appeared to be traveling with two other young men. We struck up a conversation. He and his buddies had just joined the Army and were on their way to basic training. The young man's story was interesting. A Navajo, he had grown up on the reservation  in a house that did not have running water until he was about ten years old. This would have been in the past decade.

My young acquaintance decided that he wanted to make something out of his life. He told me that he and his buddies had been hanging out and going nowhere. Some had been drinking too much. He wanted to learn skills, see the world and be successful, so he joined up. The Army was honest with him: After basic training, he would go back to a base in Arizona for a short period and would then deploy to Afghanistan.

The other fellow on our row -- a guy who looked to be a few years older than me -- joined the conversation. It turns out that he was an Air Force veteran who had served in Vietnam. He is now a military contractor, assisting the Air Force with logistics. He was returning home to Florida, but had done multiple stints in Iraq and Afghanistan as a contractor. The older fellow offered words of encouragement to our young friend.

As our young friend prepared to leave the plane in Atlanta with his buddies, I thanked him for his service and wished him well. I said a silent prayer for the success and safe return of this young man and his buddies.

Yesterday, I was sitting on another plane next to a young man in an Army uniform. Although he was a young guy, the look in his eyes suggested he had a lot of experience under his belt. Unlike my young friend from the earlier flight, he was not talkative. I asked him where he was headed. He said he was on his way back to Afghanistan, having previously done tours in Iraq and Afghanistan. I thanked him for his service. He did not appear to want to talk more, and I respected that.

Veterans Day is next Thursday. On this day -- which seems to receive so little publicity -- we should certainly remember the many sacrifices our fellow citizens have made during the history of our country to preserve freedom at home and abroad. The sacrifice is not just of lives lost or physical wounds received. It is a sacrifice of families being separated and lives and ambitions put on hold.

It should also be remembered -- as my two recent acquaintances reminded me -- that the sacrifice continues. Young men and women are still serving their country, and are still being sent into harm's way, enduring separation from their families, and putting other ambitions on hold. 

On the other hand, it is also worth remembering the considerable achievements of our men and women in uniform. Without their service, the world would be a very different place, and not for the better.

It is also worth remembering that military service has proven to be a life long honorable career for some, and a springboard to success in the civilian world for others.  My acquaintance from Phoenix volunteered because he felt that military service would allow him to "be somebody," and to lead to a better life. I wish him all the success in the world.

If you see a veteran next Thursday, or if you see a man or woman in uniform, thank them for their service. It's the least we can do.

Thinking About Cloud Computing and Cyber-Security?

By John L. Watkins

Many businesses are thinking about using cloud computing providers for all or part of their IT infrastructure. Cloud providers promise scalability, off-site IT management, availability and security. As with all new technologies, there are many legal issues.

My law firm, Barnes & Thornburg LLP, has recently established a Cloud Computing and Cyber-Security practice team that cuts across many legal disciplines. My partner, Roy Hadley, and I are the leaders of the new team.

Roy is a true information technology specialist. Roy has practiced for many years in the technology space, including serving as general counsel and chief privacy officer of technology companies. I bring the litigation, insurance coverage, and general business perspective. We have many other members on the team specializing in different disciplines, including intellectual property (which is very strong firm-wide at BT), information technology, insurance coverage and recovery, international law, tax, and general business, among others. The collective experience our colleagues bring to this initiative is pretty amazing. The firm will be launching a blog on cloud computing and cyber-security topics shortly.

Roy and I were recently asked to write a primer on the legal issues for the Georgia State Bar’s Technology Section. Click here to read the article. I hope you find it useful. Caveats: This is a general overview written from a general U.S. point of view. There are additional issues in Europe. As a general statement, Europe seems to be ahead of the U.S. in dealing with these issues.

What About Clients?

By John L. Watkins

One of my favorite legal blogs is What About Clients, written by Dan Hull and others from the Hull, McGuire firm. The key point of the blog is that the focus of what we do as lawyers should always be the client. A great reminder for all of us.

Dan is another guy with Midwestern roots and an international outlook. He "gets it." With great content written in a pithy and entertaining style, the blog is a must read.

Trade Secrets, Green Technology and Protecting What You Think You Own

By John L. Watkins

According to a press release from the FBI last month, green technology is an increasingly attractive target for "would-be information thieves looking to make a fast buck." The Economic Espionage Act is a federal law that makes trade secret theft a federal crime. The language of the Act is very similar to the Uniform Trade Secrets Act, variants of which have been adopted by most states. The state acts provide for civil remedies (damages and injunctions), and sometimes criminal penalties.

Many companies -- large and small -- seek to protect important information as trade secrets. It is often impractical, for example, to maintain a large patent portfolio. The Copyright Act can provide some protection, but is limited in its scope. A trade secret, in contrast, can potentially be almost any information that has economic value and that is subject to reasonable efforts to maintain its secrecy. Examples can include customer lists, supplier lists, business plans, computer programs, formulas, and financial information, all depending on the particular circumstances.

