Category: Digital Advocate

By Alexandra Hodson

Although the title of this article may insinuate that we will be delving into SCOTUS’ recent decision in Iancu v. Brunetti,139 S. Ct. 2294 (2019)—a landmark case in which the Supreme Court invalidated the Lanham Act’s bar on federal registration of “scandalous” trademarks (a riveting matter, indeed!)—the focus of this discussion involves a different, but equally exciting, dirty word in the trademark realm: Infringement (gasp!).

The Scenario: Our Journey Begins with A Flood of Inspiration

Join me in fantasyland for a moment. Let’s pretend that, instead of being the successful, well-respected lawyer that you are, you’re an eager entrepreneur looking to disrupt an industry (you can be both if you want. #fantasyland). Recently, while you were bored on a flight,[i] you scrolled through your news feed and came upon a study concluding that 80% of marriages end over toilet seat disputes.[ii] This piqued your interest. You did more research and learned that germs under toilet lids are adapting into colonies of toxic super bugs resilient enough to survive a nuclear blast, and that, due to poor handwashing, these quiet killers are spreading at an alarming rate.

Being the innovator that you are, you decide to take the plunge and give that age-old toilet design an edgy facelift. So, you set out to create your modern toilet masterpiece. After months of trial and error, the product of your efforts is a veritable work of art. The seat is crafted from stainless steel[iii] to ward off germs. It has a warming mechanism and a germ-resistant non-stick coating for comfort. The lid is also stainless steel, and on it, you’ve integrated a light sensor. The sensor is connected to a mechanism in the hinge, so that when the light comes on in the restroom, the lid lifts up.

But that’s not all! You’ve also incorporated a button into the light switch that causes the toilet seat to retract when so desired.[iv] When the light is turned off, the seat, if retracted, returns to its original position, the lid closes, and the toilet flushes itself. Voila! You’ve basically saved the world. You dub this contraption the Light-n-Up Deluxe™ brand toilet[v] and begin advertising right away.

After several years pass, and you’ve spent many thousands of dollars on marketing and promotion, your pipe dreams are finally being realized. You have various small-scale operations selling your product and a potential contract with a big-name store in the works. It’s smooth sailing from here…or so you think.

The Trouble: A Rival Attempts to Unseat You from Your Throne

Out of the blue, you receive a nastygram in the mail. A company in the Midwest has revolutionized the toilet paper industry by manufacturing TP—as the kids call it—from clouds[vi] (yes, absurd, but doesn’t that sound nice?). It recently caught wind of you and claims that your use of Light-n-Up Deluxe™ for toilets is infringing its federally-registered trademark, Light’n Up Luxury®, for personal hygiene tissues.[vii] It demands that you cease and desist your use immediately, but graciously provides you with an opportunity to dump your existing product within “a reasonable time.” What are you to do?

First and foremost, don’t panic. Trademark infringement is a legal conclusion that involves consideration of multiple factors. Thus, just because you’ve been accused of infringement by some hufflepuffs four states away does not ipso facto mean that you are infringing their mark. On the other hand, don’t dismiss their warning—they may have a valid legal claim against you. An examination of the infringement factors will help you assess whether to fight or take flight[viii] in this situation.

Testing for Infringement

Trademark law serves the dual purpose of protecting consumers from unintentionally—key word here—buying low-quality knock-offs while simultaneously protecting trademark holders from losing profits and goodwill at the hand of imitators.[ix]

Typically, two things are considered when assessing whether trademark infringement has occurred: (1) is the allegedly infringed mark a valid trademark—e.g., is Light’n Up Luxury a true source indicator of their “personal hygiene tissues,” or is it merely descriptive of the product?; and (2) are consumers likely to be confused about the origin of the alleged infringer’s product—e.g., will consumers see the toilet with your mark on it and believe that it is sold by your TP-selling adversary?[x] This second prong is creatively termed the “likelihood of confusion” test.

Although different jurisdictions have adopted their own methods of analyzing whether consumers are likely to be confused, the various tests are comprised of multiple factors and essentially embody the same concepts. For an example, see the factors from the Ninth Circuit.

Factors from the Ninth Circuit
The test from the Ninth Circuit includes the following eight factors:

(1) strength of the mark;
(2) proximity of the goods;
(3) similarity of the marks;
(4) evidence of actual confusion;
(5) marketing channels used;
(6) type of goods and the degree of care likely to be exercised by the purchaser;
(7) defendant’s intent in selecting the mark;
(8) and likelihood of expansion of the product lines.[xi]

While “some factors—such as the similarity of the marks and whether the two companies are direct competitors—will always be important,”[xii] others are given more or less weight depending on the context.[xiii] For instance, where products compete in the market, similarity of the marks is key.[xiv] However, “[w]hen the goods are related, but not competitive, several other factors are added to the calculus.”[xv]

Applying the Test to Your Scenario

For this exercise, we’ll assume that the TP maker’s mark is valid.[xvi] As a result, we must analyze the likelihood of consumer confusion as to the source of your product. We’ll do so using the Ninth Circuit’s factors. Because the products do not compete (even in fantasyland), we need to address factors other than just similarity of the marks.

For purposes of brevity, let’s say that we already know that your respective marketing channels are distinct and that there’s no evidence of actual confusion that they are the source of your product. Their mark is likely suggestive or arbitrary[xvii] so let’s assume it’s relatively strong (boooo, hiss. Strong marks are afforded greater protection). Now, we’ll assess the remaining factors to determine the likelihood of confusion in this scenario, beginning with similarity of the marks.

“Similarity of the marks is tested on three levels: sight, sound, and meaning.”[xviii] In assessing this factor, the marks “must be considered as they are encountered in the marketplace.”[xix] As a refresher, the marks at issue here are Light-n-Up Deluxe™ in relation to toilets and Light’n Up Luxury® in relation to toilet paper.[xx] Although the meanings of the marks arguably differ, and they are most likely not encountered near each other in the marketplace, they look and sound very similar. As a result, this factor will likely weigh against you. Not great so far.

The next factor we’ll address is proximity of the goods. The more related the goods are, the more likely consumers will be confused as to source, especially if the products are used together.[xxi] TP and toilets are like biscuits and gravy—you don’t always get one with the other, but it’s good when you do. Thus, because the products are complementary, this factor will also likely weigh against you.

Regarding the type of goods and degree of customer care, the more important or expensive the goods are, the more discerning a purchaser will likely be in the brand they choose.[xxii] TP is generally a low-ticket item; however, if you had a dollar from every person who’s had an unfortunate encounter with subpar toilet paper, you wouldn’t be selling toilets for a living. Thus, considering that the price of your high-end commodes is roughly $1,000 (can you even put a price on saving the world, though?), and that choosing which TP to purchase is a crucial decision, we’ll conclude that consumers have heightened spidey senses regarding brand choice both when purchasing toilets and the corresponding tissue. As a result, confusion as to source is less likely, and this factor will likely weigh in your favor.

Next, let’s address your intent in selecting the mark. This one’s easy. You certainly did not mean to capitalize on the efforts of those hufflepuffs; you didn’t even know they existed! They’d be hard-pressed to prove otherwise. Thus, this factor will likely weigh in your favor as well. Two for two, now.

Although things are looking a bit bleak, you have an ace up your sleeve. “Even where the . . . factors weigh in favor of the movant, . . . territorial divisions may prevent confusion.”[xxiii] Thankfully, you operate only in the Northwest while they operate exclusively in the Midwest, so consumer confusion is likely non-existent. Bada bing bada boom, you’re good to go, right?! Not so fast. We need to analyze one more factor to determine whether you can continue in your Light-n-Up Deluxe™ toilet-selling bliss—the likelihood of expansion factor.

Under the likelihood of expansion factor, “a ‘strong possibility’ that either party may expand his business to compete with the other will weigh in favor of finding that the present use is infringing.”[xxiv] “The question is whether the parties are likely to compete with a similar product in the same market.”[xxv] This factor is also relevant where products are closely related and one party plans to expand into the other’s geographic area, as confusion is more likely in that circumstance as well. Turning to your quandary: You’re not about to start selling toilet tissue, but if that big-name company you’re planning to sign a contract with will be selling your product in the Midwest, you may be in hot water. Lucky for you, they only run brick and mortar stores in your region and have the online presence of a luddite.

However, if those TP sellers can demonstrate imminent entry into your area or legitimate effort to break into the toilet game, your hopes and dreams may be flushed.[xxvi] Because we want your story to have a happy ending, let’s say that they admit they have no intention of moving into your market or selling your product, now or in the future. Phew—our adventure has ended! You can wipe the sweat from your brow and tell them to kindly put a lid on it.

The End: Getting a Handle on What We’ve Learned

What can we take away from this whirlwind experience? Perhaps most apparent from this scenario is that due diligence is key both when choosing a trademark and when deciding whether to expand into other markets once a trademark is established. It’s well worth the cost to conduct a thorough clearance search to avoid valid infringement claims or quashed hopes of expansion down the road.

Further, federal registration is highly recommended, as it provides perks such as the exclusive right to use the mark in connection with the goods, a presumption that the mark is valid, and the ability to license or assign the mark, among other benefits.

