Opinion
Civil Action No. 98-D-2392
December 13, 2000
ORDER re: MOTIONS TO COMPEL and for PROTECTIVE ORDER and Setting Conferences
Plaintiff has brought claims of trademark and name infringement, false advertising and unfair competition under the Lanham Act, for common law conspiracy, unfair competition, unjust enrichment and misappropriation under Colorado law, and violations of the Colorado Consumer Protection Act. Defendants Purebred Pet Products and Paul and Bruce Brown raised the defenses of acting in good faith, estoppel and laches. Defendants Bostwick, Purebred Pet Products ("Pet Products") and Sunshine Mills ("Sunshine") have raised defenses of good faith, laches and acquiescence.
The matters before the court are Plaintiff's Motion to Compel [filed January 19, 2000]; Plaintiff's Motion to Compel [filed February 24, 2000]; and Defendants' Motion for Protective Order [filed March 28, 2000]. A hearing on the motions was held on April 12, 2000. Also before the court is Plaintiff's Renewed Motion to Compel 30(b)(6) Deposition. . .[filed April 24, 2000].
Relevant Background
According to plaintiff, defendant Purebred Pet Products applied for a trademark for "Purebred Meaty Treats" in September of 1991. Defendant Bruce Brown, the founder of Purebred Pet Products, Inc. ("Pet Products"), received a letter from the Patent and Trademark office dated January 6, 1992 which refused registration because of the likelihood of confusion with plaintiff's trademarks for "purebred". See Pl. January 19, 2000 Motion to Compel, at 3, Ex. 4. On December 17, 1992, plaintiff through counsel, sent a letter to Bruce Brown demanding that he cease and desist using the term "purebred" as a name and mark. Id. Ex. 5.
Plaintiff alleges that Bruce Brown and Pet Products continued to use the purebred name in connection with the sale of Pet Products. Bruce Brown wrote to his attorney Ted Lee stating he did not intend to change the name of his company, Purebred Pet Products. Id., Ex. 7, last page. Plaintiff argues Pet Products and Brown never stopped using the name and two further cease and desist letters were sent. Id., at 4, Exs. 8, 9.
In 1996, Pet Products, Paul Brown, Bruce Brown and Sunshine Mills agreed that Sunshine would purchase eighty per cent of the stock of Pet Products. The relevant Purchase Agreement stated that Sunshine had full access to all of Pet Products' records. Id., Ex. 10, bate-stamped pages 20-21. Sunshine was notified of Purebred Company's existence and of correspondence between Purebred Company and Pet Products. Id., Ex. 11. Sunshine further was notified of Pet Products' abandoned attempts to obtain a trademark for "Purebred Meaty Treats." Id., Ex. 12.
Following the stock acquisition of Pet Products, plaintiff claims that Sunshine admittedly used the term "purebred" on its food products, letterhead, web sites and sales literature and in association with the Sunshine name and mark. After plaintiff sent another cease and desist letter, plaintiff contends Sunshine and the other defendants continued to use the plaintiff's name and mark.
Plaintiff's Motions to Compel
In its first motion to compel, directed to defendants Purebred Pet Products, Paul and Bruce Brown, plaintiff alleges that defendants claim they acted innocently, and in good faith, and relied upon the plaintiff's inaction. See Pl. Mot. to Compel [January 19, 2000] at 5. Plaintiff contends that by raising those defenses, defendants have placed their actual knowledge [of infringement] and state of mind at issue. Id. Plaintiff argues that defendants thus have waived any attorney client or work product privileges. In addition, with respect to the attorney client privilege, plaintiff argues that the crime-fraud exception applies because Pet Products continued to use the "purebred" name after notice. Id., at 9.
Plaintiff seeks production of documents listed on defendants' privilege log. Id., see Ex. 1. Defendants have refused to produce the communications, asserting the attorney client and accountant client privileges. Plaintiff contends that the communications fall into the following categories:
(1) Category A — Communications with third parties not representing Pet Products. This category concerns communications with Arthur Andersen accountants; communications concerning the Star-Kist litigation (to show defendants' state of mind); correspondence involving Tadami and defendant Pet Products (regarding statements made concerning the quality of products sold under the "purebred" name); and communications with Conrad Pitts, an attorney for Sunshine. Plaintiff alleges the latter communications are not protected by the attorney client privilege until completion of the transaction in which Sunshine bought the stock of Pet Products.
(2) Category B — Documents with unknown authors or recipients — plaintiff claims there has been a waiver of any privilege because of the wholesale disclosure of documents in connection with Sunshine's due diligence relating to the purchase of Pet Products.
(3) Category C — Communications with accountants for Pet Products.
(4) Category D — Communications between Ted Lee and Bruce Brown, Paul Brown, Pamela Coe or Hank Moran — plaintiff contends these communications are discoverable because they concern transactions which took place before Sunshine purchased Pet Products; that any privilege was waived by Sunshine in connection with its due diligence related to the purchase of Pet Products, by assertion of the defenses of good faith, estoppel, laches and acquiescence, because of the crime fraud exception to the attorney client privilege and because defendants produced one item of privileged correspondence, the January 21, 1993 letter from Bruce Brown to Ted Lee. Pl. Motion to Compel, Jan 19, 2000 at 13. Plaintiff argues these documents are relevant to the defendants' state of mind while they continued to use the "purebred" name and mark with Sunshine or Pet Products products.
(5) Category E — Communications with Alan Kailor, Kerry Caughran and Frank Svetlik. Kailor was the attorney representing Pet Products during its purchase by Sunshine Mills. Plaintiff argues that any privilege as to Kailor's communications with Ted Lee has been waived by the assertion of the aforementioned affirmative defenses concerning defendants' state of mind while using the "purebred" name and mark. Plaintiff further argues that communications with Ted Lee go to the actual knowledge of the parties regarding the use of the "purebred" name and mark, and that any privilege nonetheless has been waived by disclosure of documents during Sunshine's due diligence prior to its purchase of Pet Products' stock.
(6) Category F — requests for audit responses to Pet Products attorneys — plaintiff argues these are not privileged because the documents come from defendants' accountants collecting information about Pet Products.
(7) Category G — Audit responses to Arthur Anderson. Plaintiff seeks the audit responses of Ted Lee and John Holzgraefe.
(8) Category H — Audit responses to Coopers and Lybrand in 1993. Plaintiff claims these responses from Ted Lee are relevant to the actual knowledge and defendants' state of mind in 1993. Plaintiff contends any attorney client privilege has been waived by Pet Products' unlimited disclosure of its records during the stock acquisition, by production of the January 21, 1993 letter from Bruce Brown to Ted Lee, and that the crime fraud exception to the attorney client privilege applies.
