Delta Air Lines Inc. v. Marriott Int'l, Inc.
Delta Air Lines Inc. v. Marriott Int'l, Inc.
2023 WL 7333859 (N.D. Ga. 2023)
June 22, 2023
Ross, Eleanor L., United States District Judge
Summary
Delta Air Lines Inc. filed a motion to compel Kilpatrick, Townsend & Stockton to produce ESI in the form of email chains. The court found that attorney-client privilege did not apply to the emails and granted Delta's motion to compel, ordering Kilpatrick to produce the ESI. Marriott International, Inc. had filed a motion to quash the subpoena, but the court found it to be untimely and denied it.
Additional Decisions
DELTA AIR LINES, INC., Plaintiff/Counterclaim Defendant,
v.
MARRIOTT INTERNATIONAL, INC., Defendant/Counterclaim Plaintiff,
and
MARRIOTT WORLDWIDE CORPORATION, Counterclaim Plaintiff
v.
MARRIOTT INTERNATIONAL, INC., Defendant/Counterclaim Plaintiff,
and
MARRIOTT WORLDWIDE CORPORATION, Counterclaim Plaintiff
1:20-CV-01125-ELR
United States District Court, N.D. Georgia, Atlanta Division
Filed June 22, 2023
Counsel
Allison W. Buchner, Pro Hac Vice, Diana M. Torres, Pro Hac Vice, Lauren J. Schweitzer, Pro Hac Vice, Kirkland & Ellis LLP, Los Angeles, CA, Bruce H. Ratain, Pro Hac Vice, Barnes & Thornburg, LLP, Chicago, IL, Robin Ann McCue, Pro Hac Vice, Kirkland & Ellis, Chicago, IL, Claudia Ray, Dale M. Cendali, Pro Hac Vice, Johanna Schmitt, Pro Hac Vice, Jonathan D. Brit, Pro Hac Vice, Justin Edward Taylor, Pro Hac Vice, Mary Christine Mazzello, Pro Hac Vice, Shanti Sadtler Conway, Pro Hac Vice, Johannes Alexander Doerge, Pro Hac Vice, Shanti Sadtler Conway, Kirkland & Ellis LLP, New York, NY, James Charles Grant, Samuel Reed Rutherford, Caroline Rawls Strumph, Alston & Bird, LLP, Atlanta, GA, Benjamin Alexander Stone, Thomas J. Munger, Munger & Stone, Atlanta, GA, for Plaintiff/Counterclaim Defendant.Anna B. Naydonov, Pro Hac Vice, White & Case LLP, Washington, DC, Mark S. Sommers, Pro Hac Vice, Naresh Kilaru, Pro Hac Vice, Danny M. Awdeh, Finnegan, Henderson, Farabow, Garrett & Dunner LLP, Washington, DC, Nicholas J. Inns, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan, LLP, Washington, DC, Claudia T. Bogdanos, Pro Hac Vice, Quinn, Emanuel, Urquhart, Oliver & Hedges, LLP, New York, NY, Dylan I. Scher, Pro Hac Vice, Todd Anten, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan, LLP, New York, NY, Jessica Arnold Caleb, Timothy Brandon Waddell, Caplan Cobb LLP, Atlanta, GA, Robert Gordon Wright, Virginia L. Carron, Finnegan Henderson Farabow Garrett & Dunner, LLP, Atlanta, GA, Morgan E. Smith, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Palo Alto, CA, for Counterclaim Plaintiff Marriott Worldwide Corp.
Anna B. Naydonov, Pro Hac Vice, White & Case LLP, Washington, DC, Danny M. Awdeh, Douglas A. Rettew, Mark S. Sommers, Pro Hac Vice, Naresh Kilaru, Pro Hac Vice, Finnegan, Henderson, Farabow, Garrett & Dunner LLP, Washington, DC, Derek Shaffer, Pro Hac Vice, Eric C. Lyttle, Pro Hac Vice, Nicholas J. Inns, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan LLP, Washington, DC, Claudia T. Bogdanos, Pro Hac Vice, Quinn, Emanuel, Urquhart, Oliver & Hedges, LLP, New York, NY, Dylan I. Scher, Pro Hac Vice, Todd Anten, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan, LLP, New York, NY, Matthew Samet, Morgan E. Smith, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Palo Alto, CA, Jessica Arnold Caleb, Timothy Brandon Waddell, Caplan Cobb LLP, Atlanta, GA, Robert Gordon Wright, Virginia L. Carron, Finnegan Henderson Farabow Garrett & Dunner, LLP, Atlanta, GA, for Defendant/Counterclaim Plaintiff Marriott International, Inc.
