Brigham Young University et al v. Pfizer et al
Filing
663
MEMORANDUM DECISION granting in part and denying in part 522 Motion to Compel. Court orders BYU to produce those documents to Pfizer as set forth above within thirty days from the date of this order. Signed by Magistrate Judge Brooke C. Wells on 7/12/2011. (ce)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH, CENTRAL DIVISION
BRIGHAM YOUNG UNIVERSITY, a Utah
Non-Profit Education Institution; and Dr.
DANIEL L. SIMMONS, an individual ,
MEMORANDUM DECISION AND ORDER
GRANTING IN PART DEFENDANTS’
MOTION TO COMPEL DOCUMENTS
SUBMITTED FOR IN CAMERA REVIEW
Plaintiffs,
v.
Case No. 2:06-cv-890 TS
PFIZER, INC., a Delaware corporation; G.D.
SEARLE & COMPANY, a Delaware
corporation; G.D. SEARLE LLC, a Delaware
limited liability company; MONSANTO
COMPANY, a Delaware corporation; and
PHARMACIA CORPORATION, a Delaware
corporation,
Defendants.
Chief District Judge Ted Stewart
Magistrate Judge Brooke Wells
Before the Court is Defendants’ Pfizer, Inc. et al, Motion to Compel Production of
Documents and Award of Attorney Fees. 1 This order is a companion order to the Court’s prior
order granting in part and denying in part Plaintiffs’ Motion to Compel Documents Submitted for
In Camera Review. 2 As noted in that order, on April 7, 2011, the Court heard argument
concerning certain matters including issues surrounding Defendants’ motion. At the hearing
Defendants and Plaintiffs (Brigham Young University and Dr. Daniel Simmons) each submitted
documents they claim are privileged to the Court for in camera review. In reference to the
instant motion, the parties filed additional briefing, 3 including a supplemental response and
1
Docket no. 522. After carefully reviewing the memorandum of the parties, the court determines that oral argument
is unnecessary. See DUCivR 7-1(f) (2010).
2
Docket no. 645.
3
Docket nos. 590, 596, and 600.
reply, 4 regarding issues surrounding these documents. The Court has reviewed the documents
submitted for in camera review, the parties’ memoranda and relevant case law. Having done so,
the Court now enters the following order GRANTING IN PART Defendants’ Motion to Compel
Production of Documents. 5 Additionally, based upon the facts in this dispute, the Court finds
that BYU had legitimate reasons for listing the documents at issue on their privilege log. So, the
Court DENIES Defendants’ request for attorney fees.
The Court finds it unnecessary to give a detailed background of the dispute between the
parties as this has been set forth in many prior orders. Suffice it to say, the parties have a
disagreement concerning the creation of Celebrex and other Cox-2 drugs.
The instant dispute centers on the production of certain documents listed on BYU’s
privilege log. 6 At the outset, the Court addresses Pfizer’s arguments regarding waiver that were
raised in the supplemental memorandum. Approximately one week after Defendants submitted
their Response to BYU’s Memorandum Submitting Documents for in camera Review, 7 Plaintiffs
submitted a declaration from BYU counsel Stephen Craig. This declaration addresses the
maintenance and storage of documents, including the Hooper letters at issue in the instant
motion, which are housed in the Harold B. Lee Library for preservation. The Craig Declaration
also sets forth the efforts undertaken by Mr. Craig to search for responsive documents to Pfizer’s
discovery requests. Defendants argue that the declaration “conclusively demonstrates that the
archived documents are not privileged.” 8 Defendants assert that Plaintiffs’ storage system does
4
Docket nos. 607, 608, 610, 611, and 626.
5
The Court notes that previously the parties resolved many issues within Defendants’ motion. This order only
pertains to those documents submitted for in camera review by Defendants following the hearing held in April and
Defendants’ request for attorney fees.
6
See Pla.s’ mem. submitting priv. docs. p. 2, docket no. 590.
7
Docket no. 590.
8
Def.s’ sup. resp. p. 2.
2
not protect the documents in an adequate manner. Therefore, when communications are not
intended to be confidential, the attorney-client privilege cannot be invoked to protect those
communications. 9
In contrast, BYU argues that the documents are restricted from public use and were not
disclosed to third-parties. So there was no waiver of the attorney-client privilege.
The purpose of BYU’s Archives-as the collection of documents is called-“is to preserve
records that document the history of Brigham Young University.” 10 Records included within the
archives must meet three criteria: 1) the creator must deem the document as permanent; 2) the
record must have value as “evidence for important functions of the university;” 11 and 3) the
document must have informational value as it pertains to understanding the actions of BYU.
