*1 On October 25, 2017, following a telephonic discovery conference with the parties (see Dkt. No. 86), Defendants PcVue, Inc., Edward Nugent, InformaTrac, Inc., James, Huysentruyt, and Kristopher Hughes (together “Defendants”) filed a Notice of Motion and Motion to Compel Discovery Relating to Alan Davis, concurrently with a Memorandum of Points and Authorities (together, the “Motion”), Declaration of Erik P. Belt (“Belt Decl.”), and Declaration of Wiley S. Proctor (“Proctor Decl.”). (Dkt. No. 93.) On November 2, 2017, Plaintiff Manufacturing Automation & Software Systems, Inc. (“Plaintiff” or “MASS Group”) filed an Opposition to the Motion (“Opposition” or “Oppo.”), with the supporting Declarations of Shaunna Balady (“Balady Decl.”), Alan Davis (“Davis Decl.”), and Kirk Hallam (“Hallam Decl.”). (Dkt. No. 94.) On November 8, 2017, Defendants filed a Reply in support of the Motion. (Dkt. No. 95.) The Court held a hearing on November 22, 2017. (See Dkt. No. 102.) The matter is under submission and ready for decision.

For the reasons outlined below, the Motion is GRANTED in part and DENIED in part, and Plaintiff is ordered to submit documents for in camera review.

I. ALLEGATIONS OF THE FIRST AMENDED COMPLAINT

In the operative First Amended Complaint (“FAC”), Plaintiff alleges that beginning in 2015, Defendants Hughes and Huysentruyt formed a business partnership with Ed Nugent and PcVue with the primary purpose “to copy the Mass Software, along with the source and object codes from which that Software is exclusively derived,” and “copied MASS Software in order to produce and market that Software as their own.” (FAC ¶¶ 4-5 [Dkt. No. 27].) The FAC alleges that Hughes and Huysentruyt were former officers and managers of Plaintiff and resigned to launch a partnership with InformaTrac, where they deliberately induced Plaintiff's customers to discontinue their use of Plaintiff's software and either terminate or fail to renew licenses with Plaintiff. (FAC ¶¶ 8-14.)

The FAC asserts federal question claims for Copyright Infringement (17 U.S.C. § 101, et seq.); and Computer Fraud and Abuse (18 U.S.C. § 1030, et seq.), along with California state law claims for: Computer Access and Fraud Act (Cal. Penal Code § 502); Uniform Trade Secrets Act (Cal. Civil Code § 3426, et seq.); Breach of Contract; Inference with Prospective Economic Advantage; Fraud and Deceit; Conversion; Diversion of Corporate Opportunity; and Accounting.

II. THE DISPUTED REQUESTS

At issue in the Motion are documents and communications related to Al Davis, owner of Revitalization Partners, who was engaged by Plaintiff ostensibly as a software consultant, but who conducted an undercover investigation that included contacts with Defendants by email, telephone, and in person after Defendants were known to be represented by counsel. The documents and communications sought are responsive to Request Nos. 13-16 in Defendants' Request for Production of Documents, Set One (“Defendants' RFP”), which was served upon Plaintiff on August 9, 2017, and Request Nos. 1-16 and 20-23 in an August 30, 2017 Subpoena to Alan Davis (the “Subpoena”). The disputed discovery requests seek the following documents and communications.

A. Request Nos. 13-16 in Defendants' RFP to Plaintiff

*2 Request No. 13: All COMMUNICATIONS between YOU and Al Davis.

Response to Request No. 13: In addition to the General Objections hereinabove, Responding Party objects to this request on the grounds that it seeks documents protected by the attorney-client privilege and work product doctrine, including but not limited to privileged communications with counsel regarding this litigation, and/or other applicable privilege, doctrine or immunity.

Responding Party further objects to this request as overbroad and unduly burdensome in terms of time period. Responding Party reserves the right to supplement this response.

Request No. 14: All COMMUNICATIONS between YOU and Al Davis RELATING TO any INFORMATRAC DEFENDANT.

Response to Request No. 14: In addition to the General Objections hereinabove, Responding Party objects to this request on the grounds that it seeks documents protected by the attorney-client privilege and work product doctrine, including but not limited to privileged communications with counsel regarding this litigation, and/or other applicable privilege, doctrine or immunity.

Responding Party further objects to this request as overbroad and unduly burdensome in terms of time period. Responding Party reserves the right to supplement this response.

Request No. 15: All COMMUNICATIONS between YOU and Revitalization Partners.

Response to Request No. 15: In addition to the General Objections hereinabove, Responding Party objects to this request on the grounds that it seeks documents protected by the attorney-client privilege and work product doctrine, including but not limited to privileged communications with counsel regarding this litigation, and/or other applicable privilege, doctrine or immunity.

Responding Party further objects to this request as overbroad and unduly burdensome in terms of time period. Responding Party reserves the right to supplement this response.

