Pac. Pictures Corp. v. U.S. Dist. Court for Cent. Dist. of Cal., L.A.
| Decision Date | 10 May 2012 |
| Docket Number | No. 11–71844.,11–71844. |
| Citation | 679 F.3d 1121,2012 Daily Journal D.A.R. 6177,12 Cal. Daily Op. Serv. 5179 |
| Parties | In re PACIFIC PICTURES CORPORATION; IP Worldwide, LLC; IPW, LLC; Marc Toberoff; Mark Warren Peary; Laura Siegel Larson; Jean Adele Peavy, Pacific Pictures Corporation; IP Worldwide, LLC; IPW, LLC; Mark Warren Peary, as personal representative of the Estate of Joseph Shuster; Marc Toberoff, an individual; Jean Adele Peavy; Laura Siegel Larson, an individual, Petitioners, v. United States District Court for the Central District of California, Los Angeles, Respondent, D.C. Comics, Real Party in Interest. |
| Court | U.S. Court of Appeals — Ninth Circuit |
OPINION TEXT STARTS HERE
Richard B. Kendall, Kendall Brill & Klieger LLP, Los Angeles, CA, argued the cause and filed the briefs for the petitioners. With him on the briefs were Laura W. Brill, Kendall Brill & Kleiger, LLP, Los Angeles, CA as well as Marc Toberoff and Keith G. Adams, Toberoff & Associates, P.C., Los Angeles, CA.
Matthew T. Kline, O'Melveny & Myers LLP, Los Angeles, CA, argued the cause and filed the brief for the real party in interest. With him on the brief were Daniel M. Petrocelli and Cassandra L. Seto, O'Melveny & Myers LLP as well as Patrick T. Perkins, Perkins Law Office, P.C., Cold Spring, NY.
Appeal from the United States District Court for the Central District of California, Otis D. Wright II, District Judge, Presiding. D.C. No. 2:10–cv–03633–ODW–RZ.
Before: ALEX KOZINSKI, Chief Judge, DIARMUID F. O'SCANNLAIN and N. RANDY SMITH, Circuit Judges.
In the opinion filed in this case on April 17, 2012, we referred to allegations of misconduct made against an attorney by the name of David Michaels. That opinion is hereby amended to reflect that there has been no finding of wrongdoing on the part of Mr. Michaels. The amended opinion is filed concurrently with this order. This order does not affect any petitions for rehearing currently before the court, but no further petitions for rehearing will be accepted.
We must decide whether a party waives attorney-client privilege forever by voluntarily disclosing privileged documents to the federal government.
In the 1930s, writer Jerome Siegel and illustrator Joe Shuster joined forces to create the character that would eventually become Superman. They ceded their intellectual property rights to D.C. Comics when they joined the company as independent contractors in 1937.1 Since the Man of Steel made his first appearance in 1938, he has been fighting for “truth, justice, and the American way.” Shuster, Siegel, their heirs (“Heirs”), and D.C. Comics have been fighting for the rights to his royalties for almost as long.
Marc Toberoff, a Hollywood producer and a licensed attorney, stepped into the fray around the turn of the millennium. As one of his many businesses, Toberoff pairs intellectual property rights with talent and markets these packages to movie studios. Having set his sights on Superman, Toberoff approached the Heirs with an offer to manage preexisting litigation over the rights Siegel and Shuster had ceded to D.C. Comics. He also claimed that he would arrange for a new Superman film to be produced. To pursue these goals, Toberoff created a joint venture between the Heirs and an entity he owned. Toberoff served as both a business advisor and an attorney for that venture. The ethical and professional concerns raised by Toberoff's actions will likely occur to many readers, but they are not before this court.
While the preexisting litigation was pending, Toberoff hired a new lawyer to work for one of his companies. This attorney remained in Toberoff's employ for only about three months before allegedly absconding with copies of several documents from the Siegel and Shuster files. Unsuccessful in his alleged attempt to use the documents to solicit business from the Heirs, this attorney sent the documents to executives at D.C. Comics. While he did not include his name with the package, he did append a cover letter, written in the form of a timeline, outlining in detail Toberoff's alleged master plan to capture Superman for himself.
