*1 The Billy Goat Chip Company LLC moves to compel Billy Goat IP LLC's licensing agent, JRL, to produce its communications with Billy Goat IP's counsel. JRL contends that the documents reflected in its privilege log [86-1] are protected communications because it was acting as Billy Goat IP's agent and was assisting Billy Goat IP's legal counsel in providing legal advice to Billy Goat IP. For the reasons stated below, Billy Goat Chip's motion to compel [86] is denied, except as to its request for an in camera review.

I. Billy Goat IP's Counsel's Communications with Billy Goat IP's Licensing Agent

“A party seeking to invoke the attorney-client privilege in order to avoid producing otherwise discoverable information has the burden of establishing all of its essential elements.” Carlson v. Northrop Grumman Corp., 290 F. Supp. 3d 867, 871 (N.D. Ill. Feb. 5, 2018) (citing United States v. BDO Seidman, 337 F.3d 802, 811 (7th Cir. 2003)). “That party also must describe the nature of the documents, communications, or tangible things not produced or disclosed—and do so in a manner that, without revealing information itself privileged or protected, will enable other parties to assess the claim.” Id.; see also Fed. R. Civ. P. 26(b)(5)(A)(ii). Here, JRL has produced a privilege log describing the nature of some of its email communications with Billy Goat IP's counsel as protected under the attorney-client privilege. [86-1]. Billy Goat Chip challenges the grounds on which JRL withholds production.

Billy Goat Chip contends that JRL's role as Billy Goat IP's licensing agent should be disregarded because “JRL has submitted no evidence that it was ever authorized to act as [Billy Goat IP]'s legal agent.” Doc. [86] at 2. However, the test for determining whether communications between a client's agent and the client's counsel are privileged is whether they were confidentially made to assist the client's counsel render, obtain, or provide legal advice to the client. See Bankdirect Capital Fin., LLC v. Capital Premium Fin., Inc. 326 F.R.D. 176, 183 (N.D. Ill. Aug. 3, 2018) (“the real issue is whether [the third-party managing director of an investment bank] confidentially communicated with [the defendant's] counsel for the purpose of obtaining or providing legal advice for the project.”) (internal citation and quotations omitted); see also Heriot v. Byrne, 257 F.R.D. 645, 666 (N.D. Ill. Mar. 20, 2009) (holding that third-party agent accountant's communications with the client's counsel were privileged because, among other reasons, the communications were “for the purposes of rendering legal advice” to the client); Stafford Trading, Inc. v. Lovely, No. 05 C 4868, 2007 WL 611252, at *7 (N.D. Ill. Feb. 22, 2007) (finding that third-party investment advisor's communications with its client's counsel were privileged because the investment advisor “confidentially communicated with [the client's outside or] in-house counsel for the purpose of obtaining or providing legal advice.”). Accordingly, if JRL's communications with Billy Goat IP's counsel were for the purpose of confidentially assisting its counsel in giving legal advice to Billy Goat IP, the communications between its counsel and JRL would be protected by the attorney-client privilege.

*2 “Courts considering the issue of privilege as to communications with independent contractors and outside agencies have closely examined the relevant facts of each respective case in an effort to determine whether protecting the communication furthers the purpose and policy behind the attorney-client privilege.” LG Elecs. U.S.A., Inc. v. Whirlpool Corp., 661 F. Supp. 2d 958, 961 (N.D. Ill. 2009). “[A] communication between an attorney and a third party does not become shielded by the attorney-client privilege solely because the communication proves important to the attorney's ability to represent the client.” Id. (internal citation omitted).

In Stafford Trading, the Court recognized protection for communications with an investment advisor, who was a third-party, with counsel for the client to the extent that the communications were made “for the purpose of obtaining or providing legal advice.” Stafford Trading, 2007 WL 611252, at *7. Similarly, in Heriot, the Court held that “that the attorney-client privilege applies to an accountant who performs services (i) that are not required by federal law or do not otherwise make him an individual acting on the public's behalf; (ii) on behalf of a party; (iii) for the purposes of rendering legal advice; and (iv) that make the accountant ... necessary, or at least highly useful, for the effective consultation between the client and the lawyer.” Heriot, 257 F.R.D. at 665-66 (quotation omitted). In Flagstar Bank, the Court refused to find communications between a defendant and a marketing agency privileged because the defendant failed to show that the communication was for the “rendition of legal advice” or the “protection of a legal interest.” Flagstar Bank, FSB v. Freestar Bank, N.A., 2009 WL 2706965, at *5. (N.D. Ill. Aug. 25, 2009). Similarly, in LG Elecs. U.S.A., 661 F.Supp.2d at 964-65, the Court refused to find communications between a defendant's third-party marketing agency and its counsel privileged because the defendant, Whirlpool Corporation, did not allow its agencies the freedom to design advertisements without its internal marketing approval and because the defendant retained all rights in the agencies' work product.

