Plew v. Limited Brands, Inc.
Plew v. Limited Brands, Inc.
2009 WL 1119414 (S.D.N.Y. 2009)
April 23, 2009
Dolinger, Michael H., United States Magistrate Judge
Summary
The plaintiff sought to compel disclosure of e-mails between defendants and a non-party entity, but the court denied the application due to the work-product doctrine. The court found that the e-mails were created in anticipation of litigation and that there was no suggestion that they would be revealed to plaintiff or any other adversary.
Katerina PLEW, Plaintiff,
v.
LIMITED BRANDS, INC. et al., Defendants
v.
LIMITED BRANDS, INC. et al., Defendants
No. 08 Civ. 3741(LTS)(MHD)
United States District Court, S.D. New York
April 23, 2009
Dolinger, Michael H., United States Magistrate Judge
MEMORANDUM & ORDER
*1 Plaintiff Katerina Plew is suing defendants (collectively “Victoria's Secret”) for patent infringement in connection with their marketing of a particular style of bra. In the course of discovery defendants have withheld from disclosure, on work-product grounds, a series of e-mails between employees of defendants and a non-party entity known as DBA Apparel, which assertedly supplied the bra that is said to have infringed plaintiff's patent. Plaintiff now challenges the refusal of defendants to produce those documents. (See Apr. 8, 2009 letter to the Court from Charles von Simson, Esq.).
At the direction of the court (see Endorsed Order dated Apr. 9, 2009), defendants have supplied us with (1) an affidavit by defendants' trial counsel proffering the factual circumstances surrounding the creation of the documents at issue and (2) copies of the withheld e-mails for in camera review. (See Aff. of Michael J. Zinna, Esq., sworn to Apr. 13, 2009). In substance, Mr. Zinna reports that at the outset of the litigation, he asked his clients to request of DBA, with which defendants had a contractual relationship, that it supply potentially relevant information to assist in preparing Victoria's Secret's defense, and that this request occasioned an exchange of six e-mails between defendants and DBA. (Id. at ¶¶ 7-11). Defendants argue that these exchanges constituted presumptively protected work product. (Apr. 9, 2009 letter to the Court from Michael J. Zinna, Esq.)
Plaintiff has responded, arguing that neither the e-mails from DBA to defendants nor the e-mails from defendants to DBA warrant protection. She argues that the e-mails from DBA to defendants cannot constitute work product because “documents prepared by one who is not a party to the case at bar are not protected by Rule 26(b)(3),” and that defendants' e-mails to DBA are not protectible because defendants, by virtue of sending those e-mails to a non-party with no interest in the litigation, waived its work-product immunity. (Apr. 15, 2009 letter to the Court from Charles Von Simson, Esq.).
The work-product doctrine is embodied in Fed.R.Civ.P. 26(b) (3), which provides that a party may ordinarily not obtain disclosure of “documents and tangible things ... prepared in anticipation of litigation or for trial by or for another party or by or for that other party's representative.” As interpreted by the Second Circuit, documents come within the “anticipation of litigation” requirement if they were prepared because of litigation. See United States v. Adlman, 134 F.3d 1194, 1202 (2d Cir.1996). The protection of the rule may be overcome, however, if the discovering party makes an adequate showing of substantial need and the unavailability of alternative sources for the information absent undue hardship. See, e.g., Horn & Hardart Co. v. Pillsbury Co., 888 F.2d 8, 12 (2d Cir.1989); In re Veeco Instruments, Inc. Sec. Litiq., 2007 WL 724555, at *3 (S.D.N.Y. Mar.9, 2007). We conclude that defendants amply satisfy the basic test for work-product immunity and that plaintiff has shown no basis for invading that presumptive protection.
*2 Based on Mr. Zinna's affidavit, the e-mails from his clients to DBA were prepared at his request following the commencement of plaintiff's lawsuit, and were sent for the specific purpose of eliciting information from DBA that might assist in defending against plaintiff's claims. Plaintiff does not contest this assertion, and the substance of the e-mails corroborates Mr. Zinna's account. Thus the e-mail traffic both from defendants to DBA and from DBA to defendants constitutes documents prepared because of litigation.
In seeking access to the e-mails from DBA, plaintiff argues that they cannot be protected work-product because DBA is not a party to the litigation. § Apr. 15, 2009 letter to the Court from Charles Von Simson, Esq. at 4). This argument is fundamentally misconceived.
As noted, the rule on its face protects not only “documents ... prepared by ... another party,” but also documents prepared “for another party.” That description precisely fits the e-mails sent by DBA to defendants. Representatives of Victoria's Secret asked DBA personnel to provide certain information pertinent to the lawsuit, and DBA responded by doing so. In short, it sent responses to defendants for their use in this litigation.
In arguing to the contrary, plaintiff asserts that the work-product rule does not cover documents prepared by a non-party “even if the non-party is itself a party to a closely related lawsuit in which he will be disadvantaged if he must disclose in the instant suit.” (Id. at 4 (quoting Ricoh Co., Ltd. v. Aeroflex, Inc., 219 F.R.D. 66, 69 (S.D.N.Y.2003) (citing Ramsey v. NYP Holdings, Inc., 2002 WL 1402055 (S.D.N.Y. June 27, 2002))). As employed by plaintiff, the stated principle would seem to collide directly with the explicit language of the pertinent rule. Happily, there is no such conflict, for plaintiff is simply misreading the cases she cites.
