Duplan Corp. v. MOULINAGE ET RETORDERIE, 73-1618.

• Decision Date: 23 October 1973
• Docket Number: No. 73-1618.,73-1618.
• Citation: 487 F.2d 480
• Parties: The DUPLAN CORPORATION, Appellee, v. MOULINAGE et RETORDERIE de CHAVANOZ, Appellant, Deering Milliken, Inc., et al., Defendants.
• Court: U.S. Court of Appeals — Fourth Circuit

487 F.2d 480 (1973)

The DUPLAN CORPORATION, Appellee, v. MOULINAGE et RETORDERIE de CHAVANOZ, Appellant, Deering Milliken, Inc., et al., Defendants.

No. 73-1618.

United States Court of Appeals, Fourth Circuit.

Argued June 5, 1973.

Decided October 23, 1973.

Jay Greenfield, New York City (Butler, Means, Evins & Browne, Spartanburg, S. C., Paul, Weiss, Rifkin, Wharton & Garrison, Morgan, Finnegan, Durham & Pine, Simon H. Rifkind, New York City, Thomas A. Evins, Spartanburg, S. C., and Robert S. Smith, New York City, on brief), for appellant.

Fletcher C. Mann and O. G. Calhoun, Jr., Greenville, S. C. (Allan Trumbull on brief), for appellee.

Before BRYAN, Senior Circuit Judge, and FIELD and WIDENER, Circuit Judges.

FIELD, Circuit Judge:

We entertained this appeal upon the narrow question whether upon the termination of litigation the work product documents prepared incident thereto lose the qualified immunity extended to them under Rule 26(b)(3), Federal Rules of Civil Procedure,¹ and become freely discoverable in subsequent and unrelated litigation.

In this multidistrict patent-antitrust proceeding, resolution of this question is of vital importance with respect both to depositions and requests for production of documents.² The district judge initially concluded "that once the privilege attaches it remains regardless of the litigation in which discovery is sought." However, in the course of the extensive discovery proceedings he reconsidered his position and concluded "that (1) when a case in litigation is finally terminated; (2) by either a decision of the court or by settlement among the parties; (3) the work product privilege is also terminated; and (4) the work product of attorneys in the prior litigation is therefore subject to discovery in subsequent litigation." Recognizing the importance of his ruling the district judge certified his order for interlocutory consideration pursuant to 28 U.S.C. § 1292(b) and we granted the appeal. We disagree with the conclusion of the district judge and reverse.

From the time the Federal Rules were first adopted one of the most litigated questions relative to the scope of discovery has been the extent to which a party may obtain disclosure and inspection of the documents and information developed during the course of an opponent's preparation for trial. As a result of the flood of inconsistent decisions in this area, in June of 1946 the Advisory Committee on Rules proposed an amendment to Rule 30(b).³ The Supreme Court did not adopt the proposed amendment but dealt with the problem in the landmark case of Hickman v. Taylor, 329 U.S. 495, 67 S.Ct. 385, 91 L.Ed. 451 (1947). In Hickman the Court recognized a qualified immunity for what it characterized as the "work product of the lawyer" and held that it was discoverable only upon a substantial showing of "necessity or justification."⁴ Unfortunately, in the succeeding years the courts failed to apply the principles of Hickman in a definitive or uniform manner, and one court went so far as to state that the decision had opened a veritable "Pandora's box."⁵

With the decisions of the district courts going off in different directions, the Advisory Committee once again turned its attention to the troublesome subject of work product. In a preliminary draft in 1967, the Committee suggested a new Rule 26(b)(3) defining work product and allowing discovery thereof "only upon a showing of good cause therefor."⁶ The proposal was roundly criticized especially by those who felt that the test of "good cause" would not provide sufficient protection for work product material, and it was suggested that the "badly tarnished good cause test of Rule 34" would lower the barrier set in Hickman. See Freund, Work Product, 1968, 45 F.R.D. 493, 495. Responsive to this widespread criticism the proposal was altered and finally cast in the form in which it was adopted by the Supreme Court in 1970. It is generally conceded that the new Rule reflects the rationale of Hickman, and Professor Wright characterizes it as "an accurate codification of the doctrine announced in the Hickman case * * *."⁷

There is, of course, nothing in the Rule itself that suggests a specific answer to the question before us, nor is there any indication in the Advisory Committee Note to Rule 26(b)(3) that the Committee gave any particular thought to this problem.⁸ However, since the Rule tracks Hickman the answer must, primarily, be gleaned from that decision.