Finally, as in most circumstances, strength is a good thing. The more removed a mark is from describing the product (or service) the stronger it is, and the greater protection it will receive. Indeed, if a mark is too descriptive, it won’t qualify for trademark protection at all. Thus, never simply “call it as you see it” in the trademark realm—“pie” cannot be a trademark for pie, no matter how you slice it.

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[i] Hogwash, of course. A productive and zealous advocate such as yourself would never be bored in such a circumstance.

[ii] This statistic is complete fiction. However, a quick search for “marriage fights over toilet seat” is surprisingly fruitful and entertaining.

[iii] Polished steel, obviously, for aesthetic appeal. You’re not a robot.

[iv] It’s pliable…don’t ask questions.

[v] A little weak for a TM, if you ask me—you’re basically just describing what it does. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir. 1979).

[vi] Not the dark and stormy kind—the light and fluffy variety in which one envisions hearts and teddy bears.

[vii] They’ve not only registered their mark, but they’re also the senior user. Thus, they have priority. Shucks!

[viii] Not literal flight—we’re not in Neverland, after all.

[ix] See Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159, 163–64 (1995). “[T]rademark law. . . quickly and easily assures a potential customer that this item—the item with this mark—is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past.” Id. “At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product.” Id. at 164.

[x] Gordon v. Drape Creative, Inc., 909 F.3d 257, 264 (9th Cir. 2018).

[xi] Id. at 264 n.6 (quoting S. California Darts Ass’n v. Zaffina, 762 F.3d 921, 930 (9th Cir. 2014)). These are also known as the “Sleekcraft” factors, which were announced in AMF Inc., 599 F.2d at 351. Other circuits have adopted a test that closely resembles that of the Ninth Circuit. See Guthrie Healthcare Sys., 826 F.3d at 37; Arrowpoint Capital Corp. v. Arrowpoint Asset Mgmt., LLC, 793 F.3d 313, 319 (3d Cir. 2015). Although courts rarely seem to stray from the listed factors in their analyses, the lists are non-exhaustive. See Guthrie Healthcare Sys., 826 F.3d at 37; Arrowpoint Capital Corp., 793 F.3d at 319; Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1145 (9th Cir. 2011).

[xii] Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1054 (9th Cir. 1999).

[xiii] Id. (“Some factors are much more important than others, and the relative importance of each individual factor will be case-specific. . . . [I]t is often possible to reach a conclusion with respect to likelihood of confusion after considering only a subset of the factors.”). Further, “satisfaction of the likelihood-of-confusion standard requires a ‘probability of confusion, not a mere possibility.’ ” Guthrie Healthcare Sys., 826 F.3d at 37 (quoting Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 115 (2d Cir. 2009)).

[xiv] AMF Inc., 599 F.2d at 348.

[xv] Id. (footnote omitted).

[xvi] Notably, federal registration of a mark “is ‘prima facie evidence that the mark is . . . valid (i.e., protectable), that the registrant owns the mark, and that the registrant has the exclusive right to use the mark in commerce.’ ” Guthrie Healthcare Sys., 826 F.3d at 37 (quoting Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 345 (2d Cir. 1999)).

[xvii] We won’t wade through the specifics here, but see AMF Inc., 599 F.2d at 349, for what those terms entail.

[xviii] AMF Inc., 599 F.2d at 351.

[xix] Id.

[xx] The ™ symbol may be used on non-registered marks, while ® may only be used on federally-registered marks.

[xxi] Restatement (First) of Torts § 731 cmt. c. (1938). “[I]f the two kinds of goods are used together, such association is more expectable than when they are used separately for different purposes. Pancake flour and maple syrup are likely to be associated with one source more readily than pancake flour and women’s shoes.” Id.

[xxii] Brookfield Commc’ns, Inc., 174 F.3d at 1060.

[xxiii] Russell Rd. Food & Beverage, LLC v. Spencer, No. 2:12-CV-01514-LRH, 2013 WL 321666, at *2 (D. Nev. Jan. 28, 2013).

[xxiv] AMF Inc., 599 F.2d at 354 (quoting Restatement (First) of Torts § 731(b) & cmt. c). “When goods are closely related, any expansion is likely to result in direct competition.” Id.

[xxv] Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1394 (9th Cir. 1993).

[xxvi] See Russell Rd. Food & Beverage, LLC, No. 2:12-CV-01514-LRH, 2013 WL 321666, at *3. “Likelihood of entry denotes an immediate, impending entry of the federal registrant into the junior user’s territory.” Id. (quoting 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 26:33 (4th ed. 2012)). “For instance, a federal registrant may prove that it has leased premises and is ready to begin sales, or that it has licensed the mark for the disputed territory.” Id.

By David E. Kerrick

I first wanted to be a lawyer sometime between 1957 and 1966. It was during this time that I was introduced to perhaps the greatest lawyer of all time, Perry Mason. Perry came into our house once a week on our black and white TV screen and captured my imagination completely.

Perry was a sole practitioner but never worked alone. He was assisted by two side-kicks, his beautiful secretary, Della Street, and his suave investigator, Paul Drake. Between the two of them, the critical piece of evidence was always delivered to Perry in the courtroom just in the nick of time. Perry would then cross-examine a confession out of the witness or the real killer would sometimes emerge from the gallery in tears knowing they had been caught.

Perry’s nemesis was Hamilton Burger, the Los Angeles District Attorney. Mr. Burger was assisted by the LAPD and, in particular, one senior officer, Lieutenant Tragg. Burger and Tragg always had, at the beginning of the episode, an undisputable circumstantial case against Perry’s client. But by the end of the hour, Perry and his team would present, in open court, the exonerating evidence, which always, coincidentally, provided Burger and Tragg with the identity of the person they should have been prosecuting.

Perry and Burger were superb courtroom gladiators who picked their words perfectly and effortlessly. They were great masters of the spoken English language. They could each deliver a good zinger, but there was never any comment personally against the other lawyer. Always showing the utmost respect for one another and the Court.

Burger lost graciously every episode. You could tell, though, that just one time he would like to beat the famous Perry Mason. Burger’s consolation was that Perry would make justice happen. The wrongfully accused was released and Burger now had the real killer.

Perry and Della were single, I guess. There was never any mention of spouses or children.

I would imagine to myself, sometimes, that they would make a couple, but it never happened. Perry was absorbed in his work 24/7 and Della had to assist him at the same intensity. There was never time for romance.

There were lots of cocktails and cigarettes, and Paul Drake smoked more cigarettes than anyone I have ever seen. He made it look so very cool. He was always in a suit but somehow able to blend with the witnesses that he interviewed and get the information Perry needed.

There was a different villain for every episode, the real killer. Among the regular cast, however, Lieutenant Tragg was something of a villain. He was quite zealous in his work and was always convinced that Perry’s clients deserved the gallows. Until, of course, the truth was revealed in the end.

As practicing lawyers, we can learn many lessons from Perry Mason.

Law Office Management

It is best to just take one case at a time. The phone in Perry’s office does not ring all day long, never do people drop in wanting to know when their project will be done. He is able to fully focus, finding justice for one innocent accused per week.

Wellness

Perry is always cool and collected. And despite all of the pressure that seemingly must be hanging over him, he never needs a vacation. Perry works every day, every evening, and every weekend. I assume he even works on holidays. The secret to wellness, apparently, is to not have a spouse, children, a home life, or personal obligations outside the office.

Succession Planning

When you take one case at a time, you don’t need a succession plan because when you go down there won’t be a hundred loose ends left up in the air.

Civility

The key to Perry’s success at always remaining civil is that he never litigates cases with idiots. His trials are always against the next best lawyer in town, a zealous adversary with impeccable diction and professional demeanor. In the courtroom, it then becomes a competition to see who will be the most articulate and respectful advocate. Never let them see you sweat or vent anger.

Attorney’s Fees

I never saw Perry Mason extract a fee from any of his clients. It never occurred to me at my young age that Perry would need money to pay his office rent and his help. All of that must have just happened by osmosis. The lesson here is that if you work on significant matters for significant people, the money will take care of itself. Don’t trouble yourself with billable hours.

Lawyer Advertising

Perry never advertised. It seemed that everyone in Los Angeles would know when you find yourself wrongfully accused of homicide in the deepest possible legal hole, you know by reputation alone the man to see is Perry Mason – he’s your one shot at justice. When you win stunning victories in every front page case you take, people will find you.

When the Perry Mason series had its nine-year run on television, I was 6 to 15 years old. It is true that Perry Mason is a fictional lawyer, but the power of his courtroom performance and the important nature of his work started my first interest in law and lawyers. Later, I received other encouragement along the way from real lawyers, family members, and friends. But when I think back to the very beginning of my legal apprenticeship, it was under the tutelage of the greatest lawyer of all time, Perry Mason. Who wouldn’t want to be Perry Mason?

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By Carey A. Shoufler

Idaho was well represented at the recent National High School Mock Trial Championship in Athens, Georgia. Idaho’s courtroom artist, Mikayla Dougherty, placed third in the National Courtroom Artist Contest and Laina Wyrick from Idaho’s national mock trial team was one of only 10 students chosen as an Outstanding Witness. One note of interest: Mikayla’s award-winning drawing includes Laina on the witness stand.

