*1 BEFORE THE COURT are Plaintiff's Motion to Compel (ECF No. 137) and Motion to Seal (ECF No. 139). These matters were submitted for consideration without oral argument. The Court has reviewed the record and files herein and is fully informed. For the reasons discussed below, Plaintiff's Motion to Compel (ECF No. 137) is GRANTED in part and Motion to Seal (ECF No. 139) is DENIED.

The factual background of this matter is detailed in the Courts Order Denying Preliminary Injunction, ECF No. 141. Plaintiff seeks the Court compel Defendant Mackay Restaurant Group, Inc. to produce unredacted versions of the following documents containing various correspondence: Mackay_00015754, Mackay_00015761, Mackay_00020304, Mackay_00026694, Mackay_00053430, Mackay_00112265, Mackay_00131042, and Mackay_00131049. ECF No. 137 at 4. Defendant Mackay has redacted these documents pursuant to attorney-client privilege, the work product doctrine, and the common interest privilege. ECF No. 147 at 3.

Plaintiff also seeks to unseal certain documents that Defendant Mackay has designated as “Confidential,” or “Highly Confidential,” per the language of the Stipulated Amended Protective Order:

ECF No. 48 at 2, ¶ 2.

These documents include: Mackay_00015754, Mackay_00015761, Mackay_00112265, and Mackay_00131049. ECF No. 139 at 2–3.

I. Federal Rule of Civil Procedure 37 Standard

Pursuant to Federal Rule of Civil Procedure 26(b)(1), “[p]arties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case.” “The discovery process in theory should be cooperative and largely unsupervised by the district court.” Salie v. Corona Reg. Med. Ctr., 884 F.3d 1218, 1219 (9th Cir. 2018). Nevertheless, absent an amicable resolution of a discovery dispute, a party may move the Court for an order compelling discovery. Fed. R. Civ. P. 37(a)(1). The party opposing discovery bears the burden of resisting disclosure. Rogers v. Glurbino, 288 F.R.D. 469, 479 (S.D. Cal. 2012). The motion must include certification that the moving party “in good faith conferred or attempted to confer” with opposing counsel in an effort to obtain discovery without court action. Id. at 477. Plaintiff has represented that a meet and confer between parties occurred prior to filing these motions. ECF Nos. 137 at 4, 139 at 4.

II. Asserted Privileges

*2 Defendant Mackay has asserted that the materials Plaintiff seeks are variously protected by attorney-client privilege, the work product doctrine, or the common interest privilege. “The attorney-client privilege protects confidential communications between attorneys and clients, which are made for the purpose of giving legal advice.” United States v. Richey, 632 F.3d 559, 566 (9th Cir. 2011). The privilege exists where “(1) legal advice of any kind is sought (2) from a professional legal adviser in his capacity as such, (3) the communications relating to that purpose, (4) made in confidence (5) by the client, (6) are at his instance permanently protected (7) from disclosure by himself or by the legal adviser, (8) unless the protection be waived.” Id. (internal quotation and citation omitted). The attorney-client privilege extends to confidential communications between employees of a corporation and the corporation's attorney, United States v. Graf, 610 F.3d 1148, 1158 (9th Cir. 2010), as well as to confidential communications among corporate employees relating to legal advice obtained from the corporation's attorney. See Coastal States Gas Corp. v. Dep't of Energy, 617 F.2d 854, 863 (D.C. Cir. 1980).

Rather than a separate privilege, the “common interest” or “joint defense” rule is an exception to ordinary waiver rules designed to allow attorneys for different clients pursuing a common legal strategy to communicate with each other. In re Pac. Pictures Corp., 679 F.3d 1121, 1129 (9th Cir.2012) (internal citations omitted). However, a shared desire to see the same outcome in a legal matter is insufficient to bring a communication between two parties within this exception. Id. Instead, the parties must make the communication in pursuit of a joint strategy in accordance with some form of agreement—whether written or unwritten. Id. Further, the exchange of information must have been “intended to facilitate representation” of either party. Id. at 1129–30 (internal citation omitted).

The joint defense or common interest rule presupposes the existence of an otherwise valid privilege, and the rule applies not only to communications subject to the attorney-client privilege, but also to communications protected by the work-product doctrine. In re Grand Jury Subpoenas, 89-3 & 89-4, John Doe 89-129, 902 F.2d 244, 249 (4th Cir. 1990) (recognizing that the rule applies to both civil and criminal cases).

