Rodney A. Smolla, President, Furman University
August 14, 2012

Intellectual property law functions against the larger backdrop of law and public policy surrounding freedom of speech and the free flow of information.  This relationship is reflected in numerous legal doctrines and policies spanning all of intellectual property law, doctrines, and policies that mediate between information fenced off by the law as “property” of some kind or another, and that which resides in the public domain.

Other bodies of law that are not part of any intellectual property regime as such, at times function in a manner parallel to intellectual property law, extracting information that would otherwise be in the public domain, and walling it off as confidential.  The entire apparatus of statutes, regulations, and contractual arrangements surrounding national security information is perhaps the most vivid example.  To protect the national security interests of the United States a vast body of law classifies information that would otherwise fall squarely within the core of speech about politics and public policy protected by the First Amendment.

In the Supreme Court these boundaries are most famously explored in the “Pentagon Papers” case, New York Times Co. v. United States.1   Whenever the law falls on the side of protecting “secrets,” whether these are national security secrets or the proprietary secrets of a business (“trade secrets”), a kind of “intellectual property” is being carved out of the public domain.  When the law is brought to bear to protect the secrets of the government, as in classified national security information, or the confidential conversations inside the Oval Office protected by “Executive Privilege,”2 the “quasi-property,” so to speak, is owned by the government.  When the law is brought to bear to protect the confidentiality of private communications, another kind of “quasi-property” is being vested in a private individual or firm.

A case pending in the Supreme Court of Virginia on issues relating to lawyer advertising, commercial speech, and legal ethics has intriguing resonance on these issues.  The case, Virginia State Bar ex rel. Third District Committee v. Hunter,3 may seem at first blush to have nothing to do with intellectual property concepts.  I believe, however, that on closer inspection it serves as a fascinating window on the ongoing evolution of law regarding information in which all are free to traffic, and information that is the “property,” legally or figuratively, of the government, a private “owner,” or both.

By way of disclosure, I represent one of the parties to this litigation, Mr. Horace Hunter, a member of the Virginia State Bar.  As this piece is being written, Mr. Hunter’s case is being appealed to the Supreme Court of Virginia.

In a nutshell, Mr. Hunter, who principally practices criminal defense law in Richmond, Virginia, maintains a website.  Some material on that site fits squarely within the domain of what state bar authorities throughout the United States treat as lawyer advertising.  But not necessarily all of it.

One link on Mr. Hunter’s website takes a browser to a blog.  That blog, which contains various entries written by Mr. Hunter, includes commentary on pending legal and political matters, and descriptions of the facts and outcomes of cases decided in state and federal courts.  The Virginia State Bar takes the position that Mr. Hunter’s blog is “commercial speech,” and “lawyer advertising,” and that he must therefore comply with the various State Bar rules that govern lawyer advertising, including the posting of a disclaimer containing the warning admonition that the results of cases depend on a variety of factors unique to each case, and case results do not guarantee or predict a similar result in any future case.

While some of Hunter’s blog entries are not about judicial cases at all (he has used his blog, for example, to attack former attorney general Alberto Gonzalez’s actions with regard to United States attorneys), and while not all of the cases Hunter describes are cases in which Hunter himself served as an attorney, the majority of the blog entries are descriptions of Hunter’s own cases, and only those cases in which he was victorious.  The Bar essentially takes the position that Hunter’s motivation is commercial – he wants to draw attention to himself and attract clients – and therefore the blogs are advertisements.

Mr. Hunter, in contrast, is perfectly willing to include, voluntarily, on every blog entry the warning that case results depend on a variety of factors unique to each case, and that case results do not guarantee or predict a similar result in any future case.  What he is not willing to do, however, is treat his blog entries as “commercial speech.”  He instead insists on a constitutional right to post on his blog the statement that his speech is political speech, not lawyer advertising.  He admits that one of the motivations underlying his posting of his blog entries is self-promotion and marketing.  But this is not, he insists, his only motivation.  He also genuinely wishes to comment on legal affairs and case outcomes, including his views of criminal law and criminal defense practice, and to him it cheapens the message, and professes a falsehood, to label these blog entries “commercial speech.”

Moreover, Hunter argues, the actual content of his speech is purely political – it is about the law, lawyers, judges, and cases.  That his motivation in discussing this content may in part be commercial does not render the descriptions, which are detailed enough to speak for themselves, or his commentary, which is simply his opinion, “advertising.”  On top of that, he argues, any interest Virginia may have in avoiding consumer deception, however far-fetched that danger might be – is entirely eliminated by Hunter’s willingness to warn consumers that all cases are unique.

