Adidas America, Inc. v. TRB Acquisitions LLC

          Stephen M. Feldman, Perkins Coie LLP, R. Charles Henn Jr., Charles H. Hooker III, and Nichole D. Chollet, Kilpatrick Townsend & Stockton LLP Of Attorneys for Plaintiffs.

          Kenneth R. Davis II and Parna A. Mehrbani, Lane Powell PC, Michelle Mancino Marsh, Allen G. Reiter, Eric Roman, Lindsay Korotkin, Alissa G. Friedman, and Phaik Lin Goh, Arent Fox LLP Of Attorneys for Defendants.

          OPINION AND ORDER

          Michael H. Simon United States District Judge

         In this lawsuit, three adidas-named entities (adidas America, Inc., adidas AG, and adidas International Marketing B.V.) and two Reebok-named entities (Reebok International Ltd. and Reebok International Limited) (collectively, “Plaintiffs”) allege federal and state claims of trademark infringement, unfair competition, trademark dilution, and deceptive trade practices against Defendant TRB Acquisitions LLC (“TRB”) and fourteen of TRB's licensees (collectively, “Defendants”). Before the Court is Defendants' motion to compel production of documents reviewed by three of Plaintiffs' deposition witnesses. Two of these deponents were designated by Plaintiffs as corporate representatives under Rule 30(b)(6) of the Federal Rules of Civil Procedure (“FRCP”), and one deponent was a percipient witness. Plaintiffs argue that the documents are protected from discovery by either the attorney-client privilege or the work-product doctrine. Defendants respond that any such protection has been waived by: (1) the witnesses' review of the documents in preparation for deposition; (2) the witnesses' reliance on the documents in testifying; (3) the crime-fraud exception to the attorney-client privilege; and (4) Plaintiffs' failure properly to list the documents on a privilege log.

         STANDARDS

A. Attorney-Client Privilege

         Pursuant to Rule 501 of the Federal Rules of Evidence (“FRE”), the federal common law of privilege applies in federal court civil cases when a claim arises under federal law. In addition, “[w]here there are federal question claims and pendent state law claims present, the federal law of privilege applies.” Agster v. Maricopa County, 422 F.3d 836, 839 (9th Cir. 2005) (citations omitted). “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) (citation omitted). The party asserting a privilege has the burden of establishing the applicable privilege. Id. Under the attorney-client privilege, when: “(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. (quotation marks and citation omitted). However, “[b]ecause it impedes full and free discovery of the truth, the attorney-client privilege is strictly construed.” United States v. Martin, 278 F.3d 988, 999 (9th Cir. 2002) (quotation marks and citation omitted). Further, for the attorney-client privilege to apply, it is essential “that the communication be made in confidence for the purpose of obtaining legal advice from the lawyer.” United States v. Gurtner, 474 F.2d 297, 298 (9th Cir. 1973) (emphasis in original) (quotation marks and citation omitted).

         B. Work-Product Doctrine

         The work-product doctrine “is not a privilege but a qualified immunity protecting from discovery documents and tangible things prepared by a party or his representative in anticipation of litigation.” Admiral Ins. Co. v. U.S. Dist. Court for the Dist. of Arizona, 881 F.2d 1486, 1494 (9th Cir. 1989) (citing Fed.R.Civ.P. 26(b)(3)). Documents or the compilation of materials prepared by agents of the attorney in preparation for litigation may be covered by the work-product doctrine. Richey, 632 F.3d at 567. To qualify for work-product protection, materials must: “(1) be prepared in anticipation of litigation or for trial and (2) be prepared by or for another party or by or for that other party's representative.” Id. (quotation marks omitted).

         The work-product doctrine affords special protection to materials that reveal an attorney's mental impressions and opinions (“opinion” or “core” work product). Admiral Ins. Co., 881 F.2d at 1494; Fed.R.Civ.P. 26(b)(3)(B). Other work-product materials may be ordered to be produced upon a showing of substantial need for the information and that the information cannot be otherwise obtained without undue hardship. Admiral Ins. Co., 881 F.2d at 1494; Fed R. Civ. P. 26(b)(3)(A)(ii). To obtain the opinion (or core) work product of an opposing party, however, a party must show that the mental impressions of counsel are at issue and the need for the material is compelling. Holmgren v. State Farm Mut. Auto. Ins. Co., 976 F.2d 573, 577 (9th Cir. 1992).

         The primary purpose of the work-product doctrine is to “prevent exploitation of a party's efforts in preparing for litigation.” Admiral Ins. Co., 881 F.2d at 1494. Work-product protection, like the attorney-client privilege, is waivable. Richey, 632 F.3d at 567.

         C. FRE 612

         Rule 612 of the FRE is titled “Writing Used to Refresh a Witness's Memory” and provides:

(a) Scope. This rule gives an adverse party certain options when a witness uses a writing to refresh memory:

(1) while testifying; or

(2) before testifying, if the court decides that justice requires the party to have those options.

(b) Adverse Party's Options; Deleting Unrelated Matter. Unless 18 U.S.C. § 3500 provides otherwise in a criminal case, an adverse party is entitled to have the writing produced at the hearing, to inspect it, to cross-examine the witness about it, and to introduce in evidence any portion that relates to the witness's testimony. . . .

(c) Failure to Produce or Deliver the Writing. If a writing is not produced or is not delivered as ordered, the court may issue any appropriate order. . . .

Fed. R. Evid. 612 (italicized emphasis added).

