200 F.R.D. 413 (N.D.Ill. 2001), 99 C 8317, Prevue Pet Products, Inc. v. Avian Adventures, Inc.
| Citation | 200 F.R.D. 413 |
| Opinion Judge | SCHENKIER, United States Magistrate Judge. |
| Party Name | PREVUE PET PRODUCTS, INC., et al., Plaintiffs, v. AVIAN ADVENTURES, INC., et al., Defendants. |
| Attorney | Barry Warren Sufrin, Kevin Charles Trock, Catherine Jane Wright-Mitchell, Laff, Whitesel & Saret, Edward B. Ruff, III, Adrian Mendoza, Jr., Frank John Andreou, Pretzel & Stouffer, Chtd., Alan E. Sohn,, Frank John Andreou, Chicago, IL, for Prevue Pet Products, Inc. Barry Warren Sufrin, Kevin Charl... |
| Case Date | April 23, 2001 |
| Court | United States District Courts, 7th Circuit, U.S. District Court — Northern District of Illinois |
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Bird cage buyer sued rival claimants asserting copyright interest in style of cage, seeking declaration of noninfringement. One claimant filed counterclaims and cross-claim asserting ownership of copyright. On that claimant's motion to compel discovery, the District Court, Schenkier, United States Magistrate Judge, held that: (1) second claimant's conversation with buyer's counsel was not subject to attorney-client privilege, but (2) under common interest rule, presence of buyer's counsel at predeposition meeting between second claimant and his counsel did not waive attorney client privilege as to contents of their conversation.
Motion granted in part and denied in part.
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MEMORANDUM OPINION AND ORDER
Plaintiffs Prevue Pet Products, Inc. and Bird City USA, Inc. have filed this action against Avian Adventures, Inc., Carol Frank and Sergio Tamez in connection with a dispute concerning bird cages. Plaintiffs seek a declaratory judgment that Mr. Tamez, rather than Avian or Ms. Frank, is the proper author and owner of the copyright in a certain style of bird cages (Sec. Am. Compl., Count I). The plaintiffs also seek damages and other relief against Avian and Ms. Frank-but not Mr. Tamez-under a variety of state law theories ( Id., Counts II-VI, VIII). For their part, Avian and Ms. Frank have asserted a counterclaim against Prevue and Bird City and a cross-claim against Mr. Tamez. In both their counterclaim and cross-claim, Avian and Ms. Frank assert that they (and not Mr. Tamez) are the true owners of the copyright in the bird cages; they also seek damages and other relief from Prevue, Bird City and Mr. Tamez for copyright infringement, unfair competition and deceptive trade practices ( see Counterclaim, ¶ ¶ 9-14; Cross-Claim, ¶ ¶ 16-17).
As the foregoing suggests, although Mr. Tamez is a defendant in both the plaintiffs' complaint and the cross-claim by Avian and Ms. Frank, his posture in those two pleadings is quite different. The cross-claim asserted by Avian and Ms. Frank seeks relief against Mr. Tamez directly, both in the form of money damages and a finding that Mr. Tamez is not the holder of the copyright in the bird cages in question. Thus, there can be no doubt that the positions of Avian and
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Ms. Frank on the one hand, and Mr. Tamez on the other hand, are genuinely adverse.
By contrast, in the complaint filed by Prevue and Bird City, the plaintiffs seek no monetary or other relief against Mr. Tamez. The only relief that plaintiffs seek that would involve Mr. Tamez's interests is plaintiffs' request for a finding that Mr. Tamez is the holder of the copyright in the bird cages (Sec. Am. Compl., Count I), and that Avian and Ms. Frank do not have a valid patent in those bird cages ( Id., Count VII): findings that, if plaintiffs obtained them, would redound to Mr. Tamez's benefit. Indeed, the friendly relations between plaintiffs and Mr. Tamez are underscored by the fact that plaintiffs are paying Mr. Tamez's defense in this case, which is being provided by a counsel of record (Arnold Landis) separate from plaintiffs' counsel (Alan Sohn and Kevin Trock).
