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Dec 20 2010

NY Court: Attorney E-mails to Third Parties Are Not Protected Work-Product

It used to be that rug merchants aired their disputes in the bazaar but no more, now they engage in Federal litigation.  And in a decision from the Southern District of New York from last week, one rug merchant’s lawyer exposed his internal memorandum and letters, which he had sought to protect as confidential by sharing them with a third party.  While this may sound fairly routine, attorney client privilege is broken when you include a third party, what’s important about the case is that the several steps the lawyer took to try to protect this information were insufficient.

In  Samad Brothers v. Bokara Rug Co., Inc., the plaintiff Samad was a rug distributor who sued another for allegedly violating Samad’s copyrighted rug designs. Samad claimed that the copyright in the rug designs were assigned to him by the designer, a man named Kapoor (who was not involved in the suit).  The only problem was that the written assignment of copyright, prepared by Samad’s lawyer, was not prepared until after the litigation began.  So Bokara served a subpoena on Kapoor for a variety of  documents including communications between Samad’s lawyer, named Kaufman, and Kapoor.  Kaufman helped Kapoor prepare the response to the discovery  demand and even had “Prepared by counsel: “Kaufman & Kahn” added to the bottom of the response. Yet several times in the litigation Kaufman had asserted that he was not Kapoor’s attorney.   In the response, Kaufman objected to the demand for emails between himself and Kapoor (there were 48 of them) asserting the  “attorney-work product” privilege. Generally speaking, the attorney work product doctrine provides qualified protection for materials prepared by or at the request of counsel in anticipation of litigation or for trial. It is predominantly invoked to protect an attorney’s litigation strategy and mental impressions about a case.

Kaufman claimed that he had done several things to “make” these emails attorney work product. First he labeled them “Attorney Work-Product.” Of course the court shot this down by saying that allowing this to be a factor would allow attorneys to slap “privileged” labels on documents that were not otherwise privileged. Second, he told Kapoor not to share the emails with anyone as they were privileged.  The court was not impressed by that assertion either; the court also noted that in some of the disputed emails, Kaufman stated to Kapoor that, while he was helping him draft the responses, he was not acting  as his attorney.  Finally, Kaufman stated that the emails were part of his investigation into his client’s claims and that therefore they were his work product. The court stated that the emails were to a key third party witness not to a client and that Kaufman should have had no expectation that the emails would be protected as he knew that Kapoor was an integral witness to both sides. The court required Kaufman to turn over the 48 emails.

While the court did not specifically state what was in the emails, by virtue of the manner in which Kaufman fought to protect them, one can assume that they contained vital strategy points and opinions of counsel that he did not want the other side to see.  With all due respect, Samad’s attorney made several mis- steps that caused this result:

(1) He filed the copyright infringement claim  before he had a written assignment form the designer assignment.  That should have been ten care of prior to litigation as the fact that it was prepared afterward opened the door to looking for the documents that led up to its signing;

(2) He assisted Kapoor in preparing the discovery responses yet insisted in court several times that he was not acting as Kapoor’s attorney. This inconsistent position hurt his chances to protect the content. He could not assert the stronger privilege of  attorney-client communication because Kapoor was not his client. If he was not his client, then why add that he had prepared the discovery responses to the bottom of the discovery responses? He should have had Kapoor retain his own separate attorney and then he should have communicated only with the attorney increasing the likelihood that those exchanges would be attorney work product. In the alternative, he should just simply have served as Kapoor’s attorney as well since there was no conflict because Kapoor agreed he had assigned his rights to Samad;

(3) Without a clear right to assert privilege, he put his thoughts and strategy in  emails to a third party.  That’s a no-no. If you need to communicate this information to a third party, pick up a phone. While the conversation is still as discoverable as the email, the email is forever and not subject to interpretation. Lawyers cannot forget that emails are formal communications that can bind them and be used a evidence in cases in which the lawyers become involved. Clients should be reminded of that as often as possible.

So the defendant now gets to read 48 emails between his adversary and the principle witness in the case. maybe they will reveal nothing, but maybe they will reveal weaknesses in plaintiff’s case; strengths that defense counsel did not know about; the existence of further documents and evidence that could help/hurt the case, etc etc.  It’s like looking in a trial lawyer’s litigation bag on the eve of trial.

The moral of the story is plan ahead and only share strategy and opinion with your certified clients.

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