         The options available when a document is used to refresh a witness's recollection include that “the adverse party is entitled to have [the document] produced and to introduce into evidence any portion that relates to the witness's testimony.” In re Kellogg Brown & Root, Inc. 796 F.3d 137, 143 (D.C. Cir. 2015); Fed.R.Evid. 612(b). Pursuant to FRCP 30(c)(1), FRE 612 applies to depositions. See U.S. ex rel. Bagley v. TRW, Inc., 212 F.R.D. 554, 565 (C.D. Cal. 2003) (“Rule 612 applies to deposition testimony.”); Nutramax Labs., Inc. v. Twin Labs. Inc., 183 F.R.D. 458, 461 n.7 (D. Md. 1998) (noting that many courts and “[l]earned commentators” conclude that FRE 612 applies to deposition testimony, although recognizing that a few courts have determined that it does not because the rule “implies testimony before a judicial officer, ” but ultimately concluding that “the better reasoned conclusion is that Rule 612 does apply at depositions”); e.g., Kellogg, 796 F.3d at 143-44 (applying FRE 612 to deposition testimony); Hallam v. Gemini Ins. Co., 2015 WL 11237637, at *4 (S.D. Cal. June 19, 2015) (same).

         D. Deposition of a Corporate Representative under FRCP 30(b)(6)

         Rule 30 of the FRCP is titled “Depositions by Oral Examination.” FRCP 30(b)(6) provides:

Notice or Subpoena Directed to an Organization. In its notice or subpoena, a party may name as the deponent a public or private corporation, a partnership, an association, a governmental agency, or other entity and must describe with reasonable particularity the matters for examination. The named organization must then designate one or more officers, directors, or managing agents, or designate other persons who consent to testify on its behalf; and it may set out the matters on which each person designated will testify. A subpoena must advise a nonparty organization of its duty to make this designation. The person designated must testify about information known or reasonably available to the organization. This paragraph (6) does not preclude a deposition by any other procedure allowed by these rules.

Fed. R. Civ. P. 30(b)(6) (emphasis added).

         As explained by the Advisory Committee, the discovery device created by FRCP 30(b)(6) was intended to assist both sides in the deposition process. Previously, officers or managing agents of a corporation who were deposed might use a technique known as “bandying, ” in which each witness in turn disclaims knowledge of facts that are known to other persons in the organization and thereby to the organization itself. This rule was intended to curb that practice. In addition, organizations at times were subjected to an unnecessarily large number of their officers and agents being deposed by a party who was uncertain of who in the organization has knowledge regarding some specific matter at issue. The Advisory Committee observed that the burden placed by this rule on a party required to produce a witness or witnesses “is not essentially different from that of answering interrogatories under Rule 33, and is in any case lighter than that of an examining party ignorant of who in the corporation has knowledge.” Fed.R.Civ.P. 30, advisory committee's notes to 1970 amendments; see also Memory Integrity, LLC v. Intel Corp., 308 F.R.D. 656, 660-61 (D. Or. 2015) (discussing the substantial obligations imposed by FRCP 30(b)(6) on a party requesting a deposition of a corporate representative and on a party receiving such a request).

         “In a Rule 30(b)(6) deposition, there is no distinction between the corporate representative and the corporation. The Rule 30(b)(6) designee does not give his personal opinion. Rather, he presents the corporation's ‘position' on the topic. The designee testifies on behalf of the corporation and thus holds it accountable.” Sprint Commc'ns Co. v. Theglobe.com, Inc., 236 F.R.D. 524, 527 (D. Kan. 2006) (quotation marks and footnotes omitted). Under this rule, “companies have a duty to make a conscientious, good-faith effort to designate knowledgeable persons for Rule 30(b)(6) depositions and to prepare them to fully and unevasively answer questions about the designated subject matter.” Id. (quotation marks omitted)).

         For these reasons, the purpose underlying FRCP 30(b)(6) would be “frustrated [if] a corporate party produces a witness who is unable . . . or unwilling to provide the necessary factual information on the entity's behalf.” Black Horse Lane Assoc. v. Dow Chem. Corp., 228 F.3d 275, 304 (3d Cir. 2000). Thus, the rule requires, if need be, that the responding party “must prepare deponents by having them review prior fact witness deposition testimony as well as documents and deposition exhibits.” United States v. Taylor, 166 F.R.D. 356, 362 (M.D. N.C. 1996). In short, corporate parties have an obligation to present witnesses who are capable of providing testimony on the noticed topics regardless of whether the information was in the witness's personal knowledge, provided that the information is reasonably available to the corporation. Covad Commc'ns Co. v. Revonet, Inc., 267 F.R.D. 14, 25 (D.D.C. 2010); see also Nutramax, 183 F.R.D. at 469 (“The testimony of [FRCP 30(b)(6)] witnesses also is not limited to matters within their personal knowledge, but extends to matters known or reasonably available to the party designating the witness.” (quotation marks omitted)).

         Because FRCP 30(b)(6) places substantial responsibilities and burdens on the responding corporate party, the rule itself expressly requires that the party requesting the deposition “must describe with reasonable particularity the matters for examination.” As one court has explained, “to allow the Rule to effectively function, the requesting party must take care to designate, with painstaking specificity, the particular subject areas that are intended to be questioned, and that are relevant to the issues in dispute.” Sprint, 236 F.R.D. at 528 (emphasis added); see also Lipari v. U.S. Bancorp, N.A., 2008 WL 4642618, at *5 (D. Kan. Oct. 16, 2008). “Once notified as to the reasonably particularized areas of inquiry, the corporation then must not only produce such number of persons as ...