Pace-O-Matic, Inc. v. Eckert, Seamans Cherin & Mellott, LLC

Filing 87

MEMORANDUM (Order to follow as separate docket entry) re 50 MOTION to Compel Discovery filed by Pace-O-Matic, Inc., 48 MOTION to Quash Subpoena filed by Greenwood Gaming and Entertainment, Inc., 44 MOTION for Protect ive Order with Proposed Form of Order, Supporting Memorandum of Law, Certificate of Non-Concurrence and Certificate of Service filed by Eckert, Seamans Cherin & Mellott, LLC. For the foregoing reasons, each of the four motions before us will be granted in part and denied in part. With respect to documents identified above as duplicative of other documents or protected by attorney-client privilege or the work-product doctrine, the objections of Eckert, HMS, and Parx are sustained and sai d documents shall be withheld from production. With respect to documents identified above as non-privileged and non-protected communications with government attorneys, transmittal messages, business communications, and lobbying or public affairs comm unications, or as communications for which any attorney-client privilege has been waived or judicially estopped and work-product doctrine does not apply, the objections of Eckert, HMS, and Parx are overruled and said documents shall be produced to the plaintiff, subject to any redactions also described above.An appropriate order follows. Signed by Magistrate Judge Joseph F. Saporito, Jr on 2/16/21. (ms)

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UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF PENNSYLVANIA
PACE-O-MATIC, INC.,
Plaintiff,

CIVIL ACTION NO. 1:20-cv-00292

v.

(WILSON, J.)
(SAPORITO, M.J.)

ECKERT SEAMANS CHERIN &
MELLOTT, LLC,
Defendant.

MEMORANDUM
This is a diversity action in which the plaintiff, Pace-O-Matic, Inc.
(“POM”) has brought a state-law breach of fiduciary duty action against
the defendant, Eckert Seamans Cherin & Mellott, LLC (“Eckert”). POM,
a Wyoming corporation with a principal place of business in Georgia, is a
former client of Eckert, a law firm based in Harrisburg, Pennsylvania.
POM claims that Eckert breached its professional duties of loyalty and
confidentiality by undertaking the concurrent representation of another
client in litigation against POM. For relief, POM seeks an award of
compensatory and punitive damages plus declaratory and injunctive
relief against Eckert.
Now before the court are several discovery motions by POM,

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Eckert, and two subpoena recipients. (Doc. 44; Doc. 48; Doc. 50; Doc. 52.)
These motions have been fully briefed, and oral argument on these
motions was held on October 20, 2020. Following this hearing, the parties
met and conferred to narrow the scope of documents to be submitted to
the court for an in camera privilege review. In December 2020, the
defendant and the subpoena recipients submitted the agreed-upon
selection of purportedly privileged or protected documents for in camera
review. The motions are now ripe for disposition.
I.

BACKGROUND
POM develops, produces, and licenses electronic “skill games” sold

in Pennsylvania and elsewhere. Beginning in 2016, POM engaged Eckert
to represent it in Virginia with respect to litigation over whether those
skill games were illegal gambling devices under Virginia law. That
representation was limited to Virginia, as Eckert represented other
clients with adverse commercial interests in Pennsylvania. One of those
other clients was Greenwood Gaming & Entertainment, Inc. d/b/a Parx
Casino (“Parx”), with which Eckert had a prior existing attorney-client
relationship.
In June 2018, POM filed a lawsuit concerning its skill games in

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the Commonwealth Court against the City of Philadelphia and the
Pennsylvania Department of Revenue; that case was assigned Docket No.
418 MD 2018. In July 2018, POM filed a second lawsuit concerning its
skill games in the Commonwealth Court against the Pennsylvania State
Police; that case was assigned Docket No. 503 MD 2018. On November
20, 2019, the Commonwealth Court issued an opinion in Case No. 418
denying a motion for summary disposition by the Pennsylvania
Department of Revenue, which had the effect of placing both actions on
an active litigation schedule.
On December 12, 2019, POM filed a motion for a preliminary
injunction against the Pennsylvania State Police in Case No. 503. POM
sought to enjoin the state police from seizing its skills games from its
customers. On December 18, 2019, Parx and another casino filed an
amicus brief in opposition to POM’s motion for a preliminary injunction.
Parx appeared through counsel of record Kevin McKeon of Hawke
McKeon & Sniscak, LLP (“HMS”) and Adrian King of Ballard Spahr, LLP
(“Ballard”). 1 On January 15, 2020, the Commonwealth Court held a

King is co-counsel with McKeon in both Commonwealth Court
cases. It is our understanding that he represents the other casino that
joined Parx in filing the amicus brief and, later, the motions to intervene.
1

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hearing on POM’s application for a preliminary injunction. On February
14, 2020, the casinos filed applications to intervene in both of POM’s
Commonwealth Court cases. 2
At some point in January 2020, POM learned that Eckert was
involved in representing Parx in connection with the Commonwealth
Court cases and requested that it withdraw from that representation.
Eckert declined and instead withdrew from representing POM in the
Virginia matters. On February 20, 2020, POM filed the complaint in this
action, alleging that Mark Stewart and other attorneys at Eckert had
been behind the litigation efforts of Parx in both Commonwealth Court
cases, despite a conflict of interest. POM claimed that Eckert’s
representation of Parx in the Commonwealth Court cases, directly
adverse to POM, amounted to a breach of its fiduciary duties to POM as
its client—namely, its professional duties of loyalty and confidentiality.
POM has served interrogatories and requests for production
seeking

information

and

documents

reflecting

communications

concerning the Commonwealth Court cases exchanged between Eckert

It is our understanding that Parx’s applications to intervene
remain pending.
2

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attorneys on the one hand and Parx, HMS, and their agents on the other
hand. Eckert has objected, asserting attorney-client privilege and workproduct protection with respect to various documents identified on a 30page privilege log. POM has moved to compel the production of these
documents, and Eckert has moved for a protective order precluding
production of these documents.
POM also served non-party subpoenas on HMS and Parx, seeking
any similar documents that were in their possession. HMS and Parx have
entered their appearances here and moved to quash the subpoenas or for
a protective order, asserting attorney-client privilege and work-product
protection with respect to documents identified on their own privilege
logs. Parx has further adopted the privilege logs of Eckert and HMS with
respect to any documents in the possession of the two law firms, but
which might belong to Parx as client.
Following oral argument, the parties met and conferred to winnow
the list of documents to be submitted for in camera review. Those
documents have been submitted and reviewed by the court in camera. It
is our understanding that any other discovery disputes raised by the
parties in their motion papers have been resolved among them.

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II.

APPLICABLE STANDARDS
A. Attorney-Client Privilege
This is a diversity case. Therefore, Pennsylvania state law governs

whether attorney-client privilege applies to the documents at issue. See
Fed. R. Evid. 501; United Coal Cos. v. Powell Constr. Co., 839 F.2d 958,
965 (3d Cir. 1988). See generally 42 Pa. Cons. Stat. Ann. § 5928 (“In a
civil matter counsel shall not be competent or permitted to testify to
confidential communications made to him by his client, nor shall the
client be compelled to disclose the same, unless in either case this
privilege is waived upon the trial by the client.”).
“Because the attorney-client privilege obstructs the truth-finding
process, it is construed narrowly.” Westinghouse Elec. Corp. v. Republic
of the Philippines, 951 F.2d 1414, 1423 (3d Cir. 1991); see also Harrisburg
Auth. v. CIT Capital USA, Inc., 716 F. Supp. 2d 380, 387 (M.D. Pa. 2010)
(noting that, under Pennsylvania law, the attorney-client privilege is
generally disfavored and should be narrowly construed). For the
attorney-client privilege to attach to a communication, “it must be ‘(1) a
communication (2) made between privileged persons (3) in confidence (4)
for the purpose of obtaining or providing legal assistance for the client.’”