Heriot, Stafford Trading, and the instant dispute all share the same pivotal fact: the client's agent – here, JRL – communicated with the client's counsel to assist it in giving legal advice to its client. Billy Goat IP is a business entity of a restaurant chain that is apparently without a full-service internal licensing team. As such, Billy Goat IP engaged JRL to “represent [Billy Goat IP] worldwide ... in connection with the merchandising of the Property.” Doc. [86]-2 at 1. JRL's role as licensing agent, is to, among other things, “(i) conceive and establish licensing programs for the Property, (ii) seek out persons, firms, or corporations to enter into License Agreements for use of the Property, (iii) solicit and negotiate License Agreements on Billy Goat's behalf with such persons, firms or corporations, (iv) monitor the performance of the Licensee(s) under the License Agreements, and (v) make marketing and sales suggestions to Licensee(s) under License Agreements, all in connection with the manufacture, packaging, importation, distribution, marketing, sale, advertising and promotion of the Licensed Products.” Doc. [86-2] at 1-2. Additionally, Billy Goat IP “agree[d] to refer JRL all inquiries relating to licensing or merchandising rights with respect to the Property.” Doc. [86-2] at 2. The Licensing Agent Agreement further obligated JRL to “consult with [Billy Goat IP]” because “[Billy Goat IP] shall have the right to reject any potential prospective Licensee.” Doc. [86-2] at 2.

*3 The Court understands that Billy Goat IP contractually retained the final say in all licensing decisions, but the primary responsibility for all licensing projects fell on JRL to such an extent that Billy Goat IP's licensing program relied on JRL. See Doc. [86-2]. Moreover, unlike the marketing agency in LG Electronics that retained zero rights in its marketing efforts and was given little deference from its principal, JRL's compensation for serving as Billy Goat IP's licensing agent is a percentage of the gross royalty actually paid by licensee for use of the license. Doc. [86-2] at 4.

Billy Goat Chip attempts to minimize the Licensing Agent Agreement due to its prohibition against JRL “threaten[ing] or institute[ing] any legal action under any License Agreement.” Doc. [86-2] at 3. But the Court notes that the Licensing Agent Agreement indeed obligates JRL to “[o]n behalf of [Billy Goat IP], reasonably police Licensees for compliance and performance of all obligations and duties under the Licensee Agreements.” Doc. [86-2] at 3. Nevertheless, other courts have found that communications with agents who presumably lacked authority to threaten or institute legal action were protected by the privilege. See, e.g., Stafford Trading, 2007 WL 611252, at *7 (financial planner); Heriot, 257 F.R.D. at 665-66 (accountant).

JRL's privilege log describes 39 email communications between JRL and Billy Goat IP's counsel. Doc. [86-1]. Billy Goat Chip contends that JRL's privilege log shows “that JRL was engaged strictly for the commercial purposes of marketing, promoting, and licensing.” Doc. [86] at 3. This Court finds that the privilege log as a whole shows that JRL played a role in assisting Billy Goat IP's counsel provide legal advice in each step of the licensing process. For example, Entry Nos. 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, and 12 involve communications between the licensing agent and Billy Goat IP's counsel regarding the termination of an existing license and its legal impact on prospective licenses. Entry Nos. 13, 14, 15, 16, 17, 18, 19, 20, 21, 32, 33, 34, 35, 36, 37, 38, and 39 involve communications regarding the possible legal impact this lawsuit may have on Billy Goat IP's licensing program, including prospective or current licensees. Entry No. 22 involves communications related to Billy Goat IP's claims in this lawsuit. Entry Nos. 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, and 33 involve communications between JRL and Billy Goat IP's counsel regarding the licensing programs of certain subpoenaed third-party licensees. Entry Nos. 27, 28, and 29 involve communications between JRL and Billy Goat IP's counsel regarding a request for legal advice with respect to a third-party's ability to purchase Billy Goat IP's licensed products. As a group, these privilege log entries show communications that occurred predominately to assist Billy Goat IP's counsel in giving legal advice to Billy Goat IP related to JRL's engagement as its licensing agent.

Billy Goat Chip additionally argues that because Billy Goat IP produced “an e-mail dated November 6, 2017, between JRL and [Billy Goat IP]'s attorney concerning the ‘Billy Goat licensing program ..., [Billy Goat IP] obviously deemed the e-mail not to be privileged.... Just as this e-mail is not privileged, by [Billy Goat IP]'s own admission, neither are the communications described in JRL's amended privilege log.” Doc. [86] at 3-4. This email states the date Billy Goat Burgers and Billy Goat Beer began retail sales and attaches pictures of these products in a retail grocery store. Neither Billy Goat IP nor JRL argue that this production was inadvertent. Rather, JRL contends that this document was a non-privileged communication. Doc. [90] at n.2. Instead of support Billy Goat Chip's position, production of this email merely shows that JRL has conducted a review of the documents and properly tendered documents that it determined were not privileged.

*4 Accordingly, the Court finds that JRL is Billy Goat IP's agent for the purposes of the attorney-client privilege and that JRL's privilege log sufficiently states and provides a basis for a claim of attorney-client privilege.

