Two Recent Decisions Analyze Topics Important to All In-House Lawyers: Carefully Identifying Their Clients and Internally Communicating by E-Mail Thomas E. Spahn August 27, 2007
Two very recent cases should prompt all in-house lawyers to assess the nature of their representation of corporate affiliates, and the way they internally communicate by e-mail with their business clients. Executive Summaries The Third Circuit warned that in-house lawyers jointly representing their employer and its subsidiaries will have to disclose privileged communications to a former subsidiary which becomes an adversary (for example, if it is spun off and declares bankruptcy). In-house lawyers can avoid this problem by hiring another lawyer to advise the subsidiary in any transaction (such as a spin) that might later result in adversity. The federal court handling the Vioxx cases (adopting a report by a court-appointed Special Master, who is a widely respected privilege scholar) found that Merck s in-house lawyers had forfeited the privilege by not carefully communicating with and sharing edits in draft documents with only those business clients who needed their legal advice. Because Merck s in-house lawyers participated in widely circulated e-mails (which thus primarily dealt with business rather than legal concerns) and shared their electronic edits and comments about draft documents widely among the same Merck employees, they could not claim privilege protection for the communications, the comments or even their electronic edits on the draft documents circulated internally within Merck. The court indicated that Merck s in-house lawyers could have preserved the privilege if they had maintained separate lines of communication (for their e-mails, comments and edits) with Merck business persons who needed their legal advice. August 27, 2007 Page 2
Defining the Representation of Corporate Affiliates In Teleglobe Communications Corp. v. BCE Inc. (In re Teleglobe Communications Corp.), No. 06-2915, 2007 U.S. App. LEXIS 16942 (3d Cir. July 17, 2007), the Third Circuit analyzed the nature of an in-house lawyer s representation of her employer and its corporate affiliates. In Teleglobe, Canada s largest broadcaster (BCE) had a wholly owned Canadian subsidiary (Teleglobe), which in turn had several wholly owned second-tier U.S. subsidiaries. Teleglobe and its U.S. subsidiaries were developing a global fiber optic network. Not surprisingly, by late 2001 BCE started to reassess the project, exploring such options as restructuring, maintaining its funding or cutting off funding for Teleglobe and its subsidiaries. After this intensive reassessment involving in-house and outside lawyers (and undoubtedly generating troublesome documents), BCE decided to cut off funding. Within just a few weeks, Teleglobe declared bankruptcy in Canada, and the second-tier subsidiaries declared bankruptcy in the U.S. The bankrupt second-tier subsidiaries (now controlled by hostile creditors) sued BCE for cutting off their funding. They sought documents from BCE s law department and various outside law firms which had represented BCE, Teleglobe and its subsidiaries. The second-tier subsidiaries claimed that they had been jointly represented by BCE s in-house lawyers and their outside law firms. The District of Delaware agreed with this argument, and gave the bankrupt subsidiaries access to all otherwise privileged documents shared with BCE s law department. BCE appealed the District Court's decision rather than turn over the documents. In Teleglobe, the Third Circuit reversed and remanded. It agreed with the District Court's analysis of both the ethics and privilege effects of a joint representation: (1) absent an agreement to the contrary, there can be no secrets among jointly represented clients; (2) former jointly represented clients generally can have access to their joint lawyer s files; (3) litigation adversity among jointly represented clients causes the privilege to evaporate, thus allowing any of them to use otherwise privileged communications in the litigation. Although the Third Circuit's opinion started with a quote from the Righteous Brothers song You ve Lost That Lovin Feelin, the opinion includes a serious analysis of several issues. Id. at *4 & n.1. Significantly, the Third Circuit specifically rejected arguments presented by amicus Association of Corporate Counsel. Among other things, the Third Circuit rejected what in essence was the District Court s automatic presumption that all lawyers representing BCE also jointly represented Teleglobe and its now bankrupt subsidiaries. The Court remanded so the District Court could assess with more care the nature of BCE s in-house and outside lawyers representation of Teleglobe and its subsidiaries. August 27, 2007 Page 3