The principle for which those decisions stand is that if a non-party has prepared documents-either for non-litigative purposes or in anticipation of its own separate litigation-those documents may not be withheld as work product in a lawsuit to which the preparer is not a party. This point is aptly illustrated in Ramsey, a lawsuit brought on behalf of a minor boy by his parents. At issue were documents created in the course of an investigation undertaken by the parents to identify the killer of their daughter. Ramsey, 2002 WL 1402055, at *5. The documents were not prepared because of the son's lawsuit but rather for the twin purposes of finding the killer and protecting the parents in the event that either was charged with the murder. Id. at *5-6. As such, those documents did not fit within the wording and scope of Rule 26(b)(3) since they were not prepared by or for a party to that litigation (the only party being the son). Id. at *6-9. Accordingly, the documents were not covered by the rule. Id.[1]
To similar effect is Haus v. City of New York, 2006 WL 3375395 (S.D.N.Y. Nov.17, 2006). The court there addressed the invocation of a work-product claim in a civil suit by the local District Attorney, who was not a party, to protect documents prepared in connection with a criminal proceeding. Id. at *2. As the court observed, “Rule 26(b)(3) does not extend to documents prepared by lawyers for a non-party, even if the documents were prepared in contemplation of the non-party's own anticipated litigation.” Id. at *2-3 (citing, inter alia, Abdell v. City of New York, 2006 WL 2664313, at *3 (S.D.N.Y. Sept.14, 2006)). The point was that the documents were prepared for the non-party and for a separate proceeding, not for the civil lawsuit in which the prosecutor was asserting work-product immunity. Id.; accord Ricoh, 219 F.R.D. at 69-70.
*3 In contrast, the e-mails sent by DBA to defendants were created for the defendants and because of the very litigation in which defendants invoke work-product protection. Accordingly, they fit squarely within the protective ambit of Rule 26(b)(3).
Plaintiff's challenge to the protection of defendants' e-mails to DBA fare no better. Her only argument is that sending e-mails to a non-litigant waives work-product immunity. Putting to one side the odd notion that the creation of the work-product-that is, a set of e-mails-waives the protection otherwise afforded to those same documents, we conclude that plaintiff misapplies the waiver rule that governs work product.
The federal courts have recognized that waiver by disclosure may occur if a litigant discloses work-product materials to an adversary, and have indicated that such disclosure to one adversary may-although will not invariably-trigger an implied waiver of the immunity vis-a-vis other adversaries. See, ie.g., In re Steinhardt Partners, LP., 9 F.3d 230, 235-36 (2d Cir.1993); In re Cardinal Health, Inc. Sec. Litig., 2007 WL 495150, at *9 (S.D.N.Y. Jan.26, 2007). That principle of waiver has been expanded to encompass waiver by disclosure to non-adversaries in circumstances that make it likely that the erstwhile protected materials will be revealed to an adversary. See, e.g., Seven Hanover Assocs., LLC v. Jones Lang LaSalle Americas, Inc., 2005 WL 3358597, at *1 n. 3 (S.D.N.Y. Dec.7, 2005); In re Gulf Oil/Cities Serv. Tender Offer Litig., 1990 WL 108352, at *4 (S.D.N.Y. July 20, 1990). By the same token, “disclosure simply to another person who has an interest in the information but who is not reasonably viewed as a conduit to a potential adversary will not be deemed a waiver” of the rule. In re Gulf Oil, 1990 WL 108352, at *4 (citing cases).
In this case there is no suggestion that defendants' communications to DBA were likely to be revealed by that company to plaintiff or to anyone else who might be considered an adversary of the defendants. Indeed, it appears that the interests of DBA, as the supplier to Victoria's Secret of the targeted bras, are aligned with those of the defendants since they are all interested, or at least potentially interested, in avoiding a finding of infringement, and in any event their relationship is governed by a series of contractual terms ensuring confidentiality. (See Zinna Aff. ¶¶ 4-6 & Ex. A (referring to and annexing confidentiality terms of Third-Party Branded Vendor Agreement, Apparel Master Sourcing Agreement, and Purchase Terms, all confirming confidentiality of “business information”)). Accordingly, there is no basis for finding a waiver of confidentiality with respect to defendants' e-mails to DBA.
Finally, we note that although work-product protection is conditional, plaintiff makes no effort to demonstrate the particularized need and hardship that are a prerequisite for overcoming the otherwise applicable immunity from disclosure for these materials. Hence there is no basis for requiring their production.
*4 For the reasons noted, plaintiff's application to compel disclosure of the e-mails between defendants and DBA is denied.
Footnotes
The parents argued in principal part that the rule covered them because they were acting as representative plaintiffs in the lawsuit for their son. As the court observed, however, a document prepared by a plaintiff's representative is not protected if the document was prepared for the representative in his personal capacity rather than for the party being represented. Ramsey, 2002 WL 1402055, at *8.