Request No. 16: All COMMUNICATIONS between YOU and Revitalization Partners RELATING TO any INFORMATRAC DEFENDANT.

Response to Request No. 16: In addition to the General Objections hereinabove, Responding Party objects to this request on the grounds that it seeks documents protected by the attorney-client privilege and work product doctrine, including but not limited to privileged communications with counsel regarding this litigation, and/or other applicable privilege, doctrine or immunity.

Responding Party further objects to this request as overbroad and unduly burdensome in terms of time period. Responding Party reserves the right to supplement this response.

B. Request Nos. 1-16 and 20-23 in Subpoena to Davis

Request No. 1: All Documents concerning Communications between You and Kirk Hallam or any employee of the Law Offices of Kirk Hallam regarding [Defendants], Victor Flores, Mark Shindler, and/or the Litigation, including but not limited to letters, e-mails text messages, faxes, voicemail messages, and notes on conversations.

Response to Request No. 1: Mr. Davis objects to this request on the grounds that it demands documents and other electronic or tangible information protected by the attorney-client privilege and the attorney work product privilege, and any other applicable privilege, doctrine or immunity.

*3 Request No. 2: All Documents concerning Communications between You and Gamal Balady regarding [Defendants] Victor Flores, Mark Shindler and/or the Litigation, including but not limited to letters, e-mails text messages, faxes, voicemail messages, and notes on conversations.

Response to Request No. 2: [Same as No. 1.] Mr. Davis also objects to the request as vague; ambiguous; overbroad; unduly burdensome; and not limited by a reasonable time period.

Request No. 3: All Documents concerning Communications between or among You and any employee, officer, owner, or director of MASS Group regarding [Defendants] Victor Flores, Mark Shindler and/or the Litigation, including but not limited to letters, e-mails text messages, faxes, voicemail messages, and notes on conversations.

Response to Request No. 3: [Same as No. 2.]

Request Nos. 4-6: Communications with anyone regarding track-and-trace or traceability software (Request No. 4); communications with any client for whom Davis sought information regarding track-and-trace or traceability software (Request No. 5); and communications with anyone regarding the San Diego Conference (Request No. 6).[1]

Responses to Request Nos. 4-6: after asserting objections, Davis states: “Subject to these objections, and subject to the terms of the protective order entered in this matter, Mr. Davis will produce relevant, non-privileged documents in his possession, custody, and control that are responsive to this request to the extent any are located after a reasonable search.”

Request No. 7: All Documents concerning any agreements between you and/or Revitalization Partners on the one hand and Kirk Hallam and/or the Law Offices of Kirk Hallam on the other.

Response to Request No. 7: [Same as No. 1.]

Request No. 8: All Documents concerning any agreements between You and/or Revitalization Partners on the one hand and Gamal Balady and/or MASS Group on the other.

Response to Request No. 8: [Same as No. 2.]

Request No. 9: All Documents concerning monies or other compensation promised or received for any services performed by You and/or Revitalization Partners for Gamal Balady, MASS Group, Kirk Hallam, or the Law Offices of Kirk Hallam.

Response to Request No. 9: [Same as No. 2.]

Request Nos. 10-16: Communications between Davis and Huysentruyt (Request No. 10), Hughes (Request No. 11), Flores (Request No. 12), Brad Sherman (Request No. 13), InformaTrac, Inc. (Request No. 14), Nugent (Request No. 15), and PcVue, Inc. (Request No. 16).[2]

Responses to Request Nos. 10-16: After asserting objections, Davis states: “Subject to these objections, and subject to the terms of the protective order entered in this matter, Mr. Davis will produce relevant, non-privileged documents in his possession, custody, and control that are responsive to this request to the extent any are located after a reasonable search.”

Request No. 20: All Documents received by You from any source concerning [Defendants].

Response to Request No. 20: [Same as No. 1.] Subject to these objections, and subject to the terms of the protective order entered in this matter, Mr. Davis will produce relevant, non-privileged documents in his possession, custody, and control that are responsive to this request to the extent any are located after a reasonable search.”

*4 Request No. 21: All Documents prepared by or for You, including but not limited to reports, notes, photographs, sound recordings or audiovisual records, concerning [Defendants].

Response to Request No. 21: [Same as No. 2.]

Request No. 22: All Documents prepared by or for You including but not limited to reports, notes, photographs, sound recordings and/or audiovisual recordings, at or concerning the San Diego Conference.

Response to Request No. 22: [Same as No. 2.]

Request No. 23: All Documents concerning the results of any investigation by You on behalf of Gamal Balady, MASS Group, Kirk Hallam, or the Law Offices of Kirk Hallam, regarding James Huysentruyt, Kristopher Hughes, InformaTrac, Edward Nugent, PcVue, the Litigation, or alleged trade secrets including but not limited to witness statements, draft declarations, draft affidavits, reports, notes, photographs, sound records and/or audio visual recordings.

