Privileged Documents

Had ‘Em, Lost ‘Em… Get ‘Em Back

May 4, 2007

Denyse L. Jones and Kelly W. King

DLI-6112587v2
1
 The jury is instructed to ignore the law, justice,
logic and common sense and consider only the
harmful, random memos buried among the
defendant’s records.
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 Privileged Documents
Had ‘Em, Lost ‘Em… Get ‘Em Back
1. How privileged materials get out
there.
2. How to protect what you kept.
3. How to retrieve what slipped
through
4. How to prevent slips in the future.

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 Microsoft antitrust case:
Bill Gates

“How much do I need

to pay you to screw
Netscape?”
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 FEMA

• Field rep: “Situation is past critical…

thousands gathering in the streets with no
food and water…dying patients being
medivac’d…we are running out of food and
water at the dome...critical need
everywhere...”
• Ron Brown: “thanks for the update. Anything
specific I need to do or tweak?”

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 ENRON

• EnronEmail.com: 515,000
messages
- Vendor search tool toy
- 28% unrelated to business
- “so you were looking for a one-
night stand, after all?”

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 Email about Email:

Securities case: “Shut up

and destroy this email”

ENRON: “Today is not good.

Too many documents to
shred. Tomorrow is better.”

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 The Big Picture – What is ESI?

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 The Big Picture - Volume/Cost

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 Metadata
• Jfka;jiosjoijdjkafjdkfjicvjvdjmfkahdio;jvjmdklfjd
kjkajkvjk;jdia;fjakdnfkajkgjmkaljg =
• When created
• By whom
• Sent to whom and when
• What edits made
• When might it matter:
• Contract dispute
• Trade Secrets/Non-compete
• Retaliation case 10
DLI-6112587v2
 Principal Forms of Production
for ESI
• Hard Copies – paper documents
• Images (e.g., .tif, .pdf*) – *with or without text
layer
• Data exported to databases, text files, or load
files
(e.g., .csv files, .txt files)
• Native format – data viewed in the application
in which file was created
• Hosted data – controlled-access website
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 There is absolutely no basis for plaintiff
to argue for judgment as a matter of
law and this Court should summarily
deny the motion and direct the parties
to proceed to trial.

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 There is absolutely no basis [Bob: as you
know, the Angle case arguably provides a
basis for P’s position, but they didn’t cite
it. I know you think it’s distinguishable,
but can we really say “absolutely no
basis”?] for plaintiff to argue for judgment
as a matter of law and this Court should
summarily deny the motion and direct the
parties to proceed to trial.

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 Excel
$105.23 $15.23 $10,358.23
$423.16 $25.39 $85,943.56
$528.39 $96,301.79 Remember that this
is that totally bogus
number you and I
came up with at our
meeting with Jack.

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 Privilege Review
Develop Filter Terms
• Project word list or dictionary
• Statistics
Issues:
• Names • Wildcards
• Email Addresses • Bi-directional Pairs
• Phrases
Key Advice:
Document the filter list and method.
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 The reality…

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 The reality…

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 The reality…

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 Privilege Logs

• A "housekeeping" item
• Voluminous
– delegated to low-cost labor
• Complacency: it's clearly privileged

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 Privilege Logs

• Frequently required:
1. the basics, date, sender, recipients
2. title, occupation, duties
3. how involved in transaction within
company
4. circumstances of creation
5. all direct/indirect recipients of
document OR substance
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 Privilege Logs

Date From To CCs Topic

1/3/96 Smith Jones Day Notes re Audit

Committee
Meeting

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 Work Product Doctrine
• Requirements:
• Documents
• Prepared in anticipation of litigation
• By/for party or attorney

• Disclosure:
• Substantial need
• Undue hardship

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 Attorney-Client Privilege
1. Communication
2. Made in confidence
3. To an attorney
4. By a client
5. For the purpose of seeking legal
advice

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 Privilege Logs

• Common Logistical Problems:

–Business v. Legal Hats
–Parent/Attachment
–Descriptions

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 Privilege Logs

• Tension:
–need to reveal enough detail to
substantiate privilege
vs.
–waiver of privilege through excessive
detail as to communication.

