An Essential Guide to
Privilege and Work Pro
In-House Practitioner
BY BRIAN J. CHRISTENSEN &
BRET G. WILSON1
Brian J. Christensen
Spencer, Fane,
Britt & Browne, LLP
Kansas City
Bret G. Wilson
Kansas City
I. Introduction
The attorney-client privilege is one of
the cornerstones of the attorney-client
relationship. Attorneys depend on the
privilege to ensure full, uninhibited
disclosure of critical information and
imparting of candid advice. However,
the protections of the privilege are more
limited than most attorneys realize
and can be lost through disclosure of
privileged communications. Despite
the privilege’s long-standing history,
conflicts still regularly arise regarding its
applicability, and the law governing its
scope and waiver continues to evolve.
In-house counsel face unique
challenges with respect to the attorneyclient privilege. They serve as lawyer
and company employee, offer legal and
business advice, and communicate with
numerous persons at all levels of an
organization on topics both legal and
non-legal. Outside counsel generally
enjoy a bright line demarcation between
attorney and client. By contrast, inhouse counsel often are perceived to
be – or are in fact – “the client” acting
in a business role as well as in the role of
attorney.
In the current era of close scrutiny
of corporate conduct, many entities
and their counsel are being placed in
the position of having to risk waiver
of the privilege to satisfy auditors or
regulators.2 This article is intended to
82 / Journal of the MISSOURI BAR
provide in-house practitioners with
guidance on how to avoid conduct in
which they may unintentionally waive
the privilege. While this article focuses
most generally on applicable Missouri
law, the principles discussed are, for the
most part, generally applicable in many
jurisdictions.
II. The Attorney-Client
Privilege and Work Product
Doctrines and Their
Applicability In the Corporate
Setting
A. The Attorney-Client Privilege
Generally
“The attorney-client privilege is
one of the oldest recognized privileges
for confidential communications.”3 It
“protects ‘confidential communications
. . . between an attorney and . . . client’
concerning representation of the
client.”4 “By assuring confidentiality,
the privilege encourages clients to make
‘full and frank’ disclosures to their
attorneys.”5
There is no privilege for
communications simply because they
are made to or by an attorney.6 For
the attorney-client privilege to attach
to a communication, there must be
an actual relationship of attorney and
client in existence at the time of the
communication, and that relationship
must exist with respect to the subject
Attorney-Client
roduct for the
matter of the communication.7 “[A]n
attorney-client relationship is . . .
established when the advice and
assistance of an attorney is sought and
received in matters pertinent to her
profession”8 “from a lawyer who intends
to give [such] advice and assistance.”9
A formal retainer agreement is not
necessary.10 “It is the client’s reasonable
belief that [the] attorney is representing
him” or her on the matters to which the
communication relates and the client’s
expectation that the communication
will remain confidential that forms the
“basis for the privilege.”11 Accordingly, a
communication is not privileged if it is
made in public12 or within the hearing
of third persons other than those
reasonably necessary to the transmission
of the communication.13
Under Missouri law, “the attorneyclient privilege is to be construed
broadly to [promote] its fundamental
policy of encouraging uninhibited”
attorney-client communications.14
The attorney-client
privilege[, codified in
§ 491.060(3), RSMo,]
attaches to: (1) Information
transmitted by [a] voluntary
act of disclosure; (2) between a
client and his [or her] lawyer;
(3) in confidence; and (4) by
a means which, so far as the
client is aware, discloses the
information to no third parties
other than those reasonably
necessary for the transmission
of the information or for
the accomplishment of the
purpose for which it is to be
transmitted.15
“All four . . . elements must be
present for the privilege to apply.”16
If there is a question as to whether
one of the elements has been satisfied,
courts review the surrounding facts and
circumstances to assist with determining
the applicability of the privilege.17
The privilege encompasses both oral
and written communications18 as well as
other kinds of communications passing
between attorney and client by reason
of the attorney-client relationship.19
It protects only disclosure of the
communications, not the “underlying
facts by those who communicated with
the attorney.”20
“The privilege may be invoked by
either the attorney or the client, [but]
it exists ‘for the benefit of the client.’”21
The privilege gives the client the right
“to refuse to disclose, and to prevent
others from disclosing, confidential”
information passed between the
attorney and the client.22
The attorney-client privilege
attaches to communications made
to an attorney’s agents if intended
for transmission to the attorney.23
No privilege attaches, however, to
communications between an attorney
(or an attorney’s agent) and a third
person, even though made on behalf of
a client.24 Similarly, unless it is clear that
a third person is an agent of either the
lawyer or the client, the privilege does
not attach to communications between
the client and a third person employed
by the client directly25 or employed
March-April 2012 / 83
on the client’s behalf by his or her
attorney.26
Where information believed to be
privileged is sought during litigation,
the party that asserts the privilege
bears the burden of showing that it
applies.27 Once the party establishes
that a particular communication is
privileged, that communication is
absolutely privileged and may not be
revealed even if there is a substantial
need for it.28
B. The Work Product Doctrine
Generally
The work product doctrine is
distinguishable from the attorneyclient privilege. It is not a privilege.
Rather, “[t]he work product [doctrine]
precludes an opposing party from
discovering materials created
or commissioned by counsel in
preparation for [actual or anticipated]
litigation.”29 “While the attorneyclient privilege protects disclosures
by the client to the attorney and is
absolute in” most situations, the work
product doctrine is much less absolute
in that it “‘is designed to prevent a
party from reaping the benefits of his
opponent’s labors . . . for the same or
a related cause of action.’”30
A majority of courts have adopted
a “because of ” test for determining
whether materials were “prepared in
anticipation of litigation.”31 Under
this approach, courts will find the
work product doctrine applicable
if, “in light of the nature of the
document and the factual situation of
a particular case, the document can
fairly be said to have been prepared
or obtained because of the prospect of
litigation.”32
Rule 56.01(b), governing the scope
of discovery, codifies the work product
doctrine in Missouri. It provides in
relevant part: “Parties may obtain
discovery regarding any matter, not
privileged, that is relevant to the
84 / Journal of the MISSOURI BAR
subject matter involved in the pending
action.”33 Blanket assertions of work
product are insufficient to invoke
its protection.34 “The party seeking
discovery has the burden of showing”
that the sought after materials are
relevant.35 Once that has been done,
the party claiming the protections of
the work product doctrine has the
burden of showing that the doctrine
is applicable.36 “To invoke [work
product] protection . . ., the party
opposing discovery must establish,
through competent evidence, that
the materials sought to be protected
are documents or tangible things
prepared in anticipation of litigation
or for trial, and were prepared by or
for a party or a representative of that
party.”37 “Competent evidence” may
include a privilege log and affidavits
from counsel.38 The mere possibility
of litigation is also “not sufficient
to invoke the doctrine”,39 but it can
be invoked to prevent disclosure of
materials that relate to litigation that
has not been actually commenced.40
The doctrine does not encompass
communications between an attorney
and opposing counsel.41
“The doctrine generally protects
both tangible work product
(consisting of trial preparation
documents such as written statements,
briefs, and attorney memoranda) and
intangible work product (consisting
of mental impressions, conclusions,
opinions, and legal theories of an
attorney . . . – sometimes called
‘opinion work product’) from
disclosure.”42 “Protection of [opinion]
work product exists independently
of Rule 56.01(b)(3).”43 The work
product doctrine provides absolute
immunity against the disclosure of
opinion work product, both tangible
and intangible.44
Non-opinion trial preparation
materials may be discovered only if
the party seeking discovery shows a
substantial need for the material in
the preparation of the case and an
inability to obtain the substantial
equivalent without undue hardship.45
Substantial need exists when the
material for which discovery is sought
has a material influence on the
litigation.46
C. The Attorney-Client Privilege
and Work Product Doctrine in the
Corporate Setting
It is now well-established that
the attorney-client privilege applies
to corporations as well as to
individuals.47 “In a corporate context,
in-house counsel can serve as the
client when communicating with
outside counsel, or as ‘attorney-legal
advisor’ when communicating with
personnel within the organization.”48
Communications with in-house
counsel in the role of attorney-advisor
are afforded the same protection as
outside counsel, but communications
conveying business (as opposed to
legal) advice are not protected by
the privilege.49 Courts often require
that in-house counsel make a “clear
showing” that communications were
made for a legal purpose, rather than a
business purpose.50
1. The Control Group Test,
Upjohn and Variants
Not only must the communication
regard legal versus business advice,
it must be made to a person within
the company who is deemed a client
by the law. Historically, courts
applying the attorney-client privilege
to corporations have struggled
to determine which corporate
employees should be considered
the client. Courts often have found
the interaction between high-level
officers and corporate counsel to
best resemble a traditional attorneyclient relationship deserving of
protection. These courts applied a
test known as the “control group”
test that designates only upper-level
management as the client of the
corporate counsel, and thus only
protects communications between
upper-echelon management and the
attorney.51
In 1981, the United States Supreme
Court rejected the control group
test for federal cases in Upjohn Co.