Response to Request No. 23: [Same as No. 2.]

III. THE PARTIES' CONTENTIONS

Defendants challenge Plaintiff's assertion of attorney-client privilege and work product protection as to documents and communications concerning non-attorney Alan Davis (“Davis”) and his covert contacts with Defendants because Davis is a third party fact witness in this action. (Motion at 1.) Defendants PcVue, Inc. and Ed Nugent subpoenaed documents from Davis (Motion at 1; Belt Decl. ¶ 2, Ex. B), while Defendants Hughes, Huysentruyt and InformaTrac, Inc. served Rule 34 document requests on Plaintiff seeking its communications with Davis. (Id., Belt Decl. ¶ 6, Ex. E.) Davis and Plaintiff have objected to the discovery requests on attorney client privilege grounds and work product doctrine and have refused to produce numerous categories of documents. (Id., Belt Decl. ¶¶ 4, 7; Exs. C, F.) Plaintiff has provided a privilege log identifying documents related to Davis that have been withheld on the basis of attorney-client privilege and/or the work product doctrine, but the log includes no entries after the commencement of the litigation. (Motion at 1; Belt Decl. ¶ 5. Ex. D.)

As an initial matter, Defendants argue that Davis's communications are not subject to attorney client privilege or work product doctrine because Davis is not an attorney, nor is he an officer or an employee of Plaintiff. (Motion at 5.) Defendants point out that while Plaintiff has asserted that Davis is a “nontestifying expert,” Plaintiff's counsel now describes Davis as an “investigator.” (Motion 6-7.) Plaintiff listed Davis as a percipient witness in its Rule 26(a) initial disclosure as a potential witness with discoverable information regarding Defendant's alleged misconduct. (Id. at 7; see also Belt Decl. ¶ 9, Ex. H (Plaintiff's Initial Disclosures Pursuant to FRCP 26(a)).)

Defendants also argue that even if Davis's role is properly characterized as that of an “investigator,” his pretext investigation to obtain statements from Defendants was unlawful because Davis is not a licensed investigator and as such his communications are not privileged. (Motion at 16.) Defendants emphasize that to the extent Davis was functioning as a private investigator, he did so in violation of the law because Davis is not licensed as a private investigator in either California (where he contacted Defendants at a San Diego trade show) or Washington (where Davis's company is located). (Motion at 16.) As such, Defendant urges that Davis is not entitled to any of the statutory protections afforded to private investigators under the California or Washington statutes.[3] Even if any privilege or work product protection applies to Davis's information, Defendants maintain that it has been waived because: (1) Plaintiff listed Davis as a percipient witness on Plaintiff's Rule 26 initial disclosure with knowledge of facts relevant to the issues in dispute; and (2) Davis's purported work product has been inserted into the litigation through deposition testimony of third-party witness Mr. Vic Flores. (Motion at 9-10.)

*5 Defendants point out that because Davis had direct pretextual communications with Defendants Hughes, Huysentruyt, and Nugent after Plaintiff was aware that these defendants were represented by counsel in this litigation, Plaintiff's counsel may have committed a potential ethical violation. (Motion at 13; see e.g., Belt Decl. ¶¶ 17-18; Exs. M, N.) Defendants argue that to the extent Davis's conduct may be imputed to Plaintiff's counsel, Mr. Hallam has violated California's “no contact rule,” which prohibits a lawyer from directly or indirectly communicating about the subject matter of representation with a party the lawyer knows is represented by another lawyer in the matter. (Motion at 14; citing Cal. R. Prof. Conduct 2-100(b)(2).) Defendants urge that Davis and Plaintiff should not be permitted to use privilege to “shield this unauthorized contact with represented parties.” (Id. at 15.) Finally, Defendants argue that the discovery should be compelled because they have a compelling need for the requested documents to help prepare their defense. (Id. at 19.)

Plaintiff contends that Davis's communications with Plaintiff's counsel, Kirk Hallam, are protected as attorney work product and/or the attorney client privilege. (Oppo. at 1-2; see also Belt Decl. ¶¶ 4, 7, Exs. C, F (Davis and Plaintiff discovery responses).) Plaintiff points out that the work product doctrine is not limited to attorney-prepared information and analysis, and as a representative acting on Plaintiff's behalf in connection with the litigation, all of Davis's documents listed on Plaintiff's privilege log are subject to work product protection. (Id. at 2.)

Further, Plaintiff insists that neither Plaintiff nor its counsel have done anything that would constitute a waiver of such privileges. (Oppo. at 4.) Plaintiff asserts that California State Bar ethics rules are not applicable to the discoverability of the documents at issue because Plaintiff's counsel did not violate any rules of professional responsibility. (Id. at 5-8.) Plaintiff does not dispute, however, that Davis conducted a covert investigation that included direct contacts, in person and via email, with Defendants in an effort to obtain information from Defendants for use in the litigation. Plaintiff also does not dispute that some of those contacts, notably in person meetings with Defendants at the San Diego trade show in January 2017, occurred after Plaintiff has been notified that these parties were represented by counsel.

