On May 6, 2019, a magistrate judge in the Southern District of New York ruled that emails exchanged among a company, its attorneys, and its public relations firm were neither privileged nor protectable attorney work product.

In July 2018 Universal Standard Inc., a “size-inclusive” women’s clothing brand, sued Target Corporation for trademark infringement and unfair competition. Universal Standard alleged that Target’s sale of a size-inclusive line of women’s clothes—under the brand Universal Thread—constituted willful infringement and an unlawful use of its “brand concept”.

During discovery, Target acquired the emails at issue in response to a subpoena it had served on Universal Standard’s public relations firm, BrandLink. When Target attempted to address the contents of the emails during a deposition, Universal Standard objected on privilege grounds, shut the questioning down, and demanded that Target return or destroy the emails. But Target rejected Universal Standard’s demand and instead filed a motion requesting that the court find the emails neither privileged nor protected by the work product doctrine. Specifically, Target made three arguments: (1) Universal Standard waived any privilege by failing to include required information in its privilege log, (2) Universal Standard also waived privilege by exchanging the emails with BrandLink, a third party, and (3) the emails were not protected attorney work product.

In response, Universal Standard argued that Target’s motion should be denied for multiple reasons. Universal Standard’s initial argument—that Target’s motion should be denied because none of the emails were relevant—was easily rejected. As Target already had possession of the emails, the court noted that it need only find that one of the emails was relevant. Accordingly, after reviewing the emails, and finding one (if not more) relevant, the court turned its attention to Target’s two waiver arguments.

Considering whether waiver flowed from Universal Standard’s failure to include in its privilege log all of the information required under the Local Rules, the court noted that only “flagrant” violations of this type result in waiver. And it strongly hinted that it might find just that in this case. At one point, in fact, the court labeled Universal Standard’s explanation for why it didn’t include certain information in the privilege log “nonsensical.” In the end, though, the court elected not to reach the issue, finding it was unnecessary because the emails were not entitled to protection either as privileged or under the work product doctrine.

The attorney-client privilege is intended to protect confidential communications between attorney and client for the purpose of obtaining legal advice. Here, however, no one disputed that the emails at issue had been exchanged not just between attorney and client, but also with a third party, BrandLink. Accordingly, the court started its analysis of the privilege issue by noting that while the “general rule” is that disclosing otherwise privileged information to a third party waives the privilege, there are numerous exceptions to that rule. And here, the court considered three possible exceptions to finding waiver, but (spoiler alert) found that none applied.

The first exception the court discussed was where the third party’s presence was necessary to facilitate communication between the attorney and the client. The court concluded that this exception did not apply because BrandLink’s involvement in the communications reflected in the emails was purely to address how to handle the public relations issues surrounding any litigation, not to assist in the communication of legal advice.

The second exception addressed by the court is where the third party, normally an independent contractor, is was the “functional equivalent” of an employee. The court discussed other cases where this exception had been applied, noting that it was typically in situations where the independent contractor had independent decision-making authority and could be considered a de facto employee. The court concluded that BrandLink’s decision-making authority was very limited in scope and Universal Standard maintained significant supervision over the firm’s output. Accordingly, it found that the “employee” exception did not apply.

The third exception the court considered is where the third party is a consultant used by an attorney to assist in handling a client’s legal problems. Again, however, the court found the exception did not apply because BrandLink was hired for business purposes, not to aid in handling Universal Standard’s legal problems.

Lastly, the court considered whether the emails were protected by the work product doctrine. For the doctrine to apply, the court observed, Universal Standard would have to show that the emails were prepared in anticipation of litigation. The court noted, however, that Universal Standard confined its argument to a single sentence, which it characterized as “simply a conclusory recital of the governing test.” Therefore, the court found that Universal Standard failed to establish that the emails were protected by the work product doctrine.

The case is Universal Standard Inc. v. Target Corp., No. 18-cv-6042 (S.D.N.Y. May 6, 2019).