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In re Teleglobe Commc’ns Corp., 493 F.3d 345, 359 (3d Cir. 2007) (quoting
Restatement (Third) of the Law Governing Lawyers § 68 (2000)
[hereinafter, “Restatement (3d) Lawyers”]). “‘Privileged persons’ include
the client, the attorney(s), and any of their agents that help facilitate
attorney-client communications or the legal representation.” Id. at 359
(citing Restatement (3d) Lawyers § 70). “A communication is only
privileged if it is made ‘in confidence.’” Id. at 361 (citing Restatement (3d)
Lawyers § 68). “[I]f persons other than the client, its attorney, or their
agents are present, the communication is not made in confidence, and the
privilege does not attach.” Id. at 361.
“As a general matter, the privilege is not destroyed when a person
other than the lawyer is present at a conversation between an attorney
and his or her client if that person is needed to make the conference
possible or to assist the attorney in providing legal services.” Miller v.
Haulmark Transp. Sys., 104 F.R.D. 442, 445 (E.D. Pa. 1984). “These
exceptions are consistent with the goal underlying the privilege because
[this] type of disclosure is sometimes necessary for the client to obtain
informed legal advice.” Westinghouse, 951 F.2d at 1424.

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B. Work-Product Doctrine
“Unlike the attorney-client privilege, the work product privilege is
governed, even in diversity cases, by a uniform federal standard
embodied in the federal rules.” U.S. Fid. & Guar. Co. v. Barron Indus.,
Inc., 809 F. Supp. 355, 364 n.10 (M.D. Pa. 1992) (citing United Coal Cos.,
839 F.2d at 966). “The work product doctrine is governed by a uniform
federal standard set forth in Fed. R. Civ. P. 26(b)(3) and ‘shelters the
mental processes of the attorney, providing a privileged area within
which he can analyze and prepare his client’s case.’” In re Cendant Corp.
Sec. Litig., 343 F.3d 658, 661–62 (3d Cir. 2003).
The purpose of the work-product doctrine differs from
that of the attorney-client privilege. . . . [T]he attorneyclient
privilege
promotes
the
attorney-client
relationship, and, indirectly, the functioning of our legal
system, by protecting the confidentiality of
communications between clients and their attorneys. In
contrast, the work-product doctrine promotes the
adversary system directly by protecting the
confidentiality of papers prepared by or on behalf of
attorneys in anticipation of litigation. Protecting
attorneys’ work product promotes the adversary system
by enabling attorneys to prepare cases without fear that
their work product will be used against their clients.
Westinghouse, 951 F.2d at 1427–28. Moreover,
the doctrine is an intensely practical one, grounded in
the realities of litigation in our adversary system. One
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of those realities is that attorneys often must rely on the
assistance of investigators and other agents in the
compilation of materials in preparation for trial. It is
therefore necessary that the doctrine protect material
prepared by agents for the attorney as well as those
prepared by the attorney himself.
United States v. Nobles, 422 U.S. 225, 238–39 (1975) (footnote omitted).
Thus, under Rule 26(b)(3), the work-product doctrine shields from
discovery “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).” Fed. R. Civ. P. 26(b)(3)(A). “In
distinguishing between proceedings which qualify as litigation and those
that do not, the adversarial nature of the proceeding is characteristic of
litigation.” In re Rail Freight Fuel Surcharge Antitrust Litig., 268 F.R.D.
114, 117 (D.D.C. 2010). Although a common hallmark of litigation is
whether “the parties have the right to cross-examine witnesses or to
subject an opposing party’s presentation of proof to equivalent
disputation,” see United States v. Am. Tel. & Tel. Co., 86 F.R.D. 603, 627
(D.D.C. 1980),
[t]he proper focus should be whether the proceeding
required the lawyer to function as lawyers usually do at
a trial so that the proceeding can be classified as
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“litigation.” This properly segregates the transactional
work of lawyers who draft contracts or provide legal
advice from lawyers who have to represent clients before
tribunals that have the power to adjudicate their clients’
rights, whatever the nature of the proceeding. If the
tribunal has the power to adjudicate those rights and
demands that the party before it either make a certain
showing or disprove a particular allegation, the process
is adversarial by its very nature and surely qualifies as
litigation.
Rail Freight Fuel Surcharge, 268 F.R.D. at 118; see also Restatement (3d)
Lawyers § 87 cmt. H (“In general, a proceeding is adversarial when
evidence or legal argument is presented by parties contending against
each other with respect to legally significant factual issues.”).
Rule 26(b)(3) establishes two categories of protection: fact work
product and opinion work product. “Fact work product is discoverable
only upon a showing [of] ‘substantial need’ and by demonstrating that
one cannot otherwise obtain the ‘substantial equivalent’ of such
materials without ‘undue hardship.’” In re Linerboard Antitrust Litig.,
237 F.R.D. 373, 381 (E.D. Pa. 2006) (quoting Fed. R. Civ. P. 26(b)(3)).
Opinion work product, “which consists of ‘mental impressions,
conclusions, opinions, or legal theories of an attorney,’ is afforded almost
absolute protection” and it “is discoverable ‘only upon a showing of rare
and exceptional circumstances.’” Linerboard, 237 F.R.D. at 381 (quoting
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Cendant, 343 F.3d at 663).
Waiver of the work-product doctrine also works differently than
waiver of the attorney-client privilege. Unlike the attorney-client
privilege, where disclosure to a third party waives the privilege unless
the disclosure is necessary to further the legal representation, “the workproduct doctrine serves instead to protect an attorney’s work product
from falling in to the hands of an adversary,” and thus “disclosure must
enable an adversary to gain access to the information” for it to constitute
waiver of work-product protection. Westinghouse, 951 F.2d at 1428; see
also Miller, 104 F.R.D. at 445–46.
Finally, we note that,
[o]rdinarily, the work-product doctrine should only be
applied after it is decided that attorney-client privilege
does not apply. This is because the work-product
doctrine applies only to “documents and tangible things
otherwise discoverable.” If the attorney-client privilege
applies to a particular item, it is absolutely
undiscoverable and the work-product rule does not
apply.
Robinson v. Texas Automobile Dealers Ass’n, 214 F.R.D. 432, 442 (E.D.
Tex. 2003) (citations omitted) (quoting Fed. R. Civ. P. 26(b)(3)), vacated
in part on other grounds by 2013 WL 21911333 (5th Cir. July 25, 2003)
(mem.).
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III.

DISCUSSION
A. Rule 1.6 Duty of Confidentiality
Eckert, Parx, and HMS each argue that the requested discovery is

barred by Rule 1.6 of the Pennsylvania Rules of Professional Conduct,
which provides that “[a] lawyer shall not reveal information relating to
representation of a client unless the client gives informed consent, except
for disclosures that are impliedly authorized in order to carry out the
representation, and except as stated in paragraphs (b) and (c) [of Rule
1.6].” Pa. R. Prof’l Conduct 1.6(a). “The confidentiality provisions of Rule
1.6 provide broader protections than does the attorney-client privilege.”
Office of Disciplinary Counsel v. Baldwin, 225 A.3d 817, 843 (Pa. 2020);
see also In re Gartley, 491 A.2d 851, 859 (Pa. Super. Ct. 1985) (“The
attorney-client privilege is more limited than the ethical obligation of a
lawyer to guard the confidences and secrets of his clients.”), aff’d sub
nom. In re Search Warrant B-21778, 521 A.2d 422 (Pa. 1987).
But this is a discovery dispute in a federal civil action, not an
ethical complaint in disciplinary or disqualification proceedings. It is the
Pennsylvania attorney-client privilege statute, 42 Pa. Cons. Stat. Ann.

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§ 5928, 3 and the federal work-product doctrine, Fed. R. Civ. P. 26(b)(3),
that govern the scope of discoverable information or documents in this
case, not Rule 1.6. See Frieman v. USAir Grp., Inc., Civ. A. No. 93-3142,
1994 WL 675221, at *6 (E.D. Pa. Nov. 23, 1994).
Although Pennsylvania courts have recognized that a
lawyer’s duty of confidentiality is quite extensive, the
Rules of Professional Conduct are not substantive law.
Rather, those rules govern disciplinary proceedings
against Pennsylvania attorneys, and, through its
Supreme Court, the Commonwealth has said that the
rules do not govern or affect judicial application of the
attorney-client privilege.
United States v. Servin, 721 Fed. App’x 156, 159 (3d Cir. 2018) (citations,
internal quotation marks, brackets, and ellipses omitted) (affirming
district court order denying motion to quash IRS summonses); see also
Hodczak v. Latrobe Specialty Steel Co., Civil Action No. 08-649, 2010 WL
4137515, at *2 (W.D. Pa. Aug. 10, 2010). See generally Pa. R. Prof’l
Conduct 1.6 cmt. [3] (“The attorney-client privilege and work-product
doctrine apply in judicial and other proceedings in which a lawyer may
be called as a witness or otherwise required to produce evidence

When the claims and defenses at issue in a civil case arise under
state law, the scope of attorney-client privilege is governed by state law.
Fed. R. Evid. 501.
3

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concerning a client. The rule of client-lawyer confidentiality applies in
situations other than those where evidence is sought from the lawyer
through compulsion of law.”). Indeed, the Rule itself contemplates as
much, expressly providing that “[a] lawyer may reveal such information
to the extent that the lawyer reasonably believes necessary . . . to comply
with other law or court order.” Pa. R. Prof’l Conduct 1.6(c)(8). The Federal
Rules of Civil Procedure constitute such “other law,” and the order that
accompanies this memorandum opinion constitutes such a “court order.”
Rule 1.6 simply provides no basis upon which to deny the motion to
compel or to grant the motions for a protective order or to quash the
subpoenas. See Servin, 721 Fed. App’x at 159–60.
B. Email Strings
The documents at issue here consist mostly of email messages and
attachments.4 As a general rule, “each version of an email string (i.e. a
forward or reply of a previous email message) must be considered as a
separate, unique document.” Rhoads Indus., Inc. v. Bldg. Materials Corp.
of America, 254 F.R.D. 238, 240 (E.D. Pa. 2008); accord United States v.