The case now comes before the Court on a dispute that arose during the Tamez deposition concerning an assertion of attorney-client privilege. In that deposition, Mr. Tamez-on instructions of counsel-declined to answer questions touching on two subjects.
First, Mr. Tamez refused to answer questions about conversations he had in October 1999 (two months before this lawsuit was filed) with one of plaintiffs' counsel of record in this case, Mr. Sohn. Those conversations took place after Mr. Tamez learned that certain bird cages his companies allegedly manufactured and shipped to Prevue had been seized by the United States Customs Service, as a result of Avian's assertion that the products infringed Avian's copyright. In connection with those conversations and in an effort to extricate the bird cages from Customs, Mr. Tamez signed an affidavit that later was attached to the complaint.
Second, while preparing for his deposition in this case, Mr. Tamez attended a meeting with his attorney, Mr. Landis, that also was attended by Prevue's attorneys of record, Messrs. Sohn and Kevin Trock. Mr. Tamez declined to answer questions concerning the conversations at which Prevue's counsel were present.
Avian and Ms. Frank have moved to compel Mr. Tamez to testify as to these two subjects (doc. # 120). Avian and Ms. Frank argue that no privilege can attach to conversations concerning either subject, because Mr. Tamez does not have an attorney-client relationship with either Mr. Sohn or Mr. Trock, and because the common interest doctrine cannot apply here, where Mr. Tamez is a defendant in a complaint filed by Prevue and Bird City. Mr. Tamez and plaintiffs resist the motion, asserting that all of the conversations in issue are protected by the attorney-client privilege. As to the October 1999 conversations with Mr. Sohn, Mr. Tamez and the plaintiffs assert that the privilege attaches because Mr. Tamez was seeking legal advice from Mr. Sohn (Tamez's and Prevue's Resp., at 3-4). As to the meetings during Mr. Tamez's deposition preparation, Mr. Tamez and plaintiffs assert attorney-client privilege based on the common interest doctrine ( Id., at 5-6).
In deciding this motion, the Court applies the same principles that it discussed in IBJ Whitehall Bank & Trust Co. v. Cory & Associates, Inc., 97 C 5827, 1999 WL 617842 (N.D.Ill.1999). In particular, the Court recognizes that the privilege serves important public interests by fostering " full and frank communication between attorneys and their clients [.]" Upjohn Co. v. United States, 449 U.S. 383, 389, 101 S.Ct. 677, 66 L.Ed.2d 584 (1981). But the Court also is mindful that because the attorney-client privilege " shelters important knowledge," In re Matter of Michael Feldberg, 862 F.2d 622, 627 (7th Cir.1988), the privilege must be " strictly confined within the narrowest possible limits." United States v. Lawless, 709 F.2d 485, 487 (7th Cir.1983). The burden of establishing the privilege is on the party asserting it. Id.
Applying these principles, the Court finds that Mr. Tamez has failed to establish that the attorney-client privilege applies to his conversations with Mr. Sohn in October 1999, but that the attorney-client privilege, through application of the common interest doctrine, does protect the conversations that Mr. Tamez had with his attorney in the presence of Prevue's attorneys just prior to
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his deposition. We explain each of those rulings in turn.
I.
In order to establish the attorney-client privilege for his October 1999 conversations with Mr. Sohn, Mr. Tamez must satisfy the well-settled standard established by the Seventh Circuit:
(1) Where legal...
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...or potential litigation either as actual or potential defendants, or plaintiffs. Prevue Pet Prods., Inc. v. Avian Adventures, Inc., 200 F.R.D. 413, 417 (N.D. Ill. 2001); In re Grand Jury Subpoenas, 902 F.2d at 249 (4th Cir. 1990) (indicating the joint defense privilege applies "whether the ......