Relatedly, the work product doctrine protects “documents and tangible things that are prepared in anticipation of litigation or for trial by or for another party or its representative” from discovery. Fed. R. Civ. P. 26(b)(3)(A). A party may not discover such documents unless the party shows a “substantial need” for the materials and the inability to obtain the equivalent by other means without undue hardship. Fed. R. Civ. P. 26(b)(3)(A)(ii). Even where a court orders disclosure of work product, “it must protect against disclosure of the mental impressions, conclusions, opinions, or legal theories of a party's attorney or other representative concerning the litigation.” Fed. R. Civ. P. 26(b)(3)(B). The party invoking the work product doctrine bears the burden establishing that it applies. Richey, 632 F.3d at 566.

The analysis of whether the work product doctrine applies requires a case-by-case inquiry where “a document should be deemed prepared in anticipation of litigation ... if in light of the nature of the document and the factual situation of the particular case, the document can be fairly said to have been prepared or obtained because of the prospect of litigation.” In re Grand Jury Subpoena (Mark Torf/Torf Env't Mgmt.), 357 F.3d 900, 907 (9th Cir. 2004) (internal citation and quotation marks omitted). Where a document would be created in substantially similar form in the normal course of business, the document will not be shielded from discovery. Id. at 908. However, if the document serves more than one purpose, the Ninth Circuit applies the following test:

*3 Richey, 632 F.3d at 567–68 (internal citation and quotation marks omitted).

With these respective rules and doctrines as a backdrop, the Court considers each document.

A. Mackay_00015754

This document is purportedly a November 2021 email exchange between a Mackay employee and three employees from Defendant Yellowhawk Resort WW, LLC, denoted Exhibit A. ECF No. 137 at 8. The conversation took place mostly between Defendant Mackay's Marketing Director and an employee from Defendant Yellowhawk. ECF No. 140-1. Defendant Mackay has maintained that three redacted portions of this exchange must remain private because the employees are discussing impending litigation and the advice of counsel, even in spite of the fact that Yellowhawk had not been named in the lawsuit at the time of the exchange. ECF No. 147 at 11. Plaintiff maintains that the document should be fully unredacted because the chain is exchanged between non-lawyers who work for different companies, the discussion is related to business concerns rather than legal advice, the substance of the exchange had been largely disclosed, and because Yellowhawk had not yet been named, it was not part of a joint representation and confidentiality agreement. ECF No. 137 at 8.

Mackay_00015754, filed under seal as Exhibit A, appears to be the redacted version of Mackay_00015761, which is filed under seal mostly unredacted as Exhibit B. ECF No. 140-2. However, Both Exhibit A and Exhibit B contain an email sent from the same Defendant Mackay employee to several Yellowhawk employees on November 11, 2021. The redacted information revealed in Exhibit B includes two email exchanges on November 16 and 17, 2021, from a Defendant Mackay employee to a Yellowhawk employee. ECF No. 142-2 at 4. Exhibit B also contains an additional exchange with a third-party vendor, instructing it to “see [the conversation] below.” ECF No. 140-2 at 3.

Defendant Mackay seems to rely on the common interest doctrine to shield the redacted information from discovery, even though Yellowhawk had not yet been named as a defendant. ECF No. 147 at 11. In order to assert a joint defense privilege, the party asserting the doctrine must show (1) the communications were made in the course of a joint defense effort, (2) the statements were designed to further the effort, and (3) the privilege has not been waived. Kleiman v. Wright, No. 2:20-CV-00593-BJR, 2020 WL 2473552, at *4 (W.D. Wash. May 13, 2020) (citing Matter of Bevill, Bresler & Schulman Asset Mgmt. Corp., 805 F.2d 120, 126 (3d Cir. 1986)). Additionally, the communication must be made for a common legal interest, rather than a business interest. Id. at *5 (internal citations omitted).

The Court notes that the common interest doctrine typically applies to communication between attorneys for parties with a shared legal strategy. See In re Pac. Pictures Corp., 679 F.3d at 1129. Whatever joint interest may have existed, if any at all, was waived when Defendant Mackay's employee sent the email chain to a third-party vendor. ECF No. 140-2 at 3; In re Icenhower, 755 F.3d 1130, 1141 (9th Cir. 2014) (“Voluntary disclosure of the content of a privileged attorney communication constitutes waiver of the privilege as to all other such communications on the same subject.”). Defendant Mackay did not address the issue of third-party disclosure in responding to this motion to compel and is therefore directed to disclose the entire email thread contained in Mackay_00015761 unredacted. Mackay_00015754 is deficient in its omission of the disclosure to the third-party vendor, and whatever privilege was asserted to preserve the information redacted therein is waived.

