Original Rex, L.L.C. v. Beautiful Brands International, LLC et al
Filing
114
OPINION AND ORDER by Magistrate Judge Frank H McCarthy ; granting in part and denying in part 37 Motion to Quash (jcm, Dpty Clk)
UNITED STATES DISTRICT COURT FOR THE
NORTHERN DISTRICT OF OKLAHOMA
ORIGINAL REX, L.L.C., an
Oklahoma Limited Liability Company,
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)
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PLAINTIFF,
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vs.
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BEAUTIFUL BRANDS INTERNATIONAL, )
LLC; REX’S FRANCHISE SYSTEMS,
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LLC; BERRY CHIC-A-LO, LLC;
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BIG REX, LLC, and
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CONEY BEACH, INC.,
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DEFENDANTS.
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CASE NO. 10-CV-424-GKF-FHM
OPINION AND ORDER
Defendants’ Combined Motion to Quash Subpoena Duces Tecum and
Deposition Subpoena [Dkt. 37] is before the Court for decision. Plaintiff has filed a
response. [Dkt. 70]. No reply was filed. A hearing was held on April 12, 2011.
Defendants seek to quash two subpoenas issued by Plaintiff. One seeks the
deposition of Defendants’ attorney, Robert B. Sartin. The other seeks production of all
of the Defendants’ law firm’s documents regarding the trademark at issue in this case.
Defendants contend the subpoenas invade the Defendants’ attorney-client
privilege and work product protection. Plaintiff responds that Defendants waived the
attorney-client privilege and work product protection by placing the advice of counsel
at issue in the case or alternatively, by testifying about attorney-client communications
at deposition and disclosing protected information in an interrogatory response.
Discussion
Advice of Counsel At Issue
Waiver of the attorney-client privilege occurs when a party places advice of
counsel at issue. See Frontier Refining, Inc. v. Gorman-Rupp Co., Inc., 136 F.3d 695,
699-701 (10th Cir. 1998) (discussing approaches to waiver of privilege). Thus, a party
cannot claim it relied on the advice of its counsel and at the same time claim a privilege
to prevent discovery regarding that advice.
Plaintiff contends that Defendants have placed the “advice of counsel” at issue
in the case when they disclosed their attorney’s investigative efforts and attorney-client
communications Defendants have, however, represented that they will not rely on
advice of counsel or the fact that they sought the advice of counsel in any aspect of this
case. Further, Defendants are not seeking to use the discovery responses for any
purpose in the case. The Court finds that Defendants’ responses to Plaintiff’s discovery
does not constitute an affirmative assertion of advice of counsel by Defendants and that
Defendants have not placed advice of counsel at issue in the case.
Voluntary Disclosure as Waiver
The attorney-client and work product privileges may also be waived through
disclosure of protected information. In re Grand Jury Proceedings, 616 F.3d 1172, 1184
(10th Cir. 2010) (Because confidentiality is the key to maintaining the attorney-client
privilege, a party waives the privilege when he voluntarily discloses to a third party material
or information that he later claims is protected).
In response to Plaintiff’s Interrogatory No. 1, Defendants gave a detailed
description of their attorney’s efforts in investigating the prior use of the trademark at
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issue in this case. At deposition, a representative of Defendants testified that he asked
his attorney if Defendants could use the trademark and his attorney told him
Defendants could use the trademark.
Plaintiff contends that by disclosing
communications between Defendants and their attorney regarding use of the trademark
and by detailing the attorney’s investigation of the prior use of the trademark,
Defendants have waived the attorney-client privilege and work product protection.
Defendants respond that they “have not waived any privilege or protection nor have
they disclosed any otherwise privileged or protected information.” [Dkt. 37, p. 5].
Defendants’ position is not supported by the facts or the law. The witness’s
deposition testimony revealed privileged attorney-client communications and the
interrogatory response disclosed the work of Defendant’s attorney. The Court finds that
Defendants’ actions clearly waived the attorney-client privilege and any work product
protection that applied to the attorney’s investigation.
Having found a waiver has occurred, the Court must determine, based on
Defendants’ disclosures, the scope of the waiver and the extent discovery into these
areas will be permitted in view of the needs of this case. Fed.R.Civ.P. 26(b)(2)(c).
In light of Defendants’ representation that they will not rely on “advice of counsel”
or assert that they sought the “advice of counsel” in any aspect of this case, the advice
of counsel will not be at issue and therefore extensive discovery on the subject would
be wasteful. However, in light of Defendants’ disclosures, some discovery of the
matters disclosed is appropriate to test the truth of those disclosures. Based on these
considerations, the Court concludes that the scope of the waiver should be limited to
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the attorney-client communications disclosed during the witness’s deposition and
counsel’s investigation disclosed in the interrogatory response.
Conclusion
Defendants’ Combined Motion to Quash Subpoena Duces Tecum and
Deposition Subpoena [Dkt. 37] is GRANTED in part and DENIED in part. The Motion
is GRANTED to the extent Plaintiff seeks discovery of testimony or documents beyond
the scope of the waiver set forth herein; in all other respects, Defendants’ Motion is
DENIED.
SO ORDERED this 19th day of April, 2011.
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