Plaintiff argues that counsel did not violate California “no-contact-rule” because Plaintiff “was permitted through a representative of the Company to make contact with the opposing parties and to utilize Mr. Davis as its representative in that regard.” (See Oppo. at 8-9.) Plaintiff insists that Davis's contact with Defendants was permissible because the “Discussion” section for Cal. Rule of Professional Responsibility 2-100 permits “the parties themselves” to communicate with respect to the subject matter of the representation.” (Id. at 9.)

In their Reply, however, Defendants point out that the exception to the no-contact rule typically allows party to have contact with an opposing represented party for purposes such as trying to settle a case or other business reasons, and it contemplates that the person contacting the represented party is known to the party as someone representing the opposing party. (Reply at 17.) Defendants argue that Davis had an obligation to identify himself as representing Plaintiff but did not do so. (Id.) Instead, Davis posed as a potential InformaTrac customer in an effort to obtain admissions from Defendants about their customers and the software at issue. (Id.)

Plaintiff attempts to blunt the potential ethical consequences of Davis's unauthorized contacts, by arguing first that Davis was hired by the client, not Plaintiff's counsel, therefore, Davis was acting as the agent of the client, not Plaintiff's counsel, in reaching out to contact represented Defendants after commencement of the litigation. Citing out-of-district authority interpreting a New York State Bar Disciplinary Rule, Plaintiff argues that “pretexting” is lawful and “consistent with the policies underlying legal ethics and disciplinary rules.” (Oppo. at 6.)

*6 Plaintiff also asserts that no crime-fraud exception is at issue here because neither the California nor the Washington state statutes requiring licenses for private investigators apply to Davis. (Oppo. at 13-14.) Finally, Plaintiff contends that Davis has already produced the non-privileged responsive documents relating to his communications with Defendants and he is willing to sit for a deposition to confirm as much. In its Opposition and at the hearing, Plaintiff's counsel insisted that the use of Davis in an investigative capacity is an widely accepted means to investigate an intellectual property case and because Defendants have been unwilling to produce a copy of the software they allegedly stole from Plaintiff, this was Plaintiff's only means to try and determine whether and how Defendants were misusing proprietary information belonging to Plaintiff. (See Oppo. at 5-7.) Plaintiff insists that because Plaintiff's counsel did not violate any ethical rules, there is no basis to “vitiate Plaintiffs' claims of privilege.” (Oppo. at 8.)

IV. DISCUSSION

A. Applicable Legal Standard

Under Rule 26 of the Federal Rules of Civil Procedure, a party may obtain discovery concerning any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case. FED. R. CIV. P. 26(b)(1). As amended in December 2015, Rule 26(b)(1) now identifies six factors to be considered when determining if the proportionality requirement has been met, namely, the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to the relevant information, the parties' resources, the importance of the discovery in resolving the issues and whether the burden or expense of the proposed discovery outweighs its likely benefit. Id. Relevant information need not be admissible to be discoverable. Id.

District courts have broad discretion in controlling discovery. See Hallett v. Morgan, 296 F.3d 732, 751 (9th Cir. 2002). “A court can limit discovery if it determines, among other things, that the discovery is: (1) unreasonably cumulative or duplicative; (2) obtainable from another source that is more convenient, less burdensome, or less expensive; or (3) the burden or expense of the proposed discovery outweighs its likely benefit.” Favale v. Roman Catholic Diocese of Bridgeport, 235 F.R.D. 553, 558 (D. Conn. 2006) (internal quotation marks omitted). The party resisting discovery bears the burden of demonstrating that its objections should be sustained. Id.

Under the work product doctrine, material obtained and prepared by an attorney or the attorney's agent in anticipation of litigation or in preparation for trial may be shielded from discovery. FED. R. CIV. P. 26(b)(3); Hickman v. Taylor, 329 U.S. 495, 509-12 (1947), United States v. Richey, 632 F.3d 559, 567 (9th Cir. 2011). The work product doctrine protects attorneys' thought processes, legal recommendations, and strategy from exploitation by the opposing party. Holmgren v. State Farm Mut. Auto. Ins. Co., 976 F.2d 573, 576 (9th Cir. 1992).

The work product doctrine does not protect against disclosure of facts or facts contained within work product. Garcia v. City of El Centro, 214 F.R.D. at 519 (“[b]ecause the work product doctrine is intended only to guard against the divulging of attorney's strategies and legal impressions, it does not protect facts concerning the creation of work product or facts contained within the work product.”) (emphasis in original) (internal quotation marks and citations omitted). The work product protection can extend to documents created by an agent of the attorney or client of an attorney. In re Grand Jury Subpoena (Torf), 357 F.3d 900, 907 (documents created by investigator at direction of counsel protected as work product).

