DatabaseUSA.com, LLC v. Van Gilder et al

Filing 134

ORDER - Database's Motion to Compel Documents and Testimony (Filing No. 120 ) is granted, in part. Infogroup and Koley Jessen shall provide deposition testimony regarding the content of the Declaration, including the conversations between Koley Jessen and Infogroup specifically referenced in the Declaration. The proposed order regarding Scaglione's deposition submitted by Koley Jessen in opposition to this Motion to Compel (Filing No. 125 - 5 ) will be entered by this Court. Koley Je ssen shall submit a Word version of this document to [e-mail] by November 26, 2019. The Motion for Oral Argument (Filing No. 126 ) is denied as moot. The Motion for Oral Argument (Filing No. 129 ) is denied as moot. Ordered by Magistrate Judge Susan M. Bazis. (LKO)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA

DATABASEUSA.COM, LLC,

Plaintiff,

8:17CV386

vs.
ORDER
BLAKE VAN GILDER, INFOGROUP, INC., a
Corporation; and KOLEY JESSEN P.C., LLO,

Defendants.

This matter is before the Court on Plaintiff DatabaseUSA’s (“Database”) Motion to
Compel Documents and Testimony (Filing No. 120). For the reasons explained below, the motion
will be granted, in part.
BACKGROUND
1.

The Underlying Litigation

In February, 2014, Infogroup filed suit against Database (the “Underlying Litigation”),
alleging Database misappropriated Infogroup’s proprietary information. (Case No. 8:14CV49,
Filing No. 1.) Infogroup also alleged that Database recruited Infogroup employees, including
Blake Van Gilder (“Van Gilder”), and induced them to misappropriate Infogroup’s confidential
information.

On March 24, 2016, Van Gilder was interviewed by Gregory Scaglione

(“Scaglione”) by telephone in connection with the Underlying Litigation. Scaglione, who is a
shareholder with the law firm Koley Jessen, P.C., LLO (“Koley Jessen”), represents Infogroup in
the Underlying Litigation.

On April 15, 2016, Van Gilder mailed a flash drive of documents to Koley Jessen. Koley
Jessen did not produce the documents to Database in the Underlying Litigation when it first
received them. Therefore, on August 1, 2017, Database filed a Motion for Sanctions against
Infogroup in the Underlying Litigation (Case No. 8:14CV49, Filing No. 256), claiming that
Infogroup violated its discovery obligations by failing to disclose the contents of the flash drive.
In opposition to Database’s motion, Koley Jessen submitted a brief along with a declaration from
Scaglione.

(Case No. 8:14CV49, Filing Nos. 265, 266-1.)

Scaglione’s declaration (the

“Declaration”) explained how Scaglione received the flash drive from Van Gilder and what
happened once he received the flash drive.
A telephone conference was held before United States Magistrate Judge Cheryl Zwart on
September 14, 2017. At that time, Judge Zwart heard argument on the Motion for Sanctions. On
October 24, 2017, before Judge Zwart issued a ruling, Database withdrew the Motion for
Sanctions. (Case No. 8:14CV49, Filing Nos. 278, 279.)
The Underlying Litigation was tried in this Court and resulted in a judgment for Infogroup.
The case is now pending on appeal before the Eighth Circuit Court of Appeals.
2.

The Current Lawsuit

Database filed the instant suit against Van Gilder, Koley Jessen, and Infogroup in the
District Court of Douglas County, Nebraska on September 11, 2017, alleging that Van Gilder
misappropriated sensitive internal documents owned by Database and gave the documents to
Koley Jessen and Infogroup. (Filing No. 1.) The documents at issue are those found on the flash
drive Van Gilder provided to Koley Jessen in the Underlying Litigation. This suit was removed
from state court to federal court on October 13, 2017. (Filing No. 1.)
On or about April 10, 2019, counsel contacted the Court regarding a discovery dispute that
had arisen in this case. The dispute involved the scope of discovery as it pertained to the flash
drive. Following a telephone conference with the Court on April 25, 2019, the Court ordered that
discovery initially be limited to information regarding the flash drive, to include (1) the content of
the flash drive; (2) what content from the flash drive was disclosed; (3) who the content was
disclosed to; (4) and what those individuals did with the disclosed information. (Filing No. 110.)

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As discovery progressed, Infogroup identified several employees, as well as Koley Jessen
attorneys Scaglione and Laura De Santos (“De Santos”), as individuals involved in
communications regarding the flash drive. In advance of the depositions of the Infogroup
employees and attorneys, the parties endeavored to resolve privilege issues.

Koley Jessen

indicated it would permit Scaglione to testify regarding his and other attorneys’ communications
with Infogroup regarding the flash drive and the contents thereof, with the understanding that
Scaglione’s testimony would not be deemed a waiver of privilege. (Filing No. 125-5.) Database
rejected this proposal and instead proposed a limited waiver of privilege regarding all
communications involving the flash drive. (Filing No. 125-6.) Database also requested that
Infogroup and Koley Jessen produce all documents which concern Infogroup’s communications
with Koley Jessen regarding the flash drive. These documents include an audio file and transcript
of an interview that Scaglione conducted with Van Gilder in the Underlying Litigation.
DISCUSSION
Database argues that by citing and relying upon the Declaration, Infogroup waived any
applicable privilege over its communications with Koley Jessen concerning the flash drive.
Infogroup, as holder of the attorney-client privilege, and Koley Jessen dispute that there has been
a waiver. They contend that the Declaration did not disclose any confidential communications.
Koley Jessen further maintains that in the event waiver is found, it should be limited in scope to
the specific statements contained in the Declaration that reference Scaglione’s communications
with Infogroup. The Court concludes that under the circumstances here, Infogroup’s submission
of the Declaration to the Court warrants the conclusion that there has been a waiver of privilege.
However, the waiver only extends to the specific communications between Koley Jessen and
Infogroup described by Scaglione in the Declaration. The waiver does not extend to all privileged
communications and documents related to the flash drive.
“When a party reveals part of a privileged communication in order to gain an advantage in
litigation, it waives the privilege as to all other communications relating to the same subject
matter.” In re Sealed Case, 676 F.2d 793, 818 (D.C. Cir. 1982). However, as recognized by this
Court, what constitutes the “same subject matter” is narrowly construed. See Davis v. Hugo
Enterprises, No. 8:11CV221, 2013 WL 636009, at *2 (D. Neb. Feb. 20, 2013). “Fairness is an
important and fundamental consideration in assessing the issue of whether there has been a waiver
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of the lawyer-client privilege.”