HMS has produced a handful of text message exchanges for in
camera review as well.
4

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Davita, Inc., 301 F.R.D. 676, 684–85 (N.D. Ga. 2014); Dempsey v.
Bucknell Univ., 296 F.R.D. 323, 336–37 (M.D. Pa. 2013).
For example, an email string consisting of four email
messages would have four distinct versions: (1) the most
recent version consisting of Email 4 (most recent), Email
3, Email 2, and Email 1 (original email), (2) a prior
version consisting of Email 3, Email 2, and Email 1, (3)
a prior version consisting of Email 2 and Email 1, and
(4) the original Email 1. Additionally[,] there could be
other email strings consisting of some or all of Emails 1–
4.
Rhoads Indus., 254 F.R.D. at 240 n.4. Thus, “each message of the string
which is privileged must be separately logged in order to claim privilege
in that particular document.” Rhoads Indus., 254 F.R.D. at 240–41; see
also Davita, 301 F.R.D. at 685 (“[T]he Court simply requires that
Defendants ensure that each withheld email within a string be logged in
some fashion at least once.”).
We note that the Eckert privilege log follows this approach,
describing only the author, the recipient, the subject line, and the time
and date for the top email in each version produced for in camera review.
The Eckert privilege log entries do not describe any prior emails that
might be appended to the top email, and we infer from this format that
either any claim of privilege applicable to prior email messages is

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asserted separately on the log 5 or any prior emails that are responsive
and non-privileged have been produced.
The HMS privilege log appears to group related email messages or
strings together, identifying several related messages or strings together
in a single entry, often without identifying all authors or recipients. See,
e.g., Acosta v. Target Corp., 281 F.R.D. 314, 320 (N.D. Ill. 2012) (“If listing
only the recipients of the last e-mail in a chain fails to disclose everyone
to whom an allegedly privilege communication has been sent, the listing
cannot be adequate. Moreover, if the recipient(s) at an e-mail address
cannot be adequately identified, it is impossible to determine whether the
privilege is properly asserted.”). Any inadequacy in the HMS privilege log
is moot, however, as the most appropriate remedy in our view would have
been in camera inspection of a select sample of the withheld documents,
which we have already done. See generally Nat’l Labor Relations Bd. v.
Jackson Hosp. Corp., 257 F.R.D. 302, 307 (D.D.C. 2009) (outlining four
common remedies for a privilege log that fails to comply with the
requirements of Fed. R. Civ. P. 26(b)(5)).
We found no defects or other issues with the Parx log.

5

The log includes several entries consistent with this inference.
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C. Identification of Documents and Duplicate Copies
The Eckert documents are not Bates-labeled.6 Instead, each
separate email message appears to have been saved to a “pdf” file labeled
with the time and date it was sent, down to the second (i.e.,
“2017_02_14_15_34_42.pdf” appears to be an email sent at 3:34 p.m. on
February 14, 2017). In populating the “sent time” column of its privilege
log, however, we note that Eckert appears to have used inconsistent time
zones—some of the entries are logged using Coordinated Universal Time
instead of the Eastern Standard Time or Eastern Daylight Time recorded
on the header of the email message itself. Each email message has been
produced for in camera review together with a blue slip-sheet on which
the associated filename is printed, and we will refer to each of the Eckert
documents by this filename. 7
In addition, Eckert has produced identical copies of certain email

We do not mean to suggest that the Eckert in camera production
is defective. The federal rules impose no obligation to Bates-label nonprivileged responsive documents produced to the other party, much less
purportedly privileged documents produced for in camera review by the
Court. See Cmty. Ass’n Underwriters of America, Inc. v. Queensboro
Flooring Corp., Civil Action No. 3:10-CV-1559, 2014 WL 12603510, at *5
(M.D. Pa. June 24, 2014). But the convention for our identification of
documents in this opinion bears explanation.
7 HMS and Parx have Bates-labeled their documents.
6

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messages, presumably wherever two copies of the same email message
were recovered from its computer systems. 8 In most instances, a second
pdf file has been produced for in camera review with “(Copy 2)” appended
to its filename.9 All rulings herein with respect to the original documents
should be construed to apply to these identical copies as well. To the
extent the original documents are ordered produced, it is unnecessary for
Eckert to also produce these identical copies of the very same documents.
We note that we originally anticipated that most—if not all—of
the documents produced by HMS for in camera review would be
duplicative of those produced by Eckert, as the subpoena directed to HMS
was generally limited to communications with Eckert attorneys. But
while there may be some overlap, HMS appears to have produced a much
more comprehensive collection of its communications with Eckert
attorneys than Eckert has. Thus, we have not endeavored to exclude any

2018_11_28_15_13_42 (Copy 2).pdf; 2019_05_02_13_50_00.pdf;
2019_05_06_15_43_12
(Copy
2).pdf;
2020_01_15_07_49_01.pdf;
2020_01_22_16_28_25 (Copy 2).pdf; 2020_01_23_09_19_41 (Copy 2).pdf;
2020_01_30_13_04_55 (Copy 2).pdf; 2020_02_10_14_38_15 (Copy 2).pdf;
2020_02_19_18_01_55 (Copy 2).pdf; 2020_02_19_18_21_19 (Copy 2).pdf;
2020_02_19_18_55_53 (Copy 2).pdf; 2020_02_20_16_10_20 (Copy 2).pdf;
2020_05_01_17_12_49 (Copy 2).pdf.
9 In two instances, the duplicate is time-stamped one second later
than the original.
8

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HMS documents that may be duplicative of those to be produced by
Eckert. We have, however, identified a handful of documents that are
identical copies of other documents produced by HMS for in camera
review: we find it unnecessary for HMS to produce HMS-000815 (an
identical copy of HMS-000814), HMS-000926 (an identical copy of HMS000925), HMS-000972–HMS-000984 (an identical copy of HMS-000959–
HMS-000971), HMS-001323 (an identical copy of HMS-001322), or HMS001325 (an identical copy of HMS-001324).
D. Common-Interest Doctrine and Government Attorneys
The documents produced for in camera review by Eckert and HMS
include communications and documents shared with government
attorneys representing various state agencies and the City of
Philadelphia—the defendants in POM’s Commonwealth Court cases.
HMS has asserted attorney-client privilege with respect to some of these
materials, relying on the common-interest doctrine. Eckert has not
included any entries in its privilege log describing communications with
these government attorneys, but some of the emails described on Eckert’s
log include within them copies of prior emails shared with these
government attorneys.