(9) Category I — communications after the stock acquisition dealing with packaging approval for Pup Corn, which plaintiff claims is an infringing product. Plaintiff claims defendants' good faith defense waives the attorney client privilege.
(10) Category J — Communications between Paul Brown and Laurence Brown, an attorney for Sunshine Mills.
(11) Category K — Communications between Bruce Brown and Pamela Coe and Jayme Huleatt. Plaintiff contends the privilege has been waived due to the stock acquisition and by authorizing attorney Jayme Huleatt to speak with a representative of Sunshine Mills prior to closing.
(12) Category L — Miscellaneous documents which plaintiff contends appear to involve third parties or accountants for which no privilege attaches
(13) Category M — June 14, 1999 privilege log, which concerns communications relating to Purebred Company. Plaintiff again contends any privilege has been waived by due diligence disclosure to Sunshine, by asserting affirmative defenses, by production of the January 21, 1993 letter, and that the crime fraud exception applies.
Plaintiff further requests the compelled production of audit responses as identified in Paul Brown's deposition testimony; the files of attorney Ted Lee as they relate to the Purebred Company, Ted Lee's files regarding use of the term Purebred and trademark application files, and, the Arthur Anderson files related to the Pet Products audit. Id. at 16-17. Plaintiff also requests further deposition testimony from Paul Brown who refused to answer certain questions on the grounds of the accountant client privilege, and further depositions which may be necessitated if the communications are ordered produced. Id. At 18.
In its Second Motion to Compel, directed to defendants Sunshine Mills and Alan Bostwick, plaintiff states that these defendants have raised defenses of good faith, laches and acquiescence. Plaintiff alleges it is entitled to all the information Pet Products gave Sunshine during its acquisition of Pet Products based on the testimony of defendant Paul Brown that Sunshine was provided information and an audit report from accountants who provided due diligence information to Sunshine when it was considering the purchase of Pet Products. Plaintiff maintains that Pet Products claims that it did not waive any privilege by giving documents to Sunshine, but that the information plaintiff requests goes to the defendants' state of mind before or during the acquisition of Pet Products and their intent and probable conspiracy in the alleged continuing use of plaintiff's mark and name. Pl. 2-24-00 Motion to compel, at 2-6.
In the second motion to compel, plaintiff seeks the files of Arthur Andersen and other professionals including Conrad Pitts with regard to their investigation of Pet Products in connection with the Sunshine Mills purchase, including audit response letters, audit reports, financial statements, notes to financial statements, reports concerning their investigation, correspondence and notes (id., at 7), and legal and accounting billing statements. Id. at 8. Plaintiff seeks trademark files, which defendant claims are protected by the attorney client privilege (id. at 11) and Pet Products corporate documents, which defendants claim are attorney client privileged. Plaintiff also seeks the Ted Lee files, the Pet Nutrition Center files, and files identified by Hank Moran in his deposition.
In its January 19, 2000 Motion to Compel, plaintiff argues that defendants have claimed the attorney client privilege for seventy-seven documents for which they cannot establish the author or the recipient. It contends that additional simple transmittal documents are also not privileged. Because Pet Products allowed Sunshine access to all of its records, including the trademark file of its attorney, Ted Lee, any of those documents are not privileged because they have been given to third parties, thus waiving the privilege. With respect to documents concerning communications with Arthur Anderson, plaintiff contends they are not privileged. Plaintiff argues there is no accountant-client privilege and if a privilege exists it has been waived because the communications concern a third party, or because the crime fraud exception applies.
Plaintiff repeats, in its second motion, that if there is an accountant-client privilege, it is inapplicable. Plaintiff contends that defendants cannot withhold documents claimed to be privileged when they are not listed on the privilege log, that any attorney client privilege has been waived because of third party communications in connection with Sunshine's acquisition of Pet Products; and finally, that any attorney client privilege has been waived because of the good faith, laches and acquiescence defenses raised.
Defendants' Arguments
Purebred Pet Products and the Brown defendants argue that the attorney client privilege applies, that the Colorado accountant-client privilege should apply to both federal and state claims, and that a successor corporation inherits its predecessor's attorney client privilege. They contend that because of the common interest rule, communications between two companies or between companies and third parties who share a common interest, do not waive the attorney client privilege with regard to Sunshine's acquisition of Pet Products. Defendants argue that raising affirmative defenses do not waive the attorney client privilege, unless the party has relied upon a specific communication with an attorney as the basis for its defense and that the crime fraud exception does not apply.
Defendants argue that the Star Kist settlement materials are not to be disclosed due to the confidentiality provisions of the settlement agreement itself and that Tadami nondisclosure materials are not be produced due to the confidentiality provisions of the Tandami nondisclosure agreement. These defendants maintain that any communications they had with Sunshine attorney Conrad Pitts during the acquisition by Sunshine are protected by the attorney client privilege.
Defendants argue that production of the January 21, 1993 letter did not waive the attorney client privilege because Sunshine cannot waive Purebred's privilege and that the crime fraud exception is inapplicable. Defendants further state that audit requests from corporate officers to attorneys are protected by the attorney client privilege and that an attorney's letter to the attorney's client's auditors does not waive the attorney client privilege or the work product doctrine.
Defendants Sunshine and Bostwick contend that many of the documents plaintiff seeks have already been produced. Certain of the other documents were also attached to these defendants' response. See, e.g., Ex. C. to Def. Sunshine and Bostwick Resp. to Motion to Compel. These defendants incorporate the arguments of the Pet Products and Brown defendants, and contend that some documents in their corporate attorney Pitts' file are protected by the attorney client privilege, while others are available as public records. Sunshine and Bostwick maintain that state of mind is not an element of trademark infringement and that therefore defendants' state of mind during the acquisition of Pet Products is irrelevant. Even if plaintiff were claiming intentional infringement, these defendants state, plaintiff would have to prove that defendants had the intent to derive benefit from the reputation or good will of plaintiff. These defendants suggest that failure to conduct a trademark search is insufficient evidence of willful infringement or intent to infringe and that plaintiff's "due diligence" argument is logically inconsistent because if Sunshine did not conduct due diligence, then it could not have been aware of plaintiff's marks and therefore could not have had any knowledge or intent to willfully infringe. These defendants argue that plaintiff has unilaterally attempted to put privileged information at issue and that even if at issue, the information sought is not even relevant under controlling law.
Analysis
Plaintiff has raised both federal and state law claims in this case. Assuming the Tenth Circuit applies federal privilege law to federal claims and state privilege law to state claims (see Sprague v. Thorn Americas, Inc., 129 F.3d 1355, 1368-69 (10th Cir. 1997); Hinsdale v. City of Liberal Kansas, 961 F. Supp. 1490-1493-94 (D. Kan. 1997)), the court looks to the federal common law of privilege for the federal claims. The Tenth Circuit has not addressed the issue of what law applies when a plaintiff brings both federal and state claims and federal and state law are in conflict.