The Need for Protection

A key element for protection under virtually any trade secret law is that the owner took reasonable steps to protect the information. Companies or individuals with trade secrets -- from start-ups to the largest companies -- need to make sure they have acted to maintain the secrecy of their information. This requires legal help, preferably from the beginning.

The vision of recent college graduates (or dropouts) writing software or developing other technology in a storefront office or a garage is a modern variant of the American Dream of rising from rags to riches. Such efforts are not necessarily mere pipe dreams. In fact, modern technology and decreasing barriers to entry probably make it more possible than ever for an entrepreneur to become successful, if not becoming the next billionaire.

This same technology -- thumb drives that hold gigabytes of information and portable hard drives that hold terabytes -- make it easy for anyone with access to the information to copy it. More and more trade secret cases are being brought against former employees who used such technology to take company information.

The start-up is particularly vulnerable. In many instances, friends will work together in developing technology or another invention. Sometimes, entrepreneurs will “partner” with another company for a particular purpose. In some instances, an investor will come into the mix. In each instance, if intellectual property rights are not documented properly, the possibility of a future dispute becomes very real.

Further, the possibility of a future dispute or lawsuit increases in direct proportion to the success of the venture. Put more bluntly, it is not likely that anyone will fight over worthless technology. It is very likely, however, that disputes will develop over valuable technology.

When inventors or entrepreneurs believe they have developed, invented or written something valuable, it is critically important to consult with an experienced attorney. All employees should sign a written non-disclosure agreement. It is also important to enter into a non-disclosure agreement before entering into any relationship with a third-party business “partner” or an investor. It is equally important that persons working together document their respective rights and obligations regarding the technology, writing or invention. (In addition to trade secret protection, it is also important to consider whether to seek additional protection, such as a patent application or copyright registration).

This is definitely not a situation where inventors, entrepreneurs or investors should try to go it alone or use Internet forms. Prospective clients should also not assume that every lawyer has the necessary experience or expertise to prepare proper documentation or to provide the proper advice.

Having proper non-disclosure agreements and other contracts in place is only the beginning. Adopting procedures and practical measures to maintain the secrecy of the information is also very important. This includes limiting access to the information to those who really need to have such access, monitoring usage, and being diligent in reinforcing the need to keep the information secret. Experienced legal counsel can offer practical advice on this subject.

This is an area in which experienced counsel can provide substantial value at a low cost. Management looking to cut a few corners by avoiding legal fees or who think they can go it alone (frankly, a common attitude among entrepreneurs and engineers) often find that failing to invest a little in initial legal advice later leads to costly legal bills, a loss of any protection for their technology, or both.

Trade Secret Litigation

If a company expects that there has been an information breach, it is extremely important to consult immediately with counsel. It may be necessary to engage forensic experts to determine whether there has actually been a breach and the likely extent of the breach. Ideally, forensic experts should be engaged with the assistance of counsel. The failure to act promptly may compromise potential legal and equitable remedies.

Given the FBI's stated interest, it may be tempting to turn the investigation over to the criminal authorities. This should be done only after consultation with company counsel.

First, and most importantly, the authorities are probably not going to be able to secure any direct relief for the company. Damages and injunctive relief will need to be sought directly by the company. Second, involving the government also involves a loss of control. The authorities, not the company, decide whether to proceed and how aggressively to pursue the matter. In contrast, the company can decide how it wishes to pursue possible civil remedies. Third, if the government is to be involved, their involvement is typically best handled through company counsel.

Conclusion

Trade secret statutes provide substantial civil and criminal remedies for the misuse of proprietary information. Not surprisingly, green technology and other cutting edge technology provide attractive targets for those seeking to profit from the work of others. It is critically important to involve counsel as early as possible in protecting confidential and proprietary information. If there is a breach, the early involvement of counsel will help achieve the best possible outcome.

If you do not know how to find a business attorney and need a resource, my book, An Insider's Guide on Hiring a Business Attorney, provides a step-by-step guide for finding, evaluating, hiring, and working with a business attorney. It is available on Amazon.com for $15.99.

Why I Moved to Barnes and Thornburg LLP

By John L. Watkins

This week, Tom Chorey, Tom Gallo and I left Chorey, Taylor & Feil, P.C. to join the Atlanta office of Barnes & Thornburg LLP. Barnes & Thornburg is an Am Law 100 firm with about 540 attorneys with offices in Atlanta, Indianapolis, D.C., Chicago, Minneapolis, Columbus, OH, Wilmington, DE, and other cities.

BT's Atlanta office is quite new. The Managing Partner in Atlanta is Stuart Johnson, a corporate attorney who was formerly a partner at Bryan Cave Powell Goldstein. With our addition, the Atlanta office will have about 20 attorneys in many disciplines.