Laina Wyrick

More than 140 students play witness roles at the National Mock Trial Championship and only 10 of those students receive an Outstanding Witness award, as determined by the judging panels over four rounds of competition. This year, Laina Wyrick from the Logos School in Moscow was one of those students.

Laina participated in mock trial for three years. During that time she took on both attorney and witness roles for her team and always played the role of expert witness. Her coach, Chris Schlect, indicated that she has a superior technical mind, which made her a formidable expert witness. Chris said, “She knew the case better than the opposing attorneys and could not be touched in cross-examination. She parried tough questions with refined distinctions while holding her ground when she needed to, all the while maintaining an air of scientific objectivity that is the hallmark of a strong expert witness.”

Laina recently graduated from Logos and will be attending Washington State University in the fall, where she will be studying physics and mathematics.

Mikayla Dougherty

Mikayla Dougherty from Lewiston High School represented Idaho in the National Courtroom Artist Contest. Her task was to observe trials with an eye toward finding the most interesting or newsworthy action and accurately depicting a chosen scene in a sketch that was completed during a two-hour round of competition. The National Courtroom Artist Contest was piloted in Boise in 2016 and follows a similar format to Idaho’s contest, with the top three entries acknowledged at an awards ceremony at the end of the competition weekend.

This was Mikayla’s first year participating as a courtroom artist. As someone who is interested in art, (in fact, Mikayla will begin her studies next year at University of Nevada Las Vegas in fine art, with a focus on drawing, painting, and printmaking) she was excited when she heard an announcement saying that one of the ways she could participate in mock trial was as a courtroom artist. She says it ended up being a really good experience for her. “I was so excited when they called my name. There were so many talented artists who participated and it’s was an honor to place in the top three.”

Mikayla traveled to Athens with her teacher and mock trial coach, Shannon VanBuren, who believes that courtroom art is a great opportunity for student-artists to improve their skills and present their work to others. “It has been such a wonderful experience to have the courtroom artists as part of the mock trial program. They bring a vibrant spirit to the competition and it has always been great seeing their work.” Ms. VanBuren was proud of what Mikayla accomplished at the national competition in Athens. “She had an opportunity to experience new ways to portray scenes and better her art.”

The Idaho Law Foundation and the Law Related Education Program congratulate Mikayla and Laina for their well-deserved awards. We are proud to count them among our mock trial participants and wish them success in their college careers.

For more information about Idaho’s Mock Trial Program, contact Carey Shoufler at cshoufler@isb.idaho.gov or visit the Mock Trial website at idahomocktrial.org.

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By Lindsey M. Welfley

An Idaho native through and through, Justice Walters was born in Rexburg in 1938 and graduated from Idaho Falls High School in 1957. The path to law school began early for Walters; since his junior high days and into high school, the suggestion to go into the legal profession was ever-present – classmates had made it known they would be attending law school, Walters’ ninth grade speech teacher encouraged the legal profession as a great choice, and on senior day before graduation local attorney Eugene Bush came to speak to the seniors interested in law. Walters recalled it was at that point “I knew I was headed to law school.” He transferred to the University of Idaho receiving his L.L.B. in 1963 and later his Juris Doctorate. Justice Walters considers himself a lifelong learner and his subsequent academic achievements are a testament to that quality – Walters received an L.L.M. degree from the University of Virginia and has spent his career attending courses at the University of Washington Law School, New York University Law School, the University of Kansas School of Law, and the National Judicial College in Reno, Nevada.

Justice Walters was admitted to the Idaho State Bar in 1963, alongside admission to the United States District Court for the District of Idaho and the Ninth Circuit Court of Appeals. Walters served as a law clerk to the Chief Justice of the Idaho Supreme Court from 1963 to 1964 and then as an attorney for the Idaho Senate during the 1965 legislative session. It was at this time that he entered the private practice in Boise, practicing from 1964 until 1977 when then-Governor John Evans appointed him to the bench as District Judge for the Fourth Judicial District. Walters served in that capacity from 1977 to 1982 and served as Administrative District Judge of the Fourth Judicial District from 1981 to 1982.

In the early 80s, the Idaho Court of Appeals was in its formative stage. When the Court was officially created in 1981 Governor Evans named Walters as one of the three original members. Walters was then selected by the Chief Justice of the Idaho Supreme Court to serve as Chief Appellate Judge and was reappointed to that position on the bench through seven two-year terms, from 1982 to 1997. By the late 90s, Walters had built a reputable tenure on the bench – in preparation for his next judicial appointment. In 1997, Walters was appointed by then-Governor Phil Batt as the 50^th Justice to serve on the Idaho Supreme Court. Walters was elected in May 1998 to a six-year term on the Court. He retired in July 2003 but continued to work for many years as a senior justice.

While holding onto his Idaho roots, Justice Walters’ career took him all over the country for leadership and educational opportunities alike. Walters was a member of the American Bar Association for over 25 years and served on the Board of Directors for both the American Judicature Society and the Idaho Law Foundation, Inc. Walters served as an officer and president of the Council of Chief Judges of the State Intermediate Courts of Appeals, and during his tenure developed lifelong friendships among judges at the trial court and appellate court levels nationwide. For over 20 years, both before and after retirement, Walters served as a visiting judge for the International Law and Technology Moot Court competition each fall at the John Marshall Law School in Chicago, Illinois – an experience he mentions was “great fun, meeting contacts from all over the country who are just true, great friends.”

Back in Idaho, Walters chaired the Idaho Supreme Court’s Criminal Rules Committee, the Jury Reform Committee, and the pattern Criminal Jury Instructions Committee. He was active in many community affairs, serving as President of the Vista Lions and of the Boise Jaycees and as an instructor for numerous continuing legal and judicial education programs with the Idaho State Bar and at the University of Idaho College of Law. During his tenure on the Idaho Supreme Court, the Court of Appeals and the District Court, Justice Walters participated in over 4,200 appeals. At the time of his retirement, he had been the author of 1,372 appellate opinions. Following his retirement in 2003, Justice Walters continued to serve in the judiciary as a Senior Judge, sitting as a judge pro tem with the Idaho Supreme Court and the Idaho Court of Appeals, continuing to write opinions for both courts and serving as an Appellate Settlement Conference mediator and Idaho State Bar discipline investigator.

Aside from strictly law-related volunteer commitments, after retirement, Walters served for 10 years as a trustee with the Idaho State Historical Society and in 2018 received the Society’s Esto Perpetua Award for his contributions to the preservation of Idaho history. He volunteers as a tour guide at the Old Idaho Penitentiary and as a docent at the Idaho State Historical Museum.

In 2015, Walters received the prestigious George G. Granata, Jr. Professionalism Award from the Idaho Judiciary for his contributions and service as a motivating and inspirational role model to his colleagues on the bench. He and his wife, Harriet, have been married for 60 years and have three children: Craig, Robyn and Scott, seven grandchildren and three great-grandchildren, expecting another in August 2019.

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By Lindsey M. Welfley

William (Bill) Gigray is a Caldwell native and has been a longstanding positive force in his local community for decades. Bill grew up around the legal profession; his late father, William Gigray, Jr., was a member of the Idaho State Bar for over 60 years and instilled the importance of family, faith, community service and giving back. After Bill graduated from Caldwell High School, he followed in his father’s footsteps and decided a career in the legal profession was the right fit for him.

Bill is a two-time Vandal, having attended the University of Idaho for both his undergraduate and graduate degrees. Bill received his B.A. from the University of Idaho in 1969. Immediately thereafter, he attended the University of Idaho College of Law. Bill met his wife during their time at the University of Idaho together and in 1971, Bill married Barbara Anderson. Bill graduated with his Juris Doctorate one year later, in 1972, and together Bill and Barbara moved from Moscow to Boise, then Portland before finally settling in Caldwell. Bill was admitted to the Idaho State Bar in 1973 and is also admitted to the Federal Courts, United States Supreme Court, and the Ninth Circuit Court of Appeals.

Upon graduation from law school and admittance to the Bar, Bill began in private practice in Caldwell with the Gigray Miller firm until 1990 and subsequently continuing as a shareholder of the law firm of White Peterson in Nampa. He practices municipal law, business law, estate planning, governmental law, probate, and real estate. As part of his distinguished career, Bill has served in several leadership capacities both Bar-related and otherwise. Bill served as Third District Bar Association President early on in his career, from 1978 through 1979. He held a position on the Idaho Trial Lawyers Association Board of Directors from 1998 through 2003, serving as the President of ITLA from 2001 through 2002.

Additionally, Bill is a member of several reputable organizations and committees. In Idaho, he is a member of both the Idaho Supreme Court Civil Rules Committee and the Idaho Supreme Court Civil Rules Ad Hoc Committee. On the national scale, Bill is a member of Trial Lawyers of America and the National School Boards Associations’ Council of School Attorneys.

In 2006, Bill was awarded the Idaho State Bar Professionalism Award for his admirable embodiment of professional courtesy throughout the duration of his career. When interviewed for that award over a decade ago, Bill expressed his belief that professionalism as a virtue is grounded in respect for each other and for the rule of law that he and his legal peers serve. Those sentiments, and his beliefs, have not changed. He states: “How we conduct ourselves in this practice toward our clients, with the people we deal with on behalf of our clients and with each other matters a great deal.” He goes on to say, “Without professionalism, there is no profession.”

