Case 1:22-cv-00311-WCB Document 92 Filed 05/31/23 Page 1 of 23 PageID #: 3512
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`IMPOSSIBLE FOODS INC.,
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`Plaintiff,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Civil Action No. 22-311-WCB
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`FILED UNDER SEAL
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`MOTIF FOODWORKS, INC.,
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`v.
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`Defendant.
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`MEMORANDUM OPINION AND ORDER
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`In this patent case, plaintiff Impossible Foods Inc. (“Impossible”) has alleged that several
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`food products sold by defendant Motif Foodworks, Inc., (“Motif”) infringe the claims of various
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`patents owned by Impossible. Both before and during this litigation, Impossible retained private
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`investigation firms in an effort to obtain samples of Motif’s products. Motif alleges that
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`Impossible’s use of private investigators, and in particular the conduct of the investigators as
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`agents of Impossible’s attorneys, violated the applicable Rules of Professional Conduct. Based on
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`those allegations, Motif seeks a protective order together with discovery into the actions taken by
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`the investigators.1
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`I.
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`Background
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`Impossible and Motif are competitors that produce and sell plant-based food products
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`designed to mimic the taste of meat. Motif has repeatedly stated in public that its products may be
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`1 District of Delaware Local Rule 83.6(d) provides that all attorneys admitted or authorized
`to practice before the United States District Court for the District of Delaware shall be governed
`by the American Bar Association’s Model Rules of Professional Conduct. The provisions in the
`ABA’s Model Rules that are applicable to this case are identical to the corresponding provisions
`of the Delaware Rules of Professional Conduct.
`1
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`sampled at trade shows and may be purchased on a business-to-business (“B2B”) basis. Dkt. No.
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`77 ¶¶ 2–4.2 In response to those announcements, Impossible, through its counsel at Wilson Sonsini
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`Goodrich & Rosati (“WSGR”), hired two private investigation firms to obtain samples of Motif
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`products from trade shows and through Motif’s B2B sales channels. Id. ¶ 5.
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`In December 2021, WSGR engaged a private investigation firm, T&M USA, LLC, to
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`investigate Motif’s products and the possible infringement of Impossible’s patents. Id. Later that
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`month, T&M employee Bill Weller attended the Plant Based World Expo in New York City and
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`interacted with Motif representatives manning the Motif booth at that trade show, including one
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`who said that Motif’s hamburger patties would not be in production until October 2022. Dkt. No.
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`73 ¶ 5; Dkt. No. 74 ¶ 5; Dkt. No. 73-1. Mr. Weller allegedly represented himself as affiliated with
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`the Centerport Yacht Club. Dkt. No. 74 ¶ 5.
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`In follow-up correspondence after the trade show, a Motif representative reached out to
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`Mr. Weller by email to gauge his interest in Motif’s products. Dkt. No. 73 ¶ 6. Mr. Weller
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`responded by email, asking if Motif’s hamburger patty would be in production by October. Dkt.
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`No. 73-1. Mr. Weller added that a friend of his was an agent for a restaurant group in Manhattan
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`that is interested in Motif’s product. Id. Motif responded that they were “still working towards
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`availability around Sept-Oct.” Id. Motif proposed a meeting with Mr. Weller, but after a brief
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`response, Mr. Weller had no further contact with Motif at that time. Id.
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`In February 2022, WSGR engaged another private investigation firm, Paramount
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`Investigative Services, and requested that Paramount have an investigator attend the “Future Food-
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`Tech San Francisco” trade show held on March 24 and 25, 2022. Dkt. No. 77 ¶¶ 10–11; see also
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`2 The facts recited in this opinion, which are largely undisputed, are taken from
`declarations submitted by the parties.
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`2
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`Dkt. No. 76-1, Exh. 1. At the trade show, Paramount’s investigator “obtained samples of Motif’s
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`plant-based product, which was offered by Motif at its booth and available to all attendees” of the
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`event. Dkt. No. 77 ¶ 11. The investigator also asked if he could “meet with the [trade show’s]
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`third-party caterer so that he could obtain access to their kitchen in order to inspect Motif’s
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`products and their preparation”; that request was denied. Dkt. No. 75 ¶ 8. WSGR represents that
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`it “has not used and will not use the samples” acquired by Paramount’s investigator. Dkt. No. 77
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`¶ 11. After the March 2022 trade show, Paramount terminated its investigation into Motif. Id.