After the Third Circuit described the adverse consequences of a joint representation, it offered a roadmap for how in-house lawyers can avoid those consequences. Most importantly, the court explained that in-house lawyers can limit the scope of their representation of corporate affiliates. The court provided the example of a corporate parent's gathering of information from subsidiaries in order to make public filings which does not necessarily involve jointly representing the various corporations on the substance of everything that underlies those filings. Id. at *65. The court also acknowledged that in some of these circumstances in-house counsel may not need to represent the subsidiaries at all, because the parent company s lawyer can have privileged communications with subsidiaries employees without representing the subsidiary. Id. at *65 n.27. In discussing situations where a parent s and a subsidiary s interests might later diverge ( particularly in spin-off, sale and insolvency situations ), the court advised that it is wise for the parent to secure for the subsidiary outside representation. Id. at *66. The court emphasized that this does not mean that the parent s in-house counsel must cease representing the subsidiary on all other matters. Id. at *67. The court assured in-house lawyers that [b]y taking care not to begin joint representations except when necessary, to limit the scope of joint representations, and seasonably to separate counsel on matters in which subsidiaries are adverse to the parent, in-house counsel can maintain sufficient control over the parent's privileged communications. Id. at *69. If in-house lawyers take this step, they can leave themselves free to counsel a parent alone on the substance and ramifications of important transactions without risking giving up the privilege in subsequent adverse litigation [between a parent and a former subsidiary]. Id. at *99 (emphasis in original). All in-house counsel would be wise to read Teleglobe, and watch for situations where a current corporate affiliate (but potential later adversary) should be separately represented by an outside law firm that does not jointly represent the parent on that matter. August 27, 2007 Page 4
Communicating Internally Via E-Mail In In re Vioxx Products Liability Litigation, MDL No. 1657, SECTION: L (3), 2007 U.S. Dist. LEXIS 60299 (E.D. La. Aug. 14, 2007), a magistrate judge dealt with defendant Merck's privilege assertion for 30,000 documents (approximately 500,000 pages) out of the 2,000,000 documents Merck produced in the Vioxx case. Many if not most of the withheld documents are internal Merck e-mails. Significantly, the magistrate judge adopted nearly in toto the Report of two Special Masters he had appointed to deal with privilege issues. One of the Masters was American University law professor Paul Rice, who is one of the country s leading authors and experts on privilege so this Eastern District of Louisiana opinion probably will carry enormous weight with other courts dealing with such privilege issues. The Report recited the standard rule that in-house lawyers must make a clear showing that they are acting in a legal capacity, because in-house lawyers provide so many other types of advice. Id. at *22-23 (citation omitted). It then recognized that the problem of determining the in-house lawyer s role has been exacerbated by the advent of e-mail that has made it so convenient to copy legal counsel on every communication that might be seen as having some legal significance at some time regardless of whether it is right for legal analysis. Id. at *24. In contrast, the Report assumed that communications to and from Merck s outside lawyer involves legal advice unless the content of the communications indicated otherwise. Id. at *61 n.12. The Report criticized Merck for failing to provide specific evidentiary support for withholding many of the e-mails, and also rejected what it called Merck s pervasive regulation theory under which all e-mails deserved privilege protection due to the pervasive nature of government regulation in the drug industry. Id. at *28. The Report likewise rejected Merck s reverse engineering theory, under which the privilege would protect all electronic communications in which lawyers and non-lawyers participated in drafting a document (making their changes in the electronic document being exchanged) because an adversary can isolate non-lawyers suggested changes from documents in their files, thereby determining by process of elimination what changes the lawyer made. Id. at *36. Although these factors might have affected the Report s conclusions, most of the Report s analyses and presumptions would apply to any company in which lawyers and their clients communicate primarily by e-mail, and lawyers provide legal advice by making edits in documents that are being exchanged electronically. August 27, 2007 Page 5
