Lavatec Laundry Technology GmbH v. Voss Laundry Solutions, Inc., et al

Filing 99

ORDER denying 98 Joint Motion for Resolution of Discovery Dispute (Defendant's Motion to Compel). Signed by Judge Stefan R. Underhill on 4/25/2014. (Martin, M.)

UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT

LAVATEC LAUNDRY TECHNOLOGY,
GmbH,
Plaintiff,
v.

No. 3:13cv00056 (SRU)

LAVATEC, INC.,
Defendant.

ORDER ON MOTION FOR RESOLUTION OF DISCOVERY DISPUTE
This case concerns a trademark infringement dispute between the plaintiff, Lavatec
Laundry Technology, GmbH (“LLT”), and the defendant, Lavatec, Inc. (“Lavatec”), who are
both engaged in the business of manufacturing, selling, and servicing industrial and commercial
laundry equipment. On April 17, 2014, I held a telephone conference with the parties to address
their Joint Motion for Resolution of Discovery Dispute (doc. # 98). During that conference, I
decided a portion of the discovery dispute, but held in abeyance a ruling on the remaining issues
and ordered the plaintiff to produce the relevant disputed documents for in camera review. This
order concerns those remaining issues, specifically whether certain items listed in the privilege
log LLT produced to Lavatec are non-discoverable work product and, accordingly, whether
Lavatec may compel production of those documents.
The documents at issue here are divided into two categories. The first category includes
e-mails and attachments sent by Dierk Reinhart, an attorney for LLT in related litigation, and
Monika Thunert, a non-party, regarding an affidavit prepared in connection with LLT’s
opposition to Lavatec’s trademark registration before the United States Patent and Trademark
Office. The second category of documents consists of communications between Reinhart and

Patric Naumann regarding an affidavit submitted by LLT in support of its motion for summary
judgment and preliminary injunction in the instant case (doc. # 54). Naumann, also a non-party,
is an attorney who represented the receiver of “Old Lavatec.”1 Lavatec argues that the
documents in both categories are not attorney work product, and that even if they are, they
should be produced because LLT has waived the work-product privilege by disclosing the final,
executed affidavits to third parties. For the reasons set forth below, I hold that Lavatec has not
met its burden of proof that the items included in LLT’s privilege log are otherwise discoverable.
Accordingly, I will not require LLT to produce those documents.
I.

Legal Standard
The scope of discovery under the Federal Rules is defined broadly: “Parties may obtain

discovery regarding any nonprivileged matter that is relevant to the party’s claim or defense.”
Fed. R. Civ. P. 26(b)(1). Rule 26, however, provides for several exceptions to the Federal Rules’
policy of liberal discovery. The work-product doctrine is one such example. Rule 26(b)(3)(A)
provides:
Ordinarily, a party may not discover documents and tangible things that are
prepared in anticipation of litigation or for trial by or for another party or its
representative (including the other party’s attorney, consultant, surety,
indemnitor, insurer, or agent). But, subject to Rule 26(b)(4), those materials
may be discovered if: (i) they are otherwise discoverable under Rule
26(b)(1); and (ii) the party shows that it has substantial need for the materials
to prepare its case and cannot, without undue hardship, obtain their
substantial equivalent by other means.
Rule 23(b)(3) “is intended to preserve a zone of privacy in which a lawyer can prepare
and develop legal theories ‘with an eye toward litigation,’ free from unnecessary intrusion by his
adversaries.” United States v. Adlman, 134 F.3d 1194, 1196 (2d Cir. 1998) (quoting Hickman v.
1

“Old Lavatec” is the former wholly-owned United States subsidiary of Lavatec, and was
purchased pursuant to a sale of assets in the United States Bankruptcy Court for the District of
Connecticut.
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Taylor, 329 U.S. 495, 510-11 (1947)); 8 Wright & Miller, Fed. Prac. & Proc. Civ. § 2024 (3d
ed. 2010) (“[T]he purpose of the work-product rule ‘is not to protect the evidence from
disclosure to the outside world but rather to protect it only from the knowledge of opposing
counsel and his client, thereby preventing its use against the lawyer gathering the materials.’”).
At the core of protected work product are “the mental impressions, conclusions, opinions, or
legal theories of a party’s attorney or other representative concerning the litigation;” under Rule
26, that kind of opinion evidence is absolutely protected. Fed. R. Civ. P. 26(b)(3)(B). In
determining whether the work-product doctrine applies, a court must undertake a two-step
analysis. First, it must decide whether the sought “documents and tangible things” were
“prepared in anticipation of litigation or for trial by or for another party or its representative.”
Fed. R. Civ. P. 26(b)(3)(A). The party asserting work-product protection bears the burden of
proof on that step. If the party asserting work-product protection meets its burden, then the court
moves to the second step of analysis, which examines whether the evidence is nonetheless
discoverable. That requires the party seeking discovery to show that the documents and other
tangible things are otherwise discoverable under Rule 26(b)(1) and that the party “cannot,
without undue hardship, obtain their substantial equivalent by other means.” Id.
II.