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`¶ 12.
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`T&M subsequently created a limited liability company, Food4Thought, LLC, so as to
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`“enable T&M investigators to engage with Motif as a potential B2B customer.” Id. ¶ 14; see also
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`Dkt. No. 76-1, Exh. 2. As part of those efforts, T&M used employees of another company,
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`Integrity One Solutions LLC.3 Dkt. No. 77 ¶ 13. T&M’s investigators attended several trade
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`shows, including NOSH Live, held in New York City on June 13 and 14, 2022; and the Plant
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`Based World Conference & Expo, held in New York City on September 8 and 9, 2022. Id.
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`¶¶ 15–16. At the NOSH Live trade show, T&M investigators listened to industry speakers and
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`had a short conversation with a Motif employee. Id. ¶ 15. At the Plant Based World Conference
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`trade show, T&M’s investigators, posing as employees of Food4Thought, spoke with Motif
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`employees and obtained “samples of Motif’s cooked and raw product,” which were available to
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`all attendees. Id.
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`Julia Dacri, who holds the title of “Communications Manager” at Motif, stated in a
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`declaration that she operated Motif’s booth at the Plant Based World Conference & Expo and
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`served cooked samples of Motif’s “burgers, chicken cutlets, cheese, and burger grounds.” Dkt.
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`3 For purposes of this opinion, T&M and Integrity One are treated collectively as “T&M.”
`3
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`No. 75 ¶¶ 1, 13–14. While Ms. Dacri was operating the booth, she was approached by two persons
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`who claimed to be affiliated with Food4Thought and who identified themselves as Sarah Jamil
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`and Ed Barry. Id. ¶ 15. Ms. Jamil and Mr. Barry asked Ms. Dacri if they “could obtain a raw
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`sample of Motif’s food products,” because they “wanted to touch and feel the raw Motif products.”
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`Id. ¶ 16. Ms. Jamil and Mr. Barry explained that they wanted those samples because
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`Food4Thought was considering “a collaboration with Motif for [Food4Thought’s] meal kit
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`service.” Id Ms. Dacri stated that Ms. Jamil and Mr. Barry asked how Motif’s products were
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`made and what ingredients they contained, but she responded that information about the
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`ingredients was proprietary to Motif. Id. ¶18.
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`Approximately two months after the September trade show, Ms. Jamil contacted Motif by
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`email, asking to “discuss [Motif’s] product distribution for inclusion in our meal product.” Dkt.
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`No. 74-1, Exh. A. Nilofer Ahmed, who holds the title of Vice President of Sales at Motif,
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`responded to that email and directed Ms. Jamil to communicate with Joanne Kennedy, the Director
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`of Business Development at Motif. Id.; Dkt. No. 74 ¶¶ 1–2, 6. Ms. Kennedy subsequently
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`arranged a Zoom meeting between Ms. Kennedy, Ms. Jamil, and Bill Weller, who was also
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`purporting to be an employee of Food4Thought. Dkt. No. 74 ¶ 7; Dkt. No. 74-1, Exh. A. That
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`meeting took place on December 6, 2022. Dkt. No. 74 ¶ 7.
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`During the Zoom meeting, Ms. Jamil and Mr. Weller did not appear by video, but instead
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`used the “audio only” feature of Zoom. Id. ¶ 8. Ms. Jamil and Mr. Weller provided numerous
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`details about Food4Thought and the company’s purported plans to launch a meal kit service. Id.
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`¶¶ 13–16. At the end of the meeting, Ms. Jamil and Mr. Weller requested that raw samples of
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`Motif food products be sent to Food4Thought’s New York location, but they did not provide a
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`shipping address. Id. ¶ 17.
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`4
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`In the course of the Zoom meeting, Ms. Kennedy noticed that Ms. Jamil’s Zoom interface
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`initially read “Sarah Nasir,” but later in the meeting was changed to “Sarah Jamil.” Id. ¶¶ 9–10.
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`Upon investigation after the meeting, Ms. Kennedy determined that “Sarah Jamil” was actually a
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`person named Sarah Nasir and that she was employed by Integrity One Solutions. Id. ¶ 18.
