Icon Health & Fitness v. Nautilus

Filing 100

MEMORANDUM DECISION AND ORDER granting in part and denying in part Defendant's 86 Short Form Motion to Compel Plaintiff to Comply with the Court's Prior Order and Produce Documents. Signed by Magistrate Judge Evelyn J. Furse on 2/25/2019. (eat)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH, NORTHERN DIVISION
ICON HEALTH & FITNESS, INC.,
Plaintiff,
v.
NAUTILUS, INC.,
Defendant.

MEMORANDUM DECISION AND
ORDER GRANTING IN PART AND
DENYING IN PART DEFENDANT
NAUTILUS, INC.’S SHORT FORM
DISCOVERY MOTION TO COMPEL
PLAINTIFF ICON HEALTH & FITNESS,
INC. TO COMPLY WITH THE COURT’S
PRIOR ORDER AND PRODUCE
DOCUMENTS (ECF NO. 86)
Civil No. 1:17-cv-00164-DAK-EJF
Judge Dale A. Kimball
Magistrate Judge Evelyn J. Furse

Before the Court is Defendant Nautilus, Inc.’s (“Nautilus”) Short Form Discovery
Motion to Compel Plaintiff ICON Health & Fitness, Inc. (“ICON”) to Comply with the
Court’s Prior Order and Produce Documents (“Motion”) (ECF No. 86). Having reviewed
the Motion and ICON’s response (ECF No. 96), considered the argument of the parties
at the February 12, 2019 hearing (ECF No. 97), and reviewed the engagement letter
and supplemental privilege log provided by Nautilus, the Court GRANTS IN PART and
DENIES IN PART the Motion as set forth below.
First, Nautilus moves to compel the production of ICON’s engagement with Dr.
Lankford. ICON argues that the letter is protected by both the attorney-client privilege
and work product protection. Per the Court’s order at the hearing, Nautilus provided the

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Court with a copy of the engagement letter, which is in fact an e-mail. Having reviewed
the e-mail, the Court finds that the e-mail is not protected by the work product doctrine
and that most portions of the e-mail are not protected by the attorney-client privilege.
Work product protection does not extend to a potential cease-and-desist letter, which in
this case was not even sent, because only a possibility of litigation existed at that time.
See Gucci Am., Inc. v. Guess?, Inc., 271 F.R.D. 58, 75 (S.D.N.Y. 2010) (finding that the
sending of a cease-and-desist letter signified the “possibility of litigation,” which “is
insufficient to trigger the protection of the work product doctrine within the scope of Rule
26(b)(3)”).
Further, the Court finds that the attorney-client privilege does not protect the
majority of the engagement e-mail. Generally, engagement letters are not privileged;
however, if legal advice or strategy is conveyed in the letter, those portions of the letter
may be privileged. See, e.g., Lucas v. Gold Standard Baking, Inc., No. 13 CV 1524,
2017 WL 3394726, at *2 (N.D. Ill. Aug. 8, 2017) (unpublished) (“Generally, retainer
agreements are not protected by attorney-client privilege. [] But if the retainer
agreement contains legal advice or strategy, it can be held to include privileged
information.” (internal citation omitted)). Here, the Court finds that the portions of the email—sent by an ICON employee to Dr. Lankford, an agent of ICON—conveying legal
strategy from ICON’s in-house counsel, through another ICON employee, are protected
by the attorney-client privilege. However, the Court finds the remainder of the e-mail
conveying the fact of the engagement is not privileged. Therefore, the Court GRANTS
in PART Nautilus’s request to compel production of the engagement e-mail and

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ORDERS ICON to produce a redacted version of the engagement e-mail. ICON may
redact the following portions of the e-mail before production: (1) in the second line of
the e-mail, the remainder of the sentence after “trainer,” and (2) the entire sentence
contained in the third and fourth lines of the e-mail beginning with “It.”
Second, Nautilus moves to compel the production communications relating to
compliance with a Federal Trade Commission (“FTC”) Order. ICON argues that the
documents at issue are protected by the attorney-client privilege and work product
doctrine. The Court ordered Nautilus to produce a revised privilege log with respect to
the documents at issue. Having reviewed the revised privilege log, the Court finds that
the documents at issue are not subject to the work product protection, but are protected
by the attorney-client privilege. The Court construes the FTC consent order as a
contract; it does not constitute ongoing litigation. See United States v. ITT Cont'l Baking
Co., 420 U.S. 223, 236 (1975) (indicating that “consent decrees and orders . . . should
be construed basically as contracts”). Therefore, such documents are not subject to
work product protection. However, the Court finds that the documents are subject to the
attorney-client privilege. The revised privileged log, which the Court finds sufficiently
detailed, indicates that documents at issue reflect communications between ICON’s inhouse counsel and an agent made for the purposes of seeking, obtaining, and/or
rendering legal opinions on compliance with the FTC Order. Thus, these documents
are protected by the attorney-client privilege. See, e.g., CoStar Grp., Inc. v. Xceligent,
Inc., No. 4:16-CV-01288-FJG, 2017 WL 5957774, at *3 (W.D. Mo. Sept. 11, 2017)
(unpublished) (noting that “communications about the FTC Order and compliance with

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the FTC order involved [plaintiff’s] legal department,” and are therefore “protected by the
attorney-client privilege”). Accordingly, the Court DENIES Nautilus’s request to compel
the production of these documents.
ORDER
1.

For the reasons stated above, the Court GRANTS IN PART and DENIES

IN PART Nautilus’s Motion.
2.

The Court GRANTS IN PART Nautilus’s request to compel production of

the engagement e-mail. ICON should produce a redacted version of the e-mail within
seven (7) days of the date of this Order. As set forth above, ICON may redact the
following portions of the e-mail before production: (1) in the second line of the e-mail,
the remainder of the sentence after “trainer,” and (2) the entire sentence contained in
the third and fourth lines of the e-mail beginning with “It.”
3.

The Court DENIES the remainder of Nautilus’s Motion, including the

request to conduct an in camera review of the documents at issue, other than the
engagement e-mail which the Court has already reviewed.
DATED this 25th day of February, 2019.
BY THE COURT:

_____________________________
EVELYN J. FURSE
United States Magistrate Judge

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