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Although occasionally termed a privilege itself, the
common interest doctrine is really an exception to the
rule that no privilege attaches to communications
between a client and an attorney in the presence of a
third person. In effect, the common interest doctrine
extends the attorney-client privilege to otherwise nonconfidential communications in limited circumstances.
For that reason, the common interest doctrine only will
apply where the parties undertake a joint effort with
respect to a common legal interest, and the doctrine is
limited strictly to those communications made to further
an ongoing enterprise.
United States v. BDO Seidman, LLP, 492 F.3d 806, 815–16 (7th Cir.
2007) (citation omitted). “To qualify for protection under the commoninterest privilege, ‘the communication must be shared with the attorney
of the member of the community of interest,’ and ‘all members of the
community must share a common legal interest in the shared
communication.’” In re Processed Egg Prods. Antitrust Litig., 278 F.R.D.
112, 118 (E.D. Pa. 2011) (quoting In re Teleglobe Commc’ns Corp., 493
F.3d 345, 364 (3d Cir. 2007)). “[T]he requirement that the parties to the
communication share ‘at least a substantially similar legal interest’
prevents abuse of the privilege and ‘unnecessary information sharing.’”
Id. (quoting Teleglobe, 493 F.3d at 365) (footnote omitted). “The common
interest binding parties to the communication must be legal in nature,
and not merely commercial or business related.” Id. at 118 n.6 (emphasis
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added).
Here, HMS contends that Parx has shared a common legal interest
with the government defendants insofar as they are all opposed to POM’s
litigation position in the Commonwealth Court cases. But the legal
interest of the government defendants in the Commonwealth Court cases
is that of regulators of gaming devices, such as those manufactured and
sold by POM. As regulators, the government defendants represent the
public interest, not any particular commercial or business interest.
Meanwhile, Parx has intervened—or sought to intervene—in the
Commonwealth cases based on its commercial interests: in short, the
gaming devices manufactured and sold by POM are competition for its
casino business, which is likewise regulated by the same government
regulators. This economic interest may align Parx with the policy
interests of the government regulators in POM’s Commonwealth Court
cases, but ultimately, they are not substantially similar legal interests,
and thus the common-interest doctrine does not shield communications
or documents shared between Parx’s attorneys and the government
attorneys from disclosure. See Hope for Families & Cmty. Serv., Inc. v.
Warren, No. 3:06-CV-1113-WKW, 2009 WL 174970, at *24–*25 (M.D.

- 21 -

Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 22 of 46

Ala. Jan. 26, 2009).
Based on our in camera review, the following documents are nonprivileged communications involving attorneys representing government
regulators with whom Parx did not share a common legal interest. The
objections raised by HMS and Parx are overruled, and the following
documents shall be produced to the plaintiffs:
1)
2)
3)
4)
5)
6)
7)
8)

HMS-000714–HMS-000722
HMS-000816
HMS-000959–HMS-000971
HMS-001083–HMS-001088
HMS-001089–HMS-001092
HMS-001093–HMS-001105
HMS-001106–HMS-001107
HMS-001108–HMS-001112

9)
10)
11)
12)
13)
14)
15)
16)

HMS-001113–HMS-001117
HMS-001118–HMS-001119
HMS-001131–HMS-001132
HMS-001331–HMS-001334
HMS-001335–HMS-001338
HMS-001339–HMS-001340
HMS-001341–HMS-001342
HMS-001343–HMS-001345

E. Transmittal Messages
Several of the documents logged by Eckert and HMS are mere
transmittal messages to or from attorneys forwarding other messages or
documents that are not themselves privileged or otherwise protected
from disclosure. It is well settled that “[t]ransmittal documents
themselves are not privileged unless they reveal the client’s confidences.”
Gucci Am., Inc. v. Guess?, Inc., 271 F.R.D. 58, 79 (S.D.N.Y. 2010).
Likewise, work-product protection does not attach to mere transmittal
- 22 -

Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 23 of 46

letters that do not contain the mental impressions of counsel. See Smith
ex rel. Smith v. United States, 193 F.R.D. 201, 214 (D. Del. 2000); see also
Dixie Mill Supply Co., Inc. v. Continental Cas. Co., 168 F.R.D. 554, 559
(E.D. La. 1996) (“Mere transmittal or confirmation letters, which do not
contain any confidential communications or attorney advice, opinion or
mental impressions, are not privileged simply because they are written
by or to an attorney.”). Although “attached documents may themselves
be protected by the attorney-client privilege or the work-product
doctrine, . . . the transmittal messages are not.” Dempsey v. Bucknell
Univ., 296 F.R.D. 323, 336 (M.D. Pa. 2013). With respect to such
transmittal messages, the objection to production will be overruled and
the defendant will be ordered to produce these documents.
Based on our in camera review, the following documents are nonprivileged transmittal messages, containing no confidential client
information or legal advice. The objections of Eckert, HMS, and Parx are
overruled, and the following documents shall be produced to the
plaintiffs:
1)
2)
3)
4)

2019_07_16_23_06_14.pdf
2019_11_20_19_57_16.pdf
2019_11_21_11_35_26.pdf
2019_11_22_12_39_49.pdf

5)
6)
7)
8)
- 23 -

2019_11_22_14_06_31.pdf
2019_11_25_18_01_20.pdf
2019_12_19_09_16_07.pdf
2019_12_19_14_38_32.pdf

Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 24 of 46

9)
10)
11)
12)
13)
14)
15)
16)
17)
18)
19)
20)
21)

2019_12_20_09_58_07.pdf
2020_01_03_16_02_42.pdf
2020_01_13_16_49_17.pdf
2020_01_21_10_57_52.pdf
2020_01_21_12_58_11.pdf
2020_01_27_11_17_33.pdf
2020_01_28_11_55_57.pdf
2020_02_05_11_40_20.pdf
2020_02_05_11_42_28.pdf
2020_02_06_17_03_53.pdf
2020_02_20_16_08_56.pdf
2020_02_20_16_11_16.pdf
2020_05_11_10_57_45.pdf

22)
23)
24)
25)
26)
27)
28)
29)
30)
31)
32)
33)

2020_05_13_08_41_56.pdf
2020_05_15_16_11_57.pdf
HMS-000709
HMS-000725–HMS-000732
HMS-000745–HMS-000811
HMS-000936–HMS-000938
HMS-000949
HMS-000950–HMS-000951
HMS-000952
HMS-000953–HMS-000956
HMS-000957–HMS-000958
HMS-001049–HMS-001056

We have further found two copies of one transmittal message that
should be disclosed with redaction. In a November 27, 2019, email
message—identified as 2019_11_27_14_13_25.pdf by Eckert and HMS000001–HMS-000059 by HMS—Stewart forwarded to McKeon a prior
non-privileged email message with attachments concerning nonprivileged business and lobbying issues, which was sent to numerous
recipients regarding “Documents discussed on 10/31 Industry call.” In
addition to that prior email and its attachments, Stewart attached a copy
of a draft brief prepared by other counsel for other litigation to which
POM is not a party, identified in the Eckert document as an attachment
named “PLD – BRIEF IOT TO DEF RAJESHWARI”S PRELMINARY
OBJECTIONS TO COMPLAINT …docx” and identified in the HMS
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Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 25 of 46

document by Bates-labeled pages HMS-000035–HMS-000059. This draft
appears to constitute protected work product. Therefore, the objections of
Eckert, HMS, and Parx with respect to these documents are overruled in
part and sustained in part; Eckert and HMS shall produce these
documents with appropriate redactions.
F. Business Conversations
HMS has produced for in camera review a short set of text
messages exchanged between Stewart and McKeon on February 20,
2020, described in HMS’s log as concerning the “POM lawsuit” against
Eckert: HMS-001322 and HMS-001324. But while this text message
conversation may have indirectly involved the instant lawsuit by POM
against Eckert, upon in camera review, it is clear that these
communications do not involve any legal advice or services, and they
were created in the ordinary course of law firm business. The
conversation between the two lawyers concerned Stewart’s efforts to
retain Parx as a client, which required discussions with various members
of the client’s board of directors. The objections by Eckert, HMS, and Parx
are overruled, and documents HMS-001322 and HMS-001324 shall be
produced to the plaintiff.

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Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 26 of 46

G. Lobbying and Public Affairs Communications
Many entries on Eckert’s privilege log identify communications
with lobbyists and public relations professionals. In particular, these
include emails exchanged with Richard Gmerek and Sean Schafer, both
of whom are lawyer-lobbyists, and with Pete Shelly and Charlie Lyons,
both of whom are non-lawyer public affairs professionals.
With respect to the lawyer-lobbyists, Gmerek and Schafer, it is
axiomatic that “communications, even between lawyer and client, are not
privileged unless they are made for the purpose of rendering legal advice
or, to use another formulation, unless they related to the rendition of
‘professional legal services.’” In re Chevron Corp., 749 F. Supp. 2d 141,
165 (S.D.N.Y. 2010) (footnotes omitted). “Lawyers sometimes act as
lobbyists, and thus the issue has arisen as to whether the attorney-client
and work-product privileges protect communications made and materials
prepared in the course of a lawyer’s lobbying efforts.” In re Grand Jury
Subpoenas, 179 F. Supp. 2d 270, 285 (S.D.N.Y. 2001). “Lobbying
conducted by attorneys does not necessarily constitute legal services for
purposes of the attorney-client privilege.” United States Postal Serv. v.
Phelps Dodge Refining Corp., 852 F. Supp. 156, 164 (E.D.N.Y. 1994).