*4 Plaintiff also requests that the Court order Defendant Mackay to remove the protective “confidential” label for both Mackay_00015754 and Mackay_00015761 because it asserts that it has been unnecessarily protectionist in its designation. ECF No. 139 at 4. As this is a non-dispositive motion, the Court applies the “good cause” showing under Federal Rule of Civil Procedure 26(c). See Kamakana v. City & Cnty. of Honolulu, 447 F.3d 1172, 1180 (9th Cir. 2006). Defendant asserts that the information contained in the email exchange displays the “1) name of vendor used several times throughout the email; 2) first and last names of customers; and 3) design details for Yellowhawk's packaging.” ECF No. 149 at 5. The Court finds that the information contained in the email exchange fits squarely within the parties' stipulated to “confidential” label as it consists of “[P]rivate account information of third parties; vendor information and pricing; confidential business communications and agreements with third parties; information or materials that identify potential or current customers.” ECF No. 48 at 2, ¶ 2. Further, the communication falls under the category of “commercial information,” pursuant to Federal Rule of Civil Procedure 26(c)(1)(G), and removing the “confidential” protection would require more redactions within the document than have already been ordered removed. Therefore, the Court declines to remove the “confidential” label from Mackay_00015754 and Mackay_00015761.

B. Mackay_00020304

Plaintiff argues that the email exchange with Mackay_00020304, contained unsealed as Exhibit C, should be unredacted as it relates to a business discussion among Defendant's Marketing Director, Owner and CEO, and Defendant Yellowhawk's Managing Partner, before Yellowhawk was named as a defendant in this matter, and therefore is subject to third party disclosure. ECF No. 137 at 8–9. Defendant asserts that the redaction of a portion of the October 14, 2021, email exchange warrants exclusion because it was sent in anticipation of litigation, and but for the litigation, it would not have been exchanged. ECF No. 147 at 10. Without the benefit of observing what is contained under the redaction, and with very little additional context within the exchange, the Court cannot readily determine whether the redaction is warranted. Therefore, Defendant shall submit unredacted Mackay_00020304 (Exhibit C) for in camera review. Fed. Sav. & Loan Ins. Corp. v. Ferm, 909 F.2d 372, 374 (9th Cir. 1990) (citing United States v. Zolin, 109 S.Ct. 2619, 2629 (1989)).

C. Mackay_00026694

Plaintiff argues that a November 3, 2021, exchange between Defendant Mackay's Marketing Director and Defendant's Owner and CEO (denoted Exhibit D) does not fall under the work product doctrine because there were no lawyers included on the exchange, and the email indicates that the message will be sent to “wine captains,” rendering the information ultimately disclosed to third parties. ECF No. 137 at 9. The Court agrees. The email contains no attachments or other indication that an attorney prepared any of the information therein. Instead, the information gleaned from the unredacted portions depicts an upcoming business meeting, in which the individuals exchanging the email would present the redacted information to wine captains “to get their ideas and buy in.” ECF No. 138-4. Based on the surrounding text, the Court is not persuaded that the exchanged contained the mental impressions of an attorney already involved in the case. United States v. Nobles, 422 U.S. 225, 238 (1975) (“At its core, the work-product doctrine shelters the mental processes of the attorney, providing a privileged area within which he can analyze and prepare his client's case.”). And even if it did, it seems that the goal of the redacted information was to share the contents with third parties, therefore waiving the privilege. In re Pac. Pictures Corp., 679 F.3d at 1127. Defendant maintains that the redacted portion of Exhibit D was not intended to be shared widely. ECF No. 147 at 9. Though skeptical, out of an abundance of caution pursuant to Federal Rule of Civil Procedure 26(b)(3)(B), the Court orders Defendant Mackay submit an unredacted version of Mackay_00026694 (Exhibit D) for in camera review.

D. Mackay_00053430

Plaintiff argues that the text of a November 30, 2021, email exchanged between a Defendant Mackay employee and Defendant Mackay's Owner and CEO (denoted Exhibit E) should be unredacted because the email exchanged is between non-lawyers and was sent after the initiation of litigation. ECF No. 137 at 9. Defendant asserts that this communication is protected by attorney-client privilege, would not have occurred but for the litigation, and was sent prior to a response to Plaintiff's discovery requests, thereby cloaking the actual language in the email in the relevant protection as prepared in anticipation of litigation. ECF No. 147 at 8. Based on the contents of unredacted information contained in Exhibit E, it is unclear to the Court precisely how the attorney-client privilege would apply to the email. Both the attachment and the subsequent list of attachments do not reveal anything that suggests the information contained is related to an attorney's advice in the ongoing litigation. ECF No. 138-5. The Court therefore orders that Defendant submit the full contents of Mackay_00053430 (Exhibit E) for in camera review.

