< Previous“All is fair in love and war.” This axiom is frequently thrown about and is often used as a ba- sis to justify certain actions. If it is true about love and war, what about business? These days the competitive- ness to sell products or services can be very intense. What is fair between competitors in the marketplace? Is it like love and war? Anything goes? Ac- tually, not everything is OK, even in love and war, and the same goes for the marketplace. THE STORY OF FRANKIE LEE AND JUDAS PRIEST Frankie Lee, your client, walks into the office - or in these times respecting social distancing arranges for a video conference - and says, “Look at Judas Priest’s website. I thought he was my friend! Can he do this? I want you to stop him! He is not playing fair.” So, you take a look and discover that Judas Priest’s website is compar- ing Frankie’s product Frankie Lee’s Seltzer Tabs with Judas Priest’s Fizz Pills. In bold brash letters the website declares: “Frankie Lee’s Seltzer Tabs cost twice as much and the fizz isn’t what it is. If you want a reliable fizz in your juice at a reasonable price, buy Judas Priest’s Fizz Pills.” WHAT IS COMPARATIVE ADVERTISING? Judas Priest’s claim is an example of comparative advertising. Com- parative advertising is a marketing tactic where a competitor compares its product with your client’s prod- uct, usually denigrating your client’s product somehow such as by relative cost, value, quality or some other at- tribute. In a typical situation the cli- ent’s trademark is involved and this often becomes a primary point of indignation. “How can they use my trademark?” is the outcry. The short answer is, “They probably can.” We leave to your judgement as to wheth- Playing Fair Z. PETER SAWICKI AND JAMES L. YOUNG | Intellectual Property Z. PETER SAWICKIJAMES L. YOUNG Mr. Sawicki and Mr. James L. Young are shareholders at Westman, Champlin & Koehler. Pete and Jim both have over 30 years of experience obtaining, licensing, evaluating and enforcing patents. Each has also developed an extensive practice regarding the clearance, registration, licensing and enforcement of trademarks. They work closely with clients to understand their values and business plans and provide customized and effective strate- gies for intellectual property asset procurement, growth, management and protection. To contact Z. Peter Sawicki, call (612) 330-0581 or call James L. Young at (612) 330-0495. Please email them directly at either psawicki@wck.com or jyoung@wck.com. Comparative advertising issues are complicated. The use of another’s trademark in such a comparison is generally permitted, but any claim must be true, preferably with backup data.” ATTORNEY AT LAW MAGAZINE · MINNESOTA · V OL. 9 NO. 8 10er this should be your initial response to Frankie Lee. Why can Judas Priest get away with using Frankie’s trademark in this way? Frankie has an incontestable federal registration for his mark that gives Frankie exclusive rights throughout the entire United States. As you can surmise, there is no such thing as a short legal answer. First and foremost, for trademark infringement to be actionable Judas Priest’s actions have to be such that they are likely to cause confusion. 15 USC § 1125. A trademark is a source indicator, such that when a buyer views the trademark the buyer be- lieves that the goods/services come from a particular source. If the goods actually come from another source, there may be infringement. This is the basis, and in many respects the extent of, Frankie’s trademark rights. Frankie has exclusive rights under the guise of likelihood of confusion to stop others from selling carbonation tablets or similar products under his Seltzer Tabs trademark. MY PRODUCT IS BETTER THAN YOURS! But Judas Priest is not selling prod- uct under Frankie Lees’ Seltzer Tabs trademark. Judas Priest is running an ad distinguishing the two products by comparing them. Judas Priest is doing something radically different from trademark infringement. He is saying, “My product is better than yours.” to Frankie Lee and to potential consum- ers. However, Judas Priest has to be careful. He has to speak the truth. The price of the products is what it is. There can be no contention here. If Frankie is selling at a higher price, then Judas Priest is likely in the clear. What about reliability? Here’s where the story gets real. If Judas Priest’s Fizz Pills do not perform as claimed, then Frankie can confront Judas Priest with a “misleading description of fact” claim under 15 USC § 1125. Frankie says to you, “Judas Priest is telling lies. My Seltzer Tabs fizz and fizz and fizz, and do not fizzle out