Attorney Client Privilege
Both the federal common law and Colorado law recognize the attorney client privilege. "The purpose behind the attorney-client privilege is to preserve confidential communications between attorney and client." In re Grand Jury Subpoenas (United States v. Anderson), 906 F.2d 1485, 1492 (10th Cir.), cert denied, 119 S. Ct. 412 (1998). Under federal law, a document is protected by the attorney client privilege if it reveals a communication between a client and an attorney, made in order to obtain or deliver legal assistance, that was intended to be treated as confidential. See In re Grand Jury Subpoena, 697 F.2d 277, 278 (10th Cir.1983). The privilege is governed by the common law and is to be strictly construed. Trammel v. United States, 445 U.S. 40, 47, 50 (1980); In re Grand Jury Proceedings of John Doe v. United States, 842 F.2d 244, 245-46 (10th Cir.1988).
Where a corporate client is involved, "special problems" arise because, "[a]s an inanimate entity, a corporation must act through agents." Commodity Futures Trading Commission v. Weintraub, 471 U.S. 343, 348 (1985). Any privilege resulting from communications between corporate officers and corporate attorneys concerning matters within the scope of the corporation's affairs and the officer's duties belongs to the corporation and not to the officer. See In re Grand Jury Subpoenas (Roe v. United States), 144 F.3d 653, 658 (10th Cir. 1998); Upjohn Co. v. United States, 449 U.S. 383, 394-95(1981). A corporate officer may claim a personal privilege for communications with a corporate attorney when an attorney-client privilege exists between the corporate officer as an individual and the attorney. Id., Wylie v. Marley Co., 891 F.2d 1463, 1471-72 (10th Cir. 1989).
For state claims, the court looks to state law to define any applicable evidentiary privileges. Fed.R.Evid. 501; Wylie, 891 F.2d at 1471. Generally, the attorney-client privilege is the same as that recognized under federal law; the privilege protects communications between the attorney and the client, and the promotion of such confidences is to benefit the client. Losavio v. District Court, 533 P.2d 32 (Colo. 1975); Denver Tramway Co. v. Owens, 36 P. 848 (Colo. 1894).
Defendant Sunshine is an Alabama corporation. The test for application of the attorney client privilege is similar under Alabama law. See Def. Sunshine and Bostwick's Response, at 13-14.
An attorney-client relationship is established when it is shown that the "client" seeks and receives legal advice from a lawyer. People v. Bennett, 810 P.2d 661, 664 (Colo. 1991). "The relationship may be inferred from the conduct of the parties." Id. (citation omitted). Although § 13-90-107(1)(b) does not expressly so state, Colorado authority holds that the attorney-client privilege is for the personal benefit and protection of the client. See Losavio, 533 P.2d at 35. The privilege "extends to confidential communications by or to the client in the course of gaining counsel, advice, or directions with respect to the client's rights or obligations." Miller v. District Court, 737 P.2d 834, 837 (Colo. 1987) (footnote omitted) (citing Losavio, 533 P.2d at 35). There must be a showing that a person sought and received legal advice from the attorney concerning the legal consequences of the person's past or contemplated action. People v. Morley, 725 P.2d 510 (Colo. 1986). The attorney-client privilege not only precludes examination of a lawyer, but also prevents third-party access to any confidential matters communicated by or to the client in the course of gaining counsel, advice, or direction with respect to the client's rights or obligations. People v. Tippett, 733 P.2d 1183, 1192 (Colo. 1987).
As codified in Colorado, the attorney-client privilege is as follows:
(1) There are particular relations in which it is the policy of the law to encourage confidence and to preserve it inviolate; therefore, a person shall not be examined as a witness in the following cases:
(b) An attorney shall not be examined without the consent of his client as to any communication made by the client to him or his advice given thereon in the course of professional employment; nor shall an attorney's secretary, paralegal, legal assistant, stenographer, or clerk be examined without the consent of his employer concerning any fact, the knowledge of which he has acquired in such capacity.
§ 13-90-107(1)(b), 5 COLO. REV. STAT. (1999).
In contrast, the work product doctrine protects an attorney's thought processes if the document was prepared in anticipation of litigation by another party or that party's representative, and was intended to remain confidential. See, e.g., RTC v. Heiserman, 151 F.R.D. 367, 373 (D.Colo.1993); Fed.R.Civ.P. 26(b)(3);Colo. R. Civ. P. 26(a)(2).
The burden of establishing that a communication is protected rests with the party asserting the privilege. Colorado v. Schmidt-Tiago Constr. Co., 108 F.R.D. 731, 734 (D.Colo.1985); Clark v. District Court, 668 P.2d 3 (Colo. 1983).
The pleadings reveal that Purebred Pet Products and Sunshine Mills entered into acqusition negotiations. In the course of those negotiations, accountants audited Pet Products and a series of communications ensued between attorneys and principals of Sunshine and Pet Products and between various attorneys and the Arthur Andersen accounting firm. Attorney client communications during a merger or acquisition do not lose their protected status as attorney client privileged. See e.g. Hewlett-Packard v. Bausch Lomb, Inc., 115 F.R.D. 308 (N.D. Cal. 1987)(attorney's opinion letter concerning the validity and possible infringement of the plaintiff's patent to a nonparty with whom it was attempting to negotiate the sale of a business held to be attorney client privileged). Moreover, a successor corporation inherits the attorney client privilege of its predecessor. Commodity Futures Trading Commission v. Weintraub, 471 U.S. 343, 348 (1985); In re Grand Jury Subpoenas 89-3 89-4, 902 F.2d 244, 248 (4th Cir. 1990). Accordingly, both Pet Products and Sunshine may claim the attorney client privilege with respect to any communications with attorneys related to the acquisition. The attorney client privilege also extends to communications between Sunshine and its attorneys and Pet Products and its attorneys.
Waiver of the Attorney Client Privilege
A party asserting waiver of a privilege has the burden of establishing the waiver. In re Gibco, Inc., 185 F.R.D. 296, 300 (D. Colo. 1997). Here, defendants contend that the attorney client privilege attaches to legal information obtained by Pet Products which was then shared with Sunshine in connection with the acquisition. See Pet Products, et al Response to Motion to Compel, at 9. Plaintiff argues that Pet Products' disclosure to Sunshine waives the privilege because the disclosure was to a third party outside the attorney client relationship. The court disagrees.