Bill is equally committed to community engagement outside the legal world and is heavily involved in both his church and civic groups. Over the years he has served as president of the Jaycees, Optimist Club, Greenbelt Civic League of Caldwell, Inc., the Caldwell Foundation for Education Opportunity, Inc., the Foundation for Ada/Canyon Trails Systems, Inc. (FACTS), and is currently the Moderator of the Permanent Judicial Commission of the Synod of the Pacific of the Presbyterian Church, U.S.A. He has spent countless hours doing school board work and municipal work; both of which have made marked positive impacts on the communities in which he’s worked.

Just as Bill’s father left a legacy by way of another generation of Gigray attorneys, so too has Bill. He and his late wife, Barbara, have three children; Anne, William IV, and Mary. Their daughter, Mary Gigray of Caldwell, is also an Idaho attorney. Mary continues the Gigray legacy in the legal profession and is a public defender in Canyon County. She is known by her colleagues as a noteworthy lawyer and another great member of her community and of the Bar – virtues instilled by her father. After Bill’s wife passed away, she relocated to Canyon County.

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By Lindsey M. Welfley

Over nearly 40 years in law practice, Jeffrey Fereday has fashioned a distinguished career in water rights, natural resources, and environmental law. Growing up in Boise, he developed an appreciation for public lands and often experienced the out of doors while hunting, fishing, and backpacking. These interests helped lead him into his areas of legal specialty later on. Fereday graduated from Borah High School in 1968 and attended Columbia University in New York City, graduating in 1972.

During his college years and for a while after, Jeff supported himself by fighting wildland fires for the Forest Service and the Bureau of Land Management. For six years he was a smokejumper, first in Idaho and later in Alaska. From 1973 to 1977 Fereday worked for the Idaho Conservation League, beginning as a volunteer and ending up as its Executive Director. He entered Lewis and Clark Law School in Portland, Oregon in 1977, attracted there by the law school’s then-fledgling environmental law program. At Lewis and Clark, Jeff was associate editor of the law review, Environmental Law, the nation’s first law review devoted to this subject. Years later, the Law School recognized Jeff as a Distinguished Environmental Law graduate.

In 1980, Fereday graduated from Lewis and Clark Law School, was admitted to the Washington State Bar, and took his first job in Washington D.C. in the Honors Program at the Solicitor’s Office at the Department of the Interior. The following year, he married Kay Hummel, also a Boise native, and was admitted to the Idaho State Bar. In 1981, due to the change in administration after the 1980 election, the Honors Program was eliminated, leaving Fereday and his 13 fellow program attorneys without employment. The young lawyers sued, claiming the new administration violated Federal Employment Rules, in a case entitled Fereday et al v. Watt. Although the suit failed, Interior’s former Solicitor, Clyde Martz, offered Jeff and one of his fellow plaintiffs a new opportunity as attorneys at his Denver firm, Davis, Graham & Stubbs. It was at Davis Graham where Jeff built his foundation in water law, representing water conservation districts, farmers, and cities in water rights transfers, mitigation plans, and in disputes between ground and surface water users. Jeff maintains lasting friendships with several colleagues from the Colorado water bar.

In 1985, Jeff and Kay moved back to their hometown after Jeff was offered the opportunity to start a water rights and environmental practice at Givens Pursley, then primarily a boutique real estate firm run by Ken Pursley, one of Jeff’s early mentors at the Idaho Conservation League. Jeff’s efforts to build that practice eventually led him back to his Colorado colleagues in search of legal talent. Both Mike Creamer and Chris Meyer joined Givens Pursley through those efforts. Fereday was made partner in 1987. He and Kay welcomed their first son, Wyatt, in 1988, followed by their second son, Charlie, in 1992.

Fereday has argued several cases in the Idaho Supreme Court, worked on cases which resulted in landmark precedents for water rights in Idaho and has served as Arbitrator in disputes before the United States Supreme Court related to apportionment of the waters of the Republican River, an interstate waterway. One of his more rewarding projects, Fereday recalled, was his work, pro bono, that resulted in the preservation of Box Canyon in the Hagerman Valley. On the other side of the environmental divide, Fereday singles out a successful defense of a mining claim in wilderness, in litigation that established new federal law pertaining to the Equal Access to Justice Act. That controversial mining claim was ultimately patented and then promptly purchased by the Forest Service, another result of Fereday’s efforts in this case.

Fereday cites several professional relationships as having a marked impact on his career. Bill Hillhouse, Greg Hobbs, and the late Clyde Martz were Fereday’s primary mentors at Davis Graham & Stubbs. During his time at Interior, Fereday cites John Leshy as a significant influence. As to his colleagues in Idaho, Fereday singles out Michael Creamer, Chris Meyer, Deb Nelson and Michael Lawrence, all attorneys in practice at Givens Pursley, as trusted and valuable colleagues in his areas of practice. “I have had the pleasure of working with some brilliant lawyers.”

Outside of the legal profession, Fereday says his main passion is playing guitar. “It’s the best kind of meditation,” says Fereday. Fereday also enjoys Nordic skiing with his wife and sons – both of whom have been national-level competitors – and trekking through Idaho’s great outdoors, whether hiking, road biking, or mountain biking.

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By Lindsey M. Welfley

Robert Chastain grew up in Boise and is a tried and true Idahoan. Chastain attended Borah High School and played baseball before attending Boise State University for his undergraduate education. Contemplating his next steps after receiving his undergrad from Boise State, Chastain took his father’s advice to find a career that would provide him with a “license to eat.” He decided between two of the more common options at the time – school teacher, or lawyer – choosing the latter. Chastain relocated to Utah to attend law school at the University of Utah S.J. Quinney College of Law.

During law school, Chastain was hired as an intern by Greg Bower, former Ada County Prosecutor. Chastain cites Greg as one of his mentors and role models: “Greg taught me the importance of going to work and showing up on time […] he gave me room to make my own decisions, to grow, to both succeed and fail.” Chastain received his juris doctorate in 1981 and returned to Idaho immediately thereafter for admission into the Idaho State Bar that same year. Chastain met his wife, Marilyn (also an Idaho attorney), a few years later in 1983 while she was working at the Boise City Attorney’s Office. They were married in 2000.

After relocating to Idaho post-law school, Chastain began working in the Ada County Prosecutor’s Office. He prides himself in his time as a prosecutor as it gave him the foundation on which he would later build a career in criminal defense. Chastain worked his way through the ranks and became a felony prosecutor by the time he left the Prosecutor’s Office. After his time at the Prosecutor’s Office, Chastain briefly worked for a small firm. He quickly determined that he did not enjoy civil law quite like he had enjoyed the criminal side of things. At that point, he ventured into opening his own solo practice, in which he has been practicing ever since.

Early on in his career, Chastain was introduced to another of his trusted mentors. Larry Scott was a public defender while Chastain worked at the Prosecutor’s Office and Chastain recalls one of the more important lessons he learned from Larry: “You knew when you talked to Larry that his word was gold. He said something was going to happen or he was going to do something and you could go to the bank on it.” This lesson on the value of being true to your word stuck with Chastain throughout his career and is a quality he admires in many other attorneys and colleagues. He says, “It’s a heck of a lot easier to practice law when you trust your opposition.”

In addition to mentors within the profession, Chastain speaks highly of his late father’s influence on his life. “My father was and always has been a huge influence on me. He instilled the idea that you’re going to have to work and support yourself – and he was right. Not a day goes by I don’t think about him.”

Chastain practices criminal defense at his small Boise firm Chastain Law Offices in downtown Boise. Over the course of his career, he has tried several high profile murder cases and is one of the few Idaho attorneys who is death penalty certified. Chastain has worked closely with attorney Deborah Kristal throughout his career and they have tried several controversial murder cases together.

Those who have known Chastain over the years admire him for his quiet control and ability to get along with everyone he deals with. A longtime friend and colleague of Chastain’s, Fourth District Magistrate Judge Michael Oths mentions that, in a legal genre that doesn’t get the recognition it deserves, Chastain is widely regarded as one of the best criminal defense attorneys around while consistently staying properly humble. Being held in such high regard by his friends and colleagues is just one measure of Chastain’s high reputation.

Outside of the office, Chastain enjoys “playing the horses” and has traveled around the country for several thoroughbred races and events. Chastain does his best to stay young, mentioning, “I still play old-guy softball with Brad Andrews and Mike Oths. We have a good time and I’ve done that for about 35 years.” He and Marilyn have kept to their roots and live in Boise; they have a black Labrador named Roz.

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By Christina Mott Hesse

Utilization of telehealth services is on the rise, particularly as health systems—and especially those serving rural populations—are thinking beyond the traditional, literal walls of their facilities. Telemedicine increases appropriate and timely access to medical services, especially in rural areas, and promotes improved health outcomes and less costly treatments.[i] Thirty-five of Idaho’s 44 counties are rural or frontier, often facing limited access to health-care services and challenges in recruiting and retaining local physicians. Hospital systems recognize the need to provide medical services in these more rural communities.