The party asserting the work product privilege must show that the withheld materials are: (1) documents and tangible things; (2) prepared in anticipation of litigation or for trial; and (3) the documents or tangible things were prepared by or for the party of the attorney asserting the privilege. FED. R. CIV. P. 26(b)(3). If the work product privilege is found to apply, the burden shifts to the party seeking discover to show substantial need for the material and that the party “is unable without undue hardship to obtain the substantial equivalent of the materials by an alternative method.” Garcia, 214 F.R.D. at 591 (internal citations omitted).

*7 Where, as here, evidence relates to both federal and state claims, issues of attorney client privilege are controlled by federal common law. Wilcox v. Arpaio, 753 F.3d 872, 876 (9th Cir. 2014) (federal privilege law governs where complaint the contested evidence concerned federal and state law claims); see FED. R. EVID. 501. The attorney-client-privilege protects confidential communications between attorneys and their clients that are made for the purpose of giving legal advice. Upjohn Co. v. United States, 449 U.S. 383, 389 (1981). The attorney-client privilege permanently protects from disclosure by the client or the legal adviser: (1) legal advice (2) from a legal professional acting in his or her capacity as such, (3) where the communications relate to that purpose and (4) are made in confidence, (6) unless the protection is waived. United States v. Graf, 610 F.3d 1146, 1156 (9th Cir. 2010).

Voluntary disclosure of privileged communications waives the privilege for all other communications on the same subject. Weil v. Inv./Indicators, Research & Mgmt., Inc., 647 F.2d 18, 24 (9th Cir. 1981). The attorney-client privilege may extend to communications with third parties who have been engaged to assist the attorney in providing legal advice. Where the advice sought is not legal advice, however, then the privilege does not exist. Id. The party asserting the privilege has the burden to demonstrate the relationship and privileged nature of the communication. United States v. Bauer, 132 F.3d 504, 507 (9th Cir. 1997). “Because it impedes full and free discovery of the truth, the attorney-client privilege is strictly construed.” Weil, 647 F.2d at 24 (internal citations omitted).

B. Analysis

Davis is listed in Plaintiff's Initial Disclosure as a percipient witness in this case and therefore is subject to discovery. There is no indication that Plaintiff has withdrawn or amended that designation. Consequently, Plaintiff's newly minted assertion that Davis is a “non-testifying expert” under Rule 26(b)(4)(D) unpersuasive. Plaintiff's Vice President of Business Development Shaunna Balady admits that she “devised a plan with Mr. Davis for him to pose as a potential customer of InformaTrac, to get a demonstration of that software from Mr. Huysentruyt ....” (Balady Decl. ¶ 8 (emphasis added).) In the Reply, Defendants argue that because Davis was identified as a percipient witness in Plaintiff's initial disclosures, Rule 26(a) controls here not Rule 26(d)(4)(D). (Reply at 5.) The Court agrees. See, e.g., United States ex rel. Brown v. Celgene Corp., No. 10-3165, 2015 WL 12731923, *3 (C.D. Cal. July 24, 2015) (disclosure under Rule 26(a)(1) “enables a party directly to interview or depose the witness or collect evidence from the witness to test his or her statements”).

Facts underpinning a legal action are fully discoverable. Balady's assertion that she does “not believe that Mr. Huysentruyt provided Mr. Davis with any information nor demonstration which Mr. Huysentruyt and InformaTrac were not willing to provide to any other member of the public expressing an interest in seeing or hearing about InformaTrac's software” only underscores the factual nature of information Davis may have obtained and why no privilege can properly shield Davis's communications with Defendants from disclosure. Plaintiff cannot avoid disclosure of relevant factual information by conveniently labeling Davis's role as “investigator” or “software consultant” or “non-testifying expert.” See, e.g., WIII Uptown LLC v. B&P Restaurant Group, LLC, No. 15-51 2016 WL 4620200, * 12 (Sept. 2, 2016 M.D. La) (denying motion to quash subpoena where purported defense “expert” and “fraud investigator” gathered factual information and was previously disclosed as fact witness in initial disclosures).

*8 Plaintiff is correct that the work product doctrine is not limited to information authored by an attorney, but may extend to documents created by an agent of the attorney or client of an attorney. In re Grand Jury Subpoena (Torf), 357 F.3d 900, 907 (documents created by investigator at direction of counsel protected as work product). However, Plaintiff appears to play a cat-and-mouse game with Davis's function in an effort to avoid discovery. Plaintiff contends that Davis is a “non-testifying expert,” but as noted above, that characterization fails in the face of Plaintiff's Initial Disclosures.