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`Integrity One describes itself on its LinkedIn page as “an investigative and risk advisory firm that
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`specializes in internal and financial forensic investigations.” LinkedIn, Integrity One Solutions,
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`LLC, https://www.linkedin.com/company/integrity-1-solutions-llc (last visited May 25, 2023).
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`Ms. Kennedy also determined that the Food4Thought website was very rudimentary and did not
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`mention either Mr. Nasir or Mr. Weller. Dkt. No. 74 ¶ 19. She concluded that Mr. Weller “was
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`posing as a legitimate potential customer of Motif’s products in an attempt to encourage [her] to
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`provide him with information and samples of Motif’s products.” Id. ¶ 14.
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`In December 2022 and January 2023, Ms. Nasir sent a total of three follow-up emails to
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`Ms. Kennedy, asking about what the “next step” would be in enrolling in Motif’s “sampling
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`program.” Dkt. No. 74-1, Exh. C. Ms. Kennedy does not appear to have responded to any of those
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`inquiries. See id.
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`In early 2023, Motif announced a “direct-to-consumer sampling program.” Dkt. No. 74
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`¶ 23. In response to that announcement, Ms. Nasir sent three more emails to Ms. Kennedy and
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`Ms. Ahmed, again requesting samples of Motif’s products. Id. ¶¶ 24, 26; Dkt. No. 74-1, Exhs.
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`D–F. Mr. Weller also called Ms. Kennedy and asked for information about the direct-to-consumer
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`sampling program. Dkt. No. 74 ¶¶ 25. Ms. Kennedy did not respond to those requests. See id.;
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`Dkt. No. 74-1, Exhs. D–F. T&M’s investigation terminated as of April 18, 2023. Dkt. No. 77
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`¶ 21.
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`5
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`On May 12, 2023, Motif sought relief from the court based on the conduct of the
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`investigators. In particular, Motif seeks a protective order barring Impossible, its counsel, and its
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`agents from undertaking “any further undisclosed investigations of Motif or its employees outside
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`of the normal discovery process of this litigation or through the use of false pretenses, private
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`investigators, or other unlawful, fraudulent, or unethical means” and from using any of the
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`information or product samples obtained by those investigative firms, “including by presenting
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`arguments or seeking discovery concerning the same.” Dkt. No. 72, Exh. 6 ¶¶ 1–2. Motif also
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`requests that the court order Impossible and its counsel to produce documents and communications
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`exchanged with the investigative firms regarding efforts to contact Motif or its employees and the
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`results of the firms’ investigations, as well as communications between Impossible and its counsel
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`regarding efforts to contact Motif “outside of this litigation.” Id. ¶ 3. Finally, Motif requests that
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`the court order Impossible and/or its counsel to produce a declaration “describing all outreach by
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`Impossible and Impossible’s agents (including its counsel) relating to efforts to contact Motif or
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`Motif’s employees outside of the formal discovery process in this litigation,” and any further
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`appropriate discovery or sanctions. Id. ¶¶ 4–5.
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`At the court’s direction, the parties filed letter briefs outlining their positions with respect
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`to the dispute. Dkt. Nos. 72, 76, 78. During a telephonic hearing on May 22, 2023, I requested
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`that WSGR provide the court with any communications sent from the investigators to WSGR for
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`in camera review. I received those documents on May 26, 2023, and have reviewed them.
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`II.
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`Discussion
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`Motif contends that the actions of Impossible’s attorneys in directing the private
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`investigators to contact Motif’s employees to obtain information relating to this case violated the
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`ABA and Delaware Rules of Professional Conduct. In particular, Motif contends that Impossible
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`violated four of those rules through its use of private investigators to contact and elicit information
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`from employees of a party known to be represented by counsel in pending litigation: Rule 4.1,
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`Rule 4.2, Rule 5.3, and Rule 8.4.
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`At the outset, I note that the Rules do not specifically address the use of pretextual
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`investigations to contact employees of represented organizations. Although state courts and bar
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`associations have grappled with that question, see Suggs v. Capital Cities/ABC, Inc., No. 86-2774,
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`1990 WL 182314, at *3 (S.D.N.Y. Apr. 24, 1990) (collecting state court decisions and bar
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`association opinions),4 there is only limited federal judicial authority addressing the subject. The
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`judicial authority that does exist tends to be heavily fact-dependent; courts have not set forth a
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`bright-line rule indicating precisely when such pretextual investigations are permissible and when
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`they are not. Nonetheless, the guiding principles from those authorities are informative, and I
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`address them in detail below.