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 Privilege Logs

• Descriptions held insufficient:

–"notes of audit meeting"
–"notes of audit meeting regarding
environmental provisions of acquisition
agreement"
–"notes of audit meeting regarding legal
implications of environmental provisions
of acquisition agreement"

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 Privilege Logs

• Sufficient:
–"notes of audit meeting reflecting legal
advice as to whether ERISA precluded
certain environmental provisions of
acquisition agreement"

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 Privilege Logs

• Inadequate Log Can Constitute Waiver:

–Insufficient log = failure to meet burden
of establishing privilege
–refusal to consider in camera
–no opportunity to cure
–waiver as to ALL documents

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 Tips to Avoid Privilege
Log Problems
• do it right the first time (be sure the privilege is
applicable)
– AAlpharma Inc. v. Kremers Urban Dev. Co.
• negotiate specifics in CMO
– agreements regarding parents, email threads,
categorical descriptions
– beware of downside: categorical waiver
• get list of all lawyers/consultants at outset
• suggest use of master to resolve disputes

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 The Big Picture –
Why Should I Care?

“An attorney now risks committing malpractice or

receiving court sanctions if he or she does not
adequately understand how electronic information
is created, stored and communicated.”
Michael D. Fielding, You Need To Know This: Bankruptcy and Attorney-
Client Privilege in the Electronic Age, 25-10 ABIJ 1 (January 2007)

Model Rule of Professional Conduct 1.6(a) states

that a lawyer “shall not reveal information relating
to the representation of a client unless the client
gives informed consent, the disclosure is
authorized to carry out the representation or the
disclosure is permitted by [Rule 1.6(b)].”
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 They turned out to be
shams, coming from a file
on his computer labeled
“fake docs.”

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 5 Basic Steps

5 Basic Steps
Best Practices for ESI* Discovery:

1) Planning
2) Collection
3) Processing
4) Reviewing
5) Producing

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 How do I retrieve what
slipped through?
• FCRA Rule 26
• Zubulake
• Draft Federal Rule of Evidence 502

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 FRCP Amend. to the Rescue?

• FRCP 26(b)(5)(B): Procedure for dealing with

privileged materials inadvertently produced
• FRCP 16(b)(6): Allows the parties to make
agreements for dealing with privilege issues
• “Clawback” and similar agreements
• Incorporates reasoning from Zubulake v.
UBS Warburg, 216 F.R.D. 280 (S.D.N.Y.
2003)

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 Zubulake/Sedona Conference
to the Rescue?
• §1983 plaintiff sought 94 back-up tapes
• Plaintiff order to pay share of restoration cost
• Defendant must pay all of their privilege
review cost
• Encourages parties to come back with a
“claw-back” agreed order stating inadvertent
disclosure is not a waiver, docs should be
returned and that any notes or copies will be
destroyed or deleted (quoting Sedona Conf.)
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 Right Back to Where We Started
– Advisory Cmte Comments
• “Rule 26(b)(5)(B) does not address whether privilege
or protection that is asserted after production was
waived by the production. Courts have developed
principles to determine whether and under what
waiver results from inadvertent production….”
• “Agreements … may be considered when a court
determines whether a waiver has occurred.”
• N.B. Not a cop out – Rules cmte cannot exceed
statutory authority by creating substantive law.

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 Draft FRE 502 to the Rescue?

• Proposed in May 2005 by the Advisory Committee on

Evidence Rules
• Would adopt the middle-of-the-road approach as to
what amounts to inadvertent production; this
approach focuses on precautions taken to avoid
disclosure
• Provides that a clawback agreement incorporated in
a federal court order would bind third parties
• Requires direct enactment by Congress under Rules
Enabling Act so will not be enacted in the short term
(certainly not by Dec. 1, 2006)
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 Draft FRE 502 to the Rescue?
• Public comment period closed on 2/15/07—back to
Advisory Committee (Step 4 of 8)

Rule 502. Attorney-Client Privilege and Work

Product Limitations on Waiver
(a) Scope of waiver. — In federal proceedings, the
waiver by disclosure of an attorney-client privilege or
work product protection extends to an undisclosed
communication or information concerning the same
subject matter only if that undisclosed communication
or information ought in fairness to be considered with
the disclosed communication or information.
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 Draft FRE 502 to the Rescue?