Ross, Eleanor L., United States District Judge
ORDER
*1 There are several matters before the Court. The Court sets out its rulings and conclusions below.
I. Background
This case arises from Plaintiff Delta Air Lines Inc.'s (“Delta”) claim of trademark infringement in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114, based on Defendant Marriott International, Inc.'s (“Marriott”) use of certain marks for its Delta Hotels. See Am. Compl. [Doc. 30]. Specifically, Plaintiff alleges that the marks Marriott uses in connection with its Delta Hotels are likely to be confused with Plaintiff's Registered Delta Marks. See id. Plaintiff also brings related federal and state law claims. See id. As context, the Court provides the relevant factual background and procedural history from the June 25, 2021 Order entered by Magistrate Judge J. Clay Fuller (“June 25 Order” or “Judge Fuller's Order”):
On March 11, 2020, Delta filed a Complaint against Marriott International, Inc. in which it asserted trademark infringement and other claims arising from Marriott's use of Delta Hotels Marks as discussed in more detail below. (Doc. 1). Delta filed a First Amended Complaint on June 12, 2020 (Doc. 30), in which it alleges the following, among other allegations: Since its founding in 1925, Delta has developed and invested substantially in promoting a large portfolio of DELTA trademarks, including DELTA, DELTA VACATIONS, DELTA SKY CLUB, DELTA ONE, DELTA 360, and DELTA SHUTTLE, among others, which consumers have come to associate exclusively with Delta and its services. (Doc. 30 ¶ 14). Since 2008, Delta has used sans-serif font and blue and white colors in connection with its Delta Marks as illustrated in the Amended Complaint. (Id.) Delta owns hundreds of applications and/or registrations in the U.S. and globally for the Delta Marks. (Id. ¶ 16). In the United States, in addition to extensive common law rights in the Delta Marks, Delta owns dozens of federal trademark registrations for DELTA marks, many of which are incontestable, as well as pending applications, as reflected in Exhibit A to the Amended Complaint (Doc. 30-1). (Id.).
In 2015, Marriott acquired Delta Hotel Limited Partnership (“DHLP”), a hotelier that operated solely in Canada, with no presence in the United States, although DHLP or its predecessor previously operated a Delta Hotel in Hong Kong, and may have previously operated a hotel called Delta Court of Flags in Orlando in the 1990s. (Id. ¶ 20). Prior to Marriott's acquisition, DHLP used logos which included a highly styled, curling “D” design and serif font (the “DHLP Marks”), as illustrated in the Amended Complaint. (Id. ¶ 21). After Marriott's acquisition, Marriott rapidly expanded the Delta Hotels chain to the United States and internationally and rebranded to the Delta Hotels Marks, which closely mimic the Delta Marks. (Id. ¶ 22). Marriott dispensed with the stylized, curling “D” design and serif font of the DHLP Marks depicted in Paragraph 21 and adopted a logo which uses a straight “D” design and sans-serif font as illustrated in the Amended Complaint and changed the color scheme of the logo from a bright blue to a dark blue color and dark blue and white color scheme and modern design—“design elements associated with Delta”—that “more closely mimics and causes confusion with the Delta Marks.” (Id. ¶¶ 23-24, 31). Delta provides photographic examples of Delta Hotels in the United States, including “airport” hotels with airport shuttles, that contain the re-styled Delta Hotels marks, which Delta alleges create the likelihood of consumer confusion and mistaken belief that “there is a connection, sponsorship, or association with Delta.” (Id. ¶¶ 25-30). Delta also includes allegations concerning Marriott's Delta Hotels website, social media, internet searches, and examples of consumer confusion among travelers and businesspersons. (Id. ¶¶ 31-36).
*2 Delta alleges that “[n]ot only has Marriott caused confusion with its deceptively branded Delta Hotels in the United States, but Marriott after has also embarked on a campaign to interfere with Delta's trademark rights in a misguided attempt to create leverage and force Delta to agree to Marriott's expansion plans.” (Id. ¶ 38). Shortly after Marriott's acquisition of DHLP, Marriott began opposing Delta's pending U.S. trademark applications by filing oppositions against registration of Delta's DELTA ONE, DELTA ONE AT LAX, and DELTA SKY CLUB marks with the U.S. Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board (id. ¶ 39) and by opposing Delta's application to register its DELTA SKY CLUB mark in the European Union (id. ¶ 41). Marriott has also been demanding that Delta consent to Marriott's various applications to register the Delta Hotels Marks in various jurisdictions around the world, in reliance on a March 25, 2015 “Trade Mark Coexistence Agreement” entered into between DHLP and Delta, what Delta refers to as the “Hong Kong Agreement,” which expressly was limited to issues relating to trademark application in Hong Kong and the People's Republic of China. (Id. ¶ 43; see also Doc. 46-1). In particular, Marriott relies on Clause 9 of the Agreement which, according to Delta, is merely a non-binding “agreement to agree,” simply requiring the parties to discuss in “good faith” trademark issues in other jurisdictions. (Id.). Marriott has filed over 70 applications around the world in over 40 jurisdictions to register “DELTA” as a trademark on its own, without including the words “HOTELS” or “MARRIOTT” to distinguish Marriott's services from those of Delta. (Id. ¶ 44).