v. United States.52 Upjohn created
a less structured definition of the
corporate client, looking to what
motivated the lawyer to seek out or
to impart information. In place of
the control group test, the Court
laid out five factors to guide federal
courts in determining the validity
of attorney-client privilege claims
for communications between legal
counsel and lower-echelon corporate
employees: (1) the information is
necessary to supply the basis for
legal advice to the corporation or
was ordered to be communicated by
superior officers; (2) the information
was not available from “control
group” management; (3) “[t]he
communications concerned matters
within the scope of the employees’”
duties; (4) the employees were “aware
that they were being questioned
in order [for] the corporation” to
secure legal advice; and (5) “the
communications were considered
‘highly confidential’ when made”
and kept confidential.53 When these
elements are met, even a lower
echelon employee is considered a
client protected under the attorneyclient privilege.54 The test developed
in Upjohn does not distinguish
between an agent’s position or degree
of decision-making responsibility,
and instead focuses on whether the
employee provided information to the
lawyer or received assistance from the
lawyer on behalf of the organization.
Although Upjohn is controlling in
federal courts applying federal law,
state courts and federal courts sitting
in exercise of diversity jurisdiction are
not bound by the Upjohn decision and
have adopted various tests for defining
the organizational client. Additionally,
the current Restatement (Third)
of the Law Governing Lawyers
adopts a pre-Upjohn test known as
the “subject matter” test.55 Under
the subject matter test, the privilege
extends to communications of any
agent or employee of the corporation
so long as the communication
relates to a subject matter for which
the organization is seeking legal
representation.56 By contrast, under
the Upjohn test, the subject matter of
the communication is just one factor
to consider.
States across the country apply
different tests to analysis of the
attorney-client privilege in the
corporate context.57 Alabama,
Arizona, Arkansas, Colorado, Nevada,
Oregon, Texas and Vermont have
explicitly adopted the test articulated
by Upjohn.58
The more limited control group
test is still used in at least eight states
– Alaska, Hawaii, Illinois, Maine,
New Hampshire, North Dakota,
Oklahoma, and South Dakota –
despite the harsh results it sometimes
yields.59 In a recent Illinois case
applying the control group test, the
court held that interviews conducted
by the defendant’s managers at the
direction of in-house counsel were
not privileged. 60 The court reasoned
that the interviews were not protected
from disclosure because the witnesses,
including a director of clinical
services responsible for overseeing
and managing all bio-medical
service contracts, were not “involved
in decisionmaking at the highest
levels,” and the communications
were not made for the purpose of
expressing recommendations to top
management.61
(1) the communication was
made for the purpose of
securing legal advice;
(2) the employee making the
communication did so at
the direction of his [or her]
corporate superior; (3) the
superior made the request
so that the corporation
could secure legal advice;
(4) the subject matter of the
communication is within
the scope of the employee’s
corporate duties; and
(5) the communication is not
disseminated beyond those
persons who, because of the
corporate structure, need to
know its contents.63
By contrast, Missouri courts apply a
modified version of the subject matter
test.62 In Missouri, communications
between a corporation’s in-house
counsel and its directors, officers and
employees will be privileged if:
2. Choice of Law Issues
In addition to the fact that
the law governing privilege varies
among jurisdictions, the question
of which state’s privilege laws will
govern in a particular dispute also
March-April 2012 / 85
is jurisdiction dependent. This
circumstance frequently arises where
the communication at issue occurred
in a jurisdiction with a different test
than the one in which the dispute
is pending. In this situation, a court
frequently will apply the choice-oflaw rules of the state in which the
court sits to determine which privilege
law should apply to a particular
communication.64
A federal court sitting in diversity
normally will apply the privilege law
of the state in which it sits.65 State
courts have adopted a variety of
different tests to resolve choice-of-law
issues concerning the application of
privilege. Perhaps the most prevalent
test is that of the Restatement
(Second) of Conflict of Laws.
The Restatement approach generally
focuses on the jurisdiction having the
most significant relationship to the
communication, which typically is
defined as that jurisdiction where the
communication took place.66 Because
the law varies widely from state to
state, it is critical to understand the
test applied by each jurisdiction in
which an attorney practices.67
III. Special Situations Unique
to the In-House Practitioner
The attorney-client privilege may
be waived by almost any voluntary
disclosure running contrary to its
assertion.68 In the corporate context,
there are a number of special
situations where corporations may be
considered to have made a voluntary
disclosure, and, in these situations, the
protection of the privilege will be lost.
A. Internal Audit
One issue that frequently
arises during corporate internal
investigations is whether an audit
committee or special litigation
committee and its counsel may
communicate investigation findings
and related investigatory materials
to the company’s board of directors
86 / Journal of the MISSOURI BAR
without waiving otherwise applicable
privileges. An audit committee or
special litigation committee may
establish an attorney-client privilege
with counsel engaged by the
committee.69 This is the prevailing
view among jurisdictions that have
considered this issue.70 However, some
courts have held that communications
between counsel for the special
committee and the company’s board
of directors are not privileged.71
For example, in SEC v. Roberts the
court required disclosure of all factual
information that counsel for the
special committee had provided to the
government or the board regarding
the internal investigation because
not only is the Board not [the
special committee counsel’s]
client such that the attorneyclient privilege does not
attach, the Board also does
not have a common interest
with the Special Committee
since it was the Special
Committee’s mandate to
ascertain whether members
of the Board … may have
engaged in wrongdoing.72
To avoid disclosing confidential
information learned during internal
audits, in-house counsel must develop
clear procedures that members
of special committees and their
counsel can follow to ensure that
communications and work product
remain confidential and protected.
B. External Audit
At least in part due to various
recent scandals that have colored the
corporate landscape in recent years,
corporations are under pressure to
make broad disclosures to outside
entities such as independent auditors.
