T.R.P. Company, Inc. v. Similasan AG et al

Filing 104

ORDER granting in part and denying in part 86 Motion to Compel. Signed by Magistrate Judge Carl W. Hoffman on 4/23/2019. (Copies have been distributed pursuant to the NEF - JM)

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UNITED STATES DISTRICT COURT

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DISTRICT OF NEVADA

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T.R.P. COMPANY, INC.
Plaintiff,

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5371 Kietzke Lane
Reno, Nevada 89511
Tel. [phone]
Fax. [phone]

B ROWNSTEIN H YATT F ARBER S CHRECK , LLP

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Case No.: 2:17-cv-02197-JCM-CWH

v.
SIMILASAN AG AND SIMILASAN
CORPORATION,

[PROPOSED] ORDER GRANTING IN
PART AND DENYING IN PART
SIMILASAN CORPORATION’S
MOTION TO COMPEL (ECF NO. 86)

Defendants.

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The Court has considered Defendant Similasan Corporation’s ("Similasan Corp.")

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Motion to Compel (ECF No. 86), the Opposition of Plaintiff T.R.P. Company, Inc. ("TRP")

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(ECF No. 88), and Similasan Corp.'s Reply (ECF No. 92), as well as the declarations,

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deposition testimony and evidence submitted therewith, and the argument of counsel at the

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April 2, 2019 hearing.1 As the Court noted in the Minute Order (ECF No. 100) and at the

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hearing (ECF No. 101), the Motion to Compel is granted in part and denied in part as follows.

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1.

The Motion to Compel is granted on the issue of express waiver of the attorney-

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client privilege, and TRP is ordered to produce the documents identified as numbers 14, 121-

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125 and 127 in its privilege log (ECF No. 87-3, Exhibit 2), and any other documents in its

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possession, custody, or control that relate to or reflect privileged communications between

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The confidential and sealed versions of Similasan Corporation's Motion to Compel and Reply
are reflected in the docket at ECF No.'s 87 and 93. These and the other related confidential
filings were considered by the Court as well.
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attorney John Long and TRP concerning trademark rights to, the application for, and

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supplemental registration of "PinkEye Relief." With respect to the supplementation of TRP's

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responses to Similasan Corp.'s interrogatories identified in the Motion, the Court reserves ruling

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on such further discovery requests at this time and orders the parties to meet and confer on this
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subject, if appropriate, after Similasan Corp. has reviewed TRP's production pursuant to this
Order.
The Court finds that the express waiver occurred on pages 71-72 of the deposition

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transcript of TRP's President Mr. Pominville (ECF No. 87-6, Ex. 5, p. 9) and in TRP's response

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to Similasan Corp.'s Interrogatory No. 16 that was verified by Mr. Pominville (ECF No. 87-17,

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5371 Kietzke Lane
Reno, Nevada 89511
Tel. [phone]
Fax. [phone]

B ROWNSTEIN H YATT F ARBER S CHRECK , LLP

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Ex. 16, pp. 6-7).

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2.

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The Motion to Compel is denied at this time on the issue of implied waiver of

the attorney-client privilege as to communications between attorney John Long and TRP (or

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TRP communications reflecting Mr. Long's advice), concerning TRP's application and

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supplemental registration for PinkEye Relief, Earache Relief and Allergy Eyes Relief. The

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Court is not persuaded that there is an assertion of an advice of counsel defense by TRP in

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response to Similasan Corp's claims of fraud on the United States Patent and Trademark Office.

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The Court finds that an advice of counsel defense has to be the foundation for the basis of an
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implied waiver. The Court's finding as to a lack of implied waiver does not conflict with the

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Court's order as to an express waiver concerning the PinkEye Relief communications identified

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in paragraph 1 above. The Court simply finds that there has not been a waiver as to the

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PinkEye Relief communications on the additional grounds of implied waiver.

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3.