Delta asserts the following claims against Marriott: infringement of registered trademarks in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114 based on Marriott's use of Delta Hotels Marks which is likely to cause confusion with Delta's Registered Delta Marks and “likely to cause irreparable injury to the name and reputation of Delta, as well as to the goodwill carefully cultivated by Delta” (Count I); false designation of origin in violation of Section 43(A) of the Lanham Act, 15 U.S.C. § 1125(A) based on Marriott's “unauthorized use of the Delta Hotels Marks in connection with the promotion or sale of its services [which] falsely suggests that these services are connected with, sponsored by, affiliated with, or related to Delta” (Count II); deceptive trade practices in violation of O.C.G.A. § 10-1-372 et seq. (Count III); unfair competition in violation of O.C.G.A. § 23-2-55 (Count IV); federal dilution in violation of Section 43(A) of the Lanham Act, 15 U.S.C. § 1125(c), based on Marriott's use of the Delta Hotels Marks, “all occurring after the Delta Marks became famous,” which “are likely to cause dilution of the famous Delta Marks” (Count V); Georgia state dilution in violation of O.C.G.A. § 10-1-451 (Count VI); and a declaration that Clause 9 of the Hong Kong Agreement is a non-binding “agreement to agree” (Count VII).
On June 26, 2020, Marriott International, Inc. filed an Answer and Counterclaim. (Doc. 33). Marriott asserts the following affirmative defenses: failure to state a claim on which relief can be granted; the doctrine of laches based on Delta's undue delay in asserting its rights against Marriott; the doctrines of equitable estoppel, acquiescence, and waiver based on (1) undue delay in asserting rights against Marriott and/or Delta Hotels, (2) entering into Worldwide Coexistence Agreement with Marriott's predecessor-in-interest, (3) withdrawing its oppositions against Delta Hotels' trademark applications with prejudice, (4) remaining silent for years after withdrawing those oppositions and entering the coexistence agreement, and (5) affirmatively consenting to Marriott's registration of its DELTA marks around the world; Marriott's uses and registrations of its DELTA marks are permitted by the Worldwide Coexistence Agreement; and Marriott has acted in good faith and its conduct has never been willful. (Doc. 33 ¶¶ 92-98). In its Counterclaim, Marriott alleges that Delta breached what Marriott refers to as the parties' “Worldwide Coexistence Agreement.” (Doc. 33 at 27-35). Delta filed an answer to the Counterclaim (Doc. 40), and Marriott then amended the Counterclaim to add Marriott Worldwide Corporation as a Counterclaim Plaintiff (Doc. 46).
[See Doc. 248 at 2–6].
The Parties have since been engaged in discovery, and the motions pending before the Court relate to various discovery disputes. As pertinent to the issues currently before the Court, Delta asserts that Marriott has adopted the position that “there is no likelihood of confusion between Marriott's Delta Hotels chain and Delta's air travel services because hotels and airlines are distinct, unrelated services.” [See Doc. 177 at 1] (emphasis omitted). However, Delta contends that this position is inconsistent with the position Marriott took when non-party Breeze Aviation Group (“Breeze”) contemplated the name “Moxy” for a new airline, a name already in use by Marriott for a hotel chain. [See id. at 1, 5–8]. Delta asserts that Marriott's concern about Breeze's potential use of “Moxy” led to Breeze's decision not to use that name for its new airline. [See id.] Thus, Delta maintains that Marriott's past dealings with Breeze contradict Marriott's current position that hotels and airlines are distinct services. [See id.]