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Of course, the inquiry is fact-specific. The fact that a
lawyer occasionally acts as a lobbyist does not preclude
the lawyer from acting as a lawyer and having
privileged communications with a client who is seeking
legal advice. . . . On the other hand, “[i]f a lawyer
happens to act as a lobbyist, matters conveyed to the
attorney for the purpose of having the attorney fulfill the
lobbyist role do not become privileged by virtue of the
fact that the lobbyist has a law degree or may under
other circumstances give legal advice to the client,
including on matters that may also be the subject of the
lobbying efforts.”
Grand Jury Subpoenas, 179 F. Supp. 2d at 285.
“Communications that merely summarize the content of public
meetings or that relate to the status of lobbying efforts have been held
not to be privileged where they do not rise to the level of legal advice.”
Robinson, 214 F.R.D. at 445; see also Phelps Dodge, 852 F. Supp. at 164.
But “[i]f a lawyer who is also a lobbyist gives advice that requires legal
advice that requires legal analysis of legislation, such as interpretation
or application of the legislation to fact scenarios, that is certainly the type
of communication that the privilege is meant to protect.” Robinson, 214
F.R.D. at 446. Ultimately, in evaluating communications with Gmerek
and Schafer, 10 we must look to see whether the primary or predominant

10

Or other lawyers involved in these lobbying discussions.
- 27 -

Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 28 of 46

purpose of the communication was to procure legal advice, as opposed to
legislative, lobbying, or public relations services. See Burton v. R.J.
Reynolds Tobacco Co., Inc., 170 F.R.D. 481, 484 (D. Kan. 1997) (“Legal
advice must predominate for the communication to be protected. The
privilege does not apply where the legal advice is merely incidental to
business advice. Lobbying services performed by an attorney on behalf of
a client do not constitute legal services for purposes of the attorney-client
privilege.”) (citations omitted); see also Chevron, 749 F. Supp. 2d at 165;
NXIVM Corp. v. O’Hara, 241 F.R.D. 109, 126, 129 (N.D.N.Y. 2007);
Robinson, 214 F.R.D. at 446.
With respect to the non-lawyer public affairs professionals, Shelly
and Lyons, such communications generally are not protected by attorneyclient privilege because they predominantly relate to standard public
relations or messaging issues, rather than legal advice or issues. See In
re Riddell Concussion Reduction Litig., Civil No. 13-7585 (JBS/JS), 2016
WL 7108455, at *9 (D.N.J. Dec. 5, 2016). “A media campaign is not a
litigation strategy. Some attorneys may feel it is desirable at times to
conduct a media campaign, but that does not transform their
coordination of a campaign into legal advice.” Haugh v. Schroder Inv.

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Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 29 of 46

Mgmt. North America, Inc., No. 02 Civ.9755 DLC, 2003 WL 21998674, at
*3 (S.D.N.Y. Aug. 25, 2003); see also Riddell, 2016 WL 7108455, at *9
(quoting Haugh and NXIVM); Chevron, 749 F. Supp. 2d at 165 n.142
(quoting Haugh); NXIVM, 241 F.R.D. at 141 (citing Haugh).
Communications such as these are protected only “if the public relations
consultants’ communications are made in connection with ongoing or
anticipated litigation and the [public relations] advice is directed at
supporting the client’s litigation position, or the P.R. input is necessary
for an attorney to provide legal advice.” Riddell, 2016 WL 7108455, at *9.
Based on our in camera review, the following documents are nonprivileged communications concerning lobbying or public relations advice
or services. Any legal advice contained therein is no more than incidental
to the predominant lobbying or public relations purposes of these
documents.11 The objections by Eckert, HMS, and Parx are overruled,
and the following documents shall be produced to the plaintiffs:
1)

2019_04_15_11_30_49.pdf

2)

2019_05_02_13_49_59.pdf

We note that document 2019_05_02_13_49_59.pdf includes a
legal memorandum as an attachment, but the email itself indicates that
this memorandum was previously disclosed to government attorneys and
other third parties, and thus it is not privileged. We further note that
several other documents include drafts of legal opinions prepared for
dissemination to legislators or other non-privileged recipients.
11

- 29 -

Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 30 of 46

3)
4)
5)
6)
7)
8)
9)
10)
11)
12)
13)
14)
15)
16)
17)
18)
19)
20)
21)
22)
23)
24)
25)
26)
27)
28)
29)
30)
31)
32)
33)
34)
35)
36)
37)
38)

2019_05_02_15_29_57.pdf
2019_05_02_16_40_39.pdf
2019_05_28_16_03_43.pdf
2019_05_28_16_22_48.pdf
2019_05_29_12_09_56.pdf
2019_06_03_15_53_47.pdf
2019_06_12_16_55_18.pdf
2019_06_14_14_19_52.pdf
2019_06_14_14_29_36.pdf
2019_06_14_14_56_58.pdf
2019_06_14_17_21_16.pdf
2019_06_14_17_50_13.pdf
2019_06_14_17_51_46.pdf
2019_06_17_16_05_21.pdf
2019_06_17_16_51_49.pdf
2019_06_17_17_22_56.pdf
2019_06_17_17_30_08.pdf
2019_11_20_16_48_14.pdf
2019_11_20_17_26_23.pdf
2019_11_20_17_39_02.pdf
2019_11_20_18_09_05.pdf
2019_11_20_18_19_20.pdf
2019_11_20_18_31_03.pdf
2019_11_20_18_35_51.pdf
2019_11_20_18_42_52.pdf
2019_11_21_09_59_17.pdf
2019_11_21_11_33_54.pdf
2019_11_21_13_09_31.pdf
2019_11_21_13_26_27.pdf
2019_11_21_14_08_51.pdf
2019_11_21_14_19_51.pdf
2019_11_21_14_28_53.pdf
2019_11_21_14_31_13.pdf
2019_11_21_14_32_31.pdf
2019_11_21_14_57_04.pdf
2019_11_21_15_00_21.pdf

39)
40)
41)
42)
43)
44)
45)
46)
47)
48)
49)
50)
51)
52)
53)
54)
55)
56)
57)
58)
59)
60)
61)
62)
63)
64)
65)
66)
67)
68)
69)
70)
71)
72)
73)

- 30 -

2019_11_22_09_32_09.pdf
2019_11_22_11_57_40.pdf
2019_11_22_17_36_12.pdf
2019_12_09_23_08_38.pdf
2019_12_10_07_02_32.pdf
2019_12_10_07_07_26.pdf
2019_12_10_09_24_14.pdf
2019_12_10_09_25_46.pdf
2019_12_11_23_24_42.pdf
2019_12_11_23_39_21.pdf
2019_12_13_10_10_12.pdf
2019_12_13_10_12_21.pdf
2019_12_13_10_13_06.pdf
2019_12_13_11_16_51.pdf
2019_12_13_13_31_21.pdf
2019_12_13_13_47_48.pdf
2019_12_19_13_34_47.pdf
2019_12_31_11_12_17.pdf
2020_02_05_16_41_30.pdf
2020_02_07_10_34_48.pdf
2020_03_04_16_39_04.pdf
2020_03_04_16_48_08.pdf
2020_03_04_17_42_47.pdf
2020_03_04_17_51_05.pdf
2020_03_04_18_05_41.pdf
2020_03_06_10_43_08.pdf
2020_03_20_10_09_48.pdf
2020_03_20_10_12_30.pdf
2020_03_21_08_30_59.pdf
2020_03_22_13_31_45.pdf
HMS-000064–HMS-000072
HMS-000073–HMS-000075
HMS-000076–HMS-000083
HMS-000084–HMS-000085
HMS-000086–HMS-000087

Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 31 of 46

In addition, the following documents are email strings in which
the top email is itself a non-privileged communication concerning
lobbying or public relations advice or services, but prior emails providing
legal advice or analysis with respect to lobbying issues are included in
the email string. The following documents shall be produced, but with
the emails sent by Richard Gmerek at 11:06 a.m. on March 1, 2019, and
by Mark Stewart at 11:01 a.m. on March 1, 2019, redacted:
1)
2)