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`A. Rules 5.3 and 8.4
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`Rule 5.3(c) of the Model Rules provides that, with respect to a nonlawyer who is employed
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`or retained by a lawyer, the lawyer “shall be responsible for the conduct of such a person that
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`would be a violation of the Rules of Professional Conduct if engaged in by a lawyer” if “the lawyer
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`orders or, with the knowledge of the specific conduct, ratifies the conduct involved.” Model Rules
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`4 The Suggs case and the great majority of the authorities cited by the court in that case
`hold that pretext-based contacts by investigators with employees of represented organizations are
`permissible under appropriate circumstances. Bar association opinions in the years after Suggs are
`to the same effect. See, e.g., Colo. Bar Ass’n Op. 137 (May 18, 2019); N.C. Bar Ass’n Op. 2014-
`9 (July 17, 2015); Ore. Bar Ass’n Op. 2005-173 (Aug. 2005); Ariz. Bar Ass’n Op. 99-11 (Sept.
`1999). In an ethics opinion issued in 2001, the ABA declined to address the application of the
`Model Rules “to deceitful, but lawful conduct by lawyers, either directly or through supervision
`of the activities of agents and investigators.” Am. Bar Ass’n & The Bureau of Nat’l Affs., Inc.,
`Lawyers’ Manual on Professional Conduct, Ethics Opinions 2001–2005, Formal Ethics Opinion
`01-422 (June 24, 2001), at 1201:101.
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`of Professional Conduct Rule 5.3(c) (Am. Bar Ass’n 2023); see In re Complaint of PMD
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`Enterprises Inc., 215 F. Supp. 2d 519, 529 (D.N.J. 2002). Relatedly, Rule 8.4(a) provides that it
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`is professional misconduct for a lawyer to “knowingly assist or induce another” to violate the Rules
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`of Professional Conduct, or to “do so through the acts of another.” Model Rules of Professional
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`Conduct Rule 8.4(a). As applied to this case, those two rules make it clear that if the conduct of
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`the investigators would amount to a violation of the Rules of Professional Conduct if engaged in
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`by an attorney, the attorneys at WSGR who directed that conduct would also be deemed to have
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`violated those rules.
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`B. Rule 4.1
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`Rule 4.1(a) of the Model Rules prohibits a lawyer from, “[i]n the course of representing a
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`client,” making “a false statement of material fact or law to a third person.” Id. Rule 4.1(a). In
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`this case, the T&M investigators indisputably made false statements to Motif’s employees about
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`their identities and the business plan of Food4Thought. Put simply, a Rule 4.1 violation lies if
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`false statements such as those, made in the context of investigating potential misconduct by another
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`party, are prohibited by the Rules of Professional Conduct. The separate question whether the fact
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`that the false statements were made to employees of a represented organization amounts to a
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`violation of the Rules of Professional Conduct is addressed in the section regarding Rule 4.2 below.
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`The weight of authority indicates that misrepresentations made solely as to identity or
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`purpose do not rise to a violation of Rule 4.1 when the investigator is posing as a customer in the
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`ordinary course of business. David B. Isbell, a former chair of the American Bar Association
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`Standing Committee on Ethics and Professional Responsibility, co-authored a leading law review
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`article on this subject, which summarized the state of the law at that time. The article stated that
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`“the Model Rules, properly read, do not prohibit a lawyer’s using investigators or testers who make
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`misrepresentations about their identity or purpose.” David B. Isbell & Lucantonio N. Salvi,
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`Ethical Responsibility of Lawyers for Deception by Undercover Investigators and Discrimination
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`Testers: An Analysis of the Provisions Prohibiting Misrepresentation Under the Model Rules of
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`Professional Conduct, 8 Geo. J. Legal Ethics 791, 811 (1995) (capitalization altered). With respect
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`to Rule 4.1, the article explained that such statements are not made “in the course of representing
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`a client,” as provided by Rule 4.1, and that the rule is intended to require “a standard of candor
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`and fairness that does not necessarily apply in the ordinary exchanges among persons who do not
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`purport to own any professional credentials.” Id. at 814–15.