In its discussion of the basic principles at play, the Report described several basic concepts: (1) A communication or a draft document sent simultaneously to lawyers and non-lawyers usually does not deserve privilege protection, because its primary purpose is not legal advice. Id. at *39. (2) Although the company might be able to withhold as privileged separate e-mail communications to and from only the lawyer, or references to the lawyer receiving (3) a blind copy, the company cannot withhold communications that show the lawyer as one recipient among many (for the reason mentioned above). (4) Because a lawyer s communication to her client deserves protection only if it would disclose a privileged communication from the client, the absence of protection for the client s e-mail to the lawyer means that nothing the lawyer discloses in her edits [on an attached draft document] reveals protected communications of the client. Id. at *41. The Report then listed several substantive guidelines the Special Masters used in making their privilege calls. (1) The privilege protected e-mails addressed solely to an attorney with apparently limited circulation and an identifiable legal question. Id. at *47. (2) The privilege did not protect the lawyer s advice reflected in the electronic line edits on the discoverable documents. As the Report explained, having chosen the electronic format, Merck cannot convert discoverable documents into non-discoverable privilege documents by the format in which they chose to render the advice. Id. at *50-51. (3) E-mails and attachments sent only to an in-house lawyer for examination, review, comment, and approval and the lawyer s response deserved privilege protection unless the document on which the comments and changes were being proposed was not a typical legal instrument. Id. at *51, 52. The Report protected as privileged e-mail strings (and attachments) sent only to a lawyer for her review or advice, even if the underlying string would not intrinsically deserve privilege protection on the assumption that the original messages and attachments were produced from the files of the original authors and recipients. In contrast, the privilege did not protect e-mails if the integration of an attorney in the e-mail thread was through a communication that was sent to many for review and comment, including an attorney because it would not then have been sent primarily for legal assistance. Id. at *53. August 27, 2007 Page 6
(4) E-mails sent to non-lawyers after a lawyer's involvement in the e-mail thread deserved privilege protection only if it was clear that legal advice previously obtained was being circulated to those within the corporate structure who needed the advice, or if the conveyance was by the lawyer and it appeared that it was for the purpose of acquiring more information the lawyer needed. Id. at *54. (5) The Report acknowledged that the privilege is more likely to protect e-mails that were copied rather than sent directly to non-lawyers, because the possibilities were greater that copies were being sent simply to inform those recipients of the nature of the legal advice being sought. This rationale would not cover e-mails sent to non-lawyers as part of a mandatory process of company-wide review, comment and approval. Id. at *55. (6) Not surprisingly, non-substantive cover e-mails did not deserve privilege protection. (7) Normally, each communication in an e-mail thread should have been independently logged. As the Report explained, [s]imply because technology has made it possible to physically link these separate communications (which in the past would have been separate memoranda) does not justify treating them as one communication and denying the demanding party a fair opportunity to evaluate privilege claims raised by the producing party. Id. at *56-57. Companies undoubtedly will argue that Professor Rice s Report (adopted by the court) took too narrow a view of the privilege. However, other courts have likewise found that internal corporate communications could not have been made primarily for purposes of legal advice if they were circulated to many non-lawyers not seeking or needing legal advice. The issue is not waiver it is whether the communications deserve protection at all. To enhance the odds of successfully asserting privilege, in-house lawyers and their clients should clearly articulate (in the body of the communication) the legal nature of the communication. Ideally, in-house lawyers would establish separate lines of communications with the business persons needing their legal advice who would then act on the advice. For example, a business person drafting a contract would separately ask for the lawyer s input, then circulate the amended draft contract to others within the company who need to review it for non-legal purposes. Of course, in-house lawyers must balance the company s interest in preserving the privilege with the efficiencies required in today s world. In-house lawyers might choose to have these separate communications only for critically important matters, essentially foregoing privilege protection for their more mundane communications or edits. August 27, 2007 Page 7