There is more.  Hunter’s blogs do not disclose any material subject to attorney-client privilege.  No secrets or confidences related to Hunter by his clients, but never revealed in court, are disclosed.  Hunter does, however, briefly explain the charges in the case, the basic evidence revealed during a public trial, and the outcome, typically with some additional commentary of his own.

The Virginia State Bar does not simply take the position that Mr. Hunter’s blog entries are commercial speech.  As to any blog entry describing Mr. Hunter’s own prior cases, in which he is describing the facts and the outcomes of matters in which he served as legal counsel, the Bar argues that Mr. Hunter is prohibited, by ethical rules governing the attorney-client relationship, from disclosing that information, if its revelation would embarrass the former client, without first obtaining the client’s permission and release.

The Bar relies on Virginia’s Rule of Professional Conduct 1.6(a), similar to that of most states, which states: “A lawyer shall not reveal information protected by the attorney-client privilege under applicable law or other information gained in the professional relationship that the client has requested be held inviolate or the disclosure of which would be embarrassing or would be likely to be detrimental to the client unless the client consents after consultation, except for disclosures that are impliedly authorized in order to carry out the representation, and except as stated in paragraphs (b) and (c).”4

It is here that the analogy to intellectual property and doctrines such as fair use, the idea/expression dichotomy, and the public domain come into play.  American copyright law does not extend protection to either “facts” or “ideas.”  This fundamental notion, sometimes expressed under the shorthand “the idea/expression dichotomy,” is critical to the law’s balance between property rights and the free flow of information.

As the United States Supreme Court most recently noted in Golan v. Holder,5 the idea/expression dichotomy is the device used in American law to mediate between an author’s expression, which is copyrightable, and the ideas and facts embodied in an author’s expression, which are not.  The idea/expression dichotomy is codified in the Copyright Act at 17 U.S.C. §102(b): “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”

The Supreme Court has repeatedly explained that this provision is the Copyright Act’s reconciliation of the tensions that might otherwise exist between the protection of intellectual property provided by copyright law, and the freedom of expression guaranteed in the First Amendment.  As the Court explained in Harper & Row Publishers, Inc. v. Nation Enterprises,6 the “idea/expression dichotomy strike[s] a definitional balance between the First Amendment and the Copyright Act by permitting free communication of facts while still protecting an author’s expression.”  Copyright law thus protects the expression of an author, but not the ideas or the facts expressed.7   A news organization may copyright its specific expression of the news, but not the news itself, because “the news element – the information respecting current events contained in the literary production – is not the creation of the writer, but is a report of matters that ordinarily are publici juris; it is the history of the day.”8

Albert Einstein could thus copyright the scholarly paper in which he published his Theory of Relativity, preventing anyone from copying verbatim his precise words in explaining the theory, but he could not copyright the theory itself.  And in turn, Walter Isaacson, writing a biography of Einstein, could copyright his precise expression describing Einstein’s tenure at Princeton University, but he could not copyright the facts regarding Einstein’s time at Princeton.

To the extent that the Virginia State Bar seeks to place in the client what is essentially the “property right” to decide whether communications with his or her lawyer later disclosed in open court, including those not subject to the attorney/client privilege, may or may not be revealed, the Bar creates a dramatic tension with the traditional understanding that facts revealed in a public trial are facts in the public domain.  On extremely rare occasions, of course, judicial proceedings are sealed off from public view.  A sensitive national security trial or matters touching on juveniles and children (such as adoption proceedings) are treated as outside the presumption of open access that applies to most American judicial proceedings.  Thus there is nothing alarming about the notion that the government might forbid a lawyer from revealing information in an adoption case, for example, as that information itself is not treated by the law as public.

Mr. Hunter’s position, however, is that once a matter is revealed in open court in a public trial, even if it were once revealed to a lawyer as a confidence, it is stripped of its secretive character, stripped of its parallel to an intellectual property secret, and reverts to factual history, owned by the public at large, and cannot be the “property possession” of either the client or the state.

So far, the results of the Virginia State Bar v. Hunter litigation have been mixed.  The Bar prevailed in its argument before a three-judge Virginia Circuit Court on the question of whether Mr. Hunter’s blogs constitute commercial speech and must be accompanied by a disclaimer.  Mr. Hunter, however, prevailed in his claim that the First Amendment trumps Virginia Rule 1.6, and that once material is revealed in open court, Mr. Hunter, like any other citizen, is free to describe the events that transpire there.

The matter, however, is now headed for the Supreme Court of Virginia.  As the broadcast cliché goes, “stay tuned for further developments.”