(b) Inadvertent disclosure. — A disclosure of a

communication or information covered by the attorney-
client privilege or work product protection does not
operate as a waiver in a state or federal proceeding if the
disclosure is inadvertent and is made in connection with
federal litigation or federal administrative proceedings —
and if the holder of the privilege or work product
protection took reasonable precautions to prevent
disclosure and took reasonably prompt measures, once
the holder knew or should have known of the disclosure,
to rectify the error, including (if applicable) following the
procedures in Fed. R. Civ. P. 26(b)(5)(B).

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 “3” Approaches for Accessing
Inadvertent Disclosure
“Specifically, three distinct positions have been
taken by the courts:” (Hopson)

1. “Strict Accountability”/Absolute waiver

– E.g., In re Sealed Case, 877 F.2d 976 (D.C.Cir. 1989)
– Tax evasion case ∆ errantly (agreed) disclosed 1 of 6
privileged memos.
– “[W]e do not think it matters whether the waiver is
‘inadvertent’… .”
– To hold, as we do, that an inadvertent disclosure will waive the
privilege imposes a self-governing restraint” to be overly
inclusive on labeling documents as privileged. “To readily do
so creates a greater risk of "inadvertent" disclosure by
someone… .”
– Subject matter waiver…all 6 memos were held waived.
– Other jurisdictions (1st Cir., D.Me., N.D.Ind., D. Mass., N.D.Ga.,
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and?) 40
 “3” Approaches for Accessing
Inadvertent Disclosure
2. “Lenient Approach”
– E.g., Ciba-Geigy Corp. v. Sandoz, Ltd., 916
F.Supp. 404, 410-11 (D.N.J. 1995) (analyzing
whether truly inadvertent—no waiver)
– Other jurisdictions (8th Cir., D.Colo., N.D. Ill.,
S.D. Fla, D.Del., D.Neb.)

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 “3” Approaches for Accessing
Inadvertent Disclosure (con’t)
3. “Middle”/Balancing Approach
– E.g., Minatronics Corporation v. Buchanan Ingersoll, 23 Pa. D. &
C.4th 1 (Pa. Ct. Com. Pl. 1995)
– No waiver if:
– the disclosure was inadvertent
– A/C privilege application would still offer some protection
– counsel took reasonable steps after learning of the mistake
– recipient will not be prejudiced by non-use order.
– Holding: Not waived
– Little analysis (mainly rejecting subject matter waiver argument that
intentional production of portions of lawyers’ file waived all
documents in that file).
– …But “[d]ecisions amount to a minefield of nuanced, slightly
differing opinions.” Herman Goldner v. Cimco Lewis, 58 Pa. D. &
C.4th 173 (Pa. Ct. Com. Pl. 2002).
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 Herman Goldner Inadvertent
Waiver Analysis
• Minatronics /Balancing Approach – No waiver if:
– the disclosure was inadvertent
– A/C privilege application would still offer some protection
– counsel took reasonable steps after learning of the inadvertent
production, and
– recipient will not be prejudiced by non-use order.
• Herman Goldner/Balancing Approach – Considers:
– the reasonableness of the precautions taken to prevent disclosure
– the inadvertence, extent and number of the disclosures
– Time frame and steps taken after learning of disclosure, and
– Fairness/Justice: Utility of post-disclosure privilege and prejudice to
recipient

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 Herman Goldner Inadvertent
Waiver Analysis
Herman Goldner
Considers:
– the reasonableness of the precautions taken to prevent disclosure
– the inadvertence, extent and number of the disclosures
– Time frame and steps taken after learning of disclosure, and
– Fairness/Justice: Utility of post-disclosure privilege and prejudice to recipient
Held: No waiver
– Discloser took “some [unidentified], though not overwhelming precautions
attributable to satisfying opponents request for speedy production prior to
deposition was in favor of disclosure
– 21 docs completely disclosed v. bare representation of mistake was “a wash”
– Discloser acted within one day of become aware of mistake
– Precluding use by recipient was viable remedy where recipient showed no
evidence of prejudice
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 Rule 26.
General Provisions Governing
Discovery; Duty of Disclosure.
(5) Claims of Privilege or Protection of Trial Preparation Materials.
(A) Information withheld. When a party withholds information otherwise discoverable
under these rules by claiming that it is privileged or subject to protection as trial
preparation material, the party shall make the claim expressly and shall describe the
nature of the documents, communications, or things not produced or disclosed in a
manner that, without revealing information itself privileged or protected, will enable
other parties to assess the applicability of the privilege or protection.
(B) Information produced. If information is produced in discovery that is subject to
a claim of privilege or protection as trial-preparation material, the party making
the claim may notify any party that received the information of the claim and the
basis for it. After being notified, a party must promptly return, sequester, or
destroy the specified information and any copies it has and may not use or
disclose the information until the claim is resolved. A receiving party may
promptly present the information to the court under seal for a determination of
the claim. If the receiving party disclosed the information before being notified,
it must take reasonable steps to retrieve it. The producing party must preserve
the information until the claim is resolved.
* * *
DLI-6112587v2 45 (cont.)
 Planning

