*1 This matter is before the Court on Defendants’ Motion to Compel Discovery (Doc. No. 107). Specifically, Defendants request the Court order Solutran to produce slides 15, 16, and 17 of a PowerPoint presentation because they are neither attorney-client privileged nor work-product protected, and even if they were, they argue any privilege has been waived. Solutran asserts both attorney-client privilege and work-product protection over those slides and argues there has been no waiver. The Court held a hearing on the motion on October 27, 2016, at which the parties were represented by counsel. Based on the files, records, and proceedings herein, the Court grants Defendants’ motion.

Accordingly, IT IS HEREBY ORDERED that:

1. Defendants’ Motion to Compel Discovery (Doc. No. 107) is GRANTED.

2. The attached Memorandum is incorporated herein by reference.

Generally, discovery may inquire into all information, not otherwise privileged, that is relevant to the subject matter of the action and proportional to the needs of the case. See Fed. R. Civ. P. 26(b)(1). Solutran contends that the three PowerPoint slides[1] at issue are not discoverable because they are privileged and that privilege has not been waived. Solutran bears the burden of establishing that the work-product doctrine or the attorney-client privilege should protect the three slides at issue. See In re Grand Jury Subpoena Duces Tecum, 112 F.3d 910, 925 (8th Cir. 1997) (recognizing that the party resisting disclosure bears the burden of establishing the elements of work-product immunity); In re Grand Jury Proceedings, 791 F.2d 663, 666 (8th Cir. 1986) (holding that the burden rested on the person asserting the privilege to establish that the information sought fell within the attorney-client privilege).

Solutran asserts that all three slides are covered by the attorney-client privilege. “The attorney-client privilege extends only to confidential communications made for the purpose of facilitating the rendition of legal services to the client.” United States v. Horvath, 731 F.2d 557, 561 (8th Cir. 1984) (emphasis in original). Its purpose is “to encourage full and frank communication between attorneys and their clients.” Upjohn Co. v. United States, 449 U.S. 383, 389 (1981). However, because the attorney-client privilege obstructs the truth-finding process, it is construed narrowly and “protects only those disclosures—necessary to obtain informed legal advice—which might not have been made absent the privilege.” Westinghouse Elec. Corp. v. Republic of Philippines, 951 F.2d 1414, 1423–24 (3d Cir. 1991) (quoting Fisher v. United States, 425 U.S. 391, 403 (1976) (emphasis in original); see also Diversified Indus., Inc. v. Meredith, 572 F.2d 596, 602 (8th Cir. 1977) (“While the privilege, where it exists, is absolute, the adverse effect of its application on the disclosure of truth may be such that the privilege is strictly construed.”).

Solutran also contends that all three slides are protected by the work-product doctrine because they were drafted in anticipation of litigation. Under Federal Rule of Civil Procedure 26(b)(3)(A), “[o]rdinarily, a party may not discover documents ... that are prepared in anticipation of litigation or for trial by or for another party or its representative.” “The primary purpose of the work product privilege is to assure that an attorney is not inhibited in his representation of his client by the fear that his files will be open to scrutiny upon demand of an opposing party.” In re Murphy, 560 F.2d 326, 334 (8th Cir. 1977). “At the same time, ordinary business advice is not protected by the work-product doctrine simply because it involves an attorney; the work-product doctrine does not automatically apply because ‘the subject matter of a document relates to a subject that might conceivably be litigated’ or because ‘the materials were prepared by lawyers or represent legal thinking.’ ” U.S. Bank Nat'l Ass'n v. PHL Variable Ins. Co., No. 12-877 (JRT/TNL), 2016 WL 1258466, at *3 (D. Minn. Mar. 30, 2016) (quoting United States v. Textron Inc. & Subsidiaries, 577 F.3d 21, 29 (1st Cir. 2009) (emphasis in original).

*2 The Solutran PowerPoint slide deck at issue was presented at the “Advisors and Shareholder Meeting, Second Quarter 2012.” (Doc. No. 110, Decl. of Ben D. Kappelman in Supp. of Defs.’ Mot. to Compel Disc. (“Kappelman Decl.”) ¶ 6, Exh. C at 1.) All slides, except for a few title slides, are uniformly labeled “Confidential Information” at the bottom of the slide. (Kappelman Decl. ¶ 6, Exh. C.) A slide titled “Agenda,” which was produced, lists the following four topics:

(Id. at 1.) Each of the slides in the “SPIN Patent Litigation Discussion” section of the PowerPoint includes a law firm logo placed in the upper right corner. Many of the SPIN section's slides present general information about patent litigation; for example, one includes cost estimates for patent litigation from the American Intellectual Property Litigation Association's (“AIPLA”) data. Another slide posts a large photograph of the law firm's attorneys. Other slides list some of the law firm's clients and generally support the firm's reputation.

