08 May 2019

Court rules e-mails not protected by client-attorney privilege

Court in Target trademark case rules e-mails not protected by attorney-client privilege, and give no work product protection either.


Attorney-client privilege is not protected in a trademark case against Target with respect to e-mails between a clothing company, its attorneys, and a public relations firm, reported Bloomberg Law.

Narrow circumstances

The US district court for the Southern District of New York ruled that the PR firm in this case, used by Universal Standard Inc, was not necessary to the communications, was not an agent of the company, and was not hired to aid in legal tasks. The ruling highlights the narrowness of circumstances in which a company can maintain privilege after sharing information with third parties. The court rejected as inapplicable to the case multiple precedents cited by Universal Standard where third-party disclosure did not waive privilege. Universal Standard, which makes women’s apparel, accused Target of willfully infringing its trademarks with its “Universal Thread” line of women’s clothing in a 2018 complaint. Target’s brand used “universal,” and also copied the “brand concept” by stating it goes to “great lengths to perfect every fit, in every piece, in every size,” the clothing firm said. During a deposition, Target’s attorney questioned a witness about emails sent between Universal Standard, its lawyers, and public relations firm BrandLink. Universal Standard argued the emails were privileged.

No work product protection

The court ruled the emails are not protected by attorney-client privilege based on the general rule that disclosure to a third party eliminates the privilege. None of three exceptions to the rule argued by Universal Standard applied, the court said. The court said the emails in question involved discussion of a public relations strategy regarding the lawsuit. Universal Standard could have relayed such discussions directly to attorneys themselves without looping in BrandLink, the court said. The emails also aren’t protected by the work product doctrine. Universal Standard provided only a “conclusory” argument “confined to a single sentence” that the emails were documents prepared in anticipation of litigation, the court said. Judge Gabriel W Gorenstein wrote the opinion. The case is Universal Standard Inc. v. Target Corp., S.D.N.Y., No. 18 Civ. 6042, 5/6/19.