This happened no later than June 2006, and the parties have been battling over what should be done with these documents ever since. Rather than exploiting the documents, D.C. Comics entrusted them to an outside attorney and sought to obtain them through ordinary discovery in the two ongoing lawsuits over Superman. Considering every communication he had with the Heirs to be privileged—regardless of whether the communication was in his capacity as a business advisor or an attorney—Toberoff resisted all such efforts. Ultimately, in April 2007, a magistrate judge ordered certain documents, including the attorney's cover letter, turned over to D.C. Comics. A few months later, Toberoff at long last reported the incident to the authorities ( the Federal Bureau of Investigation). In December 2008, Toberoff finally produced at least some of the documents.
In 2010, D.C. Comics filed this lawsuit against Toberoff, the Heirs, and three entities in which Toberoff owned a controlling interest (collectively, the “Petitioners”), claiming that Toberoff interfered with its contractual relationships with the Heirs. The attorney's cover letter formed the basis of the lawsuit and was incorporated into the complaint. Toberoff has continued to resist the use of any of the documents taken from his offices, including those already disclosed to D.C. Comics and especially the cover letter.
About a month after the suit was filed, Toberoff asked the Office of the United States Attorney for the Central District of California to investigate the theft. In response to a request from Toberoff, the U.S. Attorney's Office issued a grand jury subpoena for the documents as well as a letter stating that if Toberoff voluntarily complied with the subpoena the Government would “not provide the ... documents ... to non-governmental third parties except as may be required by law or court order.” The letter also confirmed that disclosure would indicate that “Toberoff has obtained all relevant permissions and consents needed (if any) to provide the ... documents ... to the government.” Armed with this letter, Toberoff readily complied with the subpoena, making no attempt to redact anything from the documents.
D.C. Comics immediately requested all documents disclosed to the U.S. Attorney, claiming that the disclosure of these unredacted copies waived any remaining privilege. Examining the weight of authority from other circuits, the magistrate judge agreed that a party may not selectively waive attorney-client privilege. The magistrate judge reasoned that, because a voluntary disclosure of privileged materials breaches confidentiality and is inconsistent with the theory behind the privilege, such disclosure waives that privilege regardless of whether the third party is the government or a civil litigant. Having delivered the documents to the government, the magistrate judge concluded, Petitioners could not rely on the attorney-client privilege to shield them from D.C. Comics.
However, the magistrate judge noted that this circuit has twice declined to decide whether a party may selectively waive the attorney-client privilege, and stayed his order to allow Petitioners to seek review. The district court denied review. Petitioners seek to overturn the magistrate's order through a writ of mandamus.
A writ of mandamus is an extraordinary remedy. A party seeking the writ has the “burden of showing that [his] right to the issuance of the writ is clear and indisputable.” Bauman v. U.S. Dist. Ct., 557 F.2d 650, 656 (9th Cir.1977) (internal quotation marks omitted). In evaluating whether a petitioner has met that burden, we consider: (1) whether he “has no other adequate means” of seeking relief; (2) whether he “will be damaged or prejudiced in a way not correctable on appeal” after final judgment; (3) whether the “district court's order is clearly erroneous as a matter of law”; (4) whether the order “is an oft-repeated error”; and (5) whether the order “raises new and important problems, or issues of first impression.” Id. at 654–55. We have established no specific formula to weigh these factors, but failure to show what is generally listed as the third factor, error, is fatal to any petition for mandamus. See Burlington N. & Santa Fe Ry. v. U.S. Dist. Ct., 408 F.3d 1142, 1146 (9th Cir.2005).2
Under certain circumstances, the attorney-client privilege will protect communications between clients and their attorneys from compelled disclosure in a court of law. See Upjohn Co. v. United States, 449 U.S. 383, 389, 101 S.Ct. 677, 66 L.Ed.2d 584 (1981). Though this in some way impedes the truth-finding process, we have long recognized that “the advocate and counselor [needs] to know all that relates to the client's reasons for seeking representation” if he is to provide effective legal advice. Trammel v. United States, 445 U.S. 40, 51, 100 S.Ct. 906, 63 L.Ed.2d 186 (1980); see also 8 John Henry Wigmore, Evidence § 2290 (John T. McNaughton, ed. 1961). As such, we recognize the privilege in order to “encourage full and frank communication between attorneys and their clients and thereby promote broader public interests in the observance of law and administration of justice.” Upjohn Co., 449 U.S. at 389, 101 S.Ct. 677.3
Nonetheless, because, like any other testimonial privilege, this rule “contravene[s] the fundamental principle that the public has a right to every man's evidence,” Trammel, 445 U.S. at 50, 100 S.Ct. 906 (internal alterations and quotation marks omitted), we construe it narrowly to serve its purposes, see, e.g., United States v. Martin, 278 F.3d 988, 999 (9th Cir.2002).4 In particular, we recognize several ways by which parties may waive the privilege. See, e.g., Hernandez v. Tanninen, 604 F.3d 1095, 1100 (9th Cir.201...
