Advice Interactive Group, LLC v. Web.com Group, Inc.

Filing 310

ORDER granting in part and denying in part 131 Motion for In Camera Review; and taking under advisement S-146 Sealed Motion to Compel. Signed by Magistrate Judge Monte C. Richardson on 8/15/2018. (ADM) Modified on 8/15/2018 per chambers changed security link and regenerated (PAM).

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
JACKSONVILLE DIVISION
ADVICE INTERACTIVE GROUP, LLC,
Plaintiff,
v.

CASE NO. 3:17-cv-801-J-39MCR

WEB.COM GROUP, INC.,
Defendant.
________________________________/
ORDER
THIS CAUSE is before the Court on Defendant’s Motion for In Camera
Review of Select Documents Listed on Plaintiff’s Privilege Log (“Motion for In
Camera Review”) (Doc. 131), Plaintiff’s Opposition thereto (Doc. 149), and
Defendant’s Notice of Supplemental Authority (Doc. 152).
In the Motion for In Camera Review, Defendant asks the Court to review, in
camera, certain documents that Plaintiff is withholding from production based on
claims of privilege,1 in order to determine if the privileges have been properly
asserted and, if so, whether any exception applies, and then order production of
1

Defendant has identified 52 entries on Plaintiff’s Privilege Log that it contends
are subject to an in camera review. (Doc. 131 at 3.) However, the parties were able to
narrow down the dispute and presently 40 entries are still at issue: purported “crimefraud” documents (Privilege Log entries 376, 384, 388, 397, 398, 399, 422, and 423),
purported “delay” documents (Privilege Log entries 132, 133, 134, 135, 142, 144, and
149), certain purported “former employee” documents (Privilege Log entries 339, 340,
341, 342, 344, 355, 356, 357, and 358), one purported “entry without an attorney”
document (Privilege Log entry 300), and documents that Web does not specifically
mention, but for which it still requests an in camera inspection (Privilege Log entries
150, 154, 157, 161, 162, 164, 165, 166, 169, 170, 171, 172, 364, 367, and 370). (Doc.
149 at 1-2.)

all non-privileged documents to Defendant. (See Doc. 131.) Contemporaneously
with its Motion for In Camera Review, Defendant has filed its Motion to Compel
Production of Documents Sought in Its Third Request for Production to Plaintiff
(“Defendant’s Motion to Compel”) (Doc. 146), which seeks to compel “certain
discovery relating to communications between Plaintiff and its counsel, Fish &
Richardson, relating to the copyright applications and registrations at issue in this
case” (Doc. 131 at 3). Defendant states that its request for an in camera
inspection relates to the relief sought in its Motion to Compel so the Court may
view the records at issue before ruling on the Motion to Compel.2 (Id.)
Defendant states that for the reasons set forth in both its Motion for In
Camera Review and its Motion to Compel, “serious questions exist regarding the
appropriateness of Plaintiff’s claims of privilege.” (Id. at 6.) Defendant explains:
The evidence uncovered to date unequivocally demonstrates that
Plaintiff has committed a fraud on the US Copyright Office, and that it
delegated to its counsel all dealings with the Copyright Office. The
evidence also establishes that Plaintiff has put at issue other
documents over which it claims privilege. Moreover, other
documents listed on Plaintiff’s Privilege Log do not involve an
attorney and/or were sent to former employees of Plaintiff that, under
certain circumstances, may not invoke the protections of the
attorney-client privilege.
(Id. at 6-7.)

2

Defendant explains that its Motion for In Camera Review is not intended to limit
the scope of its Motion to Compel, because the latter seeks the production of the
records at issue in the Motion for In Camera Review, plus any additional responsive
documents and discovery withheld on the basis of the alleged privileges. (See Doc.
131 at 7 n.3.)
2

Plaintiff admits that Defendant’s Motion for In Camera Review is
intertwined with Defendant’s Motion to Compel, and asserts that the “crime-fraud”
and “delay” arguments, which also encompass the “former employee” and “entry
without an attorney” documents (see Doc. 149 at 2-3), should be dealt with in the
context of Defendant’s Motion to Compel. (Id. at 2 & n.2.) As to the remaining
documents for which Defendant requests an in camera inspection (Privilege Log
entries 150, 154, 157, 161, 162, 164, 165, 166, 169, 170, 171, 172, 364, 367, and
370), but does not specifically mention in its Motion for In Camera Review,
Plaintiff contends that Defendant has articulated no basis for relief.
In the Motion to Compel, Defendant states that “the Court can engage in
[an] in camera review to determine the applicability of the crime-fraud exception.”
(Doc. 146 at 10.) Defendant asserts that:
Web.com has made a prima facie showing that AIG was planning to
obtain fraudulent copyright registrations when it sought the advice of
Fish & Richardson, and that AIG ultimately used Fish & Richardson
to obtain copyright registrations by fraud on the Copyright Office.
Accordingly, documents shared with counsel regarding the
circumstances surrounding the creation of the Visibility Report and
HTML code, as well as the copyright registrations sought in
connection with such, are critically relevant, and excepted from the
attorney/client privilege. And, to the extent that there is any doubt,
Web.com alternatively requests that this Court require an in-camera
review of the responsive documents to determine whether the
crime/fraud exception applies.
(Id. at 24.)
In response to the Motion to Compel, Plaintiff states:

3

[W]hen presented fully and without mischaracterization, the evidence
. . . demonstrates that Web has not and cannot meet its burden of
showing (1) a prima facie case that AIG was planning or involved in
fraudulent conduct, i.e., that it intended to conceal information from
the copyright office, when it sought the advice of counsel, or that it
committed a fraud subsequent to receiving the benefit of counsel’s
advice, and (2) that AIG sought the advice of counsel in furtherance
of such conduct. . . . Should any question remain in the Court’s mind,
the next step would be for an in camera review of the
communications in question, which AIG will provide to the Court
upon request.
(Doc. 174 at 18.)
As “question[s] remain in the Court’s mind” regarding the allegedly
privileged documents and the applicability of the crime-fraud exception, the Court
will exercise its discretion to review the subject documents in camera. See
United States v. Zolin, 491 U.S. 554, 574 (1989) (holding that “in camera review
may be used to determine whether allegedly privileged attorney-client
communications fall within the crime-fraud exception”). In its Motion for In
Camera Review and Motion to Compel and supporting documentation, Defendant
has shown “a factual basis adequate to support a good faith belief by a
reasonable person . . . that in camera review of the materials may reveal
evidence to establish the claim that the crime-fraud exception applies.”3 Id. at
572; see also Wiggins v. Gov’t Employees Ins. Co., Case No. 3:16-cv-1142-J32MCR, 2017 WL 3720911, *1 (M.D. Fla. May 5, 2017) (“Where there is a
3

“[T]he threshold showing to obtain in camera review may be met by using any
relevant evidence, lawfully obtained, that has not been adjudicated to be priv ileged.”
Zolin, 491 U.S. at 575.
4

sufficient evidentiary showing that an issue exists regarding the application of a
privilege, the court must utilize its own discretion and determine whether in
camera review is appropriate under the circumstances presented.”). Also, the
circumstances of this case justify this conclusion, considering the importance to
the case of the alleged privileged information and the reduced number of
documents that are still at issue.
Therefore, Plaintiff shall have the documents that are at issue in
Defendant’s Motion for In Camera Review and Motion to Compel delivered to the
undersigned’s chambers no later than August 22, 2018.4 In addition to
providing these documents, Plaintiff shall also provide the Court and Defendant
with a revised privilege log.5 The Court will then enter an order regarding its

4

The Court agrees with Plaintiff that Defendant’s Motion for In Camera Review
does not specifically mention Privilege Log entries 150, 154, 157, 161, 162, 164, 165,
166, 169, 170, 171, 172, 364, 367, and 370; as such, these particular docum ents need
not be produced for an in camera inspection.
5

The revised privilege log should include as much information as possible to
allow the Court to determine the applicability of any privileges, including, inter alia, the
job title and employer of the author of the document; the purpose for which the
document was created and transmitted; the subject of the document; the job title and
employer of the person(s) to whom the document is addressed; the job title and
employer of the person(s) indicated thereon as having received a copy of the
document; the name, job title, and employer of any person known or believed to have
received or seen the document or any copy or summary thereof, and the reasons why
they were provided access thereto; the relationship among the author, addressee, and
any other recipient; the degree of confidentiality with which the document was treated at
the time of its creation and transmission, and since; and any other facts relevant to the
elements of work product and/or the attorney-client privilege. See Batchelor v. Geico
Cas. Co., Case No. 6:11-cv-1071-Orl-GJK, 2014 WL 3697682, *7 (M.D. Fla. June 4,
2014), aff’d, 2014 WL 3687492 (M.D. Fla. July 17, 2014); Bukh v. Guldmann, Inc., Case
(continued...)
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findings on the documents and whether any portion of them should be produced
to Defendant.
Accordingly, it is ORDERED:
The Motion for In Camera Review (Doc. 131) is GRANTED to the extent
stated herein.6
DONE AND ORDERED at Jacksonville, Florida, on August 15, 2018.

Copies to:
Counsel of Record

5

(...continued)
No: 8:14-cv-1089-T-23JSS, 2015 WL 6736774, *2 (M.D. Fla. Nov. 4, 2015); First Coast
Energy v. Mid-Continent Cas. Co., Case No. 3:12-cv-281-J-32MCR (M.D. Fla. Aug. 5,
2014). Plaintiff shall not disclose the contents of any privileged matter in the revised
privilege log.
6

Defendant’s Motion to Compel (Doc. 146) is UNDER ADVISEMENT pending
the Court’s review of the subject documents.
6