Solutran produced the full PowerPoint slide deck—including slides 15, 16, and 17—to Defendants on July 15, 2016. Defendants’ counsel used the PowerPoint during the deposition of Kari Hawkings on Tuesday, September 13, 2016. It was marked as Exhibit No. 185. (Kappelman Decl. ¶ 6, Ex. C; see also Doc. No. 109, Defs.’ Mem. of Law in Supp. of Mot. to Compel Disc. 3.) As it was used, Solutran's counsel immediately alerted everyone at the deposition that Exhibit 185 “contains attorney client privilege material.” (Kappelman Decl. ¶ 7, Ex. D at 265.) That same day, Solutran requested that Defendants destroy 57 documents Solutran had inadvertently produced, including the full PowerPoint slide deck. (Kappelman Decl. ¶ 10, Ex. G.) The next day, another claw-back letter was sent adding additional documents. (Id. at Ex. H.) Defendants promptly complied with the claw-back request and destroyed the original versions of the documents and all copies that they were able to locate. (Kappelman Decl. ¶ 11.) Following the claw-back, Solutran reproduced the PowerPoint slide deck as bates numbers Solutran 004202.01 through 004202.14. Three of the slides—slides 15, 16, and 17—were replaced as fully “REDACTED.” (Kappelman Decl. ¶ 6, Ex. C.)[2] Defendants dispute that the withheld and redacted documents are privileged or protected. They also take the position that any privilege or protection was waived when the slide deck was circulated internally and then presented at the Shareholders and Advisory Board meeting without any attorneys present.

The Court concludes Solutran has not met its burden to establish that privilege or work-product protection applies. As the party invoking the privilege, Solutran has the burden of establishing that the privilege applies. Hollins v. Powell, 773 F.2d 191, 196 (8th Cir. 1985) (“[T]he party who claims the benefit of the attorney-client privilege has the burden of establishing the right to invoke its protection.”). This burden includes establishing a factual basis for asserting the privilege. Rabushka ex rel. U.S. v. Crane Co., 122 F.3d 559, 565 (8th Cir. 1997). And Solutran also has the burden of establishing that the work-product doctrine applies. In re: Zurn Pex Plumbing Prods. Liab. Litig., No. 08-1958 (ADM/RLE), 2009 WL 1178588, at *1 (D. Minn. May 1, 2009). To be attorney-client privileged, Solutran must show the following:

Diversified, 572 F.2d at 609. “The work-product doctrine, on the other hand, is broader than the attorney-client privilege and seeks to protect materials that ‘were prepared in anticipation of litigation, i.e. because of the prospect of litigation.’ ” In re Zurn Pex Plumbing Prods. Liab. Litig., 2009 WL 1178588, at *1 (quoting PepsiCo, Inc. v. Baird, Kurtz, & Dobson, LLP, 305 F.3d 813, 817 (8th Cir. 2002)).

While the “SPIN Litigation Discussion” section title slide may provide a red-flag, the content of the slide section does not support the privilege or protected designation. Even though the section includes “Litigation” in its title, every slide in the section includes the Greene Espel logo, and every slide in the section includes the words “Confidential Information” in the footer, Solutran concedes that most of the slides in this section are not subject to any privilege or work-product protection. For example, Solutran does not claim privilege or protection for slide 14, titled “Patent Litigation.” According to Solutran, only three of the nine slides in the SPIN Litigation section are privileged or protected – slides 15, 16, and 17. But slides 16 and 17 are respectively a basic “synthesis of the law” and next steps describing basic patent litigation strategy. They do not include or apply any specific facts. Nor do they disclose what would appear to be any confidential information. Slide 15 is titled “Solutran's Options” and includes two subtitles. The top half is subtitled “Getting a Patent” and the bottom half is subtitled “Once We Have a Patent.” The bottom half contains a generic list using the words “Hold,” “Sell,” and “Enforce,” and it further lists “Licensing Letter(s)” and “Litigation.” The top half of the slide includes a single statement relating to patent prosecution. While this statement references US Bank and mentions “divided infringement,” it does not include any specific confidential information or include attorney advice directed to a particular factual scenario or legal problem. Further, there is no evidence that the Greene Espel firm was providing any patent prosecution advice – and no patent had yet issued. Therefore, Solutran has not met its burden to show privilege or protection by merely showing the Court the face of the documents themselves.

