Ultratec, Inc. et al v. Sorenson Communications, Inc. et al
ORDER granting in part and denying in part 281 Motion to Compel. Signed by Magistrate Judge Stephen L. Crocker on 7/31/14. (jat)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN
ULTRATEC, INC. and CAPTEL, INC.,
SORENSON COMMUNICATIONS, INC.
and CAPTIONCALL, LLC,
On July 14, 2014, defendants filed a motion to compel testimony and the production of
withheld documents relating to Karen Peltz Strauss, plaintiffs’ lawyer-lobbyist with the FCC in 200506. See dkt. See dkts. 281-83. Plaintiffs oppose disclosure, arguing that most of the documents are
protected by the attorney-client privilege, with the remainder protected by the attorney work product
privilege. See dkts. 293-94. For the reasons stated briefly below, I am denying defendants’ motion
for production of the documents for which plaintiffs are claiming attorney-client privilege, but I am
granting the motion to disclose the three documents for which work product privilege is claimed.
That being so, I am not reopening Attorney Strauss’s deposition.
Defendants’ main argument is that plaintiffs waived the attorney-client privilege when they
opened the door by questioning Attorney Strauss during her deposition on the topics covered by the
withheld documents. According to defendants, plaintiffs are attempting to have it both ways by
selectively waiving the privilege to reveal only the communications that support plaintiffs’ position
while withholding testimony and documents that might undermine that position. See dkt. 282 at
13. Plaintiffs see it differently, characterizing defendants’ motion as a contrived dispute.
The court held a telephonic hearing on July 23, 2014 at which it directed plaintiffs to submit
the withheld documents for in camera review and it allowed the parties to provide additional case
citations in writing (rather than read them to the court during the hearing). See July 23, 2014 textonly order, dkt. 295. Defendants submitted a four-page, single-spaced letter brief on July 24 (dkt.
296), followed on July 25, 2014 by plaintiffs’ objection to the unbidden post-hearing brief (dkt.
299). I did not want post-hearing briefs, I did not ask for post-hearing briefs and I have not read the
post-hearing briefs. I did ask for and did review in camera the 41 documents at issue. (Dkt. 297,
under seal and in camera).
As a starting point, all of the documents for which plaintiffs claim attorney-client privilege
qualify under the Wigmore test used by this circuit. See United States v. Evans, 113 F.3d 1457, 1461
(7th Cir. 1997). The question becomes whether plaintiffs waived the privilege by allowing Attorney
Strauss to answer questions at her February 25, 2014 deposition regarding what Strauss had told the
FCC about Ultratec’s position regarding licensing, including questions by plaintiffs’ attorney about
what message Strauss was trying to convey to the FCC on behalf of Ultratec. See quoted portions
of the deposition transcript, dkt. 282 at 6-7. (The complete transcript is at dkt. 70).
If Attorney Strauss actually had revealed confidential communications with Ultratec’s
officers, then this would constitute waiver. See, e.g., United States v. Brock, 724 817, 821 (7 th Cir.
2013)(citing Hawkins v. Stables, 148 F.3d 379, 384 (4th Cir. 1998). But that isn’t what happened
here. Strauss answered questions asking what she had told the FCC was Ultratec’s position on
Is it true that what you were communicating to the FCC was that
Ultratec wasn’t willing to essentially have licensed anyone . . . on any
So the clarification was that [Ultratec] was not necessarily willing to
license anybody and everybody?
When asked who at Ultratec conveyed the company’s position to her, Strauss identified its CEO,
Robert Engelke. According to defendants, this “clearly” opened the door, and defendants tried to
Now that counsel has asked you about what Ultratec was concerned
about when you communicated with the FCC, I am going to ask you
exactly what did Mr. Engelke say to you about Ultratec’s concern
about the use of the word “all”?
Simply reading this question exposes its premise as non sequitur.
Even so, Ultratec’s
attorney, after objecting on privilege grounds, allowed questioning constrained “to the very narrow
question about the concern.” As the questioning continued, Ultratec objected again, claiming that
its own questions to Strauss had been limited to Strauss’s communications with Chandler (at the
FCC) and did not open the door this far. Strauss answered one more question about the nature of
Ultratec’s concern before Ultratec’s attorney directed Strauss not to answer.
If we back up a bit in the transcript (hopscotching through dkt. 70 at 88-98), it is evident
that defendants were keenly interested in learning Strauss’s privileged conversations with Engelke:
And where did you get your understanding as to what Ultratec’s
And that would be Mr. Engelke?
So Mr. Engelke called you up after this press release–I am not going
to ask you what he said to you–but sometime after this press release
Mr. Engelke called you up to discuss this issue?
I don’t remember the order. . . .
Did Mr. Engelke tell you why the change mattered?
Objection, to the extend it calls for privileged information. Instruct
you not to answer.
I’m not asking what he told you. I am asking you whether he told
you why it mattered.
I think that is privileged information.