2019_03_01_11_39_44.pdf
2019_03_01_15_53_16.pdf

3)
4)

2019_03_01_15_58_37.pdf
2019_03_01_16_00_10.pdf

H. Subject-Matter Waiver by Selective Disclosure
The plaintiff contends that, in Commonwealth Court filings, Parx
selectively disclosed the substance of communications between McKeon
and Stewart with respect to preparation of an amicus brief, including a
printout of a text message exchange as to which HMS and Parx have
asserted a claim of attorney-client privilege in this litigation. POM
argues that this selective disclosure effects a broad subject-matter waiver
of attorney-client privilege with respect to all communications between
Eckert and HMS attorneys regarding the same subject matter, POM’s
Commonwealth Court cases. While the federal courts have recognized a

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broad subject-matter waiver doctrine with respect to federal claims,
“Pennsylvania courts have not adopted subject-matter waiver.” Bagwell
v. Pennsylvania Dep’t of Educ., 103 A.3d 409, 419 (Pa. Commw. Ct. 2014).
As we have previously noted, in a diversity action such as this one,
Pennsylvania state law governs whether attorney-client privilege applies
to the documents at issue. See Fed. R. Evid. 501. Thus, we do not find a
broad subject-matter waiver appropriate in this case.
We do find, however, that any applicable attorney-client privilege
or work-product protection with respect to HMS-000060–HMS-000063
has been waived based on the specific disclosure or description of the
substance of these text messages between Stewart and McKeon in the
Commonwealth Court proceedings. Indeed, not only was it described in
Parx’s filings there, but HMS-000060 itself was filed as an exhibit.
I. Judicial Estoppel and Implied Waiver of Privilege
Eckert has repeatedly, and unequivocally, denied that it has
represented an adverse party in litigation against POM. In its answer
and affirmative defenses in this case, Eckert expressly pleaded that:
(1) “Eckert does not represent a party adverse to POM in litigation,” (Doc.
9 ¶ 18); and (2) “Eckert is not counsel in any litigation where POM is an

- 32 -

Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 33 of 46

adverse party,” (id. at 13 (Seventeenth Affirmative Defense)). In the Joint
Case Management Plan submitted by both parties, Eckert stated that:
“Eckert is not involved in [POM’s Commonwealth Court] case.” (Doc. 18
§ 1.1.) In its brief in opposition to the plaintiff’s motion for a preliminary
injunction, Eckert stated that: “Eckert is not representing parties in
litigation adverse to POM.” (Doc. 21, at 2.)
POM has sought to test these representations through discovery,
requesting the production of documents by Eckert that
refer or relate to or otherwise embody communications
with any person or entity concerning the matter
captioned POM of Pennsylvania, LLC v. Commonwealth
of Pennsylvania, Department of Revenue and City of
Philadelphia, docketed at 418 M.D. 2018 in the
Commonwealth Court of Pennsylvania, or the matter
captioned POM of Pennsylvania, LLC v. Pennsylvania
State Police, Bureau of Liquor Control Enforcement,
docketed at 503 M.D. 2018 in the Commonwealth Court
of Pennsylvania, including, but not limited to,
communications with any amicus counsel representing
[Parx] and communications to municipal, government
and regulatory bodies that reference or relate to either
action.
(Doc. 51-6, at 3.) POM has also served an interrogatory requesting that
Eckert
[i]dentify and describe with particularity all
communications that any Eckert lawyer, including
Mark S. Stewart, had with any amicus counsel for [Parx]
- 33 -

Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 34 of 46

in the matter captioned POM of Pennsylvania, LLC v.
Pennsylvania State Police, Bureau of Liquor Control
Enforcement, docketed at No. 503 M.D. 2018 in the
Commonwealth Court, including, but not limited to, at
the hearing in the Commonwealth Court on January 15,
2020.
(Doc. 51-7, at 3.) Eckert has withheld responsive documents and refused
to answer the interrogatory on the ground that such documents and
information are protected from disclosure by attorney-client privilege.12
In both cases, Parx has moved to intervene as a party-opponent of POM,13
and in one of these cases, it has appeared as amicus curiae in opposition
to a motion for a preliminary injunction by POM as well. In both cases,
Parx has appeared through counsel of record Kevin McKeon and Adrian
King. The withheld documents—and presumably any information
responsive

to

the

interrogatory

response

as

well—involve

communications between Stewart and other Eckert attorneys, on the one
hand, and King, McKeon, and Parx on the other.
Perhaps it goes without saying, but “[f]irst and foremost, the
attorney-client privilege applies only if an attorney-client relationship
exists.” Bare v. Cruz, Civil Action No. 10-4546, 2012 WL 1138591, at *3

12
13

Eckert has also invoked the work-product doctrine.
The motions to intervene remain pending in both cases.
- 34 -

Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 35 of 46

(E.D. Pa. Apr. 2, 2012). “The privilege requires the existence of a
relationship in which an attorney is acting in his professional capacity as
a lawyer; the key is whether there has been a professional consultation
with an attorney, who acts or advises as such.” Constand v. Cosby, 232
F.R.D. 494, 502 (E.D. Pa. 2006) (quoting Okum v. Unemployment
Compensation Bd. of Review, 465 A.2d 1324, 1325 (Pa. Commw. Ct.
1983)). Here, in this litigation, Eckert has taken the position that it is not
involved in any other litigation where POM is an adverse party. At the
same time, Eckert has taken the position that its communications with
counsel representing Parx and other clients actively opposing POM in the
Commonwealth Court cases are protected by attorney-client privilege,
which necessarily requires an attorney-client relationship between
Eckert and those adverse parties. The two positions cannot be reconciled.
Judicial estoppel is an equitable doctrine that entails “the intrinsic
ability of courts to dismiss an offending litigant’s complaint without
considering the merits of the underlying claims when such dismissal is
necessary to prevent a litigant from playing fast and loose with the
courts.” In re Kane, 628 F.3d 631, 637 (3d Cir. 2010). “Though there is no
rigid test for judicial estoppel, three factors inform a federal court’s

- 35 -

Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 36 of 46

decision whether to apply it: there must be (1) ‘irreconcilably inconsistent
positions;’ (2) ‘adopted . . . in bad faith;’ and (3) ‘a showing that . . .
estoppel address[es] the harm and . . . no lesser sanction [is] sufficient.’”
G-I Holdings, Inc. v. Reliance Ins. Co., 586 F.3d 247, 262 (3d Cir. 2009)
(quoting Chao v. Roy’s Constr., Inc., 517 F.3d 180 186 n.5 (3d Cir. 2008))
(alterations in original).
Based on our in camera review, and under the circumstances
presented in this case, we find the defendant is estopped from asserting
attorney-client privilege with respect to the following documents based
on its express statements in pleadings and other papers before this court
that it does not represent an adverse party, such as Parx, and it is not
otherwise “involved” in the POM Commonwealth Court cases. See G-I
Holdings, 586 F.3d at 262 (noting that judicial estoppel may be applied
to neutralize threats to judicial integrity even if a court has not accepted
the initial position); In re Berks Behavioral Health LLC, 500 B.R. 711,
721 (E.D. Pa. Bankr. 2013) (estopping a debtor-plaintiff in an adversary
action from recharacterizing his son’s role with the company to assert
privilege when he had previously contended that his son had no role with
the company). Moreover, to the extent Parx has adopted Eckert’s

- 36 -

Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 37 of 46

privilege log and seeks to interpose attorney-client privilege on its own
behalf with respect to documents in Eckert’s possession, Parx is likewise
estopped from asserting attorney-client privilege with respect to these
documents based on its papers filed in the Commonwealth Court cases,
in which Parx and its counsel of record there (HMS) have expressly
represented that “Eckert is not counsel in this case” and implicitly
represented that Eckert played no substantial role in Parx’s activities in
those cases. (See Doc. 82, at 162–68.)
In particular, we find that Eckert and Parx have adopted
irreconcilably inconsistent positions with respect to whether Eckert
represented and provided legal advice and services to Parx in connection
with the Commonwealth Court cases, where POM and Parx were directly
adverse, when denying liability or opposing disqualification on the one
hand versus invoking attorney-client privilege in attempting to shield
documents concerning that (non-)representation from disclosure. We find
that, based on our in camera review of these purportedly privileged
documents, these inconsistent positions were arguably adopted in bad
faith. Finally, we find that, under the particular circumstances of this
case, the estoppel addresses the harm to POM, Eckert’s other client, and