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`To the same effect is the statement of Professor Bruce A. Green, former co-chair of the
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`ABA Litigation Section’s Committee on Ethics and Professionalism, which was summarized by
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`the court in Apple Corps Limited v. International Collectors Society, 15 F. Supp. 2d 456, 475
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`(D.N.J. 1998), as follows: “The prevailing understanding in the legal profession is that a public
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`or private lawyer’s use of an undercover investigator to detect ongoing violations of the law is not
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`ethically proscribed, especially where it would be difficult to discover the violation by other
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`means.”
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`More generally, courts have held that attorneys may use investigators who pose as
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`consumers in various contexts. See, e.g., Cartier v. Symbolix, Inc., 386 F. Supp. 2d 354, 362
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`(S.D.N.Y. 2005) (“The prevailing understanding in the legal profession is that a public or private
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`lawyer’s use of an undercover investigator to detect ongoing violations of the law is not ethically
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`proscribed, especially when it would be difficult to discover the violations by other means.”
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`(cleaned up)); Gidatex, S.r.L. v. Campaniello Imports, Ltd., 82 F. Supp. 2d 119, 122 (S.D.N.Y.
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`1999) (“[H]iring investigators to pose as consumers is an accepted investigative technique, not a
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`misrepresentation.”); Apple Corps, 15 F. Supp. 2d at 475 (the New Jersey Rule of Professional
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`Conduct that prohibits misrepresentations “does not apply to misrepresentations solely as to
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`identity or purpose and solely for evidence-gathering purposes.”).
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`Other courts have agreed that an undercover investigator’s failure to disclose his true
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`identity generally does not constitute fraudulent, unethical, or otherwise impermissible conduct,
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`particularly when the investigation is directed at detecting violations of law, such as infringement
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`of intellectual property rights, and the investigation consists of engaging in commonplace
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`consumer-business interactions. See, e.g., Alzheimer’s Found. Of Am., Inc. v. Alzheimer’s Disease
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`& Related Disorders Ass’n, 796 F. Supp. 2d 458, 472 (S.D.N.Y. 2011) (“The investigation does
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`not in itself constitute fraud.”); Sega Enterprises Ltd. v. MAPHIA, 857 F. Supp. 679, 689 (N.D.
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`Cal. 1994) (“[T]he fact that a plaintiff’s employee, in the course of investigating a copyright or
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`trademark infringement, fails to identify herself as such to the defendant does not provide a defense
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`to the infringement when such identification would have defeated the investigation.”); Olan Mills,
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`Inc. v. Linn Photo Co., 795 F. Supp. 1423, 1430 (N.D. Iowa 1991), rev’d on other grounds, 23
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`F.3d 1345 (8th Cir. 1994) (“While the failure to disclose the relationship between [the plaintiffs]
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`and [the investigator] was, in a sense, deceptive, it is not the kind or degree of deception which
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`gives rise to a defense of unclean hands.”); Reebok Int’l Ltd. v. Jemmett, No. 87-1415, 1988 WL
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`106933, at *4 (S.D. Cal. Feb. 5, 1988) (“The fact that [the investigator], who was employed by
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`[the plaintiff], may not have identified himself as an employee of plaintiff, and led defendant to
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`believe that he was someone other than an investigator for [the plaintiff], is not sufficient reason
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`to keep plaintiff’s counsel from access to information regarding defendant’s activities.”); Chloé v.
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`Designersimports.com USA, Inc., No. 07-1791, 2009 WL 1227927, at *10 (S.D.N.Y. April 30,
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`2009) (“[I]t is difficult to imagine that any trademark infringement investigator would announce
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`her true identity and purpose when dealing with a suspected seller of counterfeit goods.”); A.V. by
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`Versace, Inc. v. Gianni Versace, S.p.A., No. 96-9721, 2002 WL 2012618, at *4 (S.D.N.Y. Sept. 3,
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`2002) (rejecting complaint regarding the use of a private investigator using a false name, noting
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`that “[t]he investigator’s actions conformed with those of a business person in the fashion
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`industry”).
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`Ethics committees in various states have addressed the issue as well, with divergent results,
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`again often depending on the particular facts of the cases before them. A 2007 opinion from the
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`New York County Lawyers’ Association Committee on Professional Ethics is generally
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`representative. The Committee in that case declined to rule that pretextual investigations
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`sponsored by an attorney are invariably unethical. See NYCLA Committee on Professional Ethics,
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`Formal Opinion No. 737 (May 23, 2007), https://www.nycla.org/resource/ethics-opinion/nycla-
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`committee-on-professional-ethics-formal-opinion-on-non-government/. Instead, that opinion
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`explained that “dissemblance,” i.e., “misstatements as to identity and purpose made solely for
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`gathering evidence,” is “ethically permissible in a small number of exceptional circumstances.”