Likewise, auditors are becoming
more demanding, sending more
burdensome engagement letters
and issuing more expansive requests
during audits – such as seeking
internal audit letters, board minutes,
assessments of litigation reserves or
accruals by in-house and outside
counsel, tax opinions, and results of
internal investigations.
In general, an outside auditor is
considered a non-privileged party
under federal law, because the interests
of independent auditors are not
aligned with the corporation.73 United
States v. Textron, referenced in § I
above, exemplifies the rigidity of this
rule. As a result, disclosures to outside
auditors risks waiver of the privilege.
In contrast with federal law,
several states provide varying degrees
of protection for communications
between auditors/accountants
and their clients. For example, the
Missouri legislature has enacted
an accountant-client privilege.74
Under that privilege, information
communicated by the client to an
accountant in connection with the
accounting issue and/or audit is
protected and privileged in order
“to create an atmosphere where
the client will provide all relevant
information to the accountant
without fearing future disclosure in
subsequent litigation.”75 There is not
a significant body of law on the issue
of whether Missouri’s statute applies
in the context of a corporation and its
external auditors. However, a recent
federal case suggests that Missouri will
protect communications between a
corporation and its external auditor.76
Corporations must proceed carefully
when working with external
auditors. Until federal regulators or
courts adopt a universal standard
protecting disclosure of privileged
materials to outside auditors,
corporations will continue to be put
in a position of having to make a
Hobson’s choice: Failure to disclose
protected information may lead to
a qualified opinion or liability for
misrepresentation, but disclosure may
waive the attorney-client and work
product protections.
C. Corporate Investigations
It is common for corporations
to conduct internal investigations
regarding matters that come to
the attention of management.
The materials created during the
investigation are often later sought
by a government subpoena or civil
discovery request.
While many communications
regarding an internal investigation
may be privileged, there is no absolute
protection over the facts garnered
during an internal investigation. As
for the communications themselves,
the attorney-client privilege does
not apply unless the predominant
intention of the communication is to
obtain or to offer legal advice.77 By
contrast, the work product protection
may be preserved even if a substantial
portion of the investigative document
relates solely to business matters.78
When reviewing privilege claims
asserted over communications from
investigations, courts will examine
whether the investigation was
conducted primarily or solely for the
purpose of rendering legal advice
versus business advice79; whether
the investigation was conducted by
an attorney providing legal advice
rather than by an attorney acting
solely as an investigator or by nonlegal personnel80; and whether the
investigation was conducted in
anticipation of imminent litigation or
as a routine matter in response to the
always present concern that litigation
is possible.81
specific and often are disputed.
For example, courts frequently
have extended the attorney-client
privilege to communications made
to investigators who have provided
necessary assistance to attorneys
and to interviews between in-house
counsel and employees.83
A critical component of most
internal investigations is interviewing
employees regarding their knowledge
of relevant events. Memoranda
generated by interviews conducted
in anticipation of litigation generally
are deemed work product. However,
verbatim or near verbatim statements
(i.e., notes that attempt to track
the actual statements made by
the witnesses) often are held to be
discoverable because the opposing
party demonstrates substantial need
and undue hardship with respect to
the witness statements. Therefore, it
is preferable for witness interviews to
be drafted as summaries of witness
statements that do not attempt to
recite any statements verbatim.82
While an investigator’s
communications with in-house
counsel made in preparation for
litigation are usually protected
by the work product doctrine,84
investigations “prepared in the
ordinary course of business” usually
are not. 85 For example, the Missouri
Court of Appeals decided an
investigator’s communications with
in-house counsel for the Board of
Healing Arts were not privileged even
though the corporation’s in-house
counsel was present when the board
commenced the investigation, advised
the board’s staff on how to conduct
the investigation, communicated
with the investigator throughout the
investigation, and reviewed evidence
obtained in the investigation.86 The
court concluded that the attorney’s
involvement in the investigation
did not shield the investigative
reports from discovery, noting that
only actual, direct attorney-client
Courts have allowed privilege
to attach in certain circumstances
where non-legal employees act at the
behest and direction of an attorney,
the boundaries of which are fact-
March-April 2012 / 87
communications are privileged.87
Because the board regularly investigated
complaints in its ordinary course of
business, the attorney-client privilege
did not apply.
Corporations concerned about
maintaining the confidentiality of
investigative materials should consider
delegating investigations to outside
or in-house counsel, rather than to
non-legal personnel.88 Unless there
is a compelling reason to do so, the
company should not take verbatim
statements or have statements signed
by employee witnesses over which they
intend to assert the privilege. Instead,
counsel should consider summarizing
information provided by witnesses and
drafting memoranda that weave in
the attorney’s mental impressions and
opinions.89
C. Disclosure to Government
Entities
Recently, there has been increased
pressure on corporations to disclose
privileged information to be deemed
“fully cooperative” with government
investigations. For example, in
August 2011, the Securities and
Exchange Commission (SEC) revised
its Enforcement Manual to allow
investigators to request privilege waivers
with senior agency approval.90 However,
a voluntary presentation of privileged
information to the government, even if
intended to avoid the filing of charges,
can waive the attorney-client privilege.
The 8th Circuit presently recognizes
a selective waiver doctrine, under
which producing internal reports to
government agencies may not waive
attorney-client privilege as to private
litigants.91 However, the clear trend
– and the majority rule under federal
law – is that waiver to one government
agency may constitute waiver to all,
including other government agencies
and private litigation adversaries.92
For example, in In re Sulfuric Acid
Antitrust Litigation, the court held
that defendants waived any claim of
88 / Journal of the MISSOURI BAR
privilege by producing documents to
the Department of Justice pursuant to a
subpoena.93 In many courts, disclosure
to the government waives the privilege
even when the disclosing party has
entered into a confidentiality agreement
with the government.94
sufficiently aligned for the privilege
to be maintained.97 Some courts have
rejected the extension of a privilege
to insurer/insured communications
on the additional ground that such
communications are made for a business
and not a legal purpose.98
Although disclosure of privileged
materials to the government can waive
the attorney-client privilege and work
product protections, Federal Rule of
Evidence 502 may limit the scope of
such waiver. Under Federal Rule of
Evidence 502(a),
Missouri, however, has found that
communications between an insured
and its liability insurer generally are
privileged.99 This privilege covers a
broad range of communications. For
example, it covers any communications
between a client and attorney even if no
action has been filed against the insured
and no attorney has been employed
in reference to the occurrence.100
An incident report provided to an
insurer will be found to be privileged
if it was made in contemplation of
its use in litigation.101 This insured/
insurer privilege, however, is limited to
communications as opposed to facts or
business records.102 It may be invoked
by the insurer or the insured but can be
waived only by the insured.103
when [a] disclosure made in
a federal proceeding or to a
federal office or agency …
waives the attorney-client
privilege or work-product
protection, the waiver
extends to an undisclosed
communication or information
in a federal proceeding only if:
(1) the waiver is intentional;
(2) the disclosed and
undisclosed ucommunications
… concern the same subject
matter; and
(3) they ought in fairness to be
considered together.