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Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 38 of 46

no lesser sanction would suffice.
We further find that these documents are not protected by the
work-product doctrine. “Many courts faced with the issue of the
production of opinion work product have recognized an exception to Rule
26(b)(3) protection for work product which concerns the activities of
counsel that are directly in issue. Charlotte Motor Speedway, Inc. v. Int’l
Ins. Co., 125 F.R.D. 127, 130 (M.D.N.C. 1989); see also Hartman v. Banks,
164 F.R.D. 167, 170 (E.D. Pa. 1995) (“[O]pinion work product can be
discovered in cases in which the opinions of an attorney or his agent are
themselves at issue.”); In re Sunrise Sec. Litig., 130 F.R.D. 560, 567 (E.D.
Pa. 1989) (“Allegations of . . . misconduct while rendering legal advice
also can place attorneys’ mental impressions and opinions directly at
issue and eliminate work product protection.”); Truck Ins. Exch. v. St.
Paul Fire & Marine Ins. Co., 66 F.R.D. 129, 136 (E.D. Pa. 1975) (“[T]he
materials in [counsel’s] file are sought here because they are at issue in
this action before the Court. The activities of counsel in the underlying
lawsuit are the basis of the [defendant’s] defense in this case.”); Sec. &
Exch. Comm’n v. Nat’l Student Mktg. Corp., 18 Fed. R. Serv. 2d 1302,
1974 WL 415, at *3 (D.D.C. June 25, 1974) (no work-product protection

- 38 -

Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 39 of 46

where production requests were served on law firm as defendants and
activities of counsel were at issue in the action before the court). See
generally 8 Richard L. Marcus, Federal Practice and Procedure § 2026 (3d
ed. 2020) (“[C]ourts have found such disclosure justified principally
where the material is directly at issue, particularly if the lawyer or law
firm is a party to the litigation.”); 6 James Wm. Moore, et al., Moore’s
Federal Practice § 26.70[6][c] (3d ed. 2020) (“A party . . . impliedly waives
work product protection if it places the substance of the documents for
which the protection is claimed at issue.”). Courts have also held that the
work-product doctrine cannot shield a lawyer’s papers from discovery
where that work product implicates or creates a conflict of interest. See
Koen Book Distributors, Inc. v. Powell, Trachtman, Logan, Carrle,
Bowman & Lombardo, P.C., 212 F.R.D. 283, 286 (E.D. Pa. 2002); cf.
Sunrise Sec. Litig., 130 F.R.D. at 597 (no attorney-client privilege where
law firm’s communication with in-house counsel implicated or created a
conflict between law firm’s fiduciary duties to itself and to the client
seeking to discover the communication); Valente v. Pepsico, Inc., 68
F.R.D. 361, 368–70 (E.D. Pa. 1975) (finding attorney-client privilege did
not apply where a conflicted attorney subordinated one client’s interest

- 39 -

Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 40 of 46

to another’s).
Accordingly, the objections of Eckert, HMS, and Parx are
overruled, and the following documents shall be produced to the
plaintiffs:
1)
2)
3)
4)
5)
6)
7)
8)
9)
10)
11)
12)
13)
14)
15)
16)
17)
18)
19)
20)
21)
22)
23)
24)
25)
26)
27)
28)
29)
30)

2019_12_13_13_45_48.pdf
2019_12_13_15_24_35.pdf
2019_12_13_16_58_02.pdf
2019_12_13_17_04_24.pdf
2019_12_13_17_05_37.pdf
2019_12_14_11_06_16.pdf
2019_12_16_16_56_58.pdf
2019_12_18_02_55_49.pdf
2019_12_18_12_12_16.pdf
2019_12_18_12_57_27.pdf
2019_12_18_14_04_35.pdf
2019_12_18_14_12_23.pdf
2019_12_18_14_42_06.pdf
2019_12_18_15_14_03.pdf
2019_12_19_16_22_36.pdf
2020_01_13_13_05_02.pdf
2020_01_13_13_26_46.pdf
2020_01_13_13_39_23.pdf
2020_01_13_17_16_53.pdf
2020_01_13_18_05_01.pdf
2020_01_14_15_49_07.pdf
2020_01_14_15_55_27.pdf
2020_01_14_16_24_06.pdf
2020_01_14_17_37_03.pdf
2020_01_14_19_46_34.pdf
2020_01_14_23_55_57.pdf
2020_01_15_07_49_00.pdf
2020_01_15_07_50_51.pdf
2020_01_15_07_51_56.pdf
2020_01_16_18_09_26.pdf

31)
32)
33)
34)
35)
36)
37)
38)
39)
40)
41)
42)
43)
44)
45)
46)
47)
48)
49)
50)
51)
52)
53)
54)
55)
56)
57)
58)
59)
60)
- 40 -

2020_01_16_19_41_46.pdf
2020_01_17_16_23_45.pdf
2020_01_17_16_39_22.pdf
2020_01_17_16_45_14.pdf
2020_01_17_16_51_18.pdf
2020_01_19_16_01_31.pdf
2020_01_22_16_28_25.pdf
2020_01_22_18_44_52.pdf
2020_01_23_07_21_42.pdf
2020_01_23_09_19_41.pdf
2020_01_23_09_40_35.pdf
2020_01_23_10_54_41.pdf
2020_01_23_10_58_33.pdf
2020_01_23_11_19_43.pdf
2020_01_23_11_29_40.pdf
2020_01_26_22_47_08.pdf
2020_01_26_22_45_37.pdf
2020_01_27_19_04_50.pdf
2020_01_30_11_34_32.pdf
2020_01_30_11_34_33.pdf
2020_01_30_12_03_36.pdf
2020_01_30_13_04_55.pdf
2020_01_30_13_06_10.pdf
2020_02_04_12_05_21.pdf
2020_02_04_12_53_05.pdf
2020_02_04_16_21_41.pdf
2020_02_05_10_24_31.pdf
2020_02_06_08_19_01.pdf
2020_02_06_09_56_51.pdf
2020_02_07_14_10_16.pdf

Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 41 of 46

61)
62)
63)
64)
65)
66)
67)
68)
69)
70)
71)
72)
73)
74)
75)
76)
77)
78)
79)
80)
81)
82)
83)
84)
85)
86)
87)
88)
89)
90)
91)
92)
93)
94)
95)
96)
97)
98)

2020_02_07_14_10_56.pdf
2020_02_07_16_11_26.pdf
2020_02_07_16_19_05.pdf
2020_02_07_16_47_19.pdf
2020_02_10_14_38_15.pdf
2020_02_10_17_48_35.pdf
2020_02_12_11_58_58.pdf
2020_02_12_11_59_15.pdf
2020_02_13_17_35_37.pdf
2020_02_18_10_57_43.pdf
2020_02_20_16_10_20.pdf
2020_02_20_16_16_24.pdf
2020_02_27_15_07_59.pdf
2020_04_07_11_31_00.pdf
2020_05_01_14_25_10.pdf
2020_05_01_14_33_41.pdf
2020_05_01_17_12_49.pdf
2020_05_01_23_09_28.pdf
2020_05_04_09_49_02.pdf
2020_05_04_12_24_38.pdf
2020_05_04_12_26_39.pdf
2020_05_04_12_28_31.pdf
2020_05_07_10_48_18.pdf
2020_05_07_11_23_40.pdf
2020_05_07_11_24_31.pdf
2020_05_07_17_02_24.pdf
2020_05_11_12_53_48.pdf
2020_05_12_10_26_15.pdf
2020_05_12_17_19_04.pdf
2020_05_14_11_42_01.pdf
2020_05_15_10_13_45.pdf
2020_05_15_16_12_26.pdf
HMS-000088–HMS-000112
HMS-000113
HMS-000114–HMS-000193
HMS-000194–HMS-000198
HMS-000199–HMS-000200
HMS-000201–HMS-000202
- 41 -