For example, Intermountain Healthcare operates a 24-hour telehealth center that provides 40 telehealth services to seven western states. St. Luke’s Healthcare System recently opened a 24 -hour Virtual Care Center, which provides telehealth services throughout Idaho and Eastern Oregon. Through its Virtual Care Center, St. Luke’s successfully piloted a unique Remote Patient Management program[ii] for home monitoring of patients living with chronic conditions.[iii]

As telehealth usage increases, we will likely see a natural increase in medical professional liability claims, medical malpractice claims, and other related litigation. Telehealth providers should be prepared to protect themselves from this exposure.^[iv]

Telehealth and Telemedicine: Expanding Access and Improving Outcomes

Telehealth, or the delivery of health-related care, services, education, and information via telecommunications technology, which includes video-conferencing, remote monitoring, electronic consults, and wireless communications, is becoming an increasingly widespread practice. Telehealth and telemedicine are often used interchangeably, but telemedicine is a more specific term referring to clinical care delivered by a licensed health-care provider at one location to a patient at another site by means of health information and telecommunications technologies. From video-conferencing with patients in remote locations to monitoring ICU patients from centralized command centers, telemedicine is increasing patient access, improving quality of care, and lowering health care costs.

Telehealth has immense potential to increasingly promote better patient care and faster access to medical services. According to a fairly recent industry report, the global telemedicine market is expected to be a $35 billion industry by 2020,[v] and an $86.7 billion industry by 2023.[vi] The American Telemedicine Association estimates a majority of hospitals now use some form of telemedicine, and the overall number of telemedicine video consultations is expected to increase from 19.7 million in 2014 to about 158 million by 2020—a 700 percent increase over a five-year period.[vii] Additionally, the Medicare Telehealth Parity Act of 2015 expanded telehealth coverage to Medicare beneficiaries to include both rural and urban areas, and to streamline the payment system.

Telemedicine providers vary in technological sophistication, and a wide variety of medical specialties are now common offerings of telehealth services. Because telehealth can be provided 24-hours per day from any location, it is often an optimal choice to those seeking care on an alternative basis to traditional physician clinical settings or hospital facilities, or for patients unable to access in-person services due to factors such as distance from providers or non-traditional work schedules.

Telehealth and Telemedicine Malpractice Risks

Studies have suggested that there is little difference between the care given in-person and the care given via telemedicine appointments,[viii] and medical malpractice-related claims substantiate that data. Further, state and federal government, as well as medical associations, including the American Medical Association (AMA), are encouraging and assisting telehealthcare. While there have been only a handful of reported telemedicine malpractice claims to date, this is likely due to the low number of telemedicine visits as compared to in-person visits. The low number of claims may also be due to liability suits being settled out of court and not reported and, when claims are settled, confidentiality agreements preventing any information from being disclosed. Nevertheless, it would be imprudent to ignore potential liability issues as telemedicine use continues to grow.

Theoretically, telemedicine tends to be low liability for several reasons. First, telemedicine physicians are more likely to deal with routine checkups and prescription-writing than complex, high-risk procedures. Additionally, rather than simple phone call consultations as would occur between on-call physicians and patients in years past, secure video chat platforms that replace these phone calls often provide a platform to capture notes from online visits, arguably leading to better documentation and less liability in the event a claim does arise.

Nevertheless, a number of potential issues exist that can lead to and influence future litigation, such as communication, system and facility telehealth requirements, informed consent, applicable standard of care, insurance coverage, licensing and credentialing, and data management and cybersecurity.

Communication

Communication is often at the root of medical malpractice claims. A 2015 study analyzing more than 23,000 medical professional liability cases concluded that as much as 30% of the cases studied involved communication difficulties.[ix] Of that 30%, 55% involved a provider-patient miscommunication. Miscommunication may result either where one party is not technologically savvy or where there are issues relating to technology malfunctions. Given the inherent, often complex, nature of medical malpractice claims, and that they often involve weighing a patient’s account of a situation against a treatment provider’s, increased miscommunication, due to the technological component of telemedicine, could further complicate these claims. Conversely, tele-ICU setups are uniquely primed to significantly reduce the risk of medical error because they provide constant, continuous exchange of patient information.

Interaction and Informed Consent

Flexible or undefined system requirements for telehealth combined with lacking in-person interaction can potentially lead to incorrect diagnoses or prescriptions.  For example, if a patient sends a picture of a physical impairment, such as a rash or distortion, poor picture quality could lead to an incorrect diagnosis, which, in turn, could be the basis for litigation. Practitioners need to ensure proper clinical evaluation of a patient occurs before prescribing medications, given early court holdings that review of a patient’s online questionnaire, without more, is insufficient to establish a doctor-patient relationship and to support prescribing medications.

Informed consent is often an issue in medical malpractice claims. Because of the absence of in-person interaction, it is imperative that telemedicine providers establish a clear and complete informed consent procedure. A best practice for this procedure would ostensibly involve a written form including the names, credentials, and locations of every involved healthcare provider; the names, credentials, and locations of any other staff that may help facilitate the telehealth service; and descriptions of every telehealth service that will be performed and the technology that will be used.

Standard of Care

With respect to negligence-based claims, geography plays a significant role, specifically in determining what standard of care is applied to judge a practitioner’s care and treatment. Some states, like Idaho, utilize a community-based standard of care, while others use a uniform state-wide standard of care or national standard of care. Technology enables people to communicate from anywhere; however, standards haven’t yet been explicitly set forth for physicians who give medical advice and virtual care across state lines. Since care is provided in a patient’s state, that state’s laws may well prevail. With the exception of Hawaii, Colorado, and Texas, most states have not yet determined a standard of care specifically applicable to telemedicine.

Additionally, the Roush v. Southern Arizona Ear, Nose & Throat[x] case involving an action for tortious slander against a defendant physician, who during a telemedicine consultation stated, in front of two medical assistants, that the plaintiff’s “problem was never an ear problem” but a “brain disorder” and that his “problem was all in his head,” underscores the notion that telemedicine practitioners are held to the same professional standard of care as practitioners providing care as similarly positioned practitioners without the use of telemedicine technologies.

Insurance

It would be advisable for physicians to seek, and insurers to provide, telehealth policies that allow for reporting of facts and circumstances that might lead to a claim, otherwise known as “incident reporting.” A policy with incident reporting language allows the insured to report potential claims or bad outcomes as soon as they become known to the insured party. A policy that allows incident reporting would prove helpful in telehealth cases given the lack of current legal precedent for these types of claims. After proper notice is given, even if the insured changes carriers before a written demand for damages should occur, the carrier would bear the burden for that claim. Insurers and physicians may also benefit from negotiating specifically how any sexual abuse claims and punitive damages are handled in medical professional liability policies for telehealth providers. Additionally, issues may arise where malpractice liability policies do not cover multiple states.

Licensing and Credentialing

Most telemedicine providers make reasonable efforts to ensure that a patient is treated by an appropriately licensed professional in the state where the patient is located at the time the telehealth services are provided. While many telehealth providers may be able to confirm patient location via geolocation data provided by the device or conferencing platform used by patients, that may not always be the case. One can envision a myriad of scenarios in which licensure issues could arise.

For example, a patient in a vehicle crosses state lines during a video consult, or a patient receives a video consult utilizing a virtual private network that actively conceals his or her true location, or a physician who is licensed in Idaho but resides in Oregon conducts a telehealth visit from home with a patient who lives in Idaho. Telehealth providers using traditional technology, such as a landline telephone, should confirm the exact patient location before matching the patient to a duly licensed professional. The licensed physician would also be wise to confirm the patient’s location. It would also behoove telemedicine providers to employ physicians and other professionals that are licensed in multiple states to help address these potential licensing concerns.

Healthcare providers should be aware that some liability policies exclude coverage if a healthcare provider is not appropriately licensed in the state in which the patient is located at the time virtual services are provided. Further, some medical professional liability policies may contain coverage exclusions for treatment rendered by an individual who fails to obtain the proper professional license in the state or locality in which the treatment was provided or coverage exclusions for criminal activity, which could be implicated if the practice of medicine without a proper license is deemed criminal in the jurisdiction where treatment is provided.

While current licensure requirements for practicing telemedicine across state lines vary among states, the majority still require a physician to be licensed in the state in which the patient is located. Nine states’ medical boards[xi] issue special licenses or certificates related to telehealth that allow an out-of-state provider to render services via telemedicine in a state where they are not located or allow a clinician to provide services via telehealth in a state if certain conditions are met. Some states have laws that do not specifically address telemedicine licensing but make allowances for contiguous states or for certain situations where a temporary license might be issued, provided the specific state’s licensing conditions are met. Idaho is one of the 25 states who have adopted the Interstate Medical Licensure Compact that allows the Interstate Medical Licensure Compact Commission to form an expedited licensure process for licensed physicians to apply for medical licenses in other states.[xii]

Data Management and Cybersecurity

It is axiomatic that medical information, including patient health information, is protected under a number of laws, including HIPAA, the Health Information Technology for Economic and Clinical Health Act, and the Child Online Privacy Protection Act. As is with any internet-based service, with telehealth there is the potential for data breaches, which may put patient information at risk of public exposure and subject telehealth providers to legal action. Telehealth providers and insurers should be actively aware of this risk and take steps to safeguard confidential and protected information from public disclosure. Additionally, telehealth providers must take extra precautions to not conduct telehealth sessions in areas where patient information could be overheard, seen, or otherwise interpreted by third-parties.