Also, the rules provide that an
inadvertent disclosure of protected
information will not result in a subject
matter waiver except in a situation
where a party intentionally puts
protected information into litigation in
a selective and misleading manner.95
D. Communication with an Insurer
Where an insured communicates
with an insurer for the purpose
of establishing a defense, several
courts have held that an insured’s
communication with its insurer
remains privileged, at least where the
communication is made for the specific
purpose of obtaining legal advice
for the provision of counsel.96 Other
courts have rejected the idea that the
interests of the insured and insurer are
E. Joint Defense Privilege
The joint defense privilege is similar,
though not identical, to the attorney-client privilege. Courts consider it a logical
extension of the attorney-client privilege
and an exception to the waiver doctrine
discussed above.104 When the same attorney represents two parties, co-clients
usually may share communications with
their common lawyer under the “joint
defense privilege” without destroying
confidentiality.105 The joint defense
privilege “serves to protect the confidentiality of communications passing from
one party to the attorney for another
party where joint defense effort or strategy has been decided upon and undertaken by the parties and their respective
counsel.”106 While not necessary, written
joint defense agreements are the best
evidence for proving the existence of a
joint defense agreement.107
The joint defense privilege only
applies where the parties seek
representations for legal purposes,
rather than for business or other
purposes.108 Furthermore, the joint
defense privilege requires the parties
to show “[s]ome form of joint
strategy[,]” not just the impressions
of one side.109 Mere exchange of
information will not be protected
by the joint defense privilege. For
example, the privilege may not
apply to corporate counsel’s claim to
represent an employee for purposes of
a deposition.110
Courts have expanded the rationale
behind the joint defense doctrine to
include situations in which the clients
are pursuing a common interest but
do not share the same attorney.111
A common example of this would
be a circumstance where industry
members cooperate to respond to an
industry-wide antitrust inquiry by
the Department of Justice. Under
this scenario, the responding parties
are different entities that almost
always are represented by different
counsel. Courts generally view this
type of industry cooperation through
the same analytical lens as the joint
defense agreement in a litigation
setting.112
For example, in Haines v. Liggett
Group, Inc., the court held that the
protection of the privilege “extend[s]
to communications between different
persons or separate corporations when
the communications are ‘part of an
on-going and joint effort to set up a
common defense strategy.’”113 To be
protected by the common interest
privilege, the parties must demonstrate
that “(1) the communication is made
by separate parties in the course of
a matter of common legal interest;
(2) that communication is designed
to further that effort; and (3) the
privilege has not been waived.”114 “The
common interest must be a legal”
rather than a “commercial or financial
interest.”115 There does not need to
“be actual litigation in progress for the
common interest” doctrine to apply.116
Missouri courts have recognized this
common interest privilege so long
as parties “share a common interest
in the outcome of the litigation and
where the communication in question
was made in confidence.”117
One consideration prior to entry
into a joint defense agreement is the
potential consequence associated
with withdrawal by a party from the
arrangement. At least one federal
magistrate has held that withdrawal by
a party from the agreement subjects
the attorney for the withdrawing
party to disqualification on the
basis of his prior representation of
an adverse party.118 The magistrate
also disqualified counsel for all of
the other members of the joint
defense group. While this decision
ultimately was overturned by the
district court, this issue should at
least be considered prior to entering
into these arrangements.119 At a
minimum, participants in the group
should understand that most courts
hold that when a party withdraws
from a joint defense relationship, that
party may not reveal the confidential
information shared by other members
of the group.120
IV. Points to Consider For
Protecting Privilege in the
Corporate Setting
To ensure that confidential and
sensitive corporate communications
are protected by the attorney-client
privilege, and to guard against waiver
of the privilege, in-house counsel
should consider implementing the
following as best practices:
A. Draw Clear Distinctions
Between Legal Advice and
Business Counsel
Routine business communications
are not privileged merely because they
were sent to in-house counsel. Avoid
funneling all correspondence through
in-house counsel, because doing so
may result in the perception of overdesignation that, in turn, may lead to
a court viewing legitimate claims of
privilege with skepticism. Segregate
legal functions from those that
typically are non-legal by determining
whether the function could have
been performed by a non-lawyer. For
example, government relations or
compliance should be maintained as
a separate function from traditional
legal functions. The fact that all three
functions ultimately may report to a
corporation’s lead attorney, such as its
general counsel, does not result in the
non-legal functions’ activities being
privileged.
Business and legal advice should be
communicated in separate documents
when possible. In-house counsel
should preface communications
containing privileged communications
with assertions that the content
relates to legal matters (for example,
“You inquired whether there is any
legal restraint on” or “Under the
facts you presented, the law would
allow. . . ”). Use legal titles such as
“general counsel,” “chief legal officer,”
“esquire,” or “attorney at law” in all
written communications over which
the privilege likely is to be asserted.
B. Inadvertent Disclosure
The attorney-client and work
product privileges may be waived
through inadvertent disclosure of a
privileged document.121 With the
increasing amount of electronic
communication and data storage,
protecting privileged documents from
inadvertent disclosure has become
increasingly difficult. In March 2011,
Microsoft fought a motion to compel
an e-mail chain, initiated by its inhouse counsel, that Microsoft believed
was protected by the attorney-client
privilege.122 The e-mail chain at
issue had within it a request from
Microsoft’s in-house counsel “to
investigate whether [the] Plaintiff had
infringed [on Microsoft’s] intellectual
March-April 2012 / 89
property rights.”123 Microsoft
inadvertently produced this e-mail chain
in 1.2 million pages of documents, and
the plaintiff filed a motion to compel,
arguing that the e-mail was no longer
privileged because it was inadvertently
produced.
Although the court agreed that
Microsoft’s disclosure was inadvertent
and that Microsoft took reasonable
steps to prevent the disclosure, the
court determined that other than the
in-house counsel’s initial e-mail, none
of the remaining e-mails contained
communications with lawyers or legal
advice. Therefore, the court found that
the only e-mail that would be protected
by the attorney-client privilege was the
originating e-mail from the corporate
counsel.124
To protect against inadvertent
disclosure, companies should
legend documents and e-mails as
“Attorney-Client Communications”
as appropriate. However, as discussed
previously, this method should be used
only in the case where truly applicable.
If documents are overly and improperly
designated as privileged, employees
become conditioned to believe that all
communication involving in-house
counsel is secure. To the contrary,
noting “attorney-client privileged” on
every e-mail, fax cover sheet, letter and
document does not create a privileged
document. The substance – not the
label – of the content is determinative.
Additionally, the court will be less
likely to allow certain documents to be
withheld if non-privileged documents
are mislabeled.
With respect to meetings during
which legal advice is sought, detailed
minutes should be maintained that
include the date, each person present,
the involvement of an attorney,
the subject of the meeting, and the
confidentiality of the proceedings.
90 / Journal of the MISSOURI BAR
C. Maintain “Need To Know” Basis
With Privileged Materials
All communications regarding legal
issues, particularly those in writing,
must be limited only to those employees
who are working on or involved with
the problem at hand. Attorneys should
document why communications are
occurring, for example, by noting that
litigation is expected, and state why
recipients of correspondence need to be
included. In light of the inconsistencies
among various jurisdictions regarding
which employees represent the
company, in-house counsel should
communicate legal advice on a “need
to know” basis only. Distribution of
confidential memorandums and e-mails
and other written communications
containing sensitive communications
should be limited. Counsel also must
be alert to the presence of unprivileged
persons at a meeting where privileged
matters are going to be discussed.
Company employees often believe the
scope of the privilege is far broader than
it actually is. In-house counsel should
periodically remind company employees
of their responsibility to the corporation
and the narrow scope of the privilege by
issuing statements explaining company
policy on legal communications, with
advice on how to retain the privilege.