Broom, Clarkson, Lanphier & Yamamoto v. Kountze, No.

8:14CV206, 2015 WL 7302226, at *7 (D. Neb. Nov. 18, 2015) (quotation omitted).
Federal Rule of Evidence 502, which addresses situations in which there has been a
disclosure of privileged information, states:
When the disclosure is made in a federal proceeding . . . and waives the attorneyclient privilege or work-product protection, 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 communications or information concern the
same subject matter, and

(3)

they ought in fairness to be considered together.

Fed. R. Evid. 502(a). The Advisory Committee’s note for Rule 502(a) explains that a waiver
generally only results in the waiver of the communication or information disclosed, and that “a
subject matter waiver (of either privilege or work product) is reserved for those unusual situations
in which fairness requires a further disclosure of related, protected information, in order to prevent
a selective and misleading presentation of evidence to the disadvantage of the adversary.” Fed. R.
Evid. 502 advisory committee’s note.
In this case, the scope of the waiver is limited to the communications disclosed—meaning,
the conversations between Koley Jessen and Infogroup identified in the Declaration.

The

Declaration consists of statements explaining how Koley Jessen received the flash drive and the
actions taken in response to the receipt of the flash drive. While the Declaration describes certain
conversations between Koley Jessen and Infogroup regarding the flash drive, it does not delve
deeply into the specifics of those conversations. For instance, Paragraph 17 of the Declaration
provides:
Koley Jessen discussed with Infogroup certain content of the flash drive in general
terms, including the categories of documents received, for example, an email, some
mailing lists, licensing agreements, some financial documents, some technicallooking documents, and some of Van Gilder’s employment documents.

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(Case No. 8:14CV49, Filing No. 266-1.) These basic descriptions did not waive attorney-client
privilege in its entirety.
Moreover, fairness dictates that privilege not be found waived as to all communications
and documents related to the flash drive. It would be highly prejudicial to Infogroup and Koley
Jessen to find a complete waiver. First, Infogroup believed, quite reasonably, that providing the
information contained in the Declaration was necessary to defend itself against Database’s Motion
for Sanctions in the Underlying Litigation. Second, and more importantly, the communications
Database seeks include legal advice provided to Infogroup in on-going litigation in which Van
Gilder is a witness. Infogroup would be highly prejudiced by a broad waiver of privilege which
would result in the disclosure of confidential communications between Infogroup and its counsel.
Further, Database will not be prejudiced if waiver is narrowly construed and privilege is
maintained as to matters outside the Declaration. Database has a copy of the Van Gilder flash
drive and has deposed Van Gilder. Database will also be allowed to depose Scaglione regarding
the statements and information contained in the Declaration. Thus, Database has other avenues to
obtain the information it seeks.
Database also seeks the audio file and transcript of an interview Scaglione conducted with
Van Gilder in the Underlying Litigation. Infogroup and Koley Jessen object to producing these
items, arguing that they are protected work-product. Under the work-product doctrine, “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.” Fed. R. Civ. P. 26(b)(3)(A). This Court has
stated that work-product protection may extend to audio recordings and transcriptions of witness
interviews. See Herrera v. Union Pacific Railroad Co., No. 8:15CV426, 2017 WL 1458677, at
*1 (D. Neb. Apr. 24, 2017) (“Counsel’s questions of witnesses are often inexorably intertwined
with his thought process and mental impressions, pushing that information into the category of
opinion work product—which enjoys almost absolute immunity”).

However, work-product

protection does not extend to verbatim statements of third-party witnesses. Id. at *2 (“Assuming
the witnesses’ answers contained nothing more than a factual recitation of the events, the audio
recorded answers would likely be subject to disclosure.”).

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The Court has conducted an in camera review of the audio file and transcript to determine
whether they are protected work-product. Following careful review, the Court concludes that they
are. The audio file and transcript reflect more than a simple factual recitation of events. Instead,
they memorialize questions from Scaglione to Van Gilder, as well as Van Gilder’s responses to
those specific questions. Therefore, production of the audio file and transcript will not be required.
Accordingly,
IT IS ORDERED:
1.

Database’s Motion to Compel Documents and Testimony (Filing No. 120) is

granted, in part. Infogroup and Koley Jessen shall provide deposition testimony regarding the
content of the Declaration, including the conversations between Koley Jessen and Infogroup
specifically referenced in the Declaration. The proposed order regarding Scaglione’s deposition
submitted by Koley Jessen in opposition to this Motion to Compel (Filing No. 125-5) will be
entered by this Court.

Koley Jessen shall submit a Word version of this document to

[e-mail] by November 26, 2019.
2.

The Motion for Oral Argument (Filing No. 126) is denied as moot.

3.

The Motion for Oral Argument (Filing No. 129) is denied as moot.

Dated this 22nd day of November, 2019.

BY THE COURT:

s/ Susan M. Bazis
United States Magistrate Judge

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