as Judas Priest wrongly claims. I want to sue because I have been aggrieved by Judas Priest and he no longer is my friend.” “Whoa. Not so fast!” you say to Frankie Lee. “Judas Priest may be well prepared. His product assertations in a court of law may be judged not to be the reason for your distress. What if Judas Priest actually has compara- tive fizz product data between your Seltzer Tabs and his Fizz Pills?” If his product comparison claims are true, the story probably ends. If his product comparison claims are false, the story continues. Comparative advertising issues are complicated. The use of another’s trademark in such a comparison is generally permitted, but any claim must be true, preferably with backup data. If the ad puffs up certain prod- uct attributes in its comparison, the issues become more complicated and beyond the scope of this article. The moral of this story, the moral of this tale, . . . is that when you run an ad, make sure it’s true and you may have a chance to prevail. Thank you, Bob Dylan! (The Ballad of Frankie Lee and Judas Priest)A TT ORNEY OF THE MONTH AL YSIA ZENS ATTORNEY AT LAW MAGAZINE · MINNESOTA · V OL. 9 NO. 8 12For many, 2020 has been a year of uncertainty. For Alysia Zens, Pro Bono Counsel at Dorsey & Whitney LLP, 2020 has also presented new opportunities to adapt, to collaborate and to lead. Now in her 20th year of practice at Dors- ey, Zens brings energy, focus and compassionate legal advocacy to the many causes of social justice that are made all the more urgent by this year’s events. Zens began her legal career as a summer associate at Dorsey, and after her graduation from the University of Minnesota Law School, she stayed on as an attor- ney. “Originally, I did health law work for non-profit healthcare systems, making sure they were in com- pliance with regulations,” Zens says. “One piece was helping with their tax-exempt status. I loved non-prof- it law in general, and it’s where I did most of my pro bono work. I enjoyed being able to connect with the people on the ground who were making a difference.” When Zens became pregnant with twins five years into her practice, she considered leaving the firm to work as a non-profit administrator. Rather than risk losing a valued colleague, Dorsey worked with Zens to create a new position that amplified her passions and talents. “My role is largely to serve our non-profit cli- ents in a pro bono context. It’s always been part of our pro bono structure to support non-profits. We have about 300 non-profit matters at any time, and I’m a resource to those attorneys who have those files and who sit on boards.” A connector by nature, Zens is ideally suited for a role in which she is constantly linking people and re- sources. “It’s phenomenal to be able to touch so many different organizations and issues, and to put people together to talk and learn from each other.” Providing support to pro bono attorneys is one of Zens’ key respon- sibilities. She often connects pro bono lawyers with resource attorneys within the firm, specialists who are ready to offer practical guidance AL YSIA ZENS I loved non-profit law in general, and it’s where I did most of my pro bono work. I enjoyed being able to connect with the people on the ground who were making a difference.” Bold Leadership During Great Change BY H. K. WILSON AttorneyAtLawMagazine.com 13in their areas of law when volunteers are doing work outside of their legal wheelhouse. “I’ve observed that while litigation attorneys tend to feel more comfortable rolling up their sleeves and figuring it out, transactional attorneys often have a harder time in the pro bono world because they’re not usually doing the work they would do every day. I have 15 years of helping transactional attorneys feel comfortable doing pro bono.” Dorsey’s approach to pro bono work differs from that of many other large firms. Rather than selecting a signature project, the firm instead allows attorneys to find and follow their individual passion projects. “What I’ve always really appreciated at Dorsey is our eclectic approach to finding something for everyone. And if we don’t have it, you can build it. The focus is on finding the passion for each of our lawyers. It’s not about getting PR. It could even be a small or unpopular issue, but the firm still wants you to do it. Passion is an important element.” While Zens is usually involved in ramping up a new pro bono proj- ect every four to six weeks, due to the current outcry for racial justice, she assisted with 15 new projects in June alone. “The cool thing is that we were already set up to be able to respond to a lot of different