The general rule is that the attorney client privilege may be waived if the substance of a privileged communication is disclosed to a third party, even inadvertently. In re M L Business Machine Company, Inc., 161 B.R. 689, 693 (D. Colo. 1993); United States v. Ryans, 903 F.2d 731,741 n. 13 (10th Cir) cert. denied, 498 U.S. 855 (1990). The privilege may be waived when the client voluntarily reveals the privileged information to another or an attorney does so with his consent. United States v. Bump, 605 F.2d 548, 4551 (10th Cir. 1979).
Similarly, the privilege may be waived under Colorado law. Law Offices of Bernard D. Morley v. MacFarlane, 647 P.2d 1215, 1220 (Colo. 1982). Any waiver must be supported by evidence that the privilege holder has by words or conduct, expressly or impliedly forsaken his claim of confidentiality with respect to the information in question. Miller, 737 P.2d at 838 (waiver of attorney client privilege by retaining psychiatrist). The burden of proving waiver is on the party seeking to overcome the privilege. Id.
The privilege may be waived by disclosing attorney-client communications to third persons who do not have a common interest with the holder of the privilege. Denver Post Corp. v. University of Colo., 739 P.2d 874 (Colo.App. 1987). However, disclosure to a third party sharing a common interest with the client does not waive the privilege. Metro Wastewater Reclamation District v. Continental Casualty Co., 142 F.R.D. 471, 476-77 (D. Colo. 1992).
Here, plaintiff argues that Sunshine's "due diligence" with regard to the acquisition of Pet Products resulted in the disclosure of certain information to third parties, including accountants, thereby waiving any attorney client privilege. Defendants raise the common interest doctrine, arguing no waiver occurs when two corporations communicate concerning matters which may be of common interest or in anticipation of joint litigation, relying upon Metro Wastewater.
The common interest rule has been applied to merger negotiations between two corporations, where merger discussions anticipated litigation in which the two corporations would have a common interest. Hewlett-Packard, 115 F.R.D. 308.
Here, defendant Pet Products' corporate officers engaged in conversations with their corporate attorneys, who in turn had discussions with Sunshine attorneys and corporate officers. Pet Products argues that as a potential seller, it had a duty to disclose the potential of litigation to the prospective purchaser, thus establishing a common legal interest between the seller and the buyer and thus the protection of the attorney client privilege. See Hewlett-Packard, 115 F.R.D. at 308-09.
The court finds that the exchange of information between Purebred and its officers and attorneys, and communications between the two entities and their attorneys was for the purpose of furthering the acquisition, which included Purebred's and Sunshine's common legal interest in defending against the possibility of plaintiff's claims under the Lanham Act, so that the attorney client privilege is not waived under the Hewlett Packard rationale; see also Metro Wastewater, 142 F.R.D. 471 at 476-477. Accordingly, documents submitted to Sunshine in connection with the acquisition, with the exception of accounting documents discussed below, will not be produced.
Under Colorado law as well, consultation with an attorney about the legal consequences of a proposed action establishes an attorney client relationship. Morley, 725 P.2d at 517.
Plaintiff also seeks communications about the Star Kist litigation. According to plaintiff, this litigation was occurring at the same time that Bruce Brown and Ted Lee were corresponding with the Purebred Company. Plaintiff seeks this information to show the state of mind of Bruce Brown and Pet Products as to the use of trademarks and trade names of others.
Pet Products was involved in a dispute with Tadami, which led to arbitration and finally, a settlement. Plaintiff also wants Tadami documents because, it argues, that dispute goes to the statements of defendants as to the poor quality of products they sold under the "purebred" name.
Plaintiff also argues that the information it seeks with regard to Sunshine's acquisition and the StarKist and Tadami litigation is discoverable because it goes to defendants' state of mind, as raised by the good faith defense. Raising this defense, according to plaintiff, waives any attorney client privilege. Pet Products and the Browns argue that plaintiff has not proved that these defendants have relied upon communications from counsel in raising their defenses, so that there has not been any waiver of the attorney client privilege. Sunshine agrees and further argues that intent is not an element of plaintiff's claims, so that the acquisition information is not relevant.
Implied waiver of the attorney client or work product privileges can occur when the privilege holder asserts a claim or affirmative defense which puts the privileged matter directly at issue. See, e.g., Rhone-Poulenc Rorer, Inc. v. Home Indemnity Co., 32 F.3d 851, 862-64 (3rd Cir.1994).
Under this "automatic waiver" rule, a waiver most often is found when a party affirmatively relies on privileged matter in asserting a claim or affirmative defense. See Frontier Refining Co.v. Gorman-Rupp Co., 136 F.3d 695, 697-700 (10th Cir. 1998) (analysis of approaches to determine whether a litigant has waived the attorney client privilege); FDIC v. Wise, 139 F.R.D. 168, 170-72 (D.Colo.1991).
Similarly, under Colorado law, a party impliedly waives the attorney client privilege with respect to a communication by placing in issue a confidential communication going directly to the claim or defense. Mountain States Telephone and Telegraph Co. v. DiFede, 780 P.2d 533, 543 (Colo. 1989).
Other courts have adopted a three factor test which includes relevance and vitality prongs. To establish an "at issue" waiver using this test, a plaintiff must show: 1) assertion of the privilege was the result of some affirmative act, such as filing suit or assertion of an affirmative defense, by the party claiming the privilege; 2) through this act, the party put the protected information at issue, and; 3) application of the privilege would have denied the opposing party access to information vital to his or her defense. See, Hearn v. Rhay, 68 F.R.D. 574 (E.D.Wash.1975).
In Frontier Refining, 136 F.3d at 7012, the Tenth Circuit did not expressly adopt the Hearn test, but did so impliedly, finding that the third prong of the test had not been met in the lower court's analysis. The District Court for the District of Colorado has rejected the automatic waiver rule plaintiff urges and applied the Hearn test in several decisions. See FDIC v. Wise, 139 F.R.D. 168, 172 (D.Colo. 1991) (J. Finesilver); Ryall v. Appleton Electric Co., 153 F.R.D. 660, 662 (D.Colo.1994)(J.Kane) (finding that this district had adopted the Hearn test); and Aull v. Cavalcade Pension Plan, 185 F.R.D. 618 (D. Colo.1998) (M.J. Shlatter).
In Motley v. Marathon Oil Co., 71 F.3d 1547 (10th Cir. 1995), the court rejected plaintiff's argument that the attorney client privilege was waived in an employment discrimination case. There, Motley claimed that Marathon waived the privilege by relying on advice of counsel "as an explanation for the employment actions in question." The court said:
To be sure, there is some authority that attorney-client communications cannot be used both as a sword and a shield, as when a party defends the conduct which is the subject of the suit by relying on advice of counsel. Here, however, Marathon did not attempt to justify its termination of Motley on the basis of advice of counsel. It did not claim that Motley was terminated because of a recommendation of counsel.