In addition, Solutran has not shown through its privilege logs that the attorney-client privilege or work-product protection applies to slides 15, 16, and 17. A party claiming privilege must make the claim and “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.” Fed. R. Civ. P. 26(b)(5)(A)(ii). In modern legal practice, parties asserting privilege typically produce a privilege log that satisfies the requirements of the Federal Rules and gives the receiving party sufficient information to assess the claim of privilege. See Bartholomew v. Avalon Capital Grp., Inc., 278 F.R.D. 441, 447 (D. Minn. 2011) (stating the privilege log that described “Author/Source, Recipient(s), CC(s), Date, Description, Privilege Asserted, and Beginning of Bates Number of Produced Version]” complied with the Federal Rules).

*4 This Court's first Pretrial Scheduling Order, issued by Magistrate Judge Steven E. Rau, included the requirements for a privilege log. (Doc. No. 28, 5/30/14 Order 5–6.) Specifically, that Order provided the following:

(Id.) On September 16, 2016, Solutran produced a privilege log relating to the claw-back documents. (Kappelman Decl. ¶ 12, Ex. I.) Item No. P-1116 (the document comprising the slide deck at issue) was listed as an “E-mail chain; Presentation” to “Barry Nordstrand-Solutran” from “James Vair-Solutran” with a document date of August 21, 2012. (Id.) The description given for this document was “Communication and presentation regarding lawsuit.” (Id.) The “Privilege Basis” provided was “WP” (i.e., work product). (Id.) No other information was given. An amended privilege log (dated October 6, 2016) was filed on October 28, 2016, following this Court's hearing on the motion. (Doc. No. 129, Attach. 1.) The entry at issue provides a beginning Bates Number SOLUTRAN0042402.01. (Id.) This time it lists the document type as “Presentation.” (Id.) The document date is again listed as August 21, 2012, but the “To” and “From” columns are blank. The description column now reads: “Redaction of Solutran Advisors and Shareholder Meeting PowerPoint presentation.” (Id.) And the basis for withholding the document is listed as “AC” (i.e., attorney-client privilege) and “WP” (i.e., work product). (Id.)

Solutran's privilege logs fail to meet the requirements of Magistrate Judge Rau's initial Pretrial Scheduling Order (see Doc. No. 28, 5/30/14 Order), and are deficient under the Federal Rules of Civil Procedure. The logs make no mention that Greene Espel attorneys authored or provided the slides to anyone at Solutran, and they fail to provide the complete list of individuals who may have sent or received the documents. Solutran did not provide the identities of the meeting attendees or what role they played in any decisions regarding litigation. Nor does Solutran explain who received the documents internally within Solutran prior to and after the meeting presentation. Based on the information provided to the Court in connection with this motion, it appears that the PowerPoint slide deck, including the Greene Espel slides, was circulated internally between Marketing Coordinator James Vair, Barry Nordstrand, and Chad Kelly on August 21, 2012. (Kappelman Decl. ¶ 5, Ex. B.) Yet, Mr. Kelly is never mentioned on either of the privilege logs, and none of them are listed on what was supposed to be the updated privilege log. Simply put, no one looking at the privilege logs would understand how many documents were withheld or be able to assess the claim for why they were withheld. Therefore, Solutran's privilege log did not satisfy the basic requirements under the Rules, or this Court's Scheduling Order. This Court, however, is reluctant to conclude that Solutran waived privilege by failing to meet the requirements for a privilege log. Instead, the Court has reviewed the documents themselves in camera, along with the other information provided by the parties in connection with this motion, to determine whether Solutran has shown the attorney-client or work-product protections apply.

