Substance of Emails Determines Attorney-Client Privilege Protection

February 6, 2012

Jason M. Honeyman

What This Means To You

  • Captioning an e-mail as “litigation related” or “confidential”, or adding in-house or outside counsel to a distribution list, will not, by itself, shield the communication from production as attorney-client privileged or work product.
  • To ensure privilege, internal communications relating to tasks undertaken either in preparation for litigation or during a lawsuit should clearly indicate the litigation context and that the author is reporting about activities requested by or for counsel.
  • Electronic discovery is far-reaching and may surface long forgotten initial drafts that have not been coded for privilege.
  • Inadvertently disclosed, privileged or work product documents may be “clawed back” under appropriate circumstances.

Overview

In In re Google Inc., the US Court of Appeals for the Federal Circuit (Federal Circuit) denied a request from Google, Inc. to protect, as attorney-client privileged, an email Google was ordered to produce to Oracle America, Inc. during the discovery stage of Oracle’s patent lawsuit against Google.

In this case, the final e-mail had been withheld from production as privileged, but earlier drafts of the e-mail that did not include an attorney-client privileged legend had inadvertently been produced.

Background

Three weeks before Oracle filed suit, Google’s Senior Counsel Ben Lee sat through a presentation in which Oracle’s attorneys asserted that Google’s Android smartphone platform infringed Oracle’s patents. Ten days later, Lee met with Google’s General Counsel and Google engineer Tim Lindholm to strategize on how best to respond to Oracle’s infringement claims. Shortly before Oracle filed suit, Lindholm sent an email addressed to Google’s Vice President, Andy Rubin, Lee, and another Google engineer.

In the email, Lindholm indicated he had been asked by Google’s co-founders to investigate technical alternatives to Oracle’s Java operating system for Android and Chrome, and he concluded, “We’ve been over a bunch of these, and think they all suck.” The email ended with Lindholm’s recommendation that Google negotiate a license for Java, along with a suggestion that the “most credible” Java alternative be advanced as a bargaining tactic in licensing negotiations.

Google had not produced this email to Oracle in its final form, instead listing the final version on its privilege log (listing documents held back on the basis of recognized legal privileges such as attorney-client privilege and the work product doctrine). Nevertheless, periodic snapshot drafts of this email (“autosaves”) were produced in the electronic discovery process, which often includes metadata (“data about data”) that describes the history, tracking, or management of electronic documents.

The e-discovery “autosaves” revealed that Lindholm marked his email as “Google Confidential” and “Attorney Work Product” only at the last moment just before sending it. Thus, Lindholm’s initial drafts did not include any express indication of privilege and escaped detection when Google made its initial document production. After Oracle referred to the autosaved drafts in hearings before the magistrate and district court judges, Google attempted to “claw back” the drafts as attorney-client privileged or protected by the work product doctrine.

For internal investigations performed by in-house counsel, attorney-client privilege protects the giving of legal advice to those who can act on it and the giving of information to the lawyer that enables sound and informed advice. The work product doctrine protects tangible material prepared in anticipation of litigation or for trial. If privileged or work-product protected information is inadvertently produced in discovery, and the producing party notifies the opposing party of the inadvertent production, the opposing party must return, sequester or destroy the specified information. Thereafter, the producing party must preserve the information until disputes over the privileged nature of the information are resolved.

Oracle claimed the email and drafts were not protected by either the attorney-client privilege or the work product doctrine. The district court ruled that Google failed to clearly show that the email was privileged or otherwise protected, and Google turned to the Federal Circuit for relief.

Decision Analysis

The Federal Circuit agreed with the district court and dismissed Google’s argument that the email was prepared at the behest of Google’s lawyers, stating there was no indication in the email that inside or outside counsel had directed Lindholm to conduct his investigation.

Lindholm had declared that Lee had asked him to “gather information for Google’s lawyers and management to consider in evaluating technology issues related to Oracle’s infringement claims” and that his email “concern[ed] certain topics that [Google’s General Counsel] Mr. Walker and Mr. Lee had asked [him] . . . to investigate.” Lee also declared that Lindholm’s email addressed “some of the Oracle-related topics that Walker and I asked [Lindholm] to investigate.”

Nonetheless, the Federal Circuit was unmoved. The court focused on the actual content of the email – which indicated that Lindholm had been asked by Google management (not by an attorney) to look into technical alternatives to using the subject matter of Oracle’s patent. The latter activity was viewed by the Federal Circuit as relating to licensing strategies for Oracle’s patents, and not in furtherance of “[Lee’s] investigation into the infringement suit”. So, the highly prejudicial Lindholm email was fair game for Oracle to use against Google in the lawsuit.

Takeaways


This case demonstrates that relying on a heading or caption, or listing an attorney as a recipient, does not, by itself, render a document privileged – as Google learned. The better practice is to draft the e-mail to convey that the author was acting under the auspices of counsel and in connection with specified litigation or pre-litigation activities.

Additionally, this case provides a reminder that, given the archival power of today’s computers, where virtually no keystroke is forgotten, and the breadth of information that can be gleaned from metadata, special care must be given to guarding against inadvertent production of privileged information.