Discussion
A. Whether the Communications are Protected Work Product
The parties agree that the documents were prepared in anticipation of litigation.2 A

review of the documents shows that they were prepared by counsel. Thus, Lavatec must show

2

Lavatec notes one possible exception, the document numbered PL0341-PL0343, which
was authored by Naumann, who is not a party. I agree that page PL0341 and the top half of page
PL 0342 do not constitute work product, and must be produced.
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that the evidence is otherwise discoverable, that it has a substantial need for that evidence, and
that it cannot obtain a substantial equivalent without undue hardship.
The gravamen of Lavatec’s argument for discovery of the communications is that LLT
has waived work-product protection by disclosing those communications to third parties. It is
well-established that “[t]he privilege derived from the work-product doctrine is not absolute” and
may be waived. United States v. Nobles, 422 U.S. 225, 239 (1975). It is also true, however, that,
unlike work protected by the attorney-client privilege, mere disclosure of evidence to a third
party does not necessarily waive work-product protection. See United States v. Deloitte LLP,
610 F.3d 129 (D.C. Cir. 2010). Rather, the standard articulated for determining when workproduct protection has been waived is whether “the disclosure substantially increases the
opportunity for potential adversaries to obtain the information.” In re Grand Jury Subpoenas,
561 F .Supp. 1247, 1257 (E.D.N.Y. 1982); see Niagara Mohawk Power Corp. v. Stone &
Webster Eng'g Corp., 125 F.R.D. 578, 587 (N.D.N.Y. 1989); Go Med. Indus. Pty., Ltd. v. C.R.
Bard, Inc., 1998 WL 1632525, at *7 (D. Conn. Aug. 14, 1998), judgment rev’d in part, vacated
in part sub nom. Go Med. Indus. Pty, Ltd. v. C.R. Bard, Inc., 250 F.3d 763 (Fed. Cir. 2000); 8
Wright & Miller, Fed. Prac. & Proc. Civ. § 2024 (3d ed. 2010).
Lavatec contends that Reinhart’s email communication of purported work product to
Thunert, without any agreement or understanding of confidentiality with respect to those
communications, substantially increased the likelihood that potential adversaries would obtain
those communications. That argument is unavailing. Lavatec offers no support in the caselaw or
otherwise for the proposition that without an explicit confidentiality agreement or understanding,
an attorney’s communications with a third party necessitate the automatic waiver of work-

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product protections.3 Lavatec’s arguments with respect to the communications between Reinhart
and Naumann are on somewhat stronger footing but nevertheless fall short. Lavatec contends
that LLT and Naumann are actually adverse to each other and, therefore, any disclosure of work
product to Naumann is a disclosure to a potential adversary. Although he represented the
receiver of Lavatec GmbH, was a board member of Old Lavatec, and negotiated the German
Asset Purchase Agreement between LLT and Lavatec GmbH, it is unclear whether Naumann is a
potential adversary, much less an actual one. In any event, it seems that if Naumann were an
actual adversary of LLT in this litigation, he could himself disclose his communications with
Reinhart to Lavatec. Assuming that he has not done so, I am left with the impression that
Naumann is not only not actually adverse to LLT, but also that, if the communications disclosed
to Naumann have not yet reached Lavatec, the likelihood of their disclosure to any other
potential adversaries is less than substantial.
Lavatec’s second effort to compel production of LLT’s work product arises out of the
Federal Rules of Evidence rather than the Rules of Civil Procedure. Lavatec attempts to compel
production of both categories of documents by arguing that even if they are protectable work
product, they should be produced pursuant to Rule 502(a) of the Federal Rules of Evidence.
Rule 502(a) provides that in circumstances of the disclosure of protected work-product and
waiver of work-product protection in a federal proceeding:
the waiver extends to an undisclosed communication or information in a federal or state
proceeding only if: (1) the waiver is intentional; (2) the disclosed and undisclosed
3