*3 On February 4, 2021, Delta served upon Marriott a notice of its intention to serve a subpoena on non-party and law firm Kilpatrick, Townsend & Stockton LLP (“Kilpatrick”) for documents related to Marriott and Moxy. [See id. at 9]. The following day, Delta served the subpoena (hereinafter, the “Subpoena”) on Kilpatrick. [See id.] In its response to the Subpoena, Kilpatrick identified responsive documents and objected to producing them pursuant to Marriott's attorney-client privilege. [See Docs. 177 at 9–10; 177-4] (identifying privileged documents in a privilege log). Kilpatrick served a supplemental response on March 15, 2021, by which it identified additional responsive documents but again objected to producing them due to attorney-client privilege. [See Docs. 177 at 11; 177-5].
Thereafter, on March 25, 2021, Delta filed its pending “Motion to Compel the Production of Documents by Non-Party Kilpatrick, Townsend & Stockton.” [See Doc. 177]. In response to Delta's motion to compel, Kilpatrick contends that it complied with its Rule 45 obligations without arguing the merits of the asserted attorney-client privilege.[1] [See Doc. 197 at 2–3].
The same day that Kilpatrick submitted its response brief to Delta's motion to compel, Marriott filed its instant “Motion to Quash or Modify Plaintiff's Subpoena to Kilpatrick, Townsend & Stockton or For a Protective Order, and Opposition to Plaintiff's Motion to Compel Production of Documents” (hereinafter, “motion to quahs”). [Doc. 199]. By its motion to quash, Marriott argues that the documents identified by non-party Kilpatrick should not be produced because they are protected by Marriott's attorney-client privilege, which has not been waived. [See generally Doc. 199-1].
The Parties have fully briefed both Delta's motion to compel and Marriott's motion to quash. [See Docs. 177, 197, 199, 206, 209, 222]. Additionally, in an Order dated July 22, 2021, the Court directed non-party Kilpatrick to submit the documents identified in its privilege logs for an in camera review to aid the Court's resolution of the pending motions. [Doc. 264].
Separately, several discovery disputes arose between the Parties, which the undersigned referred to the next available Magistrate Judge for resolution. [Doc. 174]. After extensive briefing by the Parties, Magistrate Judge Fuller ruled on the discovery disputes in his June 25 Order, denying Marriott's Motion to Compel [Doc. 214] and granting in part and denying in part Delta's Motion to Compel [Doc. 217]. [See Doc. 248]. Subsequently, Marriott filed objections to several of Judge Fuller's rulings [Doc. 251], which Delta opposes [Doc. 266].[2] Marriott also sought an emergency stay, or in the alternative an extension of time, to comply with Judge Fuller's Order to produce certain documents. [See Doc. 254]. In an Order dated July 20, 2021, the Court denied Marriott's request for a stay, but granted its request for an extension of time to comply with Judge Fuller's Order. [Doc. 263].
The Court begins by addressing the Parties' motions related to the production of documents by non-party Kilpatrick before turning to Marriott's objections to Judge Fuller's Order.
II. Non-Party Kilpatrick's Production of Documents
At present, Delta seeks production of two (2) e-mail chains that Kilpatrick identified as responsive to the Subpoena, which contain communications between David Mayberry and John Neeleman (together, the “E-mail Chains”). [See Docs. 178 at 17; 210 at 3 n.2]. David Mayberry and John Neeleman are both attorneys at Kilpatrick. [See Doc. 178 at 2]. Attorney Mayberry is outside counsel for Marriott. [See id.] Attorney John Neeleman is the brother of David Neeleman (the founder and Chief Executive Officer of Breeze) and, according to Breeze's corporate representative, serves as Breeze's attorney. See Deposition of Kyle Smith at 31:12–32:8 [Doc. 178-1].
*4 The first e-mail Delta seeks from Kilpatrick contains a message from John Neeleman to David Mayberry dated June 27, 2018, and is marked as Document 2 on Kilpatrick's privilege log. [See Doc. 177-4 at 4]. The second e-mail chain (marked as Document 4 on Kilpatrick's privilege log) originated with a message from in-house counsel for Marriott, Elizabeth Regan, to Mayberry, which Mayberry subsequently forwarded to John Neeleman, and also includes four (4) messages between Mayberry and John Neeleman. [See id.]
As an initial matter, Delta argues that Marriott's instant motion to quash the Subpoena is untimely. [See Doc. 207 at 19–22]. The Court begins by addressing the timeliness of Marriott's motion.
A. Timeliness of Marriott's Motion
Delta argues that Marriott's motion to quash is untimely because it was filed on April 23, 2021, over two (2) months after the date of compliance set forth by the Subpoena at issue (which was February 19, 2021). [See id. at 20–21].