Telehealth and Telemedicine Precedent

As of this writing, the legal community has seen little precedent on telemedicine malpractice claims, compared to general medical malpractice actions. The main reason for this lack of precedent is that telemedicine is still a relatively new tool being used in the administration of health care services. Nevertheless, the lack of precedent is likely to be short-lived.

The majority of legal actions that have been brought against telehealth providers resulted from telemedicine practitioners prescribing medications over the internet, rather than from negligently administered care through telemedicine.

In Hageseth v. Superior Court of California,[xiii] a California court asserted jurisdiction over a Colorado-licensed physician criminally charged with practicing without a license where the physician prescribed a generic version of Prozac over the internet to a patient in California who then committed suicide. The doctor prescribed the medicine after the patient filled out an online questionnaire; this was the extent of the doctor-patient interaction. The California Court of Appeals held that California had jurisdiction over the case, even though the doctor never physically entered the state because the defendant intended his acts to have effects in California.

In U.S. v. Kanner,[xiv] the defendants owned and operated PharmaCom, an online prescribing company that allowed customers to receive non-controlled prescription drugs over the internet by answering questions on a medical questionnaire. Physicians never saw the patients, and there was no previous physician-patient relationship.

In U.S. v. Hernandez,[xv] a Florida physician administered non-controlled substances over the internet without previously examining the patient.

Procedural Concerns

Telehealth providers should also be aware of procedural concerns. Specifically, telehealth providers administering care across state lines may have to confront the issue of personal jurisdiction; that is, the state court’s ability to require a defendant (i.e. the physician) to appear in the home state of the plaintiff (i.e. the patient). Choice of law issues may also arise, and in telemedicine malpractice lawsuits, neither the defendant nor the plaintiff should automatically assume that the laws of the state where the case is being heard will automatically govern the case. Additionally, while physicians providing care via telemedicine have the same responsibilities and obligations to their patients as physicians providing in-person care, in situations where the telemedicine practitioner provides a medical consult to another physician at a distance, a physician-patient relationship is not typically established, which may pose unique situations should litigation arise.

Given the overall continuous upward trend in numbers of initiated medical malpractice claims, it is likely that the number of telehealth-related claims will also start to rise. Further, given provider shortages throughout the U.S., in both rural and urban areas, telemedicine has a unique capacity to increase and improve service to millions of new patients. With a little foresight and planning, the severity and complexity of associated legal issues may be reduced.

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[i] Marc Harrison, Telehealth is Improving Health Care in Rural Areas, Harvard Business Review, May 15, 2019, https://hbr.org/2019/05/telehealth-is-improving-health-care-in-rural-areas.

[ii] Mandy Roth, Got Rural? Go Virtual. St. Luke’s Did, Health Leaders (Sept. 11, 2018), https://www.healthleadersmedia.com/innovation/got-rural-go-virtual-st-lukes-did.

[iii] Eric Wicklund, New Telemedicine Center to Extend Connected Health Across Idaho,mHealthIntelligence (Aug. 28, 2018), https://mhealthintelligence.com/news/new-telemedicine-center-to-extend-connected-health-across-idaho.

[iv] See generally RNCOS, Global Telemedicine Market Outlook 2020, at 4.2.2, 4.2.4 (2015).

[v] MarketWatch, Healthcare Machine to Machine (M2M) Market Size is Projected to be Around US$ 35.0 Billion By 2020 (Aug. 10,2018), https://www.marketwatch.com/press-release/healthcare-machine-to-machine-m2m-market-size-is-projected-to-be-around-us-350-billion-by-2020-2018-08-10.

[vi] Transparency Market Research, Telemedicine Technologies and Services Market to reach US$ 86.7 Bn in 2023, GLOBENEWSWIRE (July 13, 2016), https://globenewswire.com/news-release/2016/07/13/855662/0/en/Telemedicine-Technologies-and-Services-Market-to-reach-US-86-7-Bn-in-2023.html.

[vii] Press Release, Tractica, Telehealth Video Consultation Sessions to Reach 158 Million Annually by 2020 (June 24, 2015), available at https://www.tractica.com/newsroom/press-releases/telehealth-video-consultation-sessions-to-reach-158-million-annually-by-2020/.

[viii] American Telemedicine Association, Examples of Research Outcomes: Telemedicine’s Impact on Healthcare Cost and Quality (April 2013), https://www.amdtelemedicine.com/telemedicine-resources/documents/ATATelemedicineResearchPaper_impact-on-healthcare-cost-and-quality_April2013.pdf.

[ix] Highlights: Malpractice Risks in Communication Failures (Crico Strategies 2015), available at https://www.youtube.com/watch?time_continue=70&v=trJ1DUaEIuk.

[x] No. 2 CA-CV 2008-0049, 2009 WL 368865, at *1 (Ariz. Ct. App. Feb. 13, 2009).

[xi] These nine states include Alabama, Louisiana, Maine, Minnesota, New Mexico, Ohio, Oregon, Tennessee (osteopathic board only), and Texas. See Center for Connected Health Policy, State Telehealth Laws & Reimbursement Policies, The National Telehealth Policy Resource Center, 10 (2018), https://www.cchpca.org/sites/default/files/2018-10/CCHP_50_State_Report_Fall_2018.pdf.

[xii] Id.

[xiii] See 150 Cal. App. 4th 1399, 1417 (2007).

[xiv] See No. 07-CR-1023-LRR, 2008 WL 2663414, at *1 (N.D. Iowa June 27, 2008).

[xv] See No. 07-60027-CR-ZLOCH/Snow (S.D. Fla. Oct. 4, 2007).

By Kelsey J. Nunez

Throughout the world, for-profit entities are declaring their commitment to “using business as a force for good”^{TM [i]} and matching their ability to generate profits with their desire to create social and environmental benefits. Businesses led by social entrepreneurs have gained market share and the attention of impact investors (i.e., investors who also seek to create social and environmental benefits).^[ii] But what happens when a social entrepreneur promises these benefits but fails to deliver?

But First, What’s a Benefit Corporation?

Benefit corporations were formed after decades of litigation and debate over the doctrine of “shareholder primacy.” When asked if corporate directors and officers may make decisions that did not seek to maximize shareholder profits, the prevailing view – put extremely simply – was no. Directors and officers have fiduciary duties to the shareholders, not external stakeholders who are affected by the corporation.

The terms “benefit corporation” and “B-Corp” are related but not synonymous.

Following some key judicial opinions, many states enacted “constituency statutes” that allowed corporate decision-makers to consider other constituencies (such as workers, the environment, suppliers, etc.) if they wanted to. But even in states with constituency statutes, the dominant ethos in corporate governance prioritized shareholder profit over other impacts. So advocates for corporate social responsibility continued to pursue alternatives.^[iii]

In 2006, the nonprofit organization B-Lab created a robust third-party certification system that allows entities to earn designation as a “Certified B-Corporation” (aka B-Corp).^[iv] Any entity form (LLC, C-corp, S-corp, partnership, etc.) can apply for the certification, which has no impact on the legal status of the entity. However, a corporation certified as B-Corp would still be subject to shareholder primacy constraints. Thus, B-Lab proceeded to create model legislation for states to establish a new corporate form with different fiduciary duties.

Since 2010, 34 states have enacted benefit corporation legislation, including Idaho in 2015.^[v] In a benefit corporation, directors and officers must create (or at least attempt to create) a “general public benefit” while considering and reporting on impacts to a broad range of issues and stakeholders. A “general public benefit” is “a material positive impact on society and the environment, taken as a whole, as assessed under a third-party standard, resulting from the business and operations of a benefit corporation.”^[vi]

In addition to making it quite clear that shareholders are just one of the many relevant considerations, the legislation created a “benefit enforcement proceeding” as the mechanism to ensure decision-makers are fulfilling the public benefit purposes.^[vii]

Benefit Enforcement Proceedings, Generally

The Idaho Benefit Corporation Act (the “Act”) establishes the benefit enforcement proceeding (“BEP”) as an exclusive and limited remedy for issues related to the “benefit” part of a benefit corporation. The BEP is the exclusive forum for claims of: (i) failure to pursue or create the required public benefit; or (ii) violation of an obligation, duty, or standard of conduct under the Act.^[viii] Only certain parties can initiate a BEP. The corporation may bring an action directly, and the following parties may bring one derivatively: (i) a person or group of persons that own at least 2% of the shares; (ii) a director; (iii) a person or group of persons that own at least 5% of the parent company; or (iv) anyone else specified in the articles of incorporation or bylaws.^[ix] No monetary damages may be sought unless otherwise stated in the articles of incorporation.^[x]

Interestingly, but perhaps not surprisingly, there are no judicial opinions involving a BEP in any state yet.^[xi] This doesn’t mean that the management of benefit corporations is conflict-free, of course. It just means that no conflicts have resulted in litigation that has made it through the court system. I’ve reached out to my colleagues in the Benefit Corporation Bar Association, and so far we have only heard of one lawsuit and it settled quickly. In Pirron v. Impact Makers, a founder and former CEO of a Virginia benefit corporation sued the board of directors to (among other things) reverse a sale of shares that threatened the philanthropic mission of the company. The 147-page, multi-count complaint was filed on May 3, 2019, and the settlement was announced about a month later.^[xii]

While we don’t have judicial guidance yet, it’s only a matter of time before one of these cases goes all the way. Practitioners in this field should understand what a BEP might entail so we can help our clients uphold the commitments they make when choosing this corporate form. What follows are some ideas about how a BEP could be handled, depending upon what went wrong.