Motley, 71 F.3d at 1552.
Defendants have put the facts surrounding their affirmative defenses at issue. Specifically, Pet Products and the Brown defendants answered plaintiff's complaint and raised, among others, the defenses of good faith, use in good faith under 15 U.S.C. § 15(b)(4), use without knowledge of the registrant's prior use under 15 U.S.C. § 115 (b)(5), and functional use of the mark under 15 U.S.C. § 115(b)(8). See Pet Products, et al, Answer at 5. Sunshine and Bostwick have raised, among others, the defenses of laches, and use of the mark without knowledge of the registrant's prior use under 15 U.S.C. § 1115(b)(5). By raising these defenses, defendants have injected into the controversy their knowledge with respect to use of the "purebred" name and mark, and their state of mind concerning the good faith defense, making these issues relevant to the litigation. However, usually, it is not until a client places the advice of counsel at issue by describing a communication that forms the basis of its defense, or the advice of counsel is used to prove that defense, that the attorney client privilege is waived. See, e.g., In re Gibco, 185 F.R.D. at 299; DiFede, 780 P.2d at 544.
Here, none of the defendants has alleged that reliance on any of the raised defenses is the result of an attorney's advice or because of an attorney's specific communication. Notably, in Rhone Poulenc, 32 F.3d 851, a case plaintiff relies upon, and which has been cited for the "automatic waiver" rule, the court expressly said that "a party does not lose the privilege to protect attorney client communications from disclosure in discovery when his or her state of mind is put in issue in the action." Rhone-Pulenc, 32 F.3d at 863-64(internal citations omitted). Defendants have not put the protected information at issue, as required by Hearn. Rather, the plaintiff is attempting to put the protected information at issue by claiming that it is relevant to defendants' defenses. Plaintiff thus fails to meet the second prong of the Hearn analysis.
Further, plaintiff has not met the third Hearn prong by showing that access to defendants' attorney client privileged communications is vital to its defense. Plaintiff has been able to depose defendants about their defenses and has been able to obtain the facts upon which defendants rely in support of their defenses. It is thus able to ascertain the basis and potential proof of defendants' defenses from non-privileged communications and testimony. Defendants do not rely upon an attorney client privileged communication as proof of a defense. At most then, the attorney client communications at issue are only incidental to this lawsuit. See Ryall, 153 F.R.D. at 663. Absent proof that any defendant has stated reliance upon a specific attorney-client communication as the basis for or proof of its defense, or proof that the information sought is vital to its defense, plaintiff is unable to meet the requirements of the Hearn test and cannot sustain its burden to prove waiver of the attorney client privilege. Except as further addressed in this Order, attorney-client privileged documents or communications plaintiff seeks will not be produced.
Plaintiff next argues that production of the January 21, 1993 letter from Brown to attorney Lee waives the attorney client privilege. Defendants respond that the document was produced by Sunshine's attorney. Defendants argue that although Sunshine acceded to the attorney client privilege held by Pet Products in connection with the acquisition, Sunshine, through its attorney, did not have the authority to waive Brown's individual right to the attorney client privilege. These defendants maintain that they expressed their opposition to the disclosure immediately after it was made. (See Def. Pet Products, et al. Resp. to Pl. 1-19-200 Motion to Compel, at 26-28.
Defendants Pet Products and the Browns contend that upon receiving notice of the disclosure, they immediately wrote to Sunshine`s attorneys, referring to Exhibit G of their Response to Plaintiff's January 19, 2000 Motion to Compel. However, Exhibit G, as presented to the court, is a letter from attorney Kurt Lewis to John Mann, attorney for Sunshine, concerning the Battaglia deposition. This document appears to have nothing to do with the disclosure of the Brown-Lee letter.
The attorney client privilege may be waived in a number of ways. See Metro Wastewater Reclamation District, 142 F.R.D. at 471 (D. Colo. 1992). The privilege is personal to the client and may only be waived by the client. See e.g. Losavio, 533 P.2d 32.
The subject letter from Bruce Brown, on Purebred Pet Products' letterhead, is addressed to attorney Ted Lee and states:
This is in reply to John Reilly's letter of January 18th in reference to the PUREBRED mark #1,625,109: Mr. Mike Edwards, the owner of Purebred Company, Inc., and I talked about six months time to flush out all of the old product and bags that have not been converted into finished goods. We did not talk about ninety days. We are going to be completely out of film and product in February. To accommodate Mike Edwards, new artwork, plates, and dies are being made at a cost of about $8080. In my opinion, there is no chance that the retail customer would ever confuse these two companies. He makes dried dog food that is sold in large bags by the pound; whereas we make a small treat that is sold by the ounce. Further, there is absolutely no resemblance in his artwork and ours. Frankly, I believe we could win this one in court, but I would rather switch than fight at this point in time. When I called Mike Edwards to ask if I could meet with him, I didn't expect to run into a conflict. In any event, we are doing what I told him we would do, i.e., remove any reference to Purebred on the front of the package; however, I am not required to change the name of my company, nor do I intend to do so.
See Pl. 1-19-2000 Motion to Compel, Ex. 7, last page.
The court finds the letter to be an attorney client privileged communication because it is written from Brown to his attorney, states facts about his conversations with plaintiff's owner, and discusses the then-current or anticipated litigation with Purebred Company. See In re Grand Jury Subpoena, 697 F.2d at 278 (a document is protected by the attorney client privilege if it reveals a communication between a client and an attorney, made in order to obtain or deliver legal assistance, that was intended to be treated as confidential).
The Pet Products and Brown defendants argue that Sunshine's attorney cannot waive Brown's individual privilege to communicate with his attorney by producing the letter. Plaintiff responds that the letter was provided to a third party, Sunshine, and that there was no attempt to keep it confidential. As such, plaintiff argues, Brown has waived the attorney client privilege and disclosure of materials on the same subject matter is warranted.
The attorney client privilege attaches to corporations as well as to individuals. Upjohn, 449 U.S. 383; In re Investment Bankers, Inc., 30 B.R. 883, 886 (D. Colo. 1983). This is because a corporation, as an inanimate entity, must work through agents. Thus, an individual empowered to act on behalf of the corporation may waive the corporate attorney client privilege. Weintraub, 471 U.S. at 348. Notwithstanding, any privilege resulting from communications between corporate officers and corporate attorneys concerning matters within the scope of the corporation's affairs and the officer's duties belongs to the corporation and not to the officer. In re Grand Jury Subpoenas (Roe and Doe), 144 F.3d at 658.
Here, Brown was acting in his capacity as an officer of Pet Products when he wrote to his attorney on Pet Products letterhead about a Pet Products problem with plaintiff, which led to the instant litigation. Brown argues that Sunshine's attorney did not waive Brown's individual attorney client privilege, as contrasted with Brown's authority as an officer of the corporation to waive Pet Products' attorney client privilege.
