United States District Court, D. Oregon
ADIDAS AMERICA, INC., a Delaware corporation, et al., Plaintiffs,
TRB ACQUISITIONS LLC, a New York limited liability company, et al., Defendants.
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
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.
A. Attorney-Client Privilege
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
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).
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).
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.
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
(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).
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).
Deposition of a Corporate Representative under FRCP
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).
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).
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)).
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)).
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 ...