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`Id. Specifically, the Committee explained that a lawyer supervising investigators who dissemble
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`acts unethically unless:
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`(i)
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`(ii)
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`(iii)
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`(iv)
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`either (a) the investigation is of a violation of civil rights or intellectual
`property rights and the lawyer believes in good faith that such violation is
`taking place or will take place imminently or (b) the dissemblance is
`expressly authorized by law; and
`the evidence sought is not reasonably and readily available through other
`lawful means; and
`the lawyer’s conduct and the investigator’s conduct . . . do not otherwise
`violate the [Rules of Professional Ethics]; and
`the dissemblance does not unlawfully or unethically violate the rights of
`third parties.
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`Id.
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`The bar associations of at least two states have adopted provisions expressly recognizing
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`that the use of covert activity in investigations of violations of law is not unethical. See Oregon
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`Rules of Professional Conduct § 8.4(b) (“[I]t shall not be professional misconduct for a lawyer to
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`advise clients or others about or to supervise lawful covert activity in the investigation of violations
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`of civil or criminal law or constitutional rights, provided the lawyer’s conduct is otherwise in
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`compliance with these Rules of Professional Conduct. ‘Covert activity,’ as used in this rule, means
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`an effort to obtain information on unlawful activity through the use of misrepresentations or other
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`subterfuge.”); Wis. Sup. Ct. R. 20:4.1(b) (“Notwithstanding par. (a), SCR 20:5.3(c)(1), and SCR
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`20:8.4, a lawyer may advise or supervise others with respect to lawful investigative activities.”).
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`In support of its contention that the misrepresentations attributable to Impossible’s
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`attorneys violated Rule 4.1, Motif relies heavily on a 2016 district court case, Meyer v. Kalanick,
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`212 F. Supp. 3d 437 (S.D.N.Y. 2016). In that case, the defendant in a civil action hired an
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`investigator to conduct “secret personal background investigations” of the plaintiff and his counsel.
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`The investigator contacted 28 “acquaintances or professional colleagues” of the plaintiff and his
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`counsel, and in approaching those individuals, made “materially false statements about why he
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`was contacting them.” Id. at 440. The court held that the investigator’s conduct, authorized by
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`the defendant’s attorney, violated the Rules of Professional Conduct because the investigator made
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`false statements of material fact and “contravene[d] the truth-seeking function” of litigation by
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`“mak[ing] fraudulent representations in order to surreptitiously gain information about litigation
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`adversaries through intrusive inquiries of their personal acquaintances and business associates.”
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`Id. at 446. The court distinguished the Gidatex and Apple Corps cases (discussed in further detail
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`below), noting that unlike in those cases, the defendant in Meyer was not “seeking to investigate
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`misconduct that the plaintiff had perpetrated vis-à-vis [the defendant]” nor was it seeking to
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`“discover whether plaintiff and his counsel were disobeying an existing court order.” Id. Notably,
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`Case 1:22-cv-00311-WCB Document 92 Filed 05/31/23 Page 13 of 23 PageID #: 3524
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`in this case Impossible was seeking to investigate unlawful conduct that Motif may have engaged
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`in—specifically, patent infringement.
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`The false statements at issue in this case are quite different from those at issue in Meyer.
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`Impossible was not using investigators to obtain highly sensitive information that would not
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`otherwise have been revealed to any outsider; the evidence the investigators obtained was the type
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`of information and material that ordinarily would be made available to legitimate customers. The
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`information sought by Impossible, moreover, was directly relevant to the alleged unlawful conduct
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`at issue in the case. Unlike in Meyer, the investigators were not seeking to obtain adverse
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`information about litigation adversaries unrelated to the unlawful activities alleged in the
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`complaint.