Next, Plaintiff argues that it was the client, not Plaintiff's counsel, Kirk Hallam, who engaged Davis and directed Davis's pretext investigation. In support of that proposition, Davis attached a copy of his Engagement Letter, which is addressed to both Plaintiff's CEO, Gamal Balady, and Kirk Hallam, and, notably, the salutation is directed to Hallum (“Dear Kirk”). (Davis Decl. ¶ 4, Ex. 1.)[4] As the Balady and Davis declarations demonstrate, Davis's communications, notes, and other information about his interactions with Defendants could provide facts highly relevant to the issues in this case.

The attorney work product doctrine is a qualified privilege. See Hickman, 329 U.S. at 508. When determining whether work product protection shields a document from disclosure, the court must look at the totality of the circumstances surrounding the creation of the document and protection is afforded “when it can fairly be said that the document was created in anticipation of litigation, and would not have been created in substantially similar form but for the prospect of that litigation.” See In re Grand Jury Subpoena (Torf), 357 F.3d at 908 (internal quotation marks and citations omitted). Plaintiff and Davis represent that Davis functioned as an agent for Plaintiff and insist that any documents or communications concerning Davis's contacts with Defendants that have been withheld were created in pursuit of the pending litigation. (See Balady Decl. ¶¶ 7, 10; Davis Decl. ¶ 3.)

However, any protection afforded by the work product rule is not absolute, it can be waived. To the extent any work product privilege may apply here with respect to Davis's communications with or concerning Defendants, the privilege has been waived first by presenting Davis as a percipient witness, and second, by putting Davis's communications with Defendants at issue in the deposition of Vic Flores. Courts in this circuit have held that the work product privilege “may be waived, for example, when an attorney attempts to use the work product as testimony or evidence, or reveals it to an adversary to gain an advantage in litigation.” United States v. Reyes, 239 F.R.D. 591, 508 (N.D. Cal. 2006); and see B.H. ex rel. Holder v. Gold Fields Mining Corp, 239 F.R.D. 652, 655 (N.D. Okla. 2005) (recognizing waiver can occur “when a party injects the substance of work-product into litigation or other adversary proceedings, or makes a partial disclosure of work-product while seeking to maintain protection of work-product related to the same subject”) (citations omitted). Both situations occurred here.

*9 Plaintiff used portions of Davis's communications, including emails with Defendants, to question non-party witness Vic Flores at his deposition. (See Motion at 9-11.) The evidence before the Court suggests that Plaintiff has selectively produced some, but not all, of Davis's communications with Defendants and has wholly refused to produce other factual information obtained during his investigation. (See e.g., Davis Decl. ¶¶ 10-13; Balady Decl. ¶ 10 (describing emails sent to Davis).)[5] In light the serious allegations of copyright infringement at issue and Plaintiff's three different descriptions of Davis's role in the case, Defendants have demonstrated a substantial need to obtain full disclosure of the nature of Davis's undercover investigation.

Accordingly, the Motion is GRANTED with respect to any documents responsive to Defendants' RFP Nos. 20-23 and the Subpoena's Document Request Nos. 1-16 and 20-23 for which solely the work product doctrine has been asserted.

Plaintiff contends that the Motion should be denied because certain communications between Davis and Plaintiff's counsel, Kirk Hallam, are protected by the attorney client privilege. Defendants, on the other hand, argue that the attorney client privilege does not apply to prevent disclosure of facts Davis obtained in his investigation and even if the privilege applies, it has been waived by potentially unethical covert contact between Davis and Defendants after Plaintiff's counsel was well aware that the defendants were represented by counsel. (Motion at 14-15.)

As a threshold matter, none of Davis's communications with Defendants can be privileged because they were not confidential originally. All such communications must be produced.[6] Davis was hired to act on Plaintiff's behalf and in that capacity had surreptitious interactions with Defendants after Defendants were represented by counsel in this action, in an effort to obtain information about possible misuse of Plaintiff's software. In Opposition to the Motion, Davis himself produced a copy of his engagement agreement. (Davis Decl. ¶ 4, Ex. 1.) Shaunna Balady acknowledges that Davis sent her “a number of emails” about his communications with Huysentruyt and customers of InformaTrac, “some of which were copied to Plaintiff's counsel, Kirk Hallam.” (Balady Decl. ¶ 11.)

Merely providing factual information to an attorney does not make those facts protected by attorney client privilege. See Upjohn Co., 449 U.S. at 395-96 (attorney client privilege extends only communications and not to facts.) Neither Balady nor Davis is an attorney. To the extent Balady and Davis discussed facts obtained in Davis's investigation, those facts are discoverable. Documents relating to those facts exchange between non-attorneys should be produced, particularly given Davis's designation as a percipient witness in this matter.

*10 Defendant also argues that an order compelling disclosure of all of Davis's communication regarding his investigation, including his communications with Plaintiff's counsel, is warranted because Davis's conduct on behalf of Plaintiff in contacting represented defendants violated rules of professional ethics that prohibit contact with represented parties. (Motion at 14-15.) Plaintiff counters that there was nothing unethical about Davis's undercover communications with Defendants because “the majority of federal courts asked to review these practices have found them to be both lawful and consistent with the policies underlying legal ethics and disciplinary rules[.]” (Oppo. at 6.)