D. If Disclosure to Outside Party is
Required, Such as to Government
or Auditor, Obtain a Privilege
Preservation Agreement
If a corporation is served with
a grand jury subpoena or receives
correspondence from an investigatory
arm of the government, signaling an
investigation into the corporation’s
practices, the corporation should
consider retaining outside counsel
immediately, and before contacting
prosecutors or investigators to discuss
the basis for the investigation. Inhouse counsel should not execute
affidavits refuting accusations against
the company, because doing so may
cause corporate counsel to become a fact
witness and lead to waiver assertions.
When faced with a demand for
privileged material, if disclosure is in the
corporation’s interests, the corporation
should negotiate with the government
for protection against future third
party discovery and enter into a
confidentiality/privilege preservation
agreement with the investigating entity.
The agreement should assert that the
parties are acting cooperatively and not
as adversaries, if possible.
Because an agreement on the effect
of disclosure in a federal proceeding
is binding only on the parties to the
agreement, it should be incorporated
into a court order .125 “A federal
court may order that the privilege or
protection is not waived by disclosure
connected with the litigation pending
before the court – in which event the
disclosure is also not a waiver in any
other federal or state proceeding.”126
Where a request originates from an
outside auditor, consider negotiating
engagement letters that will protect the
company. Include an agreement that the
auditor will maintain the confidentiality
of the audit materials and give advance
warning prior to disclosing documents
in response to government or third
party subpoena. The company should
negotiate with auditors to narrow the
scope of the necessary information as
much as possible.
After disclosing privileged records,
record what was disclosed and not
disclosed. When possible, find a way to
provide the information sought without
disclosing privileged information.
V. Conclusion
Contrary to the belief of many
practitioners and their non-lawyer
clients, there is no universal privilege
covering all communications made to
an attorney. Even otherwise privileged
communications may easily be waived
without careful consideration and
an understanding of applicable law.
These issues are even more complex
for in-house counsel, who frequently
serve in many capacities, sometimes
simultaneously. In-house counsel
must determine the identity of the
client before engaging in confidential
and sensitive communications that
are intended to be privileged, be
aware that the disclosure of protected
information to auditors and government
officials may waive the privilege, and
take steps to properly label privileged
correspondence and other documents to
prevent inadvertent disclosure to third
parties.
Through thoughtful consideration
of the issues that may arise during their
work as in-house attorneys, and by
being aware of the principles governing
attorney-client privilege law in each
relevant jurisdiction, in-house counsel
will better protect the entities they serve
and avoid potentially embarrassing and
expensive professional pitfalls.
Endnotes
1 Brian J. Christensen is a partner in the
Labor and Employment and Litigation Groups
at Spencer, Fane, Britt & Browne, LLP and
a former vice-president and associate general
counsel for Litigation, Legal Systems and
Records Policy at H&R Block in Kansas City.
Bret G. Wilson is the vice-president and general
counsel of the National Beef Packing Company,
LLC in Kansas City. The authors wish to extend
their gratitude to Denise Portnoy, an associate
at Spencer, Fane, Britt & Browne, LLP, for her
invaluable contribution to this article.
2 See, e.g., United States v. Textron, Inc., 577
F.3d 21 (1st Cir. 2009).
3 Swidler & Berlin v. United States, 524 U.S.
399, 403 (1998).
4 State ex rel. Polytech, Inc. v. Voorhees, 895
S.W.2d 13, 14 (Mo. banc 1995).
5 Mohawk Indus., Inc. v. Carpenter, 130 S.Ct.
599, 606 (2009).
6 State v. Fingers, 564 S.W.2d 579, 582 (Mo.
App. S.D. 1978); see also Wilcox v. Coons, 220
S.W.2d 15, 18 (Mo. banc 1949).
7 See State v. Pride, 1 S.W.3d 494, 505 (Mo.
App. W.D. 1999); State v. Smith, 979 S.W.2d
215, 220 (Mo. App. S.D. 1998).
8 State v. Longo, 789 S.W.2d at 812, 815 (Mo.
App. E.D. 1990).
9 Polish Roman Catholic St. Stanislaus v.
Hettenbach, 303 S.W.3d 591, 601 (Mo. App.
E.D. 2010); Collins v. Mo. Bar Plan, 157 S.W.3d
726, 736 (Mo. App. W.D. 2005).
10 See Hettenbach, 303 S.W.3d at 601.
11 Longo, 789 S.W.2d at 816; Pride, 1
S.W.3d at 505 (no attorney-client privilege for
conversation that took place after attorney-client
relationship terminated).
12 See Hilgedick v. Nothstine, 289 S.W. 939,
941 (Mo. 1926).
13 State Farm Mut. Auto. Ins. Co. v. Allen, 744
S.W.2d 782, 787 (Mo. banc 1988); State ex rel.
Headrick v. Bailey, 278 S.W.2d 737, 740 (Mo.
banc 1955).
14 State v. Longo, 789 S.W.2d 812, 815 (Mo.
App. E.D. 1990); State ex rel. Great Am. Ins. Co.
v. Smith, 574 S.W.2d 379, 383 (Mo. banc 1978).
15 Longo, 789 S.W.2d at 815; see also Great
Am. Ins. Co., 574 S.W.2d at 384 (quoting with
approval ALI Model Code of Evidence, Rule
209(d) (1942), and Comment on Clause (d));
State ex rel. Syntex Agri-Bus., Inc. v. Adolf, 700
S.W.2d 886, 888 (Mo. App. E.D. 1985).
16 Longo at 815.
17 Id.
18 Syntex Agri-Bus., Inc., 700 S.W.2d at 889.
19 Weinshenk v. Sullivan, 100 S.W.2d 66, 70
(Mo. App. E.D. 1937).
20 Upjohn Co. v. United States, 449 U.S. 383,
396 (1981).
21 Voorhees, 895 S.W.2d at 14 (citing Great
Am. Ins. Co., 574 S.W.2d at 385 n.6).
22 McCaffrey v. Estate of Brennan, 533 S.W.2d
264, 267 (Mo. App. E.D. 1976); In re Marriage
of Hershewe, 931 S.W.2d 198, 201-02 (Mo. App.
S.D. 1996).
23 See Tyler v. Hall, 17 S.W. 319, 321 (Mo.
1891); cf. Canty v. Halpin, 242 S.W. 94, 97 (Mo.
banc 1922) (privilege did not bar testimony of
attorney’s wife, who was present when attorney
interviewed client, because wife “was not an
intermediary employed by her husband for the
purpose of facilitating communications between
attorney and client”).
24 State v. Hardin, 558 S.W.2d 804, 807 (Mo.
App. W.D. 1977).
25 State v. Panter, 536 S.W.2d 481, 484 (Mo.
App. W.D. 1976).
26 State v. Carter, 641 S.W.2d 54, 57 (Mo.
banc 1982), cert. denied, 461 U.S. 932 (1983).
27 See Ratcliff v. Sprint Mo., Inc., 261 S.W.3d
534, 549 (Mo. App. W.D. 2008).
28 State ex rel. Tillman v. Copeland, 271
S.W.3d 42, 45 (Mo. App. S.D. 2008); State ex
rel. Mo. Highways & Transp. Comm’n v. Legere,
706 S.W.2d 560, 566 (Mo. App. S.D. 1986); see
also State ex rel. Cain v. Barker, 540 S.W.2d 50,
57-8 (Mo. banc 1976).
29 State ex rel. Ford Motor Co. v. Westbrooke,
151 S.W.3d 364, 367 (Mo. banc 2004); see also
State Esquire rel. Friedman v. Provaznik, 668
S.W.2d 76, 80 (Mo. banc 1984).