*5 Setting the deficient privilege logs aside, Solutran still has not sufficiently explained why the information in slides 15, 16, and 17 is attorney-client privileged or work-product protected. The affidavit from Solutran includes only generic statements from Kari Hawkins about Solutran's Shareholders and a “Board of Advisors,” a paid group of five professionals. (Doc. No. 120, Affidavit of Kari Hawkins (“Hawkins Aff.”) 1.) According to the affidavit, Greene Espel provided “PowerPoint slides for Solutran to use in the August 2012 meeting providing information regarding potential litigation against US Bank.” (Id. at 2.) Hawkins further avers that the slides were shown “to provide the Shareholders and Advisors with information to be used in deciding whether to pursue litigation against US Bank.” (Id.) No facts, however, are provided regarding the Shareholders’ and Advisors’ role in any litigation decision. And while Hawkins mentions that the slides were labeled “Confidential Information,” and that she “understood the information presented during the meeting was not to be shared beyond those persons in attendance,” she does not identify any information in the slides that was actually confidential, nor does she attest that others present at the meeting had the same understanding as she did about the confidentiality of the information. Further, Hawkins does not explain what litigation Solutran was contemplating. As explained above, “the work-product doctrine does not automatically apply because ‘the subject matter of a document relates to a subject that might conceivably be litigated’ or because ‘the materials were prepared by lawyers or represent legal thinking.’ ” U.S. Bank Nat'l Ass'n, 2016 WL 1258466, at *3 (quoting Textron Inc., 577 F.3d at 29) (emphasis in original). Significantly, Hawkins makes no mention that Solutran understood that the information in the slides constituted legal advice. The declaration from counsel at Greene Espel is limited to information regarding its inadvertent production and efforts to claw-back the documents, and does not affirm that the information provided in the slides constituted legal advice either. See Diversified Indus., 572 F.2d at 609 (“The communication must be made for the purpose of securing legal advice.”). Because Solutran has not met its burden to show that the slides at issue are attorney-client privileged or work-product protected, Defendants’ motion to compel should be granted and the withheld slides should be produced.

To the extent any portions of slides 15, 16, or 17 were privileged or protected (which this Court concludes Solutran has not shown), this Court also finds that Solutran waived that privilege by circulating the PowerPoint slide deck to its Shareholders, Advisors, and its Marketing Coordinator. Within a corporation, the privilege is lost if a privileged communication is “disseminated beyond those persons who, because of the corporate structure, need to know its contents.” In re Bieter Co., 16 F.3d 929, 936 (8th Cir. 1994) (quoting Diversified, 572 F.2d at 609). Solutran has not shown that its Shareholders, Advisors, and its Marketing Coordinator, who all received a copy of the PowerPoint slides, needed to know its contents for purposes of seeking legal advice, nor has it shown they were either a “functional equivalent” of Solutran's employee, or that reviewing the privileged communication “fell within the scope of their duties,” was done “at the behest of [their] superior,” and were reviewed “for the purpose of seeking legal advice” for Solutran. See id. at 940. Based on the record before the Court, it does not appear that attorneys created the PowerPoint presentation, nor does it appear that any attorneys participated in or attended the 2012 Advisors and Shareholder Meeting. This Court knows nothing about who the Shareholders and Advisors were or their relationship with Solutran other than the general and conclusory statements made in the Hawkins affidavit referenced above. Solutran has not provided the Court with any information about the litigation decision that was made that required legal advice, nor did it provide information about the role of any of the decision-makers. Simply put, Solutran has not established the people who received a copy of the PowerPoint are within the “need to know” group necessary to maintain privilege or protection. Accordingly, the Court finds that any privilege or protection was waived.

The waiver, however, is limited to only the three slides at issue. Federal Rule of Evidence 502(a) provides for the extension of a subject-matter waiver under certain circumstances. But the Advisory Committee Notes explain as follows:

*6 Fed. R. Evid. 502(a) advisory committee's note, explanatory note (Revised 11/28/2007). “Fairness dictates that a party may not use the attorney-client privilege as both a sword and a shield, and therefore, parties asserting the advice-of-counsel defense may not selectively disclose privileged communications that it considers helpful while claiming privilege on damaging communications relating to the same subject.” Minn. Specialty Crops, Inc. v. Minn. Wild Hockey Club, L.P., 210 F.R.D. 673, 675 (D. Minn. 2002) (quotations omitted). As a result, the inquiry into the scope of an attorney-client privilege waiver “should be guided by concerns for fairness, and by the subject matter of the documents disclosed, balanced by the need to protect the frankness of the client disclosure and to preclude unfair partial disclosure.” Id. (quotations omitted). The Court concludes that under the circumstances of the disclosure in this case, fairness dictates that the waiver remain limited to the three slides at issue.

The Court has reviewed the three slides in camera.

The original production had one slide printed per page. The new production had two slides printed per page.