Plaintiff argues that Davis's contact with Defendants after Plaintiff's counsel knew that Defendants were represented was permissible under an exception to California Rules of Professional Responsibility that allows parties to have direct communications. (Oppo. at 9; citing Discussion section for CRP 2-100.) Plaintiff also urges that even if Davis's contact with Defendants was a “technical ethical violation” of the California Rules of Professional Responsibility, the Court should not vitiate the attorney-client privilege. (Oppo. at 10-12.)

The evidence before the Court establishes that Plaintiff's counsel was most certainly aware that Defendants were represented by counsel when Davis met with them at the San Diego trade show in January 2017. (See Belt Decl. ¶ ¶10-11, Exs. I, J.) Moreover, because Davis's Engagement Letter was directed to Hallam, as well as the client's CEO, Hallam must have been aware of Davis's activities in pursuing the investigation. Indeed, the number of documents on Plaintiff's privilege log evidencing communications between Davis and Hallam suggests that Hallam was kept informed of Davis's activities. (See Belt Decl. ¶ 5, Ex. D (Plaintiff's Privilege Log).) Thus, the Court has serious concerns whether a possible breach of the no-contact rule occurred when Davis contacted represented parties — whether at the direction of Plaintiff's counsel or simply with his knowledge.

Plaintiff attempts to minimize Davis's actions by characterizing them as a “technical violation.” (Oppo. at 10.) Plaintiff further argues no-harm-no-foul as to the information Davis obtained from Defendants and, citing Gidatex, S.r.L. v. Campaniello Imports, Ltd., 82 F.Supp.2d 119, (S.D.N.Y. 1999), urges the Court to “approve and validate” the Davis's pretext investigation by balancing the policy interest of promoting full and complete disclosure in the judicial process against the interest in ethical attorney conduct. (See Oppo. at 6, 10-11.)

In Gidatex, a trademark infringement action, undercover investigators for the plaintiff posed as interior designer customers and visited defendants' public showroom where they interviewed low-level employees. Gidatex, 82 F.Supp. 2d at 123. The defendant later brought a motion in limine to exclude the information obtained by the investigators on the grounds that their conduct violated New York's ethical rules prohibiting an attorney from contacting a represented opposing party. Id. at 119. The district court denied the motion because: (1) it was “not convinced that the ethical rules cited by defendants are applicable to the situation at hand;” (2) even if the rules were applicable, defendant had not demonstrated that plaintiff's counsel violated the rules; and (3) if an ethical violation had occurred, “preclusion of evidence at trial is not the proper remedy.” Id. The district court reasoned that the “ethical rules should not govern situations where a party is legitimately investigating potential unfair business practices by use of an undercover posing as a member of the general public engaging in ordinary business transactions with the target.” Id. at 122.

*11 After concluding that the low-level non-managerial employees interviewed were indeed “parties” to the litigation and plaintiff's counsel knew that defendant was represented by counsel, the Southern District of New York found that the attorney did not violate the disciplinary rules “because his actions simply do not represent the type of conduct prohibited by the rules.” Gidatex, 82 F.Supp. 2d at 125. The district court explained “[t]he use of private investigators, posing as consumers and speaking to nominal parties who are not involved in any aspect of the litigation, does not constitute an end-run around the attorney/client privilege.” Id.

Gidatex, while not binding on this court, is persuasive authority. However, the facts are sufficiently distinguishable to make the analysis somewhat different. In Gidatex, the undercover investigators spoke with low-level employees who had no involvement in the litigation, but, here, Davis had multiple contacts with named defendants who are centrally involved in this litigation. Further, in Gidatex, the district court observed that the investigators did not “trick [the sales clerks] into making statement they otherwise would not have made.” Id. at 126. Here, however, it is not readily apparent that Davis was not at least attempting to obtain admissions from Defendants that they would not have otherwise made. As Defendants point out, the rules of professional conduct do not permit an attorney to do indirectly that which he or she is not allowed to do directly. (See Motion at 14; citing ABA Comm. On Ethics & Prof'l Responsibility, Formal Op. 396 (1995).)