30 Westbrooke, 151 S.W. at 366 n.3.
31 See In re Grand Jury Subpoena, 357 F.3d
900, 907-09 (9th Cir. 2004); Maine v. U.S. Dep’t
of the Interior, 298 F.3d 60, 69 (1st Cir. 2002);
United States v. Adlman, 134 F.3d 1194 (2d Cir.
1998); Nat’l Union Fire Ins. Co. v. Murray Sheet
Metal Co., 967 F.2d 980, 984 (4th Cir. 1992);
Binks Mfg. Co. v. Nat’l Presto Indus., Inc., 709
F.2d 1109, 1118-19 (7th Cir. 1983); Simon v.
G.D. Searle & Co., 816 F.2d 397, 401 (8th Cir.
1987).
32 See Simon, 816 F.2d at 401, quoting 8
Charles Alan Wright, Et Al., Federal
Practice & Procedure, § 2024 (1970).
33 Rule 56.01(b)(1) (emphasis added).
34 Id.
35 Diehl v. Fred Weber, Inc., 309 S.W.3d 309,
323 (Mo. App. E.D. 2010).
36 Diehl, 309 S.W.3d at 323-24.
37 Id.
38 Id.
39 Bd. of Registration for the Healing Arts v.
Spinden, 798 S.W.2d 472, 478 (Mo. App. W.D.
1990).
40 State ex rel. Day v. Patterson, 773 S.W.2d
224, 228 (Mo. App. E.D. 1989).
41 Maher v. Maher, 951 S.W.2d 669, 674-75
(Mo. App. E.D. 1997).
42 Brief and Appendix of Respondent at
29, State ex rel. Reif v. Jamison, SC88987 (Mo.
2008); available at http://www.courts.mo.gov/
SUP/index.nsf/0/d6fc972c141cfaf6862574cd0
071690b/$FILE/SC88987_Missouri_Baptist_
Medical_Center_Brief.pdf; see also State ex rel.
Atchison, Topeka & Santa Fe Ry. Co., 898 S.W.2d
550 (Mo. banc 1995).
43 Westbrooke, 151 S.W.3d at 367.
44 Diehl, 309 S.W.3d at 323; Edwards v. Mo.
State Bd. of Chiropractic Examiners, 85 S.W.3d
10, 26 (Mo. App. W.D. 2002).
45 Edwards, 85 S.W.3d at 26.
46 See Porter ex rel. Alyward v. Gottschall, 615
S.W.2d 63 (Mo. banc 1981).
47 Upjohn Co. v. United States, 449 U.S. 383
(1981).
48 Gucci America, Inc. v. Guess?, Inc., 271
F.R.D. 58, 70 (S.D. N.Y. 2010).
49 See Upjohn, 449 U.S. at 395; In re Grand
Jury Subpoena Duces Tecum, 731 F.2d 1032, 1037
(2d. Cir. 1984).
50 See e.g. Rowe v. E.I. DuPont de Nemours
& Co., Civil Nos. 06-1810-RMB-AMD,
06-3080-RMB-AMD, 2008 WL 4514092,
at *7-8 (D. N.J. Sept. 30, 2008) (utilizing
“‘predominantly legal’ test” and requiring
showing that in-house counsel were engaged
in “predominantly legal” communications for
application of privilege); In re Seroquel Prods.
Liab. Litig., No: 6:06-md-1769-Orl-22DAB,
2008 WL 1995058, at *4 (M.D. Fla. May
7, 2008 ) (defendant did not meet burden of
showing that communications with in-house
counsel related to legal matters); In re Vioxx
Prod. Liab. Litig., 501 F.Supp.2d 789, 797 (E.D.
La. 2007) (recognizing difficulty of applying
attorney-client privilege to “modern corporate
counsel [who] have become involved in all facets
of ” corporations and requiring “clear showing”
in-house counsel “was acting in his professional
March-April 2012 / 91
legal capacity.”).
51 Radiant Burners, Inc. v. Am. Gas Ass’n,
320 F.2d 314 (7th Cir. 1963).
52 449 U.S. 383 (1981).
53 Id. at 394-95.
54 Id.
55 Diversified Indus., Inc. v. Meredith,
572 F.2d 596, 608-09 (8th Cir. 1977).
See Restatement (Third) of the Law
Governing Lawyers § 73 (2000).
56 Diversified Indus., Inc., 572 F.2d at 609.
57 See generally Brian E. Hamilton,
Conflicts, Disparity and Indecision: The
Unsettled Corporate Attorney-Client Privilege,
1997 Ann. Surv. Am. L. 629 (1999).
58 Id.
59 Id.
60 Resurrection Healthcare & Factory Mut.
Ins. Co. v. GE Health Care, No. 07 C 5980,
2009 WL 691286 (N.D. Ill. Mar. 16, 2009).
61 Id.
62 DeLaporte v. Robey Bldg. Supply, Inc., 812
S.W.2d 526, 531 (Mo. App. E.D. 1991) citing
Diversified Indus., Inc., 572 F.2d at 609.
63 DeLaporte, 812 S.W.2d at 531.
64 See, e.g., Allianz Ins. Co. v. Guidant
Corp., 869 N.E.2d 1042, 1055 (Ill. App.
Ct. 2007); Sterling Fin. Mgmt., L.P. v. UBS
PaineWebber, Inc., 782 N.E.2d 895 (Ill.
App. Ct. 2002) (applying Illinois law and
control group test over New York law based
on the court’s analysis under Comment d
of the Restatement); State v. Heaney, 689
N.W.2d 168, 174-75 (Minn. 2004) (adopting
Restatement (Second) and identifying other
jurisdictions that have done so).
65 Palmer v. Fisher, 228 F.2d 603 (7th
Cir.1955), cert. den. 351 U.S. 965 (1956);
Engl v. Aetna Life Ins. Co., 139 F.2d 469
(2d Cir. 1943); Merlin v. Aetna Life Ins. Co.,
180 F.Supp. 90 (S.D. N.Y.1960); Munzer v.
Swedish Am. Line, 35 F.Supp. 493 (S.D. N.Y.
1940); Spray Prods. Corp. v. Strouse, Inc., 31
F.R.D. 244 (E.D. Pa.1962); Padovani v. Liggett
& Meyers Tobacco Co., 23 F.R.D. 255 (E.D.
N.Y. 1959); Berdon v. McDuff, 15 F.R.D. 29
(E.D. Mich. 1953); cf. Ex parte Sparrow, 14
F.R.D. 351 (N.D. Ala.1953).
66 Connolly Data Sys., Inc. v. Victor Techs.,
114 F.R.D. 89, 91-92 (S.D. Cal. 1987)
(where communications took place in and
parties to the communications were located
in California, such that client’s expectation of
confidentiality would have stemmed from the
law of California, and not law of the forum in
which action was pending, governed privilege
issue); Ford Motor Co. v. Leggat, 904 S.W.2d
643, 646-48 (Tex. 1995) (law of Michigan,
rather than that of forum state, applied to
manufacturer’s claim that report by general
counsel to manufacturer’s policy and strategy
committee was subject to attorney-client
privilege where Michigan had most significant
relationship to the communication).