To continue reading
Request your trial
- Kittitas Cnty., Corp. v. Sky Allphin, Abc Holdings, Inc.
-
Miller Uk Ltd. v. Caterpillar, Inc.
...withheld documents were otherwise privileged, the “common interest” doctrine does not come into play. See In re Pacific Pictures Corp., 679 F.3d 1121, 1128–1131 (9th Cir.2012); Pampered Chef, 737 F.Supp.2d at 968; Dexia Credit Local v. Rogan, 231 F.R.D. 268, 273–274 (N.D.Ill.2004); Gulf Isl......
- Miller UK Ltd. v. Caterpillar, Inc.
- Wadler v. Bio-Rad Labs., Inc.
-
SEC Investigations Guide - Second Edition: December 2022
...Fourth, Sixth, Ninth, Tenth, D.C., and Federal Circuits have rejected the selective waiver doctrine. See In re Pac. Pictures Corp., 679 F.3d 1121, 1129 (9th Cir. 2012); In re Qwest Commc’ns Int’l, Inc., 450 F.3d 1179, 1197 (10th Cir. 2006); Burden-Meeks v. Welch, 319 F.3d 897, 899 (7th Cir.......
-
Internal Investigations of Environmental Crimes
...have held that the attorney-client privilege and work-product protection have been waived. See, e.g. , In re Paciic Pictures Corp., 679 F.3d 1121 (9th Cir. 2012); In re Quest Commc’ns Int’l, Inc., 450 F.3d 1179 (10th Cir. 2006); In re Columbia/HCA Healthcare Corp. Billing Practices Litig., ......
-
Protecting Attorney-Client Communications, Attorney Work Product, and Data
...other documents involving the same subject matter as well’” (citation omitted)). 81. See, e.g ., Pac. Pictures Corp. v. U.S. Dist. Court, 679 F.3d 1121, 1127–28 (9th Cir. 2012) (rejecting a theory of “selective waiver” of privilege arising from voluntary disclosure of documents to a governm......
-
Privileges
...rejected by the First, Second, Third, Fourth, Sixth, Seventh, Ninth, Tenth, Federal, and D.C. Circuits. See In re Pac. Pictures Corp., 679 F.3d 1121, 1129 (9th Cir. 2012); In re Qw est Commc’ns Int’l , 450 F.3d 1179, 1197 (10th Cir. 2006); Burden-Meeks v. Welch, 319 F.3d 897, 899 (7th Cir. ......
-
Table of Cases
...Co., Ltd., 918 F. Supp. 491 (D.N.H. 1996), 100 In re Packaged Ice Antitrust Litig., No. 2:08-md-01952, 133 In re Pac. Pictures Corp., 679 F.3d 1121 (9th Cir. 2012), 82, 117, 118 In re Paducah Towing Co., 692 F.2d 412 (6th Cir. 1982), 45 PaineWebber Group, Inc. v. Zinsmeyer Trusts P’ship, 18......