Many of our friends and colleagues in the legal community will no doubt be surprised by our move to BT. Tom C. and Tom G. undoubtedly have their own reasons, and I will not try to address them, but I can address mine.

After practicing for large law firms (Hansell & Post, then Long Aldridge & Norman/McKenna Long & Aldridge) for over 25 years, I joined the field of "small law" in 2007. I was briefly a shareholder of Wagner, Johnston & Rosenthal, P.C., which is an excellent small firm in Atlanta, and a place where I have many friends. In December 2007, I had the opportunity to join CTF as a shareholder.

CTF truly has exceptional attorneys. Two of these exceptional attorneys are Tom Chorey and Tom Gallo. Tom Chorey is an amazing corporate attorney with tremendous experience, a tremendous work ethic, and incredible compassion for his clients. Tom Gallo is an outstanding litigator, combining great technical skills and experience with common sense. Tom G. is also just an incredibly nice guy.

When it became apparent that CTF, as it had been constituted, was not going to stay together, a priority for me was to keep practicing with Tom C. and Tom G. Although we had a number of excellent alternatives, we chose to come to BT. There are several reasons BT proved very attractive.

First and foremost, BT presents an extremely unique opportunity. I have known about BT for many years, having used the firm as local counsel in a matter a number of years ago. The firm was very impressive in acting as local counsel, and I have always had a great deal of respect for BT as an excellent firm.

In learning more about where BT is today, I became even more impressed. The firm has grown, even through the Great Recession. This appears to be the result of combining great lawyers and great capabilities with a rate structure that conveys value and is consistent with the firm's Midwestern roots.

The firm also has great depth and covers almost every discipline of law. Chorey commented to me the other day, "Do you know the firm has a nanotechnology department?" I replied that I did know that, but that it was very small. Tom did not get the joke right off the bat. Bad joke aside, the fact that the firm covers nanotechnology is extremely relevant, because we have a new client in that industry and having expertise in the area will only help us provide greater value to that client.

The way the firm has gone about building the Atlanta office is also very impressive. The lawyers in the Atlanta office have great resumes and experience. One of the partners the firm just added is Roy Hadley, an excellent corporate attorney who focuses on technology companies, and an old friend and colleague from Long, Aldridge & Norman. The depth and experience of the lawyers in the Atlanta office alone -- which covers some key areas we did not cover at CTF -- should help us serve our clients more efficiently.

Another key factor was that the firm has a nationally recognized insurance recovery practice for business policyholders. BT's insurance coverage practice for policyholders is ranked in the top 10 nationally. A large part of my practice focuses on insurance coverage. Although I have represented insurance companies in the past, my current practice focuses on representing only policyholders. It was thus important for me to find a firm that represented policyholders and not insurers. BT's depth in this area can only help serve business clients with insurance coverage issues.

The final factor, and a very important one, is the ability to focus on practicing law. When I left the large firm world in 2007, the allure of the small firm world was freedom: The ability to practice law the way you want to practice. After over three years in the small firm world, this has proven to be highly overrated, at least for me.

Although the small firm world provides freedom, it also comes with the distractions of trying to run a small business. I will certainly not miss attempting to manage the firm's website, dealing with vendors, trying to do the firm's public relations and marketing with no resources, and the countless other tasks that come with a small law firm. BT has the resources to deal with these issues and to allow me to focus on the two things that I believe are most important: Serving clients and finding new ones.

In December 2009 and January 2010, I wrote An Insider's Guide on Hiring a Business Attorney, a book written for business owners and executives about finding, evaluating, interviewing, hiring, and working with a business attorney. One of the chapters of an Insider's Guide deals with evaluating large firms vs. small and medium-sized firms. I tried to look at the issue objectively, but assumed that, since I had at that time joined the small firm world, I would end up favoring small firms.

That is not how the chapter turned out. In looking at the issue objectively, it was simply undeniable that large firms possess some advantages (generally, excellent attorneys and breadth of coverage). Although excellent small firms also can possess advantages (generally, personal service and a lower rate structure), I concluded that clients generally hire lawyers and not law firms.

In thinking about the large vs. small firm issue, it dawned on me that, if a firm could put together the resources of a large firm with value and personal service, it might be the best of both worlds. In looking at the options, it seemed that BT might just have achieved this happy medium.

It was extremely important for us that BT's rate structure is consistent with the rate structure at CTF. This means that we can continue to serve our clients with all of the resources that BT offers without the need of a large rate increase. I also felt that BT's Midwestern values seem to fit well with our desire to provide our clients with personal service. I grew up mainly in the Midwest, so maybe BT's approach just seemed intuitively right.

There is always a risk in changing firms. In this case, the resources and opportunities offered by BT seem to outweigh the risk of changing. I hope to practice at BT for many years to come.