Through discovery, parties may obtain materials that are within the scope of discovery, meaning they are nonprivileged, relevant to any party's claim or defense, and “proportional to the needs of the case.” See FED. R. CIV. P. 26(b)(1). A party has standing to move to quash a subpoena directed at a non-party if the party alleges a “personal right or privilege” with respect to the subpoenas.[3] See Auto-Owners Ins. Co. v. Se. Floating Docks, Inc., 231 F.R.D. 426, 429 (M.D. Fla. 2005) (quoting Brown v. Braddick, 595 F.2d 961, 967 (5th Cir. 1979)).[4]
When a party serves a subpoena commanding the production of documents, “before it is served on the person to whom it is directed, a notice and a copy of the subpoena must be served on each party.” See FED. R. CIV. P. 45(a)(4). Rule 45 does not set forth a specific time period for filing a motion to quash a subpoena. See id. at 45(d)(3). Rather, Rule 45 states that upon a “timely motion,” a court must quash a subpoena if it “requires disclosure of privileged or other protected matter and no exception or waiver applies.” See id. at 45(d)(3)(A)(iii). The “term timely is not defined in the Rule or the Committee notes thereto.” See Schaaf v. SmithKline Beecham Corp., No. 3:06CV120 J25TEM, 2006 WL 2246146, at *1 (M.D. Fla. Aug. 4, 2006). However, in this Circuit, “a motion to quash is generally considered timely if it is brought before the time indicated for compliance.”[5] See Flynn v. Square One Distribution, Inc., No. 6:16-MC-25-ORL-37TBS, 2016 WL 2997673, at *1 (M.D. Fla. May 25, 2016).
*5 For example, in Moore v. City of St. Augustine, Florida, the district court found a motion to quash filed “over forty days after the date specified for compliance” to be untimely. See No. 3:12-CV-797-J-20MCR, 2013 WL 1156384, at *1 (M.D. Fla. Mar. 14, 2013); see also Friedman v. Dollar Thrifty Auto. Grp., Inc., No. 2:14-MC-25-FTM-38CM, 2014 WL 5810920, at *2 (M.D. Fla. Nov. 7, 2014) (finding a motion to quash filed minutes after the time for compliance set forth in the subpoena untimely). Similarly, in Centennial Bank v. Servisfirst Bank Inc., where the defendant filed its motion to quash over three (3) months after the plaintiff provided it with notice and copies of the non-party subpoenas and over two (2) months after the time specified for compliance with the subpoena, the district court held the defendant's motion to quash to be untimely. See No. 8:16-CV-88-T-36JSS, 2016 WL 4163560, at *3–4 (M.D. Fla. Aug. 5, 2016).
Here, the date of compliance provided in the Subpoena from Delta to Kilpatrick was February 19, 2021. [See Doc. 177-3]. Pursuant to Rule 45(a)(2), Delta provided Marriott with notice of the Subpoena on February 4, 2021, approximately two (2) weeks before the date of compliance. [See Doc. 177 at 9]. However, Marriott filed its instant motion on April 23, 2021, more than two (2) months after the date of compliance. [Doc. 199].
Nevertheless, Marriott contends that its motion is timely for two (2) reasons: (1) because it “instructed its attorneys at Kilpatrick to object to the Subpoena and assert privilege on Marriott's behalf” before the date of compliance, and (2) the “motion was filed before the production of any documents from Kilpatrick.” [See Doc. 200 at 10]. The Court does not find either of Marriott's arguments to be persuasive.
First, Marriott has pointed to no authority to support its claim that its motion was timely because of the actions of non-party Kilpatrick. [See id.] Moreover, district courts in this Circuit have rejected similar arguments, finding that:
the operation of the [Federal] Rules [of Civil Procedure] illustrates that a non-party subject to a subpoena and a party whose interests are implicated by a subpoena must act independently to protect their respective interests and that the acts of one do not protect the other's interest. For example, “[a] party cannot object to a subpoena duces tecum served on a nonparty, but rather, must seek a protective order or make a motion to quash.” In contrast, a non-party to whom a subpoena is directed must object in order to stay the non-party's compliance with the subpoena and “[t]he party to whom the subpoenaed records pertain cannot simply object,” but must move for a protective order or to quash the subpoena.
See Centennial Bank, 2016 WL 4163560, at *4 (internal citations omitted and emphasis in original); see also Lake Eola Builders, LLC v. Metro. at Lake, Eola, LLC, No. 1:05-CV-1931-MHS, 2005 WL 8155666, at *2 (N.D. Ga. Sept. 7, 2005) (stating that “a motion to quash under Rule 45(c)(3)(A) is the proper vehicle for defendant to challenge the subpoena served on a nonparty and assert its privilege”). Therefore, Kilpatrick's timely objection to the Subpoena is independent from Marriott's instant motion to quash and has no bearing on the timeliness of Marriott's motion.