II. In Camera Review

Billy Goat Chip has also asked this Court to conduct an in camera review of the documents. Doc. [95] at 2. A party is not automatically entitled to an in camera review. See United States v. Zolin, 491 U.S. 554, 571 (1989) (declining to “go so far as to say that the court may automatically require a complete disclosure to the judge before he claim of privilege will be accepted in any case.”) (internal citation and quotations omitted). In the context of the crime-fraud exception to the attorney-client privilege, the Supreme Court recognized the need to balance the “detrimental effect, if any, of in camera review on the policies underlying the privilege and on the orderly administration of justice in our courts.” Id. at 571. Zolin concluded that some threshold showing should be made to make an in camera review appropriate. Id. “The rule allowing for in camera review does not presuppose any particular quantum of evidence establishing the appropriateness of the exception itself, merely enough evidence to support a ‘good faith belief by a reasonable person’ that such review may reveal evidence establishing the exception.” United States v. Boender, 649 F.3d 650, 656 (7th Cir. 2011) (quoting Zolin, 491 U.S. at 572).

Here, Billy Goat Chip believes that an in camera review may reveal that some or all of JRL's communications with Billy Goat IP's counsel did not concern legal advice and are not privileged. Federal courts should certainly not be in the business of always conducting in camera reviews every time a party moves to compel documents identified on a privilege log. Privilege logs are the means by which the opposing party and the Court identify the basis of the privilege and ascertain whether the privilege is properly invoked without the need to go further. Attorneys also have their own professional responsibilities and duties to properly invoke the privilege, with a basis in fact and law, and not always be second-guessed by the courts when a proper and detailed privilege log has been produced.

However, in this case, there are numerous legal and factual nuances surrounding the relationship between JRL and Billy Goat IP's counsel. There is a potential that the documents may contain business advice as oppose to legal advice. Billy Goat IP has recognized that one email communication between JRL and its counsel was not privileged. Doc. [90] at n.2. As a result, and out of an abundance of caution, this Court finds a sufficient basis to permit a limited in camera review.

The Court will exercise its discretion and sample only a certain portion of documents in connection with its in camera review. Billy Goat Chip shall select 10 documents out of 39 that it wishes the Court examine and shall notify JRL of such documents on or before February 6, 2019. JRL shall then provide those 10 documents to the Court for an in camera review on or before February 8, 2019. The Court will review the documents in camera and take further action if appropriate.

III. Common Legal Interest

*5 JRL also contends that the documents described in its privilege log are subject to the common interest doctrine. “The ‘common interest’ doctrine is not a separate privilege, in and of itself. It is a rule of non-waiver. That is, it is an exception to the general principle that disclosure to a non-privileged party of communications protected by the attorney-client privilege waives the privilege. It allows communications that are already privileged to be shared between parties having a ‘common legal interest’ without a resultant waiver.” Miller UK Ltd. v. Caterpillar, Inc., 17 F. Supp. 3d 711, 731 (N.D. Ill. Jan. 6, 2014). In other words, the common interest doctrine applies only when an otherwise privileged communication is disclosed to a non-privileged third party who has a common legal interest to whom the privilege belongs. See id. Accordingly, because this Court finds that JRL's communications with Billy Goat IP's counsel described in the privilege log are, at this time, protected by the attorney-client privilege, the question of whether JRL and Billy Goat IP shared a common legal interest need not be addressed with regards to Entry No. 1-37 and 39. For the same reason, the Court need not analyze the documents under the work-product doctrine.

The Court notes that Entry No. 38 is the lone privilege log entry without a claim for withholding on the basis of attorney-client privilege. Doc. [86-1] at 9. Entry No. 38's description is also insufficient for the court to ascertain whether the common interest doctrine applies. Accordingly, JRL is granted until February 8, 2019 to file a second amended privilege log and a corresponding memorandum of law regarding Entry No. 38. Alternatively, JRL can produce Entry No. 38.

IV. Failure To Meet and Confer Pursuant to Fed. R. Civ. P. 37(a)(1) and L.R. 37.2

The email thread attached to JRL's response to Billy Goat Chip's motion suggests that Billy Goat Chip's counsel did not meet with JRL's counsel to confer regarding this motion as it relates to the amended privileged log. [90-1]. Although Billy Goat Chip stylizes its motion to compel as a renewed one, it is nevertheless a new motion that argues JRL's amended privilege log was insufficient. Although this motion is denied on its merits and not due to a failure to meet and confer, the Court reminds Billy Goat Chip's counsel to comply with Fed. R. Civ. P. 37(a)(1) and L.R. 37.2 should another motion to compel arise in this case.

V. Conclusion

For the foregoing reasons, Billy Goat Chip's motion to compel [86] is denied as to production of documents corresponding to Entry Nos. 1-37 and 39 and granted as to its request for an in camera review but on a limited basis as stated above. With respect to Entry No. 38, JRL shall file a second amended privilege log and memorandum of law concerning its claim for the common interest privilege on or before February 8, 2019, or alternatively, produce Entry No. 38.

SO ORDERED.