There is no indication from the document presented to the court that Brown was acting in any capacity other than as an officer of Pet Products when he communicated to attorney Lee. The letter expressly concerns a corporate dispute with the plaintiff here and does not set forth any communications with the attorney concerning non corporate matters. Brown thus has no standing to assert an individual attorney-client privilege. After the Sunshine acquisition, because the attorney client privilege passed to Sunshine, Brown further may not assert Pet Products' corporate attorney client privilege with respect to communications made to Pet Products' attorneys prior to Sunshine's acquisition. See Weintraub, 471 U.S. at 349.
The attorney-client privilege is lost if the client discloses the substance of an otherwise privileged communication to a third party. United States v. Bump, 605 F.2d 548 (10th Cir.1979). "[T]he confidentiality of communications covered by the privilege must be jealously guarded by the holder of the privilege lest it be waived. The courts will grant no greater protection to those who assert the privilege than their own precautions warrant." In Re Sealed Case, 877 F.2d 976, 980 (D.C. Cir.1989), as cited in United States v. Ryans, 903 F.2d 731, 740-41(10th Cir. 1990). Any voluntary disclosure by the client is inconsistent with the attorney-client relationship and waives the privilege. United States v. Bernard, 877 F.2d 1463, 1465 (10th Cir. 1989).
The question is whether the client, here Brown, voluntarily waived Pet Products' privilege when Sunshine inherited the privilege. It is clear that the client waives the privilege, not the attorney. In re Wyoming Tight Sands Antitrust Cases, 1997 WL 13812, *3 (D. Kan. 1987). There is no evidence that Brown voluntarily waived the attorney client privilege when Sunshine's attorneys produced the January 21, 1993 letter. Indeed, Brown's defense attorneys in this matter assert that, although the letter is not marked "confidential" in any way, they objected to Sunshine's production of the document immediately. There is no indication from the record that Brown gave his consent to waive the privilege. While "[the client's offer of his own or the attorney's testimony as to a specific communication to the attorney is a waiver as to all other communications to the attorney" (In re Sealed Case, 676 F.2d 793, 809 (D.C. Cir. 1982), "because an attorney cannot waive the attorney-client privilege without the client's consent, production of privileged documents by an attorney [even] under court order does not necessarily constitute a waiver of the privilege." In re Grand Jury Proceedings (Vargas), 723 F.2d 1461, 1466 (10th Cir. 1983) (internal citations omitted). Under Vargas, the court finds that Brown has not waived the attorney client privilege with respect to the January 21, 1993 letter or as to all communications between Pet Products officers and their attorneys concerning the facts and claims made in the instant case.
Crime Fraud Exception to the Attorney-Client Privilege
Plaintiff argues that the crime/fraud exception to the attorney client privilege applies. Purebred Company claims that the January 21, 1993 letter from Bruce Brown to attorney Ted Lee, in which Brown states that he would not stop using the name "purebred," is evidence of a crime under 18 U.S.C. § 2320.
The Section reads:
§ 2320. Trafficking in counterfeit goods or services (a) Whoever intentionally traffics or attempts to traffic in goods or services and knowingly uses a counterfeit mark on or in connection with such goods or services shall, if an individual, be fined not more than $2,000,000 or imprisoned not more than 10 years, or both, and, if a person other than an individual, be fined not more than $5,000,000. In the case of an offense by a person under this section that occurs after that person is convicted of another offense under this section, the person convicted, if an individual, shall be fined not more than $5,000,000 or imprisoned not more than 20 years, or both, and if other than an individual, shall be fined not more than $15,000,000. (b) Upon a determination by a preponderance of the evidence that any articles in the possession of a defendant in a prosecution under this section bear counterfeit marks, the United States may obtain an order for the destruction of such articles. (c) All defenses, affirmative defenses, and limitations on remedies that would be applicable in an action under the Lanham Act shall be applicable in a prosecution under this section. In a prosecution under this section, the defendant shall have the burden of proof, by a preponderance of the evidence, of any such affirmative defense. . . (e) For the purposes of this section — (1) the term "counterfeit mark" means — (A) a spurious mark — (i) that is used in connection with trafficking in goods or services; (ii) that is identical with, or substantially indistinguishable from, a mark registered for those goods or services on the principal register in the United States Patent and Trademark Office and in use, whether or not the defendant knew such mark was so registered; and (iii) the use of which is likely to cause confusion, to cause mistake, or to deceive; or (B) a spurious designation that is identical with, or substantially indistinguishable from, a designation as to which the remedies of the Lanham Act are made available by reason of section 220706 of title 36;18 U.S.C. § 2320 (2000).
Where the presumptions of the attorney client privilege and the work product doctrine have attached, a person seeking to overcome the privilege under the crime-fraud exception must make a prima facie showing that an attorney was retained in order to promote intended or continuing criminal or fraudulent activity. In re M L Business Machine Co., Inc., et al. vs. Bank of Boulder, 167 B.R. 937, 941 (D.Colo. 1994). To subject the attorney-client communications to disclosure, they must actually have been "made for the purpose of getting advice for the commission of a fraud or a crime." U.S. v. Zolin, 491 U.S. 554, 562-63 (1989). A court decides, on the basis of the submissions of the challenging party, whether a "factual basis is present to support a good faith belief by a reasonable person that [the privileged] materials may reveal evidence of a crime or fraud." In re M L Business Machine Co., Inc., et al., 167 B.R. at 941. If the court makes an initial determination that the crime-fraud exception could apply, the court then determines whether to conduct an in camera review of all documents for which the privilege is claimed. Id.
The standard is the same under Colorado law in that "the judge should require a showing of a factual basis adequate to support a good faith belief by a reasonable person" that a fraud has occurred or an attorney was consulted for the purpose of committing a crime before conducting an in camera review. Caldwell v. District Court, 644 P.2d 26, 33 (Colo. 1982).
Plaintiff here argues that Bruce Brown allegedly committed fraud when he indicated that he planned to change the name of his product when he never intended to do so. Plaintiff then argues that all Pet Products communications with attorney Ted Lee are therefore subject to the crime fraud exception to the attorney client privilege. Brown contends that since Sunshine produced the document, Brown has not waived the attorney client privilege. Brown further argues that plaintiff was informed that the name of Brown's product, Purebred Meaty Treats, would be changed to eliminate the use of the term "purebred," but that Brown never told anyone that he intended to change the name of his company, Purebred Pet Products.