Second, Marriott does not proffer any binding authority to support its proposition that its motion to quash is timely merely because it preceded the actual production of any documents by Kilpatrick. [See Doc. 200 at 9–10]. The only cases to which Marriott cites are two (2) unpublished decisions from other Circuits, and the weight of authority in this Circuit holds that a motion to quash is untimely if filed after the date of compliance stated on the face of the subpoena. See Moore, 2013 WL 1156384, at *1; Friedman, 2014 WL 5810920, at *2; Centennial Bank, 2016 WL 4163560, at *3–4. Therefore, in line with Eleventh Circuit authority, the Court finds that Marriott's motion to quash is untimely.
*6 Accordingly, the Court denies Marriott's “Motion to Quash or Modify Plaintiff' Subpoena to Kilpatrick, Townsend & Stockton or For a Protective Order, and Opposition to Plaintiff's Motion to Compel Production of Documents.” [Doc. 199].
B. Delta's Motion to Compel
Having denied Marriott's motion to quash as untimely, the Court turns to Delta's motion to compel. [Doc. 178]. By its instant motion, Delta seeks to compel non-party Kilpatrick to produce the E-mail Chains. [See id.] Delta argues that attorney-client privilege does not protect these communications because John Neeleman is counsel for Breeze (an adverse third party) and he did not represent Marriott when sending and receiving the messages in dispute. [See Doc. 178 at 12–15].
“The attorney-client privilege exists to protect confidential communications between client and lawyer made for the purpose of securing legal advice.” In re Slaughter, 694 F.2d 1258, 1260 (11th Cir. 1982). But the privilege does not cover all communications between an attorney and her client. See id. Rather, it has been “construed narrowly so as not to exceed the means necessary to support the policy which it promotes.” See In re Grand Jury Matter, No. 91-01386, 969 F.2d 995, 997 (11th Cir. 1992) (citing Fischer v. United States, 425 U.S. 391, 403 (1976)). Because the attorney-client privilege is inconsistent with the goal of discovering the truth at trial, it “ought to be strictly confined within the narrowest possible limits consistent with the logic of its principle.” United States v. Pipkins, 528 F.2d 559, 563 (5th Cir. 1976).
“The burden of demonstrating that a privilege applies to a particular communication, i.e., that the confidentiality of the communication is more important than the public interest in transparency, is on the proponent of the privilege.” MapleWood Partners, L.P. v. Indian Harbor Ins. Co., 295 F.R.D. 550, 582–83 (S.D. Fla. 2013). To satisfy this burden, the proponent of attorney-client privilege must show four (4) things: that the material it seeks to protect is (1) a communication (2) made between privileged persons (3) in confidence (4) for the purpose of obtaining or providing legal assistance for the client. See In re Slaughter, 694 F.2d at 1260.
As is relevant here, “[p]rivileged persons include the client, the attorney(s), and any of their agents that help facilitate attorney-client communications or the legal representation.” See Diamond Resorts U.S. Collection Dev., LLC v. US Consumer Att'ys, P.A., 519 F. Supp. 3d 1184, 1197 (S.D. Fla. 2021) (citing In re Teleglobe Commc'ns Corp., 493 F.3d 345, 359 (3d Cir. 2007)). In regards to the confidentiality requirement, attorney-client privilege does not attach to a communication made in the presence of a third party, and the privilege is waived when an already-privileged communication is subsequently disclosed to a third party. See Diamond Resorts U.S. Collection Dev., LLC., 519 F. Supp. 3d at 1198 n.6 (“In one scenario, the communication is never privileged because it was not confidential when made. In the other, a privileged communication loses that status because it is disclosed to a third party.”); see also MapleWood Partners, 295 F.R.D. at 584 (“[W]aiver can be found by voluntary disclosure, as disclosure is inconsistent with the confidentiality requirement of purportedly privileged communications.”).
*7 In the matter at bar, Kilpatrick has objected to the production of the E-mail Chains by asserting attorney-client privilege. [Doc. 177-4]. However, the Court finds that Kilpatrick has not met its burden to establish that the privilege applies to the E-mail Chains.[6]
Specifically, the Court finds that John Neeleman is not a “privileged person,” despite being an attorney at the same firm as Mayberry, and that the communications between Mayberry and John Neeleman were not made in confidence. See In re Slaughter, 694 F.2d at 1260. Rather, following an in camera review, the Court concludes that Mayberry's communications with John Neeleman were made for the purpose of relaying information between two (2) separate clients, Marriott and Breeze, through their respective attorneys. [redacted] Thus, because the E-mail Chains constitute communications between counsel for Marriott and counsel for Breeze (a third party), the Court finds they were not confidential communications between an attorney and client. See id. Accordingly, the Court finds that attorney-client privilege does not prevent the disclosure of the e-mails between Mayberry and John Neeleman.