needs, and people were ready to help. We didn’t have to sit down as a collec- tive and determine one place where we could have a big impact. This is an opportunity to pursue projects that aren’t necessarily in line with each other and explore different ways of fixing a problem.” COURAGEOUS COLLABORATION Change requires courage. Change calls upon individuals and orga- nizations to make difficult, and sometimes, unpopular choices. Dorsey and its lawyers have summoned that courage. Effective June 2, 2020, Dorsey ended its Minneapolis City Attorney program, under which Dorsey attorneys provided legal services assist- ing the prosecution of misdemeanor cases in the City of Minneapolis. This decision was motivated by studies demonstrating that prosecu- tion of misdemeanors disproportionately impact the Black commu- nity. LAW FIRM ANTIRACISM ALLIANCE ATTORNEY AT LAW MAGAZINE · MINNESOTA · V OL. 9 NO. 8 14AT A GLANCE Dorsey & Whitney LLP 50 South Sixth Street, Suite 1500 Minneapolis, MN 55402 (612) 340-2600 Dorsey.com Practice Areas Pro Bono Non-Profit & Tax Exempt Organizations Trusts & Estates Education Juris Doctor, University of Minnesota Law School MBA, University of South Dakota Bachelor of Science, University of South Dakota Service LegalCORPS, Board of Directors, 2015-Present Volunteer Lawyers Network, Board of Directors, 2005-Present Minnesota State Bar Association Legal Assistance to the Disadvantaged Committee, 2005-Present Eastwood Foundation for Teen Parents, Founder, Board of Directors, 2002-Present Minnesota State Bar Association, 2000-Present Hennepin County Bar Association, 2000-Present Delano Girls With Goals Running and Mentoring Program, Founder, Director, 2011-Present Honors MSBA North Star Lawyer, 2012-2019 Dorsey & Whitney LLP Scales of Justice Award Recipient, 2002 Dorsey has refocused its pro bono resources to advance numerous causes that promote criminal justice reform, nonprofit formation and programming support, protester assistance, reform advocacy, and other underrepresented issues. Here are just a few: • Formal Partnership with State and Federal Public Defender Programs • Human Rights Commission Work on Racially Restrictive Covenants • Jim Crow Unanimous Juries Project, LA • Ongoing Legal Assistance to Non-Profits • Protestor Rights • Racially Discriminatory Policing, ACLU- LA Project • Reentry Collaborative Justice Project • Police Reform • Election Voting Rights Dorsey stands with 240 law firms across the world as a charter mem- ber of the Law Firm Antiracism Alliance (LFAA). “We’re trying to fig- ure out right now how we can harness the power of big firm lawyers to make the greatest impact. It’s an exciting group to be a part of, with members and law firms across professions and across humanity who all have a desire for this to be a turning point in history — not just a social blip, after which we all carry on.” Zens also represents Dorsey as a member of the Twin Cities Pro Bono Professionals, a group of representatives from law firms across the metro with paid pro bono staff who meet once a month to col- laborate on various projects. “There’s no competition among us. The Twin Cities is a friendly legal market anyway, and it helps to use our collaboration for big, important issues.” Since the onset of COVID-19 and the crisis of justice after the death of George Floyd, the group has been meeting weekly, in part, just to check in with one another. “Attorney wellness is especially important right now, along with human wellness in general. Recent events have been emotionally taxing for everyone, and it’s hard to be in a position where you feel responsible for harnessing the power of the law field in the right way.” Zens and a few of her friends and colleagues, including Pro Bono Coordinator Sue Kjelvik, share a gratitude list each morning. “In the last few weeks we’ve added a ‘because of’ statement, focusing on one thing we did and why it mattered — even if it’s mundane — so we don’t feel so overwhelmed. I’m sitting with my feet in the grass when I do that, so I can really get grounded.” According to Zens, 2020 has presented everyone with an opportu- nity to be in action — and this opportunity is a gift. She emphasizes that no one has to stand alone. “Use your collaboratives. It’s why we have the Law Firm Antiracism Alliance, so one firm is not out there all by themselves, so they don’t have to worry about losing billable clients. Our willingness to collaborate gives us all a safety net. We need for our doors to remain open so that we can keep on making a difference.” For those who want to make a contribution and don’t know where to start, she says that