Failure to Pursue or Achieve Public Benefit

Theoretically, the plaintiffs could argue that the decision-makers didn’t even try to create public benefit. I find this to be unlikely with respect to founders. Why would a group of people incorporate as a benefit corporation and opt-in to a legally enforceable scheme of additional fiduciary duties and reporting requirements if they weren’t even going to try?^[xiii] I speculate that a failure-to-pursue claim is more likely to apply to directors and officers who join the company down the road and who may not be as committed as the early managers. But because I’d like to think that someone who takes a job with a benefit corporation understands what they are expected to do, I think BEPs will focus more on failure to achieve rather than failure-to-pursue.

How would one prove “failure to achieve?” This raises so many questions. What if progress is being made but the results just need more time to be realized? When is it too soon to declare failure? And who gets to decide whether something failed or not? Expectations rarely match reality, and some people consider a partial win to be a success while others are never satisfied. The analysis of “failure” versus “success” needs some sort of objective metric if it is going to be litigated.

Creating and improving metrics to measure returns on investment in social and environmental benefits is a rapidly evolving industry. It’s not as easy as reviewing financial statements for profits and losses because the cost-benefit analysis involves more than money. The “right thing to do” is subjective, and the complex nature of cause and effect makes it challenging to assign a value to a social or environmental outcome. But social entrepreneurs and impact investors are not known for shying away from challenges! Many resources are available to measure Return on Investment (“ROI”) and analyze failure or success and these tools are getting more advanced.

Clearly, there is more than one way to skin a social entrepreneur. Anyone initiating, defending, or trying to avoid a BEP would benefit by analyzing the action or inaction at issue using the above resources.

Social ROI Metrics B-Corp Resource Library – contains case studies, templates, best practice guides, webinars, and live recordings to help create benefits and measure impacts to affected stakeholders.[xiv] B Impact Assessment – known as “the most credible tool a company can use to measure its impact on its workers, community, environment, and customers.”14 The Assessment has supportive analytical tools that benchmark data from over 50,000 businesses around the world using over 300 indicators.[xv] Impact Portfolio Assessment Reporting (“iPAR”) platform – created by the Global Impact Investment Network to collect and report data relating to capital deployed for social and environmental impact.[xvi] Bloomberg Professional Services – provides high-quality tools for integrating environmental, social, and governance data into investment portfolios.[xvii] Sustainability Accounting Standards Board – creates standards for identifying, managing, tracking, and reporting on investments in sustainability.[xviii] Edwards Mother Earth Foundation’s Impact Investment Study – the experiences of a portfolio dedicated to measurable social and environmental impacts.[xix]

Failure to Analyze Properly

Benefit corporation directors and officers have a standard of conduct that requires them to consider a host of groups and issues when making decisions. This list was developed in response to the case law upholding shareholder primacy in various fact patterns. Impacts on the shareholders must still be considered, but not in a vacuum.

The list of considerations includes: (i) shareholders; (ii) employees; (iii) subsidiaries and suppliers; (iv) interests of customers as beneficiaries of the general public benefit or specific public benefit purposes; (v) community and social factors, including those of each community in which offices or facilities of the benefit corporation, or its subsidiaries, or its suppliers are located; (vi) local and global environment; (vii) short-term and long-term interests of the benefit corporation, including benefits that may accrue to the benefit corporation from its long-term plans and the possibility that these interests may be best served by the continued independence of the benefit corporation; and (viii) ability of the benefit corporation to accomplish its general public benefit purpose and any specific benefit purpose.^[xx]

This “stakeholder governance” model requires some sort of structure for decision making to ensure that directors and officers engage in the required analysis before deciding to act or not act. A BEP brought for breach of this duty or violation of the standard of conduct would have to argue that the analysis wasn’t done at all or was done poorly. I advise my benefit corporation clients to document their discussion of these statutory factors in their meeting minutes, referencing whatever research they conducted to arrive at their decisions. The more controversial or costly the decision, the more detail should be preserved in the notes. Each individual should keep their own records as well. Then, if a BEP is brought for this reason, the minutes and other records can be used as evidence of the scope of analysis.

Concluding Thoughts

In my experience advocating for corporate social responsibility and supporting social entrepreneurs, I’ve met successful people who are incredibly passionate about using capitalism and entrepreneurship to “save the world.” I’ve also been told that benefit corporations are a millennial ego-stroking tactic. It is my position that there is a place for [almost] everyone in our complex economy. People who enjoy business, as usual, have plenty of options. Now, those who want to do the work differently have support as well. The community of businesses committed to the triple bottom line (i.e., social, environmental, and economic impacts) will continue to grow and work out the kinks together. The benefit enforcement proceeding creates a forum to ensure that those who choose to use business as a force for good can keep each other in check.

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[i] “Using business as a force for good” is the motto of Certified B Corporations. See https://bcorporation.net/.

^[ii] A Google search will reveal loads of information on the topic of impact investing. Treasure Valley locals can get involved with the Boise Impact Investing Group, hosted by Figure 8 Investment Strategies (https://figure8investing.com).

^[iii] For an analysis of case law and legislative history that inspired the benefit corporation, see generally Frederick H. Alexander, Benefit Corporation Law and Governance: Pursuing Profit With Purpose (2018) (especially Part 1: Shareholder Primacy and Its Discontents).

^[iv] The Certified B Corporation program uses a rigorous screening process that looks at governance, employees, supply chain, community involvement, and more. See https://bimpactassessment.net/.

^[v] Idaho benefit corporations are governed by both the Idaho Benefit Corporation Act at Idaho Code §§ 30-2001 et seq. and the Idaho Business Corporation Act at Idaho Code § 30-29-101 et. seq. Chapter 20 provides requirements that are in addition to or in lieu of the general business corporations laws in Chapter 29. Idaho Code § 30-2001(4). For an overview of the Idaho Benefit Corporation Act, see Kelsey Nunez & Mark Buchanan, New Corporate Form Provides More Options For Social Entrepreneurs, 60 Idaho Advocate 42 (August 2017). For a state-by-state status of benefit corporation legislation, seehttps://benefitcorp.net/policymakers/state-by-state-status.

^[vi] Idaho Code § 30-2002(5). Benefit corporations may also commit to one or more “specific public benefits” such as: (a) providing low-income or underserved individuals or communities with beneficial products or services; (b) promoting economic opportunity for individuals or communities beyond the creation of jobs in the normal course of business; (c) protecting or restoring the environment; (d) improving human health; (e) promoting the arts, sciences, or advancement of knowledge; (f) increasing the flow of capital to entities with a purpose to benefit society or the environment; or (g) conferring any other particular benefit on society or the environment. Id. at § 30-2002(9).

^[vii] If you’re wondering why someone would choose a corporate form with such fundamental diversions from generations of corporate practice, hold that thought. My next article will focus on entity selection for social entrepreneurs (teaser: transparency, accountability, and market differentiation). Here, I discuss what happens when someone who has chosen to be involved with a benefit corporation becomes disgruntled about its social and environmental performance.

^[viii] Idaho Code § 30-2011(1).

^[ix] Id. at § 30-2011(3).

^[x] Id. at §§ 30-2011(2), 30-2007(5)(b). Because there are no monetary damages, the remedy would likely be akin to specific performance where the court would instruct the defendants to act or not act.

^[xi] Last Westlaw search conducted July 1, 2019.

^[xii] The complaint is posted at https://dunlaponcloud.egnyte.com/dl/CzgQ5pAtMY/. For a summary, see John Reid Blackwell, Richmond-Based Impact Makers and Its Founder Settle Lawsuit, Richmond Times Dispatch (June 18, 2019), https://www.richmond.com/business/local/richmond-based-impact-makers-and-its-founder-settle-lawsuit/article_f591f6b8-3925-5c9e-9f81-210480a31a34.html?utm_medium=social&utm_source=email&utm_campaign=user-share.

^[xiii] Practice tip – make sure your clients know what a benefit corporation is before they decide to form one or invest in one.

^[xiv] B-Lab’s Resource Library is available at https://bcorporation.net/for-b-corps/resource-library.

^[xv] The assessment can be accompanied by a new data aggregation tool, B-Analytics. https://b-analytics.net.

^[xvi] More about iPAR is available at https://impacttoolkit.thegiin.org/impact-performance-assessment-and-reporting-ipar/.

^[xvii] See generally,https://www.bloomberg.com/professional/blog/integrate-esg-data-investment-portfolios.

^[xviii] See generally, https://www.sasb.org/.

^[xix] See generally, https://www.caprock.com/wp-content/uploads/2019/05/EMEF_Case-Study.pdf.

^[xx] Idaho Code § 30-2007(1). The Act does not establish a hierarchy, although the articles of incorporation may prioritize some factors over others if desired. Id. at § 30-2007(3).