There is no evidence in the parties' submissions that Brown's statement is false. Further there is no evidence in the record to support a good faith belief that, simply because the letter was sent to an attorney, Brown had consulted attorney Lee for the purpose of committing a future crime. The record only shows that Brown was not inclined to change the name of his company. Whether Brown was or was not going to change the name of his company is irrelevant to whether Brown continued to use the term "purebred" on his products or otherwise intentionally infringed upon plaintiff's trade name or trademark. Counsel argue over the sequence of events and what happened with regard to use of the term "purebred." These arguments go to proof of the infringement case, which must be resolved by the trier of fact. Thus, plaintiff has failed to establish a prima facie case that the Lee documents withheld establish either a fraud or that a crime was anticipated. The crime-fraud exception to the attorney client privilege is inapplicable.
Plaintiff also requests copies of billing statements. To be discoverable, billing statements must be reasonably calculated to lead to the discovery of admissible evidence. Fed.R.Civ.P. 26(b)(1). Western Gas Processors, Ltd. v. Enron Gas Processing Company, 1989 WL 20529 *8 (D. Colo. 1989) (internal citation omitted). Attorney invoices requesting payment for unspecified services are not privileged. On the other hand, billing records of attorneys are subject to the attorney-client privilege to extent that they reveal litigation strategy and/or nature of services performed. See Fidelity and Deposit Company of Maryland v. McCulloch, 168 F.R.D. 516, 523 (E.D. Md. 1996) (internal citation omitted); Champion International v. International Paper Company, 486 F. Supp. 1328, 1330 n. 1 (N.D. Ga. 1980). Because the invoices have not been presented to the court, it is not possible to determine whether they are relevant or likely to lead to the discoverability of admissible evidence. If plaintiff continues to seek production of legal invoices, defendants shall produce them to the court for in camera inspection.
Accountant Client Privilege
It is well settled that there is no confidential accountant-client privilege under federal law. Furthermore, in federal cases a state created accountant-client privilege is not recognized. United States v. Arthur Young, 465 U.S. 805, 817 (1984) (internal citation omitted); Couch v. United States, 409 U.S. 322 (1972); In re Grand Jury Proceedings, 658 F.2d 782, 784 (10th Cir.1981); Skoog v. United States 1994 WL 774504 *2 (D. Colo. 1994).
Plaintiff argues that the Arthur Anderson documents are not privileged. Arthur Anderson was the accounting firm that Sunshine Mills sent to Purebred Pet Products to perform an audit in connection with the purchase. See Bostwick depo., Pl. 1-19-00 Motion to Compel, Ex. 16 at 37-38. However, plaintiff claims there is no evidence that Arthur Anderson was actually Sunshine's accounting firm. Pl. 1-19-00 Motion to Compel at 11. Plaintiff also seeks accounting records of Jessup, and Coopers and Lybrand, other accountants whom Purebred employed prior to the Sunshine acquisition. Finally, plaintiff requests documents relating to the testimony of Lowell Goode, a certified public accountant expert who testified for Purebred Pet Products in the Tadami dispute and arbitration.
Defendants Pet Products et al respond that Arthur Andersen was Pet Products' accounting firm, hired to prepare a certified set of books to facilitate the purchase by Sunshine Mills. These defendants contend that the Colorado accountant-client privilege should be applied to all of plaintiff`s claims, including the Lanham Act claims. These defendants argue that the accountant client privilege is inherited by Sunshine as a result of the acquisition, analogizing case law holding that a successor corporation accedes to the attorney client privilege formerly held by its predecessor. Def. Purebred Resp. to motion to Compel, at 14. Defendants contend that all accounting documents sought are protected by the accountant-client privilege, including the Goode materials.
The court declines to extend the Colorado accountant-client privilege to plaintiff's federal claims under the Lanham Act. Plaintiff argues that the accounting information may lead to the discoverability of admissible evidence as to defendants' defenses under the Lanham Act. The court agrees and finds that the accounting information is relevant to plaintiff's Lanham Act claims. Accordingly, federal law applies which does not recognize an accountant-client privilege.
Notwithstanding, the attorney client privilege may attach to a portion of the accounting materials plaintiff seeks. A client does not automatically waive his attorney-client privilege by turning confidential documents over to his accountant. If the accountant is consulted in connection with the client's obtaining legal advice, the privilege extends to cover confidential documents in the accountant's possession. If the documents were turned over to the accountant for reasons totally unrelated to seeking legal advice, the accountant is viewed as an unrelated third party and the attorney-client privilege as to these formerly confidential documents is waived. See Aull, 185 F.R.D. 618, 628 (internal citations omitted).
This court has set forth the applicable test to determine whether an accountant's file is privileged under the attorney client privilege, as follows: "[i]nformation exchanged with the accountant is protected if it is shown that: 1) The accountant was consulted, in confidence, for the purpose of obtaining legal advice from the lawyer, and; 2) The communications between the accountant, client, and the lawyer are reasonably related to the purpose of obtaining confidential legal advice from the lawyer." Aull, 185 F.R.D. at 629; see also Gottlieb v. Wiles, 143 F.R.D. 241 (D. Colo. 1992).
The court has reviewed all of the documents submitted under seal by Purebred Pet Products and the Brown defendants. Sealed Exhibits B, E and F contain Arthur Andersen, Jessup and Coopers and Lybrand accounting documents. All of the documents in Exhibits E and F appear to be unrelated to the claims in this case, but as they concern the financial status of Purebred for the relevant time, they may lead to the discovery of admissible evidence under Rule 26(b), Fed.R.Civ.P. Exhibit B, the Arthur Andersen documents, are relevant to the claims in this case. Exhibit B contains a letter from an attorney concerning the status of the Tadami dispute and a letter from another attorney in which no information about pending legal matters is given. Exhibit F contains one audit response letter from an attorney which concerns the StarKist litigation. The court cannot discern, from the information presented, whether Pet Products or Sunshine consulted any accountant for the purpose of obtaining legal advice. Sunshine and Pet Products thus have not met their burden of proving that any privilege applies to documents claimed to be privileged which were sent to Pet Products' or Sunshine's accountants. Accordingly, the documents are not protected by the attorney client privilege or the work product doctrine and the Arthur Andersen audit, and the accounting files of Jessup and Coopers and Lybrand will be produced.
Plaintiff seeks information from Lowell Goode, a certified public accountant, who was Pet Products' expert in a dispute and arbitration with Tadami, Inc., presumably because he has information going to defense of defendants' claims of good faith. Defendants argue that Goode's expert analysis is protected from disclosure under the state accountant-client privilege.
While an accountant client privilege does not apply to the Goode materials, documents produced by an accountant in anticipation of litigation and under the direction of an attorney have been protected by work product immunity. In this regard the Supreme Court has made it clear that the work product doctrine protects "material prepared by agents for the attorneys as well as those prepared by the attorney himself." United States v. Nobles, 422 U.S. 225, 239 (1975). Communications from Purebred attorneys to Goode thus may be protected by the work product doctrine codified in Rule 26(b)(3), Fed.R.Civ.P. and the attorney client privilege.