Key Advice:

• Rule 26 Conference

• Clawback Agreement

• Education

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 Morals of the ESI Story
• Know the rules and applicable case law
• Plan Ahead
• Make early detailed agreements with opponent
• Don’t start process without attempting above
• Employ Best Practices (“reasonable
precautions”)
• Incorporate Claw-Back Safety-Net Into Court
Order
• Act Quickly Upon Any Inadvertent Disclosure

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 Early Attention to eDiscovery
Issues: Rule 26(f)
• Under Rule 26(f), the parties must confer prior to Rule 16
conference
• Revised Rule 26(f) invites the parties to discuss issues
relating to:
• Preserving discoverable information
• Disclosure of ESI
• Form of production for ESI
• Inadvertent disclosure
• Purpose – to force early discussion about preservation
and production to minimize difficulties and disputes later
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 Agreements Related to
Privilege
• Committee Notes to Rules 16 and 26 invite the
parties to reach agreements concerning privilege
• Recognition that, because of the volume that is
created when electronic data is involved, engaging in
detailed review to identify and withhold for privilege
increases the expense of discovery and creates
additional delays
• Existence of metadata adds complexity to privilege
review
• Notes specifically mention “quick peek” and
“clawback agreements”
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 Quick Peek Agreements’
Characteristics
1. Request for ESI propounded
2. Responding party produces files for inspection
without waiving privilege
3. Requesting party designates the files it wishes
to have produced but keeps no copies
4. Responding party then reviews only the subset
designated and logs privileged files, withholds
them from production, and produces the non-
privileged files

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 Clawback Agreements’
Characteristics
• Parties agree that even though there has been an initial
review and withholding on grounds of privilege, if there is
inadvertent production of privileged documents, then
• producing party will notify of its production and ask for
its return
• receiving party will return and not use
• Should expressly provide that parties acknowledge that
steps have been taken to protect privilege and that any
production of privileged material is deemed inadvertent
and does not amount to a waiver; enforceability of this
provision, however, is not guaranteed in light of proposed
Rule 26(b)(5)(B)
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 Clawback Agreement –
Rule 26(b)(5)(B)
• Revised Rule 26(b)(5)(B) allows parties to assert privilege
or work product protection after production.
• Attempt to codify a “clawback agreement”
• Parallels the provisions in Rules 16 and 26(f)
• After being notified, the receiving party must return or
destroy, unless the receiving party wants to present the
issue to the court for a determination of whether the
production was inadvertent or not, in which case the
receiving party must sequester the material received until
the court rules
• Purpose – recognition that there is a substantial risk of
inadvertent disclosure based on volume of electronic data
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 Problems with Clawback
Agreements and Rule 26(b)(5)(B)
• Revised Rule merely preserves issue for court to
decide under the law of the jurisdiction
• Courts apply three approaches to inadvertent
production:
1. Strict – any voluntary disclosure waives privilege
2. Lenient – attorney negligence does not waive
privilege, and gross negligence may
3. Middle-of-the-road – balances factors including
the reasonableness of the precautions taken and
time to rectify the disclosure

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 Plan Your Privilege Review
• Evaluate best tools and procedures for
performing privilege review prior to
production
• Educate reviewers, staff and vendors
together for consistency

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 “Never write when you can
talk. Never talk when you
can nod. And never, ever,
ever use email.”

Elliot Spitzer
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