Further, there may be, at least, an expectation of confidentiality on both parties’ part
implied by the standard-form confidentiality language attached to the footer of the email
transmissions by Reinhart to Thunert which direct third-party recipients of those emails to
immediately delete the emails and to contact the sender upon receipt. Similar, but even more
strongly-worded confidentiality language is attached to the footer of the email transmissions
between Reinhart and Naumann.
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communications or information concern the same subject matter; and (3) they ought in
fairness to be considered together.
Because LLT has intentionally produced the final, executed affidavits, Lavatec argues, any
work-product protection associated with those affidavits—including the undisclosed draft
affidavits and other materials concerning the affidavits—is waived because it would be unfair to
do otherwise.
Rule 502(a) generally applies to circumstances in which a party attempts to gain
advantage by waiving protection of some protected work product in order to selectively present
information in a misleading way. That is not the case here. LLT has produced final, executed
affidavits, but has not sought to introduce any other protected information. It cannot be that
simply because a party produces an affidavit, any materials associated with preparing that
affidavit—including attorney work product—are automatically fair game for discovery. Lavatec
argues that such is the case if fairness requires, but points to no court decision or other source for
support other than a case concerning the attorney-client privilege, United States v. Bilzerian, 926
F.2d 1285 (2d Cir. 1991), and two cases concerning circumstances in which a party attempted to
selectively disclose work product, see Nobles, 422 U.S. at 239-40, and In re Grand Jury
Proceedings, 219 F.3d 175, 182 (2d Cir. 2000). None of those cases is particularly relevant to
Lavatec’s argument. Further, many courts inside and outside this Circuit have held that
disclosure of a final, executed affidavit does not open the door to discovery of the materials or
communications that went into creating that affidavit. See Institute for the Development of Earth
Awareness v. People for the Ethical Treatment of Animals, 272 F.R.D. 124 (S.D.N.Y. 2011)
(draft affidavits and communications and between counsel and non-party witnesses are protected
where drafts were not adopted or executed by non-party witnesses and witnesses were available
for deposition but plaintiff chose not to examine them); see also Randleman v. Fidelity National
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Title Insurance Co, 251 F.R.D. 281, 285 (N.D. Ohio 2008); 8 Wright & Miller, Fed. Prac. &
Proc. Civ. § 2024 (3d ed. 2010) (“[D]isclosure of a document to third persons does not waive the
work-product immunity unless it has substantially increased the opportunities for potential
adversaries to obtain the information. Most cases have so held and have found no waiver from
disclosure.”). Accordingly, I hold that the communications included as PL293-PL357 on LLT’s
privilege log, with the exception of the document not authored by LLT’s attorney and those
produced upon agreement by the parties, are protected attorney work product. I next turn to the
question whether Lavatec has shown that it has a substantial need for the documents and cannot
obtain their substantial equivalent without undue hardship.
B. Whether Lavatec Has Shown Substantial Need
Lavatec argues that it has a “substantial need” for the documents, even if they are
protectable work product, because it has not deposed either Thunert or Naumann and believes
that Thunert’s affidavit and Naumann himself will be offered at trial. Lavatec claims that it has
not deposed either witness because it cannot require German citizens to attend depositions in the
United States and did not wish to bear the costs of traveling to Germany to depose them. LLT
responds that Lavatec’s decision to forgo deposing those potential witnesses constitutes a waiver
of any right to request disclosure of protected work product. For practical reasons, I do not need
to address either argument. Naumann will likely be made available for examination at trial and,
in any event, I will permit Lavatec to depose Naumann in the United States before the bench
trial, thus obviating any “substantial need” for the material underlying the affidavits already
before the Court. See Handsome, Inc. v. Town of Monroe, 2014 WL 348196, at *6 (D. Conn.
Jan. 31, 2014) (substantial need does not exist where the information can be sought through
deposition). With respect to Thunert, it is not likely that her affidavit, which is not before the

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Court, will be admissible. Therefore, there is no substantial need for the affidavit or any
communications or draft affidavits associated with it.
III.

Conclusion
Because Lavatec has not met its burden to demonstrate that the items contained in LLT’s

privilege log are otherwise discoverable or that LLT has waived any work-product protection, its
request for production of those documents as set forth in the parties’ joint motion (doc. # 98) is
DENIED.
It is so ordered.
Dated at Bridgeport, Connecticut, this 25th day of April 2014.

/s/ Stefan R. Underhill
Stefan R. Underhill
United States District Judge

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