67 An analogous problem may arise when a
92 / Journal of the MISSOURI BAR
deposition is sought to be taken in a state other
than the state of trial. To date, the courts of
the deposition state generally have refused to
admit evidence of a communication privileged
under their local law, but it would appear that
in all of these cases the deposition state was
also the state of most significant relationship
with the communication. See e.g. In Re Walsh,
243 N.Y.S.2d 325 (N.Y. App. Div. 1963);
Application of Queen, 233 N.Y.S.2d 798 (N.Y.
App. Div. 1962); In re Franklin Washington
Trust Co., 148 N.Y.S.2d 731 (N.Y. App. Div.
1956).
68 Gray v. Bicknell, 86 F.3d 1472, 1482 (8th
Cir. 1996); Profit Mgmt Dev., Inc. v. Jacobson,
Brandvik & Anderson, Ltd., 721 N.E.2d 826,
835 (Ill. App. Ct. 1999).
69 See e.g. Ryan v. Gifford, Civil Action No.
2213-CC, 2007 WL 4259557, at *3 (Del.
Ch. Nov. 30, 2007) (“attorney-client privilege
protects communications between [outside
counsel] and its client, the Special Committee”
absent waiver or good cause); In re BCE West,
L.P., No. M-8-85, 2000 WL 1239117, at *2
(S.D. N.Y. August 31, 2000).
70 Id.
71 See Ryan v. Gifford, Civil Action No.
2213-CC, 2008 WL 43699, at *5 (Del. Ch.
Jan. 2, 2008) (presence of board members
acting in their personal capacity during
counsel’s presentation waived the privilege);
but see In re BCE West, L.P., No. M-8-85,
2000 WL 1239117, at *2 (S.D. N.Y. Aug. 31,
2000) (communications with the board were
part of transaction process and did not destroy
the special committee’s privilege).
72 254 F.R.D. 371, 378 (N.D. Cal. 2008).
73 Couch v. United States, 409 U.S. 322
(1973); see Cavallaro v. United States, 284
F.3d 236, 246 (1st Cir. 2002); United States v.
Frederick, 182 F.3d 496, 502 (7th Cir. 1999);
see e.g. In re Honeywell Int’l, Inc. Sec. Litig., 230
F.R.D. 293, 297 (S.D. N.Y. 2003) (disclosure
to company’s auditor waives the attorney-client
privilege); see Medinol, Ltd. v. Boston Scientific
Corp, 214 F.R.D. 113 (S.D. N.Y 2002).
74 Section 326.322.1, RSMo Supp. 2011.
75 Ayers Oil Co. v. Am. Bus. Brokers, Inc.,
No. 2:09 CV 02 DDN, 2009 WL 2592154,
at *2 (E.D. Mo. Aug. 20, 2009), citing Sears,
Roebuck & Co. v. Gussin, 714 A.2d 188, 193
(Md. 1998); Fed. Ins. Co. v. Arthur Anderson &
Co., 816 S.W.2d 328, 331 (Tenn. 1991).
76 Semi-Materials Co., Ltd. v. MEMC Elec.
Materials, Inc., No: 4:06CV1426 FRB, 2010
WL 3038086, at *3 (E.D. Mo. Aug. 3, 2010)
(addressing applicability of accountant-client
privilege to relationship between external
auditor and corporation, but holding that
privilege had been waived to the extent
defendant invoked the advice of the external
auditor as a defense to plaintiff’s claims in the
case).
77 Diversified Indus., Inc., 572 F.2d at 603.
78 Id.
79 Diversified Indus., Inc., 572 F.2d at 603
(report prepared by outside counsel based
on interviews with corporate employees not
protected by attorney-client privilege because
counsel “was employed solely for the purpose
of making an investigation of facts and to
make business recommendations with respect
to future conduct of Diversified”); see also
Navigant Consulting, Inc. v. Wilkinson, 220
F.R.D. 467, 476 (N.D. Tex. 2004).
80 Cataldo v. Nat’l Grid USA, No.
20065120, 2008 WL 496718, at *6 (Mass.
Super. Ct. Feb. 15, 2008) (concluding
that investigation report prepared under
the direction of in-house counsel was not
privileged because the substance of the report
was very similar to a parallel investigation
report prepared by business personnel,
members of the two investigation teams
overlapped, and the independence of the teams
was questionable.
81 In re Syncor ERISA Litig., 229 F.R.D.
636, 645 (C.D. Cal. 2005) (documents
prepared during internal investigation “were
created with the intent to disclose … to
the Government [and] … thus were never
privileged.”); In re Aqua Dots Prods. Liab.
Litig., 270 F.R.D. 322, 327-28 (N.D. Ill.
2010) (whether the predominant intention
of the party is to obtain legal advice is a factintensive inquiry and high level of detail
demanded from the party).
82 See Coito v. Super. Ct., 106 Cal. Rptr. 3d
342, 351 (Cal. Ct. App. 2010) (“hold[ing] that
written and recorded witness statements, [even
if ] taken by counsel, are not attorney work
product.”); but see Sandra T.E. v. S. Berwyn
Sch. Dist 100, 600 F.3d 612, 622-23 (7th
Cir. 2009) (finding that use for impeachment
of notes of attorneys’ interviews with school
district employees during investigation of
sexual abuse was not substantial need); Treat
v. Tom Kelley Buick Pontiac GMC, Inc., No.
1:08-CV-173, 2009 WL 1543651, at *9 (N.D.
Ind. June 2, 2009) (holding witness interview
notes “reflecting counsel’s mental impressions
about what counsel deemed important” were
protected work product).
83 See e.g. United States v. McPartlin,
595 F.2d 1321, 1335-36 (7th Cir. 1979)
(statements made to investigator acting as
attorney’s agents); Sanchez v. Matta, 229
F.R.D. 649, 660 (D. N.M. 2004) (employee
communications to investigator acting as agent
of employer’s counsel); Welland v. Trainer, No.
00 Civ. 00738(JSM), 2001 WL 1154666, at
*3 (S.D. N.Y Oct. 1, 2001) (employee serving
as investigator was attorney’s agent); Carter v.
Cornell Univ., 173 F.R.D. 92, 95 (S.D. N.Y.
1997) (communications to employee whose
duties normally did not include conducting
investigations for in-house counsel specifically
asked to conduct investigation), aff’d 159 F.3d
1345 (2d. Cir. 1998) (summary order).
84 See, Edwards, 85 S.W.3d at 27.
85 Spinden, 798 S.W.2d at 478 (Mo. App.
W.D. 1990); Claude P. Bamberger Int’l Inc. v.
Rohm & Haas, Co., No. Civ 96-1041(WGB),
1997 WL 33762249, at *3 (D. N.J. Dec. 29,
1997) (no attorney-client privilege involving
materials that didn’t appear for primary
purpose of obtaining legal advice).
86 Id.
87 Gucci Am., Inc. v. Guess?, Inc., 271
F.R.D. 58, 61 (S.D. N.Y. 2010).
88 Admiral Ins. Co. v. U.S. Dist. Ct. for the
Dist. of Az., 881 F.2d 1486 (9th Cir. 1989)
(illustrating importance of having internal
interview conducted by counsel).
89 In re John Doe Corp., 675 F.2d 482,
492-93 (2d Cir. 1982) (notes taken by an
attorney during an internal investigation are
discoverable because the notes did not reflect
the mental processes of counsel).
90 Securities and Exchange Commission,
Division of Enforcement, Enforcement
Manual § 4.3 (Aug. 2, 2011).