The theme of Hickman is succinctly stated in Mr. Justice Murphy's prefatory statement:

"Examination into a person\'s files and records, including those resulting from the professional activities of an attorney, must be judged with care. It is not without reason that various safeguards have been established to preclude unwarranted excursions into the privacy of a man\'s work. At the same time, public policy supports reasonable and necessary inquiries. Properly to balance these competing interests is a delicate and difficult task." 329 U.S. at 497, 67 S.Ct. 385, at 387, 91 L.Ed. 451.

And disapproval of carte blanche incursions is manifest in the now classic statement:

"Were such materials open to opposing counsel on mere demand, much of what is now put down in writing would remain unwritten. An attorney\'s thoughts, heretofore inviolate, would not be his own. Inefficiency, unfairness and sharp practices would inevitably develop in the giving of legal advice and in the preparation of cases for trial. The effect on the legal profession would be demoralizing. And the interests of the clients and the cause of justice would be poorly served." 329 U.S. at 511, 67 S.Ct. 385, at 393, 91 L.Ed. 451.

Hickman clearly stands for the principle that the integrity of the adversary process must be safeguarded in spite of the desirability of the free interchange of information before trial. Its overriding concern is that the lawyer's morale be protected as he performs his professional functions in planning litigation and preparing his case. This work product immunity is the embodiment of a policy that a lawyer doing a lawyer's work in preparation of a case for trial should not be hampered by the knowledge that he might be called upon at any time to hand over the result of his work to an opponent.⁹ The concern of the Court for the integrity of the practicing bar was made crystal clear in the trenchant concurrence of Mr. Justice Jackson when he stated that "the primary effect of the practice advocated here would be on the legal profession itself,"¹⁰ and "the real purpose and the probable effect of the practice ordered by the district court would be to put trials on a level even lower than a `battle of wits'."¹¹ Mr. Justice Jackson then proceeded to point out the practical and undesirable professional consequences that could result from such a broad concept of the discovery process.

While, of course, the Court in Hickman was addressing itself to material obtained by an attorney incident to the litigation then in progress, the rationale is scarcely less applicable to a case which has been closed than to one which is still being contested. The decision was not in any manner based upon the rights or posture of the litigants vis-a-vis each other.¹² Such a basis was expressly disavowed.¹³ Rather, the thrust of the decision was the qualified protection of the professional effort, confidentiality and activity of an attorney which transcends the rights of the litigants. This concern was reiterated in the final words of the Hickman opinion:

"We fully appreciate the wide-spread controversy among the members of the legal profession over the problem raised by this case. (footnote omitted) It is a problem that rests on what has been one of the most hazy frontiers of the discovery process. But until some rule or statute definitely prescribes otherwise, we are not justified in permitting discovery in a situation of this nature as a matter of unqualified right. When Rule 26 and the other discovery rules were adopted, this Court and the members of the bar in general certainly did not believe or contemplate that all the files and mental processes of lawyers were thereby opened to the free scrutiny of their adversaries. And we refuse to interpret the rules at this time so as to reach so harsh and unwarranted a result." 329 U. S. at 514, 67 S.Ct. 385, 395, 91 L.Ed. 451.

This is strong judicial language and we find no indication that the Court intended to confine the protection of the work product to the litigation in which it was prepared or to make it freely discoverable in a subsequent law suit.¹⁴ To so interpret Hickman would in our opinion elide the broad rationale of the Court's decision. Assuredly, the intrusion upon the attorney and the possibility of the demeaning professional consequences envisioned by Mr. Justice Jackson are just as objectionable in one case as the other. We are well aware of the divergent conclusions reached in similar cases¹⁵ but in all deference we think that those courts which permitted unqualified disclosure misread the basic teaching of Hickman.

On balance, we think the legal profession and the interests of the public are better served by recognizing the qualified immunity of work product materials in a subsequent case as well as that in which they were prepared, and this in our opinion comports with the statement in Hickman:

"But the general policy against invading the privacy of an attorney\'s course of preparation is so well recognized and so essential to an orderly working of our system of legal procedure that a burden rests on the one who would invade that privacy to establish adequate reasons to justify production through a subpoena or court order. That burden, we believe is necessarily implicit in the rules as now constituted" 329 U.S. at 512, 67 S.Ct. 385, at 394, 91 L.Ed. 451.

Our decision will not in any way frustrate the ends of justice. If the party seeking discovery can demonstrate the substantial...