As for the e-mail from Elizabeth Regan to Mayberry, which was then forwarded by Mayberry to John Neeleman, the Court finds that any attorney-client privilege has been waived due to the e-mail's disclosure to a third party. See Diamond Resorts U.S. Collection Dev., LLC, 519 F. Supp. 3d at 1198–99 (explaining that a privileged communication loses it status when it is disclosed to a third party). As established above, John Neeleman was not acting as an attorney for Marriott, but for Breeze; thus, the e-mail lost its confidential status when disclosed to John Neeleman. See id. The claimant asserting the privilege has the duty to prove that the privilege was never subsequently waived. See United States v. Patel, 509 F. Supp. 3d 1334, 1339 (S.D. Fla. 2020); see also United States v. Noriega, 917 F.2d 1543, 1550 (11th Cir. 1990) (citing United States v. Kelly, 569 F.2d 928, 938 (5th Cir. 1978)). However, Kilpatrick has not met its burden to establish that the attorney-client privilege was preserved and not waived after Mayberry forwarded Regan's e-mail to a third party. [See Doc. 197].
Accordingly, the Court grants Delta's motion to compel and directs Kilpatrick to produce Documents 2 and 4 as identified in its privilege log. [Doc. 177-4].
III. Marriott's Objections to Judge Fuller's Order
Next, the Court turns to Marriott's objections to six (6) rulings in Judge Fuller's Order regarding the Parties' respective motions to compel. [Docs. 214, 217]. Specifically, Marriott objects to Judge Fuller's denial of Marriott's requests to compel Delta to produce all documents related to: (1) consumer complaints against Delta from the last decade; (2) Delta's awareness of the Delta Hotels brand; and (3) confusion between the Delta Marks and third-party marks that also use the word Delta. [See Docs. 252, 248].
Additionally, Marriott objects to Judge Fuller's rulings compelling Marriott to produce documents related to: (1) confusion between the Delta Marks and the Delta Hotels Marks from Marriott's Delta Hotels franchisees; (2) Marriott's decision to forego a public announcement regarding the change of the Delta Hotels logo; and (3) communications between Marriott and four advertising agencies that worked on the Delta Hotels campaign. [See id.] With these objections in mind, the Court sets forth the relevant legal standard for the review of a Magistrate Judge's non-dispositive order.
*8 Pursuant to Federal Rule of Civil Procedure 72(a), a party may serve and file objections to a Magistrate Judge's non-dispositive order, and the district judge “must consider timely objections and modify or set aside any part of the order that is clearly erroneous or is contrary to law.” See FED. R. CIV. P. 72(a). “Clear error is a highly deferential standard of review. As the Supreme Court has explained, a finding is clearly erroneous when although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed.” Saunders v. Emory Healthcare, Inc., No. 1:07-cv-00282-WSD-GGV, 2008 WL 513340, at *3 (N.D. Ga. Feb. 22, 2008) (quoting Holton v. City of Thomasville Sc. Dist., 425 F.3d 1325, 1350 (11th Cir. 2005)). “An order is contrary to law when it fails to apply or misapplies relevant statutes, case law[,] or rules of procedure.” Pigott v. Sanibel Dev., LLC, No. 07-0083-WS-C, 2008 WL 2937804, at *5 (S.D. Ala. July 23, 2008) (internal quotations omitted).
“The standard for overturning a Magistrate Judge's order is ‘a very difficult one to meet.’ ” Saunders, 2008 WL 513340, at *3 (quoting Thornton v. Mercantile Stores Co., 180 F.R.D. 437, 439 (M.D. Ala. 1998)). “Moreover, a magistrate judge is afforded broad discretion in issuing non-dispositive pretrial orders related to discovery[.]” See Checkfree Corp. v. Metavante Corp., No. 3:12-CV-15-J-34JBT, 2013 WL 12156048, at *1 (M.D. Fla. Jan. 22, 2013) (citing Tracy P. v. Sarasota Cnty., No. 8:05–CV–927–T–26EAJ, 2007 WL 1364381, at *2 (M.D. Fla. May 9, 2007)).
