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October 4, 1993



The opinion of the court was delivered by: SUZANNE B. CONLON

Plaintiff Dorr-Oliver Inc. ("Dorr-Oliver") sues defendants Fluid-Quip, Inc. ("Fluid-Quip"), Andrew Franko ("Franko") and Pic Tek, Inc. ("Pic Tek") (collectively "defendants") for trade dress and trademark infringement. Defendants move for summary judgment and partial summary judgment. Dorr-Oliver moves (1) to reopen discovery relating to the advice of counsel defendants rely upon in their motion for partial summary judgment; and (2) to extend its time to respond to defendants' summary judgment motions.


 Dorr-Oliver and Fluid-Quip both sell equipment that separates starch from gluten ("starch washing equipment") to the corn wet milling industry. Franko is president and chief executive officer of Fluid-Quip. Pic Tek is a manufacturer's representative of Fluid-Quip products. Dorr-Oliver alleges that it has enforceable trademark rights in the word "clamshell" for its DorrClone Type C multicyclone starch washing equipment and enforceable trademark/trade dress rights in the outer housing configuration of this equipment. Complaint P 6. Dorr-Oliver claims that Fluid-Quip manufactured multicyclone starch washing equipment with an outer housing identical to Dorr-Oliver's DorrClone Type C multicyclone starch washing equipment and that Fluid-Quip used the word "clamshell" to describe and promote this equipment. Complaint PP 22-23. Dorr-Oliver alleges that defendants have (1) infringed its trademark and trade dress rights in violation of the Lanham Act, 15 U.S.C. P 1125(a) (1993); (2) engaged in common law unfair competition, false advertising and misappropriation; (3) violated the Illinois State Counterfeit Trademark Act, 765 ILCS P 1040/0.01 et seq. (1992); (4) diluted its trademark rights under Illinois law, 765 ILCS P 1035/15 (1992); (5) violated the Illinois Uniform Deceptive Trade Practices Act, 815 ILCS P 510 et seq. (1992); and (6) violated the Illinois Consumer Fraud and Deceptive Business Practices Act, 815 ILCS P 505 et seq. (1992 and 1993 Supp.).


 1. Dorr-Oliver's Motion To Reopen Discovery

 In support of their motion for partial summary judgment, defendants argue that their good faith precludes any monetary award to Dorr-Oliver under equitable accounting principles. Defendants' Partial Summary Judgment Mot. at 3. Defendants explain that in order for Dorr-Oliver to prevail under traditional equitable accounting theories, defendants must have acted egregiously or deliberately. Id. at 3-4. Defendants argue that their good faith precludes a finding of egregious or deliberate infringement and state that this good faith is "further demonstrated by Mr. Franko's prudent conduct, prior to manufacturing Fluid-Quip's clamshells, in seeking opinion from counsel." Id. at 5.

 Throughout discovery, defendants blocked Dorr-Oliver's attempts to learn the content of discussions between Franko and counsel, claiming attorney-client privilege. Plaintiff's Mot., Exh. A, Franko's Dep.; Exh. B, defendants' responses to Dorr-Oliver's interrogatories; Exhs. C & D, Dorr-Oliver's document request and defendants' written response. Dorr-Oliver claims that defendants' use of the attorney-client privilege as a sword to buttress a good faith argument waives defendants' ability to use the attorney-client privilege as a shield to protect them from discovery requests and deposition questions. Id. at 4. Thus, Dorr-Oliver argues that defendants must reveal the previously undisclosed purportedly privileged information because defendants have waived their attorney-client privilege. Dorr-Oliver explains that discovery is necessary to show the nature of advice defendants received, whether it was the type of advice on which defendants could have reasonably relied, and whether defendants followed counsel's advice. Id. at 6.

 Defendants counter that they "are not asserting or relying on the content of the legal opinion or any advice obtained by Mr. Franko." Defendants' Resp. at 2 (emphasis in original). Defendants argue that Dorr-Oliver's motion is simply "a thinly veiled, eleventh-hour attempt to enlarge the time needed to respond to Defendants' motions for summary judgment." Id. at 3. Defendants argue that they should not be required to divulge their communications with counsel because: (1) they have not waived the attorney/client privilege since they have not disclosed a privileged communication; (2) disclosure that a client retains counsel is not a waiver of the attorney/client privilege; (3) Dorr-Oliver, not defendants, has put defendants' good faith in issue; and (4) further discovery and extensions of time are unnecessary and prejudicial to defendants. Id. at 3-4.

 This Circuit has adopted the general principles of attorney-client privilege articulated by Wigmore:

(1) Where legal advice of any kind is sought (2) from a professional legal adviser in his capacity as such, (3) the communications relating to that purpose (4) made in confidence (5) by the client (6) are at his instance permanently protected (7) from disclosure by himself or by the legal adviser, (8) except the protection be waived. 8 Wigmore P 2292.

 See, e.g., United States v. Lawless, 709 F.2d 485, 487 (7th Cir. 1983). The question here is whether the protection has been waived. Defendants, not Dorr-Oliver, injected their good faith reliance on the opinion of their counsel into this case in their motion for partial summary judgment. See Lorenz v. Valley Forge Ins. Co., 815 F.2d 1095, 1098 (7th Cir. 1987).

Privilege or no privilege, if PCA intends to use such information at trial, Keyes is entitled to full disclosure in order to prepare its case. Keyes has every right to obtain information relevant to PCA's defense. Of course, PCA cannot be compelled to waive the attorney-client privilege. If, however, PCA chooses to stand behind the privilege and not permit discovery, then PCA cannot introduce the opinions or testimony of counsel to show that it is not guilty of willful infringement. . . . PCA must either waive the attorney-client privilege and comply with Keyes' discovery request or assure the court and opposing counsel that it will not pursue a defense based on the information covered by the privilege.

 Keyes Fibre Co., 763 F.2d at 376 (citation omitted). Similarly, in Amsted, Amsted Industries Incorporated ("Amsted") alleged that National Castings, Inc. ("National Castings") willfully infringed Amsted's patent for a particular part of the underframe of railway freight cars. National Castings asserted that any infringement was not willful because it acted in good faith reliance upon the opinion of counsel, whose opinion letters it sought to introduce. Amsted contended that National Castings withheld material information from the attorney, so the opinion letters did not support a good faith defense. Amsted sought leave to call the attorney as a witness to examine him as to the basis for the opinion letters. The court granted the motion to compel the attorney to testify, explaining: "By invoking the good faith defense, National [Castings] has placed in issue the circumstances of [the attorney's] ...

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