E. Mackay_00112265

*5 Plaintiff requests the Court to order a line in an August 2022 document that was sent as an email attachment be unredacted. ECF No. 137 at 10. The document, denoted Exhibit F and filed under seal, details “IT Issues,” and the language surrounding the redacted lines details issues a Defendant Mackay employee had identified for a meeting relating to the company's tech support, presumptively attached to the email depicted in Exhibit G. ECF Nos. 138-7 at 2 and 140-3 at 2. While Defendant Mackay assures the Court that the redacted information constitutes legal advice, even if that were true, the context of the documents makes it evident that the employee had discussed all the information therein with the IT Department. ECF No. 147 at 8; see also Coastal States Gas Corp. v. Dep't of Energy, 617 F.2d 854, 863 (D.C. Cir. 1980) (internal citation omitted) (“The test ... is whether the agency is able to demonstrate that the documents, and therefore the confidential information contained therein, were circulated no further than among those members ‘of the organization who are authorized to speak or act for the organization in relation to the subject matter of the communication.’ ”). As such, the information is not privileged, and Defendant is required to un-redact Mackay_00112265 (Exhibit F).

Additionally, Plaintiff requests that the Court remove the “Highly Confidential – Attorney's Eyes Only” designation from Mackay_00112265 for the same reasons as set forth above. ECF No. 139 at 2. The Court finds that Defendant has shown good cause to keep that information available only to the parties of this case because the document itself, “poses a risk of competitive injury and may compromise and/or jeopardize its business interest.” Further, broad dissemination of the contents would likely lead to embarrassment pursuant to Federal Rule of Civil Procedure 26(c)(1). Therefore, the court maintains the “Highly Confidential – Attorney's Eyes Only” designation associated with Mackay_00112265.

F. Mackay_00131042

Plaintiff requests Defendant provide unredacted the May 2021 communication between Defendant Mackay's owner and an employee in which counsel for Defendant is copied but not a participant in the conversation, denoted Exhibit H. ECF No. 138-8. Notably, Defendant points out this email was sent around two weeks after it was served with Plaintiff's cease and desist letter and asserts that it contains information related to legal advice sought from counsel. ECF No. 147 at 6–7. Though this entire conversation is redacted, the context suggests the information is likely privileged given the timing of the email exchange. As such, the Court maintains the redaction on Mackay_00131042 (Exhibit H).

G. Mackay_00131049

Plaintiff request that the redacted portion of sealed Exhibit I, detailing the joint representation agreement between Defendant Mackay, Defendant Yellowhawk and its respective counsel, be made available. ECF No. 137 at 10. Defendant argues that the redacted portion is protected under the work product doctrine because it details the understanding of the progress of litigation at the time it was signed. ECF No. 147 at 10. Given the surrounding context of the agreement, and the phrase stated immediately prior to the redaction, the Court finds that this too is properly redacted. ECF No. 140-4 at 2. There is clear overlap between the discussion of the potential shared interest of the parties and counsel's impression of the case. Therefore, Mackay_00131049 (Exhibit I) shall remained redacted.

Plaintiff requests that the Court order Mackay_00131049 be disclosed without the protection of the “Highly Confidential – Attorney's Eyes Only” designation. ECF No. 139 at 3. Defendant asserts that there is no compelling reason to publicize the document contained within Exhibit I, as it represents a private agreement and was produced to demonstrate a common interest of the parties. ECF No. 149 at 6. The Court agrees, finding good cause to keep the document private. Kamakana, 447 F.3d at 1180.

III. Attorney's Fees

Federal Rule of Civil Procedure 37(a)(5) provides that a court must award reasonable costs and attorney's fees incurred in bringing a successful motion to compel, unless one of three circumstances is present: (1) the moving party failed to confer in good faith with opposing counsel prior to filing the motion; (2) the opposing party's non-disclosure of the requested information was substantial justified; or (3) “other circumstances” make an award of costs and expenses unjust. Fed. R. Civ. P. 37(a)(5)(A)(i)-(iii). In the event that the moving party is unsuccessful, the court must award costs and reasonable attorney's fees to the non-moving party, unless the movant was substantially justified in bringing the motion or other circumstances would make such an award unjust. Fed. R. Civ. P. 37(a)(5)(B). Finally, in the event that the motion is granted in part and denied in part, the court may “apportion the reasonable expenses for the motion” in any manner it deems appropriate. Fed. R. Civ. P. 37(a)(5)(C).

*6 Here, parties' motions have been granted in part and denied in part. Under these circumstances, the Court finds it appropriate that each party bear its' own costs and fees. Fed. R. Civ. P. 37(a)(5)(C).

ACCORDINGLY, IT IS HEREBY ORDERED:

The District Court Executive is directed to enter this Order and furnish copies to counsel. Each party to bear its own costs and expenses.