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`Overall, in view of the analysis in the Isbell and Salvi article and the cases cited above, I
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`find that Impossible’s use of investigators to pose as potential B2B customers of Motif in order to
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`obtain a product sample that would ordinarily be made available to such customers is not the sort
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`of conduct that Rule 4.1 is intended to proscribe. To be sure, one factor that bears on the legitimacy
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`of the investigative measures taken in this case is whether the information sought could have been
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`obtained by other lawful means, such as discovery. Because such information is properly
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`discoverable in litigation, that factor cuts somewhat against Impossible’s claim that a pretextual
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`investigation was necessary in this case.5 On the other hand, much of the information that was
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`obtained as a result of the investigation could have been gathered by anyone attending the various
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`trade shows between 2021 and 2023, such as samples of Motif’s hamburger patties, which were
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`5 A mitigating factor on this score is that given the nature of the materials the investigators
`were attempting to obtain—perishable food products—it may be the case that the particular
`products being prepared and offered at the trade shows would not have been preserved and
`available for later production during discovery proceedings.
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`Case 1:22-cv-00311-WCB Document 92 Filed 05/31/23 Page 14 of 23 PageID #: 3525
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`apparently being freely passed out to attendees at the trade shows. It is therefore clear that Motif
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`did not regard the products it was offering for sale as themselves confidential.
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`Taking all the circumstances into account, I find that there has been no violation of Rule
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`4.1 by the Impossible attorneys based on the work of the investigators.
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`C. Rule 4.2
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`Even if the false statements made by the investigators are not the sort of false statements
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`that are prohibited by Rule 4.1, a separate question is whether Impossible’s attorneys violated Rule
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`4.2 by arranging for the investigators to seek information from a represented party. Model Rule
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`4.2 prohibits communications with persons represented by counsel under certain circumstances.
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`Specifically, that rule recites:
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`In representing a client, a lawyer shall not communicate about the subject of the
`representation with a person the lawyer knows to be represented by another lawyer
`in the matter, unless the lawyer has the consent of the other lawyer or is authorized
`to do so by law or a court order.
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`Model Rules of Professional Conduct Rule 4.2. In a comment, the Model Rules explain that in the
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`case of a represented organization Rule 4.2 prohibits
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`communications with a constituent of the organization who supervises, directs or
`regularly consults with the organization’s lawyer concerning the matter or has
`authority to obligate the organization with respect to the matter or whose act or
`omission in connection with the matter may be imputed to the organization for
`purposes of civil or criminal liability.
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`Id. Rule 4.2 cmt. 7.6
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`6 Comment 7 to Rule 4.2 (previously comment 4) was amended in 2002 to narrow the
`scope of the rule as applied to organizations. The prior version of the comment prohibited
`communication with a represented person having managerial responsibility, the ability to make
`admissions on the organization’s behalf, or the authority to obligate the organization with respect
`to the matter. See Am. Bar Ass’n, A Legislative History: The Development of the ABA Model
`Rules of Professional Conduct, 1982–2005, 542 (2006). Cases decided prior to 2002 typically rely
`on the pre-2002 version of the comment.
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`Motif argues that Impossible’s attorneys were responsible for the investigators’
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`communications with Motif’s employees, and that they violated Rule 4.2 because they knew that
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`Motif was represented by counsel. Impossible disagrees, arguing that the use of investigators
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`posing as customers in the ordinary course of business does not rise to a violation of Rule 4.2.
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`Comment 7 to Rule 4.2 delineates two categories of employees who may not be contacted:
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`(1) members of the litigation control group; and (2) persons who have “authority to obligate the
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`organization with respect to the matter” or “whose act or omission in connection with the matter
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`may be imputed to the organization for purposes of civil or criminal liability.” Id. There is no
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`contention that any Motif employees contacted by the investigators fall into the first category, but
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`Motif argues that its employees fall into the second category.
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`There is little in the record regarding Motif’s organizational structure, and it is unclear
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`whether any of the Motif employees with whom the investigators interacted were persons whose
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`acts or omissions could theoretically be imputed to Motif. Functionally, however, the evidence
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`suggests that in the course of their interactions with the investigators, the Motif employees were
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`performing ministerial acts such as manning the company’s booths at trade shows and responding
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`to inquiries from potential customers. Moreover, it does not appear that any of the interactions
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`between the investigators and Motif personnel resulted in any statements or actions that could be
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`imputed to Motif. Therefore, although several of the Motif employees who interacted with the
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`investigators had titles such as Communications Manager and Director of Business Development,
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`the record does not suggest that their interactions with the investigators were directed to, or resulted
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`in, any relevant