*1 THIS MATTER is before this Court upon Plaintiffs’ Motion for Reconsideration, ECF. No. 140. The Honorable William P. Dimitrouleas referred the Motion to the undersigned for determination. See ECF No. 17; see also 28 U.S.C. § 636(b); S.D. Fla. L.R., Mag. R. 1. Upon thorough review of the Motion, Response, and Reply thereto, as well as the arguments of counsel at a June 24, 2022, hearing, the record, and applicable law, the undersigned hereby ORDERS that the Motion be GRANTED IN PART for the reasons outlined below.

As background, Defendants are accused of using songs owned by Plaintiffs without Plaintiffs’ permission in advertising on the online platform TikTok. The undersigned will first address whether there is any need for reconsideration of the original ruling, ECF No. 116, in which the underlying Motion to Compel was dismissed on procedural grounds due to untimeliness.

“[T]here are three major grounds which justify reconsideration: (1) an intervening change in controlling law; (2) the availability of new evidence; and (3) the need to correct clear error or prevent manifest injustice.” Reed v. Royal Caribbean Cruises, Ltd., No. 19-24668-CIV-LENARD/O'SULLIVAN, 2021 WL 2592888, at *7 (S.D. Fla. May 3, 2021). Plaintiffs argue that reconsideration is proper here because the Court made a manifest error of fact, in that the Court made its timeliness ruling based on erroneous understanding of the applicable time period. In its prior ruling, the Court determined that Plaintiffs’ Motion was filed well beyond the allowed 30 days after Defendants’ supplemental responses, and that Plaintiffs “failed to provide any explanation as to why the issues presented in [the Motion] were not brought to the Court's attention at some point prior to the eve of the discovery cutoff.” ECF No. 116 at *10-11. In their current Motion for Reconsideration, Plaintiffs explain that they were only made aware of the existence of the documents on March 17, 2022, making their April 13, 2022 Motion to Compel timely. After considering Plaintiffs’ arguments, the undersigned agrees that, given the proper timeline, the Motion was timely and should be considered on the merits.

Turning to the underlying Motion to Compel, ECF No. 47, Plaintiffs asked this Court to compel Defendants to produce all documents supporting their innocent infringement/advice-of-counsel defense, including all pertinent legal analyses and attorney-client communications. Plaintiffs claim that Defendants’ innocent infringement defense, which they allege concerns the advice given by in-house counsel, renders these documents discoverable. Plaintiffs also argue that testimony by in-house counsel further opens the door to discovery, in that the documents at issue are necessary to challenge that testimony. Finally, Plaintiffs argue that Defendants have failed to preserve the privilege due to a failure to properly object to the discovery on privilege grounds or produce a privilege log.

Defendants, in turn, argue that they are not relying on privileged communications to prove their defense, and instead rely only on TikTok's own representations. ECF No. 55. Defendants assert that they do not rely on an advice-of-counsel defense. Instead, Defendants insist that their attorneys have testified only as to TikTok's assurances, not their own in-house analyses. As for any waiver that may have occurred because of a counsel deposition, Defendants argue that responses to Plaintiffs’ own inquiries regarding possible advice of counsel is insufficient to waive the privilege. Defendants also assert that the privilege has been adequately asserted in these proceedings.

*2 Plaintiffs reply that the general objection asserted by Defendants is inadequate to preserve the privilege, and that Defendants’ failure to serve a privilege log is likewise fatal to their privilege claim.[1] ECF No. 77. Plaintiffs also assert that deposition testimony of Defendants’ in-house counsel, during which in-house counsel attested he acted as a conduit for TikTok's message, as well as testimony that the marketing team relied on counsel's assurances opens the door to the requested discovery. Finally, Plaintiffs argue, Defendants are in any case implicitly relying on the advice of counsel in their innocent infringement defense and should be required to disclose the relevant documentation.

The undersigned notes that an “implied waiver of attorney-client privilege has been found in instances in which the words ‘advice of counsel’ are not used but where the circumstances underlying an affirmative defense necessarily rely on otherwise privileged material.” Falin v. Condo. Ass'n of La Mer Ests., Inc., No. 11-61903-CIV-SELTZER, 2012 WL 13005975, at *2 (S.D. Fla. Mar. 1, 2012) (citations omitted). Indeed, “[w]here a party raises a claim which in fairness requires disclosure of the protected communication, the privilege may be implicitly waived.” Id. (quoting Chevron Corp. v. Pennzoil Co., 974 F.2d 1156, 1162 (9th Cir. 1992)).

As Plaintiffs assert, deposition testimony indicates that Defendants’ in-house counsel was an important link in the communication chain that lies at the heart of Defendants’ innocent infringement defense. Specifically, Plaintiffs point to testimony by Defendants’ employee that there was reliance on the advice of in-house counsel Matt Davidson when making a decision as to how to use the music at issue in this case. The undersigned finds that, given the factual circumstances of Defendants’ innocent infringement argument, fairness requires the disclosure of at least some of Davidson's communications. Certainly, this does not mean that all of Defendants’ counsel's communications are now discoverable, but any communication regarding Defendants’ belief that its infringement was permissible should be turned over. Plaintiffs’ request for all communications, privileged or not, relating to Defendants’ legal due diligence or innocent infringement defense is therefore granted. The Court declines to award fees at this time.

Accordingly, it is hereby ORDERED and ADJUDGED that:

Plaintiffs’ Motion for Reconsideration, ECF No. 140, is GRANTED. Upon reconsideration, Plaintiffs’ Motion to Compel, ECF No. 47, is also GRANTED IN PART. All communications, privileged or not, relating to Defendants’ legal due diligence or innocent infringement defense shall be disclosed to Plaintiffs. The Motion is otherwise DENIED.

DONE and ORDERED at Fort Lauderdale, Florida, this 7th day of July 2022.