Thus not all records generated at BYU will be included in the Archives.
Access to the records within the Archives is restricted. For example, “[r]ecords of highlevel university administrators that are transferred to the University Archives are restricted from
public use for a period of 50 years from the retirement of the administrator.” 12 And, anyone
requesting access to the records within the Archives must receive permission from at least two
individuals—the University Archivist and “the incumbent of the office that generated the
records.” 13
9
See U.S. v. Ryans, 903 F.2d 731, 741 n.13 (10th Cir. 1990) (“The attorney-client privilege is lost if the client
discloses the substance of an otherwise privileged communication to a third party.”); United States v. Jones, 696
F.2d 1069, 1072 (4th Cir. 1982) (“Any voluntary disclosure by the client to a third party waives the privilege not
only as to the specific communication disclosed, but often as to all other communications relating to the same
subject matter.”).
10
Craig Decl. ¶ 4.
11
Id.
12
Id.
13
Id.
3
BYU’s Archives appear to be similar to other institutional record keeping systems for
important documents. There is nothing before the Court indicating that BYU disclosed the
records at issue in the Archives to a third-party and the evidence indicates that BYU treats the
documents within the Archives as confidential. The Court, therefore, agrees with BYU’s
position. BYU has not waived any privilege by storing documents within the Archives.
The Court now turns to the parties’ remaining arguments and to an analysis of the
documents themselves.
As set forth by the Tenth Circuit in Barclaysamerican Corp. v. Kane, 14 “[t]he party
seeking to assert the attorney-client privilege or the work product doctrine as a bar to discovery
has the burden of establishing either or both is applicable.” 15 BYU argues the documents are
privileged because they were generated as part of BYU’s legal investigation. According to
BYU, the General Counsel’s office led the investigation, “but other BYU employees and
administrators were involved.” 16 In support of its position BYU cites to Santrade, Ltd. v.
General Elec. Co, 17 and Williams v. Sprint/United Mgt. Co. 18
Santrade involved a patent infringement action where the defendant moved for an order
compelling the plaintiffs to produce documents withheld from discovery on the basis of the
attorney-client privilege. Similar to the arguments made by Pfizer here, the defendant in
Santrade argued that certain documents were not protected because the plaintiff “failed to show
14
746 F.2d 653 (10th Cir. 1984).
15
Id. at 657; see also In re Grand Jury Proceedings (Dorokee Co.), 697 F.2d 277, 279 (10th Cir. 1983) (“The
burden of establishing the applicability of a privilege rests on the party seeking to assert it.”); U.S. v. Bump, 605
F.2d 548, 551 (10th Cir. 1979) (same).
16
Pla.s’ mem. submitting priv. docs. p. 4.
17
150 F.R.D. 539 (E.D.N.C. 1993).
18
238 F.R.D. 633 (D.Kan. 2006).
4
that the author, addressee, or copy recipient of the documents was a lawyer.” 19 The court
rejected the defendant’s arguments and noted that the Supreme Court in Upjohn Co. v. United
States 20 found that the “attorney-client privilege may exist in the corporate setting.” 21 The
Santrade court concluded that:
A document need not be authored or addressed to an attorney in order to be properly
withheld on attorney-client privilege grounds. First, in instances where the client is a
corporation, documents subject to the privilege may be transmitted between nonattorneys to relay information requested by attorneys. Second, documents subject to the
privilege may be transmitted between non-attorneys (especially individuals involved in
corporate decision-making) so that the corporation may be properly informed of legal
advice and act appropriately. 22
Thus the attorney client “’privilege exists to protect not only the giving of professional advice to
those who can act on it but also the giving of information to the lawyer to enable him to give
sound and informed advice.’” 23 And, the “privilege includes communications involving
corporate officers and agents who possess the information requested by the attorney or who will
act on the legal advice.” 24
In Williams 25 the Federal District Court in Kansas dealt with a similar issue. The
plaintiffs sued their former employer arguing that age was a determining factor in the employer’s
decision to terminate them. The plaintiffs sought to obtain documents that were part of an
“adverse impact analysis.” These documents were spreadsheets that analyzed various statistical
data such as gender, race, and age of employees targeted for layoff. The plaintiffs argued that
these documents were never sent to counsel, rather, they were exchanged exclusively among
19
150 F.R.D. at 545.
20
449 U.S. 383 (1981).
21
150 F.R.D. at 545.
22
Id. (citing Cuno, Inc. v. Pall Corp., 121 F.R.D. 198, 202-03 (E.D.N.Y. 1988).