After a careful and complete review of Judge Fuller's Order, Marriott's objections and Delta's response,[7] the Court is not “left with the definite and firm conviction that a mistake has been committed” nor does the Court find Judge Fuller misapplied the relevant law. See Saunders, 2008 WL 513340, at *3; Pigott, 2008 WL 2937804, at *5. The Court notes that Judge Fuller began his analysis by setting forth the correct standard for motions to compel discovery pursuant to Federal Rule of Civil Procedure 37. [Doc. 248 at 10–11]. Moreover, the Court finds that Judge Fuller extensively explained each of the Parties' arguments, applied the standard for a motion to compel discovery, and reached the correct result for each ruling to which Marriott presents an objection. [See generally Doc. 248]. Additionally, as stated above, “magistrate judges are afforded broad discretion in the resolution of non-dispositive discovery disputes” and the Court does not find Judge Fuller's Order to be clearly erroneous or contrary to law. See Tracy P. v. Sarasota Cnty., 2007 WL 1364381, at *2. Accordingly, the Court overrules Marriott's objections. [Doc. 251].
IV. Conclusion
For the foregoing reasons, the Court DENIES Marriott's “Motion to Quash or Modify Plaintiff' Subpoena to Kilpatrick, Townsend & Stockton or For a Protective Order, and Opposition to Plaintiff's Motion to Compel Production of Documents” as untimely. [Doc. 199]. The Court GRANTS Delta's “Motion to Compel the Production of Documents by Non-party Kilpatrick, Townsend & Stockton.” [Doc. 177]. Accordingly, the Court ORDERS Kilpatrick to produce Documents 2 and 4 as identified in its privilege log [Doc. 177-4] to Delta within seven (7) days of the entry of this order.
*9 Additionally, the Court GRANTS the Parties' “Motions to File Materials Under Seal” [Docs. 268, 276]; OVERRULES Marriott's objections to Judge Fuller's Order [Doc. 251]; and AFFIRMS Judge Fuller's June 25, 2021 Order [Doc. 248].
SO ORDERED, this 22nd day of December, 2021.
Footnotes
Specifically, Kilpatrick declines to present an argument on its attorney-client privilege objection because the firm represents both Delta and Marriot in other unrelated matters and owes both an “ongoing duty of loyalty.” [Doc. 197 at 2–3].
For good cause shown, the Court grants the Parties' pending “Motions for Leave to File Materials under Deal.” [Docs. 268, 276].
Because Marriott asserts that its attorney-client privilege protects the E-mail Chains from production, the Court finds that Marriott has shown that it has standing to move to quash the Subpoena. [See Doc. 199 at 8]; see also State of Fla. ex rel. Butterworth v. Jones Chemicals, Inc. (Florida), No. 90-875-CIV-J-10, 1993 WL 388645, at *2 (M.D. Fla. Mar. 4, 1993) (finding that the movants had standing “to assert their claims of attorney-client and work product privilege with respect to the testimony and documents sought in the subpoena directed to [a non-party]”). However, Marriott has provided no authority for the proposition that it has standing to file a response in opposition to a motion to compel directed at non-party Kilpatrick. [See Docs. 200 at 8; 223 at 10]. As further explained below, the proper mechanism for Marriott to object to a non-party subpoena is through a motion to quash. See infra at 12–13.
Decisions by the former Fifth Circuit issued before October 1, 1981, are binding as precedent in the Eleventh Circuit. See Bonner v. City of Prichard, Ala., 661 F.2d 1206, 1207 (11th Cir. 1981) (en banc).
Similarly, “a motion for protective order is generally untimely if it was made after the date the discovery material was to be produced.” See Morock v. Chautauqua Airlines, Inc., No. 807CV210T17MAP, 2007 WL 4322764, at *1 (M.D. Fla. Dec. 11, 2007) (quoting Laughon ex rel. Laughon v. Jacksonville Sheriff's Office, 2007 WL 1247305 at *2 (M.D. Fla. 2007)).
As noted above, Kilpatrick did not present an argument on the merits of the asserted attorney-client privilege in its response to Delta's motion to compel. [See Doc. 197 at 2].
Marriott filed a reply to its objections on August 6, 2021. [Doc. 274]. The Court notes that neither “Federal Rule of Civil Procedure 72 nor Local Rule 72 provide for reply briefs to responses to objections.” See Arconic Inc. v. Universal Alloy Corp., No. 1:15-CV-01466-ELR, 2019 WL 12528945, at *3 (N.D. Ga. Mar. 4, 2019). Therefore, the Court declines to consider Marriott's reply brief. [Doc. 274].