What does that conditional approval mean from Ultratec’s
perspective as of the time this order was issued?
Objection to the extent it calls for privileged information.
What did you understand conditional approval to mean?
I can only speak to the November 27th ex parte letter. I was not at
the FCC at the time. So I do not know what the FCC meant by
conditioning its approval.
Do you have any record of discussing Chairman Martin’s separate
statement with Mr. Engelke on or around the time that Exhibit No.
Objection to the extent it calls for privileged information.
No, the only question is whether you have a record of it. I don’t want
you to tell me–I mean I do want you to tell me what is in it. But I am
not going to ask you to tell me what is in it.
I don’t know.
These questions, answers and objections provide context that corroborates what is sufficiently
clear to the court just from its review of lynchpin questions and answers set out at pp. 2-3 of this
order: Ultratec did not open the door. Ultratec did not waive the privilege. Ultratec’s attorney asked
Strauss to explain what Ultratec was attempting to convey to Chandler and the FCC. Ultratec’s
attorney did not ask Straus to reveal what Engelke or anyone else at Ultratec had said to her on this
issue. Deposition questions clarifying what a company was trying to say to a regulatory agency do
not waive the attorney-client privilege as to what that company’s executives said to their lawyer in
confidence on that same point. The only arguable mistake that Ultratec made was that its attorney
did not accompany more of her objections with directions to Strauss not to answer defendants’
Defendants emphasized in their brief and during the July 23, 2014 telephonic motion hearing
that they view the withheld information as critical to some of their equitable claims. Duly noted,
but irrelevant. The strength of a party’s perceived need to see privileged information does nothing
to overcome the privilege. It verges on tautological to observe that most litigants would be keenly
interested in and likely would benefit from learning what their opponent told counsel in confidence,
which is why, in an adversarial system, these communications are privileged in first place.
Defendants cannot bootstrap a waiver out of their own questions asking what Engelke said to Strauss
and they cannot MacGyver a waiver out of opposing counsel’s questions asking what Strauss said
to Chandler or anyone else at the FCC. In sum, the documents docketed as 297-1 through 297-38
are protected by the attorney-client privilege and the client did not waive the privilege. Defendants’
motion to compel disclosure of these documents will be denied.
This leaves three documents prepared by Attorney Strauss (dkts. 297-39 through 297-41)
for which plaintiffs are claiming the work-product privilege. At her deposition, Attorney Strauss
reported that she had reviewed “a few of her notes” to prepare, but that she hadn’t brought any of
her notes with her. Pursuant to F.R. Ev. 612(a)(2), because Strauss did not use the notes during the
hearing, the court has discretion to determine whether justice requires production of these notes.
In other words, even if the notes do not qualify for the work product privilege (or the attorney client
privilege), defendants are not necessarily entitled to their disclosure.
Having read the three withheld documents, the court’s conclusion is that none of them
qualify for the claimed attorney work-product privilege, none of them contains privileged attorneyclient communications, and none of them is going to provide defendants with anything useful. It
is not at all clear that the work product privilege would apply to these notes no matter what they
said; perhaps more to the point, the notes are for the most part off-point and prosaic; definitely more
to the point Strauss’s deposition is over and nothing in Strauss’s documents suggest to the court that
it should allow defendants to reopen it. Exhibit 39 is a set of handwritten notes that appears to be
completely irrelevant to defendants’ equitable claims and arguments with the exception of six lines
in which Strauss notes something she said to Chandler that is consistent with her deposition
testimony. Exhibit 40 is another set of handwritten notes of a meeting that briefly synopsizes some
of the comments of the attendees. There is brief mention of licensing that appears to be either a
talking point or a listening point, but these notes don’t appear to capture or reflect Strauss’s legal
analyses or thought processes. Exhibit 41 appears to be Strauss’s prepared talking points for the
same meeting; the text looks as if it were prepared for delivery to the attendees. Nothing about a
document of this nature suggests that it should be privileged.
Perhaps this is a situation where the court could find that justice does not require production
of the notes under the no harm-no foul rule. But sunshine is the default policy for discovery in this
court, and there is no compelling reason to keep these documents under seal. In a case as contentious
as this one, perhaps this disclosure is will agitate the defendants into filing additional motions. From
the court’s perspective, given how close we are to the discovery cutoff and the firm trial date, that
would be ill-advised, but this possibility is not a reason to keep these documents under seal. As is
the court’s practice, I will delay production of these documents for one week in case plaintiffs see an
urgent need for reconsideration.
It is ORDERED that:
(1) Defendants’ motion to compel disclosure of the specified documents for which plaintiffs
are claiming work product privilege for Attorney Strauss is GRANTED. Plaintiffs must produce
these documents not later than August 7. 2014; and
(2) Defendants’ motion to compel disclosure of the specified documents for which plaintiffs
are claiming attorney-client privilege is DENIED.
Entered this 31st day of July, 2014.
BY THE COURT:
STEPHEN L. CROCKER
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?