Linda Norbut reflects upon a recent trademark infringement suit and the issue of attorney-client privilege.
A magistrate judge in the U.S. District Court for the Southern District of New York has found that the attorney-client privilege was waived when a client’s public relations representatives were looped in on email threads between client and attorney, rendering these emails discoverable during litigation.
The underlying litigation in Universal Standard Inc. v. Target Corporation, No. 18 Civ. 6042 (GWG), 2019 WL 1983944, involves a trademark infringement claim against retail-giant Target by the “size-inclusive clothing brand,” Universal Standard. The complaint alleges Target infringed upon Universal Standard’s mark by offering its own line of women’s clothing called “Universal Thread,” which is also marketed to women of all sizes.
The dispute here, however, specifically involves emails sent in June 2018 among Universal Standard, its attorneys, and BrandLink – Universal Standard’s public relations representatives, and whether including Brandlink in the emails waived the attorney-client privilege. The court held that it does.
The attorney-client privilege exists to protect “communications (1) between a client and his or her attorney (2) that are intended to be, and in fact were, kept confidential (3) for the purpose of obtaining or providing legal advice,” the court said. The burden is on the party claiming the protection of privilege to establish facts that show the existence of the privilege and that it has not been waived. And normally, “disclosure to a third party by the party of a communication with his attorney eliminates whatever privilege the communication may have originally possessed.”
Universal Standard attempted to argue that including the public relations representatives in the emails did not waive the attorney-client privilege because the representatives are deemed to be the “functional equivalent” of corporate employees or consultants “used by lawyers to assist in performing certain tasks that go beyond advising a client as to the law.” This, however, did not persuade the court.
“The particular emails at issue involved discussions regarding a public relations strategy surrounding the filing of the instant lawsuit and in particular whether a press release should issue,” Judge Gornstein wrote for the court. “Any questions that arose regarding the propriety of a press release, however, could simply have been communicated to the attorneys by Universal Standard without BrandLink’s involvement.” Universal Standard did not include BrandLink in its emails to aid in communications between itself and the client, as an accountant or a translator might, the judge added.
There are several exceptions where a third-party’s inclusion in communications would not waive the attorney client-privilege – including the so-called common interest or joint defense privilege—but the court did not find any exception applicable here.
The short and simplistic takeaway for attorneys and their clients is that, when in doubt, third parties should not be “looped” in on communications between lawyer and client unless the party is essential to the conversation. Best practice includes bringing the third party up to speed at a later time. Otherwise, clients run the risk of waiving their attorney-client privilege altogether
Linda R. Norbut is an attorney in the Tampa office of Thomas & LoCicero with a practice concentration in media and communications law, including defamation and invasion of privacy. She also focuses on intellectual property and business litigation.
With offices in Tampa and Fort Lauderdale, Thomas & LoCicero is a Florida law firm that is widely known, respected and committed to free speech and a free press. The firm represents the industry’s leading electronic and traditional publishers, as well as individual journalists, bloggers and influencers of social media on issues ranging from news gathering to invasion of privacy, from defamation to pre-publication review. At the heart of the firm’s mission is to champion free speech and defend journalism every day.