By Kevin A. Griffiths

Introduction

Declaring bankruptcy requires a disclosure of all of your “assets,” and this requirement is broad, necessitating the identification of lawsuits both actual and potential.  Failing to identify pending lawsuits—or, on the more difficult front, potential lawsuits—can have dramatic consequences.  As a result, a pitfall that can befall any litigator arises when the client has declared bankruptcy immediately before, during, or after the injury that gave rise to the litigation.  At its most basic this implicates the equitable defense of judicial estoppel, which can prove a complicated issue to litigate.

While this issue is well settled for claims arising prior to the bankruptcy petition, questions remain concerning claims arising during (or after) the pendency of the bankruptcy. This article will explore two recent decisions from the Bankruptcy Court for the District of Idaho which provide valuable guidance on ownership of claims arising during the pendency of bankruptcy as well as the need to amend bankruptcy schedules to disclose those claims in order to avoid a subsequent judicial estoppel issue.

The Intersection of Bankruptcy, Estoppel, and Civil Litigation

“Judicial estoppel precludes a party from gaining an advantage by taking one position, and then seeking a second advantage by taking an incompatible position.”[i] The purpose of the doctrine is to protect the integrity of the judicial system by preventing a party from gaining an advantage through misrepresentations to the court.

This defense often arises in response to claims pursued by those who have been through bankruptcy and is based upon a debtor in bankruptcy’s obligation (or failure) to disclose all potential claims to the bankruptcy trustee. “In the bankruptcy context, a party is judicially estopped from asserting a cause of action not raised in a . . . plan [or petition] or otherwise mentioned in the debtor’s schedules or disclosure statements.”[ii]

Judicial estoppel “will be imposed when the debtor has knowledge of enough facts to know that a potential cause of action exists during the pendency of the bankruptcy but fails to amend his schedules or disclosure statements to identify the cause of action as a contingent asset.”[iii] This is because non-disclosure, by implication, would indicate that the claim has no value, which is a position that is inconsistent with later pursuit of the claim.[iv]

The Idaho Supreme Court’s decisions concerning judicial estoppel in the bankruptcy context have made clear that when a party is chargeable with knowledge of a claim prior to the filing of the bankruptcy petition, i.e., when an injury occurs prior to bankruptcy, judicial estoppel applies.[v] The issue, however, is more nuanced. The Idaho Supreme Court has yet to address the treatment of claims that arise after the initial filing of the bankruptcy petition and property schedule, but before discharge is granted. Fortunately, two recent decisions from the U.S. Bankruptcy Court for the District of Idaho shed some light on this subject: Wisdom v. Gugino (In re Wisdom)[vi] and Avery v. Mikkelsen (In re Mikkelsen).[vii] In re Wisdom lays a foundation, later built upon by In re Mikkelson, which suggests that the relevant inquiry in determining whether judicial estoppel applies turns on whether the claim would have belonged to the bankruptcy estate. Each of these cases, their interplay, and the conclusions to be drawn therefrom are discussed below.

In re Wisdom

The issue presented by In re Wisdom required the bankruptcy court to deal with a variety of claims asserted by the debtor against his legal counsel arising out of his representation during the bankruptcy to determine whether it had jurisdiction over those claims. The debtor’s claims were based upon three specific incidents—(1) liquidation of the debtor’s insurance policies, (2) sale or compromise of the debtor’s pro se lawsuits, and (3) counsels’ withdrawal from representation of the debtor—all of which the Court determined arose post-petition.[viii]

In the context of determining whether it had subject-matter jurisdiction over the malpractice claims asserted by the debtor, the bankruptcy court was required to determine whether those claims were sufficiently related to the bankruptcy case to render them “core” proceedings.[ix] The bankruptcy court found that the claims were unrelated, and it lacked jurisdiction over them, because they were based upon post-petition conduct and belonged to the debtor, not the bankruptcy estate, and could be pursued by the debtor under state law outside of the bankruptcy court. In making this finding, the Court found that the claims presented, arising as they did from post-petition conduct, “have no impact upon the administration of the bankruptcy case, or on property of the estate, or on the distribution to creditors. . . .”[x]

In re Mikkelsen

In re Mikkelsen builds on the concepts explored by In re Wisdom to determine ownership of claims against the debtors’ former attorneys arising from both pre- and post-petition conduct. The procedural history of In re Mikkelsen reflects a somewhat complicated invocation of the principles underlying judicial estoppel (although the term is never explicitly invoked). In re Mikkelsen was an adversary action against the debtors brought by their former attorneys in bankruptcy court seeking a determination that a state court malpractice filed against the attorneys was property of the bankruptcy estate and could not be pursued by the debtors in state court.[xi] This course of action, presumably, was pursued in lieu of simply raising the defense of judicial estoppel in the state court action, as the principle remains.

The claims against the debtors’ former attorneys were based upon alleged negligent preparation of a homestead declaration prior to the filing of the bankruptcy petition which allowed the trustee to successfully avoid the debtors’ homestead exemption claim. The debtors also alleged that their former attorneys had negligently advised them to pay off certain financial obligations prior to filing the bankruptcy petition, which resulted in the debtors being required to reimburse the bankruptcy estate for those payments.

In its decision, the bankruptcy court expanded on its reasoning from Wisdom by again focusing on the issue of whether the claims in question were property of the bankruptcy estate. The bankruptcy court found that even though it was dealing with claims based upon conduct that occurred pre-petition, that fact alone did not make the claims the property of the estate. Instead, the relevant inquiry was whether the cause of action in question accrued pre- or post-petition.[xii] In short, claims that have accrued prior to the filing of the petition are property of the bankruptcy estate while those accruing post-petition are not.

The bankruptcy court noted accrual is to be determined according to state law, which for negligence claims requires the occurrence of “some damage.”[xiii] Under this legal framework, the bankruptcy court determined that even though the debtors’ claims were based upon pre-petition conduct, the claims accrued post-petition because the debtors were not damaged until the trustee avoided their homestead exemption and successfully sought reimbursement for pre-petition debt payments. Thus, the bankruptcy court determined that the malpractice claims were not the property of the estate and could be properly pursued in state court, granting the debtors’ motion to dismiss.

Conclusion

Although neither In re Wisdom nor In re Mikkelsen use the term “judicial estoppel,” they are dealing with the underlying concept—benefit to the bankruptcy estate and its impact on a debtor’s ability to pursue claims arising around the time of filing the petition. Those decisions indicate that if the claim does not belong to the bankruptcy estate, non-disclosure is not per se inconsistent with later pursuit of the claim by the debtor.

In re Mikkelsen, in particular, indicates that the deciding factor is claim ownership, which is to be determined based upon when the cause of action accrued. That is, if the claim accrued post-petition, a debtor has a strong argument that judicial estoppel does not apply even if the claim was not disclosed on the debtor’s bankruptcy petition. This does not mean, however, that a debtor who has made the determination that a claim has not yet accrued should not disclose the claim to the bankruptcy court as the Idaho Supreme Court has made clear that there is a continuing “duty to disclose all assets and potential assets.”[xiv] Instead, these decisions show that one of the key factors to be taken into account when dealing with a judicial estoppel defense is whether the claim(s) in question had accrued at the time bankruptcy was declared.

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[i] A & J Const. Co. v. Wood, 141 Idaho 682, 684 (2005)

[ii] Id. at 685 (quoting Hamilton v. State Farm Fire & Cas. Co., 270 F.3d 778, 783 (9th Cir. 2001).

[iii] Id. at 686 (quoting Hamilton, 270F.3d at 784).

[iv] See id. at 688, 116 P.3d at 18 (“It is undisputed that A & J succeeded in persuading the bankruptcy court to accept its prior position, in which it failed to disclose any interest in either the real property subject to the dispute or the joint venture agreement. Now, A & J takes an inconsistent position by seeking to have the courts determine the existence, nature and extent of its interest in the nondisclosed real property and joint venture agreement.”).

[v] See, e.g., id. (holding that plaintiff seeking accounting of a joint venture was judicially estopped from doing so because he knew of the interests before his bankruptcy filing and did not disclose that interest to the trustee); see also Strong v. Intermountain Anesthesia, P.A., 160 Idaho 27 (2016) (finding that plaintiff was judicially estopped from pursuing undisclosed medical malpractice claim arising from procedure performed prior to bankruptcy); Mowrey v. Chevron Pipe Line Co., 155 Idaho 629 (2013) (finding that plaintiff was estopped from pursing personal injury claim arising from undisclosed pre-bankruptcy injury); McAllister v. Dixon, 154 Idaho 891 (2013) (finding that undisclosed malpractice claim based upon medical procedure performed over a year before the bankruptcy was barred by the doctrine of judicial estoppel.)

[vi] Wisdom v. Gugino (In re Wisdom), Case No. 11-01135-JDP, Adv. No. 13-06045-TLM, 2016 WL 872102 (D. Idaho Bankr. Mar. 7, 2016).

[vii] Avery v. Mikkelsen (In re Mikkelsen), Case No. 16-01489, Adv. No. 18-06018-TLM, 2018 WL 4182448 (D. Idaho Bankr. Aug. 30, 2018).

[viii] In re Wisdom, 2016 WL 872102 at *1. 

[ix] Id. at *1-2.

[x] Id. at *2.

[xi] In re Mikkelsen, 2018 WL 4182448, at *1.

[xii] Id. at *2.

[xiii] Id. at *3.

[xiv] A & J Const., 141 Idaho at 686, 116 P.3d at 16.