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CVIN LLC v. Clarity Telecom, LLC

United States District Court, E.D. Missouri, Southeastern Division

June 18, 2018

CVIN LLC, Plaintiff,
v.
CLARITY TELECOM, LLC, et al., Defendants.

          MEMORANDUM AND ORDER

          AUDREY G. FLEISSIG UNITED STATES DISTRICT JUDGE

         This matter is before the Court on Defendant Clarity Telecom, LLC's motion (ECF No. 71) for entry of the proposed protective order (ECF No. 71-1) attached to its motion. Clarity asserts that, although the parties are in agreement regarding “nearly all terms” of the proposed protective order, they have reached an impasse on two issues: (1) the scope of a limited waiver of attorney-client privilege, and (2) the appropriate cut-off date for the parties' privilege logs. Clarity asks the Court to adopt its proposed provisions regarding these two areas of dispute, and Plaintiff CVIN LLC opposes Clarity's motion. For the reasons set forth below, the Court will deny Clarity's motion.

         BACKGROUND

         The current discovery dispute arises out of CVIN's claim that Clarity willfully infringed its registered “VAST NETWORKS” and “VAST NETWORKS & Design” trademarks, which Clarity denies. In defending against CVIN's claim of willfulness, Clarity states that it “intends to rely on communications between it and its prior counsel, K&L Gates, as evidence that Clarity, acting in good faith requested K&L Gates to ensure that the VAST designation was available for use by Clarity.” ECF No. 71 at 2. Clarity asserts that, in response to its request for advice, K&L Gates promptly filed applications for federal registrations of Clarity's VAST marks but did not provide Clarity any opinion or advice regarding the availability of the mark for use by Clarity.

         Clarity has attached to its motion the email it sent to K&L Gates on September 5, 2014, asking the law firm to “make sure there aren't any issues with using [the] name [VAST BROADBAND], ” and to “confirm we are good to be this company.” ECF No. 73. Clarity likewise stated in interrogatory responses to CVIN (attached to CVIN's response brief) that Clarity “instructed its K&L Gates attorneys in early September 2014 to make sure that there were no issues with Clarity's proposed use of the VAST BROADBAND brand and to confirm availability of that designation for Clarity's use.” ECF No. 75-4 at 4.

         Although the parties agree that Clarity's defense waives Clarity's attorney-client privilege to some degree, the parties dispute the scope of that waiver. Clarity has added a limited waiver to its proposed protective order, which states, in relevant part:

Defendant waives its attorney-client privilege, immunity, and other protection in connection with this lawsuit alone and only to the extent that such disclosure pertains, in whole or in part, to the legal services of K&L Gates to Defendant in conjunction with its selection and adoption of VAST designations as trademarks and service marks for Defendant's products and services.

ECF No. 71-1 at 15.

         Clarity argues that a broader waiver is not warranted because Clarity is not truly relying on an advice-of-counsel defense. Rather, Clarity contends that it is relying on an absence of advice from K&L Gates, after a request for such advice, to show its good faith in the selection and adoption of its VAST BROADBAND brand. Clarity concedes that “the scope of a limited attorney-client waiver is determined by the actual limited subject matter of the pertinent attorney-client communications.” ECF No. 71 at 5. However, Clarity contends that the subject matter of the privileged communications that it wishes to produce in support of its defense is limited to communications with K&L Gates regarding “Clarity's selection and adoption of its VAST marks, ” as opposed to communications with other attorneys regarding the subsequent prosecution of its trademark applications. Id.

         Clarity argues that prosecution of its trademark applications was conducted initially by K&L Gates and then by its current trial counsel, the law firm Alston & Bird, LLP, and that nearly all such prosecution took place after March 25, 2015, when Clarity received a cease-and-desist letter from CVIN. After that point, Clarity argues, its communications with counsel were made in anticipation of litigation and addressed litigation strategies distinct from any advice regarding the selection and adoption of its trademarks. Thus, Clarity contends that such communications fall outside the limited waiver. For the same reason, Clarity argues that it should not be required to log privileged documents dated after March 25, 2015. Clarity maintains that its communications with its attorneys after the March 25, 2015 cease-and-desist letter “necessarily implicate litigation strategy, ” and there is no reason to include such documents on a privilege log.

         CVIN opposes Clarity's motion and argues that the privilege waiver should more broadly include privileged information from any and all attorneys that have provided advice on the same subject matter as Clarity's request for advice from K&L Gates: whether there were any issues with Clarity's proposed use of the VAST BROADBAND brand and whether that designation was available for Clarity's use. CVIN contends that there may be communications between Clarity and its attorneys that address this subject matter even after Clarity adopted its trademarks and throughout the time that Clarity prosecuted its trademark applications.

         CVIN maintains that Clarity is indeed relying on an advice-of-counsel defense, even if the theory of this defense is that K&L Gates's lack of advice demonstrates that Clarity did not knowingly or willfully infringe CVIN's trademarks. CVIN further argues that the privilege waiver extends to communications between Clarity's opinion counsel (K&L Gates) and its trial counsel (Alston & Bird) where, as here, trial counsel was also involved in prosecution of the trademark applications. Finally, CVIN suggests that the scope of Clarity's privilege waiver is more appropriately decided on a motion to compel. Alternatively, CVIN requests oral argument to decide the privilege waiver issue.

         CVIN also opposes Clarity's request for a March 25, 2015 cut-off date for the privilege log. CVIN argues that the proper cut-off date is the date on which Clarity filed this action, April 11, 2017. According to CVIN, an earlier date is inappropriate in light of Clarity's advice-of-counsel defense and its continued prosecution of its trademark applications beyond CVIN's March 25, 2015 cease-and-desist letter. CVIN maintains that while “it may be that [Clarity] can legitimately claim privilege over every communication or document created between the date it received [CVIN's] cease and desist letter and the inception of litigation as addressing only litigation strategy, ” the ...


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