Nevertheless, even if an ethical violation occurred, a wholesale waiver of the attorney-client privilege is not the appropriate remedy. Federal courts enforce rules of professional responsibility pursuant to their general supervisory authority over members of the bar. See, e.g., Erickson v. Newmar Corp, 87 F.3d 298, 303 (9th Cir. 1996) (federal courts have inherent authority to control the conduct of attorneys who practice before it.)[7]

The attorney-client privilege is held by the client. See e.g., Hunt v. Blackburn, 128 U.S. 464, 470 (1888) (“the [attorney-client] privilege is that of the client alone”); see also Swidler & Berlin v. U.S., 524 U.S. 399, 404 (1998) (attorney-client privilege survives client's death). The California Rules of Professional Responsibility govern counsel's actions and when violated, disciplinary measures should be enforced against counsel, not through a discovery order that eviscerates the client-held privilege. See Erickson, 87 F.3d at 304. Defendants contend that if a breach of the no-contact rule occurred, the “proper remedy, at least, would be to exclude any information that Davis obtained through his improper and unlicensed contacts.” (Motion at 15.) However, an order to exclude evidence is not the same as finding a waiver of the attorney client privilege and is also not the subject of the pending Motion. For the foregoing reasons, the Motion is DENIED to the extent it seeks to compel production of all of Davis's communication regarding his investigation on the grounds that Davis's conduct violated rules of professional ethics.

*12 Defendants also insist that if Davis was acting as an “investigator” on Plaintiff's behalf when he contacted Defendants, Davis and Plaintiff cannot avoid responding to Defendants' RFP and the Subpoena based on any statutory protections afforded to private investigators because Davis is not licensed as a private investigator. (Motion at 16-17.) Therefore, Defendants maintain, Davis was acting illegally and because the investigation he conducted was unlawful, any statutory privilege is vitiated by the “crime-fraud” exception. (Id. at 17-18.) Plaintiff, not surprisingly, vigorously contests Defendants' argument that disclosure should be compelled based on a “crime fraud” exception either because Davis conducted his “undercover” investigation without a private investigator's license or because of any potential ethical violation. (See Oppo. at 12-13.)

Under the crime-fraud exception, communications between a client and his or her attorney are not privileged when the client “consults an attorney for advice that will serve him in the commission of a fraud” or crime. In re Napster, Inc. Copyright Litig., 479 F.3d 1078, 1090 (9th Cir. 2007), abrogated in part on other grounds by Mohawk Indus., Inc. v. Carpenter, 558 U.S. 100 (2009). To invoke the crime fraud exception, a party must meet a two-part test: (1) the party must show that “the client was engaged in or planning a criminal or fraudulent scheme when it sought the advice of counsel to further the scheme”; and (2) it must demonstrate that the attorney-client communications sought are “sufficiently related to” and were made “in furtherance of” the intended, present or continuing illegality. Id. (internal quotations and citation omitted).

The United States Supreme Court, noting that “[t]here is no reason to permit opponents of the privilege to engage in groundless fishing expeditions, with the district courts as their unwitting (and perhaps unwilling) agents,” requires that a district court undertake a two-step process to determine whether the crime-fraud exception applies to potentially privileged materials. United States v. Zolin, 491 U.S. 554, 572 (1989). First, the court must determine whether a showing of a prima facie violation has been made. In re Grand Jury Investigation, 810 F.3d 1110, 1113 (9th Cir. 2016). Second, if sufficient evidence is produced to invoke the crime-fraud exception, the district court must conduct an in camera review to determine which specific documents containing communications in furtherance of the crime–fraud must be produced. Id. A court may determine a prima facie showing of violation has been made “either by examining privileged material in camera or by examining independent, non-privileged evidence.” Id.

Here, neither party cites any authority from this circuit holding that an informal undercover investigation such as occurred here in the context of this intellectual property litigation requires a private investigator's license and the Court is aware of none. The independent evidence presented by Defendants in urging that the crime-fraud exception should apply to Davis's communications with Hallam, is that Davis may have acted illegally by conducting his pretext investigation without an investigators license, and Plaintiff's counsel may have committed a violation of the no-contact rule of professional conduct. This is not sufficient evidence to make a prima facie showing that the Plaintiff sought legal advice in furtherance of a planned or continuing illegal or fraudulent scheme or activity.

The Court is not persuaded that Davis was required under either California or Washington law to obtain a private investigator's license to undertake his investigation. While it is undisputed that Davis should not have made under cover contact with a represented party, Defendants present no authority, and the Court is aware of none, that suggests that an ethical violation of this nature is sufficient to invoke the crime-fraud exception to destroy the attorney-client privilege. More importantly, there is no evidence that the client, MASS Group, or any of its representatives, consulted their counsel in furtherance of an illegal scheme or activity. Indeed, Davis was apparently hired before the litigation commenced. (See Davis ¶ 4, Ex. 1.) His investigative efforts may have been clumsy and ill-advised, but nothing in the record before the Court suggests that the client sought legal advice for the purpose of achieving something patently illegal. Thus, the Court finds there is insufficient evidence on this record to invoke the crime-fraud exception, and the Motion is DENIED to the extent it seeks to compel production of privileged documents from Plaintiff, Hallam, or Davis based on a finding that the crime-fraud exception voids Plaintiff's attorney client privilege.

V. CONCLUSION

*13 For all the foregoing reasons, the Motion is GRANTED in part and DENIED in part as follows:

IT IS SO ORDERED.