The Motion to Compel is denied as to a waiver of the attorney-client privilege

through communications that involved advice from attorneys John Long or Jack Hanifan, and

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were directed to or included Susan Hanson, Ray Hanson and/or Brian Banks. Susan Hanson is
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the sister of Tom Pominville and Ray Hanson is his brother in law. Neither Ms. Hanson, Mr.

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Hanson, nor Brian Banks was an employee of TRP during the timeframes of the

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communications that have been identified in TRP's privilege log. ECF No. 87-3, Exhibit 2.

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However, the Court finds that each of these individuals were "functional equivalents" of TRP
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employees based upon their title(s), responsibilities, roles in the operation of TRP and/or
familial relationship with Mr. Pominville in the relevant timeframes based on the affidavits

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from Ms. Hanson, Mr. Hanson, and Mr. Pominville, and other evidence TRP submitted. ECF

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Nos. 88-3, 88-4, 88-5. Their communications with attorneys Long and Hanifan, or concerning

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their advice, were therefore privileged communications between TRP and these attorneys.

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5371 Kietzke Lane
Reno, Nevada 89511
Tel. [phone]
Fax. [phone]

B ROWNSTEIN H YATT F ARBER S CHRECK , LLP

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April 23, 2019
DATED: ______________

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IT IS SO ORDERED

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___________________________________
C.W. HOFFMAN, JR.
UNITED STATES MAGISTRATE JUDGE

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Respectfully submitted by:

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Dated: April 16, 2019

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5371 Kietzke Lane
Reno, Nevada 89511
Tel. [phone]
Fax. [phone]

B ROWNSTEIN H YATT F ARBER S CHRECK , LLP

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By: /s/ Michael D. Rounds
Michael D. Rounds (NV Bar No. 4734)
Ryan Cudnik (NV Bar No. 12948)
BROWNSTEIN HYATT FARBER
SCHRECK, LLP
5371 Kietzke Lane
Reno, NV 89511
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
[e-mail]

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Emily Ellis (NV Bar No. 11956)
Brownstein Hyatt Farber Schreck, LLP
100 North City Parkway
Las Vegas, Nevada 89106-4614
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Michelle Gillette (pro hac vice)
CROWELL & MORING LLP
3 Embarcadero Center, 26th Floor
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Valerie Goo (pro hac vice)
CROWELL & MORING LLP
515 S. Flower Street, 40th Floor
Los Angeles, CA 90071
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Counsel for Defendants
SIMILASAN CORPORATION and SIMILASAN AG

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Michael N. Feder
DICKINSON WRIGHT PLLC
8363 West Sunset Road, Suite 200
Las Vegas, NV 89113
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]

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5371 Kietzke Lane
Reno, Nevada 89511
Tel. [phone]
Fax. [phone]

B ROWNSTEIN H YATT F ARBER S CHRECK , LLP

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Daniel S. Silverman
VENABLE LLP
2049 Century Park East, Suite 2300
Los Angeles, CA 90067
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Meaghan H. Kent
VENABLE LLP
600 Massachusetts Ave., NW
Washington, DC 20001
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Attorneys for Plaintiff/Counter-Defendant
T.R.P. Company, Inc.

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CERTIFICATE OF SERVICE

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Pursuant to FRCP 5(b), I certify that I am an employee of BROWNSTEIN HYATT

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FARBER SCHRECK, LLP, and on this 16th day of April, 2019, I served the document entitled,

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[PROPOSED] ORDER GRANTING IN PART AND DENYING IN PART SIMILASAN
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CORPORATION’S MOTION TO COMPEL (ECF NO. 86), on counsel of record through
the CM/ECF system.

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/s/ Jeff Tillison
Employee of Brownstein Hyatt Farber
Schreck, LLP

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5371 Kietzke Lane
Reno, Nevada 89511
Tel. [phone]
Fax. [phone]

B ROWNSTEIN H YATT F ARBER S CHRECK , LLP

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