91 Diversified Indus., Inc., 572 F.2d at 604.
92 See, e.g. Permian Corp. v. United
States, 665 F.2d 1214 (D.C. Cir. 1981);
In re Martin Marietta Corp., 856 F.2d 619
(4th Cir. 1988); Westinghouse Elec. Corp. v.
Republic of Philippines, 951 F.2d 1414 (3d
Cir. 1991); United States v. Mass. Inst. of Tech.,
129 F.3d 681 (1st Cir. 1997); In re Columbia/
HCA Healthcare Corp. Billing Practices Litig.,
293 F.3d 289 (6th Cir. 2002); In re Qwest
Commc’ns Int’l, Inc., 450 F.3d 1179 (10th Cir.
2006), but c.f. In re Steinhardt Partners, L.P.,
9 F.3d 230 (2d Cir. 1993) (confidentiality
agreement may protect privilege); Saito v.
McKesson HBOC, Inc., No. CIV.A. 18553,
2002 WL 31657622 (Del. Ch. Nov. 13, 2002)
(adopts selective waiver doctrine); Aronson v.
McKesson HBOC, Inc., No. 99-CV-20743,
2005 WL 934331 (N.D. Cal. Mar. 31, 2005)
(no waiver of work product protection based
on confidentiality agreement); In re Cardinal
Health, Inc. Sec. Litig., No. C2 04 575 ALM,
2007 WL 495150 (S.D. N.Y. Jan. 26, 2007)
(no waiver of work product protection even
in absence of confidentiality agreement); In
re Natural Gas Commodity Litig., No. 03 Civ.
6186VMAJP, 2005 WL 1457666 (S.D. N.Y.
June 21, 2005) (no waiver of work product
protection even in absence of confidentiality
agreement).
93 235 F.R.D. 407, 427 (N.D. Ill. 2006).
94 See e.g. Westinghouse Elec. Corp. v.
Republic of Philippines, 951 F.2d 1414, 1426
(3d Cir. 1991) (holding that disclosure to
the government waived privileges despite
entry into confidentiality agreement with the
government agency receiving the privileged
materials), but see In re Steinhardt Partners,
L.P., 9 F.3d 230, 236 (2d Cir. 1993) (declining
“to adopt a per se rule that all voluntary
disclosures to the government waive work
product protection[s]” and recognizing
that entering into explicit agreement the
government agency will maintain the
confidentiality of the disclosed materials
prevents waiver of privilege.
95 Explanatory Note to Rule 502(a)
clarifies that “a subject matter waiver … is
reserved for those unusual situations in which
fairness requires a further disclosure of related,
protected information, in order to prevent
a selective and misleading presentation of
evidence to the disadvantage of the adversary.”
96 See e.g. Linde Thomson Langworthy Kohn
& Van Dyke, P.C. v. Resolution Trust Corp., 5
F.3d 1508, 1515 (D.C. Cir. 1993); Kingsway
Fin. Servs. v. Pricewaterhouse-Coopers LLP,
No. 03 Civ. 5560(RMB)(HBP), 2008 WL
4452134 (S.D. N.Y. Oct. 2, 2008); Schipp v.
Gen. Motors, Corp., 457 F. Supp.2d 917, 92224 (E.D. Ark. 2006).
97 See e.g. SR Int’l Bus. Ins. Co. v. World
Trade Ctr. Props. LLC, No. 01 Civ. 9291(JSM),
2002 WL 1334821, at *3-4 (S.D. N.Y. June
19, 2002); Cigna Ins. Co. v. Cooper Tires &
Rubber, Inc., No. 3:99CV7397, 2001 WL
640703, at *1 (N.D. Ohio May 24, 2001); Go
Med. Indus. Pty., Ltd. v. C.R. Bard, Inc., No.
3:95 MC 522(DJS), 1998 WL 1632525, at *3
(D. Conn. Aug. 14, 1998).
98 Calabro v. Stone, 225 F.R.D. 96, 98
(E.D. N.Y. 2004); In re Imperial Corp. of Am.,
167 F.R.D. 447, 452 (S.D. Cal. 1995).
99 See Barker, 540 S.W.2d at 53-57.
100 See State ex rel Day v. Patterson, 773
S.W.2d 224, 227-30 (Mo. App. E.D. 1989).
101 Id.; see also Legere, 706 S.W.2d at 566.
102 See Patterson, 773 S.W.2d at 225.
103 See Voorhees, 895 S.W.2d at 14.
104 See e.g. In re LTV Sec. Litig., 89 F.R.D.
595, 604 (N.D. Tex. 1981).
105 See United States v. Schwimmer, 892
F.2d 237, 243 (2d Cir. 1989).
106 Id.
107 Daralyn J. Durie, Drafting the Joint
Defense Agreement (With Sample Provisions),
13 The Practical Litigator 7 (March 2002).
108 See e.g. United States v. Aramony, 88
F.3d 1369, 1392 (4th Cir. 1996).
109 United States v. Weissman, 195 F.3d 96,
100 (2d Cir. 1999).
110 Wade Williams Distrib., Inc. v. Am.
Broad. Cos., No. 00 Civ. 5002(LMM), 2004
WL 1487702, at *1-2 (S.D.N.Y. June 30,
2004).
111 See United States v. Schwimmer, 892
F.2d 237 (2d Cir. 1989); Davis v. Costa-Gavras,
580 F. Supp. 1082, 1098-99 (S.D.N.Y. 1984);
SCM Corp. v. Xerox Corp, 70 F.R.D. 508, 514
(D. Conn. 1976).
112 See generally Raymond Banoun &
Ronald G. White, The Joint Defense Privilege
and Recent Government Challenges, 9 Corp.
Counsel’s Q. 71 (Oct. 1993).
113 975 F.2d 81, 94 (3d Cir. 1992).
114 Nidec Corp. v. Victor Co. of Japan, 249
F.R.D. 575, 578 (N.D. Cal. 2007).
115 See Blanchard v. EdgeMark Fin. Corp.,
192 F.R.D. 233, 237 (N.D. Ill. 2000).
116 Schwimmer, 892 F.2d at 244.
117 See Lipton Realty, Inc. v. St. Louis
Housing Authority, 705 S.W.2d 565, 570 (Mo.
App. E.D. 1986); citing Transmirra Products
Corp. v. Monsanto Chem. Co., 26 F.R.D. 572,
577 (S.D. N.Y. 1960).
118 See Essex Chem. Corp. v. Hartford
Accident & Indem. Co., 975 F.Supp. 650 (D.
N.J. 1997).
119 See Essex Chem. Corp. v. Hartford
Accident & Indem. Co., 993 F.Supp. 241 (D.
N.J. 1998); see also Nat’l Med. Enters., Inc. v.
Godbey, 924 S.W.2d 123 (Tex. 1996).
120 See e.g. Interfaith Housing Del., Inc. v.
Town of Georgetown, 841 F.Supp. 1393 (D.
Del. 1994); Edward C. Brewer, III, The Ethics
of Internal Investigations in Kentucky and Ohio,
27 N. Ky. L. Rev. 721, 797-98 (2000).
121 Gray, 86 F.3d at 1482-84; State ex rel.
Mueller v. Dixon, 456 S.W.2d 594 (Mo. App.
W.D. 1970).
122 Datel Holdings, Ltd. v. Microsoft Corp.,
No. C-09-055353 EDL, 2011 WL 866993
(N.D. Cal. March 11, 2011).
123 Id. at *1.
124 Id. at *6.
125 Id.
126 Fed. R. Evid. 502(d).
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