99) HMS-000203–HMS-000205
100) HMS-000206–HMS-000208
101) HMS-000209–HMS-000249
102) HMS-000250–HMS-000253
103) HMS-000254–HMS-000257
104) HMS-000258–HMS-000261
105) HMS-000262–HMS-000555
106) HMS-000556–HMS-000557
107) HMS-000558
108) HMS-000559–HMS-000592
109) HMS-000593–HMS-000594
110) HMS-000595–HMS-000628
111) HMS-000629–HMS-000630
112) HMS-000631–HMS-000633
113) HMS-000634–HMS-000637
114) HMS-000638–HMS-000671
115) HMS-000672
116) HMS-000673–HMS-000708
117) HMS-000710
118) HMS-000723–HMS-000724
119) HMS-000733–HMS-000736
120) HMS-000737–HMS-000739
121) HMS-000740–HMS-000741
122) HMS-000742
123) HMS-000743–HMS-000744
124) HMS-000812–HMS-000813
125) HMS-000814
126) HMS-000817–HMS-000818
127) HMS-000819–HMS-000820
128) HMS-000821–HMS-000823
129) HMS-000824–HMS-000831
130) HMS-000832–HMS-000833
131) HMS-000834–HMS-000839
132) HMS-000840–HMS-000842
133) HMS-000843–HMS-000846
134) HMS-000847
135) HMS-000848–HMS-000860
136) HMS-000861–HMS-000865

Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 42 of 46

137) HMS-000866–HMS-000914
138) HMS-000915–HMS-000923
139) HMS-000924
140) HMS-000925
141) HMS-000927–HMS-000928
142) HMS-000929
143) HMS-000930
144) HMS-000931–HMS-000933
145) HMS-000934–HMS-000935
146) HMS-000939–HMS-000941
147) HMS-000942–HMS-000945
148) HMS-000946–HMS-000948
149) HMS-000985–HMS-000997
150) HMS-000998–HMS-001007
151) HMS-001008–HMS-001012
152) HMS-001013–HMS-001016
153) HMS-001017–HMS-001020
154) HMS-001021–HMS-001022
155) HMS-001023–HMS-001029
156) HMS-001030–HMS-001048
157) HMS-001057–HMS-001061
158) HMS-001062–HMS-001064
159) HMS-001065–HMS-001066

160) HMS-001067–HMS-001076
161) HMS-001077–HMS-001080
162) HMS-001081–HMS-001082
163) HMS-001120–HMS-001129
164) HMS-001130
165) HMS-001133–HMS-001161
166) HMS-001162–HMS-001194
167) HMS-001195–HMS-001197
168) HMS-001198
169) HMS-001201–HMS-001202
170) HMS-001203–HMS-001204
171) HMS-001205–HMS-001220
172) HMS-001221–HMS-001222
173) HMS-001223–HMS-001251
174) HMS-001252–HMS-001253
175) HMS-001254–HMS-001281
176) HMS-001282–HMS-001298
177) HMS-001299–HMS-001301
178) HMS-001302–HMS-001306
179) HMS-001307–HMS-001310
180) HMS-001311–HMS-001315
181) HMS-001316–HMS-001319
182) HMS-001326–HMS-001330

J. Privileged Documents
Notwithstanding the foregoing, we find that some of the
documents presented for in camera review have been properly designated
as privileged attorney-client communications or protected work product,
and that the applicable attorney-client privilege or work-product
protection has not been waived.

- 42 -

Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 43 of 46

1. Eckert and HMS Attorney-Client Privileged Documents
Based on our in camera review, the following documents are
protected by attorney-client privilege and are properly withheld from
disclosure. These generally include three categories of documents:
(1) attorney-client privileged communications regarding legislative,
lobbying, or public relations issues in which the primary or predominant
purpose of the communication was to procure or provide legal advice;
(2) attorney-client privileged communications regarding the POM
Commonwealth Court cases exchanged before efforts by Parx to
intervene as a party or amicus curiae were undertaken; and (3) attorneyclient privileged communications regarding other subjects, including
other litigation. The defendant’s objections are sustained, and the
following documents shall be withheld from production:
1)
2)
3)
4)
5)
6)
7)
8)
9)
10)
11)
12)

2017_02_14_15_34_42.pdf
2017_06_20_00_02_56.pdf
2017_07_06_11_46_57.pdf
2018_03_20_10_09_35.pdf
2018_03_20_10_12_26.pdf
2018_05_09_16_22_26.pdf
2018_05_10_13_11_40.pdf
2018_11_27_14_04_27.pdf
2018_11_28_15_13_42.pdf
2019_01_24_16_07_34.pdf
2019_02_13_12_07_54.pdf
2019_03_01_11_01_08.pdf

13)
14)
15)
16)
17)
18)
19)
20)
21)
22)
23)
24)
- 43 -

2019_03_01_11_06_07.pdf
2019_04_25_17_06_08.pdf
2019_04_26_11_47_31.pdf
2019_05_06_12_02_53.pdf
2019_05_06_14_48_53.pdf
2019_05_06_15_43_12.pdf
2019_05_09_22_23_18.pdf
2019_05_10_09_31_19.pdf
2019_06_18_16_24_48.pdf
2019_06_18_16_45_29.pdf
2019_07_25_14_26_00.pdf
2019_07_25_15_04_52.pdf

Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 44 of 46

25)
26)
27)
28)
29)
30)
31)
32)
33)

2019_08_14_12_40_15.pdf
2019_08_16_10_16_13.pdf
2019_08_16_10_35_13.pdf
2019_08_16_10_42_44.pdf
2019_11_20_09_28_23.pdf
2019_11_20_09_43_21.pdf
2019_11_20_10_19_08.pdf
2019_11_20_10_39_57.pdf
2019_11_20_11_09_38.pdf

34)
35)
36)
37)
38)
39)
40)
41)

2019_12_10_13_38_10.pdf
2019_12_10_22_33_45.pdf
2019_12_31_12_01_32.pdf
2020_01_06_10_18_00.pdf
2020_01_06_13_06_32.pdf
2020_02_09_12_38_53.pdf
2020_02_10_09_56_26.pdf
HMS-000711–HMS-000713

2. Parx Privileged Documents
Due to its document retention policies, Parx has identified few
documents from its own records responsive to the subpoena served upon
it by POM. In addition to adopting the objections asserted by Eckert in
its privilege log with respect to documents in Eckert’s possession, Parx
has served a privilege log identifying four email messages and
interposing objections to disclosure based on attorney-client privilege and
work-product protection. (See Doc. 49, at 8.) Parx has provided the court
with copies of these emails for in camera review, with each page
sequentially Bates-labeled PARX000001 through PARX000025. Based on
our in camera review, all of these documents are protected by attorneyclient privilege and are properly withheld from disclosure. With respect
to these documents, Parx’s objections are sustained, and the documents
Bates-labeled PARX000001 through PARX000025 shall be withheld from
- 44 -

Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 45 of 46

production.
3. Documents Protected by the Work-Product Doctrine
Based on our in camera review, the following documents are not
protected by attorney-client privilege,14 but they are properly withheld
from disclosure under the work-product doctrine, as they were prepared
in anticipation of this litigation and their disclosure to HMS or Parx and
their respective agents did not waive work-product protection. The
objections by Eckert, HMS, and Parx are sustained, and the following
documents shall be withheld from production:
1)
2)
3)
4)
5)
6)
7)
8)
9)
10)

2020_02_19_18_01_55.pdf
2020_02_19_18_02_22.pdf
2020_02_19_18_21_19.pdf
2020_02_19_18_55_53.pdf
2020_02_20_11_05_59.pdf
2020_02_21_14_56_37.pdf
2020_02_21_15_12_13.pdf
HMS-001320–HMS-001321
HMS-001322
HMS-001324

These documents are a string of emails in which Stewart advised
Parx of the instant federal lawsuit brought by POM against Eckert and
provided additional background information.
14

- 45 -

Case 1:20-cv-00292-JPW Document 87 Filed 02/16/21 Page 46 of 46

IV.

CONCLUSION
For the foregoing reasons, each of the four motions before us will

be granted in part and denied in part. With respect to documents
identified above as duplicative of other documents or protected by
attorney-client privilege or the work-product doctrine, the objections of
Eckert, HMS, and Parx are sustained and said documents shall be
withheld from production. With respect to documents identified above as
non-privileged and non-protected communications with government
attorneys, transmittal messages, business communications, and lobbying
or public affairs communications, or as communications for which any
attorney-client privilege has been waived or judicially estopped and
work-product doctrine does not apply, the objections of Eckert, HMS, and
Parx are overruled and said documents shall be produced to the plaintiff,
subject to any redactions also described above.
An appropriate order follows.

Dated: February 16, 2021

s/Joseph F. Saporito, Jr.
JOSEPH F. SAPORITO, JR.
United States Magistrate Judge