The court is mindful of those decisions which permit discovery of a testifying expert's entire file, including communications from attorneys to the expert, for purposes of effective cross examination of the expert. See e.g. U.S. Energy v. Nukem, 163 F.R.D. 344, 347 (D. Colo. 1995). Goode has not been endorsed as an expert in this case.
No documents were submitted for the court's review concerning Goode so that it was not possible to determine whether some of the documents may be protected under the work product doctrine, if they were created at the direction of Purebred's attorneys in anticipation of the Tadami arbitration. A review of the privilege log indicates that some of the documents are from Pet Products' attorneys, some are from Pet Products' attorneys to Goode and copied to Pet Products officers, others are between Goode and Pet Products' officers or employees, and others are notes or documents or reports concerning Goode's testimony in the Tadami matter. Communications between Pet Products officers and employees and Goode and documents related to the Tadami arbitration are not protected by any privilege, unless they were specifically created for purposes of the Tadami litigation at the direction of Pet Products' attorneys. If the parties are unable to resolve which Goode documents are protected from disclosure and which are not, they shall be submitted to the court for in camera review.
ORDERS
Accordingly, for the reasons stated herein, it is hereby
ORDERED that Plaintiff's Motion to Compel [filed January 19, 200] is granted in part and denied in part. It is further
ORDERED that Plaintiff's Motion to Compel [filed February 24, 2000] is granted in part and denied in part. It is further
ORDERED that Defendants Brown et al's Motion for Protective Order [filed March 28, 2000] is granted in part and denied in part.
It is further
ORDERED, that within ten (10) days of this order, with reasonable costs assessed to plaintiff, defendants shall produce to plaintiff, under the Protective Order in place in this case, the following, if they are within any defendant's possession or control, and if they have not been previously produced:
The Arthur Andersen audit file.
The accounting files of Jessup and Coopers Lybrand.
Letter from James Hull to Paul Brown.
Billing statement from Cairnerio, et al.
Goode documents except correspondence from Pet Products attorneys.
Audit letter responses to Arthur Andersen as identified by Paul Brown in his deposition.
Other requests for and audit responses in accountant files.
Communications with Pamela Coe, who, because she was not an officer of Purebred Pet Products, is not entitled to raise the attorney client privilege.
Purebred Pet Products corporate documents, to which no privilege attaches.
Letter from Svetlik to Rice, which defendants have agreed to produce. See Def. Brown et al Response, at 33.
It is further
ORDERED that plaintiff`s counsel may review Sunshine consumer hotline documents at its corporate headquarters in Alabama or pay reasonable copying costs to have the documents copied and delivered to plaintiff's counsel.
It is further
ORDERED that plaintiff may attempt to subpoena StarKist settlement documents and the Tandami nondisclosure agreement directly from StarKist and Tadami. If a court order is required, plaintiff may apply to the court in the district where each company has its principal place of business. It is further
ORDERED that defendants shall not produce the following documents:
StarKist settlement documents, because the parties contractually agreed to keep the settlement and settlement negotiations confidential.
Tadami nondisclosure agreement, in which the parties agreed to nondisclosure.
Attorney communications with Goode, which are protected by the work product doctrine.
Attorney communications concerning the Star-Kist litigation, which are protected by the attorney client privilege, which has not been waived.
Attorney communications involving Tadami and defendant Purebred Pet Products as they are protected by the attorney-client privilege which has not been waived.
Communications with Conrad Pitts, an attorney for Sunshine Mills during the acquisition of Purebred Pet Products, which are protected by the attorney client privilege, which has not been waived.
Pet Products' attorneys' correspondence with Goode, which is work product privileged.
Communications between Ted Lee and Bruce Brown, Paul Brown, or Hank Moran, which are protected by the attorney client privilege, which has not been waived.
Communications with Alan Kailor, Kerry Caughran and Frank Svetlik, Purebred Pet Products attorneys, which are protected by the attorney client privilege, to which Sunshine succeeded and which has not been waived.
Communications between attorney Laurence Brown and Paul Brown, which are protected by the attorney-client privilege which has not been waived.
Communications with attorneys after the stock acquisition dealing with packaging approval for Pup Corn, which are protected by the attorney client privilege, which has not been waived.
Communications with attorney Gabrielle Roth, which are protected by the attorney client privilege, which has not been waived.
Communications between Bruce Brown and Jayme Huleatt, which are protected by the attorney client privilege, which has not been waived.
Ted Lee's files as they relate to the plaintiff's mark and name, as they are protected by the attorney client privilege which has not been waived.
Letter from Medley to Caughan which is protected by the attorney client privilege, which has not been waived.
All documents in the June 14, 1999 privilege log, which are protected by the attorney client privilege which has not been waived. It is further
ORDERED that further deposition testimony may be taken from Paul Brown, at plaintiff's cost, as it relates to the accountants' documents ordered produced. It is further
ORDERED that all counsel, with consideration of the rulings in the within order, shall meet and confer by June 30, 2000, with respect to the "documents with unknown authors or recipients" not addressed in this order, and "the Pet Nutrition Center files" because the court was unable to ascertain from the pleadings, exhibits and materials submitted to the court what the documents were and whether any privilege attaches. If counsel are unable to resolve discovery issues concerning these or any other documents, they shall produce the disputed documents, appropriately identified, and the nature of the privilege claimed, for the court's inspection in camera, by July 1, 2000. It is further
ORDERED that Defendants' Motion for Protective Order [filed March 28, 2000] was resolved and ruled upon at the April 12, 2000 hearing. It was granted in part and denied in part at that time. It is further
ORDERED that because the law in this circuit is unsettled concerning the privilege issues raised, each party's position was substantially justified under Rule 37(d) with regard to the motions addressed. Accordingly, each party shall bear its own costs and attorney fees associated with the subject motions. It is further
ORDERED that any specific relief requested in the motions and not addressed in this order is denied. It is further
ORDERED, that due to defendants' full compliance with the Court's Order of April 12, 2000, plaintiff's Renewed Motion to Compel 30(b)(6) Deposition of Sunshine Pet Treats, Inc. and Request for Reconsideration [filed April 24, 2000] is denied. It is further
ORDERED that a one hour discovery status conference shall be held on July 11, 2000 at 9:00 a.m. in C-504 for the purpose of resolving any further discovery disputes. It is further
ORDERED that the July 11, 2000 pretrial conference is vacated and reset to August 25, 2000 at 9:00 a.m. in C-504. The proposed pretrial order is due by August 18, 2000.