23
Id. (quoting Upjohn, 449 U.S. at 390).
24
Id.
25
238 F.R.D. 633.
5
human resource personnel so there was no attorney-client privilege protecting their discovery.
The court rejected this argument stating that the “essential elements of the privilege . . . do not
require an attorney to have either authored or received the document at issue in order to maintain
the privilege.” 26 The Williams court then noted the standard a party must meet when attempting
to protect corporate documents under the attorney-client privilege: “A party may successfully
demonstrate applicability of the privilege to written communication between corporate
management employees by establishing that the communication was made in confidence for the
primary purpose of obtaining legal advice.” 27
Finally, the Williams court cited to a number of cases, including one from this court, 28
that recognize “the attorney-client privilege extends to communications made within a
corporation if those communications are made for the purpose of securing legal advice.” 29
Based upon the vast amount of case law, including a case from this Court and a sister
court, the Court is persuaded by BYU’s general argument that documents may be protected if
they were created as part of a legal investigation. This includes documents where neither the
creators, senders, nor the recipients are lawyers. In turn, the court rejects Pfizer’s argument that
“no applicable attorney work product [or attorney-client] protection . . . can attach to a
communication between non-lawyers….” 30 But, the protection to corporate documents is not
without exception. As noted by the Santrade court, documents are not protected if they relate to
26
Id. at 638.
27
Id.
28
Adams v. Gateway, Inc., 2003 WL 23787856 at *11 (D.Utah Dec. 30, 2003).
29
Id. See In re Rivastigmine Patent Lit., 237 F.R.D. 69, 80 (S.D.N.Y. 2006); SmithKline Beecham Corp. v. Apotex
Corp., 232 F.R.D. 467, 477 (E.D.Pa. 2005) (citing Santrade, Ltd. v. Gen. Elec. Co., 150 F.R.D. 539; Valve Corp. v.
Sierra Entertainment Inc., 2004 WL 3780346, at *2 (W.D.Wash. Dec. 6, 2004); Kintera, Inc. v. Convio, Inc., 219
F.R.D. 503, 514 (S.D.Cal.2003).
30
Def.s’ response p. 2.
6
business agreements with unrelated third parties, or general business or technical matters. 31 And,
as Magistrate Judge Nuffer concluded in Adams v. Gateway, 32 corporate documents not created
for the purpose of obtaining legal advice are not protected by the privilege. With these principles
in mind the court now turns to the documents themselves.
As noted by Pfizer, Plaintiffs withhold two general categories of documents asserting that
they are protected. These categories are (1) documents prepared by Dr. Simmons or other BYU
non-lawyer personnel that were sent to other non-lawyers; and (2) communications between
BYU and representatives of The Church of Jesus Christ of Latter Day Saints, a non-party to this
litigation and a third party that exerts control over BYU which is often referred to as a “church
owned school.”
A. Documents Prepared by Non-lawyer Personnel
1. Hooper Letters
The Hooper letters are letters written by Dr. Simmons to Dr. Gary Hooper who was the
Associate Academic Vice-President at BYU. The letters are essentially the same as they are
rough drafts of a letter eventually sent to Dr. Hooper. BYU asserts that they are protected
because they were generated as part of the legal investigation. As set forth above documents
prepared by non-lawyers can be protected from discovery by a claim of privilege. But, after
reviewing the letters the Court finds they are discoverable in this instance. The letters relate to
general business matters such as the state of funding for Dr. Simmons’ lab. 33 The letter from Dr.
Simmons to Professor Earl Woolly, the Chairman of the Chemistry Department, is also
31
See Santrade, 150 F.R.D. at 544.
32
2003 WL 23787856 at *8.
33
See Santrade, 150 F.R.D. at 544.
7
discoverable because it was not prepared in anticipation of litigation. 34 Rather, it is in essence a
business proposal. As such, the Hooper letters are ordered disclosed.
2. Email to Dr. Simmons from Tammy Gustin
Tammy Gustin is a paralegal with the BYU General Counsel’s office. The email sent
from her to Dr. Simmons is factual in nature and contains information and instructions for Dr.
Simmons so he can participate in a conference call. This information is not protected.
The copy of the email given to the Court also contains handwritten notes by Dr. Simmons
concerning the litigation. These notes fit within the protections outlined above for documents
created in the corporate environment during an investigation or during the process of litigation.