non-profits make ideal partners, since they are already well-versed on the issues and know where the need is. “There are a lot of advocacy and non-profit organizations here, and we have a very collaborative environment. If you feel that your area of law doesn’t work for pro bono, they all have mentors to help you get involved. We cannot stop. We must carry this energy forward. This cannot just be a phase. There is a lot of fear out there among many who want change that once everything returns to normal, people will stop talking and caring about racial justice. I promise that when you make room, pro bono will give you back more than it takes. It’s going to fill your soul.”WWW.ATTORNEYATLAWMAGAZINE.COM Contact us for more information or to reserve your spot at (763) 742-2805ON YOUR OWN: Lookin’ for a Mind at Work BY JEFF STORMS Some small law firms are built with the intent to remain small. Others are built with an eye towards growth. For those intending to grow, it is im- portant to focus on bringing in dynamic attorneys. You want attorneys who aren’t there just to support the existing partners, but colleagues who can take a larger role in growing the firm’s revenue and reputation. In baseball, there is the rare player referred to as a “five-tool player.” Those are players who excel at speed, throwing, fielding, hitting for average, and hit- ting for power. That construct led me to think about the tools we’re looking for in future hires and partners. Ethics. If you can’t be honest with us, opposing counsel, clients, or the court, we have no place for you in our business. There are too many opportunities in this profession to harm others through dishonesty. Poor reputations drag down those associated with you. I scrutinize the representations of every law- yer at some firms because of the sins of their colleagues. Legal Analysis. We have a duty to read and understand the law. Should we be pushing the envelope and making creative arguments? Absolutely. Will we always be right? No. This isn’t math. There isn’t always a “right” answer. However, some answers are objectively correct, and you need colleagues who approach perfection in that regard. Work Ethic. Hard work is often the great equalizer that overcomes other deficits. There are lawyers who may not be the quickest to analyze a problem, but they are tenacious enough to “read every treatise on the shelf” to find the correct answer. They are lawyers who take the time to read all of the relevant materials. While there are times you might be outsmarted, you shouldn’t be outworked. Presentation. You don’t only have a duty to know the correct or best an- swer, you have to persuade a multitude of other people that you’re right. We all have our own styles. Some lawyers are smooth as silk, while others pound you like a jackhammer. Top lawyers learn how to use a variety of tools, and you want colleagues who understand or are intent on understanding how to persuade while being their best, authentic selves. Marketing. You can be the most technically skilled lawyer in the world, but if you can’t convince people to hire you your career will always be limited. If you’re relying upon some other lawyer to provide you with work, there’s a good chance that lawyer will better reap the monetary and other rewards of your hard work. In a small private firm with aspirations of growth, you need hires who understand they’re also working in sales. JEFF STORMS IS A PARTNER AT NEWMARK STORMS DWORAK LLC. HE HAS A DIVERSE LITIGATION PRACTICE WITH AN EMPHASIS ON PLAINTIFF’S CIVIL RIGHTS AND SEXUAL ABUSE LITIGATION. JEFF IS A PERENNIAL SU- PER LAWYER AND HAS TWICE BEEN NAMED AN “ATTORNEY OF THE YEAR” BY MINNESOTA LAWYER. AttorneyAtLawMagazine.com 177 STEPS to Create Your Own Path to Business Development IN 2020 BY RHONDA M. WARE In these challenging times, law firm partners may feel completely rerouted. In January and February, they were meeting with current and potential clients for lunch and coffee, flying across the country to participate in client pitches, attending national conferences, and going to happy hours with the hope of meeting GCs from Fortune 500 companies and making new connections. If you were like them, you had big plans for this year. 2020 was going to be the year that you grew your client list exponentially. ATTORNEY AT LAW MAGAZINE · MINNESOTA · V OL. 9 NO. 8 18THEN, OVERNIGHT, THE WORLD SHUT DOWN. Now the conversation turns to how partners are going to grow their books of business in this new normal. It has been a bit challenging to shift into this new space of business development. And the truth is that business devel- opment may not shift entirely back to the way we used to do things—ever. What does that mean for you as a law firm partner trying to develop your book of business? The following steps may help you create your own business development path—2020 style. 