Cellco P'ship v. Nextel Commc'n, Inc.
Cellco P'ship v. Nextel Commc'n, Inc.
2004 WL 1542259 (S.D.N.Y. 2004)
July 9, 2004
Owen, Richard, United States District Judge
Summary
The court found that seven e-mails between Nextel's in-house counsel and TBWA employees were not protected by the attorney-client privilege because TBWA failed to demonstrate that it intended for the in-house counsel to act as its attorney. The court also found that the remaining document in dispute was protected under the work-product doctrine and could not be compelled unless disclosure to the third party substantially increased the opportunity for potential adversaries to obtain the information.
CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS, Plaintiff,
v.
NEXTEL COMMUNICATION, INC., Defendant
v.
NEXTEL COMMUNICATION, INC., Defendant
No. M8–85 (RO), Civ.A. 03–725–KAJ
United States District Court, S.D. New York
July 09, 2004
Owen, Richard, United States District Judge
MEMORANDUM & ORDER
Related to: Civil Action No. 03–725–KAJ, United States District Court for the District Court of Delaware.
*1 The present motion to compel arises in the context of a trademark dispute between Cellco Partnership d/b/a Verizon Wireless (“Verizon”) and Nextel Communications, Inc., (“Nextel”). The underlying dispute is filed in U.S. District Court in the District of Delaware and involves Nextel's attempt to trademark the term “Push to Talk.” Verizon issued a subpoena to Nextel's advertising agency, TBWA/Chiat/Day (“TBWA”), requesting the production of written communications between TBWA employees and Nextel employees. TBWA has withheld seven requested documents on the ground of attorney-client privilege,[1] and Nextel has asserted that TBWA should not be required to turnover another requested document on the ground of the attorney work-product doctrine.[2] Of the seven documents TBWA claims are protected by attorney-client privilege, six of them are e-mails sent by a Nextel marketing employee to TBWA employees.[3] These e-mails contain advice conveyed to the Nextel marketing employee by Nextel's in-house counsel. The seventh document is an e-mail by Nextel's in-house counsel to other Nextel employees and one TBWA employee.[4]
The case In re Federal Trade Commission involves a factually similar situation in which the in-house counsel of a corporation provided legal advice directly to the corporation's advertising agency. No. M18–304, 2001 WL 396522, at *1 (S.D.N.Y. April 19, 2001). In that case the in-house counsel and advertising agency were more closely linked than in the present case. The corporation's in-house counsel often directly advised its advertising agency about “legal issues associated with draft advertising materials” and the “legal parameters for advertising” the corporation's products. Id. Notwithstanding the close relationship between the corporation's in-house counsel and the corporation's advertising agency, the Court still found that the communications were not protected by the attorney-client privilege. The Court stated that while the in-house counsel did indeed provide legal advice to the advertising agency, no privileged attorney-client relationship existed because the advertising agency failed to demonstrate that it intended for the in-house counsel “to act as its attorney.” Id. at *3. Accordingly, here, Verizon's motion to compel is granted with regard to the seven documents over TBWA's objections on the ground of attorney-client privilege.
Nextel claims that the remaining document in dispute is protected under the work-product doctrine.[6] This is also an e-mail from a Nextel marketing employee to a TBWA employee.[7] Again, this e-mail reflects legal advice of Nextel's in-house counsel. However, this e-mail contained legal advice that was given in anticipation of litigation—a previous lawsuit between Nextel and Verizon.[8] The work-product doctrine is “intended to protect materials prepared in anticipation of litigation by or for a party or his representative.” Ricoh Company, Ltd. v. Aeroflex Inc., 219 F.R.D. 66, 68 (S.D.N.Y.2003). And unlike communications protected by the attorney-client privilege, immunity afforded by the work-product doctrine is not automatically waived by disclosure to a third party. Medinol, Ltd. v. Boston Scientific Corp., 214 F.R.D. 113, 114 (S.D.N.Y.2002). Generally, courts find that the work-product privilege is waived only if disclosure to the third party “substantially increases the opportunity for potential adversaries to obtain the information.” In re Grand Jury, 561 F .Supp. 1247, 1257 (E.D.N.Y.1982). And waiver will not be found when the disclosing party is allied in interest or shares litigation objectives with the third party. See Medinol, 214 F.R.D. at 115. While TBWA does not share a litigation objective with Nextel,[9] TBWA does clearly share a business interest with Nextel as it is Nextel's advertising agency.[10] Furthermore, by disclosing information to TBWA, Nextel did not “substantially increase[ ] the opportunity” for Verizon to obtain the information. Indeed, TBWA is contractually obligated not to disclose business information—including legal advice—concerning Nextel to third parties. TBWA Mem. Opp. at 3. While this document was prepared in anticipation of previous litigation, it is still protected under the work-product doctrine in subsequent litigation. See Garrett v. Metropolitan Life Ins. Co., No. 95 Civ. 2406, 1996 WL 325725, at *4 (S.D.N.Y. June 12, 1996) (“Documents prepared for one litigation that would have been shielded from discovery in that prior action retain the protection in a second litigation if the two actions are closely related in parties or subject matter.”) As it reflects legal advice of counsel, the first e-mail in the e-mail chain of document No. 10 was appropriately redacted. Accordingly, Verizon's motion to compel is denied with regard to the redacted portion of document No. 10.
*2 Accordingly, the motion to compel is granted with regard to the documents marked as Nos. 2 through 7 on TBWA's privilege log because Nextel waived their attorney-client privilege by disclosing the information to a third party. However, the motion to compel as it pertains to document No. 10 is denied because that communication is protected by the work-product doctrine as it reflects legal advice of counsel.
So ordered.
Footnotes
These documents are listed as Nos. 2 to 7 and 12 on TBWA's privilege log. Notice of Motion, Ex. B.
This document is marked as No. 10 on TBWA's privilege log.
Nos. 2 through 7.
No. 12
No. 10 on TBWA's privilege log.
In fact, the document is a chain of several e-mails. TBWA turned over the document after redacting the first e-mail in the chain. It is this first e-mail which Nextel claims is protected by the work-product doctrine.
This action eventually settled.
TBWA is a non-party in the present underlying action and was a non-party in the previous litigation for which this work-product was prepared.
The advertising of both parties was at the center of the earlier litigation for which this work product was prepared.