Therefore, BYU is ordered to produce a redacted version of this email that contains none of the
written notes located either above or below the email.
3. Dr. Woolley’s June 4, 2007 Memo to Dr. Simmons
The Court agrees with BYU’s argument that the memo reflects part of BYU’s litigation
strategy. This memo is protected by privilege and need not be produced.
4. Email between Dr. Simmons and Sir John Vane
BYU already produced a redacted version of this email to Pfizer that omits certain items
dealing with COX-3 related research. The Court finds this is sufficient. The omitted
information is irrelevant to the instant litigation 35 and contains corporate information that is
properly deemed confidential. BYU need not produce the entire email.
5. Email from Lynn Astle to Earl Woolley
34
See Adams, 2003 WL 23787856 at *8.
35
The Court notes that although relevancy is a different consideration than assertions of privilege, it is nonetheless
still a barrier to discovering information under the Federal Rules. See Fed. R. Civ. P. 26.
8
As noted by BYU, this email concerns an analysis of COX-3 licensing negotiations. Like
the redacted portions of the email between Dr. Simmons and Sir John Vane, it concerns
information that is confidential and irrelevant. As such, it is protected and is ordered not
produced.
6. Drafts of Dr. Simmons May 10, 1992 Letter to Dr. Needleman
These letters are drafts of a letter written by Dr. Simmons to Dr. Needleman and in large
part address concerns raised by Dr. Needleman. The drafts also contain handwritten notes that
the Court finds do fit within the protections outlined above as they memorialize legal advice
from BYU’s General Counsel’s office obtained by Dr. Simmons concerning the letters. The
drafts of the letters themselves, however, do not contain legal advice and they were not prepared
in anticipation of litigation. Therefore BYU is ordered to produce redacted versions of these
letters omitting all handwritten notes except for the editorial notes found on the first page
suggesting a change to the date and on the second page suggesting a change and omitting the
phrase “whomever I want.”
7. Dr. Simmons’ December 14, 1992 Letter to Carol Hardman
This letter concerns a potential agreement between Abbott Laboratories and BYU. The
Court agrees with BYU that it reflects legal advice given to Dr. Simmons concerning the
potential agreement and therefore it is ordered not produced.
8. Dr. Simmons’ April 15, 1999 Memorandum
These documents were prepared by Dr. Simmons and the Court finds they are protected
by the attorney-client privilege as they were prepared to help BYU’s attorneys give sound legal
advice. 36 BYU need not produce them.
36
See Santrade, 150 F.R.D. at 545 (quoting Upjohn, 449 U.S. at 390).
9
B. Communications Between BYU and The Church of Jesus Christ of Latter Day
Saints
This series of documents are communications between BYU, its representatives, and
representatives of The Church of Jesus Christ of Latter Day Saints (LDS Church). Many of them
are board minutes from meetings of the LDS Church where matters concerning BYU were
discussed. Pfizer asserts that the disclosure of privileged information to third parties terminates
any privilege. 37 Therefore since the LDS Church is a third party, any privilege BYU may have
had in the documents is lost. The Court disagrees.
The relationship between the LDS Church and BYU is not the third party relationship
found in the case law where privilege is lost. Rather, the LDS Church, although a separate
corporate entity, is essentially a parent corporate entity that dictates in large part BYU’s policies
and actions. The Court concludes that documents shared between corporate entities that are
closely related, as is the case here, are protected by the attorney-client privilege just like
documents that are protected within a single corporation. The same principles set forth by many
courts, including the Supreme Court in Upjohn, governing the discoverability of documents in a
single corporation apply equally to closely related corporate entities. If it were otherwise, much
of the modern day corporate structure and governance would be undermined by the threat of
having to disclose corporate secrets and confidential information. BYU need not therefore
produce any of these documents because they are protected.
37
See U.S. v. Ryans, 903 F.2d 731, 741 n.13 (10th Cir. 1990) (“The attorney-client privilege is lost if the client
discloses the substance of an otherwise privileged communication to a third party.”); United States v. Jones, 696
F.2d 1069, 1072 (4th Cir. 1982) (“Any voluntary disclosure by the client to a third party waives the privilege not
only as to the specific communication disclosed, but often as to all other communications relating to the same
subject matter.”).
10
ORDER
Based upon the foregoing the Court GRANTS Defendants’ MOTION IN PART and
HEREBY ORDERS BYU to produce those documents to Pfizer as set forth above within thirty
days from the date of this order.
IT IS SO ORDERED dated this 12 July 2011.
Brooke C. Wells
United States Magistrate Judge
11
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