1. BE YOURSELF. Oscar Wilde tells us that “imita- tion is the greatest form of flattery that mediocrity can pay to greatness.” Oftentimes, in law firm settings, part- ners with smaller books of business find themselves trying to look like, sound like, and use the same strate- gies that more senior partners with larger books of business use in hopes of replicating their success. What 2020 has illuminated is that this is a flawed strategy. Connection and au- thenticity are required to thrive now. So where does that leave you? We all have strengths, unique at- tributes, approaches to problem- solving, and interests that set us apart from others. It is important for you to take time to understand what differ- entiates you in the marketplace. What strengths do you have, and how can you use them to maximize your im- pact on increasing clients’ short- and long-term viability? Being yourself instead of an imitation of someone else is key to expanding your book of business. 2. GET A CLEAR VISION. To be successful in any area, you must know what you want and why. Ask yourself: Based on my strengths, how do I add value to clients? What kind of clients do I want to work with? Why do I want to work with these types of clients? Answering these questions for yourself—and not rely- ing on others to impose the “what” and “why” on you—will help you clarify your vision as it relates to your business development plan. 3. MAKE YOUR GOALS BIGGER THAN WHAT YOU CAN SEE. Set a big business development goal that stretches you. The goal should not be based on firm speak (such as, “There aren’t that many clients in the market,” “The senior partners are the only ones who will ever get the huge revenue-generating clients,” or “Said partner does not like me, so I will not inherit his or her clients.”). Rumi the philosopher reminds us that “it’s your road and yours alone. Others may walk it with you, but no one can walk it for you.” Your business devel- opment goals should inspire you to bring your whole self to the endeavor. Remember, there are no limitations except the ones you choose to accept. 4. START WHERE YOU ARE AND CREATE A BLUEPRINT. Once you have a clear vision re- garding business development, take the steps to make your vision your reality. Start by creating a business de- velopment blueprint. Understanding your goals will help you make better decisions regarding where to spend your time. There is only so much time in a day, and you need to make sure that you are focusing on what is im- portant to accomplishing your goals. Major areas to focus on in order to grow your book of business include personal networks, professional or- ganizations, current clients, cross- selling, and social media. 5. READY. SET. GO. Now that you have created the blueprint, it is time to begin the work. Create a calendar for yourself and include some accountability bench- marks that allow for executing parts of your plan and checking in to see if they are leading to business devel- opment. One way to do this is to set daily or weekly goals for yourself and then once a month, check in to see what has resulted from your effort. 6. SUSTAINED COMMITMENT TO ACCOMPLISHING YOUR GOALS. Achieving the book of business you desire will take consistent action over an extended period of time. That said, since you are building your book based on your authentic strengths, value adds, and differentiators, it should not feel like the heavy lifting that comes with imitating other’s road to success. The goal is for business de- velopment to become a way of life, in- stead of something you do not enjoy. If it starts to feel inauthentic and not in alignment with your goals, revisit your “what” and “why,” as well as your blueprint to see what changes need to be made to regain your business de- velopment momentum. 7. REJOICE. RESET. REPEAT. Once you start gaining momentum and growing your book of business, take some time to enjoy your suc- cess. Be proud that you are making strides to build a book of business in an authentic way. After you celebrate, understand that at some point down the road, you will enter into a season where your goals expand. When that season arises, reset and then repeat steps 1–6 to continue to grow your business development network. RHONDA WARE, A DIRECTOR IN THE PART- NER PRACTICE GROUP AT MAJOR, LIND- SEY & AFRICA, THE WORLD’S LARGEST LEGAL SEARCH FIRM. AttorneyAtLawMagazine.com 19Next >